IN THE MATTER OF AN OPPOSITION by E.I. Du Pont De Nemours and Company and Du Pont Canada Inc. to application No. 692,075 for the trade-mark CEROLAN filed by Polycryl Enterprises Inc.
On September 20, 1989, the applicant, Polycryl Enterprises Inc., filed an application to register the trade-mark CEROLAN based on use of the trade-mark in Canada since at least as early as June 1, 1988 by the applicant and its predecessor in title Schiller and Schiller, a partnership of Jost Schiller and Rolf Schiller, in association with: sinks, counter tops, table tops, desk tops, wall panels, floor tiles, shower stalls, bookcase shelves; shelves and windowsills. The present application was advertised for opposition purposes in the Trade-marks Journal of May 20, 1992 and the opponents, E.I. Du Pont De Nemours and Company and Du Pont Canada Inc., filed a statement of opposition on July 3, 1992.
The opponents filed as their evidence the affidavit of Raymond Buckland who was cross-examined on his affidavit, the transcript of the cross-examination and the responses to undertakings given during the cross-examination forming part of the opposition record. The applicant filed as its evidence the affidavit of Paul Schiller. Both parties filed written arguments and both were represented at an oral hearing.
The first ground of opposition is based on subsection 30(i) of the Trade-marks Act, the opponents alleging that the applicant could not be satisfied that it was entitled to use the trade-mark CEROLAN in Canada in association with the wares covered in the present application in that the trade-mark CORIAN has been extensively used in Canada and was so well known that the applicant would have been aware of such trade-mark. While the legal burden is upon the applicant to show that its application complies with subsection 30(i) of the Trade-marks Act, there is an initial evidential burden on the opponents in respect of their Section 30 ground [see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330]. As no evidence has been filed by the opponents in support of their allegations that the applicant could not have been satisfied that it was entitled to use the trade-mark CEROLAN in Canada, they have failed to meet the evidential burden upon them in respect of the Section 30 ground. In any event, and even had the applicant been aware of the opponents’ trade-mark prior to filing the present application, such a fact is not inconsistent with the statement in the application that the applicant was satisfied that it was entitled to use the trade-mark CEROLAN in Canada on the basis inter alia that its mark is not confusing with the trade-mark CORIAN. Thus, the success of this ground is contingent upon a finding that the trade-marks at issue are confusing [see Consumer Distributing Co. Ltd. v. Toy World Ltd., 30 C.P.R. (3d) 191, at pg. 195; and Sapodilla Co. Ltd. v. Bristol-Myers Co., 15 C.P.R. (2d) 152, at pg. 155].
The remaining grounds of opposition are that the applicant’s trade-mark CEROLAN is not registrable and not distinctive, and that the applicant is not the person entitled to its registration, in that the trade-mark CEROLAN is confusing with the trade-mark CORIAN, registration No. 152,712, which had previously been used in Canada in association with non-structural building materials. In assessing whether there would be a reasonable likelihood of confusion between the trade-marks CEROLAN and CORIAN, the Registrar must have regard to all the surrounding circumstances including, but not limited to, those specifically enumerated in subsection 6(5) of the Trade-marks Act. Further, the Registrar must bear in mind that the legal burden is on the applicant to establish that there would be no reasonable likelihood of confusion between its trade-mark CEROLAN and the trade-mark CORIAN as of the material dates in this proceeding. The material date in respect of the Section 12(1)(d) ground of opposition is the date of decision [see Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. et al, 37 C.P.R. (3d) 413 (F.C.A.)] while the material dates for assessing the non-entitlement and non-distinctiveness grounds are, respectively, the applicant’s claimed date of first use [June 1, 1988] and the date of opposition [July 3, 1992].
Considering initially the inherent distinctiveness of the trade-marks at issue, both the applicant’s trade-mark CEROLAN and the registered trade-mark CORIAN are coined terms and are therefore inherently distinctive.
Having regard to the Schiller affidavit, I have concluded that the applicant’s trade-mark CEROLAN has become known in western Canada in association with sinks, counter tops, table tops, desk tops, wall panels, floor tiles, shower stalls, bookcase shelves, shelves and windowsills. In this regard, the Schiller affidavit establishes that, from 1988 when the applicant commenced use of its trade-mark to 1993, the applicant has sold approximately $1,495,000 of CEROLAN non-structural products to plumbing suppliers located primarily in British Columbia.
The opponents have submitted as their evidence the affidavit of Raymond Buckland, Manager - Specialty Products and Services in the General Products business unit of Du Pont Canada Inc., a subsidiary of E.I. Du Pont De Nemours and Company. The applicant has argued that Mr. Buckland is not an officer or employee of E.I. Du Pont De Nemours and Company and is therefore not competent to give evidence relating to sales or advertising by that company in Canada. However, Mr. Buckland states in his affidavit [paragraph 4] and confirms during his cross-examination [response to question 19] that he has responsibility for the sale in Canada of CORIAN building products and that he has access to information and records of E.I. Du Pont De Nemours and Company with respect to CORIAN building products sold in Canada. Moreover, the applicant did not question Mr. Buckland during his cross-examination as to how it is that he has access to the records of E.I. Du Pont De Nemours and Company. I am therefore prepared to accord some weight to the photocopies of documents originating from E.I. Du Pont De Nemours and Company which comprise exhibits to Mr. Buckland's affidavit, as well as to the sales figures set forth in paragraph 16 of Mr. Buckland's affidavit.
According to Mr. Buckland, the registered trade-mark CORIAN covering non-structural building products, namely counter tops and vanity tops is owned by E.I. Du Pont De Nemours and Company and his company, Du Pont Canada Inc., became a registered user of the trade-mark CORIAN in December 1990. Further, the Buckland affidavit establishes that E.I. Du Pont De Nemours and Company has imported and has sold either through distributors or directly to customers in Canada CORIAN vanity tops since December 1972 and CORIAN counter tops since January 1973. Also, in 1988, Du Pont Canada Inc. began importing CORIAN building products from E.I. Du Pont De Nemours and Company for resale in Canada [paragraph 10, Buckland affidavit]. Mr. Buckland attests to in excess of $21,000,000 in sales of CORIAN products in Canada from 1986 to 1992 [paragraph 16], about ten percent of which relate to prefabricated counter tops and vanity tops while ninety percent relate to sheets, sinks and bowls for conversion by tradesmen into finished counter tops and vanity tops [response to undertaking given during the Buckland cross-examination]. As well, at least 100,000 brochures displaying the CORIAN mark have been distributed to customers and potential customers in Canada primarily though a network of more than 200 kitchen dealers located across Canada [paragraph 17, Buckland affidavit].
In view of the above, I find that both the extent to which the trade-marks at issue have become known and the length of use of the trade-marks at issue favour the opponents. However, I do not consider that the opponents' evidence establishes that the trade-mark CORIAN has become well known or even known to a significant extent to the average consumer of non-structural building products such as counter tops, vanity tops in Canada.
The applicant’s sinks, counter tops, table tops, desk tops, wall panels, floor tiles, shower stalls, bookcase shelves, shelves and windowsills overlap the opponents’ counter tops and vanity tops and the channels of trade associated with these wares could potentially overlap. Further, I am of the view that counter tops, vanity tops, desk tops and table tops, as well as sinks, wall panels, floor panels and shower stalls, are not wares which would be purchased by the average consumer in a hurried or careless manner. Rather, I would expect that the average purchaser of such wares would have regard to such matters as the specific application of the wares and their manner of installation, the durability of the product, as well as the colour and the price of the wares. It may well be that such a consumer would also have regard to the advice or assistance of persons selling the products prior to reaching a decision as to whether to purchase the product.
With respect to subsection 6(5)(e), there is only a minor degree of similarity between the trade-marks CEROLAN and CORIAN in appearance and little, if any, similarity in sounding when the marks are considered in their entireties as a matter of immediate impression and imperfect recollection. Moreover, the trade-marks CEROLAN and CORIAN do not suggest similar ideas.
As a further surrounding circumstance in respect of the issue of confusion, the opponents pointed out that the trade-mark CORIAN has been used in Canada in association with sheets of material which can be used in a number of different applications, including the fabrication of counter tops and vanity tops. This evidence is of relevance not only to the opponents' Section 16 ground but also is a pertinent surrounding circumstance in relation to the assessment of confusion in respect of the Section 12(1)(d) ground in that it adds to the extent to which the trade-mark CORIAN has become known in Canada.
As yet a further surrounding circumstance in respect of the issue of confusion, the applicant relied upon the absence of evidence of instances of actual confusion between the trade-marks at issue despite the concurrent use of both trade-marks primarily in British Columbia. While the applicant's evidence does not point to there having been significant sales of its CEROLAN products in Canada, the fact that the wares of the parties overlap does, in my view, lend some support to the applicant's argument. I am therefore of the view that the absence of evidence of actual confusion is of some minor relevance in assessing the issue of confusion between the trade-marks CEROLAN and CORIAN.
In applying the test for confusion, I have considered that there is relatively little resemblance in appearance and sounding, and no similarity in the ideas suggested by the trade-marks CEROLAN and CORIAN when considered in their entireties. Furthermore, the opponents' wares and most of the applicant's wares are of a relatively specialized nature and would not purchased by the average consumer without some attention to the nature of the wares, their application and manner of installation, and their specific purpose. As well, I am mindful of the fact that no evidence of instances of actual confusion have been adduced by the opponents despite the concurrent use of the trade-marks at issue. As a result, I find that the applicant has met the legal burden upon it in respect of the issue of confusion as it applies to each of the grounds of opposition.
I reject the opponents’ opposition pursuant to subsection 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS 15th DAY OF FEBRUARY, 1996.
G.W. Partington,
Chairman,
Trade-marks Opposition Board