IN THE MATTER OF AN OPPOSITION
by Papillon Eastern Imports Ltd / Les Importations
Hindoues Papillon Ltee to application no. 1104479
for the trade-mark PAPILLON RIBBON & Design, filed by Apex Trimmings Inc.
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On May 30, 2001, Apex Trimmings Inc. filed an application to register the trade-mark PAPILLON RIBBON & Design, illustrated below.
The application is based on use of the mark in Canada since December, 1995, in association with the following wares:
articles of wearing accessories, namely: ribbon, ribbon
bows, rosettes, beaded trims, embroidery lace, motifs,
crochet and patches.
The Examination Section of the Trade-marks Office initially objected that the applied for mark was not registrable because it was confusing with the trade-marks BUTTERFLY, regn. no. 310804 and PAPILLON, regn. no. 307338, both cited registrations standing in the name of Papillon Eastern Imports Ltd / Les Importations Hindoues Papillon Ltee (hereinafter "Eastern Imports"). Both cited registrations cover the wares:
scarves, shawls, stoles, hats, capes, scarves and hat sets,
mitts, gloves, belts and kerchiefs.
The applicant overcame the Examination Section objection by arguing that the applied for mark PAPILLON RIBBON & Design "relates to completely different wares than those relating to the registered trade-marks . . ." The application was subsequently advertised in the Trade-marks Journal issue dated January 22, 2003 and was opposed by Eastern Imports on June 23, 2003. The Registrar forwarded a copy of the statement of opposition to the applicant on September 2, 2003. The applicant was granted a retroactive extension of time to submit its late filed counter statement (dated September 12, 2003): see the Board notice dated January 7, 2004. The applicant subsequently submitted an amended counter statement, dated September 8, 2004, but without formally requesting leave to do so: see Section 40 of the Trade-marks Regulations. Consequently, the amended counter statement never became part of the opposition record: see the Board ruling dated October 19, 2004. However, it became clear at the oral hearing that, inexplicably, both parties assumed that the amended counter statement had become part of the opposition record, replacing the first filed counter statement. On the consent of the opponent, at the oral hearing I granted the applicant leave to file its counter statement dated September 8, 2004. The opposition was heard on that basis.
parties' evidence
The opponent's evidence consists of the affidavits of Raminder Malik, President of the opponent company; and Allison Huff, trade-mark agent. Ms. Huff's affidavit serves merely to introduce into evidence copies of the opponent's trade-mark registrations mentioned above as well as two other registrations standing in the name of the opponent, as specified below:
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BUTTERFLY DESIGN
regn. no. 305805
wares
scarves, shawls, stoles, hats, capes, scarves and
hat sets, mitts, gloves, belts and kerchiefs.
YOUNG TRENDS BY PAPILLON
regn. no.401426
wares
ladies' clothing namely, dresses, skirts, slacks, shorts, t‑shirts, blouses, jackets.
Ms. Malik's evidence merely serves to provide, by way of exhibits, examples of how Eastern Imports' marks are used in association with the opponent's wares and in promoting the opponent's business.
The applicant's evidence consists of the affidavit of Candy Wong, General Manager of the applicant company. Ms. Wong's affidavit serves merely to provide, by way of exhibits, examples of how the applicant's marks are used in association with the applicant's wares and in promoting the applicant's business.
main issue
Various grounds of opposition are pleaded in the statement of opposition, however, the only ground supported by the opponent's evidence is the allegation, pursuant to Section 12(1)(d) of the Trade-marks Act, that the applied for mark PAPILLON RIBBON & Design is confusing with one or more of the opponent's registered marks.
The material date to consider the issue of confusion arising pursuant to Section 12(1)(d) is the date of my decision: see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.); Conde Nast Publications Inc. v. The Canadian Federation of Independent Grocers (1991), 37 C.P.R. (3d) 538 (TMOB).
test for confusion
The legal onus is on the applicant to show that there would be no reasonable likelihood of confusion, within the meaning of Section 6(2), between the applied for mark PAPILLON RIBBON & Design and one or more of the opponent's marks PAPILLON, BUTTERFLY, YOUNG TRENDS BY PAPILLON, and the opponent's design mark regn. no. 305805. The presence of an onus on the applicant means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant: see John Labatt Ltd. v. Molson Companies Ltd. (1990) 30 C.P.R.(3d) 293 at 297‑298 (F.C.T.D.). The test for confusion is one of first impression and imperfect recollection. Factors to be considered, in making an assessment as to whether two marks are confusing, are set out in Section 6(5) of the Act: the inherent distinctiveness of the marks and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; the degree of resemblance in appearance or sound of the marks or in the ideas suggested by them. This list is not exhaustive; all relevant factors are to be considered. All factors do not necessarily have equal weight. The weight to be given to each depends on the circumstances: see Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade‑marks (1996), 66 C.P.R.(3d) 308 (F.C.T.D.).
Section 6(5) factors
Given the dearth of evidence concerning the continuous use of the parties’ marks and the extent of such use, the issue of confusion turns almost entirely on the degree of resemblance between the parties' marks and the natures of the parties' wares and businesses.
The most relevant of the opponent's marks is PAPILLON since it most resembles the applied for mark PAPILLON RIBBON & Design. There is a high degree of resemblance between the applied for mark PAPILLON RIBBON & Design and the mark PAPILLON since the first (and dominant) word component of the applied for mark is identical to the opponent’s mark: see Pernod Ricard v. Molson Breweries (1992), 44 C.P.R. (3d) 359 at 370 (F.C.T.D.). The ideas suggested by the parties’ marks overlap since both marks suggest the idea of “butterfly” or “papillon,” papillon being of course the French word for butterfly. As noted above, the marks in issue resemble each other visually owing to the common word component PAPILLON, although the stylized butterfly design component is absent from the opponent’s mark. There is also a fair degree of resemblance aurally as the applied for mark would likely be sounded as “papillon ribbon” while the opponent’s mark would be sounded merely as “papillon.”
The parties' wares are related in that the applicant's wares may be affixed to items of clothing such as those sold by the opponent. In the absence of evidence to the contrary, I assume that there is potential for overlap in the parties' channels of trade. That is, retailers who sell the opponent's wares might also sell some of the applicant's wares as accessory items, in much the same way that clothing stores will carry items of costume jewellery.
At the oral hearing, the applicant repeated the pleadings in its counter statement that the mark PAPILLON "is used by many other producers and vendors as we can see by the long and large list of Trade-marks registered under the same name at the Canadian Intellectual Property Office's Data base[sic]." The applicant then submitted that I should satisfy myself as to the truth of the pleading since the Trade-marks Register is open to all for public inspection. I declined to do so. As held in many prior cases, it is the responsibility of the parties to submit evidence regarding the state of the Trade-marks Register (although some exceptions are permitted: see Quaker Oats Co. of Canada v. Menu Foods Ltd. (1986), 11 C.P.R.(3d) 410 at 411 (TMOB)). At the oral hearing the applicant’s agent then requested leave for a retroactive extension of time to file such evidence. The opponent objected to the request and I agreed with the opponent that the applicant's request was not justified so late in the proceedings. The applicant also argued that a negative inference should be drawn against the opponent's case because the opponent did not evidence any instances of actual confusion between the marks in issue. However, in order for such an inference to be drawn, the applicant would at least be expected to establish significant use of its mark. On the meagre evidence before me, I might equally infer that minimal sales by the applicant precluded any opportunity for instances of actual confusion to occur.
In view of the foregoing, I find that the applicant has not met the onus on it to show, on a balance of probabilities, that there is no reasonable likelihood of confusion between the applied for mark PAPILLON RIBBON & Design and the opponent's mark PAPILLON. I am aware of case law to the effect that small differences between marks of low inherent distinctiveness may be sufficient to distinguish between similar marks. However, I do not find that the applicant has established that the principle should be applied to the instant case where the small differences are comprised of fairly non-distinctive elements.
I would further note that there is no onus on the applicant at the examination stage of the application. Rather, at that stage the onus is on the Registrar who cannot refuse the application unless he is satisfied, on a balance of probabilities, that the applied for mark is not registrable. Accordingly, my finding is not in conflict with the Registrar's decision at the examination stage which permitted the applied for mark to proceed to advertisement: see Section 37(1) of the
Trade-marks Act.
Accordingly, application no. 1104479 is refused.
DATED AT VILLE DE GATINEAU, QUEBEC, THIS 9th DAY OF JULY, 2007.
Myer Herzig,
Member,
Trade‑marks Opposition Board