IN THE MATTER OF AN OPPOSITION
by 80761 Canada Ltd. to application
No. 658,229 for the trade-mark IN GEAR
filed by Reitmans (Canada) Limited
On May 23, 1990, the applicant, Reitmans (Canada) Limited, filed an application to register the trade-mark IN GEAR based on proposed use in Canada with the following wares:
ladies' outerwear and sportswear, namely:
sweatpants, jogging suits, sweaters, T-shirts,
blouses, skirts, outerjackets, dressers and
shorts.
The application was amended to include a disclaimer to the word GEAR and was subsequently advertised for opposition purposes on March 20, 1991.
The opponent, 80761 Canada Ltd., filed a statement of opposition on March 26, 1991, a copy of which was forwarded to the applicant on April 30, 1991. The first ground of opposition is that the application does not comply with the provisions of Section 30(i) of the Trade-marks Act because the applicant knew that its applied for trade-mark was confusing with the opponent's trade-mark F.U.N. GEAR for which an application had previously been filed under No. 609,576 on June 17, 1988 and with the opponent's trade-mark F.U.N. GEAR & Design which had previously been used in Canada.
The second ground of opposition is that the applicant's trade-mark is not a trade-mark because "....it cannot be used for the purpose of distinguishing or so as to distinguish the wares of the Applicant therefor from the wares of the Opponent." The third ground is that the applied for trade-mark is not registrable because it is "....either clearly descriptive or deceptively misdescriptive of the character or quality of the wares in association with which it is proposed to be used."
The fourth ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(3) of the Act because, as of the applicant's filing date, the applied for trade-mark was confusing with the trade-mark F.U.N. GEAR previously used in Canada by the opponent in association with clothing. The fifth ground is that the applicant's trade-mark is not distinctive because it is confusing with the opponent's trade-mark.
The applicant filed and served a counter statement. As its evidence, the opponent filed the affidavit of Herbert Schnapp. As its evidence, the applicant filed the affidavits of Nadia Cerantola and Josée Marcotte and two affidavits of Louise N. Gendron. Only the applicant filed a written argument and no oral hearing was conducted.
The second and third grounds of opposition were not pleaded in sufficient detail to allow the applicant to reply to them and are therefore contrary to Section 38(3)(a) of the Act. In other words, neither of those grounds includes supporting allegations of fact which would allow the applicant to know the case it had to meet. The second and third grounds are not proper grounds of opposition and are therefore unsuccessful.
The success of the first ground of opposition is contingent on a finding of confusion between the applicant's mark and the opponent's trade-mark F.U.N. GEAR. Therefore, a consideration of the issue of confusion between those two marks in respect of the fourth ground of opposition will effectively decide the first ground as well.
As for the fourth ground of opposition, the opponent has evidenced use of its trade-mark F.U.N. GEAR for clothing prior to the applicant's filing date. The opponent has also evidenced non-abandonment of its mark as of the applicant's advertisement date. The onus or legal burden therefore falls on the applicant to show no reasonable likelihood of confusion between the marks at issue. In applying the test for confusion set forth in Section 6(2) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set forth in Section 6(5) of the Act. The material time for considering the circumstances respecting that issue is as of the applicant's filing date in accordance with the wording of Section 16(3) of the Act.
As for Section 6(5)(a) of the Act, the word "gear" is descriptive when used in association with clothing since it means, among other things, "clothing, garments, movable property, goods, equipment, paraphernalia" (see Webster's New Collegiate Dictionary). The second Gendron affidavit evidences the state of the trade-marks register respecting trade-marks which include the word "gear" for clothing as well as applications for such trade-marks. Most of the registrations and applications located by Ms. Gendron include a disclaimer to the word "gear" which confirms its non-distinctive status in relation to clothing.
The applicant's trade-mark IN GEAR is inherently weak since it refers to "gear" or clothing that is fashionable or "in." The applicant's trade-mark might also be perceived as describing the state of connection or engagement between two or more gears. Since the present application was filed on the basis of proposed use, the applicant's trade-mark was not known at all in Canada as of the applicant's filing date.
The opponent's trade-mark F.U.N. GEAR is also inherently weak since it refers to "gear" or clothing that is "fun." The Schnapp affidavit establishes that the opponent has sold clothing items in association with its trade-mark prior to the applicant's filing date but Mr. Schnapp did not provide sales figures for particular clothing items. Appended to his affidavit are photocopies of invoices covering sales of F.U.N. GEAR clothing to one customer in Montreal. Given the modest level of those sales, I can only conclude that the opponent's mark had become known to a minor extent in the Montreal area as of the material time.
The length of time the marks have been in use favors the opponent. Although the Schnapp affidavit is lacking in precision, it appears that the wares of the parties are similar. Presumably the trades of the parties are, or could be, similar. The applicant submitted that it only sells its wares through its own stores and that therefore the channels of trade of the parties cannot overlap. However, that fact is irrelevant in the present case since the applicant's statement of wares is not restricted to any particular trade channel.
As for Section 6(5)(e) of the Act, I consider that there is a fair degree of resemblance between the marks at issue in all respects. However, that resemblance arises primarily because both marks include the non-distinctive word "gear" as their second component.
The applicant contends that a surrounding circumstance in the present case which lessens the effect of any degree of resemblance between the marks is the state of the register evidence introduced by the second Gendron affidavit. State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace: see the opposition decision in Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R.(3d) 432 and the decision in Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R.(3d) 205 (F.C.T.D.). Also of note is the recent decision in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R.(3d) 349 (F.C.A.) which is support for the proposition that inferences about the state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located.
As noted, the second Gendron affidavit evidences the state of the register respecting trade-marks incorporating the word "gear" and registered for clothing. Ms. Gendron conducted a computer search of the trade-marks data base and the results of her search are admissible. Those results must be given diminished weight, however, because Ms. Gendron did not provide representations of the design marks located during her search. Nevertheless, her search did reveal a large number of registered and applied for trade-marks incorporating the word "gear" for clothing as of the applicant's filing date. Thus, I am able to infer that at least some of those marks were in use at that time and that consumers would have been accustomed to seeing such marks in the marketplace. They would therefore have been more likely to differentiate such marks on the basis of their other components. Such a conclusion is even more likely in view of the non-distinctive nature of the word "gear" when used with clothing.
The applicant's evidence also includes the Marcotte affidavit which evidences two purchases of wares bearing third party GEAR marks on December 10, 1991. However, given that those purchases were made well after the material time, they are of limited relevance respecting the issue at hand.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my conclusions above, and particularly in view of the inherent weakness of the marks at issue, the descriptive nature of the common component "gear", the minimal reputation associated with the opponent's mark and the common use of the word "gear" by other traders as evidenced by the state of the register, I find that the applicant has satisfied the onus on it to show that its mark is not confusing with the opponent's mark. The fourth ground of opposition is therefore unsuccessful. It therefore follows that the first ground of opposition is also unsuccessful.
As for the fifth ground of opposition, it essentially turns on the issue of confusion between the marks of the parties, the only difference being that the material time is later, namely the filing of the opposition. Given that the applicant's case is, if anything, stronger as of that later date, I find that the marks are not confusing for the reasons discussed above. Consequently, the fifth ground is also unsuccessful.
In view of the above, I reject the opponent's opposition.
DATED AT HULL, QUEBEC, THIS 29th DAY OF April , 1994.
David J. Martin,
Member,
Trade Marks Opposition Board.