IN THE MATTER OF AN OPPOSITION by Jean Couzon S.A. to application No. 767,021 for the trade-mark CUISINOX & Design filed by 155686 Canada Inc.
On October 24, 1994, the applicant, 155686 Canada Inc., filed an application to register the trade-mark CUISINOX & Design, a representation of which appears below, based upon proposed use of the trade-mark in Canada by itself or through a licensee or by itself and through a licensee in association with:
“Dinnerware, namely china dinnerware, plastic dinnerware, ceramic dinnerware, plates, cups, saucers, platters, pots, pans, colanders, canisters, cutlery, spatulas, gravy boats, woks, trays, carving knives, cleavers, carving forks, skimmer, pestles, poachers, skillets, tureens, strainers, nut crackers, peelers, tongs, napkin holders, corers, parers, mashers, presses, grinders, moulds, ladles, slicers, beaters, strainers, sifters, jars, pitchers, carafes, graters, kettles, pressure cookers, can openers, cruet sets, covers for aforesaid, pots and pans, frypans, coffee‑makers, creamers, sugar bowls, serving trays, ice buckets, roasters, glasses.”
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The present application was advertised for opposition purposes in the Trade-marks Journal of August 23, 1995 and the opponent, Jean Couzon S.A., filed a statement of opposition on October 3, 1995, a copy of which was forwarded to the applicant on November 17, 1995. The applicant served and filed a counter statement on December 18, 1995. The opponent and the applicant elected not to submit evidence in chief pursuant to Rules 41(1) and 42(1) of the Trade-marks Regulations. However, the opponent requested and was granted leave pursuant to Rule 44(1) of the Regulations to file the affidavit of Sylvie Lafrance as further evidence in this opposition. Ms. Lafrance was cross-examined on her affidavit, the transcript of the cross-examination forming part of the opposition record. Neither party submitted a written argument and both parties were represented at an oral hearing.
The opponent has alleged the following grounds of opposition:
1. The applicant's application does not comply with Section 30 of the Trade-marks Act in that:
a) the applicant has already used its trade-mark in Canada, in whole or in part;
b) the applicant has never had the intention of using its trade-mark in Canada or has abandoned its mark, in whole or in part;
c) it is false that the applicant has said that it is satisfied that it is entitled to use the trade-mark in Canada, having regard to the allegations set forth in the statement of opposition;
2. The applicant is not the person entitled to registration of the trade-mark CUISINOX & Design in that:
a) at the date of filing the present application, as well as at any other relevant date, the applicant’s trade-mark was confusing with the trade-mark CUISINOX previously used and made known in Canada by the opponent or its predecessors-in-title in association with its wares and business of kitchenware, cutlery, dishes and other related accessories;
b) the present application
i) does not conform to Section 30 of the Trade-marks Act;
ii) the applicant’s mark is not a proposed mark but is a mark which has been used or abandoned, as the case may be;
contrary to the introduction the Subsection 16(3) of the Act;
3. The applicant's trade-mark is not distinctive of the wares and services of the applicant nor is it adapted so to distinguish them:
a) having regard principally to the adoption, use, making known and registration of its notorious marks of which the opponent is the owner;
b) as a result of its transfer, there existed rights in two or more persons to the use of the trade-mark and these right have been exercised by such persons, contrary to Section 48 of the Trade-marks Act;
c) the applicant has permitted third parties to use the trade-mark in Canada, and in fact such third parties have used the mark, outside the framework of the legislative provisions controlling the use under license, contrary to Section 50 of the Act.
As a preliminary matter, the applicant submitted at the oral hearing that the activities of the opponent’s agents and, in particular, of Ms. Lafrance in approaching the applicant to obtain information concerning the applicant’s use of its trade-mark was contrary to Section 3.02.01 (h) of the Code of Ethics for attorneys in the province of Quebec in that Ms. Lafrance was communicating with the applicant without the applicant’s lawyer being present. On the other hand, the agent for the opponent submitted that Robic, the agent of record for the opponent, is a firm of patent and trade-mark agents and not a firm of lawyers. If indeed there were a breach of the Code of Ethics for attorneys in Quebec, as alleged by the applicant’s agent, I would expect that the applicant’s agents would have referred the matter to the attention of the Barreau du Québec. Further, I would note that there are no provisions in the Trade-marks Act whereby the Registrar has control over the ethical conduct of trade-mark agents.
As no evidence has been furnished by the opponent relating to the non-entitlement ground set forth in paragraph 2. a of the statement of opposition, the opponent has failed to meet the initial burden upon it under Subsections 16(5) and 17(1) of the Trade-marks Act of showing that it or its predecessors-in-title had previously used or made known its trade-mark CUISINOX in Canada and that it had not abandoned its trade-mark in this country as of the date of advertisement of the present application [August 23, 1995]. I have therefore rejected this ground of opposition. Likewise, I have dismissed the non-distinctiveness ground for failure of the opponent to meet its evidential burden by submitting evidence to substantiate the facts being relied upon in support of this ground.
With respect to the first ground of opposition, the legal burden is upon the applicant to show that its application complies with Section 30 of the Trade-marks Act. There is, however, an initial evidential burden on the opponent to adduce sufficient evidence which, if believed, would support the truth of the allegations relating to the 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]. To meet the evidential burden upon it in relation of a particular issue, the opponent must adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support that issue exist [see John Labatt Limited v. The Molson Companies Limited, 30 C.P.R. (3d) 293, at p. 298]. Further, the material time for considering the circumstances respecting the issue of non-compliance with Section 30 of the Act is the filing date of the present application [see Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R.(3d) 469, at p. 475].
The opponent has alleged that the applicant had, as of the filing date of the present application, used its trade-mark CUISINOX & Design in Canada or, in the alternative, that the applicant never had the intention of using its trade-mark in Canada or has abandoned its mark. Initially, the opponent submitted at the oral hearing that the specimens filed by the applicant confirm that the applicant was using the trade-mark CUISINOX & Design in Canada as of the filing date of its proposed use application. However, the specimens submitted by the applicant appear to be photocopies of advertising or promotional materials and therefore do not establish that the applicant was using the trade-mark CUISINOX & Design in Canada within the scope of Subsection 4(1) of the Trade-marks Act. Moreover, it would appear that the specimens were filed by the applicant in response to the Examiner’s Report of February 21, 1995 and therefore do not show that the applicant’s mark was in use as of the filing date of the present application [October 24, 1994].
The opponent further submitted that the question and response at line 10 of page 52 of the transcript of the Lafrance cross-examination pointed to the applicant having commenced use of its trade-mark prior to filing the present application. However, the assertion by Ms. Lafrance that she was informed by Léo Cavalière that the applicant had been using its trade-mark for about two years as of November 18, 1996 does not establish that the applicant was using the trade-mark CUISINOX & Design in Canada prior to October 24, 1994. Finally, the opponent argued that the Lafrance affidavit and the accompanying exhibits, together with the transcript of her cross-examination, establish that the applicant was using the trade-mark CUISINOX & Design in Canada as a distributor and therefore any use of the trade-mark accrued to the benefit of a third party located in Korea. I disagree. The evidence of record is, in my view, consistent with the applicant being the source of CUISINOX & Design kitchenware sold by it in Canada and with the applicant being the owner of the trade-mark CUISINOX & Design in this country. In view of the foregoing, I have dismissed the first two of the Section 30 grounds of opposition.
The third of the Section 30 grounds is based on Subsection 30(i) of the Act, the opponent asserting that the applicant could not have been satisfied that it was entitled to use the trade-mark in Canada in view of the allegations set forth in the statement of opposition. However, no evidence has been furnished by the opponent to show that the applicant could not have been satisfied that it was entitled to use its trade-mark CUISINOX & Design in Canada. Moreover, to the extent that the Subsection 30(i) issue is founded upon allegations set forth in the remaining grounds of opposition, the success of this aspect of the Section 30 ground would have been contingent upon a finding that the trade-mark CUISINOX & Design is not distinctive or the applicant is not the person entitled to registration of the trade-mark CUISINOX & Design, as alleged in those grounds [see Consumer Distributing Co. Ltd. v. Toy World Ltd., 30 C.P.R. (3d) 191, at p. 195; and Sapodilla Co. Ltd. v. Bristol-Myers Co., 15 C.P.R. (2d) 152, at p. 155]. However, the non-distinctiveness ground has been dismissed, as has the non-entitlement ground which is based inter alia on the opponent’s alleged prior use or making known of its trade-mark CUISINOX in Canada. Furthermore, the Section 30 grounds do not relate to the applicant being satisfied as to its entitlement to use its trade-mark CUISINOX & Design in Canada. I have therefore rejected this ground.
The only remaining ground to be considered relates to the applicant’s entitlement to registration which is founded on the applicant’s application not being in compliance with Section 30 and therefore contrary to the preamble to Subsection 16(3) of the Trade-marks Act. Having rejected the Section 30 grounds, this ground of opposition is also unsuccessful.
Having been delegated by the Registrar of Trade-marks by virtue of Subsection 63(3) of the Trade-marks Act, I reject the opponent’s opposition pursuant to Subsection 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS 30th DAY OF SEPTEMBER, 1999.
G.W. Partington,
Chairperson,
Trade-marks Opposition Board.