IN THE MATTER OF OPPOSITIONS by Canadian Tire Corporation, Limited to application Nos. 754,032 and 754,033 for the trade-marks THE BEST PARTS IN AUTO PARTS and YOUR DISCOUNT PARTS SUPERMART filed by Autozone, Inc. (now standing in the name of Speedbar, Inc.)
On May 6, 1994, the applicant, Autozone, Inc. filed an application to register the trade-marks THE BEST PARTS IN AUTO PARTS (hereinafter “the first application” or “the first case”) and YOUR DISCOUNT PARTS SUPERMART (hereinafter “the second application” or “the second case”) for the following services: “Retail automotive parts store services”. The applications were based on use and registration in the United States under nos. 1,478,070, and 1,512,104 and proposed use in Canada. The first application contains disclaimers to the word BEST, the word PARTS and the words AUTO PARTS. The second application contains disclaimers to the words DISCOUNT, PARTS and SUPERMART. The first application was advertised for opposition purposes on December 25, 1996, and the second was advertised on March 20, 1996. The opponent, Canadian Tire Corporation, Limited, filed a statement of opposition against the first application on February 12, 1997, and a statement of opposition against the second application on May 17, 1996.
The applicant filed and served a counter statement in each opposition. As its evidence in the first case, the opponent filed the affidavit of Richard Goulet. Mr. Goulet was cross-examined on his affidavit and the cross-examination transcript forms part of the record of these proceedings. The applicant filed the affidavits of Donald R. Rawlins, Dominique Hussey and Glenda O’Brien. Mr. Rawlins was cross-examined on his affidavit and his cross-examination transcript, together with Exhibit No. 1, form part of the record in these proceedings. As its evidence in the second case, the opponent submitted the affidavits of Sandra Nadeau and Timothy Price. The applicant filed the affidavit of Harry L. Goldsmith. Mr. Goldsmith was cross-examined on his affidavit and his cross-examination transcript, together with Exhibit No. 1, form part of the record of these proceedings. Both parties filed a written argument in each case and an oral hearing was conducted at which both parties were represented in each case. On May 13, 1999, the assignment of both of the applicant’s marks to Speedbar, Inc. (a Nevada Corporation) was recorded on the register.
Both cases include grounds of opposition based on non-registrability pursuant to s.12(1)(b) of the Trade-Marks Act, R.S.C. 1985, c. T-13 (hereinafter “the Act”) and non-distinctiveness pursuant to s. 38(2)(d) and s.2 of the Act. As no facts have been asserted by the opponent in support of its non-distinctiveness grounds, these grounds must be considered as being limited to the allegations of fact set forth in the s.12(1)(b) ground. Therefore, the determination of the s.12(1)(b) issue will effectively decide both grounds of opposition in each case. The remaining grounds of opposition in the second case include: 1) non-compliance with s.30(a) of the Act and 2) non-compliance with s.30(i) of the Act. The s.30(a) ground of opposition was withdrawn at the oral hearing.
Considering initially the s.12(1)(b) grounds of opposition, s. 12(1)(b) of the Act provides as follows:
12. (1) Subject to section 13, a trade‑mark is registrable if it is not
(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
In determining whether the trade-marks THE BEST PARTS IN AUTO PARTS and YOUR DISCOUNT PARTS SUPERMART are clearly descriptive (or deceptively misdescriptive) of the character or quality of retail automotive parts store services, the trade-marks must not be dissected into their component elements and carefully analysed, but rather must be considered in their entirety as a matter of immediate impression from the point of view of the average consumer of those services (see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks, 40 C.P.R. (2d) 25, at pp. 27-28 and Atlantic Promotions Inc. v. Registrar of Trade Marks, 2 C.P.R. (3d) 183, at p. 186)). The material date for considering the s. 12(1)(b) ground of opposition is the date of decision (see Lubrication Engineers, Inc. v. The Canadian Council of Professional Engineers, 41 C.P.R. (3d) 243 (F.C.A.)). While the legal burden is upon the applicant to show that its trade-marks are registrable, there is an initial evidential burden on the opponent in respect of this ground to adduce sufficient evidence which, if believed, would support the truth of its allegations that either or both of the trade-marks are clearly descriptive or deceptively misdescriptive of the character or quality of the applicant’s retail automotive parts store services.
In the present case, the applicant’s disclaimers of the words “BEST”, “PARTS” and “AUTO PARTS” from the first trade-mark and “DISCOUNT”, “PARTS” and “SUPERMART” from the second trade-mark are arguably admissions by the applicant that these words are either clearly descriptive of the character or quality of such services, or otherwise are common to the trade or are the name of such services (see Andres Wines Ltd. v. Les Vins La Salle Inc., 3 C.P.R. (3d) 272, at p. 275). However, notwithstanding that all of these words may each be separately descriptive and not registrable, the issue with respect to this ground is whether the resultant trade-marks THE BEST PARTS IN AUTO PARTS and YOUR DISCOUNT PARTS SUPERMART as a whole are banned from registration. In making this determination, the question to ask is what meaning do the terms THE BEST PARTS IN AUTO PARTS and YOUR DISCOUNT PARTS SUPERMART convey to the average consumer of retail automotive parts store services?
With respect to the first case, the applicant submits that the trade-mark THE BEST PARTS IN AUTO PARTS could have a number of different connotations given that the word “parts” is used twice and has a number of different meanings. For example, the applicant argues that the trade-mark may suggest to one consumer that the applicant’s stores are the best place to go to buy auto parts while suggesting to another that the applicant’s stores sell the best auto parts. Further, the applicant argues that the word “best” is subjective and could mean different things to different people such as quality, price, proximity, selection or service. With respect to the second case, the applicant argues that the word YOUR adds a subjective element to the mark YOUR DISCOUNT PARTS SUPERMART as it implies a consumer would choose the services for themselves but does not indicate why. Such a choice, the applicant contends, could be based on the selection, the quality, the price, the service or the proximity of the services offered. The applicant submits that the fact that both marks may allude to some aspect of the services offered by the applicant does not render the trade-marks as a whole clearly descriptive for the purposes of s.12(1)(b) of the Act. Relying on the decision in Home Juice Company v. Orange Maison Limitee (1967), 53 C.P.R. 71 at 76 (Ex. Crt.), the applicant submits that trade-marks which are merely suggestive do not offend s.12(1)(b) of the Act.
With respect to the mark THE BEST PARTS IN AUTO PARTS, the applicant points out that the word “service” is not found in the trade-mark, and neither are the words “retail” or “store”. It is therefore the applicant’s submission that if descriptive of anything, the applicant’s mark is descriptive of wares and not of the services provided by the applicant. In making these submissions, the applicant relied on the decisions in Canadian Parking Equipment Ltd. v. Registrar of Trade-Marks (1990), 34 C.P.R. (3d) 154 and Clarkson Gordon v. Registrar of Trade-Marks, 5 C.P.R. (3d) 252 (F.C.T.D).
Further submissions of the applicant regard the failure of the opponent to meet its evidential burden under this ground of opposition for each mark. In this regard, the applicant contends that by disclaiming the right to the use of the words “PARTS”, “AUTO PARTS” and “BEST” in the first case, and the words “DISCOUNT”, “PARTS” and “SUPERMART” in the second case, the applicant is not claiming a monopoly over these common words but merely to the unique phraseologies THE BEST PARTS IN AUTO PARTS and YOUR DISCOUNT PARTS SUPERMART. The applicant argues that the opponent has failed to provide one piece of corroborative evidence in either case which would support the claim that either of the phrases THE BEST PARTS IN AUTO PARTS or YOUR DISCOUNT PARTS SUPERMART are common descriptive phrases used by others providing similar services. Conversely, the applicant submits that it has produced evidence of an exhaustive search of relevant databases to show that the use of the phrase THE BEST PARTS IN AUTO PARTS is unique to the applicant. The applicant has also shown that both of its marks have been used as trade-marks in the U.S., a market which it contends is similar to the Canadian market. It is therefore the applicant’s submission that the registration of the marks would not have the result of denying use of any common descriptive words or phrases used by the relevant industry.
The opponent’s submissions with respect to both cases are almost identical and may be summarized as follows. First, the opponent submits that as a matter of first impression, the trade-mark THE BEST PARTS IN AUTO PARTS indicates to the ordinary consumer of the applicant’s services that its retail services consist of a retail store selling the most desirable automotive parts. With respect to the second case, the opponent submits that as a matter of first impression, the trade-mark YOUR DISCOUNT PARTS SUPERMART indicates to the ordinary consumer of the applicant’s services that its retail services consist of a retail store selling automotive parts at a discount. Second, the opponent argues that the words making up both alleged trade-marks could be used by other traders to describe their retail outlets and therefore should not be monopolized by the applicant. Third, the opponent submits that the applicant has admitted that the trade-marks are clearly descriptive by disclaiming the right to the exclusive use of every word making up the trade-marks except the non-distinctive words “THE” and “”IN” in the first case and the word “YOUR” in the second case. Finally, it is the opponent’s submission that in the first case, the word “BEST” is a laudatory epithet and as such is prima facie descriptive of the services in association with which the mark is used. With respect to the second case, the opponent points to the file history of the U.S. trade-mark application for YOUR DISCOUNT PARTS SUPERMART wherein the mark was initially refused for being “merely descriptive” of the applied for services but then was later allowed after “substantially exclusive and continuous use in commerce” in the U.S. was shown. The opponent submits that since in the present case the application is based upon proposed use in Canada, it cannot proceed in the same fashion as it has in the United States, i.e. under a claim pursuant to s.12(2) of the Act.
In my view, both of the applicant’s marks, as a matter of first impression, are either clearly descriptive or deceptively misdescriptive of the character or quality of the applicant’s services for the following reasons. The relevant portions of the dictionary definitions introduced into evidence by the opponent for each of the words comprising the applicant’s marks provide the following meanings:
Best: the most desirable kind
Part: something less than the whole
component of machine, etc.
an essential, separable piece of a machine
Auto: motor car; automobile
Your: of or belonging to or done by you
Discount: below nominal or usual price; a deduction from the amount or cost
Supermart: large market or trading place
In my view, the fact that certain components of the applicant’s marks may have different connotations is not sufficient to remove them from the ambit of s.12(1)(b) (see Imperial Tobacco Ltd. v. Benson and Hedges (Canada) Inc. (1983), 75 C.P.R. (2d) 115). Given the above dictionary definitions, I consider that the plain and self-evident meaning of the phrase THE BEST PARTS IN AUTO PARTS, when used in association with “retail automotive parts store services”, is that this store sells the most desirable auto parts. With respect to the phrase YOUR DISCOUNT PARTS SUPERMART, I consider that the plain and self-evident meaning of this phrase, when used in association with the applicant’s services, is that the applicant’s store sells automotive parts at a discount.
With respect to the mark THE BEST PARTS IN AUTO PARTS, I find that this case can be distinguished from the decision in Canadian Parking, supra. In Canadian Parking, the applied for mark was AUTOMATIC PARKING DEVICES OF CANADA and was based on use in Canada in association with the following services: “servicing of parking lot and access control equipment, consulting, engineering and design services in connection with installation of parking lot and access control equipment”. In rendering his decision, Justice Jerome stated the following at p.160:
“The word ‘service’ is not found in the application; neither are the words “consulting”, “engineering”, “designing” or “servicing”. As well, the combination of the words actually used in the application appears to be, if not unique, at least unusual. I agree with the Appellant’s submission that this mark, if descriptive of anything, is descriptive of wares and not the services provided by the Appellant and is not, therefore, clearly descriptive of the Appellant’s services within the meaning of s.12(1)(b).”
In the present case, the applied for mark THE BEST PARTS IN AUTO PARTS includes an abbreviated form of the type of service that is provided, i.e. “auto parts” for automotive parts services. Further, I do not consider the mark in the present case to be either unique or unusual. In my view, the word “best” is being used to laud the services in question and the mark as a whole conveys to the prospective purchaser of automotive parts that this store sells what it wants the consumer to believe are the best automotive parts. Finally, although the applicant has shown that its mark is unique to it, has not been used by other traders and has been used extensively in the U.S., these factors are not sufficient, in my view, to render the mark registrable in Canada. I therefore consider the mark THE BEST PARTS IN AUTO PARTS to be either clearly descriptive or deceptively misdescriptive of the applied for services.
With respect to the mark YOUR DISCOUNT PARTS SUPERMART, I consider the U.S. file history of this mark, which was attached as Exhibit A to the Price Affidavit, to be of some interest to the present case, although it does not bear any weight on my decision. In the United States, after having been initially refused for being “merely descriptive” of the applied for services, the YOUR DISCOUNT PARTS SUPERMART mark was later allowed after “substantially exclusive and continuous use in commerce” was shown. In the present case, the applicant could not rely on s.12(2) of the Act for either of its applications because both were based on proposed use in Canada. I would like to add, however, that even though s.12(2) was not available to the applicant in either of the present cases, the applicant may have been able to rely upon s.14(1)(b) of the Act, had that basis been pleaded and had the applicant presented sufficient evidence. Section 14(1)(b) of the Act provides as follows:
14.(1) Notwithstanding section 12, a trade-mark that the applicant or the applicant’s predecessor in title has caused to be duly registered in or for the country of origin of the applicant is registrable if, in Canada,
(b) it is not without distinctive character, having regard to all the circumstances of the case including the length of time during which it has been used in any country.
The evidence of record shows sales of products and services rendered in connection with both of the applicant’s marks in the present cases (and also including the applicant’s marks AUTOZONE and AUTOZONE & Design) in the U.S. ranging between $354,205,000 and $2,691,440,000 per year, between 1987 and 1997. Total advertising expenditures for these same marks have ranged between $9,306,000 and $24,622,000 per year, between 1994 and 1997. Although the Rawlins affidavit also tried to introduce evidence of spillover advertising of the applicant’s marks into Canada, this evidence is of little value as it is primarily hearsay. Had the applicant provided the type of evidence that was submitted in Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 (F.C.A.) and been able to show that its mark had become well known in Canada by means of spillover advertising, this may have been sufficient to satisfy s.14(1)(b) of the Act, even if there was no use in Canada (in this regard, see John Labatt v. Miller Brewing (1996), 70 C.P.R. (3d) 351).
In view of the above, I find both the s.12(1)(b) grounds and non-distinctiveness grounds of opposition to be successful in both cases. With respect to the remaining ground of opposition in the second case, I consider this ground as not having been properly pleaded because the opponent did not set forth sufficient facts to enable the applicant to reply pursuant to s.38(3) of the Act. This ground of opposition is therefore unsuccessful.
Accordingly, and with the authority delegated to me under s.63(3) of the Act, I refuse both of the applicant’s applications.
DATED AT HULL, QUEBEC, THIS 21st DAY OF June, 2001.
C. R. Folz
Member,
Trade-Marks Opposition Board