LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2012 TMOB 97
Date of Decision: 2012-05-24
IN THE MATTER OF AN OPPOSITION by Horizon Manufacturing Inc. to application No. 1,363,294 for the trade-mark LEGACY VALUING TRADITION & Design in the name of Spectrum Feed Services Ltd.
File Record
[1] On September 5, 2007, Spectrum Feed Services Ltd. filed an application to register the trade-mark LEGACY VALUING TRADITION & Design (which I will refer to simply as LEGACY VALUING TRADITION), shown below:
The application is based on proposed use in Canada in association with
pet food and food for dogs and cats.
[2] The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated April 2, 2008 and was opposed by Horizon Manufacturing Inc. on August 29, 2008. The Registrar forwarded a copy of the statement of opposition to the applicant on September 30, 2008, as required by s.38(5) of the Trade-marks Act, R.S.C. 1985, c. T-13. The applicant responded by filing and serving a counter statement generally denying the allegations in the statement of opposition. The opponent was subsequently granted leave to file an amended statement of opposition: see the Board ruling dated May 7, 2009.
[3] The opponent’s evidence consists of the affidavit of Jason Bailey. Mr. Bailey was cross-examined on his affidavit, the transcript thereof and answers to undertakings forming part of the evidence of record. The applicant’s evidence consists of the affidavit of Sina Giugno. Both parties submitted a written argument and both were represented at an oral hearing held on April 26, 2012.
Statement of Opposition
[4] The opponent pleads that it is the owner of the registered trade-mark HORIZON LEGACY (registration No. TMA716,444) and the trade-mark LEGACY which marks it has used since at least as early as September 1, 2007 in association with
pet food, animal food for dogs, cats and other domesticated household pets; pet treats.
1. The first ground of opposition, pursuant to s.30 [more particularly, s.30(i)] of the Trade-marks Act, alleges that the applicant could not have been satisfied that it was entitled to use the applied for mark in view of the opponent’s prior use of its marks.
2. The second ground, pursuant to s.12(1)(d) of the Act, alleges that the applied for mark is not registrable because it is confusing with the opponent’s registered mark HORIZON LEGACY.
3. The third ground, pursuant to s.16(3), alleges that the applicant is not entitled to register the applied for mark because, at the date of filing of the subject application, it was confusing with (i) the opponent’s marks HORIZON LEGACY and LEGACY
previously used in Canada [pursuant to s.16(3)(a)] and (ii) the opponent’s application for HORIZON LEGACY [pursuant to s.16(3)(b)].
4. The fourth ground alleges, pursuant to s.2, that the applied for mark is not adapted to distinguish the applicant’s wares from those of the opponent.
[5] The first ground of opposition may be rejected forthwith as the applicant has not pleaded any facts to support a s.30(i) ground of opposition: see Sapodilla Co. Ltd. v. Bristol‑Myers Co. (1974), 15 CPR (2d) 152 (TMOB) at 155 and Canada Post Corporation v. Registrar of Trade‑marks (1991), 40 CPR (3d) 221.
[6] The second branch of the third ground of opposition requires that the opponent’s application be pending as of the date of advertisement of the applied for mark: see s.16(4) of the Act. In the instant case, HORIZON LEGACY was registered on June 12, 2008, while the date of advertisement of the applied for mark was April 2, 2008. As the application for HORIZON LEGACY was pending as of April 2, 2008, the ground of opposition pursuant to s.16(3)(b) is valid.
Opponent’s Evidence
Jason Bailey
[7] Mr. Bailey identifies himself as an executive of the opponent company. The opponent has been making various forms of dog food since the spring of 2006 and in late 2006 started production on a line of cat food. Initially, in 2006, the opponent sold its dog and cat food under the brand HORIZON COMPLETE. In the summer of 2007, the opponent launched a new grain-free product under the brand HORIZON LEGACY. Examples of the opponent’s packaging are shown in Exhibits E, F, and G of Mr. Bailey’s affidavit. He notes (and I agree) that the word LEGACY “is clearly the most distinctive feature on each of the products.” The opponent promoted its new products at trade-shows and to its distributers via fliers.
[8] The opponent sells its products through pet food distributers as well as directly to pet stores. Exhibit O lists a large number of retailers across Canada selling the opponent’s products. Marketing expenses for Canada for the HORIZON COMPLETE and HORIZON LEGACY products, for the three year period 2007 – 2009, were about $395,000, half of which were for HORIZON LEGACY products. The opponent’s HORIZON LEGACY products have been recognized for excellence in the pet food industry. From September 1, 2007 to October 7, 2009, the HORIZON LEGACY pet food line has generated about $1.76 million in puppy and dog food sales, and about $177,000 in cat food sales.
[9] Mr. Bailey has attached printouts from an Internet website showing advertising for dog food under the applied for mark. The applicant Spectrum Feed Services Ltd. is not mentioned in any of the printouts and it is not clear who is selling the product. Mr. Bailey states that “it would appear that the source selling LEGACY VALUING TRADITION is The Great Canadian Petfood Co. . . . .” From my review of the exhibit material, I would have postulated that an entity doing business as Legacy Pet Food is the source. In any event, it appears that a LEGACY VALUING TRADITION product is available to consumers from numerous retail stores. Mr. Bailey has received e-mails from consumers and retailers perplexed about the source of the LEGACY VALUING TRADITION product. They are questioning if the opponent is affiliated with the product: see Exhibits KK to OO of Mr. Bailey’s affidavit.
[10] At cross-examination, Mr. Bailey undertook to provide the original packaging in which the opponent sold its HORIZON LEGACY products. What was provided was a photocopy of the front of the packaging, the top portion of which is reproduced below:
In my view, the public would perceive LEGACY per se being used as a trade-mark: see Nightingale Interloc v. Prodesign Ltd. (1984), 2 CPR(3d) 535 at 538 (TMOB). Of course, a party is entitled to use multiple marks on its wares.
Applicant’s Evidence
Sina Giugno
[11] Ms. Giugno identifies herself as a legal assistant with the firm representing the applicant. Her affidavit serves to introduce into evidence, by way of exhibits, (a) a copy of the opponent’s trade-mark application No.1,427,890 for the mark LEGACY and (b) the file wrapper for above-mentioned application.
[12] I note that the opponent’s application for the mark LEGACY was filed on February 13, 2009 and is based on use of the mark in Canada since September 1, 2007 in association with “pet food and pet treats.” I also note that the Examination Section of the Canadian Intellectual Property Office considered that the mark LEGACY was confusing with the applicant’s mark which is the subject of the present proceeding. As the subject application for the mark LEGACY VALUING TRADITION has an earlier filing date (September 5, 2007) than the LEGACY application, the Examination Section objected that the opponent was not entitled to register the mark LEGACY: see the Examination Section letter dated September 1, 2009. If the opponent is successful in the present proceeding and the application for LEGACY VALUING TRADITION is refused, then presumably the Examination Section would withdraw its objection.
Date of First Use of Opponent’s Marks
[13] The applicant questions the date of first use of the opponent’s marks, noting that (i) the statement of opposition pleads September 1, 2007 as the opponent’s date of first use, (ii) the earliest date for invoices showing the mark LEGACY (comprising Exhibit N of Mr. Bailey’s affidavit) is September 10, 2007 rather than September 1, 2007, and (iii) on cross-examination, Mr. Bailey’s agent advised him not to answer a question regarding the commercial transaction which forms the basis for the date of first use claimed for the mark LEGACY in application No.1,427,890 (referred to by Ms. Giugno, above). The applicant submits that I should draw a negative inference from Mr. Bailey’s refusal to answer, the inference being that the opponent did not begin to use its marks until after September 5, 2007.
[14] The date of first use of the opponent’s mark is, according to the applicant, important to the applicant’s theory of the present proceeding, found at pages 3 and 4 of its written argument:
. . . the Opponent’s evidence fails to establish any use of any relevant trademark[sic] prior to the Applicant’s said filing date [September 5, 2007]. Classically, the Section 16(3) ground of opposition fails entirely.
. . . . .
The Opponent is rather attempting to argue an action for infringement and/or passing off under the guise of bringing an opposition.
The opponent, for its part, notes that (i) the opponent has evidenced a “first Account and Order Form” (Exhibit L of Mr. Bailey’s affidavit), dated August 27, 2007, showing an order for LEGACY dog food and for LEGACY cat food, (ii) Mr. Bailey refused to answer the question at cross-examination concerning application No.1,427,890 because Mr. Bailey makes no reference to the application in his affidavit.
[15] I agree with the opponent that Mr. Bailey was not required to answer the narrowly phrased question put to him at cross-examination concerning application No.1,427,890. The application does not support any ground of opposition and is not referenced by Mr. Bailey in his affidavit. I therefore draw no negative inference from his refusal to answer. On a fair review of the evidence as a whole, I see no reason not to accept Mr. Bailey’s sworn statement that the opponent has been using its marks since September 1, 2007.
[16] The applicant is correct that the third ground of opposition must fail if the opponent cannot establish use of its marks prior to September 5, 2007. However, even if I were to accept the applicant’s arguments concerning the date of first use of the opponent’s marks, then the second and fourth grounds of opposition, which are assessed at later material dates (see paragraph 19, below), are still well founded. With respect to the applicant’s submissions that the opponent should be pursuing an action for infringement or passing off (which are in any event beyond the jurisdiction of this tribunal), it is not clear how the opponent would do so given an absence of evidence showing that the applicant has used or is using the applied for mark.
Main Issue and Material Dates
[17] The determinative issue in this proceeding is whether the applied for mark LEGACY VALUING TRADITION is confusing with the opponent’s mark LEGACY or its registered mark HORIZON LEGACY. The legal onus is on the applicant to show that there would be no reasonable likelihood of confusion, within the meaning of s.6(2) of the Act, shown below:
The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services . . . associated with those trade-marks are manufactured . . . or performed by the same person, whether or not the wares or services . . . are of the same general class.
[18] Thus, s.6(2) does not concern the confusion of the marks themselves, but confusion of goods or services from one source as being from another source. In the instant case, the question posed by s.6(2) is whether there would be confusion of pet food sold by the applicant under its mark LEGACY VALUING TRADITION as being sold, licensed or endorsed by the opponent.
[19] The material dates to assess the issue of confusion are (i) the date of decision, with respect to the ground of opposition alleging non-registrability: see Andres Wines Ltd. and E & J Gallo Winery (1975), 25 CPR (2d) 126 at 130 (FCA) and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 CPR (3d) 413 at 424 (FCA); (ii) the date of filing of the application, in this case September 5, 2007, with respect to the ground of opposition alleging non-entitlement: see s.16(3)(a) of the Trade-marks Act; (iii) the date of opposition, in this case, August 29, 2008, in respect of the ground of opposition alleging non-distinctiveness: see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 CPR(2d) 126 at 130 (FCA) and Clarco Communications Ltd. v. Sassy Publishers Inc. (1994), 54 CPR(3d) 418 (FCTD).
Test for Confusion
[20] The test for confusion is one of first impression and imperfect recollection, as noted by Mr. Justice Denault in Pernod Ricard v. Molson Breweries (1992) 44 CPR (3d) 359 at 369 (FCTD):
The test of confusion is one of first impression. The trade marks should be examined from the point of view of the average consumer having a general and not a precise recollection of the earlier mark. Consequently, the marks should not be dissected or subjected to a microscopic analysis with a view to assessing their similarities and differences. Rather, they should be looked at in their totality and assessed for their effect on the average consumer as a whole.
[21] Factors to be considered, in making an assessment as to whether two marks are confusing, are “all the surrounding circumstances including” those specifically mentioned in s.6(5)(a) to s.6(5)(e) 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 and all relevant factors are to be considered. Further, all factors do not necessarily have equal weight as 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 CPR(3d) 308 (FCTD). However, as noted by Mr. Justice Rothstein in Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), 92 CPR(4th) 361 (SCC), although the degree of resemblance is the last factor cited in s.6(5), it is the statutory factor that is often likely to have the greatest effect in deciding the issue of confusion.
Consideration of s.6(5) Factors
[22] The opponent’s mark HORIZON LEGACY has a fair degree of inherent distinctiveness as there is no connection between the words “horizon” or “legacy” and the opponent’s wares. However, as “legacy” may connote a gift or something that confers a benefit, the inherent distinctiveness of the mark is lessened to some degree by its laudatory connotation. Similarly, the applied for mark LEGACY VALUING TRADITION has a fair degree of inherent distinctiveness, which distinctiveness is lessened to some degree by the laudatory connotation of something of value. The fanciful script included in the applied for mark does little to add to the inherent distinctiveness of the mark. That is, the design features of the mark are intrinsic with the words and it is the words which form the essential part of the mark: in this regard, see Canadian Jewish Review Ltd. v. The Registrar of Trade Marks (1961) 37 CPR 89 (ExC). Thus, the applied for mark is not inherently more distinctive than the opponent’s marks. The opponent’s marks LEGACY and HORIZON LEGACY would not have acquired more than a minimal reputation at the earliest material date. However, the opponent’s marks would have acquired some reputation at the later material date August 29, 2008 and a fair reputation at the latest material date, through sales and promotion of the opponent’s wares under its marks. Even assuming that use of the mark LEGACY VALUING TRADITION, referred to in the opponent’s evidence, inured to the benefit of the applicant, I could not infer that the applied for mark would have acquired more than a minimal reputation at any material date. Accordingly, the first factor in s.(6)(5), which is a combination of inherent distinctiveness and acquired distinctiveness, favours the opponent, particularly with respect to the mark LEGACY, at the later material dates.
[23] The length of time that the marks in issue have been in use favours the opponent at the later material dates. In this regard, the opponent has evidenced use of its marks since at least as early as September 10, 2007 while the applicant has not evidenced any use of its mark. In this regard, I am not prepared to infer that use of the mark LEGACY VALUING TRADITION, indicated in the opponent’s evidence, inures to the benefit of the applicant as the source of the wares is uncertain. The parties’ wares are essentially the same and, in the absence of evidence to the contrary, I assume that the parties would market their wares through the same channels of trade. Thus, the third and fourth factors in s.6(5) favour the opponent.
[24] There is necessarily a fair degree of resemblance between the marks in issue as the applicant has incorporated a dominant component of the opponent’s mark HORIZON LEGACY, and the whole of the opponent’s mark LEGACY, as the dominant component of the applied for mark. Further, the term LEGACY forms the first portion of the applied for mark, and it is the first portion of a mark that is usually considered the more important for the purposes of distinction: see Conde Nast Publications Inc. v. Union Des Editions Modernes (1979) 26 CPR(2d) 183 at 188 (FCTD). Thus, the last and most important factor in s. 6(5) favours the opponent.
[25] I am also permitted to take into account, as a surrounding circumstance, the manner of use of the parties’ marks: see United Artists Pictures Inc. v. Pink Panther Beauty Corp. (1998), 23 CPR(3d) 216 at paras. 36-37 (FCA). In doing so, I note that the opponent’s registered mark HORIZON LEGACY, as actually used, gives prominence to the second component LEGACY. Such manner of use tends to increase the resemblance between the opponent’s registered mark and the applied for mark.
[26] The opponent’s evidence of consumers and retailers questioning whether the opponent is the source of the LEGACY VALUING TRADITION product, (which I consider to be admissible hearsay) is another surrounding circumstance that supports, although is in no way conclusive of, the opponent’s position that confusion between the parties’ marks is likely.
Disposition
[27] In view of the foregoing, I find that at all material times the applicant has not met the legal onus on it to show, on a balance of probabilities, that there is no reasonable likelihood of confusion between the applied for mark LEGACY VALUING TRADITION and the opponent’s mark LEGACY.
[28] Accordingly, the application is refused. This decision has been made pursuant to a delegation of authority under s.63(3) of the Trade-marks Act.
___________________
Myer Herzig
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office