Trademark Opposition Board Decisions

IN THE MATTER OF AN OPPOSITION

by Mr. Lube Canada Inc. to application No. 1,217,791

for the trade-mark ARE YOU DUE FOR A CHANGE?

filed by Denny’s Lube Centre Inc.                                    

          On May 21, 2004, the applicant, Denny’s Lube Centre Inc., filed an application to register the trade-mark ARE YOU DUE FOR A CHANGE? for the services of a “lube, oil and filter change service centre” based on proposed use in Canada.  The application was amended to include a disclaimer to the word CHANGE and was subsequently advertised for opposition purposes on December 22, 2004.

The opponent, Mr. Lube Canada Inc., filed a statement of opposition on February 18, 2005, a copy of which was forwarded to the applicant on March 10, 2005.  The opponent was subsequently granted leave to amend its statement of opposition pursuant to Rule 40 of the Trade-marks Regulations on June 5, 2006. 

The first ground of opposition is that the applicant’s application does not conform to the requirements of Section 30(a) of the Trade-marks Act because it doesn’t contain a statement in ordinary commercial terms of the proposed services.  The second ground is that the application does not conform to the requirements of Section 30(e) of the Act because the applicant did not intend to use the applied for trade-mark.  The third ground is that the application does not conform to the requirements of Section 30(i) of the Act because the applicant knew it was not the party entitled to registration and therefore could not truthfully make the statement that it was satisfied that it was entitled to use the mark in Canada.

The fourth ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Act because it is confusing with the opponent’s following registered trade-marks:

The fifth 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 registered marks noted above previously used in Canada by the opponent.  The sixth ground 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 mark was confusing with the trade-mark TIME FOR A CHANGE? previously used in Canada by the opponent since July of 2001 and with the trade-mark TIME FOR AN OIL CHANGE? previously used in Canada by the opponent since April of 1992.  The opponent filed applications for those two marks on October 16, 2005 under Nos. 1,276,168 and 1,276,169 respectively and the latter application was registered on September 27, 2006 under No. 673,556.  The seventh ground of opposition is that the applicant’s trade-mark is not distinctive in view of the use by the opponent of its various trade-maks.

The applicant filed and served a counter statement on March 24, 2005.  As its evidence, the opponent submitted an affidavit of John B. Ticknor.  As its evidence, the applicant submitted an affidavit of Tunde Nemeth.  Both parties filed a written argument and an oral hearing was conducted at which both parties were represented.     

The Opponent’s Evidence

In his affidavit, Mr. Ticknor identifies himself as Executive Vice President, Franchise Development of the opponent, Mr. Lube Canada Inc. (“Mr. Lube”).  Mr. Lube operates automotive service centers that specialize in oil changes and a limited number of vehicle maintenance services.  The first store opened in 1976 and Mr. Ticknor states that, as of the date of his affidavit (October 21, 2005), there were 88 stores across Canada.

Mr. Ticknor provides certified copies of six trade-mark registrations and two applications referred to in the statement of opposition.  He states that the opponent uses its trade-marks on store signage, posters, advertisements, coupon books, flyers and its website.  Appended as exhibits to the Ticknor affidavit are sample coupons showing how some of the registered marks are used.  Mr. Ticknor also appends samples of coupons showing current use of the trade-mark TIME FOR AN OIL CHANGE? and use in 1992 and 1997.  He also includes a copy of an advertisement for the mark TIME FOR A CHANGE? which ran in the summer of 2001 and a page from the opponent’s website showing that mark.

Advertising expenditures by the opponent for the period 2002-2004 were in excess of $4 million per year.  Gross revenues for that same period totalled more than $250 million.

 The Applicant’s Evidence

           In her affidavit, Ms. Nemeth identifies herself as an Executive Assistant to the applicant’s trade-mark agent.  She conducted what was essentially a state of the trade-marks register search to locate marks which include the word CHANGE or OIL for oil-related wares or services.  Apart from the opponent’s registrations, Ms. Nemeth located eight registrations standing in the name of seven different owners for trade-marks which include either or both the words CHANGE and OIL for automotive maintenance services.  None of the registered marks located was in the form of a question and none was in the form of a double entendre.

At the oral hearing, the opponent’s agent submitted that, in view of the decision in Cross-Canada Auto Body Supply (Windsor) Ltd. v. Hyundai Auto Canada (2006), 53 C.P.R.(4th) 286 (F.C.A.); affg. (2005), 43 C.P.R.(4th) 21 (F.C.T.D.), the Nemeth affidavit should not be considered because it was sworn by an employee of the applicant’s trade-mark agent.  However, the Cross-Canada case dealt with the application of Rule 82 of the Federal Court Rules to evidence submitted before the Court by a party’s solicitor.  In the present case, the parties are represented by registered trade-mark agents and there is no equivalent provision in the Trade-marks Regulations governing the conduct of such agents.  Furthermore, if there is a remedy available to the opponent in this case, presumably it would have been by way of motion before the Federal Court seeking to substitute a new registered trade-mark agent for the one currently of record as was done in the Cross-Canada case.  Thus, even if there is merit in the opponent’s argument, it would not necessarily mean the removal of the Nemeth affidavit from the record.  Finally, the Nemeth affidavit does not comprise contentious opinion evidence of the type adduced in the Cross-Canada case.  Consequently, I have given full consideration to that affidavit.

The Grounds Of Opposition

The first two grounds do not raise proper grounds of opposition as the opponent did not include any supporting allegations of fact.  The third ground also does not raise a proper ground of opposition.  The mere fact that the opponent may have been aware of the opponent’s trade-marks does not preclude the applicant from honestly making the statement in its application required by Section 30(i) of the Act.  Thus, the first three grounds are unsuccessful.

As for the sixth ground of opposition, there was an initial evidential burden on the opponent to evidence use of its two marks TIME FOR A CHANGE? and TIME FOR AN OIL CHANGE? prior to the applicant’s filing date and non-abandonment of those marks as of the applicant’s advertisement date.  This the opponent has done by means of the Ticknor affidavit.  The sixth ground therefore remains to be decided on the issue of confusion.  Given its greater relevance, that issue will first be assessed in respect of the opponent’s mark TIME FOR A CHANGE?

The material time for considering the issue of confusion respecting a ground based on Section 16(3) of the Act is the applicant’s filing date.  Furthermore, the onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue.  Finally, 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.  

As for Section 6(5)(a) of the Act, the marks at issue are inherently distinctive although both are weak.  The word CHANGE in the context of the parties’ services is descriptive and has been acknowledged as such by the applicant by including a disclaimer to that word in its application.  However, both the applicant’s mark ARE YOU DUE FOR A CHANGE? and the opponent’s mark TIME FOR A CHANGE? are cleverly suggestive which does lend some measure of inherent distinctiveness to both marks.

Since the applicant’s application is based on proposed use, its mark had no acquired reputation in Canada as of the applicant’s filing date.  Although the opponent has evidenced prior and continuous use of its mark, Mr. Ticknor did not provide specific figures regarding the extent of the use of that mark.  However, given the extensive sales and advertising in general by the opponent, I am prepared to conclude that at least some minor portion of that activity related to the trade-mark TIME FOR A CHANGE?  Thus, I am able to conclude that the opponent’s mark had become known in Canada at least to a limited extent.

As for Section 6(5)(b) of the Act, the length of time the marks have been in use favors the opponent.  As for Sections 6(5)(c) and 6(5)(d) of the Act, the services and trades of the parties are the same.

As for Section 6(5)(e) of the Act, there is a fair degree of resemblance between the marks at issue in all respects, particularly in the ideas suggested.  Both marks are clever double entendres referring to change in general and an oil change in particular.

The applicant contends that an important surrounding circumstance in this case is the state of the trade-marks register respecting third party automobile servicing marks which incorporate the work CHANGE.  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 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.

In the present case, the Nemeth affidavit only evidences eight pertinent registrations owned by seven different owners.  Given the limited numbers, it is difficult to infer that more than one or two of these marks are in active use.  Furthermore, as noted earlier, none of the third party marks is structured as a question or a double entendre nor do any of them incorporate the phrase FOR A CHANGE.  At most, the Nemeth affidavit provides some minimal evidence underscoring the fact that the word CHANGE is descriptive of oil change services.

As a further surrounding circumstance, the opponent contended that it is the owner of a family or series of marks comprising phrases which are double entendres and are cleverly suggestive of oil change services.  In accordance with the decision in McDonald's Corp. v. Yogi Yogurt Ltd. (1982), 66 C.P.R.(2d) 101 (F.C.T.D.), in order for the opponent to establish its alleged family or series of marks, it was necessary to evidence more than minimal use of the members of that family.  In the present case, although the opponent’s evidence is not as detailed as it could be, I am prepared to conclude that there has been at least some use of the family members TRY US FOR A CHANGE and HOT CHANGE.  However, there is no evidence of use of the potential family member A GOOD TIME FOR A CHANGE.  Thus, to a very limited extent, the opponent has established the beginnings of a family of cleverly suggestive trade-marks including the word CHANGE for oil change services.  This evidence tends to increase very slightly the likelihood that consumers would confuse the two trade-marks at issue.

In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection.  The onus or legal burden is on the applicant to show no reasonable likelihood of confusion on a balance of probabilities.  That means that if the probabilities favor neither side, I must resolve the issue against the applicant.  In view of my conclusions above, and particularly in view of the resemblance between the marks at issue, the identity of the services and trades, the absence of any reputation for the applicant’s mark and, to a lesser degree, the existence the opponent’s limited family of related marks, I find that the applicant has failed to show on a balance of probabilities that its proposed trade-mark ARE YOU DUE FOR A CHANGE? is not confusing with the opponent’s previously used mark TIME FOR A CHANGE?  The sixth ground of opposition is therefore successful.

As for the fourth ground of opposition, the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark is the date of my decision:  see the decision in Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R.(3d) 538 at 541-542 (T.M.O.B.).  The onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue.  Furthermore, 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.  Finally, the most pertinent of the opponent’s registrations is No. 390,653 for the trade-mark TRY US FOR A CHANGE.

My conclusions respecting the sixth ground are, for the most part, applicable to the fourth ground as well.  Thus, I find that the applicant has failed to satisfy the onus on it to show that its proposed mark ARE YOU DUE FOR A CHANGE? is not confusing with the opponent’s registered mark TRY US FOR A CHANGE.  Had the applicant been able to evidence widespread use of similar marks by third parties in the same industry, my conclusion might have been different.

        As for the seventh ground of opposition, the onus or legal burden is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its services from those of others throughout Canada:  see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (T.M.O.B.).  Furthermore, the material time for considering the circumstances respecting this issue is as of the filing of the opposition (i.e. - February 18, 2005):  see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporation  v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.).  Finally, there is an evidential burden on the opponent to prove the allegations of fact in support of its ground of non-distinctiveness.

The seventh ground of opposition essentially turns on the issue of confusion between the applicant’s proposed mark and the opponent’s trade-marks.  For the most part, my conclusions respecting the previous  grounds of opposition also apply to the seventh ground.  Thus, I find, on a balance of probabilities, that the applicant has failed to show that its proposed mark was not confusing with the opponent’s registered and previously used marks as of the filing of the opposition.  Thus, the seventh ground is also successful and it is unnecessary to consider the remaining grounds.

In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I refuse the applicant’s application.

DATED AT GATINEAU, QUEBEC, THIS 2^nd DAY OF MAY, 2008.

David J. Martin,

Member,

Trade Marks Opposition Board.