IN THE MATTER OF AN OPPOSITION by Asinto Getranke GMBH to Application No. 875970 for the Trade‑mark THE ULTIMATE ENERGY DRINK & DESIGN filed by Euro Trading Imp. Exp. Consulting Ltda.
On April 22, 1998, Euro Trading Imp. Exp. Consulting Ltda. (the «Applicant») of Sao Paulo, Brazil, filed an application to register the trade-mark THE ULTIMATE ENERGY DRINK & Design as illustrated below:
(the “Mark”),
based on proposed use in association with non-alcoholic beverages, namely, carbonated caffeine enriched soft drinks (the “Wares”). The application was subsequently advertised in the Trade-marks Journal on September 15, 1999, for opposition purposes.
Asinto Getranke GMBH (the “Opponent”) filed on December 16, 1999, a statement of opposition alleging that:
1) The application doesn’t comply with the requirements of Section 30(i) of the Trade-Marks Act, (the “Act”) in that the Applicant, at the time of filing of its application, was well aware that it was not entitled to the registration of the Mark in Canada in association with the Wares in view of the Opponent’s registered trade-marks FLYING HORSE & Design, certificate of registration TMA516225 and FLYING HORSE, certificate of registration TMA517085;
2) The Applicant is not the person entitled to registration of the Mark for use in association with the Wares, having regard to the provisions of Section 16(3)(b) of the Act, in that as of the date of filing of the application, namely April 22, 1998, the Mark was confusing with application number 775732 filed on February 17, 1995, for the trade-mark FLYING HORSE & Design (which ultimately matured to registration under certificate of registration TMA516225) and application number 774089 allegedly filed on January 30, 1999, for the trade-mark FLYING HORSE (which also matured to registration under certificate of registration TMA517085);
3) The Mark is not distinctive since it does not distinguish nor has it been adapted so to distinguish the Wares from the wares of others, in particular those of the Opponent;
4) The Mark is not registrable in view of the provisions of Section 12(1)(d) of the Act as it is confusing with the Opponent’s registered trade-marks FLYING HORSE & Design certificate of registration TMA516225 and FLYING HORSE, certificate of registration TMA517085.
The Applicant filed on February 25, 2000, a counter statement denying each and every grounds of opposition described above. It also alleges that beside the four grounds of opposition described above, the remainder of the statement of opposition which dealt with some opposition proceedings involving the same parties or related entities in other countries of the world ought to be disregarded or struck as improper and does not constitute permitted ground of opposition as set out in Section 38 of the Act. I agree with the Applicant’s position and shall disregard those allegations and any evidence filed by the Opponent with respect thereto.
Neither party filed written submissions nor was there an oral hearing.
The Evidence
The Opponent filed a Statutory Declaration co-signed by Messrs Friedrich Schaff and Stefan Stockinger. Mr Schaff described himself as “employed with the Opponent as procurist (sic)” while Mr Stockinger is “employed with Schaff-Brau Rudolf Schaff Treuchtlingen GmbH & Co. KG as procurist (sic)”. There is no other information on their duties and responsibilities with the Opponent and because the term is not an English or French word I shall consider Mr Schaff as a duly authorized representative of the Opponent. In any event, the content of their declaration will be of little support to the valid grounds of opposition described above.
The Applicant filed the affidavit of Linda Victoria Thibeault who has been working as a trade-mark searcher with Trade mark Reflections Ltd. for the past seventeen years. She conducted on February 19, 2001, a search of the Register to locate all pending applications and registrations of trade-marks incorporating a “winged horse” and/or “winged unicorn” in association with all wares or services. She filed as Exhibit “A” a list of 53 registered trade-marks, which includes the Opponent’s registered trade-mark FLYING HORSE & Design, certificate of registration TMA516225. There are at least nine (9) of them covering beverages, including the Opponent’s registered trade-mark FLYING HORSE & Design. She filed as part of Exhibit B to her affidavit, copies of those registered trade-marks and pending applications. For ease of reference I shall reproduce herein below the Opponent’s trade-mark FLYING HORSE & Design, certificate of registration TMA516225:
(“the
Opponent’s design mark”)
There is no evidence in the record of any use of the parties’ trade-marks in Canada.
Analysis of the legal issues
The legal burden is upon the Applicant to show that its application complies with the provisions of Section 30 of the Act, but there is however an initial evidential onus on the Opponent to establish the facts relied upon by it in support of its grounds of opposition. Once this initial onus is satisfied, the Applicant has the burden to prove that the particular grounds of opposition should not prevent registration of the Mark. [See Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330; and John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R. (3d) 293]. Mr Justice Décary of the Federal Court of Appeal in Miss Universe Inc. v. Bohna [1995] 1 C.F. 614 stated:
“The onus is always upon an applicant for the registration of a trade-mark to establish that, on the balance of probabilities, there is no likelihood of confusion with a previously used and registered trade-mark”
The filing date of the application (April 22, 1998) is the material time for considering the issues of non-compliance with Section 30 of the Act [see Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R. (3d) 469, at p. 475] and non-entitlement based on section 16(3) of the Act [Section 16 of the Act]. The material date for assessing the issue of distinctiveness is generally accepted to be the date of filing of the opposition (December 16, 1999) [see 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) 413 at 424 (F.C.A)]. Finally the issue of registrability of the Mark must be assessed as of the date of my decision. [See Park Avenue Furniture Corp. v Wickes/Simmons Bedding Ltd. op.cit., and Labatt Brewering Co. v. Molson Breweries, A Partnership(1992),42 C.P.R. (3d) 481]
The first ground of opposition is dismissed as the Opponent failed to plead under such ground of opposition that the Mark was confusing with the Opponent’s trade-marks. As for the third ground of opposition, the Opponent needed to show that as of December 16, 1999, one or more of the trade-marks that it relies upon had become known sufficiently in Canada to negate the distinctiveness of the Mark. [Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 at 58 (F.C.T.D.), Re Andres Wines Ltd. and E. & J. Gallo Winery, op.cit. and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd., op.cit.] The Opponent did not file any evidence to support this ground of opposition and as such it is dismissed.
In so far as the second ground of opposition is concerned, application number 774089 was filed on January 30, 1995 and not 1999 as alleged by the Opponent in its statement of opposition. A review of the State of the Register, which I am entitled to do under such ground of opposition, enabled me to make such finding. [See Quaker Oats Co. of Canada Ltd. v. Menu Foods Ltd. (1986) 11 C.P.R. (3d) 410 and Molson Breweries, A Partnership v. John Labatt Ltd., (1999) 3 C.P.R. (4th) 543] It was still pending at the date of advertisement of the present application. It is therefore a proper citation as per the provisions of Section 16(4) of the Act. Application 775732 for the Opponent’s design mark matured to registration on September 13,1999, and was not pending at the date of advertisement of the present application. It will therefore be disregarded. [See Governor and Co. of Adventurers of England trading into Hudson’s Bay, commercially called Hudson’s Bay Co. v. Kmart Canada Ltd., 76 C.P.R. (3d) 526 at 528]
The second and fourth grounds of opposition are contingent on the outcome of my analysis of likelihood of confusion between the Mark and the Opponent’s trade-marks identified above.
Mr Justice Décary in the case of Christian Dior, S.A. v Dion Neckwear Ltd [2002] 3 C.F.405 worded the test of confusion in the following terms:
«…the Court is to put itself in the position of an average person who is familiar with the earlier mark but has an imperfect recollection of it; the question is whether the ordinary consumer will, on seeing the later mark, infer as a matter of first impression that the wares with which the second mark is used are in some way associated with the wares of the earlier…
The Registrar must therefore be reasonably satisfied that, on a balance of probabilities, the registration is unlikely to create confusion; he need not be satisfied beyond doubt that confusion is unlikely. Should the "beyond doubt" standard be applied, applicants would, in most cases, face an unsurmountable burden because certainty in matters of likelihood of confusion is a rare commodity. At best, it is only where the probabilities are equal that a form of doubt may be said to arise, which is to be resolved in favour of the opponent. But the concept of doubt is a treacherous and confusing one in civil proceedings and a registrar should avoid resorting to it.”
In order to determine whether the parties’ trade-marks are confusing, Subsection 6(5) of the Act directs that the Registrar is to have regard to all of the surrounding circumstances, including: i) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; ii) the length of time the trade-marks or trade-names have been in use; iii) the nature of the wares, services, or business; iv) the nature of the trade; and v) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
The difference in the relevant dates of the remaining grounds of opposition will not have an impact on the outcome of my analysis of the surrounding circumstances to determine if there exists, on a balance of probabilities, any likelihood of confusion between the Mark and the Opponent’s trade-marks.
i) The inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known.
The Mark has a low degree of inherent distinctiveness, as the word portion of the Mark is suggestive of the character of the Wares. The addition of a design does provide some inherent distinctiveness. There is no evidence in the record to enable me to conclude that the Mark is known to any extent in Canada.
The Opponent’s trade-marks FLYING HORSE and FLYING HORSE and Design, possess a fair degree of inherent distinctiveness even though the word portion of these marks is a combination of two common words. The Opponent failed to establish any use of these trade-marks in Canada and as such I cannot conclude that they have become known to any extent in Canada.
ii) The length of time the trade-marks or trade-names have been in use
This circumstance does not favour either of the parties as there is no evidence of use of any of the parties’ trade-marks.
iii) & iv) The nature of the wares, services, or business and the nature of the trade;
The wares covered by the Opponent’s certificate of registrations number TMA516225 and TMA517085 are: beer; mineral waters and carbonated waters and soft drinks; fruit-flavoured soft drinks and fruit-juices; and syrups for making beverages. There is therefore an overlap between the Wares and the Opponent’s wares sold in association with its trade-marks FLYING HORSE and FLYING HORSE and Design. As the parties’ wares overlap, in the absence of evidence to the contrary, I assume that the parties’ channels of trade would also overlap. These circumstances favour the Opponent.
iv) The degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
There is some degree of visual similarity between the Mark and the Opponent Design mark because of the use of a flying unicorn. There is also a low degree of resemblance in the idea suggested by the word mark FLYING HORSE and the word portion of the Opponent’s design mark on one hand, and the Mark on the other hand, as a flying unicorn is the dominant feature of the Applicant’s design portion of the Mark. The unicorn however depicted on the Mark and its two dimensional angle of presentation are totally different than the unicorn illustrated on the Opponent’s Design mark. The Opponent’s design mark also makes use of a background not found in the Mark. These differences make the Mark, when viewed as a whole, distinguishable from the Opponent’s design mark.
v) Additional surrounding circumstances
The State of the Register shows, at the earliest relevant date, the existence of several other trade-marks incorporating the design of different flying horses or unicorns, used in association with different types of beverages. Therefore it is fair to say that the average consumer has been able to distinguish one mark from another when a flying horse or unicorn is part of a design mark used in association with beverages. One must also not lose sight that when comparing the various marks in issue in this case, they must be viewed as a whole and they should not be dissected into their components in order to identify similarities and differences.
Conclusion
The ultimate question that I must dispose of is: would a consumer with an imperfect recollection of the Opponent’s Design mark or its trade-mark FLYING HORSE, on a balance of probabilities, likely associate the Opponent as the source of origin of the Applicant’s Wares sold in association with the Mark. I don’t think so as there are ample differences in the Opponent’s trade-mark FLYING HORSE and the word portion and the visual appearance of the Opponent’s Design mark when compared to the Mark to enable a consumer to make a distinction between the Wares and the Opponent’s wares sold in association with either of its trade-marks. In the absence of evidence of use of either of the Opponent’s trade-marks, I must conclude that they have not become known to any extent in Canada.
I conclude that the Applicant has discharged its burden to prove, on the balance of probabilities, that there is no likelihood of confusion between the Mark on one hand and, on the other hand, the Opponent’s Design mark and the trade-mark FLYING HORSE. Therefore I dismiss the second and fourth ground of opposition.
Having been delegated authority by the Registrar of Trade-marks by virtue of Section 63(3) of the Act, I reject, pursuant to Subsection 38(8) of the Act, the Opponent’s opposition to Applicant’s application for the registration of the Mark.
DATED, IN MONTREAL, QUEBEC, THIS 1st DAY OF JUNE 2004.
Trade-marks Opposition Board