LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2014 TMOB 70
Date of Decision: 2014-03-26
IN THE MATTER OF AN OPPOSITION by 1772887 Ontario Limited to application No. 1,514,634 for the trade-mark WHERE THE LITTLE THINGS MEAN EVERYTHING in the name of HLT IP LLC
[1] On February 9, 2011, HLT IP LLC (the Applicant) filed an application to register the trade-mark WHERE THE LITTLE THINGS MEAN EVERYTHING (the Mark) based on proposed use in Canada in association with “hotel services”.
[2] The application was advertised for opposition purposes in the Trade-marks Journal of September 21, 2011.
[3] On February 21, 2012, 1772887 Ontario Limited (the Opponent) filed a statement of opposition. The grounds of opposition can be summarized as follows:
• pursuant to sections 38(2)(b) and 12(1)(d) of Trade-marks Act, RSC 1985, c T-13 (the Act), the Mark is not registrable as it is confusing with the Opponent’s family of WHERE trade-marks (details of which are set out in Schedule A to this decision);
• pursuant to sections 38(2)(c) and 16(3)(a) and (c) of the Act, the Applicant is not entitled to register the Mark as it is confusing with the following trade-marks WHERE, WHERE DESIGN, WHERE ON-LINE, WHERE FAMILY, WHERE MAGAZINES INTERNATIONAL, WHERE THE FINDS ARE, WHERE LOCALS HIKE, WHERE TELEVISION and WHERE TELEVISION & DESIGN, and trade-names WHERE Alaska & Yukon, WHERE Edmonton, WHERE Canadian Rockies, WHERE Calgary, WHERE Canada Media, WHERE Victoria Media, WHERE Vancouver Magazine, WHERE Alaska & Yukon Magazine, WHERE Winnpeg, WHERE Halifax, WHERE Vancouver, WHERE Ottawa, WHERE TV, WHERE Toronto, WHERE Muskoka, WHERE Victoria, WHERE CANADA, WHERE INTERNATIONAL, WHERE MAGAZINES INTERNATIONAL, and WHERE ON-LINE which have been used since prior to the date of filing the application for the Mark and have continued to be used in association with “electronic publications, printed publications, magazines, directories, brochures, pamphlets, newsletters and maps; electronic publishing and information services, internet services and computer software” by the Opponent and its predecessors in title in Canada;
• pursuant to sections 38(2)(c) and 16(3)(b) of the Act, the Applicant is not entitled to register the Mark as it is confusing with the following pending trade-mark application owned by the Opponent – WHERE KIDS’ GUIDE (application No. 1,500,705);
• pursuant to sections 38(2)(d) and 2, in view of the facts set out in the grounds of opposition summarized above, the Mark is not distinctive of “hotel services”, nor is it capable of becoming so distinctive; and
• pursuant to sections 38(2)(a) and 30(i) and 22 of the Act, the use of the Mark damages the goodwill of the Opponent and its registered marks.
[4] The Applicant served and filed a counter statement in which it denied the Opponent’s allegations and put the Opponent to the strict proof thereof.
[5] In support of its opposition, the Opponent filed an affidavit of Elenita Anastacio. Ms. Anastacio was not cross-examined on her affidavit.
[6] The Applicant did not file any evidence in support of its application.
[7] Only the Applicant filed a written argument but both parties were represented at an oral hearing.
Onus and Material Dates
[8] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist [see John Labatt Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298].
[9] The material dates that apply to the grounds of opposition are as follows:
• sections 38(2)(a)/30 - the date of filing the application [see Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 at 475 (TMOB) and Tower Conference Management Co v Canadian Exhibition Management Inc (1990), 28 CPR (3d) 428 at 432 (TMOB)].
• section 38(2)(b)/12(1)(d) - the date of my decision [see Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trade Marks (1991), 37 CPR (3d) 413 (FCA)]
• sections 38(2)(c)/16(3) - the date of filing the application for the Mark [see section 16(3) of the Act].
• sections 38(2)(d)/2 - the date of filing of the opposition [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC)].
Summary Dismissal of Grounds of Opposition
Non-compliance with section 30(i) of the Act
[10] Where an applicant has provided the statement required by section 30(i), a section 30(i) ground should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant [see Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155]. The Applicant has provided the necessary statement and this is not an exceptional case; the section 30(i) ground is accordingly dismissed.
Non-entitlement grounds – sections 16(3)(a) and (c)
[11] The Opponent has the initial onus of proving that one or more of the trade-marks and/or trade-names alleged in support of the grounds of opposition based on sections 16(3)(a) and (c) of the Act was used in Canada prior to the date of filing the application for the Mark (February 9, 2011) and had not been abandoned at the date of advertisement of the application for the Mark (September 21, 2011) [section 16(4) of the Act].
[12] The Opponent has not filed any evidence of use of any of its pleaded trade-marks or trade-names and thus has failed to meet its evidential burden under these grounds of opposition. Moreover, I note that any reference to use in the Opponent’s registrations is not sufficient to satisfy the Opponent's evidential burden under section 16(3)(a) of the Act [see Rooxs, Inc v Edit-SRL (2002), 23 CPR (4th) 265 (TMOB)].
[13] Based on the foregoing, the grounds of opposition based on sections 16(3)(a) and (c) are dismissed on account of the Opponent’s failure to meet its evidential burden.
Non-distinctiveness ground – sections 38(2)(d) and 2
[14] In order to meet its initial burden with respect to this ground of opposition, the Opponent had to show that its alleged trade-marks or trade-names had become known sufficiently as of February 21, 2012 to negate the distinctiveness of the Mark [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC); Motel 6 Inc v No 6 Motel Ltd (1981), 56 CPR (2d) 44 (FCTD); Bojangles’ International LLC and Bojangles Restaurants Inc v Bojangles Café Ltd (2006), 48 CPR (4th) 427 (FC)].
[15] As the Opponent has not filed any evidence that meets its initial burden, this ground of opposition is dismissed.
Non-Registrability Ground of Opposition – Section 12(1)(d)
[16] An opponent’s initial onus is met with respect to a section 12(1)(d) ground of opposition if one or more of the registrations relied upon are in good standing as of the date of the opposition decision. The Registrar has discretion to check the Register in order to confirm the existence of the registration(s) relied upon by an opponent [see Quaker Oats of Canada Ltd/La Compagnie Quaker Oats du Canada Ltée v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)]. I have exercised that discretion and confirm that with the exception of WHERE FAMILY (TMA463,529) which has been expunged, the Opponent’s pleaded WHERE registrations remain extant. Based on the foregoing, the Opponent has succeeded in meeting its evidential burden under this ground of opposition.
[17] I must now assess whether the Applicant has met its legal burden.
[18] I consider the Opponent’s case strongest with respect to the trade-mark WHERE subject to registration No. TMA496,282 registered for use in association with:
Wares: Computer software used to store, search, retrieve and archive editorial content, photos, illustrations, advertisements and customer information; and communications software for voice, text, video and imaging, namely audio-text that allow customers to call a central telephone number for access to 24 hour information and advertisers; pre-recorded audio video tapes; CD-ROM's; and kiosks.
Services: Internet services; digital feed services; multi-level interactive information storage; retrieval and delivery services, namely a service that retrieves and delivers stored editorial content, images and advertising content; reservation and transaction services relating to travel, entertainment, attractions, accommodations, cuisine and related travel and destination specific information and services, namely a service that retrieves and delivers custom editorial and/or advertising products whether print or electronic; communications services for voice, text, video and imaging, namely audio-text services which allow customers to call a central telephone number for access to 24 hour information on advertisers.
[19] Thus, the determination of the issue of confusion between the Mark and the registered trade-mark WHERE (TMA496,282) will effectively decide this ground of opposition.
[20] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that 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, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
[21] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 6(5) of the Act, namely: (a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; (b) the length of time each has been in use; (c) the nature of the wares, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight. [See, in general, Mattel, Inc v 3894207 Canada Inc (2006), 49 CPR (4th) 321 (SCC) and Masterpiece Inc v Alavida Lifestyles Inc (2011), 96 CPR (4th) 361 (SCC).]
[22] In Masterpiece, the Supreme Court of Canada discussed the importance of the section 6(5)(e) factor in conducting an analysis of the likelihood of confusion between the parties’ marks in accordance with section 6 of the Act (see para 49):
…the degree of resemblance, although the last factor listed in s. 6(5), is the statutory factor that is often likely to have the greatest effect on the confusion analysis … if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion. The other factors become significant only once the marks are found to be identical or very similar… As a result, it has been suggested that a consideration of resemblance is where most confusion analyses should start… [Emphasis is mine]
[23] Under the circumstances of the present case, I consider it appropriate to analyse the degree of resemblance between the parties’ marks first.
6(5)(e) – the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
[24] At the oral hearing, the Opponent cited paragraph 64 of Masterpiece where the Supreme Court of Canada stated:
While the first word may, for purposes of distinctiveness, be the most important in some cases, I think a preferable approach is to first consider whether there is an aspect of the trade-mark that is particularly striking and unique.
[25] Focussing on the words “may” and “whether” in the above-noted passage, the Opponent submitted that in cases like the present where the parties’ marks do not feature any particularly unique or striking features, the first portion of the marks should be the most important for the purpose of distinguishing. In the present case, the first portion of the parties’ marks is the same, namely the word WHERE.
[26] I agree with the Opponent that neither party’s mark possesses a particularly unique or striking element. I also acknowledge that the Mark incorporates the whole of the Opponent’s trade-mark WHERE as the first portion thereof.
[27] However, when assessing the likelihood of confusion between two trade-marks, the marks must be assessed as a whole. In the present case, the only similarity between the parties’ marks is the word WHERE. In the Applicant’s Mark, the word WHERE is followed by five other different words. I therefore do not find that the inclusion of the word WHERE in the Mark creates any significant degree of similarity in appearance or sound between the parties’ marks when considered as a whole.
[28] With respect to ideas suggested, the Opponent’s mark, suggests the notion of “in or at what place or position” (see Oxford English Dictionary). The Mark suggests a business which places particular importance on the small details. As a result, I do not find any similarity between the parties’ marks in terms of ideas suggested.
[29] When considered as a whole, I find that there are significant differences between the parties’ marks in appearance, sound and ideas suggested.
[30] In the absence of a finding of significant similarity between the parties’ marks, I must now assess whether any of the remaining factors are sufficient to shift the burden in favour of the Opponent.
Section 6(5)(a) – inherent distinctiveness and the extent to which the marks have become known
[31] The parties’ marks both possess some degree of inherent distinctiveness, being made up of dictionary words.
[32] There is no evidence that the Mark has become known to any extent in Canada. Also, there is no evidence to show the extent to which the Opponent’s registered trade-mark might have become known in Canada. The mere existence of registration No. TMA496,282 can establish no more than de minimis use of the trade-mark [see Entre Computer Centres, Inc v Global Upholstery Co (1991), 40 CPR (3d) 427 (TMOB)].
[33] Based on the foregoing, the section 6(5)(a) factor does not favour either party in this case.
Section 6(5)(b) – the length of time each has been in use
[34] The Mark was applied for registration on the basis of proposed use and there is no evidence that the Applicant has ever used the Mark. While the trade-mark WHERE was registered under No. TMA496,282 on the basis of use in Canada since at least as early as March 15, 1996, as pointed out above, in the absence of evidence of use, I can only infer de minimis use.
[35] While it may be true that de minimis use is more than no use, in the absence of evidence of actual use of any of the trade-marks at issue, this factor is of no significance in this case.
Section 6(5)(c) and (d) – the nature of wares, services or business and trade
[36] When considering the nature of the parties’ wares, services and business and the nature of the parties’ trade, it is the statement of wares and services in the application and the statement of wares and services in the Opponent’s registrations that govern the assessment of the likelihood of confusion under section 12(1)(d) of the Act [see Mr. Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA); Miss Universe, Inc v Bohna (1994), 58 CPR (3d) 381 (FCA)]. However, those statements must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording. In this regard, evidence of the actual trades of the parties is useful, particularly where there is ambiguity as to the wares or services covered in the application or registration at issue [see McDonald’s Corp v Coffee Hut Stores Ltd (1996), 68 CPR (3d) 168 (FCA); Procter & Gamble Inc v Hunter Packaging Ltd (1999), 2 CPR (4th) 266 (TMOB); American Optional Corp v Alcon Pharmaceuticals Ltd (2000), 5 CPR (4th) 110 (TMOB)].
[37] In the present case, neither party has provided evidence of their actual trades. As a result, I am left with the wording of the specifications in the application and registration at issue.
[38] In its written argument, the Applicant acknowledges that the Opponent’s registration No. TMA496,282 makes reference to “accommodations”. However, the Applicant submits that this reference is in the context of the services defined as “…reservation and transaction services relating to travel, entertainment, attractions, accommodations, cuisine and related travel and destination specific information and services, namely a service that retrieves and delivers custom editorial and/or advertising products whether print or electronic”. The Applicant submits that, in light of the way in which the specification has been worded, the registration does not cover accommodation services but rather a service that retrieves and delivers custom editorial and/or advertising products.
[39] At the hearing, the Opponent submitted that the qualifier “a service that retrieves and delivers custom editorial and/or advertising products whether print or electronic” applies only to the services “related travel and destination specific information and services” such that the registration does cover “accommodation services”.
[40] I find that regardless of what interpretation is given to the Opponent’s registered services (all of which are merely speculative in the absence of evidence of the actual services), they do not share any significant degree of similarity with the Applicant’s “hotel services”. At most, I am willing to find a small degree of similarity between the parties’ services amounting from the fact that some of the Opponent’s services have some connection to the travel or hospitality industry.
Additional Surrounding Circumstance – family of trade-marks
[41] The Opponent has pleaded the existence of its family of WHERE trade-marks. A party seeking to take advantage of the wider scope of protection afforded to a family of trade-marks must first establish use of trade-marks that comprise the family [see MacDonald’s Corporation v Yogi Yogurt Ltd (1982), 66 CPR (2d) 101 (FCTD)]. As the Opponent failed to provide evidence directed to the use of any of its WHERE marks, I do not consider this to be a case where the Opponent may assert a family of trade-marks.
Conclusion
[42] As discussed above, in Masterpiece the Supreme Court of Canada highlighted the importance of the section 6(5)(e) factor in the analysis of the likelihood of confusion. In the present case, I have found that the parties’ marks do not share any significant degree of similarity in sound, appearance and idea suggested. Furthermore, I have not found that any of the other factors favour the Opponent sufficiently to shift the balance of probabilities in the Opponent’s favour. As a result, I am satisfied that the Applicant has discharged its burden of showing that there is no reasonable likelihood of confusion between the parties’ marks. Having regard to the foregoing, I dismiss the non-registrability ground of opposition accordingly.
Non-Entitlement Ground of Opposition – Section 16(3)(b)
[43] At the oral hearing, the Opponent indicated that while it would not be withdrawing this ground of opposition, it would no longer be actively pursuing it in light of the fact that the application pleaded in support thereof (WHERE KIDS’ GUIDE, application No. 1,500,705) was abandoned in December 2013.
[44] As a result, I will not be addressing this ground of opposition except to say that, even if I had considered it, the Opponent’s position would have been no stronger, and perhaps in fact weaker than under section 12(1)(d) in light of the addition of the words KIDS’ GUIDE to the Opponent’s WHERE mark which serve to create further differences between the parties’ marks in terms of appearance, sound and ideas suggested. As a result, the ground of opposition based on section 16(3)(b) would have been unsuccessful for reasons similar to those outlined above in the analysis of the section 12(1)(d) ground.
Disposition
[45] Pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(8) of the Act.
______________________________
Andrea Flewelling
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
SCHEDULE “A”
|
Registration No. |
Trade-mark |
|
TMA386,571 |
WHERE |
|
TMA496,282 |
WHERE |
|
TMA463,529 |
WHERE FAMILY |
|
TMA408,695 |
WHERE MAGAZINES INTERNATIONAL |
|
TMA520,864 |
WHERE ON-LINE |
|
TMA677,534 |
WHERE THE FINDS ARE |
|
TMA674,494 |
WHERE THE LOCALS HIKE |
|
TMA725,344 |
|
|
TMA727,342 |
WHERE TELEVISION |
|
TMA777,021 |
|