LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2011 TMOB 220
Date of Decision: 2011-11-10
IN THE MATTER OF AN OPPOSITION by Plant Products Co. Ltd. to application No. 1,350,478 for the trade-mark GREENSTAR PLANT PRODUCTS in the name of Greenstar Plant Products Inc.
[1] On June 6, 2007, Greenstar Plant Products Inc. (the Applicant) filed an application to register the trade-mark GREENSTAR PLANT PRODUCTS (the Mark) based on proposed use in Canada with:
Hydroponic lighting, hydroponic pumps, hydroponic soil and soil enhancers, hydroponic rockwool, hydroponic pipes and containers to hold hydroponic plants, irrigation fittings and irrigation pipes, ventilation fans, ventilation conduits, ventilation hoses and ventilation thermostats, greenhouses, humidistats, humidifiers, dehumidifiers, heat exchangers, CO2 gardening pipes and gas injectors, CO2 tanks and regulators, CO2 combustion chambers and CO2 generators, gardening hormones, gardening books, gardening tools; pH meters and conductivity meters for gardening; polyurethane foam growing medium for use in hydroponic and indoor planting, bedding and growing of plants; growing trays for plants and vegetables; vitamin growth hormone supplements for plants, rooting compounds for plants and vegetables, natural fungus biological soil conditioner for plants and vegetables, coconut fiber growing medium for hydroponic and indoor planting; vitamin growth hormone supplements for plants and vegetables; plant and vegetable fertilizers, plant nutrient compositions; horticultural soil conditioners; leaf shine sprays; foliar wetting agents; peat moss substitutes; electrode cleaning solutions, electrode storage solutions; fertilizer rinse solutions, pH calibration solutions, pH test kits, pH papers; hydrogen peroxide; moisture sealants for plants, namely anti-wilting moisture sealants, rooting compounds, activated carbon, air blowers, air chillers, ballast boxes, grow bags, neoprene inserts for cuttings, seedling heat mats, propagation flats, humidity domes for covering plant trays, fans, light reflectors for hydroponic lighting.
(hereinafter referred to as the Wares)
[2] The application was advertised for opposition purposes in the Trade-marks Journal of April 9, 2008.
[3] On September 8, 2008, Plant Products Co. Ltd. (the Opponent) filed a statement of opposition.
[4] The grounds of opposition can be summarized as follows:
• Non-compliance with s. 30(i) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act) on the basis that the Applicant could not have been satisfied of its entitlement to use the Mark given its knowledge of the previous use of the trade-marks PLANT PRODUCTS; PLANTPRODUCTS & Design; PLANT-PROD; PLANT PRODUCTS TURF & Design (the Opponent’s Marks) and of the trade-names PLANT PRODUCTS CO. LTD. and PLANT PRODUCTS (the Opponent’s Trade-names) by the Opponent in Canada.
• The Applicant is not entitled to registration of the Mark pursuant to s. 16(3)(a) of the Act since at the date of filing the application for the Mark it was confusing with the Opponent’s Marks which had been used and made known by the Opponent in association with the wares and services as set out in the statement of opposition prior to the filing date of the application for the Mark.
• The Applicant is not entitled to registration of the Mark pursuant to s. 16(3)(c) of the Act since at the date of filing the application for the Mark it was confusing with the Opponent’s Trade-names which had been previously used in Canada by the Opponent in association with the wares and services set out in the statement of opposition.
• The Mark is not registrable as it is confusing with the Opponent’s registrations for the following trade-marks: PLANT PRODUCTS TURF & Design (TMA480,135); PLANTPRODUCTS & Design (TMA683,927) and PLANT-PROD (TMA144,803).
• The Mark is not distinctive of the Wares in that the Mark does not distinguish, nor was it adapted to distinguish, the Wares from the wares and services of others, including those of the Opponent in association with the Opponent’s Marks.
[5] 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.
[6] In support of its opposition, the Opponent filed affidavits of Gordon W. Jahn, sworn January 30, 2009, with Exhibits A – L and Katherine Lam, sworn January 30, 2009, with Exhibit 1 as its evidence pursuant to r. 41 of the Trade-marks Regulations SOR/96-195 (the Regulations). Mr. Jahn and Ms. Lam were cross-examined on April 20, 2009. Transcripts and responses to undertakings were filed on June 23 and 24, 2009, respectively.
[7] In support of its application, the Applicant filed the affidavits of Brent Jackson, sworn October 26, 2009 with Exhibit A – N and Kashmira Bhagat, sworn October 23, 2009, with Exhibits A – C. Neither affiant was cross-examined.
[8] Both parties filed written arguments and were represented at an oral hearing.
Opponent’s Evidence
Affidavit and cross-examination of Gordon W. Jahn
[9] Mr. Jahn has been employed by the Opponent since 1976 and at the time of swearing his affidavit he served as the VP, Operations.
[10] Mr. Jahn states that the Opponent has, in and from Canada, used the following trade-marks in association with the following wares and services since the following dates:
|
Trade-mark |
Wares/Services |
Claimed date of first use |
|
PLANT PRODUCTS |
fertilizers, insecticides, pesticides, fungicides, herbicides, plant growth regulators and plant hormones |
At least as early as 2003 |
|
PLANT PRODUCTS |
technical support services in the fields of horticulture, agriculture and professional turf care; wholesaling horticultural and agricultural products namely: fertilizers; insecticides; miticides; chemical pesticides; biological pesticides; fungicides; herbicides; fumigators; test kits for the diagnosis of plant diseases; vegetable seeds; grass seeds; plant growth regulators; plant hormones; growing media; soil amendments; sprayers; equipment for testing soil pH, conductivity and temperature; wetting agents and anti-foaming agents for use in agricultural spraying; anti-desiccants for agricultural use; hard surface disinfectants, sanitizers, fungistats, detergents and virucides for the agricultural industry (Opponent’s Services 1) |
At least as early as 1989 |
|
|
horticultural and agricultural products namely, fertilizers, insecticides, pesticides, biological pest control, fungicides, herbicides, plant growth regulators, plant hormones (Opponent’s Wares 1) |
Since at least as early as October 2003 |
|
|
Opponent’s Services 1 |
Since at least as early as October 2003 |
|
|
Wholesaling fertilizers |
Since at least as early as 1998 |
|
PLANT-PROD |
Agricultural fertilizers |
Since at least as early as 1976 |
|
Trade-name: PLANT PRODUCTS CO. LTD. |
Operating a business vending goods in the nature of Opponent’s Wares 1 and offering, advertising and performing services in the nature of Opponent’s Services 1 |
Since at least as early as 1976 |
|
Trade-name: PLANT PRODUCTS |
Operating a business vending goods in the nature of Opponent’s Wares 1 and offering, advertising and performing services in the nature of Opponent’s Services 1 |
Since at least as early as 1976 |
[11] Mr. Jahn attaches to his affidavit a number of exhibits which he states support each of his claims of use for the Opponent’s Marks. The exhibit evidence will be discussed further below in the analysis of the confusion based grounds of opposition.
[12] Mr. Jahn was cross-examined on his affidavit on April 20, 2009. Relevant portions of his cross-examination will be discussed further below in the analysis of the confusion based grounds of opposition.
Affidavit and cross-examination of Katherine Lam
[13] Ms. Lam attaches to her affidavit corporate profile reports for Allie’s Wholesale Garden Supplies Ltd. and the Applicant (Exhibits A, B).
[14] On cross-examination it was determined that Ms. Lam had not obtained the exhibits to her affidavit herself; rather they were obtained by the Opponent’s agent and attached to Ms. Lam’s affidavit (Q3-9). On cross-examination Ms. Lam admitted that she was not aware of any relationship or interaction between Allie’s Wholesale Garden Supplies Ltd. and the Applicant or whether any corporate relationship existed between them. The Applicant submitted that Ms. Lam’s affidavit should be rejected in its entirety as it constitutes hearsay. I note that no reasons were given as to why a person having direct knowledge could not have provided the evidence [see Labatt Brewing Co. v. Molson Breweries, A Partnership (1996), 68 C.P.R. (3d) 216 (F.C.T.D.)]. I accept the Applicant’s submissions and refuse to place any weight on the Lam affidavit. If I am wrong in refusing to consider the Lam affidavit I note that, as will be discussed further below in the analysis of the s. 30(i) ground of opposition, the contents thereof would not have altered the outcome of the proceeding in any event.
Applicant’s Evidence
Affidavit of Brent Jackson
[15] Mr. Jackson is the President of the Applicant. Mr. Jackson states that the Applicant has produced, sold and distributed various agricultural and horticultural products in Canada and abroad since approximately May 2007. Mr. Jackson states that in May 2007 the Applicant acquired the Mark from Allie’s Group of Companies, an entity which had been carrying on business since 1997.
[16] Mr. Jackson’s evidence will be discussed further below in the analysis of the confusion based grounds of opposition.
Affidavit of Kashmira Bhagat
[17] Ms. Bhagat is a legal secretary employed by the Applicant’s agent.
[18] Ms. Bhagat attaches to her affidavit three exhibits as follows:
a. printout of the results of a search of the Canada411 online database for business listings in Canada containing “plant products” dated October 21, 2009 (Exhibit A);
b. printout of a name research report search of the Quebec corporations registry for corporate names containing “plant products” dated October 20, 2009 (Exhibit B); and
c. copy of a Federal Reservation Report produced using NUANS Name Search System for companies having names containing “plant products” dated October 21, 2009 (Exhibit C).
[19] In her affidavit, Ms. Bhagat introduces each of these exhibits by stating “now shown to me and marked as Exhibit …” suggesting that Ms. Bhagat did not herself obtain these documents. At the oral hearing the Opponent raised similar hearsay concerns with respect to the Bhagat affidavit as had been raised regarding the Lam affidavit. Again, in light of the clear hearsay nature of the evidence and in the absence of information regarding the necessity and reliability thereof, I am not willing to place any weight on the Bhagat affidavit [see Labatt, supra].
Onus and Material Dates
[20] 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 C.P.R. (3d) 293 (F.C.T.D.) at 298].
[21] The material dates that apply to the grounds of opposition are as follows:
• s. 38(2)(a)/30(i) - the date of filing the application [see Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 at 475 (T.M.O.B.) and Tower Conference Management Co. v. Canadian Exhibition Management Inc. (1990), 28 C.P.R. (3d) 428 at 432 (T.M.O.B.)].
• s. 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 C.P.R. (3d) 413 (F.C.A.)].
• s. 38(2)(c)/16(3)(a) and (c) - the date of filing the application [see s. 16(3) of the Act].
• s. 38(2)(d)/2 - the date of filing of the opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.)].
Section 30(i) Ground
[22] Where an applicant has provided the statement required by s. 30(i), a s. 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 C.P.R. (2d) 152 (T.M.O.B.) at 155]. I note that the Applicant has provided the necessary statement in the present case.
[23] The Opponent adduced evidence and presented arguments suggesting that the Opponent had previously manufactured fertilizer for the Applicant’s alleged predecessor in title (Allie’s Wholesale Garden Supplies Ltd.). Specifically, Mr. Jahn states that the Opponent produced fertilizer for Allie’s Wholesale Garden Supplies Ltd. from as early as 1998. The Opponent submits that this evidence supports a finding that the Applicant was aware of the Opponent’s Marks and their reputation and thus intentionally misappropriated the entirety of the Opponent’s Marks to create the Mark. The Opponent submits that the Applicant knew or ought to have known that it could not do this. The Opponent submits that based on the foregoing, the Applicant could not have been satisfied of its entitlement to the Mark.
[24] By contrast, the Applicant submits that even if the Applicant had been aware of the Opponent’s Marks, this does not necessarily lead to the conclusion that the Applicant would have assumed that it was not entitled to registration of the Mark [see Axa Assurances Inc. v. Charles Schwab & Co. (2005), 49 C.P.R. (4th) 47 (T.M.O.B)]. I agree with the Applicant’s submissions.
[25] I am not satisfied that the facts make out an exceptional case such as bad faith on the part of the Applicant and as a result, I dismiss the ground of opposition based on non-compliance with s. 30(i) of the Act.
Non-registrability Ground – s. 12(1)(d) of the Act
[26] Mr. Jahn attaches to his affidavit certified copies of the Opponent’s registrations for TMA480,135 (PLANT PRODUCTS TURF & Design), TMA683,927 (PLANTPRODUCTS & Design) and TMA144,803 (PLANT-PROD) (Exhibits I, J, K) (the Opponent’s Registered Marks). I have exercised the Registrar’s discretion to confirm that the registrations for the Opponent’s Registered Marks remain in good standing as of today’s date.
[27] Since the Opponent has discharged its initial burden with respect to this ground of opposition, the burden of proof lies on the Applicant to convince the Registrar, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and one or more of the Opponent’s Registered Marks.
[28] 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.
[29] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in s. 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 C.P.R. (4th) 321 (S.C.C.) and Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), 96 C.P.R. (4th) 361 (S.C.C.).]
[30] For the purposes of the s. 12(1)(d) ground of opposition, I will focus my discussion on registration No. TMA683,927 for the trade-mark PLANTPRODUCTS & Design as I find that the Opponent’s case is strongest with respect to this registration. Thus, the success or failure of this ground will turn on the issue of confusion with this registration.
Section 6(5)(a) – the inherent distinctiveness of the trade-marks and the extent to which they have become known
[31] The parties’ marks share the PLANT PRODUCTS element. The Mark also features the GREENSTAR element and the PLANTPRODUCTS & Design mark features a design element in the form of a graphic depiction of what appears to be blades of grass.
[32] In both their written arguments and at the oral hearing, the parties alternately debated the alleged descriptiveness of both the GREENSTAR and PLANT PRODUCTS elements of the parties’ marks. I will discuss these submissions in turn, beginning with the Opponent’s submissions regarding the element GREENSTAR.
[33] In support of its submission that GREENSTAR is descriptive, the Opponent relies on an excerpt from the Applicant’s website, adduced as Exhibit L to the Jahn affidavit, which states the following:
Become a green star! … 1st annual Greenstar Organic Garden Contest. Is your garden pesticide free? Do you rely on natural and organic fertilizers? Do you use environmentally conscious growing practices? Then share your success with us!
[34] The Opponent also relies on an excerpt from the Merriam Webster Dictionary which it adduced as one of its authorities at the oral hearing for definitions of the words “green” and “star”. The excerpts provide a number of definitions for the words “green” and “star”. The Opponent relies on the following definitions:
a. green – often capitalized: relating to or being an environmentalist public movement; concerned with or supporting environmentalism; tending to preserve environmental quality (as by being recyclable, biodegradable, or non-polluting).
b. star – a person who is preeminent in a particular field.
[35] The Opponent relies on this evidence to support its submission that GREENSTAR means someone who is outstanding in the field of environmental protection. The Opponent submits that the word GREENSTAR is therefore also descriptive of the activities of the Opponent thereby increasing the likelihood of confusion between the parties’ marks. Relying on an excerpt from the catalogue adduced as Exhibit B to the Jahn affidavit, the Opponent submits that the Opponent is, and has been since at least 1995, involved in environmentally-friendly projects. The Opponent submits that as a result consumers will think that the Wares are merely a new line of environmentally-friendly products put out by the Opponent.
[36] In its written argument, the Applicant submits that the element GREENSTAR, being a coined word, has no particular meaning in the context of the Wares. At the oral hearing, the Applicant acknowledged the Opponent’s submission, but maintained that based on first impression, consumers are just as likely to think that GREENSTAR is a coined word which literally suggests a star that is the colour green.
[37] There is merit to both parties’ positions and I am willing to accept that, in association with the Wares, the word “green” in isolation would be suggestive of environmentally-friendly products, and more specifically, suggestive of the Wares. However, I am of the view that the addition of the word “star” renders the GREENSTAR element a coined word which possesses some inherent distinctiveness in association with the Wares.
[38] With respect to the PLANT PRODUCTS element, the parties have taken opposing positions.
[39] The Applicant submits that the PLANT PRODUCTS element is descriptive of the Opponent’s wares and services. In his affidavit, Mr. Jackson states that the PLANT PRODUCTS element is a descriptive term encompassing plants, products made from plants, or products related to plants. Mr. Jackson attaches to his affidavit various documents providing definitions for the PLANT PRODUCTS element, including printouts from online dictionaries (Exhibits H, L, M, N).
[40] By contrast, the Opponent submits that based on the evidence of record, the PLANT PRODUCTS element cannot be found to be descriptive of the relevant wares and services. The Opponent relies on definitions adduced in the Jackson affidavit which suggest that a “plant product” is a product made from plant material (Exhibits H, L, M, N). Given that the wares at issue are not products made from plants, the Opponent takes the position that the term cannot be found to be descriptive of the parties’ wares.
[41] In response, the Applicant points to the cross-examination of Mr. Jahn on his affidavit where he states, in response to the question “what does a plant product mean?”, that the Opponent is “offering products for plants” (Q17-21). More importantly, Mr. Jahn states the following at Q22:
Q: So if you could characterize plant products as products for plants, then things like fertilizers, horticultural aides, insecticides, those would be plant products?
A: Correct
[42] The Opponent submits that since the test is one of first impression, Mr. Jahn’s specific knowledge renders his comments irrelevant in terms of determining what the words mean to the average consumer.
[43] The Opponent suggested that Mr. Jahn’s comments should be taken in context. Specifically, the Opponent highlighted Mr. Jahn’s response at Q17-18:
To me, maybe because I’ve been with the firm for over 30 years, I’m so tied in with what we offer in the services, but plants, yes, and we’re offering products for plants (emphasis is mine)
[44] The Opponent submits that no one is disputing that the Opponent is selling products for plants. Rather, the Opponent submits that the PLANT PRODUCTS element is not descriptive of the Opponent’s wares and services but rather descriptive of products made from plants, which is not what the Opponent sells.
[45] In further support of its submission that the PLANT PRODUCTS element is descriptive, the Applicant submits that it is relevant to note that the Opponent has disclaimed the PLANT PRODUCTS element from its registrations and that a third party, BC Plant Products Inc., has also disclaimed the PLANT PRODUCTS element from its registration for the trade-mark BC PLANT PRODUCTS & Design (TMA539,422) (Jackson affidavit, Exhibits E and F).
[46] In response, the Opponent submits that pursuant to s. 35 of the Act, a disclaimer “does not prejudice or affect the applicant’s rights then existing or thereafter arising in the disclaimed matter” [see s. 35 of the Act]. The Opponent submits that it believed that the PLANT PRODUCTS element was distinctive at the time of filing the applications for the Opponent’s Registered Marks. The Opponent alternatively submits that even if PLANT PRODUCTS was not distinctive at the date of filing, as a result of the overwhelming sales of products by the Opponent of wares displaying the Opponent’s Registered Marks, the PLANT PRODUCTS element has become distinctive and the disclaimer would no longer be necessary.
[47] Even if the Opponent has acquired distinctiveness in the PLANT PRODUCTS element as a result of their alleged use of the Opponent’s Registered Marks, s. 6(5)(a) of the Act requires an analysis of both the inherent and acquired distinctiveness of the parties’ marks.
[48] Based on a review of the evidence as a whole and the parties’ submissions, I am of the view that the PLANT PRODUCTS element is descriptive of products for plants and thus possesses little inherent distinctiveness.
[49] Based on the foregoing, the Mark possesses a higher degree of inherent distinctiveness than the Opponent’s Marks by virtue of the inclusion of the coined word GREENSTAR which, despite the mild suggestiveness generated by the inclusion of the word “green”, possesses a greater degree of inherent distinctiveness than the descriptive PLANT PRODUCTS element.
[50] The strength of a trade-mark may be increased by means of it becoming known in Canada through promotion or use. I will now turn to the extent to which the trade-marks have become known in Canada.
[51] The Mark was applied for based on proposed use. The Applicant has provided evidence of use of the trade-name GREENSTAR PLANT PRODUCTS INC. on packaging for the Wares and in catalogues and advertisements (Jackson affidavit, Exhibits A1-A3, B-D). The Applicant has also provided evidence of substantial sales figures for the Wares for the years 2007-2009. However, as has been admitted by the Applicant, the Mark has not been used in association with the Wares and as a result this evidence is not relevant to a determination of the extent to which the Mark has become known.
[52] The Opponent has filed evidence of use of the Opponent’s Registered Marks in association with various wares and services.
[53] With respect to the Opponent’s wares, Mr. Jahn attaches to his affidavit copies of packaging for the Opponent’s products displaying the PLANTPRODUCTS & Design mark (Exhibit C). Mr. Jahn states that, while the Opponent’s packaging has changed over the years, the Opponent has displayed the PLANTPRODUCTS & Design mark on its wares since 2003. Mr. Jahn also attaches to his affidavit a photograph of the Opponent’s premises displaying signage featuring the PLANTPRODUCTS & Design mark which he states was installed in 2003 (Exhibit D).
[54] Mr. Jahn states that the Opponent has distributed catalogues since the 1970s which he states evidence the range of goods made available at wholesale by the Opponent. Mr. Jahn attaches to his affidavit the front cover of the 1989, 1994 and 2008 catalogues as well as a copy of the entire 1995 catalogue. I note that only the 2008 catalogue features the PLANTPRODUCTS & Design mark. Mr. Jahn states that from 1985-1995 the Opponent printed 5000 copies of the catalogues annually, of which approximately 2000 were mailed to accounts in Canada with the remainder distributed through distributors, dealers, sales staff and at the Opponent’s customer service desk.
[55] Mr. Jahn provides yearly sales figures for sales of the Opponent’s wares in association with all of the Opponent’s Marks and Trade-names, as follows:
a. in excess of $13 million for 2006;
b. in excess of $14 million for 2007; and
c. in excess of $18 million for 2008.
[56] At the oral hearing, the Applicant submitted that these sales figures, as admitted by Mr. Jahn, relate to any and all of the Opponent’s Marks and Trade-names and as a result, it is not known what portion of the sales figures would relate specifically to the PLANTPRODUCTS & Design mark. The Applicant submitted that, in the absence of a breakdown of the sales figures according to the specific trade-marks, it is possible that these sales relate primarily to the sale of products bearing only the Opponent’s trade-names.
[57] Furthermore, Mr. Jahn confirmed that these sales figures relate to both domestic (Canada) and international sales (Q120). At the oral hearing the Opponent submitted that sales to U.S. customers could still qualify as deemed use in Canada pursuant to s. 4(3) of the Act.
[58] Based on the foregoing, it is therefore unclear what portion of these sales figures relate specifically to the PLANTPRODUCTS & Design mark and what portion relates specifically to Canada. However, notwithstanding these deficiencies, I am willing to accept that the Opponent’s PLANTPRODUCTS & Design trade-mark has acquired some reputation in Canada.
Section 6(5)(b) – the length of time each has been in use
[59] The Applicant has not provided any evidence of use of the Mark subsequent to the filing date.
[60] In addition to the materials discussed in the analysis of the s. 6(5)(a) factor, Mr. Jahn also attaches to his affidavit packaging for the Opponent’s fertilizer wares (Exhibit A). The packaging displays a variation of the PLANTPRODUCTS & Design mark. On cross-examination it was determined that this particular packaging was not used in Canada. However, at the oral hearing the Opponent submitted that, since the Opponent’s fertilizer is manufactured in Canada, sales thereof to customers in the United States would qualify as deemed use in Canada pursuant to s. 4(3) of the Act.
[61] The evidence supports a finding that the Opponent’s PLANTPRODUCTS & Design mark has been used in Canada since approximately 2003.
Section 6(5)(c)– the nature of the wares
[62] It is the Applicant’s statement of wares as defined in its application versus the Opponent’s registered wares and services that govern my determination of this factor [see Esprit International v. Alcohol Countermeasure Systems Corp. (1997), 84 C.P.R. (3d) 89 (T.M.O.B.)].
[63] The Applicant has applied for registration of the Mark in association with the Wares.
[64] The Opponent has registered the PLANTPRODUCTS & Design mark in association with the following wares and services:
Wares: Horticultural and agricultural products, namely, fertilizers, insecticides, pesticides, biological pest control, fungicides, herbicides, weed killers; agricultural seeds, namely, vegetable seeds, grass seeds; plant growth regulators, plant hormones
Services: Providing technical support services in the fields of horticulture, agriculture and professional turf care.
[65] In its written argument, the Opponent highlights the following Wares which it submits overlap with the Opponent’s wares: “…greenhouses, … gardening hormones … pH meters and conductivity meters for gardening … growing medium … rooting compounds for … hormone supplements … plant and vegetable fertilizers, plant nutrient compositions … rooting compounds …”. With respect to the remaining Wares, the Opponent submitted at the oral hearing that these would be in the Opponent’s natural zone of expansion. Relying on Remo Imports Ltd. v. Jaguar Cars Ltd. (2007), 60 C.P.R. (4th) 130 (F.C.A.) the Opponent submitted that as with luggage which can be placed in cars, all of the Wares occupy the horticultural space where the Opponent has been operating since 1945. Firstly, I note that Remo Imports dealt with a famous mark and there is no evidence to suggest that the Opponent’s PLANTPRODUCTS & Design Mark has become famous or even well-known across Canada. Secondly, while I accept that the parties’ wares all occupy the “horticultural space”, I am not satisfied that this is sufficient to find an overlap in the specific nature of each of the Wares and the Opponent’s wares.
[66] In its written argument, the Applicant concedes that there is some overlap and general similarity with respect to some of the parties’ wares. The Applicant submits that the Wares are broader than those of the Opponent and the Applicant is not claiming registration with services like the Opponent’s services.
[67] Based on the foregoing I find that there is some similarity in the nature of the parties’ wares with respect to the following overlapping wares:
… gardening hormones, …; vitamin growth hormone supplements for plants, rooting compounds for plants and vegetables, natural fungus biological soil conditioner for plants and vegetables, …; vitamin growth hormone supplements for plants and vegetables; plant and vegetable fertilizers, plant nutrient compositions; horticultural soil conditioners; …; fertilizer rinse solutions, ...
[68] The remainder of the Wares differ from the Opponent’s wares and services.
Section 6(5)(d) – the nature of the trade
[69] With respect to the nature of the trade, the Applicant points to Mr. Jahn’s cross-examination where he states that the Opponent’s typical sales are in the range of thousands to hundreds of thousands of dollars and that the Opponent’s customers are often repeat customers (Q128-132). The Applicant submits that when dealing with sophisticated customers who are spending a great deal of money on each purchase and who are repeat customers they are not likely to be confused by a completely different entity who sells its products to the general public in small amounts.
[70] In response, the Opponent submitted that the Supreme Court of Canada recently commented on the issue of the sophisticated consumer in Masterpiece where Justice Rothstein stated that the fact that wares are expensive is not a relevant factor and not something that should limit trade-mark protection. I agree. The test for confusion is one of first impression [Polo Ralph Lauren Corp. v. United States Polo Assn. (2000), 9 C.P.R. (4th) 51 (F.C.A.)]. Any subsequent steps taken by sophisticated consumers in an attempt remedy any such first instance confusion are irrelevant [by analogy see paragraphs 68-74 of Masterpiece, supra].
[71] The Opponent submits that the parties’ customers are the same.
[72] On cross-examination Mr. Jahn stated that the Opponent’s principal customers are “greenhouse, ornamental and vegetable growers, and ornamental nurseries, golf courses” (Q118).
[73] Mr. Jackson states that the Applicant typically markets its products through its website, annual printed catalogues and print advertisements placed in select industry magazines. Mr. Jackson states that the Applicant’s representatives also attend trade shows to market the Wares to the public and the industry. Mr. Jackson states that the Applicant sells its products primarily through retailers and regional wholesalers and distributors and sells directly to larger commercial customers. Mr. Jackson provides details on the Applicant’s two typical customer categories, as follows:
a. typical non-commercial indirect customers: lawn and garden enthusiasts and indoor plant growers who would buy the Wares through retailers; and
b. typical commercial customers: retail indoor and outdoor garden centres, hydroponic stores, hardware stores, grocery stores, golf courses, organic farms, greenhouses, nurseries, municipalities, vineyards and landscapers.
[74] Given the overlap in the identity of some of the Applicant’s commercial customers with the Opponent’s principal customers, I find that there is some overlap in the nature of the parties’ trades.
Section 6(5)(e) – the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
[75] In most instances, the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested is the dominant factor and other factors play a subservient role in the overall surrounding circumstances [see Beverly Bedding & Upholstery Co. v. Regal Bedding & Upholstery Ltd. (1980), 47 C.P.R. (2) 145, conf. 60 C.P.R. (2d) 70 (F.C.T.D.)]. This principle was recently upheld by the Supreme Court of Canada in Masterpiece, supra.
[76] The Opponent submits that the Applicant has taken the entirety of the Opponent’s PLANT PRODUCTS mark and added the GREENSTAR element, which it submits is highly suggestive. The Opponent submits that by virtue of this, the average consumer will be confused into thinking that the Mark refers to a new environmentally-friendly line of the Opponent’s PLANT PRODUCTS portfolio.
[77] As I have already found that the GREENSTAR element possesses some degree of inherent distinctiveness, I do not agree with the Opponent’s submissions. I am of the view that the average consumer would be likely to view the GREENSTAR element as being a coined word with no particular meaning beyond the mild suggestiveness created by the inclusion of the word “green”.
[78] While the parties’ marks may both feature the descriptive element PLANT PRODUCTS, it is a well-accepted principle that the first portion of a trade-mark is often the most relevant for the purposes of distinction [see Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.) at 188]. In the present case, the first portions of the parties’ marks are entirely different with the Mark featuring the more distinctive word GREENSTAR as the first and most important element.
[79] In terms of ideas suggested, I agree with the Applicant’s submission that the word GREENSTAR evokes the idea of a green star. By virtue of the inclusion of the PLANT PRODUCTS element, both parties’ marks also suggest products for plants.
[80] Based on the foregoing, I find that the parties’ marks share some similarities in terms of appearance, sound and idea suggested.
Additional Surrounding Circumstance – Third Party Use of PLANT PRODUCTS
[81] The Applicant alleges that third parties use the PLANT PRODUCTS element descriptively and in business names thereby decreasing any potential distinctiveness for the term.
[82] In support of this submission, the Applicant relies on exhibits to the Jackson affidavit which include websites from various organizations (Exhibit H, L, M), including Canadian Government websites, University websites, as well as websites for corporations which use the PLANT PRODUCTS element in their corporate names (Exhibit I) and pages from the Internet archive system Wayback Machine to demonstrate that the websites adduced in Exhibit I were available on the Internet at the date of filing the application for the Mark (Exhibit J, K).
[83] The Applicant also submitted that the Opponent’s affiant, Mr. Jahn, admitted on cross-examination that he was aware of other third parties who use the PLANT PRODUCTS element as part of their names (Q23-26).
[84] In response, at the oral hearing the Opponent made submissions distinguishing these entities from the Opponent’s Registered Marks. The Opponent also submitted that the Applicant had not provided any evidence as to what wares and services the corporations were using, and more importantly whether they were actively using these PLANT PRODUCTS marks at the relevant dates.
[85] I am not willing to rely on Mr. Jackson’s Internet evidence for the truth of its contents [see Candrug Health Solutions Inc. v. Thorkelson (2007), 60 C.P.R. (4th) 35 (F.C.T.D.), reversed (2008), 64 C.P.R. (4th) 431 (F.C.A.)]. However, in light of Mr. Jahn’s own admission that he was aware of the use of the PLANT PRODUCTS element by third parties in their names, I am willing to accept from the evidence as a whole that there is some third party use of the PLANT PRODUCTS element in the Canadian marketplace such that this becomes a factor supporting the Applicant’s position.
Conclusion
[86] Having considered all of the surrounding circumstances I find that the balance of probabilities is evenly balanced between a finding of confusion between the parties’ marks and a finding of no confusion with respect to the following wares (hereinafter referred to as the Overlapping Wares):
… gardening hormones, …; vitamin growth hormone supplements for plants, rooting compounds for plants and vegetables, natural fungus biological soil conditioner for plants and vegetables, …; vitamin growth hormone supplements for plants and vegetables; plant and vegetable fertilizers, plant nutrient compositions; horticultural soil conditioners; …; fertilizer rinse solutions, ...
[87] As the onus is on the Applicant to establish on a balance of probabilities that the Mark is not confusing with the Opponent’s Marks, I must decide against the Applicant and allow the ground of opposition based on s. 12(1)(d) with respect to the Overlapping Wares.
[88] With respect to the remainder of the Wares, I find that the difference in the nature of the wares serves to shift the balance of probabilities in favour of the Applicant and I reject the ground of opposition based on s. 12(1)(d) of the Act with respect to the remainder of the Wares.
Non-entitlement Grounds
Section 16(3)(a) of the Act
[89] Despite the onus of proof on the Applicant to establish, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and the Opponent’s Marks, the Opponent has the initial onus of proving that one or more of the trade-marks alleged in support of its ground of opposition based on s. 16(3) of the Act was used in Canada prior to the filing date for the Applicant’s application (June 6, 2007) and had not been abandoned at the date of advertisement of the application for the Mark (September 8, 2008) [s. 16(5) of the Act].
[90] The Opponent alleges use and making known of the Opponent’s Marks in association with wares and services since prior to filing date of the application for the Mark.
[91] I consider the Opponent’s position the strongest with respect to the claimed trade-mark PLANT PRODUCTS. As a result, the success or failure of the s.16(3)(a) ground of opposition will be determined based on a finding regarding the likelihood of confusion between the Mark and the Opponent’s PLANT PRODUCTS mark.
[92] Mr. Jahn makes the sworn statement that the Opponent has used the PLANT PRODUCTS mark in Canada since 2003 in association with fertilizers, insecticides, pesticides, fungicides, herbicides, plant growth regulators and plant hormones.
[93] Mr. Jahn also makes the sworn statement that the PLANT PRODUCTS mark has appeared on fertilizer packaging since at least 2003. Mr. Jahn also attaches to his affidavit a photograph of a representative bag of fertilizer which displays the PLANT PRODUCTS trade-mark as part of a design mark (Exhibit A).
[94] As discussed in the analysis of the s. 12(1)(d) ground of opposition, the Opponent relies on sample catalogues which Mr. Jahn states display the PLANT PRODUCTS trade-mark. I note that PLANT PRODUCTS is displayed on the front covers of the catalogues for 1989, 1994 and 2008; however, I am not convinced that this constitutes trade-mark use for the reasons that follow.
[95] In response to undertakings given in the cross-examination of Mr. Jahn, the Opponent provided a copy of the 2008 Turf Products guide. The 2008 catalogue (entitled the Greenhouse and Nursery Product Guide) features the PLANTPRODUCTS & Design mark with the PLANT PRODUCTS mark beside it. The Applicant submitted that the Turf Products catalogue from 2008 follows the same scheme with the PLANTPRODUCTS & Design mark displayed next to the words TURF PRODUCTS. The Applicant submitted that this suggested that PLANT PRODUCTS and TURF PRODUCTS were being used in a descriptive manner to describe the fact that these catalogues featured the Opponent’s “plant products” and “turf products”, respectively. I accept the Applicant’s submissions and find that the appearance of PLANT PRODUCTS on the front cover of the 2008 catalogue does not constitute evidence of use of the PLANT PRODUCTS trade-mark.
[96] Mr. Jahn also provided a copy of the Opponent’s 1995 catalogue. The PLANT PRODUCTS trade-mark is displayed on the front cover of the catalogue. I note that none of the products as shown in the catalogue feature the PLANT PRODUCTS mark. I do see fertilizer displaying the PLANT-PROD trade-mark.
[97] While the PLANT PRODUCTS mark appears on the front covers of these catalogues, I note that the appearance of a trade-mark in a catalogue does not necessarily constitute evidence of use of the mark in association with wares in compliance with s. 4(1) of the Act; particularly in cases like the present where it is not clear from the evidence of record whether the relevant wares can be ordered from the catalogues.
[98] Mr. Jahn makes the sworn statement that the Opponent’s telephones have been answered with “Plant Products” since as early as 1976. Verbal “use” of a trade-mark does not constitute use of a mark pursuant to s. 4 of the Act [see Playboy Enterprises Inc. v. Germain (No. 1) (1987), 16 C.P.R. (3d) 517 (F.C.T.D.)].
[99] Despite the deficiencies in the Opponent’s evidence, I am satisfied that the Opponent has met its evidential burden under s. 16(3)(a) of the Act with respect to the allegation of prior use of the Opponent’s Marks.
[100] The difference in material dates is not significant and as a result my findings under the ground of opposition based on s. 12(1)(d) of the Act are equally applicable here. As a result, I find that the balance of probabilities is evenly balanced between a finding of confusion between the marks in issue and a finding of no confusion with respect to the Overlapping Wares and I allow the s. 16(3)(a) ground with respect to the Overlapping Wares. With respect to the remainder of the Wares, I find that the difference in the nature of the wares serves to shift the balance of probabilities in favour of the Applicant and I reject the ground of opposition based on s. 16(3)(a) of the Act with respect to the remainder of the Wares.
Section 16(3)(c) of the Act
[101] Despite the onus of proof on the Applicant to establish, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and the Opponent’s Trade-names, the Opponent has the initial onus of proving that one or more of the trade-names alleged in support of its ground of opposition based on s. 16(3) of the Act was used in Canada prior to the filing date for the Applicant’s application (June 6, 2007) and had not been abandoned at the date of advertisement of the application for the Mark (September 8, 2008) [s. 16(5) of the Act].
[102] Mr. Jahn attaches to his affidavit copies of front covers of the Opponent’s catalogue for Greenhouse and Nursery Products from 1967, 1972-73, 1975, 1978 and 1980 (Exhibit H). I note that all of the catalogues feature the Opponent’s trade-name, PLANT PRODUCTS CO. LTD.
[103] I am satisfied that the Opponent has met its evidential burden with respect to the allegation of prior use of the Opponent’s Trade-names pursuant to s. 16(3)(c) of the Act.
[104] The difference in material dates is not significant and as a result my findings under the ground of opposition based on s. 12(1)(d) of the Act are equally applicable here. As a result, I find that the balance of probabilities is evenly balanced between a finding of confusion between the marks in issue and a finding of no confusion with respect to the Overlapping Wares and I allow the s. 16(3)(c) ground with respect to the Overlapping Wares. With respect to the remainder of the Wares, I find that the difference in the nature of the wares serves to shift the balance of probabilities in favour of the Applicant and I reject the ground of opposition based on s. 16(3)(c) of the Act with respect to the remainder of the Wares.
Non-distinctiveness Ground – s. 38(2)(d) of the Act
[105] In order to meet its initial burden with respect to this ground, the Opponent must establish that one or more of the Opponent’s Marks was known at least to some extent in Canada as of November 13, 2007 [see Bojangles’ International LLC v. Bojangles Café Ltd. (2006), 48 C.P.R. (4th) 427 (F.C.) and Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 (F.C.T.D.)].
[106] As discussed more fully in the analysis of the registrability and non-entitlement grounds of opposition, I am satisfied that the Opponent’s evidence supports a finding that the Opponent’s Marks had developed a reputation in Canada as of the material date and thus the Opponent has met its evidential burden.
[107] I must now assess whether the Applicant has met its legal burden. Specifically, the onus is on the Applicant to establish on a balance of probabilities that there is no likelihood of confusion between the parties’ marks.
[108] The difference in material dates is not significant and as a result my findings under the ground of opposition based on s. 12(1)(d) of the Act are equally applicable here. As a result, I find that the balance of probabilities is evenly balanced between a finding of confusion between the marks in issue and a finding of no confusion with respect to the Overlapping Wares and I allow the non-distinctiveness ground with respect to the Overlapping Wares. With respect to the remainder of the Wares, I find that the difference in the nature of the wares serves to shift the balance of probabilities in favour of the Applicant and I reject the non-distinctiveness ground of opposition with respect to the remainder of the Wares.
Disposition
[109] Pursuant to the authority delegated to me under s. 63(3) of the Act, I refuse the application for the Mark with respect to the wares “… gardening hormones, …; vitamin growth hormone supplements for plants, rooting compounds for plants and vegetables, natural fungus biological soil conditioner for plants and vegetables, …; vitamin growth hormone supplements for plants and vegetables; plant and vegetable fertilizers, plant nutrient compositions; horticultural soil conditioners; …; fertilizer rinse solutions, ...” and I reject the opposition with respect to the remainder of the Wares pursuant to s. 38(8) of the Act [see Produits Menagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf Gmbh (1986), 10 C.P.R. (3d) 492 (F.C.T.D.) as authority for a split decision].
______________________________
Andrea Flewelling
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office