LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2013 TMOB 113
Date of Decision: 2013-06-25
IN THE MATTER OF AN OPPOSITION by Retail Royalty Company to application No. 1,443,644 for the trade-mark LIVE DE LIFE in the name of Patrick Reilly
File Record
[1] On July 6, 2009, Patrick Reilly filed an application to register the trade-mark LIVE DE LIFE for the following wares and services:
operating a website providing information in the field of fashion and clothing, based on use in Canada since May 30, 2009,
wholesale and retail sale of various items of clothing and footwear, jewellery and fashion accessories, based on proposed use in Canada,
various items of clothing and footwear, jewellery and fashion accessories, based on proposed use in Canada.
The complete list of wares and services specified in the application is attached in Schedule 1.
[2] The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated October 27, 2010 and was opposed by Retail Royalty Company on December 16, 2010. The Registrar forwarded a copy of the statement of opposition to the applicant on December 30, 2010, as required by s.38(5) of the Trade-marks Act. The applicant responded by filing and serving a counter statement generally denying the allegations in the statement of opposition.
[3] The opponent’s evidence consists of the affidavits of Esta Cohen and Alan R. Silhol. The applicant elected not to file any evidence in support of its application. Only the opponent filed a written argument. The opponent subsequently requested, and was granted, leave to file supplemental affidavits of Esta Cohen and Alan R. Silhol as additional evidence pursuant to s.44 of the Trade-marks Regulations: see the Board ruling dated May 27, 2013. Only the opponent was represented at an oral hearing held on June 20, 2013.
Statement of Opposition
[4] The opponent pleads that it is the owner of two registered marks for LIVE YOUR LIFE. One mark covers many of the same wares as those cited in the subject application while the other mark covers retail store services the same as or similar to those specified in the subject application. The complete list of wares and services covered by the opponent’s registrations is attached in Schedule 2.
[5] The grounds of opposition are summarized below, in the order in which they are alleged:
Ground 1 - s.12(1)(d)
The applied-for mark LIVE DE LIFE is not registrable because it is confusing with the opponent’s registered marks LIVE YOUR LIFE.
Ground 2 - s.16(1)(a) & (b)
The applicant is not entitled to register the applied-for mark LIVE DE LIFE for use in association with operating a website because, at the material time May 30, 2009, the applied-for mark was confusing with (i) the opponent’s marks LIVE YOUR LIFE previously used in Canada, and (ii) the opponent’s trade-mark applications which matured to its registrations.
Ground 3 - s.16(3)(a) & (b)
The applicant is not entitled to register the applied-for mark LIVE DE LIFE for use in association with the wares and sales services specified in the subject application because, at the date of filing the application on July 6, 2009, the applied-for mark was confusing with (i) the opponent’s marks LIVE YOUR LIFE previously used in Canada, and (ii) the opponent’s trade-mark applications which matured to its registrations.
Ground 4 - s.2
The applied-for mark is not distinctive of the applicant since the mark LIVE DE LIFE neither distinguishes nor is adapted to distinguish the applicant’s wares and services from those of the opponent.
Ground 5 - s.30(b)
The applicant did not in fact begin to use the mark LIVE DE LIFE for website services at the date of first use claimed in the subject application.
Ground 6 - s.30(i)
In view of the above, the applicant could not have been satisfied that he was entitled to use the applied-for mark in association with the wares and services specified in the application.
Opponent’s Evidence
Esta Cohen
[6] Ms. Cohen identifies herself as an executive with the opponent company Retail Royalty, the owner of the marks LIVE YOUR LIFE cited in the statement of opposition. American Eagle Outfitters has been a licensee of the LIVE YOUR LIFE marks since December 1, 2000. The opponent maintains control over the character and quality of the wares sold by American Eagle Outfitters under the LIVE YOUR LIFE marks. Sales of the opponent’s wares are not tracked by its marks. The opponent’s wares and services are sold under other marks in addition to its LIVE YOUR LIFE marks.
Mr. Silhol
[7] Mr. Silhol identifies himself as an executive with American Eagle Outfitters (AEO). AEO is in the business of selling and promoting consumer goods including clothing and accessories, footwear, leather products, personal care products, sunglasses and the like. Sales are made though stores in malls or standalone locations and though websites. Over seventy-five AEO stores have been operating throughout Canada since well before 2008. Retail services under the opponent’s mark LIVE YOUR LIFE are offered in AEO stores (as shown in Exhibit B of Mr. Silhols’s affidavit) and on an AEO website. From 2006 to 2009, the AEO website attracted over 16 million “hits” from Canadian locations. Attached as Exhibits D and E of Mr. Silhols’ affidavit are illustrations showing how the opponent’s mark is actually used on various of the opponent’s wares. AEO does not track sales of the opponent’s wares by trade-mark. However, AEO sales in Canada are substantial, ranging from $100 to $200 million dollars (US) annually from 2004 to 2010: see paragraphs 12 and 14 of Mr. Silhol’s affidavit. Mr. Silhol states that “many” of the sales bear the opponent’s mark LIVE YOUR LIFE.
[8] AEO has also promoted the opponent’s wares and services under the opponent’s marks. For example, in 2011 AEO sent out 14 distinct direct mail advertisements consisting of over 1.5 million advertisements mailed in Canada, excluding Quebec, and over 300,000 individual advertisements mailed in Quebec. The LIVE YOUR LIFE trade-mark has also been featured in magazines sold or otherwise available in Canada including Maxim, Jane, Cosmo Girl and Seventeen.
Legal Onus and Evidential Burden
[9] Before considering the allegations in the statement of opposition, I will first outline some of the technical requirements with regard to (i) the legal onus on the applicant to prove its case, and (ii) the evidential burden on the opponent to support the allegations in the statement of opposition.
[10] With respect to (i) above, the legal onus is on the applicant to show that the application does not contravene the provisions of the Trade‑marks Act as alleged by the opponent in the statement of opposition. The presence of a legal onus on the applicant means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant. With respect to (ii) above, there is also, in accordance with the usual rules of evidence, an evidential burden on the opponent to prove the facts inherent in its allegations pleaded in the statement of opposition: see John Labatt Limited v. The Molson Companies Limited, 30 CPR (3d) 293 at 298 (FCTD). The presence of an evidential burden on the opponent with respect to a particular issue means that in order for the issue to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that issue exist.
Consideration of the Grounds of Opposition
[11] I will first identify the grounds of opposition for which the opponent has not been able to meet its evidential burden, or are otherwise disqualified from consideration.
Grounds 2 & 3 - s.16(1)(b) & s.16(3)(b)
[12] With respect to the above grounds of opposition, an opponent may not rely on its own application if the application was not pending as of the date of advertisement of the opposed mark: see s.16(4) of the Trade-marks Act. In the instant case, the applications relied on by the opponent for the mark LIVE YOUR LIFE matured to registrations in October 2008 (for services) and July 2008 (for wares). That is, neither application was pending as of October 27, 2010 which is the date of advertisement of the applied-for mark LIVE DE LIFE. As the opponent has not meet the statutory requirements for the above grounds, they need not be considered.
Ground 5 - s.30(b)
[13] The opponent has not adduced any evidence to support the allegation that the applicant did not commence use of the mark LIVE DE LIFE in association with a website as of May 30, 2009. As the opponent has not met its evidential burden with respect to this ground, it is rejected.
Ground 6 – s.30(i)
[14] A ground of opposition pursuant to s.30(i) requires an opponent to plead fraud on the part of the applicant or that specific federal statutory provisions (other than those already pleaded) prevent the registration of the applied-for mark: see Sapodilla Co. Ltd. v. Bristol‑Myers Co. (1974), 15 CPR (2d) 152 at 155 (TMOB) and Canada Post Corporation v. Registrar of Trade‑marks (1991), 40 CPR (3d) 221. In the instant case no such allegations have been made and therefore the pleadings do not support a ground of opposition pursuant to s.30(i). The ground of opposition pursuant to s.30(i) is therefore rejected.
Remaining Grounds of Opposition
[15] The remaining grounds turn on the issue of confusion between the applied-for mark LIVE DE LIFE and the opponent’s LIVE YOUR LIFE marks. The material times to consider the issue of confusion are the date of decision, with respect to the first ground of opposition based on s.12(1)(d); the date of filing of the application and the date of first use claimed, that is, July 6, 2009 and May 30, 2009, with respect to the second and third grounds of opposition based on s.16(3)(a) and 16(1)(a), respectively; and the date of opposition, that is, December 16, 2010 in respect of the fourth ground of opposition alleging non-distinctiveness: for a review of case law concerning material dates in opposition proceedings see American Retired Persons v. Canadian Retired Persons (1998), 84 CPR(3d) 198 at 206 ‑ 209 (FCTD).
[16] The legal onus is on the applicant to show that there would be no reasonable likelihood of confusion, within the meaning of s.6(2) of the Trade-marks Act, shown below, between the applied-for mark LIVE DE LIFE and the opponent’s mark LIVE YOUR LIFE:
The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services. . . associated with those trade-marks are manufactured . . . or performed by the same person, whether or not the wares or services . . . are of the same general class.
[17] Thus, s.6(2) does not concern the confusion of the marks themselves, but confusion of goods or services from one source as being from another source. In the instant case, the question posed by s.6(2) is whether there would be confusion of the applicant’s wares and services provided under the mark LIVE DE LIFE as wares and services emanating from or sponsored by or approved by the opponent who has provided similar wares and services under its mark LIVE YOUR LIFE.
Test for Confusion
[18] The test for confusion is one of first impression and imperfect recollection. Factors to be considered, in making an assessment as to whether two marks are confusing, are “all the surrounding circumstances including” those specifically mentioned in s.6(5)(a) to s.6(5)(e) of the Act: the inherent distinctiveness of the marks and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; the degree of resemblance in appearance or sound of the marks or in the ideas suggested by them. This list is not exhaustive and all relevant factors are to be considered. Further, all factors do not necessarily have equal weight as the weight to be given to each depends on the circumstances: see Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 C.P.R.(3d) 308 (F.C.T.D.). However, as noted by Mr. Justice Rothstein in Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), 92 C.P.R.(4th) 361 (S.C.C.), although the degree of resemblance is the last factor cited in s.6(5), it is the statutory factor that is often likely to have the greatest effect in deciding the issue of confusion.
Consideration of s.6(5) Factors
[19] The opponent’s mark LIVE YOUR LIFE has some degree of inherent distinctiveness in relation to the opponent’s wares and services. However, as the mark is composed of common dictionary words and the mark as a whole is somewhat laudatory in its implication that the opponent’s wares and services will enable individuals in “living their lives.” The mark is therefore a relatively weak mark. Similarly, the applied-for mark LIVE DE LIFE is a relatively weak mark although somewhat more distinctive that the opponent’s mark owing to the slang term DE which substitutes for the word “the.” I am prepared to infer from Mr. Silhol’s unchallenged evidence that the opponent’s mark LIVE YOUR LIVE had acquired some reputation in Canada at all material times. Of course, there is no evidence indicating that the applied-for mark had acquired any distinctiveness at any material time. I find that the first factor in s.6(5), which is a combination of acquired and inherent distinctiveness, favours the opponent owing to the acquired distinctiveness of its mark. However, the first factor favours the opponent only slightly as the opponent’s evidence of acquired distinctiveness is rather imprecise.
[20] The second, third and fourth factors also favour the opponent as the opponent has been using its mark LIVE YOUR LIFE since at least 2004 and the nature of the parties’ wares, services and trades are overlapping or essentially the same.
[21] With respect to the last factor in s.6(5), I find that the parties’ marks resemble each other to a fairly significant extent visually and in sounding, although less so in ideas suggested. In this regard, the applied-for mark suggests the idea of “living the high life,” that is, a life of luxury and extravagance. Overall, the parties’ marks resemble each other more than they are different. The last factor in s.6(5) therefore favours the opponent.
[22] There is, however, a principle of trade-mark law that, in the circumstances of the instant case, mitigates the opponent’s advantage under the last factor in s.6(5). The principle is that comparatively small differences will suffice to distinguish between “weak” marks, that is, between marks of relatively low inherent distinctiveness: see GSW Ltd. v. Great West Steel Industries Ltd. (1975), 22 CPR(2d) 154 (FCTD). Further, the opponent’s evidence cannot support a claim that the distinctiveness of the mark LIVE YOUR LIFE has been so enhanced by prior use and advertising that it is entitled to a broad scope of protection. Thus, the advantage given to the opponent under the last and most important factor in s.6(5) is significantly lessened.
Disposition
[23] Considering the factors in s.6(5) as discussed above, and also taking into account that the opponent’s mark is a relatively weak mark which is not entitled to claim a broad scope of protection, I conclude that the balance of probabilities between finding that there is no reasonable likelihood of confusion, and finding that there is a reasonable likelihood of confusion, tips slightly in favour of the latter.
[24] As the legal onus is on the applicant to show that there would be no reasonable
likelihood of confusion, I must find against the applicant. The subject application is therefore refused.
[25] This decision has been made pursuant to a delegation of authority under s.63(3) of the Trade-marks Act.
___________________
Myer Herzig, Member,
Trade-marks Opposition Board
Canadian Intellectual Property Office
Schedule 1
APPLICANT’S MARK
LIVE DE LIFE Application No. 1,443,644
wares
(1) Clothing, namely, athletic wear, beachwear, business attire, casual wear,
children's clothing, exercise clothing, formal wear, golf wear, gym wear,
loungewear, outdoor winter clothing, rainwear, sleepwear, sports clothing and
undergarments; Headwear, namely, hats, caps, toques, head bands and bandanas;
Footwear, namely, athletic footwear, beach footwear, casual footwear,
children's footwear, evening footwear, exercise footwear, golf footwear,
outdoor winter footwear and rain footwear.
(2) Jewellery; Fashion accessories, namely, watches, sunglasses, wallets,
scarves, fashion jewellery and hair decorations; Bags, namely, purses,
handbags, totes, backpacks, duffles, diaper, garment and computer bags.
(3) Printed matter, namely, posters, signs, calendars, postcards and
directories.
(4) Promotional items, namely, stickers, bumper stickers, mouse pads, key
chains, novelty flags, banners, balloons, novelty buttons, greeting cards, note
cards, writing pencils, pens, coffee mugs and fridge magnets.
services
(1) Wholesale and retail sale of clothing, namely, athletic wear, beachwear,
business attire, casual wear, children's clothing, exercise clothing, formal
wear, golf wear, gym wear, loungewear, outdoor winter clothing, rainwear,
sleepwear, sports clothing and undergarments, headwear, namely, hats, caps,
toques, head bands and bandanas, footwear, namely, athletic footwear, beach
footwear, casual footwear, children's footwear, evening footwear, exercise
footwear, golf footwear, outdoor winter footwear and rain footwear, jewellery,
fashion accessories, namely, watches, sunglasses, wallets, scarves, fashion
jewellery and hair decorations, and bags, namely, purses, handbags, totes,
backpacks, duffles, diaper, garment and computer bags.
(2) Operating a website providing information in the field of fashion and
clothing.
Schedule 2
OPPONENT’S MARKS
LIVE YOUR LIFE Registration No. TMA 719,437
wares
Wearing apparel, clothing, and clothing accessories, namely blouses, bottoms,
dresses, tops, jackets, jeans, lingerie, loungewear, pants, shirts, shorts,
skirts, sleep wear, sweaters, undergarments, footwear, namely athletic shoes,
shoes, sandals, sneakers, thongs and socks and headwear, namely bandanas,
visors, head bands, hats and caps.
LIVE YOUR LIFE Registration No. TMA 726,727
services
Retail store services, e-commerce, and telephone order services, all in the
field of clothing, clothing accessories, underwear, camisoles, lingerie,
sleepwear, pajamas, jumpers, overalls, dresses, sweat pants, sweatshirts,
warm-up pants and jackets, swimwear, outerwear, coats, vests, parkas, anoraks,
jackets, pants, jeans, shorts, sweaters, shirts, t-shirts, neckwear, skirts,
blouses, footwear, hosiery, socks, slippers, leather and rubber boots,
headwear, hats, caps, scarves, gloves, backpacks, athletic bags, cosmetic bags
sold empty, handbags, purses, wallets, travel bags, luggage, duffle bags,
belts, perfume and fragrances, cologne, eau de toilette, eau de cologne,
scented body spray, sunglasses, wristwatches and jewellery.