IN THE MATTER OF AN OPPOSITION
by Boy Scouts of Canada to application No.
715,985 for the trade-mark SCOUT filed by
Derkach Manufacturing Canada Ltd.
On November 2, 1992, the applicant, Derkach Manufacturing Canada Ltd., filed an application to register the trade-mark SCOUT for “flashlights” based on use of the mark in Canada since December of 1991. The application was advertised for opposition purposes on March 23, 1994.
The opponent, Boy Scouts of Canada, filed a statement of opposition on August 22, 1994, a copy of which was forwarded to the applicant on October 24, 1994. The grounds of opposition include, among others, that the applied for trade-mark is not distinctive in view of the opponent’s use of its trade-marks comprising or including the words BOY SCOUTS, SCOUTS or SCOUT.
The applicant filed and served a counter statement. As its evidence, the opponent submitted an affidavit of its Executive Director National Business Operations, John Robert Hallett. As its evidence, the applicant submitted an affidavit of its President, George Derkach, and an affidavit of a legal assistant, Roxanne Walker. Both parties filed a written argument and an oral hearing was conducted at which only the opponent was represented.
As for the ground of non-distinctiveness, the onus or legal burden is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its wares from those of others throughout Canada: see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (T.M.O.B.). Furthermore, the material time for considering the circumstances respecting this issue is as of the filing of the opposition (i.e. - August 22, 1994): see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.). Finally, there is an evidential burden on the opponent to prove the allegations of fact in support of its ground of non-distinctiveness.
Boy Scouts of Canada is an organization which provides programs and training for young boys. It has been in existence in Canada since 1914 when it was incorporated pursuant to a special Act of Parliament. Since that time, it has been active throughout Canada. As conceded by the applicant, “....the Opponent’s trade-marks are well known in relation to its education programmes for boys.” (see paragraph 25 of the applicant’s written argument)
In his affidavit, Mr. Hallett describes the structure of the opponent’s organization and its manner of operation. In particular, he describes the manner in which the opponent acquires and sells goods to its membership. For many years, the opponent has had a dealer network across Canada comprising various retailers who typically set aside a section of their stores to sell the opponent’s wares. Those wares include uniforms, badges, emblems and camping supplies including flashlights. The opponent also operates its own retail outlets under the trade-name Scout Shop. More recently, the number of dealers has declined (from 106 in 1976 to 25 in 1991) while the number of Scout Shops has increased to over 50 throughout Canada.
Mr. Hallett’s affidavit is deficient in some respects. For example, he did not provide sales figures for flashlights sold through the opponent’s stores or dealers. In fact, he did not provide clear evidence of a sale of such an item. However, appended as exhibits to Mr. Hallett’s affidavit are photocopied excerpts from the opponent’s product catalogues dating back to the early 1950's. Those excerpts show that the opponent has offered flashlights for sale for many years.
In the earlier catalogues, a flashlight is pictured which bears the wording “Official Flashlight - Boy Scouts of Canada.” The catalogues from 1963 to 1985 picture a flashlight with no discernible markings but the product is consistently referred to as a “Scout Flashlight” in the product description. From 1987 on, the catalogues include that same product description and the flashlight pictured bears the trade-mark SCOUTS CANADA below one of the opponent’s emblems.
Given the consistent offering of flashlights by the opponent through its catalogues to its extensive membership through its network of retailers for over forty years, I can conclude that many consumers saw those advertisements and it is likely that many such flashlights were sold. I can also conclude that the opponent has effected significant sales of other camping items for many years. Thus, although the evidence does not support use of the trade-mark SCOUT ‘per se’ with flashlights, it does point to use of the trade-mark SCOUTS CANADA & Design with such wares. The evidence also shows that the product designation “Scout Flashlight” has become associated with a particular type of flashlight offered for sale to the membership.
In his affidavit, Mr. Derkach states that the applicant sells a wide variety of products to retailers such as padlocks, cutting tools, putty knives, scrapers and flashlights. According to Mr. Derkach, his company’s market includes automotive supply stores, pharmacies, hardware stores and outdoor supply stores who in turn sell to their retail customers. Appended as exhibits to his affidavit are a catalogue and a sample flashlight which are intended to illustrate the manner of use of the trade-mark SCOUT. However, those exhibits illustrate use of slightly different trade-marks for flashlights namely, MINI SCOUT, MICRO SCOUT and MONO SCOUT. Mr. Derkach did not provide any evidence of specific sales of his company’s product nor did he provide any annual sales figures.
The applicant has also relied on the state of the register evidence in the Walker affidavit respecting marks of record incorporating the word SCOUT. State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace: see the opposition decision in Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R.(3d) 432 and the decision in Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R.(3d) 205 (F.C.T.D.). Also of note is the decision in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R.(3d) 349 (F.C.A.) which is support for the proposition that inferences about the state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located.
In the present case, Ms. Walker evidenced nine registrations for trade-marks comprising or including the word SCOUT. However, only two of those marks are arguably relevant to the present case, namely No. 325,899 for the trade-mark SCOUT for stuffed toys and No. UCA49773 for the trade-mark SCOUT-TEX for children’s clothing. In the absence of evidence of use of those two marks, I am not prepared to infer that they have been used more than minimally. Thus, the Walker affidavit is insufficient to evidence common use of SCOUT marks in the relevant marketplace.
In view of the above, I find that the opponent has evidenced a significant reputation for its SCOUT marks in Canada in association with its education programs and, to a lesser extent, with the associated wares that it has marketed across Canada for many years including flashlights. Given the similarities between the wares, trades and marks of the parties, I find that consumers faced with the trade-mark SCOUT for flashlights would likely assume some approval, license or sponsorship by the opponent. This is particularly true in those areas of Canada which are predominantly French-speaking since the word “scout” in French points to the opponent’s organization only and has no other meaning: see the reported decision in Boy Scouts of Canada v. Alfred Sternjakob GmbH & Co. (1984), 2 C.P.R.(3d) 407 at 412-413 (F.C.T.D.). Thus, the applicant has failed to satisfy the onus on it to show that its mark is adapted to distinguish or actually distinguishes its flashlights throughout Canada. The ground of non-distinctiveness is therefore successful.
In view of the above, it is unnecessary to consider the remaining grounds of opposition. However, I wish to note that none of them would likely have been successful. The opponent’s grounds based on non-compliance with Section 30 of the Trade-marks Act are not properly or adequately pleaded. One prior entitlement ground is not properly pleaded since it does not rely on the provisions of Section 16 of the Act. The success of the other prior entitlement ground is dubious since, as noted previously, the evidence is unclear in establishing actual use of a SCOUT trade-mark prior to the applicant’s claimed date of first use.
As noted above, the Derkach affidavit suggests that the applicant may not have used the trade-mark SCOUT but instead has used trade-marks such as MINI SCOUT. Thus, it is somewhat surprising that the opponent did not seek leave to amend its statement of opposition upon receipt of the applicant’s evidence to add a ground of opposition based on non-compliance with Section 30(b) of the Act. At the oral hearing, the opponent’s agent submitted that the broad reference to non-compliance with Section 30 of the Act in the statement of opposition includes a ground of non-compliance with Section 30(b). I disagree.
In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I refuse the applicant’s application.
DATED AT HULL, QUEBEC, THIS 16th DAY OF SEPTEMBER, 1998.
David J. Martin,
Member,
Trade Marks Opposition Board.