Trademark Opposition Board Decisions

Citation: 2010 TMOB 1

 

 

IN THE MATTER OF AN OPPOSITION by Canadian Tire Corporation, Limited to application No. 1,233,150 for the trade-mark THE NEW HOME COLLECTION filed by Hunter Douglas Inc.________________________________________

 

[1]          On October 7, 2004, Hunter Douglas Inc. [the Applicant] filed an application to register the trade-mark THE NEW HOME COLLECTION [the Mark] based upon proposed use of the Mark in Canada in association with window coverings, namely window blinds and window shades; sample books for window coverings, window blinds and window shades. A convention priority filing date of August 27, 2004 has been claimed and the right to the exclusive use of the words HOME and COLLECTION has been disclaimed apart from the Mark.

 

[2]          The application was advertised for opposition purposes in the Trade-marks Journal of April 20, 2005.

 

[3]          On May 26, 2005, Canadian Tire Corporation, Limited [the Opponent] filed a statement of opposition. The Applicant filed and served a counter statement in which it denied the Opponent’s allegations.

 

[4]          On April 4, 2006, the Opponent was granted leave to amend its statement of opposition. On January 26, 2007, the Applicant was granted leave to amend its counter statement.

 

[5]          In support of its opposition, the Opponent filed the affidavits of John Jobin and Elizabeth Manley.

 

[6]          In support of its application, the Applicant filed an affidavit of Violet Viglasky and two affidavits of Lisa Saltzman. The Opponent obtained an order for the cross-examination of these affiants but cross-examinations were not conducted.

 

[7]          Both parties filed a written argument and participated in an oral hearing.

 

Onus

[8]          The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Trade-marks Act, R.S.C. 1985, c. T-13 [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].

 

Section 12(1)(d) Ground of Opposition

[9]          Pursuant to s. 12(1)(d) of the Act, the Opponent has pleaded that the Mark is not registrable because the Mark is confusing with the mark HOME COLLECTION MAISON & Design [the Opponent’s Mark] registered by the Opponent under No. TMA551,689. As that registration is extant, the Opponent has met its initial burden with respect to this ground.

 

[10]      The Opponent’s Mark is shown below:

 

[11]      The Opponent has pleaded in the statement of opposition that the Opponent’s Mark is registered for the following wares:

(1) Kitchenware and gadgets, namely mixing bowls, mixing bowl sets, flatware, flatware sets, dinnerware sets, cookware sets (4 pieces), pots, pans, skillets, stock pots, wire racks, multi cookers, roasters, tea towels, dish cloths, glass tumblers, plastic tumblers, hi-ball glasses, bread boxes, kitchen and cooking thermometers, flour sifters, graters, can openers, bottle openers, measuring spoons, poultry lacers, vegetable peelers, can punches, rice skimmers, egg beaters, spaghetti servers, meat tenderizers, corn cob holders, potato ricers, bag clips, ice cream scoops, nutcrackers with picks, corkscrew openers, iron wires, plate hangers; drainer trays, cutlery trays, dishpans, splatter screens, colanders, strainers, funnels, vegetable scrub brushes, roasting and cooling racks, turkey lifters, steamers, skewers, basters, pizza cutters, cheese slicers and planes, pastry cutters, egg and tomato slicers, measuring cups and spoons, whips and whisks, garlic presses, paper towel holders, apple corers, muffin and cupcake liners, salad spinners, french fry baskets, bread baskets, plate holders, heat diffusers, burner covers, timers, drip pans, range rings, kitchen scales, magnets, wooden tools, rolling pins, cake decorators, cookie cutters, kitchen knives, steak knives, cleavers, knife sharpeners, scissors, canisters, canister sets, spice racks, wine racks, trivets, recipe boxes, banana holders, coasters, cutting boards, coffee filters, cookie sheets, cake pans, muffin pans, ring-shaped cake pans, vacuum bottles, napkin holders, cream and sugar holders, pitchers, mugs, salt and pepper shakers and grinders; kitchen utensils, namely cooking forks, cooking spoons, slotted spoons, turners, slotted turners, tongs, spatulas, soup ladles, gravy ladles, potato mashers, butter beaters, black dough blenders; household containers and organizers, namely, waste baskets, trash cans, storage containers, storage organizers, tool organizers, drawer organizers, storage totes, audio and video storage containers; laundry accessories, namely, laundry baskets, hampers, ironing boards and ironing board covers, clothes pins, clothes lines, indoor dryers, vacuum bags and belts; decorative bath accessories, namely, bath mats, towel bars, robe hooks, toilet brushes with holders, 4-piece bath sets, towel rings, soap dishes, tissue paper holders, toilet paper holders, wire shower caddies; wall clocks, desk style clocks, alarm clocks; household accessories, namely, bed trays, TV trays, kitchen trolleys, shelving units, letter holders, magazine racks, floor mats, welcome mats, braided rug mats; window blinds; candles, tea lights, candle holders, pot pourri, liquid candle lamps and oil lamps; weather instruments, namely barometers, indoor thermometers, outdoor thermometers.

[emphasis added]

 

[12]      It is true that when the opposition was filed, the Opponent’s registration covered only the foregoing wares. However, the material date with respect to s. 12(1)(d) is the date of my decision [Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37 C.P.R. (3d) 413 (F.C.A.)] and at present the Opponent’s registration also covers the following wares:

(2) Lighting; namely, flush mounts, track lighting, recessed lighting, task (desk) lighting, florescent lighting, chandeliers, wall sconces, table lamps, floor lamps, pendant lights, semi-flush mounts, saucer pendant lights, cone pendant lights, accent lamps, reading lamps; ceiling fans.

 

(3) Christmas textiles, namely dish cloths, place mats, oven mitts, coasters, table cloths; kitchen textiles namely tableclothes, pot holders, oven mitts; drapes, plastic blinds; bowl sets; outdoor lighting namely post lights, post heads, up mount, down mount, carriage, coach and hanging; floor coverings namely area rugs; furniture, namely ready to assemble furniture namely tables and desks.

 

[13]      I note that whether or not I consider the wares that were added to the original registration, the outcome of this ground of opposition would not change.

 

[14]      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.

 

[15]      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.).]

 

6(5)(a) - the inherent distinctiveness of the trade-marks and the extent to which they have become known

[16]      Neither mark is inherently strong but the Opponent’s Mark has a greater degree of inherent distinctiveness due to its design features.

 

[17]      There is no evidence that the Applicant’s Mark has become known to any extent whereas there is evidence that the Opponent’s Mark has become known. Mr. Jobin, the Opponent’s Line of Business Director, Home Decor, Repair and Maintenance, attests that products bearing the Opponent’s Mark have been available for purchase by the public since as early as 1999. He further attests that millions of advertising dollars have been spent each year since 2001 to promote the Opponent’s Mark across Canada. During each of the years 2004, 2005 and 2006, over ten million catalogues have been distributed which display the Opponent’s Mark.  Sales of wares in association with the Opponent’s Mark during the period 2001 until up to and including March 24, 2006 have exceeded 74 million dollars. 

 

[18]      The Applicant has pointed out that the Opponent’s figures regarding use and advertising have not been broken down to reveal those portions that relate solely to window coverings. While the Opponent has shown how its mark is associated with window blinds (Exhibit “F”, Jobin affidavit), the only evidence of sales of such blinds is provided by Exhibit “H” to the Jobin affidavit and that exhibit shows only a small quantity of sales of blinds. Nevertheless, s. 6(5)(a) favours the Opponent.

 

6(5)(b) - the length of time each has been in use

[19]      Section 6(5)(b) clearly favours the Opponent given that there is no evidence that the Applicant’s Mark has been used to date whereas the certified copy of  the Opponent’s registration [Exhibit “A”, Jobin affidavit] indicates that use of its mark began in association with window blinds on or before September 17, 2001. (Mr. Jobin attests that the Opponent’s Mark has in general been used since as early as 1999 and shows use of it in association with window blinds in 2005 and 2006.)

 

6(5)(c) and (d) - the nature of the wares, services, business and trade

[20]       Both marks are associated with wares for the home. The Opponent’s Mark is registered in association with a broad range of wares for the home, including window blinds. The Applicant has applied to register its Mark for window blinds and other window covering products. Accordingly, the parties’ wares overlap.

 

[21]      The Opponent’s wares are sold to the public through its associate stores. There is no evidence concerning the Applicant’s channels of trade. However, neither the Opponent’s registration nor the Applicant’s application includes any restriction on the channels of trade; I may therefore assume that given the overlap between the wares, the channels of trade could also overlap.

 

[22]      Sections 6(5)(c) and (d) accordingly favour the Opponent.

 

6(5)(e) - the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them

[23]      Although marks are to be considered in their entirety, the first component of a mark is often considered more important for the purpose of distinction. However, when the first component is a common, descriptive or suggestive word, the significance of the first component decreases [see Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.); Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.); Phantom Industries Inc. v. Sara Lee Corp. (2000), 8 C.P.R. (4th) 109 (T.M.O.B.)].

 

[24]      Overall, there is a fair degree of resemblance between the Applicant’s Mark and the Opponent’s Mark in appearance, sound and ideas suggested. Section 6(5)(e) therefore also favours the Opponent.

 

other surrounding circumstances

i) state of the register

[25]      Ms. Saltzman has conducted searches of the Canadian Trade-marks Office’s database directed to marks that include the word NEW and marks that include the two words HOME and COLLECTION.

 

[26]      State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace, and inferences about the state of the marketplace can only be drawn where large numbers of relevant registrations are located. [Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432; Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R. (3d) 205 (F.C.T.D.); Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.)]

 

[27]      Of the third party registrations/applications located by Ms. Saltzman, the following include some form of window product in their statement of wares:

1.      use-based registration No. TMA634,819:

HEIRLOOM HOME COLLECTION for, inter alia, window treatments, namely fabric valences, fabric tiers, fabric panels, fabric swags

2.      use-based registration No. TMA513,783:

JCPENNEY HOME COLLECTION & Design for, inter alia, curtains, draperies, valences and tiebacks

3.      use-based registration No. TMA601,588:

JCPENNEY HOME COLLECTION for, inter alia, curtains, draperies, valences and tiebacks

4.      use-based registration No. TMA477,414:

LINGE DE MAISON PARK AVENUE HOME COLLECTION for, inter alia, window coverings, window treatments

5.      use-based registration No. TMA590,570:

THE ST. PIERRE HOME FASHIONS COLLECTION for, inter alia, window drapes

6.      proposed use application No. 1,293,190:

DAN RIVER 24/7 HOME COLLECTION  for, inter alia, drapery and draperies, window curtains, poufs, puffs, shrouds, swags, and fabric valences

7.      proposed use application No. 1,323,447:

HOME SUITE COLLECTION for, inter alia, window coverings namely, curtains, draperies, valences and swags

8.      proposed use application No. 1,323,446:

HOME SUITE COLLECTIONS for, inter alia, window coverings namely, curtains, draperies, valences and swags

9.      proposed use application No. 1,281,673:

MAXWELL HOME & GARDEN COLLECTION for, inter alia, fabric products for window coverings, namely draperies and curtains.

 

[28]      I consider any abandoned applications or expunged registrations located by Ms. Saltzman to be irrelevant. Moreover, I consider entries 6-9 above to be irrelevant because applications are not part of the Register (see s. 26 of the Act); if applications were relevant, these ones would still not be relevant as they are all based on proposed use.

 

[29]      The five registrations listed above are insufficient for me to draw any meaningful conclusion about the state of the marketplace (especially since they only represent the marks of three third parties). In any event, each of the listed registered marks is more distinguished from the Opponent’s Mark than is the Applicant’s Mark because the words added to HOME COLLECTION by the third parties (HEIRLOOM, JCPENNEY, PARK AVENUE, and GUESS) are much more distinctive than the words added by the Applicant (THE NEW).  

 

[30]      The Applicant has submitted that third party marks used for non-window wares that are covered by the Opponent’s registration ought to serve to weaken the scope of protection that the Opponent’s Mark is entitled to with respect to window coverings.  However, I am of the view that it is only third party marks used for wares that are the same as or closely related to the wares at issue in these proceedings that are relevant in these proceedings. For example, even though the Opponent’s registration includes “candles” in its statement of wares, that does not make other registrations that cover candles relevant to the case at hand.

 

[31]      If I were to consider the results of Ms. Saltzman’s search with a view to the broader category of home furnishings, then the following additional registrations must be considered:

1.    use-based registration No. TMA433,156:

CANADIAN HOME COLLECTION for furniture and accessories and decorative products

2.    use-based registration No. TMA496,040:

GUESS HOME COLLECTION for home furniture, decorative rugs, etc.

3.    use-based registration TMA558,154:

HOME & GIFT COLLECTION for pictures, clocks, lamps, shelving, etc.

4.    use-based registration No. TMA558,233:

HOME SHOWCASE COLLECTION for floor coverings.

 

[32]      Even with the addition of these four registrations, there is an insufficient number for me to draw any conclusion about the state of the marketplace. After all, there are only seven third parties who have registered marks that include the words HOME and COLLECTION for home furnishings.

 

ii) state of the marketplace

[33]      Ms. Viglasky, a private investigator, conducted searches of the marketplace in December 2006 for marks comprised in whole or in part of the words HOME COLLECTION. She located the following:

•      SPRINGSHOME COLLECTION bedclothes

•      DAN RIVER 24/7 HOME COLLECTION bedclothes

•      WESTONE HOME COLLECTION bedclothes

•      WELL DRESSED HOME COLLECTION bedclothes

•      JACLYN SMITH HOME COLLECTION fabric

•      HASTINGS HOME COLLECTION cushions and blanket.

 

[34]      Each of the marks located by Ms. Viglasky is distinguishable from the marks of the Applicant and the Opponent because each of them prefaces HOME COLLECTION with a distinctive word or words. Moreover, I note that none of the marks located by Ms. Viglasky were used in association with window coverings. For these reasons, I do not consider the state of the marketplace as evidenced by Ms. Viglasky to be a significant consideration with respect to the likelihood of confusion between THE NEW HOME COLLECTION window covering products and HOME COLLECTION MAISON & Design window covering products.

 

iii) effect of disclaimers

[35]      In its registration, the Opponent disclaimed the right to the exclusive use of the words HOME COLLECTION MAISON apart from the trade-mark. The Applicant submits at paragraph 68 of its written argument, “if the only similarity between the two marks is the disclaimed matter, the opposition will not succeed since the purpose of the disclaimer is to otherwise permit other persons to use such independently non-registrable matter.”  In support of its submission, the Applicant cites John Labatt Ltd. v. Registrar of Trade-marks (1984), 79 C.P.R. (2d) 110 at 114 (F.C.T.D.) and Canadian Parking Equipment v. Registrar of Trade-marks (1990), 34 C.P.R. (3d) 154 at 159 (F.C.T.D.). Neither of those cases was an opposition case, rather each dealt with a decision during examination to refuse an application under s. 12(1)(b) of the Act. In my view, neither case supports the Applicant’s submission.

 

[36]      The Applicant admits at paragraph 67 of its written argument that “[w]hen determining if two marks are confusing, disclaimed matter must be taken into account, because the marks in question must be considered in their totalities”, citing Standard Coil Products (Can.) Ltd. v. Standard Radio Corp. (1971), 1 C.P.R. (2d) 155 at 158 (F.C.T.D.), aff’d 26 C.P.R. (2d) 288 (F.C.A.).  I agree with this submission but prefer to cite American Cyanamid Co. v. Record Chemical Co. Inc. (1972), 7 C.P.R. (2d) 1 at 5 (F.C.T.D.) as the fact situation in that case was closer to the one at hand. Overall, when dealing with a s. 12(1)(d) ground of opposition, a disclaimer in either the Applicant’s  application or the Opponent’s registration is of little, if any, consequence.

 

conclusion re s. 12(1)(d)

[37]      The Applicant bears the onus of satisfying me that, on a balance of probabilities, confusion between the marks is not likely. Having considered all of the surrounding circumstances, I am not so satisfied. The marks share the dominant feature HOME COLLECTION and are used in association with the same wares. An ordinary consumer, who is familiar with the Opponent’s Mark but has an imperfect recollection of it, would likely think, as a matter of first impression, that THE NEW HOME COLLECTION window covering products and HOME COLLECTION MAISON & Design window blinds share a single source. The evidence of third party use and registration is insufficient to make confusion unlikely; as is the Applicant’s addition of the weak prefix THE NEW.

 

[38]      The Applicant has not met its legal burden and the s. 12(1)(d) ground of opposition accordingly succeeds.

 

Section 12(1)(b) Ground of Opposition

[39]      Pursuant to s. 12(1)(b) of the Act, the Opponent has pleaded that the Mark is not registrable because the Mark “when depicted, written or sounded clearly describes in the English language, the character or quality of the wares it is proposed to be used in association with as being a new collection of such wares suitable for the home.” The Opponent’s initial burden has been met by the dictionary definitions introduced by Ms. Manley.

 

[40]      The material date with respect to s. 12(1)(b) is the date of filing of the application [Havana Club Holdings S. A. v. Bacardi & Company Limited (2004), 35 C.P.R. (4th) 541 (T.M.O.B.); Fiesta Barbeques Limited v. General Housewares Corporation (2003), 28 C.P.R. (4th) 60 (F.C.T.D.)].

 

[42]      In the present case, the Applicant’s Mark consists solely of ordinary dictionary words. The Applicant has agreed that its disclaimers of HOME and COLLECTION are admissions that such words are clearly descriptive of the character or quality of its wares [see paragraph 59, Applicant’s written argument]. The question therefore becomes whether the addition of the words THE NEW renders the Mark as a whole not clearly descriptive.

 

[43]      The Applicant’s position is that the Mark is not clearly descriptive because multiple meanings can be attributed to the phrase THE NEW HOME COLLECTION. I agree that the average consumer might interpret the Mark as referring to “a new collection of items for the home” or “a collection of items for new homes”. However, the fact that a mark has more than one meaning does not prevent a s. 12(1)(b) ground of opposition from succeeding. If each of the meanings is clearly descriptive then the mark is unregistrable under s. 12(1)(b). [See Pillsbury Co. v. Alantra Imports Co. (1999), 1 C.P.R. (4th) 252 (T.M.O.B.) and Holiday Juice Ltd. v. Sundor Brand Inc. (1990), 33 C.P.R. (3d) 509 (T.M.O.B.).] As the various meanings put forward by the Applicant in the present case are each clearly descriptive of the Applicant’s wares, the Applicant’s Mark is unregistrable pursuant to s. 12(1)(b).

 

Distinctiveness Ground of Opposition

[44]      The Opponent has pleaded that the Mark is not distinctive because 1) it is not adapted to distinguish the wares in association with which it is proposed to be used from the wares of the Opponent, in that there is a likelihood of confusion between the applied-for Mark and the Opponent’s Mark and 2) it is clearly descriptive of the character of the Applicant’s wares.

 

[45]      The material date for assessing distinctiveness is 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.T.D.)].

 

[46]      As stated by Mr. Justice O'Keefe in Canadian Council of Professional Engineers v. APA - The Engineered Wood Association (2000), 7 C.P.R. (4th) 239 (F.C.T.D.) at 253, "a purely descriptive or a deceptively misdescriptive trade-mark is necessarily not distinctive”. Thus, having found that the Mark is unregistrable under s. 12(1)(b), I necessarily also find that it is not distinctive.

 

[47]      The distinctiveness ground of opposition accordingly also succeeds.

 

Remaining Grounds of Opposition

[48]      As the Opponent has already succeeded under three grounds, there is no need to assess the remaining grounds of opposition.

 

Disposition

[49]      Pursuant to the authority delegated to me under s. 63(3) of the Act, I refuse the Applicant’s application pursuant to s. 38(8) of the Act.

 

 

 

DATED AT TORONTO, ONTARIO, THIS 6th DAY OF JANUARY 2010.

 

 

 

 

Jill W. Bradbury

Member

Trade-marks Opposition Board