LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 178
Date of Decision: 2010-10-27
IN THE MATTER OF AN OPPOSITION by PDB Sports Ltd. to application No. 1,228,359 for the trade-mark EQUESTRIAN PLANET Design in the name of Les Films Olympia Inc./Olympia Films Inc.
[1] On August 26, 2004, Les Films Olympia Inc./Olympia Films Inc. (the Applicant) filed an application to register the trade-mark EQUESTRIAN PLANET Design (the Mark), shown below.
[2] The application is based upon proposed use of the Mark in Canada in association with the following wares:
Pre-recorded audio cassettes; phonograph records; pre-recorded compact discs featuring music, pre-recorded video cassettes; pre-recorded laser video discs, digital video discs and digital versatile discs featuring animated and live action motion pictures and television programs, pre-recorded CD-ROM discs featuring games, music, animated and live action motion pictures and television programs; computer game programs; computer software featuring educational activities, stories and games; motion picture films; comic books; fan club newsletters; series of fiction and non-fiction books; picture books, educational picture books, children's books, postcards; calendars; stickers, bumper stickers; perfume, aftershave lotion, cologne; air fresheners; trading cards; ballpoint pens, binders, exercise books, notebooks, pencil boxes, pen, pencil cases, pencil sharpeners; notebooks, binders; daily planners, diaries; posters; paper stationery for letters and correspondence; swimwear, clothing namely bikinis, beach and bathing cover-ups; belts, bermuda shorts, blazers, blouses, coats, gloves, gym shorts, leather coats; jackets, parkas, play suits, polo shirts, ponchos, pullovers, rain coats, shirts, skirts, slacks, sweat pants, sweatshirts, sweatshorts, sweaters, sweatbands, wristbands, t-shirts, tank tops, tops, wet suits, jackets, jeans, suits and jogging suits, warm-up suits, jogging suits, sweat suits, bodysuits, leotards, leg warmers, ski suits, ski pants, ski bibs, ski jackets, suits, trousers, shorts, tops, coats, sport coats, sportshirts, knit shirts, vests, jumpsuits, overcoats, wind resistant jackets, bathing caps; headwear namely hats, caps, visors, ear muffs, berets; athletic shoes, footwear namely shoes, boots, slippers, basketball shoes, sandals; aprons, bandanas, neckwear namely neckties, neckerchieves scarves; sleepwear namely nightgowns, robes, pajamas, nightshirts; rainwear namely gloves, mittens, galoshes; lingerie, panties, underclothes, underwear, briefs, underpants, boxer shorts, undershirts, suspenders, hosiery, socks; all purpose sports bags, athletic bags, and gym bags; beach bags; fanny packs; backpacks, knapsacks; ornamental novelty buttons; non-metal and plastic key rings, key fobs made of non-metal; towels; dolls, beanbag dolls, paper dolls, rag dolls, soft sculpture dolls, dolls' accessories and playsets therefor, including doll cases, doll clothing, doll houses, doll house furnishing, doll costumes; inflatable bath toys, inflatable ride-on toys; toy trucks; electronically operated toy motor vehicles; snack food products, namely candy; inflatable swimming pools for recreational use.
[3] The application is also based on use in Canada since January 13, 2004, in association with the following services:
Production, presentation, distribution and rental of television programs; production, presentation, distribution and rental of motion picture films; production, presentation, distribution and rental of sound and video recordings; production of entertainment shows and interactive programs for distribution via television, cable, satellite, audio and video media, cartridges, laser discs, computer discs and electronic means; providing an internet web site containing reference material on films, actors, directors, background on films and other information about the film industry and entertainment news.
[4] The Mark was advertised for opposition purposes in the Trade-marks Journal of December 21, 2005. On January 21, 2008, PDB Sports Ltd. (the Opponent) filed a statement of opposition. The grounds of opposition are based on s. 30(i), s. 12(1)(d), s. 16(1)(a), s. 16(3)(a), and s. 38(2)(d) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act).
[5] The Applicant filed and served a counter statement on March 7, 2008.
[6] In support of the opposition, the Opponent filed the affidavit of Adam Ingrao and certified copies of the Opponent’s registration Nos. TMA331,665 and TMA592,515.
[7] In support of its application, the Applicant filed the affidavit of Annabelle Topor.
[8] No cross-examinations were conducted.
[9] Only the Opponent filed a written argument. Both parties participated in an oral hearing.
[10] Prior to the oral hearing, the Opponent requested leave to file a certified copy of an abandonment notice issued by CIPO against application No. 1,291,408. In view of the Opponent’s submissions, and the Applicant’s consent to the filing of such evidence, leave to file this additional evidence under Rule 44(1) of the Trade-mark Regulations was granted at the oral hearing.
Onus
[11] 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 to support each ground of opposition exist [see John Labatt Ltd. v. Molson Cos. (1990), 30 C.P.R. (3d) 293 (F.C.T.D.) at 298].
Relevant Dates
[12] The material dates that apply to the grounds of opposition are as follows:
• s. 38(2)(a)/s. 30 - the filing date of the application [see Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 (T.M.O.B.) at 475];
• s. 38(2)(b)/s. 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)/s. 16(1) - the Applicant’s date of first use [see s. 16(1)];
• s. 38(2)(c)/s. 16(3) – the Applicant’s filing date [see s.16(3)];
• s. 38(2)(d)/non-distinctiveness - 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.)].
Preliminary Issue
[13] At the oral hearing, the Applicant’s agent made several objections to the affidavit of Mr. Ingrao. It argued, inter alia, that Mr. Ingrao was not in a position to have personal knowledge of the Opponent and its use of its trade-marks. As a result, the Applicant submits that his entire affidavit is based on hearsay and therefore should not be admissible.
[14] The Opponent replied that Mr. Ingrao, as Manager, International Consumer Products for NFL Canada, does have personal knowledge of the facts deposed in his affidavit. Mr. Ingrao explains that the National Football League (NFL) is an unincorporated association comprised of 32 member clubs, including the Opponent, that are engaged in the business of exhibiting professional football games. The Denver Broncos Football Club is owned and operated by the Opponent and is one of the member clubs of the NFL.
[15] Mr. Ingrao has been an employee of NFL Canada since July 2005 and deposes that he has personal knowledge of the matters in his affidavit as a result of his position and his day to day duties with NFL Canada. He further states that he has access to and has reviewed the records of NFL Canada and NFL Properties (NFLP). One of the functions of NFL Canada is to procure Canadian licensees to enter into license agreements with NFLP for the right to use the trade-marks of the NFL and its Member Clubs in Canada. NFL Canada has 6 full-time employees in Canada and co-ordinates and administers all of the (sub) licenses granted by NFLP in respect of Canada and assists with quality control in Canada. Mr. Ingrao explains in his affidavit that part of his job relates to quality control and enforcement of trade-mark usage.
[16] I am satisfied that Mr. Ingrao has sufficiently explained why he has the knowledge or expertise necessary to support the facts deposed in his affidavit. In this regard, in addition to stating that he has personal knowledge of the facts deposed in his affidavit, Mr. Ingrao states that he has access to and has reviewed the records of NFL Canada and NFLP. With respect to the Applicant’s other objections about his evidence, I note that the Applicant did not cross-examine Mr. Ingrao on his affidavit. I am therefore prepared to give full weight to Mr. Ingrao’s affidavit.
Section 30(i) Ground of Opposition
[17] Regarding the s. 30(i) ground I note that the Applicant has made the requisite statement and there is no evidence that it did so in bad faith [see Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.) at 155]. I am therefore dismissing this ground of opposition.
Section 12(1)(d) Ground of Opposition
[18] The s. 12(1)(d) ground of opposition turns on the issue of the likelihood of confusion between the Mark and the following registered trade-marks of the Opponent:
the test for confusion
[19] 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. 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.
[20] The Supreme Court of Canada has discussed the appropriate process for assessing all the surrounding circumstances to be considered in determining whether two trade-marks are confusing in its decisions in Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 and Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée et al. (2006), 49 C.P.R. (4th) 401 [Veuve Cliquot]. It is with these general principles in mind that I shall now assess all of the surrounding circumstances.
[21] The most relevant of the Opponent’s three registered marks is BRONCOS Design, registration No. 592,515. Thus, a consideration of the issue of confusion between this mark and the Mark will effectively decide the s. 12(1)(d) ground of opposition.
s. 6(5)(a) – inherent distinctiveness of the trade-marks and the extent to which each trade-mark has become known
[22] The Opponent’s mark possesses some inherent distinctiveness because it is an artistic design of a horse’s head. However, given that a bronco is a type of horse, the Opponent’s design is also suggestive of the name of the Opponent’s football team, and its related services.
[23] The Opponent’s mark has some acquired distinctiveness as a result of its promotion and use in Canada for several years. In this regard, Mr. Ingrao states that the BRONCOS Design mark has been made known in Canada through the display on television broadcasts of Denver Broncos football games, the appearance of the BRONCOS Design mark on football guides circulated in Canada since 1997, and through its display on the NFL website. Further, he states that wholesale sales of Broncos merchandise in Canada was between $93,000 and $225,000 between 2005 and 2008. He estimates that 60-70% of this merchandise bore the BRONCOS Design mark. I am therefore satisfied that the Opponent’s BRONCOS Design mark has become known to some extent in Canada.
[24] With respect to the Applicant’s Mark, the Mark also possesses some inherent distinctiveness because it too is an artistic design of a horse’s head. However, given that there is no apparent connection between this design and the applied for wares and services, the Mark is slightly more inherently distinctive than the Opponent’s mark.
[25] With respect to the extent to which the Mark has become known, the Applicant has not shown any evidence of use or making known of its Mark. I therefore cannot conclude that the Mark has become known to any extent in Canada.
s. 6(5)(b) - the length of time each trade-mark has been in use
[26] While the Mark is based in part on use in Canada since January 13, 2004, in association with the applied for services, the Applicant has not shown any use of it. In view that the Opponent has shown use of its mark for several years, this factor favours the Opponent.
s. 6(5)(c) and (d) - the nature of the wares, services or business; the nature of the trade
[27] When considering the wares, services and trades of the parties, it is the statement of wares or services in the parties' trade-mark [application and registration] that govern [in respect of the issue of confusion arising under s. 12(1)(d)] [Henkel Kommanditgesellschaft auf Aktien v. Super Dragon Import Export Inc. (1986), 12 C.P.R. (3d) 110 (F.C.A.); Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.); Miss Universe Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.)].
[28] Mr. Ingrao states that the Opponent has owned and operated the Denver Broncos football team since 1984. The Broncos Club has won two Super Bowl NFL championship games, numerous division or conference titles, and is known for its successful record on the playing field. Mr. Ingrao explains that as a result of its success, the Opponent’s club has experienced a significant increase in consumer demand for products bearing trade-marks owned by the Opponent and its place on nationally televised NFL football games.
[29] Although the Opponent submits that there is an overlap between the parties’ services in that both parties’ services relate to the entertainment field, it seems to me that the connection between the Applicant’s television and movie production services and the Opponent’s entertainment services in the form of televised professional football exhibitions is tenuous, especially given that the typical consumer of the Opponent’s wares and services are football enthusiasts. There is, however, an overlap between some of the wares of the parties and in particular clothing, bumper stickers and some toys.
[30] With respect to the parties’ channels of trade, Mr. Ingrao explains that officially licensed products of the NFL, including the Broncos’ merchandise, are sold in a variety of locations in Canada including department stores, discount stores, drug stores, fan shops, footwear specialty stores, grocery stores, sporting good stores, and are also available for purchase on-line in Canada from www.nflshop.com, www.nflshop.ca and www.denverbroncosproshop.com. Reebok Canada sells NFL licensed merchandise in Canada for all 32 member clubs (including the Broncos) in national retail outlets in Canada such as Sportschek and National Sports, as well as independent regional retailers across Canada, such as River City Sports, Champs Sports, Pro Image, That Pro Look, Cleves, Rudderhams, Millennium Sports, Le Capsule Sportive, Jersey City, Game on Sports and Pulsion Sport. In Canada, the Opponent’s football games are broadcast on The Sports Network (TSN).
[31] There is no evidence about the Applicant’s channels of trade. Given the nature of most of the Applicant’s wares, I would expect that they could be sold in the same stores as some of the Bronco’s licensed merchandise. I would not, however, expect the Applicant’s television programs, motion picture films or video recordings to be broadcast on the same channel that the Opponent’s football games are televised, namely TSN, although the Opponent’s argument that there is nothing in the application preventing the Applicant from doing so is noted.
s. 6(5)(e) - the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
[32] At the oral hearing, both parties went to some length in comparing and contrasting their respective horse head designs. However, the test for confusion is a matter of first impression and imperfect recollection, not a side by side comparison of the marks.
[33] There is a considerable degree of resemblance in appearance between the parties’ marks because both parties’ marks are comprised of horse head designs facing right. I do agree with the Applicant, however, that the parties’ marks suggest different ideas due to their design differences. In this regard, the Opponent’s design is an aggressive horse image, due to the strong lines in the muscles, neck and eye, with a mane that resembles flames. The Mark, on the other hand, is a gentle and more peaceful image of a horse because of the softer lines, flowing mane, and the absence of any eyes, nose or ears. As a result, the Opponent’s mark suggests the idea of strength and aggressiveness, characteristics typically associated with a sports team, whereas the Mark gives a much more peaceful impression.
Surrounding circumstances
State of the Register evidence
[34] As a surrounding circumstance, the Applicant submitted evidence of the state of the register by way of the Topor affidavit. State of the register evidence is introduced to show the commonality or distinctiveness of a mark or portion of a mark in relation to the register as a whole. Evidence of the state of the register is only relevant inasmuch as inferences may be made on it concerning the state of the marketplace [see Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432 (T.M.O.B.)]. Inferences regarding the state of the marketplace based on state of the register evidence can only be drawn when a significant number of pertinent registrations are located [see Kellogg Salada Canada Inc. v Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.)].
[35] The Topor affidavit includes the results of searches of the Trade-marks Register purporting to show various Canadian registrations and applications containing a horse design in association with clothing and entertainment related services. The total number of references located by the Applicant’s searches was 578. Prior to the oral hearing, the Applicant submitted a non-exhaustive summary chart of what it considered to be the most relevant registrations which relate to the parties’ overlapping services, namely clothing and entertainment services. This chart included about 23 active registered marks depicting various horse images for clothing wares, and about 11 for entertainment services. The horse images included horse head designs, horse designs, running horse designs, kicking horse designs, polo player and cowboy on horse designs.
[36] The Opponent submits that of the registrations evidenced, very few bear a significant resemblance to the Opponent’s mark, which is the depiction of a horse’s head facing right with no words or other additional matter.
[37] I agree with the Opponent that not all of the registered horse designs as evidenced bear a significant resemblance to the Opponent’s mark. Having said that, I respectfully disagree with the Opponent that only the horse head designs with no words or additional matter are relevant to the present case. In my view, state of the register evidence is relevant where it shows similar marks or portions of marks for similar wares or services. In the present case, in order to make an inference about the state of the marketplace, I consider the image of a horse design to be as relevant as the image of a horse’s head. I am therefore satisfied that there are at least 12 relevant horse head or horse design registrations for clothing and about 11 for entertainment services. In my view, this is sufficient to show the commonality of the image of a horse design in association with clothing and entertainment services.
Conclusion Re: Likelihood of Confusion
[38] Section 6(2) recognizes that the ordinary somewhat hurried consumer may be misled into drawing the mistaken inference whether or not the wares or services are of the same general class but it is still a question for the court as to whether in all the circumstances such consumers are likely to do so in a particular case [Veuve Cliquot].
[39] Having considered all of the surrounding circumstances, I find that there is not a reasonable likelihood of confusion between the marks. I reach this conclusion because the marks at issue are of low inherent distinctiveness and there are differences between the parties’ main fields of interest. As shown in the evidence, the Opponent’s wares and services are clearly associated with the Opponent’s professional football team. Finally, the Applicant has shown that the image of a horse is common in both the clothing and entertainment industry. The Opponent’s mark is therefore a weak mark and small differences should be sufficient to avoid the likelihood of confusion [Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.)]. In the present case, while both marks are similar in that they each comprise the design of a horse’s head, I am of the opinion that the differences in the designs are sufficient to distinguish between the marks because of their low inherent distinctiveness. This ground of opposition is therefore unsuccessful.
Remaining Grounds of Opposition
[40] The remaining grounds of opposition also turn on a determination of the issue of the likelihood of confusion between the Mark and the Opponent’s marks. The material dates for assessing the likelihood of confusion in respect of the non-entitlement and non-distinctiveness grounds are, respectively, the Applicant’s filing date with respect to its wares, the Applicant’s date of first use with respect to its services and the date of opposition. In my view, the differences in material dates do not have any significant impact on the determination of the issue of confusion between the trade-marks of the parties. Thus, my finding above that the trade-marks are not likely to be confused applies to these grounds of opposition which also fail.
Disposition
[41] Pursuant to the authority delegated to me under s. 63(3) of the Act, I reject the opposition pursuant to s. 38(8) of the Act.
______________________________
Cindy R. Folz
Member,
Trade-marks Opposition Board
Canadian Intellectual Property Office