IN THE MATTER OF AN OPPOSITION by Wolverine World Wide, Inc. to application No. 741,253 for the trade-mark ADVENTURE BOOTS & Design filed by Mario Cunha & Filhos Lda.
On November 17, 1993, the applicant, Mario Cunha & Filhos Lda., filed an application to register the trade-mark ADVENTURE BOOTS & Design, a representation of which appears below, based upon proposed use of the trade-mark in Canada in association with “chaussures, nommément souliers”. The applicant disclaimed the right to the exclusive use of BOOTS apart from its trade-mark.
The present application was advertised for opposition purposes in the Trade-marks Journal of February 22, 1995 and the opponent, Wolverine World Wide, Inc., filed a statement of opposition on April 24, 1995, a copy of which was forwarded to the applicant on June 9, 1995. The applicant served and filed a counter statement on September 12, 1995 in which it effectively denied the opponent’s grounds of opposition and asserted that its trade-mark ADVENTURE BOOTS & Design is registrable and distinctive, and that it is the person entitled to its registration. The opponent filed as its evidence the affidavit of William J.B.Brown and a certified copy of registration No. 430,148 for the trade-mark WORLD ADVENTURE FOOTWEAR standing in the name of the opponent. The applicant submitted as its evidence the statutory declarations of Lisa Corbeil, Carl Gauthier and Isabelle Désy. Both parties submitted a written argument and, while the opponent requested an oral hearing, that request was subsequently withdrawn.
The first ground of opposition is based on Paragraph 12(1)(d) of the Trade-marks Act, the opponent alleging that the applicant’s trade-mark is not registrable in that there would be a likelihood of confusion between the applicant’s trade-mark ADVENTURE BOOTS & Design and the opponent’s registered trade-mark WORLD ADVENTURE FOOTWEAR, registration No. 430,148, covering the following wares:
“Footwear, namely boots and shoes. Footwear namely boots, and shoes; clothing namely hats, T‑shirts, tank tops, sweat tops and pants, woven and knit shirts, shorts and pants both woven and knit, hooded jackets, nylon jackets, anoraks, turtlenecks, socks, tennis shirts, leisure jackets, and belts; tote bags, sports bags and key rings.”
In determining whether there would be a reasonable likelihood of confusion between the trade-marks at issue, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in Subsection 6(5) of the Trade-marks Act. Further, the Registrar must bear in mind that the legal burden is on the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks at issue as of the date of my decision, the material date in respect of the Paragraph 12(1)(d) ground of opposition [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37 C.P.R. (3d) 413 (FCA)].
Both the applicant’s trade-mark ADVENTURE BOOTS & Design and the opponent’s registered trade-mark WORLD ADVENTURE FOOTWEAR possess some measure of inherent distinctiveness when considered in their entireties despite the descriptive significance of the terms BOOTS and FOOTWEAR. As no evidence relating to use of the trade-mark ADVENTURE BOOTS & Design has been adduced by the applicant, I must assume that its trade-mark has not become known to any extent in Canada. The opponent has adduced the affidavit of William J.B.Brown, President, International of the Wolverine Footwear Group of the opponent, in support of its opposition.
Mr. Brown states that he has “free and full access to all relevant books and records of the company, including information relating to the company’s trademarks, its sales revenues and advertising expenditures, and the sales and advertising activities of its licensees”. Further, the affiant states that, upon information and belief, he is familiar with the facts and circumstances relating to Wolverine’s sales, licensing, and advertising practices in Canada and that he requested the opponent’s licensee, Wolverine Canada Inc., to prepare for his review and for confirmation of the relevant facts, information concerning market penetration in Canada of the trade-marks WORLD ADVENTURE FOOTWEAR and WORLD ADVENTURE FOOTWEAR AND APPAREL. Based on my reading of Mr. Brown’ affidavit, it appears as though he has direct access to the sales and advertising figures of the opponent’s Canadian licensee and that he requested information from the licensee to confirm the information to which he had access, as well as to provide details relating to market penetration in Canada on the opponent’s marks.
Mr. Brown does indicate that Wolverine Canada Inc. is the opponent’s exclusive Canadian licensee although Mr. Brown has provided no details relating to the licensing arrangement. The sample package annexed to the Brown affidavit points to Wolverine Canada as being the source of the wares sold in this country, there being no notice given to the public relating to the existence of a licensing arrangement between the opponent and Wolverine Canada or that the use by Wolverine Canada of the opponent’s trade-marks is a licensed use of the marks. Furthermore, the Brown affidavit is silent as to the control, whether direct or indirect, which the opponent has over the character or quality of the wares associated with its trade-marks in Canada.
Apart from the above, it is arguable whether a number of the exhibits annexed to the Brown affidavit show use of the registered trade-mark WORLD ADVENTURE FOOTWEAR, as opposed to use of the marks WORLD ADVENTURE or WOLVERINE FOOTWEAR & APPAREL & Design or WORLD ADVENTURE FOOTWEAR & APPAREL. In any event, having regard to the ambiguity in the opponent’s evidence relating to the licensing of its marks and the issue as to whether the evidence, in fact, shows use of the opponent’s registered trade-mark, I have accorded diminished weight to the opponent’s evidence relating to the extent to which its trade-mark WORLD ADVENTURE FOOTWEAR has become known in Canada. Nevertheless, the extent to which the trade-marks at issue have become known and the length of time the marks have been in use both still weigh in the opponent’s favour.
The wares of the parties overlap in that the applicant’s “chaussures, nommément souliers” are essentially the same as the “boots and shoes” covered in the opponent’s registration. Further, I would expect that the channels of trade associated with these wares could be the same.
As for the degree of resemblance between the trade-marks at issue, the applicant’s trade-mark ADVENTURE BOOTS & Design and the opponent’s registered trade-mark WORLD ADVENTURE FOOTWEAR bear some minor degree of similarity in appearance and in the ideas suggested and relatively little similarity in their sounding.
As a further surrounding circumstance in considering the likelihood of confusion between the trade-marks at issue, the applicant submitted state of the register and state of the marketplace evidence by way of the statutory declaration of Lisa Corbeil. The Corbeil statutory declaration introduces into evidence the results of a trade-mark/trade-name search conducted by the declarant of trade-marks including the element AVENTUR or ADVENTUR, as well as the words AVENTURE or ADVENTURE, covering footwear or clothing. Even ignoring the entries in the search results which identify the marks as abandoned, pending, published or in opposition, the results disclose more than twenty registrations including the word ADVENTURE for footwear and/or clothing, the wares covered in the opponent’s registration. Thus, I am prepared to infer that at least some of these marks are in use in Canada.
The applicant also relied upon the Gauthier statutory declaration which introduces into evidence the results of a NUANS search of business names including the words AVENTURE or ADVENTURE. While the results of the search identify a number of businesses which have adopted names which include the word ADVENTURE, the results do not disclose the nature of the business, wares or services associated with the business names. I am therefore not prepared to accord much weight to this evidence. In her statutory declaration, Isabelle Désy refers to searches which she conducted of a number of references including Dunn & Bradstreet, Scotts National Directories and Canada Phone Directories. However, a number of the entries do not disclose the nature of the business, wares or services associated with the name and I have ignored these entries. Nevertheless, the results do disclose some measure of adoption of the word ADVENTURE by some businesses in Canada in relation to the sale or manufacture of clothing, thus confirming the results of the state of the register search.
Having regard to the above and, in particular, to the limited degree of resemblance between the trade-marks at issue and to the applicant’s evidence relating to the state of the register and to the other searches which it conducted, and bearing in mind the deficiencies in the opponent’s evidence, I have concluded that the applicant has met the legal burden upon it in respect of the issue of confusion in relation to the Paragraph 12(1)(d) ground. I have therefore rejected the first ground of opposition.
The second ground of opposition relating to the applicant’s entitlement to registration of the trade-mark ADVENTURE BOOTS & Design also turns on the issue of confusion between the applicant’s mark and the opponent’s trade-mark WORLD ADVENTURE FOOTWEAR. With respect to the Paragraph 16(3)(a) ground, and having regard to the deficiencies in the opponent’s evidence as noted above, it is arguable as to whether the opponent has shown prior use of its trade-mark WORLD ADVENTURE FOOTWEAR in Canada in association with its wares as of the applicant’s filing date, the material date for considering this ground. However, even assuming that the opponent has met its burden under Subsections 16(5) and 17(1) of the Act, I would nevertheless have concluded that the applicant has met its legal burden in relation to the issue of confusion as of the applicant’s filing date and have therefore rejected the second ground of opposition.
The final ground of opposition is based on the alleged non-distinctiveness of the applicant’s trade-mark in view of the likelihood of confusion between it and the opponent’s trade-mark WORLD ADVENTURE FOOTWEAR. However, in view of my previous comments concerning the likelihood of confusion between the trade-marks at issue which are equally applicable as of the date of opposition, the material date for considering this ground, I find that the applicant has met the legal burden upon it in relation to the non-distinctiveness ground of opposition. I have therefore rejected the final ground of opposition.
Having been delegated by the Registrar of Trade-marks by virtue of Subsection 63(3) of the Trade-marks Act, I reject the opponent’s opposition pursuant to Subsection 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS 20th DAY OF SEPTEMBER, 1998.
G.W. Partington,
Chairperson,
Trade-marks Opposition Board.