Trademark Opposition Board Decisions

IN THE MATTER OF AN OPPOSITION

by Mattei U.S.A. , Inc. to application no. 736,898 for the trade-mark BARBIE'S & Design filed by 3894207 Canada Inc. (formerly 2858029 Canada Inc.)

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On September 14, 1993, the applicant 3894207 Canada Inc. filed an application to

register the trade-mark BARBIE'S & Design, illustrated below, based on use of the mark in

Canada in association with

restaurant services, take-out services, catering and banquet services

since at least as early as October 1992.

The subject application was advertised for opposition purposes in the Trade-marks Journal issue

dated August 10, 1994 and was opposed by MatteI U.S.A., Inc. on June 23, 1995. A copy of the

statement of opposition was forwarded to the applicant on August 8, 1995. The applicant

responded by filing and serving a counter statement generally denying the opponent's

allegations.

The grounds of opposition are pleaded succinctly and are reproduced in full below:

(A)

Section 38(2)(a)

The application does not comply with the requirements of Section 30(b) in that the trade-mark has not been used in Canada since. the date alleged or for the services alleged.

The application does not comply with the requirements of Section 30(i) in that

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the.applicant Could not have been satisfied, at the date of filing the application,

~tfu,irirw~ ~JWtled,to use the@cgedMark in Canada i!l ~S(;~SJ!!!i99 widf~~

c. .-'C..,' ,.c .~;- C .,.,-~; r.-                                                                          .                                     .:                 "              "J' ';'

'~ii'iCes desdibedin the applicltion'since, at the date Ofq-Il#::{11~~pplication,

          -.                                                                                                                                                              .- .. ,~ ,i ,­

the applicant was, or should have been aware of the opponent's';prior rights

described in the following paragraphs.

(B)

Section 38(2)(b)

The Mark applied for is not registrable having regard to the provisions of Section 12(1)(d), on the ground that the alleged Mark is confusing with the following registered trade-marks of the opponent:

(a)

Registration No. 133.544 for BARBIE, registered on November 22, 1963;

(b)

Registration No. 157,719 for BARBIE, registered on July 26, 1968;

(c)

Registration No. 148,824 for BARBIE, registered on January 13, 1967;

(d)

Registration No. 386,191 for BARBIE. registered on March 8, 1990;

(e)' ,,:.,:Registration No. 201.201 for~BARBIE's registered on AugUst 16, 1974;

(C)

Secp«?n 3~(2)(c)

The appli~ is not the person entitled to registration of the alleged Inark haVing,regard to the provisions of Section 16(1) on-the grounds thau~e alleged Mark, as at the date on which it was allegedly first used by the . applicant. was confusing with

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(1)

   the opponent's trade-marks referred to above which had previously

                        . been used or made known. in Canada by the opponent for use in

   association with the wares listed in the copies of the registrations

   attached asSch~m~.I";

(2)

the opponent's trade-marks referred to above which had previously

                                                . .

been used or made kn~wn ~. Canada by the opponent through

authorized licensees in assosi,ation'wiih.the products listed in Shcedule

wnw;

(D)

Section 38(2)(d)

The alleged Mark is not distinctive within the meaning of Section 2 in that it does not actually distinguish, and is not adapted to distinguish the services of the applicant from the wares of others. Specifically, the

alleged Mark does not actually distinguish the services of the applicant from !he wares of the opponent sold under the opponent's trade-marks registered and used as set forthearlier.)n~dli$..~ment of opposition..

Registration no. 133,544, referred to above, covers dolls, doll accessories and a number

children's items; regno no. 157,719 covers cosmetic and personal care items; regno no. 148,824

covers bicycles; regno no. 386,191 covers school items such as lunch bags, pencil kits,

scrapbooks and the like; and regno no. 201,201 covers dolls, doll accessories and other toys. For

convenience, I refer to the above marks collectively as the opponent's BARBIE mark.

The opponent's evidence consists of the affidavit ofIan Bradley, Presid~t of Mattei

Canada Inc., a subsidiary of the opponent. The applicant's evidence consists of the affidavits of

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Spiro Christopoulos (dated September 5, 1997), President of the applicant company; Maral

Hassessian, a trade-marks researcher; and Carolle Vaudry, a legal assistant. Mr. Christopoulos

was cross-examined on his affidavit. The transcript of his cross-examination, exhibits thereto and

replies to undertakings given at the cross-examination form part of the evidence of record.

The opponent's evidence in reply consists of the affidavits of Mary di Pierro, legal

assistant; Rita Collins, law clerk; and Christine de Lint (dated December 11, 1998), law clerk.

The applicant requested and was granted leave to file the affidavits of Spiro Christopoulos (dated

February 26, 1999) and Pina Arcamone as additional evidence. Similarly, the opponent

submitted the affidavit of Christine De Lint (dated May 31, 1999) as additional evidence: see the

Board ruling dated April 29, 1999. Both parties filed a written argument and both were ably

represented at an oral hearing.

With respect to the first ground of opposition, Mr. Christopoulos' affidavit evidence,

together with his testimony on cross-examination, is conclusive that the applicant was using the

mark BARBIE'S & Design since at least as early as October 1992 as claimed in the subject

application. The first ground of opposition is therefore rejected.

The remaining grounds of opposition turn on the issue of confusion between the applied

for mark and the opponent's BARBIE mark. The earliest material date to consider the issue of

confusion is the date of first use claimed by the applicant in the subject application, that is,

October 3 1, 1992, while the latest material date is the date of issuance of my decision: for a

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review of case law concerning material dates in opposition proceedings see American Retired

Persons v. Canadian Retired Persons (1998), 84 C.P.R.(3d) 198 at 206 - 209 (F.C.T.D.). In any

event, in the circumstances of this case nothing turns on whether the issue of confusion is

assessed at any particular material date.

The legal onus is on the applicant to show that there would be no reasonable likelihood of

confusion, within the meaning of Section 6(2), between the applied for mark BARBIE'S &

Design (covering restaurant and related services) and opponent's BARBIE mark covering dolls

and other wares sold under the mark. The presence of an 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: see John Labatt Ltd. v. Molson Companies Ltd. (1990) 30

C.P.R.(3d) 293 at 297-298 (F.C.T.D.). 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 confusin& are set out in Section 6(5) 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;

all relevant factors are to be considered. All factors do not necessarily have equal weight. The

weight to be given to each depends on the circumstances: see Gainers Inc. v. Tammy L.

Marchi/don and The Registrar of Trade-marks (1996),66 C.P.R.(3d) 308 (F.C.T.D).

The opponent's mark BARBIE possesses a relatively low degree of inherent

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distinctiveness as it would be perceived as a nickname or truncation for the name Barbara. The

applicant's mark BARBIE'S & Design also possesses a relatively low degree of inherent

distinctiveness as the word component of the mark is the possessive form of a nickname and the

design features of the mark are not particularly distinctive. Mr. Bradley's affidavit evidence

establishes that the opponent's mark BARBIE was very well known, if not famous, in Canada at

all material times when used in association with dolls and doll accessories. The applied for mark

BARBIE'S & Design was first used in Canada in June 1, 1992 (see page 16 of Mr.

Christopoulos' transcript of cross-examination) and had established some reputation in the

vicinity of Montreal through use and advertising of the mark in association with restaurant

services as of the latest material date. In this regard, one restaurant location opened for business

on June 1, 1992 in Dorval, a second opened in 1994 in Brossard and a third opened in March

1995 in Pierrefonds but closed down in January 1998. Each restaurant operated in essentially the

same manner with essentially the same decor, each had bar service and each specialized in a deli

and grill style menu. From the evidence of record, it would appear that the restaurants are

medium priced and are geared towards an adult clientele. The applicant's mark BARBIE'S &

Design is prominently displayed on the exterior of the restaurants and is seen in the interior of

the restaurants on menus, on napkins, on matches, on receipts, on order forms and on business

cards. Total restaurant sales for the years 1992-1997 inclusive totaled about $11 million.

Advertising expenses, including television, radio and newspaper advertising, amounted to about

$616,000 for the same time period.

The length of time that the marks in issue have been in use favours the opponent as it has

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been using its mark BARBIE in Canada since the early 1960's. The nature of the opponent's

wares and the applicant's services are quite different. In this regard, the opponent has established

that its mark is very well known, if not famous in Canada, in association with dolls and doll

accessories. The opponent's target market are children and to some extent adult collectors. By

contrast, the applicant is in the restaurant business and its target market are adults. The parties'

marks are essentially the same aurally and in the ideas they suggest, and the overall visual

impressions of the marks in issue are also essentially the same after the fairly non-distinctive

design feature of the applied for mark is discounted.

In the recent Pink Panther case, the applicant therein applied to register the trade-mark

PINK PANTHER for use in association with beauty supplies: see United Artists v. Pink Panther

Beauty Corp. 80 C.P.R(3d) 247 (F.C.A.). The opponent alleged that the trade-mark was

confusing with its trade-mark THE PINK PANTHER, famous for a series of Hollywood films. In

finding that the marks were not confusing, the Court noted as follows, at pp. 267-268:

No matter how famous a mark is, it cannot be used to create a connection that does not exist

In Playboy Enterprises Inc. v. Germain (1978), 39 C.P.R. (2d) 32 (F.C.T.D.), the applicant Germain wanted to register PLAYBOY MEN'S HAIR STYLIST for services defined as "un salon de coiffure pour hommes". Marceau J. upheld the decision of the Registrar that this proposed mark was not confusing with the opponent's mark PLAYBOY,

                used in relation to magazines. He stated:

In dealing with these facts and the evidence as a whole, the Registrar found nothing therein that could be taken as establishing any reputation or involvement on the part of the appellant with services similar or related to .

those of the respondent There was no proof whatever of any use, or making known, of the opponent's trade mark PLAYBOY in association with barbering or hairdressing services in Canada at any time prior to the applicant's adoption of his trade mark.

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The fact that the opponent's mark was world-renowned could not be a factor so important as to make the differences in wares and services irrelevant. In another case involving Playboy Enterprises, Playboy Enterprises Inc. v. Astro Tire & Rubber Co. of Canada Ltd. (1978), C.P.R. (2d) 87 (T.M.O.B.), that company was also unsuccessful in preventing the registration of the trade-mark PLAYBOY for use in association with automobile tires. Fame is not everything, apparenfiy.lt is possible to use a famous mark for a different product in a different context without infringing

In the instant case the opponent has attempted to demonstrate a connection between food and

food related products sold under the opponent's BARBIE mark and the applicant's restaurant

services. For example, the opponent has evidenced that BARBIE figurines were available for

purchase in McDONALD'S restaurants; that its mark BARBIE has been used in association with

disposable plates, cups and napkins (presumably for children's parties); and that sales in Canada of

food items under the opponent's mark BARBIE in the years 1994 - 1996 averaged about $600,000

annually. The aforementioned food items included fruit snacks, bubble gum, candy and the like. The

figure of $600,000 annual sales of confectionary items is to be compared to about $41 million

average annual sales, in Canada, of the opponent's doll and doll accessory products for the period

1990 - 1995 inclusive. Further, it would appear that the opponent's average annual advertising

expenditure of $3.5 million, for the years 1990 - 1995, was dedicated solely to doll and doll

accessory items. I do not accept the opponent's submissions that there is any real connection

between the opponent's wares and the applicant's services. In my view the connections postulated

by the opponent are too tenuous to be anything other than theoretical.

Similarly, in Lexus Foods Inc. v. Toyota Jidosha Kabushiki Kaisha 9 C.P.R. (4th) 297

(F.c.A.), the Federal Court of Appeal considered that while the notoriety of a mark may well be a

significant factor to consider in assessing the issue of confusion, it is not controlling (at p. 301):

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Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.c.A.), the Court found that the defendant's

marks MR. SUBS'N PIZZA and MR. 29 MIN. SUBS'N PIZZA were confusing with the plaintiff's

mark MR. SUBMARINE although there was no evidence of actual confusion despite 10 years of

contemporaneous use in the area of Dartmouth. The absence of evidence of actual confusion is of

course one circumstance among the many to be considered: see also the recent Federal Court of

Appeal decision in Dion Neckwear Ltd v. Christian Dior, S.A. (January 23, 2002, yet unreported,

at para. [19]).

In view of the above, and considering in particular the limitations on the ambit of protection

afforded to famous marks when the marks in issue cover different wares or services, I find that the

applied for mark BARBIE'S & Design, for use in association with restaurant and associated services,

is not confusing with any of the opponent's BARBIE marks at any of the material times.

Accordingly, the subject opposition is rejected.

DATED AT HULL, QUEBEC, THIS 5th DAY OF MARCH, 2002.

#'k

. Myer HerzIg,

Member,

Trade-marks Opposition Board

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