IN THE MATTER OF AN OPPOSITION
by Whistler Resort Association to application
No. 663,491 for the trade-mark WHISTLER
INTERNATIONAL MOZART FESTIVAL
filed by Gene Ramsbottom
On August 2, 1990, the applicant, Gene Ramsbottom, filed an application to register the trade-mark WHISTLER INTERNATIONAL MOZART FESTIVAL based on making known of the mark since December of 1988. The application covers the wares "mugs, t-shirts, caps" and was advertised for opposition purposes on November 27, 1991. At a later stage in this proceeding, the application was amended to include a disclaimer to the word WHISTLER.
On March 27, 1992, a statement of opposition was filed jointly by Whistler Mountain Ski Corporation and Whistler Resort Association. Whistler Mountain Ski Corporation had obtained an extension of time within which to oppose the present application. Whistler Resort Association requested a retroactive extension of time to do the same. By letter dated March 24, 1992, I requested further submissions from Whistler Resort Association in support of its retroactive extension request. However, instead of filing further submissions, it elected to join Whistler Mountain Ski Corporation in its opposition. Consequently, Whistler Resort Association's request for a retroactive extension of time to oppose the present application was refused. A copy of the statement of opposition was forwarded to the applicant on July 27, 1992.
Whistler Mountain Ski Corporation withdrew its opposition by letter dated November 12, 1992 leaving Whistler Resort Association as the sole opponent. The applicant objected to Whistler Resort Association's standing as an opponent in view of the refusal of its initial request for a retroactive extension of time. However, by letter dated August 2, 1994, Whistler Resort Association made a second request for a retroactive extension of time to oppose the present application and to continue as the opponent in this proceeding and, by letter dated September 16, 1994, the Chairman of the Opposition Board granted that request.
The original statement of opposition contained a number of grounds and some were based on the trade-marks of Whistler Mountain Ski Corporation and some were based on the trade-marks of Whistler Resort Association. In its written argument, Whistler Resort Association conceded that since Whistler Mountain Ski Corporation withdrew as an opponent the grounds of opposition based on its trade-marks were no longer in issue. Those grounds are therefore treated as withdrawn.
As for the remaining grounds of opposition, the first ground is that the applicant's application does not comply with the provisions of Section 30(c) of the Trade-marks Act because the applicant's trade-mark had not been made known in Canada with the applied for wares as of December, 1988, as claimed. The second ground of opposition is that the applied for trade-mark is not registrable pursuant to Sections 9(1)(n)(iii) and 12(1)(e) of the Act because it is likely to be mistaken for the opponent's official mark WHISTLER CONFERENCE CENTRE which was published in the November 13, 1985 issue of the Trade-marks Journal.
The third ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Act because it is confusing with the following registered trade-marks of the opponent:
Trade-mark Reg. No. Wares/Services
WHISTLER GOLF CLUB 343,232 clothing namely, T-shirts,
sweaters, shirts, hats, visors,
jackets, gloves, scarves, pants
and shorts; souvenirs and
memorabilia namely, pins,
pencils, pens, writing pads,
matches, cups, napkins, candy,
pennants, lighters, desk sets,
mugs, and badges.
WHISTLER CONFERENCE 341,431 clothing namely, T-shirts,
CENTRE sweaters, shirts; souvenirs and
memorabilia namely, pins,
pencils, writing pads, matches,
cups, napkins, candy, pennants,
mugs, and badges.
368,289 operating and promoting a winter
and summer resort.
371,604 operating and promoting a winter
and summer resort.
371,605 operating and promoting a winter
and summer resort.
The word WHISTLER is disclaimed apart from each of the registered trade-marks in which it forms part of the mark.
The fourth ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16 of the Act because, as of the applicant's claimed date of making known, the applied for trade-mark was confusing with the above-noted registered trade-marks which had previously been used in Canada by the opponent. The fifth ground is that the applicant's application does not comply with the provisions of Section 30(i) of the Act because the applicant was aware of the opponent's prior use of its marks.
The sixth ground of opposition is that the applied for trade-mark is not distinctive of the applicant because it is confusing with the opponent's previously used trade-marks. The seventh ground is that the applied for trade-mark is not registrable pursuant to Section 12(1)(b) of the Act because it is clearly descriptive or deceptively misdescriptive of the place of origin of the applicant's wares.
The applicant filed and served a counter statement. Paragraph 1.(b) of that document refers to a "sample publicity file" submitted by the applicant with his counter statement. However, that material does not comprise admissible evidence which the applicant can rely on to support his case.
As its evidence, the opponent filed an affidavit of its Director of Festivals & Events, Maureen Douglas. By letters dated September 30 and November 19, 1993, the applicant was advised that if it wished to submit evidence it would have to do so by way of affidavit or statutory declaration as required by Rule 44 of the Trade-marks Regulations. The applicant chose not to comply with that requirement. Thus, there is no admissible evidence from the applicant in this case. Both parties submitted a written argument and an oral hearing was conducted at which both parties were represented.
As for the first ground of opposition, the material date for determining whether or not the applicant has complied with Section 30(c) of the Act is as of the filing date of the applicant's application. Further, while the legal burden is upon the applicant to show that its application complies with Section 30(c), there is an initial evidential burden on the opponent in respect of this ground: see the opposition decision in Joseph E. Seagram & Sons Ltd. v. Seagram Real Estate Ltd. (1984), 3 C.P.R. (3d) 325, at pages 329-330. To meet this evidential burden, the opponent must adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support that issue exist: see John Labatt Limited v. The Molson Companies Limited (1990), 30 C.P.R. (3d) 293 at 298 (F.C.T.D.). The evidential burden on the opponent, in this case, is a very light one: see the opposition decisions in Burns Philip Canada Inc. v. Geo. A. Hormel & Co. (1993), 51 C.P.R.(3d) 524 at 528 and Shyba v. Kinder-Care Learning Centers, Inc. (1983), 76 C.P.R.(2d) 204 at 209-210.
The applicant claims that it has made its trade-mark known in Canada as of December 1988 which must be taken to be December 31, 1988. Section 5 of the Act dictates what is required to show that a trade-mark has been made known. Section 5 reads as follows:
A trademark is deemed to be made known in Canada by a
person only if it is used by that person in a country of the
Union, other than Canada, in association with wares or
services, and
(a) the wares are distributed in association with it in
Canada, or
(b) the wares or services are advertised in association
with it in
(i) any printed publication circulated in Canada
in the ordinary course of commerce among
potential dealers in or users of the wares or
services, or
(ii) radio broadcasts ordinarily received in
Canada by potential dealers in or users of the
wares or services,
and it has become well known in Canada by reason of the
distribution or advertising.
In her affidavit, Ms. Douglas states that the opponent has been monitoring the marketplace in Canada for goods such as caps, mugs and t-shirts bearing the word WHISTLER in combination with other words and was unaware of any such wares bearing the applicant's trade-mark WHISTLER INTERNATIONAL MOZART FESTIVAL. Furthermore, in his written argument, the applicant states that he presented the first Whistler International Mozart Festival in August of 1989 and the second in August of 1990. He refers to sales of t-shirts and mugs in 1989 and 1990 but there is no reference to any activities in 1988. To the extent the materials appended to the applicant's counter statement can be considered as admissions against interest, they confirm the foregoing.
It appears that the applicant had not performed activities as of December 31, 1988 which would have qualified under Section 5 of the Act to support a making known basis for the present application. First, it should be noted that it does not appear that the applicant had used his trade-mark in a country of the Union other than Canada. Furthermore, it appears that the mark had not been used in any fashion until after the applicant's claimed date of making known. Thus, it seems highly unlikely that the applicant's trade-mark had become well known in association with the applied for wares in Canada through the restricted means set out in Section 5 as of December 31, 1988.
In view of the above, I consider that the opponent has met its evidential burden respecting the first ground. It was therefore incumbent on the applicant to support his claimed date of making known with evidence. Since the applicant failed to file any evidence, I find that the first ground of opposition is successful.
The material time for considering the circumstances respecting the second ground of opposition would appear to be the date of my decision: see the decisions in Allied Corporation v. Canadian Olympic Association (1989), 28 C.P.R.(3d) 161 (F.C.A.) and Olympus Optical Company Limited v. Canadian Olympic Association (1991), 38 C.P.R.(3d) 1 (F.C.A.). The opponent is not required to evidence use and adoption of each official mark relied on: see page 166 of the Allied decision and the opposition decision in The Canadian Council of Professional Engineers v. Parametric Technology Corporation (1995), 60 C.P.R.(3d) 269. Finally, the test to be applied is one of straight comparison of the marks in question apart from any marketplace considerations such as the wares, services or trades involved: see page 166 of the Allied decision and page 65 of the decision in Canadian Olympic Association v. Konica Canada Inc. (1990), 30 C.P.R.(3d) 60 (F.C.T.D.); reversed on other grounds (1991), 39 C.P.R.(3d) 400 (F.C.A.). As stated in Section 9(1)(n)(iii) of the Act, that test is whether or not the applicant's mark consists of, or so nearly resembles as to be likely to be mistaken for, the official mark. In other words, is the applicant's mark identical to, or almost the same as, the official mark?
The applicant's mark WHISTLER INTERNATIONAL MOZART FESTIVAL is clearly not the same as the opponent's official mark WHISTLER CONFERENCE CENTRE. Furthermore, in my view, the applicant's mark is not almost the same as the opponent's official mark since the marks differ in several respects. Thus, the second ground of opposition is unsuccessful.
As for the third ground of opposition, the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark pursuant to Section 12(1)(d) of the Trade-marks Act is the date of my decision: see the decision in Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R.(3d) 538 at 541-542 (T.M.O.B.). The onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Furthermore, in applying the test for confusion set forth in Section 6(2) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set forth in Section 6(5) of the Act. Finally, the most relevant of the opponent's registrations is No. 341,431 for the trade-mark WHISTLER CONFERENCE CENTRE. Thus, a consideration of the issue of confusion between that mark and the applicant's mark will effectively decide the outcome of the third ground.
As for Section 6(5)(a) of the Act, the marks of both parties are weak since they both refer to a building or an event in Whistler, British Columbia. Thus, consumers seeing the marks on the related wares would assume that the wares are souvenir items related to the building or the event. The inherent weakness of each mark is underscored by the fact that each party has disclaimed the word WHISTLER.
There being no admissible evidence from the applicant, I must conclude that his mark has not become known at all in Canada in association with the applied for wares. In her affidavit, Ms. Douglas states that the opponent has used each of its registered marks but she did not support that statement with any evidence. Thus, I must also conclude that the opponent's mark has not become known at all in Canada.
The length of time the marks have been in use is not a material circumstance in the present case. The applicant's wares are included in the opponent's statement of wares. Presumably, the trades of the parties would therefore overlap. As for Section 6(5)(e) of the Act, the only resemblance between the two marks is as a consequence of the common use of the non-distinctive term WHISTLER. Otherwise, there is no resemblance between the two marks.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my conclusions above, and particularly in view of the low degree of resemblance between the marks at issue and the absence of any acquired reputation for the opponent's mark, I find that the marks are not confusing. The third ground is therefore unsuccessful.
As for the fourth ground of opposition, in view of the provisions of Section 16(2) of the Act, it was incumbent on the opponent to establish that its various trade-marks were used prior to the applicant's claimed date of making known (December 31, 1988) and that they had not been abandoned as of the applicant's advertisement date (November 27, 1991). Since the opponent failed to evidence any use of its registered marks at any time, the fourth ground is also unsuccessful.
The fifth ground of opposition does not raise a proper ground. The mere fact that the applicant may have been aware of the opponent's marks when it filed the present application would not, by itself, preclude the applicant from truthfully making the statement required by Section 30(i) of the Act. Thus, the fifth ground is also unsuccessful.
The sixth ground relies on a finding that one or more of the opponent's registered marks has been used or promoted. The Douglas affidavit fails to support such a finding. Although Ms. Douglas evidences some use of trade-marks such as WHISTLER SUMMER FESTIVAL and WHISTLER CLASSICAL MUSIC FESTIVAL on t-shirts and posters, those marks were not relied on in the statement of opposition. Thus, the sixth ground is also unsuccessful.
As for the opponent's seventh ground of opposition, the material time for considering the circumstances respecting the issue arising pursuant to Section 12(1)(b) of the Act is the date of my decision: see the decision in Lubrication Engineers, Inc. v. The Canadian Council of Professional Engineers (1992), 41 C.P.R.(3d) 243 (F.C.A.). Furthermore, the issue is to be determined from the point of view of an everyday user of the wares and services. Finally, the trade-mark in question must not be carefully analyzed and dissected into its component parts but rather must be considered in its entirety and as a matter of first impression: see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R.(2d) 25 at 27-28 and Atlantic Promotions Inc. v. Registrar of Trade Marks (1984), 2 C.P.R.(3d) 183 at 186.
The opponent has failed to file evidence in support of its seventh ground. Furthermore, although the first component of the applicant's mark (i.e. - WHISTLER) has a geographical significance, the mark as a whole describes a music festival and not the place where the applied for wares are produced. Thus, the seventh ground is also unsuccessful.
In view of the above, I refuse the applicant's application.
DATED AT HULL, QUEBEC, THIS 25th DAY OF JANUARY 1996.
David J. Martin
Member
Trade Marks Opposition Board.