IN THE MATTER OF OPPOSITIONS by UFO Contemporary Inc. to applications No. 809,317 for the trade-mark RALPH LAUREN POLO SPORT WOMAN & Design, No. 811,302 for the trade-mark RALPH LAUREN POLO SPORT WOMAN HYDRATE & Design, No. 811,303 for the trade-mark RALPH LAUREN POLO SPORT WOMAN SCRUB & Design, No. 811,304 for the trade-mark RALPH LAUREN POLO SPORT WOMAN CLEANSE & Design, No. 811,305 for the trade-mark RALPH LAUREN POLO SPORT WOMAN FINISH & Design, No. 811,306 for the trade-mark RALPH LAUREN POLO SPORT WOMAN SCULPT & Design, filed by Polo Ralph Lauren, L.P. and now standing in the name of The Polo/Lauren Company, L.P.

The original applicant, Polo Ralph Lauren, L.P., filed applications to register the trade-marks listed below (collectively referred to as the RALPH LAUREN trade-marks):

Each application is based on use of the mark in Canada since March 10, 1996.  Application No. 809,317 was advertised for opposition purposes on February 5, 1997, Nos. 811,302, 811,303 and 811,304 were advertised for opposition purposes on March 19, 1997, No. 811,305 was advertised for opposition on March 12, 1997 and No. 811,306 was advertised for opposition on February 26, 1997. 

UFO Contemporary, Inc. (the “opponent”), filed identical statements of opposition against the above marks on April 23, April 28, May 6 and May 20, 1997 respectively, copies of which were forwarded to the original applicant on May 1, May 21 and June 4, 1997.   The opponent was granted leave to amend its statements of opposition February 16, 1999 to correct minor typographical errors.  Polo Ralph Lauren, L.P. filed counter statements on June 23 and June 30, 1997 and later requested and was granted leave to amend its counter statement to reflect the assignment of the rights in the trade-mark to The Polo/Lauren Company, L.P. (the “applicant”).

The opponent filed as its evidence with respect to each application, certified copies of the affidavits of Lorna Brody, Robert W. White and Kendra Preston-Brooks, originally filed in a separate but related opposition involving the same parties.  The applicant requested leave to cross-examine Lorna Brody on her affidavit and filed the transcript of this cross-examination with the Registrar on October16, 1998. 

The applicant filed as its evidence the affidavits of Lee Sporn, Yuka Sugar and Alegria Bouhadana.  The opponent requested leave to cross-examine Lee Sporn, and Alegria Bouhadana on their affidavits.   The opponent filed the transcript of the cross-examination of Lee S. Sporn on November 3, 1999.  Alegria Bouhadana was not available for cross-examination and her affidavit was removed from the record.  The applicant was granted leave to replace the Bouhadana affidavit with the affidavit of Thérèse Haraoui.  Although the opponent requested leave to cross-examine Thérèse Haraoui, they later withdrew that request.  The opponent filed reply evidence in the form of a further affidavit of Lorna Brody.

Both parties filed a written argument and an oral hearing was held at which both parties were represented.

For each application, the first ground of opposition is that the application does not meet the requirements of s. 30 of the Trade-marks Act, R.S.C. 1985, C. T-13 (“the Act”) in that the applicant could not have been satisfied that at the date of filing the application it was entitled to use the trade-mark in Canada in association with the wares described in the application.

The second ground of opposition is that the applied for trade-mark is not registrable pursuant to s. 12(1)(d) of the Act because it is confusing with the following registered trade-mark (registration no. 186,644) owned by the opponent:

The third ground of opposition is that the applicant is not the person entitled to registration pursuant to s. 16(1) of the Act because, as of the applicant’s filing date, the applied for trade-mark was confusing with the opponent’s trade-mark referred to above, which had been previously used in Canada by the opponent and was the subject of an application for registration previously filed in Canada. 

The fourth ground is that the applicant’s trade-mark is not distinctive and is not adapted so as to distinguish the applicant’s wares from the wares of the opponent, having regard to the use by the opponent of its trade-mark referred to above.

Opponent’s Evidence-in-chief

In Ms. Brody’s affidavit, sworn August 9, 1997, she identifies herself as the Vice-President of UFO Contemporary, Inc.  Ms. Brody appends as the first exhibit to her affidavit a certified copy of the opponent’s registration no. 186,644 for the trade-mark UFO & design.  The registration page shows that the UFO & design mark is registered for clothing, namely, trousers, pants and blouses and shirts for men and women as well as jackets for men and women, and children’s clothing, namely, trousers, blouses, shirts and jackets.  She explains the process by which her company designs, manufactures and markets its clothing in association with it’s trade-mark and indicates that the opponent’s approach in this regard is similar to others in the retail clothing industry.

Ms. Brody’s affidavit includes several exhibits containing sample labels, hang tags, style and size tags, plastic bags for shipping clothing, packing tape, and shipping labels all displaying the UFO & design trade-mark.

According to Ms. Brody, clothing bearing the UFO & design trade-mark is sold in Canada through clothing boutiques, retail department stores and catalogue ordering services.  

The certified copy of the opponent’s registration lists several companies that were entered as registered users in Canada of the opponent’s trade-mark.   On cross-examination Ms. Brody states that the earliest license agreement for the distribution of UFO clothing in Canada was entered into in 1973, however, in a reply to undertakings Ms. Brody was not able to produce the 1973 license agreement but did produce a consolidated license agreement dated January 1, 1978.  A selection of representative invoices are attached as Exhibits to the affidavit, showing sales of clothing made by either the opponent or a licensee to Canadian retailers for the years 1994 – 1997.  Canadian sales of clothing bearing the UFO & design trade-mark for the period 1992 – 1996 were approximately $2.2 million (Cdn).  On cross-examination Ms. Brody indicated that these sales figures represented the combined sales of both the opponent and its Canadian licensees.

The opponent promotes its clothing by attending trade shows, advertising in magazines and trade papers, co-op advertising and having its products appear editorially in magazines and trade papers.   The opponent spent between $20,000 and $30,000 (U.S.) yearly on magazine and trade paper advertising of its clothing for the period 1992 – 1996.  On cross-examination Ms. Brody stated that those figures represent her company’s global advertising expenditure and not just advertising in Canada.

In his affidavit, sworn July 30, 1997, Mr. White identifies himself as Senior Vice President, Canada of the Audit Bureau of Circulations.  He provides circulation figures for two of the magazines in which the opponent’s products appear editorially.

In an affidavit sworn August 6, 1997, Ms. Preston-Brooks details the results of a search of the Canadian trade-marks register she conducted for U.S. flag designs with letters replacing stars for all wares and services.  She located several trade-marks that included a U.S. flag design where the stars in the upper left corner were replaced with letters or other objects, three (3) of which were not owned by the opponent or applicant in this proceeding and were registered or applied for in relation to clothing.

Applicant’s Evidence-in-chief

In his affidavit, Mr. Sporn identifies himself as the Vice-President, Intellectual Property and Secretary of PRL International Inc., the General Partner of the applicant.  He states that the applicant is in the business of designing, manufacturing and marketing articles of clothing and accessories for men, women and children, cosmetics and home furnishings.  Mr. Sporn’s evidence includes copies of the Canadian trade-mark registrations and pending applications owned by the applicant, most of which use some combination of the words POLO and/or RALPH LAUREN.  Mr. Sporn provides global sales figures for the applicant for the period 1978-1998.  In 1998, world-wide sales exceeded $3.5 billion (U.S.) although there is no breakdown of sales by country or by trade-mark.  Global advertising figures are provided for the same period and show that more than $50 million (U.S.) was spent on advertising and publicity in respect of the applicant’s goods in 1998.

The applicant also provided evidence from its Canadian licensee, Cosmair Inc., of its sales and advertising in Canada of the applicant’s cosmetics and perfumery bearing the RALPH LAUREN trade-marks since 1996.  The Haraoui affidavit indicates that cosmetics bearing the RALPH LAUREN trade-marks have been distributed and sold by Cosmair Inc. to more than 600 retailers in Canada and that in 1998 total sales exceeded $12 million (CDN).  Ms. Haraoui also states that all use of the RALPH LAUREN trade-marks was at all material times, under license from the applicant and that the applicant controls the manner in which the trade-marks are used and the character and quality of the cosmetics.

Opponent’s Reply Evidence

The opponent filed evidence in reply in the form of an additional affidavit of Ms. Lorna Brody, Vice-President of UFO Contemporary, Inc.   Ms. Brody provides additional information relating to the nature of editorial advertising in the clothing industry and the fact that it is not a direct advertising expense to a company.  She also provides an opinion that there is a trend away from marketing in which mega-brands establish branded concept shops within major department stores.  She also states that personal care products and designer clothing are often displayed together in department stores.

I see no reason why most of the information contained in Ms. Brody’s reply affidavit could not have been included as part of the opponent’s evidence-in-chief.  Ms. Brody’s evidence that the opponent’s clothing is available to Canadian consumers through the internet with no further information as to the extent that Canadians access those catalogues or the volume of sales conducted in that manner is of little evidentiary value.

Grounds of Opposition

Paragraph 38(2)(a)

The first ground of opposition in each case alleges that the subject application does not conform to the requirements of s. 30(i) of the Act in that the applicant could not have been satisfied that it was entitled to use any of the RALPH LAUREN trade-marks in Canada in association with perfumery and cosmetics as of the filing date of each application, in light of the opponent’s prior use in Canada of its trade-mark. The material date for assessing this ground of opposition is the filing date of the application, in this case April 9, 1996 for the trade-mark RALPH LAUREN POLO SPORT WOMAN & DESIGN and April 30, 1996 for the trade-marks RALPH LAUREN POLO SPORT WOMAN HYDRATE & DESIGN, RALPH LAUREN POLO SPORT WOMAN SCRUB & DESIGN, RALPH LAUREN POLO SPORT WOMAN CLEANSE & DESIGN, RALPH LAUREN POLO SPORT WOMAN FINISH & DESIGN and RALPH LAUREN POLO SPORT WOMAN SCULPT & DESIGN (see, Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 (TMOB) at 475).  While the legal onus is on the applicant to show that its application complies with s. 30 of the Act, there is an initial evidential burden on the opponent in respect of a section 30 ground (see, Joseph E. Seagram & Sons Ltd. v. Seagram Real Estate Ltd. (1984), 3 C.P.R. (3d) 325). To meet the evidential burden upon it in relation to a particular issue, the opponent must adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support that issue exist.

In this regard, I find that there is no evidence of record which establishes that the applicant was aware the opponent’s trade-mark at the relevant dates.  Even had the applicant been aware of the opponent's registered trade-mark prior to filing the present applications, such a fact is not inconsistent with the statement in each application that the applicant is satisfied that it is entitled to use the RALPH LAUREN trade-marks in Canada.  Moreover, where an applicant has provided the statement required by s. 30(i), this ground of opposition should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant (see Sapodilla Co. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152).   

Thus, the first ground of opposition is unsuccessful with respect to each application.

Paragraph 38(2)(b) - Confusion

As for the opponent’s second ground of opposition, the material date for considering the circumstances respecting the issue of confusion with a registered trade-mark pursuant to s. 12(1)(d) of the Act is the date of my decision (Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R. (3d) 538).   The opponent has met its initial evidentiary burden with respect to this ground of opposition by filing a certified copy of its trade-mark registration No. 186,644.

The test for confusion is one of first impression and imperfect recollection.  In applying the test for confusion set forth in s. 6(2) of the Act, the Registrar must have regard to all the surrounding circumstances including the following specifically enumerated in s. 6(5) of the Act:

a)      the inherent distinctiveness of the trade-marks and the extent to which the trade-marks have become known;

b)      the length of time the trade-marks have 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. 

The weight to be given to each factor may vary, depending on the circumstances (see, Clorox Co. v. Sears Canada Inc. (1992), 41 C.P.R. (3d) 483 (F.C.T.D.) and Gainers, Inc. v. Marchildon (1996), 66 C.P.R. (3d) 308 (F.C.T.D.)).

The Registrar must bear in mind that the onus or legal burden is on the applicant to show that on a balance of probabilities there would be no reasonable likelihood of confusion between the trade-marks at issue as of the relevant date. 

With respect to s. 6(5)(a) of the Act, the opponent’s trade-mark has some inherent distinctiveness when used in association with clothing.  It does, however, have a somewhat suggestive connotation that the associated wares originate in the United States of America as the mark consists of a stylised version of the American flag in which the stars have been replaced with the letters UFO.  The opponent’s mark cannot therefore be considered as possessing a high degree of inherent distinctiveness.  The opponent has provided some evidence of advertising and sales of its clothing in Canada.  The Canadian sales figures for the opponent’s clothing provided by Ms. Brody increase year over year from approximately $303,000 in 1992 to $528,000 in 1996.  The monetary figures provided by Ms. Brody for advertising the opponent’s clothing in magazines and trade publications range from approximately (U.S.) $20,000 to $31,000 per year for the years 1992 – 1996.  The advertising figures reflect the total annual amount spent by the opponent on magazine and trade publication advertising and although there is no further break-down of these yearly figures into publication-specific or geography-specific detail, the evidence shows that some of the magazines and trade papers are circulated in Canada.  The opponent has also provided evidence that its clothing is featured editorially in magazines that circulate in Canada, however, with the exception of one or two cases, the opponent’s trade-mark does not appear in any of these examples.  I conclude from the above that the opponent’s mark is known to a limited extent in Canada.

Similarly, the applicant’s trade-marks have some inherent distinctiveness when used in association with perfumery and cosmetics.  Each of the trade-marks is composed of the words RALPH LAUREN POLO SPORT WOMAN together with the stripes of a stylised American flag and the initials RL in place of the stars and, in five of the marks, one of the words HYDRATE, SCRUB, CLEANSE, FINISH or SCULPT.  The flag design feature is suggestive of the origin of the perfumery and cosmetics as being from the United States of America.  The Haraoui affidavit states that perfumery and cosmetics bearing the RALPH LAUREN trade-marks have been distributed and sold by Cosmair Inc. to more than 600 retailers in Canada and that in 1998 total sales exceeded $12 million (CDN).   I am able to conclude that the applicant’s mark has become known in Canada.

The length of time the marks have been in use favours the opponent.  As for s. 6(5)(c) and s. 6(5)(d) of the Act, the nature of the parties’ wares are different, namely clothing and cosmetics.  The channels of trade are similar in respect of department stores only but not the many other drug stores and other retail outlets from which the applicant’s wares are available.  I agree with the applicant that the clothing and cosmetics industries may be more closely related in the top fashion level where the same designer trade-marks are used on wares from both industries.  This type of trade-mark is a “designer” or “signature” mark containing the personal name of a well-known designer and in fact, Ralph Lauren is one such designer (see S.C. Johnson & Son Inc. v. Esprit de Corp et al. (1986) 13 C.P.R. 235 (F.C.T.D.)).  The opponent’s UFO & design trade-mark is not a “signature” trade-mark and there is no evidence of record to suggest that the opponent sells cosmetics in association with its trade-mark.  I find that there is no overlap in the wares of the parties and a limited overlap in the channels of trade with respect to department stores.

With respect to s. 6(5)(e) of the Act, the trade-mark UFO & design does not resemble any of the RALPH LAUREN trade-marks in appearance, sound or idea suggested.  “Although the marks are not to be dissected when determining matters of confusion, it has been held that the first portion of a trade-mark is the most relevant for purposes of distinction.” (see K-Tel International Ltd. v. Interwood Marketing Ltd. (1997), 77 C.P.R. (3d) 523 (F.C.T.D.)).

The issue is whether a consumer who has a general and not precise recollection of the opponent’s mark, will, upon seeing the applicant’s mark, be likely to think that the two products share a common source.  In the circumstances of this case, nothing turns on the date at which the issue of confusion is determined.  I find that a consideration of all the surrounding circumstances leads me to the conclusion that, on a balance of probabilities, there is not a reasonable likelihood of confusion between the mark UFO & design as applied to clothing and any of the RALPH LAUREN trade-marks applied to cosmetics and perfumery.  My conclusion is based primarily on the differences between the parties marks.  The flag design feature of the applicant’s marks is much smaller than the first and predominant portion of the trade-marks, namely RALPH LAUREN POLO SPORT.  As stated in Beverley Bedding & Upholstery Co. v. Regal Bedding & Upholstery Ltd. (1980), 47 C.P.R. (2d) 145 (F.C.T.D.), affirmed 60 C.P.R. (2d) 70, “Realistically appraised it is the degree of resemblance between trade-marks in appearance, sound or ideas suggested by them that is the most critical factor, in most instances, and is the dominant factor and other factors play a subservient role in the over-all surrounding circumstances.”

In view of these conclusions above, I find that the applicant has satisfied the burden on it to show that there is no reasonable likelihood of confusion between any of its RALPH LAUREN trade-marks and the opponent’s registered trade-mark, UFO & design.  Therefore, the second ground of opposition in respect of each application is unsuccessful.

The third ground of opposition is that the applicant is not the person entitled to registration of the trade-marks due to confusion with the opponent’s trade-mark UFO & design previously used in Canada by the opponent for clothing.  The material date with respect to this ground of opposition is the date of first use for the trade-marks, March 10, 1996, however in the circumstances of this case, nothing turns on the date at which the issue of confusion is determined.  The opponent has met its initial burden with respect to the entitlement ground of opposition by evidencing use of its trade-mark prior to the date of first use of the applicant’s trade-marks and non-abandonment as of the advertisement of the applicant’s applications. 

My conclusions with respect to the second ground of opposition are also applicable here and I find that the applicant has satisfied the burden on it to show no reasonable likelihood of confusion between the opponent’s mark for clothing and the applicant’s RALPH LAUREN trade-marks for perfumery and cosmetics.  The entitlement ground of opposition is therefore unsuccessful.

The fourth ground of opposition essentially turns on the issue of confusion as of the date of filing of the oppositions, in this case April 23, April 28, May 6 and May 20, 1996, (see, Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4^th) 317 (F.C.T.D.) at 324).  However, in the circumstances in this case, nothing turns on the date at which the issue of confusion is assessed.  My conclusions in respect of the second and third grounds of opposition are relevant in this respect and I find that the applicant’s RALPH LAUREN trade-marks are not confusing with the opponent’s UFO & design mark.  The fourth ground of opposition is accordingly, unsuccessful.

Having been delegated by the Registrar of Trade-marks by virtue of subsection 63(3) of the Act, I reject the opponent’s opposition to application no. 809,317 for the mark RALPH LAUREN POLO SPORT WOMAN & Design, no. 811,302 for the mark RALPH LAUREN POLO SPORT WOMAN HYDRATE & Design, no. 811,303 for the mark RALPH LAUREN POLO SPORT WOMAN SCRUB & Design, no. 811,304 for the mark RALPH LAUREN POLO SPORT WOMAN CLEANSE & Design, no. 811,305 for the mark RALPH LAUREN POLO SPORT WOMAN FINISH & Design and no. 811,306 for the mark RALPH LAUREN POLO SPORT WOMAN SCULPT & Design.

DATED AT GATINEAU, QUEBEC, THIS 5th DAY OF FEBRUARY, 2007.

Lisa A. Power

Acting Director,

Trade-marks Branch