IN THE MATTER OF AN OPPOSITION by Beaver Lumber Company Limited to application No. 749,292 for the trade-mark ECOKIDS filed by Earth Day Canada (1991) Inc.
On March 10, 1994, the applicant, Earth Day Canada (1991) Ltd., filed an application to register the trade-mark ECOKIDS based upon use of the trade-mark in Canada since at least as early as March 9, 1994 in association with services identified as “Providing ecological awareness programs and projects to young people” and proposed use of the trade-mark in Canada in association with wares. At the examination stage, the applicant corrected its name to Earth Day Canada (1991) Inc. and amended its statement of wares to cover the following:
“Printed materials namely, posters, books, magazines, comic books; school supplies namely pencil cases, rulers, binders, note books, workbooks; clothing namely t‑shirts, hats, sweatshirts; lunch pails, bags and boxes; back packs, fanny packs and shoulder bags; prerecorded videocassettes; television programs, namely pre‑recorded television programs, audio tapes, compact discs; toys, namely plush toys, pull toys, plush and stuffed toys, dolls, musical toys, construction toy kits comprised of blocks, beads and similar materials, toy figures, flying disc‑shaped toys, kites, balls, bats, yo‑yos, games, namely boardgames, card games, computer software games, word games, travel games”
The present application was advertised for opposition purposes in the Trade-marks Journal of May 17, 1995 and the opponent, Beaver Lumber Company Limited, filed a statement of opposition on July 11, 1995, a copy of which was forwarded to the applicant on October 23, 1995. The opponent has alleged the following grounds of opposition:
(a) The applicant’s trade-mark is not registrable in view of Paragraph 12(1)(b) of the Trade-marks Act in that the trade-mark ECOKIDS is clearly descriptive of the applicant’s services and the applicant’s wares which are clearly directed to children and related to ecological issues;
(b) The applicant’s trade-mark is not distinctive in association with its wares and services since it neither distinguishes nor is it adapted to distinguish the applicant’s wares and services from those of others;
(c) The present application does not comply with Subsection 30(b) of the Trade-marks Act in that the applicant has not used the trade-mark ECOKIDS in Canada in association with the services covered in the application since March 9, 1994 and does not have an actual intention to use the trade-mark in association with the wares covered in the application;
(d) The present application does not comply with Subsection 30(i) of the Trade-marks Act in that the applicant could not have been satisfied that it was entitled to use the trade-mark ECOKIDS in Canada in association with the wares and services covered in the application.
The applicant served and filed a counterstatement in which it generally denied the opponent's grounds of opposition. The opponent filed as its evidence the affidavits of Paul Miller, Denise Goodchild, Deborah Ferguson and Sarah Gagan while the applicant submitted the affidavit of its President, Jed Goldberg. The applicant alone filed a written argument and neither party requested an oral hearing.
Considering initially the grounds of opposition based on Section 30 of the Act, the legal burden or onus is on the applicant to show the its application complies with Section 30. This includes both the question as to whether or not the applicant has filed an application which formally complies with the requirements of Section 30 and the question as to whether or not the statements contained in the application are correct. To the extent that the opponent relies on allegations of fact in support of these grounds, there is an evidential burden on the opponent to prove those allegations [see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330]. To meet the evidential burden upon it in relation of 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 [see John Labatt Limited v. The Molson Companies Limited, 30 C.P.R. (3d) 293, at p. 298]. Further, the material time for considering the circumstances respecting the issues of non-compliance with Section 30 of the Act is the filing date of the application [see Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R.(3d) 469, at p. 475].
The opponent has alleged that the present application does not comply with Subsection 30(b) of the Trade-marks Act in that the applicant has not used the trade-mark ECOKIDS in Canada in association with the services covered in the application since March 9, 1994 and does not have an actual intention to use the trade-mark in association with the wares covered in the application. As no evidence has been furnished by the opponent in support of its allegation that the applicant does not intend to use the trade-mark ECOKIDS in Canada in association with the wares covered in the preent application, the opponent has failed to meet the evidential burden upon it in respect of this issue. I have therefore dismissed this ground of opposition.
The opponent has relied upon the Goodchild, Miller and Ferguson affidavits as meeting the evidential burden upon it in relation to its allegation that the applicant has not used the trade-mark ECOKIDS in Canada in association with the services covered in the application since March 9, 1994. Even assuming that these affidavits are sufficient to meet the opponent’s initial burden, the Goldberg affidavit establishes that the applicant used the trade-mark ECOKIDS in Canada prior to March 9, 1994 in association with services identified as “Providing ecological awareness programs and projects to young people”. I have therefore rejected this ground of opposition.
The opponent also alleged that the present application does not conform to the requirements of Subsection 30(i) of the Trade-marks Act in that the applicant could not have been satisfied that it was entitled to use its trade-mark in Canada in association with the services described in the application. However, the opponent has not alleged any facts in support of its allegation that the applicant could not properly have been satisfied that it was entitled to use its trade-mark in Canada. Moreover, the opponent did not file a written argument and there are therefore no submissions of record in support of this ground. As a result, I reject this ground as being contrary to Paragraph 38(3)(a) of the Trade-marks Act and, in any event, the opponent failed to meet the evidential burden upon it in respect of this ground.
As its first ground, the opponent alleged that the applicant’s trade-mark is not registrable in view of Paragraph 12(1)(b) of the Trade-marks Act since the trade-mark ECOKIDS is clearly descriptive of the applicant’s services and wares. Paragraph 12(1)(b) of the Act provides as follows:
12. (1) Subject to section 13, a trade‑mark is registrable if it is not
(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
The issue as to whether the trade-mark ECOKIDS is clearly descriptive of the character or quality of the applicant's wares or services must be considered from the point of view of the average consumer or user of those wares or services. Further, in determining whether the trade-mark ECOKIDS is clearly descriptive, the trade-mark must not be dissected into its component elements and carefully analyzed, but rather must be considered in its entirety as a matter of immediate impression [see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks, 40 C.P.R. (2d) 25, at pp. 27-28 and Atlantic Promotions Inc. v. Registrar of Trade Marks, 2 C.P.R. (3d) 183, at p. 186]. Additionally, the material date for considering a ground of opposition based on Paragraph 12(1)(b) of the Trade-marks Act is the date of decision [see Lubrication Engineers, Inc. v. The Canadian Council of Professional Engineers, 41 C.P.R. (3d) 243 (F.C.A.)].
While the legal burden is upon the applicant to show that its trade-mark is registrable, there is an initial evidentiary burden upon the opponent in respect of this ground to adduce sufficient evidence which, if believed, would support the truth of its allegations that the trade-mark ECOKIDS is clearly descriptive of the character or quality of the applicant's wares. It is therefore necessary to consider the opponent's evidence in order to determine whether it has met the initial burden upon it. In this regard, the opponent has relied upon the Gagan affidavit which introduces into evidence photocopies of pages from the Oxford English Dictionary (Second Edition) On Compact Disc and The Random House Dictionary of the English Language which include “eco-” and define it inter alia as “a combining form representing ecology in the formation of compounds (ecosystem; ecotype)”. Further, the Gagan affidavit has annexed to it photocopies of pages from the Oxford English Dictionary which include definitions of the words: “ecology”; “ecoactivist”; “ecocatastrophe”; “ecocidal”; “ecocide”; “ecofreak”; and “kid or kids”. Finally, the Gagan affidavit introduces into evidence a list of trade-mark registrations and pending applications in which the words KIDS or KID’S have been disclaimed apart from the trade-mark. However, Ms. Gagan did not identify the wares or services associated with the various marks identified in paragraph 11 of her affidavit.
Even assuming that the opponent’s evidence establishes that the word “eco-” is a commonly used or recognized prefix referring to ecology and that the word KIDS may be descriptive when applied to certain wares or services, the opponent has not shown that the trade-mark ECOKIDS has a descriptive significance and would therefore be perceived by the average consumer of the applicant’s wares or user of its services as being clearly descriptive of those wares or services. Thus, while the trade-mark ECOKIDS is suggestive when applied to the applicant’s wares and services, I am not satisfied that the opponent’s evidence points to the mark ECOKIDS as being clearly descriptive as applied to the wares or services covered in the present application. I have therefore dismissed the Paragraph 12(1)(b) ground of opposition.
The final ground relates to the alleged non-distinctiveness of the applicant’s trade-mark. However, no facts have been relied upon by the opponent in support of this ground which is therefore contrary to Paragraph 38(3)(a) of the Trade-marks Act. Further, to the extent that the opponent is relying upon its allegation that the trade-mark ECOKIDS is clearly descriptive as supporting this ground, the paragraph 12(1)(b) ground was found to be unsuccessful. As a result, this ground of opposition is also unsuccessful.
Having been delegated by the Registrar of Trade-marks pursuant to 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 4th DAY OF JUNE, 1998.
G.W. Partington
Chairperson
Trade-marks Opposition Board