IN THE MATTER OF AN OPPOSITION by Brittsport Limited to application No. 757,135 for the trade-mark BRITTANIA filed by Pacific Rim Sportswear Company Ltd.
On June 16, 1994, the applicant, Pacific Rim Sportswear Company Ltd., filed an application to register the trade-mark BRITTANIA for "mens and women’s clothing, namely, blazers, pants, trousers, skirts, shorts, overalls, dresses, jumpers, shirts, blouses, tops, t-shirts and sweaters" based on proposed use. The application was advertised for opposition purposes on December 21, 1994.
The opponent, Brittsport Limited, filed a statement of opposition on May 19, 1995. The applicant filed and served a counterstatement.
As its evidence, the opponent filed 19 affidavits. These affidavits endeavour to show that the opponent’s parent company uses BRITTANIA for clothing in the United States of America and that such clothing is fairly extensively sold and promoted in that country, with some sales and promotion occurring close to the Canadian border or at stores frequented by Canadians.
The applicant filed the affidavits of Steven A. Shadley and Vivian R. Fraser as its evidence.
No cross-examinations were conducted. Only the applicant filed a written argument. Shortly before the filing of the written argument, the applicant filed a revised application in which it deleted “shirts” from the statement of wares. An oral hearing was held at which both parties were represented.
The first ground of opposition is that the application does not comply with Subsection 30(b) of the Trade-marks Act. The second ground of opposition is that the applicant is not the person entitled to registration under Subsection 16(3) because at the date of filing of the advertised application, the applied-for trade-mark Awas confusing with the opponent’s BRITTANIA trade-mark which had been previously used in Canada and made known in Canada by the opponent. The third ground of opposition is that the advertised mark is not distinctive because it Ais not adapted to distinguish, and does not distinguish, the wares of the applicant from the wares in association with which the opponent has used and made known its BRITTANIA trade-mark in Canada as alleged above, and in association with which the opponent has advertised and promoted its BRITTANIA trade-mark in Canada. No other details are given concerning the opponent’s BRITTANIA mark (e.g. the nature of the wares or services with which it is used), apart from a claim that the opponent has not abandoned its BRITTANIA mark.
The material dates with respect to the grounds of opposition are as follows: Subsection 30(b) B the date of filing of the application [see Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R. (3d) 469, at p. 475]; Subsection 16(3) - the date of filing of the application; non-distinctiveness - the date of filing of the opposition [see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 412 at 424 (F.C.A.)].
None of the opponent’s affiants demonstrate that the opponent has ever used or made known a BRITTANIA mark in Canada. Mr. Kelley, the Manager of Licensing and Information of Brittania Sportswear Ltd., says that his company is the owner of the BRITTANIA trade-mark in the United States of America and that the opponent is a wholly-owned subsidiary of his company. Brittania Sportswear Ltd., not the opponent, is said to manufacture and sell garments under the BRITTANIA trade-mark in the U.S. Brittania Sportswear Ltd. does license the BRITTANIA mark for use in association with a variety of products but the opponent is not identified as one of its licensees. All of Mr. Kelley’s evidence concerning use and making known of BRITTANIA does not relate to use or making known by the opponent and is therefore irrelevant with respect to the pleaded grounds of opposition.
The remainder of the opponent’s affidavits are similarly of no use in supporting the pleaded Section 16 and non-distinctiveness grounds of opposition as they do not identify who has used or advertised the BRITTANIA wares to which they refer and given Mr. Kelley’s evidence, one can only assume that it is Brittania Sportswear Ltd., not the opponent, to whom such use and advertisements would be attributable.
Subsections 16(5) and 17(1) of the Trade-marks Act place a burden on the opponent to establish its use or making known of its trade-mark prior to June 16, 1994 and non-abandonment of such mark as of the date of advertisement of the present application, December 21, 1994. I find that the Section 16 ground of opposition fails because the opponent has not satisfied this burden for the reasons discussed above.
In order for the distinctiveness ground of opposition to succeed, the opponent need only show that as of May 19, 1995 its trade-mark had become known sufficiently to negate the distinctiveness of the applied for mark [see Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 at 58 (F.C.T.D.)]. I find that the opponent has not provided any evidence to enable me to conclude that its mark has become known at all in Canada. Accordingly, I dismiss the distinctiveness ground of opposition.
At the oral hearing, the opponent requested leave to amend the distinctiveness ground in its statement of opposition to add a reference to the use and making known of the trade-mark BRITTANIA by the opponent’s parent Brittania Sportswear Ltd. or related companies. As I understand it, the position was taken that the amendment was only now being sought because the opponent’s rights had recently been assigned and the new owners were taking an increased interest in these proceedings. In addition, it was submitted that the applicant would not be unduly prejudiced by this late amendment, as the opponent did not intend to file any new evidence.
I denied leave to file the amended statement of opposition for the following reasons. First, I do not believe that the reasons put forward justify the extreme tardiness of this request. Any failings in the statement of opposition would have been known to the opponent’s agents for quite some time now, at least since the service of the applicant’s written argument in February 1998, if not as early as the compilation of the opponent’s evidence. As the original opponent went to the expense and trouble of compiling such evidence, presumably it had a sufficient interest in the proceedings at that time to justify amending its statement of opposition then. Moreover, although it was stated at the oral hearing that only recently a new owner had acquired the opponent’s rights, I note that in a letter to the Registrar of October 23, 1997, the opponent’s agents indicated that a new owner existed. Accordingly, even this Anew owner@ has had more than a year to request an amendment.
Concerning the parties who now wish to be entered as opponents, I note that although the opponent’s letter to the Trade-marks Office of March 5, 1999 alleges that Athe trade-mark rights in evidence owned by Brittsport Limited have now been assigned to the following two companiesY@, no assignment accompanied that letter. In addition, it is my view that there are no Atrade-mark rights in evidence owned by Brittsport Limited@. Finally, I am uncertain how such rights, if they existed, could be assigned to two companies.
On the extremely short notice provided to the applicant, the applicant’s agent expressed the view that such amendments would be highly prejudicial to its client although he was unable to detail how it might be prejudiced without first reviewing the evidence again in detail to see how it appeared in light of the amendment. In my view, the requested broadened ground of opposition could very well justify the applicant wanting to cross-examine the opponent’s affiants or file further written submissions.
The opponent argued that the public interest required that the requested leave be granted. However, this is not a case where an applicant is endeavouring to usurp a foreign mark. Rather, it would appear that here the applicant’s predecessor-in-title purchased certain Canadian rights to BRITTANIA from the same party as originally owned the rights abroad. The applicant argues that the opponent’s predecessor thereby abandoned its rights with respect to Canada but that is a point that I need not decide.
To summarise, I am not satisfied that it is in the interests of justice to grant leave to amend the statement of opposition having regard to all the surrounding circumstances including the stage the opposition proceeding has reached, why the amendment was not made earlier, the importance of the amendment and the prejudice that will be suffered by the applicant. In view of the very lengthy delay involved and the potential prejudice to the applicant, I refused the opponent’s request for leave.
That leaves the Subsection 30(b) ground of opposition. There is a line of case decisions wherein the Registrar of Trade-marks refused proposed use applications where actual use of the trade-mark was evidenced prior to the filing date [see Nabisco Brands Ltd. v. Cuda Consolidated Inc. (1997), 81 C.P.R. (3d) 537 at 540]. The legal burden is on the applicant to show its compliance with the provisions of Subsection 30(b) [see John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D.)]. There is, however, an initial evidential burden on the opponent respecting its allegations of fact in support of that ground but this burden is a light one [see Tune Masters v. Mr. P’s Mastertune, 10 C.P.R. (3d) 84 at 89]. This burden can be met by reference not only to the opponent's evidence but also to the applicant's evidence [see Labatt Brewing Company Limited v. Molson Breweries, a Partnership, 68 C.P.R. (3d) 216 at 230].
According to the applicant’s affiant, Mr. Shadley, the applicant’s predecessor-in-title or its licensee, used BRITTANIA in Canada in association with Acertain clothing items, including jeans@, at least until 1985. The opponent’s affiant, Ms Gordon, introduces copies of a Section 45 Notice issued to the applicant with respect to its registration No. 216,726 for the trade-mark BRITTANIA for use in association with jeans, shirts, jackets and neckties, wallets and belts. She also provides a copy of two affidavits filed in response to such notice. The affiant, Mr. Lee, the Corporate Secretary of the applicant, states that since June 7, 1985, the applicant used BRITTANIA Aprimarily in association with a clothing line of pants, shirts and jackets produced primarily of heavy-weight denim fabric, commonly referred to as 'jeans' or 'jean' material@. The Registrar’s decision in these Section 45 proceedings restricted registration No. 216,726 to jeans and shirts.
Based on the above, I believe that the opponent has satisfied the light onus on it with respect to Subsection 30(b) with respect to some of the applied-for wares. The applicant has of course already deleted shirts from the present application. At the oral hearing, the opponent submitted that the following additional wares ought to be deleted from the applicant’s application on the basis that the applicant had used BRITTANIA with them prior to June 16, 1994: blazers, pants, trousers, tops, and t-shirts.
As Mr. Lee clearly states that the applicant used BRITTANIA with pants prior to the relevant date, the Subsection 30(b) ground of opposition succeeds with respect to such wares.
Exhibit A of the Lee affidavit of April 15, 1994 includes a photocopy of a bulk order confirmation received by the applicant. This document refers to trousers and therefore the Subsection 30(b) ground of opposition also succeeds with respect to such wares.
The opponent’s argument concerning tops and t-shirts is that they are simply types of shirts and should therefore be deleted. However, I think that a fair reading of the Lee affidavits shows that the shirts with which BRITTANIA was used would not fall within the definition of t-shirt. Accordingly the Subsection 30(b) ground fails with respect to t-shirts.
The approach taken in Section 45 proceedings is to interpret wares in a statement of wares narrowly in order to avoid circular references [see Gowling , Strathy & Henderson v. Van Melle Nederland, June 18,1997]. For example, if tops and shirts are both included in a single statement of wares, tops is interpreted as being tops other than shirts, even though the dictionary definition for tops might be broad enough to include shirts. I think it is fair to apply a similar approach in interpreting the statement of wares of application No. 757,135 and conclude that the applicant’s application for BRITTANIA based on proposed use for tops is not contrary to Subsection 30(b) as there is no evidence of the applicant having used the mark, prior to the filing of the application in issue, with any type of tops which are not classifiable as shirts.
Regarding jackets, we have a bald statement from Mr. Lee that the mark was used with such wares. It was open to the applicant to file evidence attesting to the fact that it had not in fact used BRITTANIA for jackets, or that particular type of jacket known as a blazer, but it chose to not do so. Therefore, it has not satisfied the onus on it under Subsection 30(b) regarding blazers and such wares will also be deleted.
For the foregoing reasons, I find the first ground of opposition to be successful in part, namely with respect to Ablazers, pants and trousers@.
Having been delegated by the Registrar of Trade-marks by virtue of Subsection 63(3) of the Trade-marks Act, I refuse the application with respect to Ablazers, pants and trousers@ and I reject the opposition with respect to the remaining wares, in view of the provisions of Subsection 38(8) of the Act.
DATED AT TORONTO, ONTARIO, THIS 12th DAY OF MARCH, 1999.
Jill W. Bradbury
Hearing Officer
Trade-marks Opposition Board