In THE MATTER OF AN OPPOSITION by Créations Méandres Inc to Application No 1067115 for the Trade-mark CIRQUE DU MIROIR & Design filed by Cirque du Miroir Inc

 

 

I           The Pleadings

 

 

On July 13, 2000, Cirque du Miroir Inc. (the “Applicant”) filed an application, based on proposed use, to register the trade-mark CIRQUE DU MIROIR and Design as illustrated herein:

 

(the “Mark”), application number 1067115, in association with:

 

articles of wearing apparel and accessories, namely sweatshirts, t-shirts, tank tops, hats, caps, shorts, sports training shirts and pants, boxer shorts, jackets, jeans, raincoats, umbrellas, swimsuits, ties, coats, vests, sweaters, shirts and jerseys; novelty and souvenir items, namely balloons, playing cards, calendars, note pads, postcards, lithographs, posters, laminated posters, souvenir programs, beach towels, photography books, reading books, blankets, sport bags, ice skates, tote bags, pennants, woven patches, sculptures, badges, key chains, mugs, masks, buttons, shopping bags, hand bags and skate bags, crystal glasses, cups, decals, Mirrors and mirror frames, perfume and perfume bottles, bottled water namely, drinking water, mineral water, scarves and gloves, flags, tie pins, masquerade costumes, jewellery, pen and pencil sets and cases, drawing books and story books, bumper stickers, jig-saw puzzles, stuffed animals, banners, bracelets and watches; sound recording or reproduction media, namely pre-recorded records, tapes, compact discs containing music and cassettes; video recording or reproduction media, namely pre-recorded videocassettes; pre-recorded video compact discs, namely containing ice skating shows, comic books, diaries, calendars and scrapbooks (the “Wares”)

 

and in association with the operation of business dealing in the presentation, production, management, licensing and sponsoring of entertainment shows namely ice skating shows; ice skating school, ice skating lessons, ice skate rental (the “Services”).

 

On April 17, 2002, the application was advertised in the Trade-marks Journal for opposition purposes. On June 14, 2002, Créations Méandres Inc. (the “Opponent”) filed a statement of opposition, a copy of which was forwarded on July 16, 2002, to the Applicant. The grounds of opposition can be summarized as follow:

 

1. The application does not comply with the requirements of Section 30 of the Trade-marks Act (the “Act”) in that the Applicant could not have been satisfied that it was entitled to the registration of the Mark in Canada as it could not be unaware of the Opponent’s prior rights.

 

2. The Mark is not registrable pursuant to Section 12(1)(d) of the Act as the Mark is confusing with the Opponent’s registered trade-marks:

 

-CIRQUE DU SOLEIL registration number TMA410234

-CIRQUE DU SOLEIL & Design registration number TMA418918

 

3. The Mark is not registrable pursuant to Section 12(1)(b) of the Act as the Mark is deceptively misdescriptive of the character or quality of the services in association with which it is intended to be used or of the conditions of or the persons employed in their production.

 

4.  Pursuant to the provisions of Section 16(3)(a) of the Act, the Applicant is not the person entitled to registration of the Mark as, at the date of filing of the application, the Mark was confusing with the marks CIRQUE DU SOLEIL previously used by the Opponent in Canada;

 

5. The Mark is not distinctive in that it does not distinguish the Wares and Services of the Applicant from the wares and services of others including those of the Opponent and is not adapted to distinguish them

 

The Applicant filed its counterstatement on July 30, 2002, denying each and every ground of opposition.

 

The Opponent requested permission to amend its statement of opposition, which was granted, to add as an additional ground of opposition that the Applicant was not entitled to the registration of the Mark as it was confusing with the trade-mark CIRQUE DU SOLEIL for which application number 1042363 was previously filed. (Section 16(3)(b) of the Act). For the purpose of this decision, I shall refer to this ground of opposition as the sixth ground of opposition.

 

The Opponent’s evidence consists of the affidavit of Mr. Mario D’Amico together with exhibits MDA-1 to MDA-5. The Applicant filed as its evidence the affidavit of Manon Goudreau together with exhibits MG-1 to MG-13.

 

Neither party filed written submissions nor an oral hearing was held.

 

II The Opponent’s Evidence

 

Mr. Mario D’amico is the Opponent’s Vice-President Marketing. The Opponent was incorporated on August 31^st, 1978. It owns the rights in the following trade-marks:

            CIRQUE DU SOLEIL, registration number TMA410234, in association with articles of wearing apparel and accessories, namely sweatshirts, t-shirts, hats, caps, shorts, boxer shorts, jackets, jeans, raincoats, umbrellas, swimsuits, ties, coats, vests, sweaters, shirts and jerseys; novelty and souvenir items, namely balloons, playing cards, calendars, note cards, postcards, lithographs, posters, laminated posters, souvenir programs, beach towels, sport bags, tote bags, pennants, key chains, mugs, masks, buttons, hand bags, cups, decals, flags, pins, masquerade costumes, pen and pencil sets and cases, bumper stickers, jig-saw puzzles, banners, tie pins and watches; sound recording or reproducing media, namely records, tapes, compact discs and cassettes; toys and games, namely coloring books, painting and coloring sets, comic books, diaries, calendars and scrap books (“Opponent’s wares”); and in association with the operation of a business dealing in the presentation, production, management, licensing and sponsoring of entertaining shows (Opponent’s services”).

            CIRQUE DU SOLEIL and sun design as illustrated hereinafter, certificate of registration number TMA418918:

in association with the Opponent’s wares and Opponent’s services.

            CIRQUE DU SOLEIL, application number 1,042,363 filed on January 12, 2000.

 

Since 1984, the Opponent and its affiliates, not identified in his affidavit, have created, produced and presented innovative entertainment performances in connection with the trade-marks CIRQUE DU SOLEIL and CIRQUE DU SOLEIL and sun design.

 

The affiant states that since June 1984, 3 million spectators have seen theatrical performances in association with the trade-mark CIRQUE DU SOLEIL. Such trade-mark and/or CIRQUE DU SOLEIL and design are always used and displayed during each of the theatrical performances. Paragraph 8 of his affidavit contains a list of the performances presented across Canada from 1984 to 2002. During such period, Mr.D’Amico alleges that the revenues generated in Canada by those performances increased from $61,000 in 1984, to more than $14 million in 2002. There have been audio-visual productions presented in Canada in association with the trade-mark CIRQUE DU SOLEIL. A list of products allegedly sold in association with the trade-marks CIRQUE DU SOLEIL and CIRQUE DU SOLEIL and sun design has been provided that includes novelty and souvenir items, paper goods, clothing and accessories, fine jewellery, ornamental accessories, toys and games, household utensils, bags and cases, umbrellas, artistic and decorative objects, wallpaper, lamps and office supply. There is however no evidence of “use” as defined in Section 4 of the Act of these trade-marks in association with such wares.

 

The sale in Canada of those products has generated revenues, since 1985, of approximately $11 million. The Opponent and its predecessor-in-title have spent from 1985 to 2002 the sum of $3 million to promote in Canada the sale of the products described above as well as for the promotion of its theatrical performances in association with the trade-mark CIRQUE DU SOLEIL and/or CIRQUE DU SOLEIL and sun design. Such advertisements appeared across Canada through various media, such as television and radio commercials, billboards, magazines, newspapers and airport video boards. Canadian newspapers have constantly reported on the Opponent’s activities occurring in the United States, Europe and Asia. Samples of these advertisements and newspaper articles have been produced in the record.

 

Since 1996, there is a website at www.cirquedusoleil.com that have attracted over one million Canadian visitors, which represented only 12% of the total visitors.

 

III The Applicant’s Evidence

 

Ms. Manon Gaudreau has been an employee of the Applicant’s agent’s firm. She conducted a search using the CDNameSearch database that comprises information on each Canadian trade mark application filed, being pending, registered, abandoned or struck. She conducted the search on March 3, 2003 and the register was up to date as of February 24, 2003.

 

She first did a search of the register of all trade-marks that include the word CIRQUE or CIRQUES. Eleven (11) marks were located. She then searched the register to locate all trade-marks which include the word CIRCUS. Thirty seven (37) trade-marks were located including two official marks.

 

She filed as Exhibit MG-4 a list of 11 owners of trade-mark registrations or applications having the word CIRQUE or CIRQUES as a component of their corporate name. Exhibit MG-5 is a list of 16l trade-mark registration or application owners having the word CIRCUS as a component of their corporate name.

 

She had access to CIDREQ, a database that contains information on individuals and corporations carrying on business in the Province of Quebec. She conducted on March 3 2003, various searches on such database. Exhibit MG-7 is a list of all businesses that have the word CIRQUE or CIRQUES as part of their corporate name. 133 different entities were located. We do not know however if they are still in business and if so, what type of business they operate.

 

She filed as Exhibit MG-8 the results of a similar search: all entities carrying on business in the province of Quebec having the word CIRCUS as part of their corporate name. 34 different entries were found. We have however no evidence that each one of them are still in operation and which type of business they operate.

 

Exhibit MG-12 are extracts of “Le Nouveau Petit Robert” dictionary that include the definition of the words “cirque”, “soleil” and “miroir”. Exhibit MG-13 are extracts of The Oxford English reference Dictionary containing the definition s of the words “circus”, “sun” and “mirror”.

 

IV The Opponent’s Reply Evidence

 

The Opponent filed as rebuttal evidence:

 

A) Certified copies of registration numbers:

 

TMA562429 for the trade-mark CIRQUE DU MONDE;

TMA358483 for the trade-mark NATIONAL CIRCUS OF CANADA;

TMA385484 for the trade-mark CIRQUE NATIONAL DU CANADA;

TMA559228 for the trade-mark DRALION CIRQUE DU SOLEIL;

 

which were listed in Exhibit MG-2 to Manon Gaudreau’s affidavit.

 

B) Certified copies of documents attesting the change-in-title from Les Productions du Cirque du Soleil Inc. to Créations Méandres Inc. for the following registered trade-marks:

 

NATIONAL CIRCUS OF CANADA, registration number TMA358483;

CIRQUE NATIONAL DU CANADA, registration number TMA385484;

 

also listed in Exhibits MG-2 and MG-3 to Manon Gaudreau’s affidavit.

 

C) Certified copies of documents attesting the change-in-title for the registered trade-marks and pending applications in the name of Créations Méandres Inc., from Créations Méandres Inc. to Créations Méandres Inc., including the following:

CIRQUE DU SOLEIL, registration number TMA410234;

CIRQUE DU SOLEIL & Design, registration number TMA418918;

DRALION CIRQUE DU SOLEIL, registration number TMA559228;

CIRQUE DU MONDE, registration number TMA562429;

CIRQUE DU SOLEIL, application number 1042363.

 

 

V The Law

 

The legal onus is upon the Applicant to show that its application complies with the provisions of Section 30 of the Act, but there is however an initial evidential burden on the Opponent to establish the facts relied upon by it in support of each ground of opposition. Once this initial burden is met, the Applicant still has to prove, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark [See Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330; John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R. (3d) 293 and Wrangler Apparel Corp. v. The Timberland Company, [2005] F.C. 722].

 

The issue of non-compliance with the provisions of Section 30 of the Act must be assessed as of the filing date of the application. (July 13, 2000). [See Dic Dac Holdings (Canada) Ltd v.Yao Tsai Co. (1999), 1 C.P.R. (4th) 263] The material time for considering the issue of non-entitlement based on Section 16(3) of the Act is also the filing date of the application [See Section 16 of the Act]. The material date for assessing the issue of distinctiveness is generally accepted to be filing date of the statement of opposition (June 14, 2002). [See Andres Wines Ltd. and E&J Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.), Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at 424 (F.C.A) and Metro-Goldwyn-Meyer Inc v. Stargate Connections Inc. (2004), 34 C.P.R. (4^th) 317(F.C.T.D.)]. The ground of opposition based on Section 12(1)(d) of the Act must be assessed as of the date of the Registrar’s decision. [See Park Avenue, supra] Finally I must determine, as of the date of filing of the application, if the Mark is descriptive or deceptively misdescriptive, in either the French or English language, of the character or quality of the Wares or Services. [See Fiesta Barbeques Limited v. General Housewares Corporation (2003), 28 C.P.R. (4^th) 60, Zorti Investments Inc. v. Party City (2004), 36 C.P.R. (4^th) 90 (T.M.O.B.); Havana Club Holdings S.A. v. Bacardi & Company Limited (2004), 35 C.P.R. (4^th) 54 (T.M.O.B.) and Eloyalty Corporation v. Loyalty Management Group Canada Inc, re application No. 860,274, May 28, 2004 (T.M.O.B.)]

 

The Opponent will be successful on its entitlement ground of opposition based on previously used trade-marks only if it establishes such prior use and that it was not abandoned at the advertisement date of the present application (April 17, 2002) (Section 16(5) of the Act). As for the ground of opposition based on a previously filed application, the Opponent must not only prove such earlier filing, but also has to establish that its application was still pending at the advertisement date of the present application. (Section 16(4) of the Act)

 

The difference in the material dates of the various grounds of opposition raised by the Opponent will not be a determining factor in my assessment of them.

 

VI Analysis of the Various Grounds of Opposition

 

The first ground of opposition has been insufficiently pleaded and as such must be dismissed. The Opponent failed to allege that the Mark would be confusing with the Opponent’s prior rights. The Applicant could still make the statutory declaration that it was satisfied that it was entitled to use the Mark in Canada in association with the Wares and Services, despite the Opponent’s rights if the Applicant felt that the Mark was not confusing with any of the Opponent’s trade-marks or was not descriptive or deceptively misdescriptive, in either the French or English language, of the character or quality of the Wares or Services. Should I be wrong in reaching this conclusion, the faith of this ground of opposition will be dependant on the outcome of my assessment of the likelihood of confusion between the Mark and the Opponent’s trade-marks and the descriptiveness or not of the Mark.

 

The third ground of opposition is also dismissed as the Opponent failed to meet its initial onus. There is no evidence in the file that would enable me to conclude that the Mark, when viewed as a whole, is descriptive or deceptively misdescriptive of the character or quality of the Services in association with which it is intended to be used or of the conditions of or the persons employed in their production.

 

The likelihood of confusion between the Mark and the Opponent’s trade-marks CIRQUE DU SOLEIL and CIRQUE DU SOLEIL and design will be the key issue to determine with respect to the second, fourth and sixth grounds of opposition.

 

In order to determine whether trade-marks are confusing, Subsection 6(5) of the Act lists some of the surrounding circumstances that the Registrar must consider: the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; the length of time the trade-marks or trade names have been in use; the nature of the wares, services, or business; the nature of the trade; and the degree of resemblance between the trade-marks or trade-names in appearance, or sound or any ideas suggested by them.

 

Mr. Justice Décary enunciated, in Miss Universe Inc. v. Bohna (1994), [1995] 1 F.C. 613 (F.C.A.), in the following terms the test to determine the likelihood of confusion between two trade-marks:

«To decide whether the use of a trade-mark or of a trade-name causes confusion with another trade-mark or another trade-name, the Court must ask itself whether, as a matter of first impression on the minds of an ordinary person having a vague recollection of that other mark or name, the use of both marks or names in the same area in the same manner is likely to lead to the inference that the services associated with those marks or names are performed by the same person, whether or not the services are of the same general class.»

 

The criteria listed in section 6(5) of the Act are not exhaustive and it is not necessary to give each one of them equal weight [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 likelihood of confusion between the marks in issue must not be determined in the abstract. There will be a reasonable likelihood of confusion if the Mark prompts a consumer to think that the Wares or Services come from the same source as those wares or services sold by the Opponent in association with its trade-marks CIRQUE DU SOLEIL and CIRQUE DU SOLEIL and design. [See Mattel U.S.A., Inc v. 3894207 Canada Inc. (2004), 30 C.P.R. (4^th) 456]

 

It is with these principles in mind that I shall analyse the relevant surrounding circumstances to determine, on a balance of probabilities, if there is a likelihood of confusion between the Mark and the Opponent’s trade-marks.

 

i)                    The inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known

 

The Mark is inherently weak as the first component (CIRQUE) is descriptive of the nature of the Services. The same reasoning applies to the Opponent’s trade-marks. There has been no evidence of use of the Opponent’s trade-marks in association with the Opponent’s wares. There is some evidence of use of the Opponent’s trade-marks in Canada since 1985 in association with services. The evidence establishes that the Opponent’s trade-marks are known in Canada in association with the Opponent’s services. There is no evidence of use of the Mark by the Opponent. This factor therefore favours the Opponent.

ii)                  The length of time the trade-marks or trade names have been in use

 

As already stated, there is no evidence of use of the Mark in association with either Wares or Services, while there is evidence of use of the Opponent’s trade-marks in association with the Opponent’s services since at least 1985. This circumstance also favours the Opponent.

 

iii)                The nature of the wares, services, or business; iv) The nature of the trade

 

There is definitively an overlap in the nature of the parties’ respective wares. Both parties’ sevices fall in the general category of entertainment shows. As such, this circumstance goes against the Applicant.

 

v)   The degree of resemblance between the trade-marks or trade-names in appearance, or sound or any ideas suggested by them

 

The degree of resemblance does play an important role in assessing the likelihood of confusion. It has been considered as one of the most important factor in assessing the likelihood of confusion, especially in cases where the wares and services overlap. [See Berverly Bedding & Upholstery Co. v. Regal Bedding &Upholstering Ltd. (1980), 47 C.P.R. (2d) 145 at 149 (F.C.T.D.)]

 

The only similarity between the Mark and the Opponent’s trade-marks is the word “cirque”. But, I must apply the test set out hereinabove, namely: when viewed as a whole are the marks in issue confusing? The design features of the parties trade-marks are certainly distinctive. There is no similarities in the ideas suggested by the words “soleil” and “miroir”. When viewed as a whole, the Mark does not resemble in appearance, sound or in the ideas suggested to the Opponent’s trade-marks. This circumstance favours the Applicant.

 

vi) Additional surrounding circumstances

 

The state of the register evidence clearly shows that the words “cirque” or “circus” are common components of registered trade-marks or allowed applications in association with either services or wares related to the Wares or Services.

 

VII Conclusion

 

Having regard to the foregoing, notwithstanding the overlap in the nature of the wares and services and the nature of the trade, I am satisfied that, on a balance of probabilities, the Applicant’s Mark is not confusing with the Opponent’s trade-marks CIRQUE DU SOLEIL and CIRQUE DU SOLEIL and design. To rule otherwise would be tantamount to give a monopoly to the Opponent on the word “cirque”, which could be descriptive of the Services. I therefore dismiss grounds of opposition two, four and six described above.

 

As for the fifth ground of opposition, the legal burden is on the Applicant to prove that the Mark is adapted to distinguish or actually distinguishes its wares and services from those of others, including those of the Opponent, throughout Canada. [See Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (T.M.O.B.)] This ground of opposition essentially turns on the issue of confusion as of the filing date of the opposition. Having ruled that the Mark is not likely to cause confusion with the Opponent’s trade-marks, the Mark is apt to distinguish the Applicant’s Wares and Services from the Opponent’s wares and services. As such, the fifth ground of opposition is also dismissed.

 

Having been delegated authority by the Registrar of Trade-marks by virtue of Section 63(3) of the Act, I dismiss the opposition filed by the Opponent against the Applicant’s application for the registration of the Mark, the whole pursuant to Subsection 38(8) of the Act.

 

 

DATED, IN MONTREAL, QUEBEC, THIS 11th DAY OF JULY 2005.

 

 

 

Jean Carrière,

Member,

Trade-marks Opposition Board