LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2016 TMOB 11
Date of Decision: 2016-01-20
IN THE MATTER OF AN OPPOSITION
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2155091 Ontario Ltd.
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Opponent |
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and |
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Rockford Restaurant Group Limited Partnership |
Applicant |
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1,522,635 for ROCKFORD
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Application |
[1] Rockford Restaurant Group Limited Partnership (the Applicant) has applied for the trade-mark ROCKFORD for use in association with a number of services for providing food and drink including restaurant and catering services and a number of goods including food, beverages, clothing, beverageware and novelty items. The first ROCKFORD restaurant opened in December 2009 in Revelstoke, British Columbia.
[2] 2155091 Ontario Ltd. (the Opponent) has used the trade-marks ROCKFORD’S BAR & GRILL and ROCKFORD’S since April 2008 in association with a bar and restaurant in King City, Ontario. The Opponent has primarily opposed this application on the basis that the ROCKFORD trade-mark is confusing with its previous use of these trade-marks in association with bar and restaurant services.
[3] For the reasons that follow, I find that this application should be refused.
File Record
[4] The Applicant filed application No. 1,522,635 on April 6, 2011 for registration of the trade-mark ROCKFORD (the Mark) based on its use of the Mark in association with the following goods and services since at least as early as November 2010:
Goods:
Clothing, namely shirts, t-shirts, jackets, uniforms and scarves; headwear, namely hats, caps, bandanas, berets, headbands, snow caps and toques; beverageware, including glasses, mugs, cups, beverage containers and water bottles; novelty items, namely pendants; souvenir items, namely pens, key chains, lapel pins, posters, insulated containers for food and beverages, recipe books, menus and menu boards; food items, namely curry sauces, tomato sauces, candies, frozen desserts, ice cream desserts and gelatin desserts; alcoholic beverages, namely beer and wine, non-alcoholic beverages, namely fruit juices, coffee and tea
Services:
Restaurant services; take-out
restaurant services; catering services; bar and lounge services.
[5] The application was advertised in the June 12, 2013 issue of the Trade-marks Journal.
[6] The statement of opposition was filed on August 9, 2013. On May 29, 2014 leave was granted for the filing of an amended statement of opposition. The amended statement of opposition raises three grounds of opposition under section 38 of the Trade-marks Act, RCS 1985, c T‑13 (the Act) which can be summarised as follows:
1.
The application should be refused pursuant to section 38(2)(a) of
the Act since the application does not conform with section 30(a) of the Act
since the goods defined as “beverageware” are not defined in ordinary
commercial terms since this term encompasses a diversity of different goods not
necessarily sold in the same channels of distribution and it is followed by the
term “including”;
2. The Applicant is not the person entitled to registration of the Mark contrary to section 16(1)(a) in that as of the date of first use of the Mark, November 2010, the Mark was confusing with the trade-marks ROCKFORD’S BAR & GRILL and ROCKFORD’S which had been previously used, promoted, and advertised in Canada by the Opponent in association with bar and restaurant services; and
3. The Mark does not actually distinguish the Goods and Services of the Applicant from the services of the Opponent offered in association with the trade-marks ROCKFORD’S BAR & GRILL and ROCKFORD’S.
[7] The Applicant filed and served a counter statement denying all of the grounds of opposition.
[8] In support of its opposition, the Opponent filed the affidavit of Graham McConnell (dated February 20, 2014). In support of its application, the Applicant filed the affidavit of Pradeep Keshva Naicker (dated August 1, 2014). No cross-examinations were conducted. Only the Applicant filed a written argument and a hearing was not held.
Onus and Material Dates
[9] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist [see John Labatt Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298].
[10] The material dates that apply to the grounds of opposition are as follows:
1. sections 38(2)(a)/30 - the date of filing of the application [see Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 at 475 (TMOB)];
2. sections 38(2)(c)/16(1) – the date of first use set out in the application [section 16(1) of the Act];
3. sections 38(2)(d)/2 - the date of filing of the opposition [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC)].
Preliminary Issue: Leave to File Further Evidence Refused
[11]
Attached to the written argument filed by the Applicant are the
first two pages of what appears to be a second affidavit sworn by Pradeep
Keshva Naicker on February 12, 2015. The second paragraph of this affidavit
indicates that it is sworn in response to the opposition proceeding brought by
the Opponent. The practice notice Practice in Trade-mark Opposition
Proceedings (dated March 31, 2009) states that once written arguments have
been requested pursuant to section 46 of the Trade-marks Regulations,
SOR/96-195, (the Regulations) no request for leave to file additional evidence
will be considered unless it is specifically agreed that the affiant will be
made available for cross-examination. Even if I was to consider the attaching
of this affidavit to be a request pursuant to section 44 of the Regulations to
file further evidence, I will not consider such a request because the Applicant
did not confirm that the affiant would be made available for cross-examination.
Section 30(a) Ground of Opposition
[12] The section 30(a) ground of opposition alleges that the application does not conform to the Act insofar as the goods described as beverageware are concerned since this term encompasses a diversity of different goods not necessarily sold in the same channels of distribution and it is followed by the term “including”.
[13] The Trade-marks Office’s Goods and Services Manual includes a representative list of acceptable goods and service [see Johnson & Johnson v Integra Lifesciences Corp (2011), 98 CPR (4th) 429 at para 29 (TMOB) which confirms that the Registrar may exercise her to discretion to check it]. The Trade-marks Office’s Examination Manual at II.5.4 explains:
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For goods or services not found in the Goods and Services Manual the acceptable listings in the Goods and Services Manual can be used to indicate by analogy the kind of statements that would also be acceptable to describe similar goods or services. A statement of goods or services is acceptable if it [is] as specific, or more specific than, a related or similar listing. |
[14] As the Goods and Services Manual includes the analogous “beverage containers”, I find that in the absence of evidence or argument, the Opponent’s pleading alone fails to meet its evidential burden and this ground of opposition is rejected.
Section 16(1)(a) Ground of Opposition
[15] The Opponent has an initial evidential burden of establishing use of one or more of its trade-marks ROCKFORD’S BAR AND GRILL or ROCKFORD’S prior to the first use date set out in the application (November 2010) as well as non-abandonment of its trade-marks at the date of advertisement (June 12, 2013). I am satisfied that Mr. McConnell’s, the President of the Opponent, evidence that the ROCKFORD’S BAR AND GRILL trade-mark has been prominently featured on exterior and interiour signage menus, bar taps, posters and staff t-shirts at the Opponent’s restaurant since its opening in April 2008 (McConnell affidavit, paras 7-9; Exhibits GM-3 to GM-5) is sufficient to meet the Opponent’s burden.
[16] As I am satisfied that the Opponent has met its evidential burden, I must now determine whether the Applicant has met its onus of proving that there is no reasonable likelihood of confusion on a balance of probabilities.
[17] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the goods or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.
[18] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 6(5) of the Act, namely: (a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; (b) the length of time each has been in use; (c) the nature of the goods, 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. These enumerated factors need not be attributed equal weight [see, in general, Mattel, Inc v 3894207 Canada Inc (2006), 49 CPR (4th) 321 (SCC); and Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC).]
[19] In support of its application, the Applicant also raises several additional circumstances which it submits weigh in favour of finding that there is not a likelihood of confusion. Below, I consider each of the circumstances enumerated in section 6(5) of the Act as well as the additional circumstances raised by the Applicant.
inherent distinctiveness
[20] The Mark and the Opponent’s trade-mark ROCKFORD’S BAR AND GRILL have a similar degree of inherent distinctiveness.
acquired distinctiveness and length of time in use
[21] Mr. McConnell states that the Opponent has operated its restaurant ROCKFORD’S BAR AND GRILL located in King City, Ontario since at least as early as April 2008 (McConnell affidavit, paras 2,5). Since that date, the trade-mark ROCKFORD’S BAR AND GRILL has appeared in exterior signage, interior signage, menus, bar taps, posters and staff t-shirts (McConnell affidavit, paras 7-9; Exhibits GM-3 to GM-5). The Opponent’s restaurant serves “approximately thousands of customers per year” (McConnell affidavit, para 11).
[22] With respect to the use of the Mark, the evidence falls short of establishing that there is any use of the Mark which enures to the benefit of the Applicant pursuant to section 50 of the Act. Mr. Naicker’s, the President of the Applicant, evidence is that the Applicant operates its restaurants “through its parent company” Northland Properties Corporation and all of the liquor and business licenses attached to the affidavit show the liquor and business licenses as being issued to Northland Properties Corporation (Naicker affidavit, paras 7-18, Exhibits 3-8). It is well-established that corporate structure alone is insufficient to establish the existence of a license agreement and does not permit the inference that a trade-mark owner has control over the character or quality of the goods and services used in association with a licensed mark [Automobility Distribution Inc. v. Jiangsu Electronics Industries (2005), 43 CPR (4th) 157 (TMOB); MCI Communications Corp v MCI Multinet Communications Inc (1995), 61 CPR (3d) 245 (TMOB); 3082833 Nova Scotia Co v Lang Michener LLP 2009 FC 928 at para 32]. Thus, the Applicant cannot claim the benefit of section 50(1) of the Act. Furthermore, the Applicant cannot rely on section 50(2) of the Act since there is no evidence that public notice has been given.
degree of resemblance
[23] The Mark and the Opponent’s trade-mark ROCKFORD’S BAR AND GRILL are highly similar. The words BAR AND GRILL do not diminish the resemblance between the parties' marks as they are descriptive of the Opponent’s services [Reno-Dépôt Inc v Homer TLC Inc (2009), 84 CPR (4th) 58 (TMOB) at para 58].
nature of goods, business and trade
[24] This factor favours the Opponent. The nature of the services and trade of both parties appear to be of the same nature. Considering the nature of the Applicant’s business as described in Mr. Naicker’s affidavit, I find that as the Goods appear to be related to the offering of restaurant services, the nature of the Goods also overlaps with the Opponent’s services.
Mark is in a different style and font
[25] The Applicant submits that its Mark is distinctive by the style and form of its font (Applicant`s written argument, para 13). I do not find this to be a relevant surrounding circumstance. As the application for the Mark is a word mark, the registration of it would permit use of the Mark with any style of lettering, colour or design [Masterpiece, supra at paras 57-58] .
lack of confusion in the marketplace
[26] In its written argument, the Applicant requests “that the two marks be approved to coexist […] [as] there is no confusion in the marketplace between the Applicant and the Opponent’s Trade-marks” (Applicant’s written argument, para 7). In this case, the completely different geographic locations of the Applicant’s and Opponent’s restaurants (Alberta and British Columbia vs King City, Ontario), sufficiently explain why there is no evidence of confusion. Therefore, I have not drawn any negative inference about the Opponent’s case owing to the lack of evidence of actual confusion.
good faith prior use may continue in a defined territory
[27] In its written argument, the Applicant submits at paragraph 24 that “section 21(1) of the Act allows the possibility of coexistence of [the Opponent’s trade-mark] and [the Mark] by empowering the Federal Court to order that a good faith prior user of a confusingly similar mark may continue its use within a defined territorial area”. While section 21(1) of the Act may in limited circumstances allow for concurrent use, I do not find this to be a relevant surrounding circumstance. Having regard to the framework of the Act and its provision for trade-mark registrations with a national scope of protection, this provision does not support the Applicant’s claim that it is entitled to register the Mark [see Muffin Houses Incorporated v The Muffin House Bakery Ltd (1985), 4 CPR (3d) 272 (TMOB); see also Masterpiece Inc, supra at paras 28-33 which discusses that there cannot be a likelihood of confusion with another trade-mark anywhere in the country].
conclusion
[28] Based on the foregoing, I find that the Applicant has not satisfied its legal onus on a balance of probabilities of establishing no reasonable likelihood of confusion as between the Mark and the Opponent’s ROCKFORD’S BAR & GRILL trade-mark. As a result this ground of opposition is successful. Even if I had found that the use of the Mark evidenced in the affidavit of Mr. Naicker had enured to the benefit of the Applicant and that the extent of use favoured the Applicant, this would not have changed my conclusion on this ground of opposition. While acquired distinctiveness is an important surrounding circumstance, given my findings on the similarity of the trade-marks and the nature of services, even if this factor had significantly favoured the Applicant, it would not have resulted in a different outcome.
Distinctiveness Ground of Opposition
[29] In order to meet its evidential burden, the Opponent had to show that as of the filing of the statement of opposition one or more of the Opponent’s trade-marks had become sufficiently known to negate the distinctiveness of the Mark [Bojangles’ International, LLC v Bojangles Café Ltd 2006 FC 657 at paras 33-34]. When an opponent’s reputation is restricted to a specific area of Canada, the opponent’s evidential burden may be satisfied if its trade-mark is well known in a specific area [Bojangles, supra; CEG License Inc v Joey Tomato’s (Canada) Inc. (2011), 97 CPR (4th) 436 (TMOB) aff`d (2012), 110 CPR (4th) 398 (TMOB)]. The evidence before me, however, does not allow me to conclude that the Opponent’s trade-marks ROCKFORD’S and ROCKFORD’S BAR AND GRILL were well known in a specific area of Canada. In the absence of more specific information regarding how many consumers attend the Opponent’s restuarant and are aware of the Opponent’s trade-marks whether through attendance, advertising or otherwise, I cannot conclude that the Opponent’s trade-marks are well known in a specific area of Canada.
Disposition
[30] Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application under section 38(8) of the Act.
______________________________
Natalie de Paulsen
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
TRADE-MARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
No Hearing Held
AGENTS OF RECORD
Smart & Biggar FOR THE OPPONENT
No Agent Appointed FOR THE APPLICANT