TRADUCTION/TRANSLATION
IN THE MATTER OF AN OPPOSITION by Vincor International Inc. to application No. 1165579 for the trade-mark CUVEE DU PRESIDENT filed by ONCV (a corporation)
I The Pleadings
On January 24, 2003, ONCV (a corporation) (the “Applicant”) filed application number 1165579 to register the trade-mark CUVEE DU PRESIDENT (the “Mark”). I note that there are no accents on the words CUVEE and PRESIDENT, as in a number of exchanges of correspondence, the parties incorrectly identified the Mark as CUVÉE DU PRÉSIDENT. I verified the registration application as filed, and the Mark was indeed identified without accents. In closing on this subject, I would add that the presence of accents on those words would have no effect on my decision.
This application is based on use in Canada at least as early as January 21, 1996, in association with wines (the “Wares”).
The application was advertised for opposition purposes in the September 8, 2004, edition of the Trade-marks Journal.
On September 15, 2004, Vincor International Inc. (the “Opponent”) filed a statement of opposition which the Registrar then forwarded to the Applicant on October 19, 2004. On October 21, 2004, the Applicant filed a counter statement denying all grounds of opposition.
The Opponent filed in evidence the affidavit of Steven Bollinger, and the Applicant filed those of Pasqualina D’Addio and Karine Spénard. These two individuals were cross-examined, and the transcripts of these cross-examinations form part of the record. No evidence was filed in reply.
Only the Opponent filed a written argument, and both parties were represented at the oral hearing.
II The Statement of Opposition
The grounds of opposition can be summarized as follows:
1. The application for registration does not conform to the requirements of paragraph 30(i) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”), in that the Applicant could not state that it was satisfied that it was entitled to use the Mark in Canada in association with the Wares because the Applicant knew of the Opponent’s prior use in Canada of the trade-mark PRESIDENT, or that the Opponent had made it known in Canada, in association with wines, sparkling wines, port and sherry;
2. The application for registration does not meet the requirements of paragraph 30(b) of the Act because the Applicant did not use the Mark as of the date stated in its application.
3. The Mark is not registrable pursuant to the provisions of paragraph 12(1)(d) of the Act because it is confusing with the following registered trade-marks of the Opponent:
i) PRESIDENT, certificate of registration UCA027871
ii) BRIGHTS PRESIDENT and design, certificate of registration TMA251873
iii) A LABEL ON WHICH IS INSCRIBED PRESIDENT, certificate of registration UCA027872
all registered in association with wines.
- The Applicant is not the person entitled to the registration of the Mark because, under paragraph 16(3)(a) (sic) of the Act, on the date of first use alleged in the application for registration, the Mark was confusing with the above-mentioned trade-marks registered by the Opponent and previously used in Canada in association with wines;
- The Mark is not distinctive, in that it neither distinguishes nor is adapted to distinguish the Wares from the wares associated with the Opponent’s marks previously used in Canada by the Opponent or its predecessors-in-title.
III Analysis of the grounds of opposition
The Applicant bears the legal onus of establishing that the application for registration complies with the Act, but there is however an initial onus on the Opponent to establish the facts relied upon by it in support of each ground of opposition. Once this initial onus 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, 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 relevant dates for examining the grounds of opposition vary depending on the ground. Thus, where it is a question of non-compliance with one of the provisions of section 30 of the Act, the relevant date will be the filing date of the application (January 24, 2003) [see Dic Dac Holdings (Canada) Ltd v. Yao Tsai Co. (1999), 1 C.P.R. (4th) 263 and Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R. (3d) 469]. The registrability of the Mark under paragraph 12(1)(d) of the Act must be analyzed as of the date of the Registrar’s decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 412 at 424 (F.C.A.)]. In the case of entitlement to the registration of the Mark where the application is based on previous use, it is the date of first use indicated in the application (January 21, 1996; subsection 16(1) of the Act). Finally, it is generally recognized that the distinctiveness of the Mark must be determined as of the filing date of the opposition (September 15, 2004) [see E. & J. Gallo Winery v. Andres Wines Ltd. (1975), 25 C.P.R. (2d) 126, p. 130; [1976] 2 F.C. 3 (F.C.A.), and Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. [2004] F.C. 1185 (F.C.T.D.)].
i) Ground of opposition based on paragraph 30(b) of the Act
The evidence filed by the Opponent regarding this ground may be summarized as follows. Mr. Bolliger is the Opponent’s Vice-President, Marketing. He states that, because of his duties, he is perfectly aware of the products marketed by his competitors, and that his employees keep him up to date on these matters. He has never heard anything about the Opponent’s product since 1996. His affidavit contains the following allegation: “I note that the applicant claims to have first used the trade-mark applied for since January 21, 1995. Based on Vincor corporate records, discussions with key employees and my own personal knowledge, Vincor was unaware of the applicant’s products being offered for sale in Canada and the subject application prior to Spring 2004.” He has been performing these duties since 1998. We have no information about his employment for the period from 1996 to 1998. It is therefore impossible for me to conclude that he was in a position to know whether the Wares bearing the Mark were on the Canadian market in 1996. Furthermore, we do not know to which specific documents and to which employee or employees he is referring. As regards the date of first use cited in this passage, I am of the view that there is a typographical error.
It is true that the Opponent did not file an affidavit from one of its representatives establishing the extent of the use of the Mark since the date of first use alleged in its application for registration, but the Opponent does not bear the initial burden of proving use of the Mark since the date alleged in the application. The only evidence on record of the Mark’s use is limited to that of Ms. Spénard, a student employed by the Opponent’s agents’ firm. On March 8, 2006, at a Société des Alcools du Québec (“SAQ”) store, she purchased a bottle of wine bearing the Mark and a bottle of the Opponent’s sparkling wine bearing the trade-mark PRESIDENT. Although I concede that it is very difficult in such a situation for the Opponent to meet the initial burden of proof, I am of the opinion that the Opponent did not discharge it in this case. The second ground of opposition is therefore dismissed.
ii) Registrability of the Mark
Mr. Bollinger refers to the certificates of registration listed in the statement of opposition. Photocopies of excerpts from an unidentified databank are attached as exhibits to his affidavit. Where the Opponent bases its opposition on certificates of registration without producing certified copies, the Registrar has the discretion to consult the Register and verify whether these registrations are still valid. [See Quaker Oats of Canada Ltd./La Compagnie Quaker Oats du Canada Ltée v. Menu Foods Ltd., 11 C.P.R. (3d) 410 (T.M.O.B.)] I have made such a verification, and the three registrations alleged in support of this ground of opposition are still in force. Accordingly, the Opponent has discharged its initial burden of proof.
The legal burden is now on the Applicant to show on a balance of probabilities that there is no likelihood of confusion between the Mark and the Opponent’s marks. For the purposes of this analysis, I will limit myself to comparing the Mark with the trade-mark PRESIDENT, certificate of registration UCA27871, in association with wines, as this is the Opponent’s trade-mark that most closely resembles the Mark. Therefore, if I conclude that there is no likelihood of confusion between these marks, I would come to the same conclusion for the Opponent’s other trade-marks.
The likelihood of confusion between two trade-marks must be analysed in relation to the particular circumstances of each case. A non-exhaustive list of these circumstances can be found at subsection 6(5) of the Act. The Honourable Justice Binnie, writing for the Supreme Court of Canada, ruled on the scope of this section in Mattel Inc. v. 3894207 Canada Inc., (2006) 49 C.P.R. (4th) 321, stating:
Within the “all the surrounding circumstances” test, s. 6(5) of the Act lists five factors to be considered when making a determination as to whether or not a trade-mark is confusing. These are: “(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; (b) the length of time the trade-marks or trade-names 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 or trade-names in appearance or sound or in the ideas suggested by them”. The list of circumstances is not exhaustive and different circumstances will be given different weight in a context-specific assessment. See Gainers Inc. v. Marchildon, [1996] F.C.J. No. 297 (QL) (T.D.).
None of these trade-marks have a high degree of inherent distinctiveness. The trade-mark PRESIDENT is a common word in French. As for the Mark, the addition of the descriptive words CUVEE DU makes the Mark suggestive when used in association with the Wares, suggesting that this is a special wine. However, the distinctiveness of a trade-mark can be enhanced through its use and its renown.
As noted above, there is very little evidence of the Mark’s use in Canada. Even if I accept the documentary evidence attached to Ms. Spénard’s affidavit, namely the excerpts from the SAQ’s Web site indicating the stores where the Opponent’s products bearing the Mark can be found, this evidence is not nearly enough to allow me to conclude that the Mark was known in Canada. It is not known when the SAQ began selling the Wares in its stores, what quantities of the Wares have been sold since that date or whether the Wares are being sold in places other than SAQ stores.
Mr. Bolliger states that the Opponent is the biggest producer and distributor of wines, ciders and alcoholic beverages in Canada. He states that the trade-mark PRESIDENT has been used in Canada in association with wines since 1947. It is a public company whose shares are traded on the Toronto Stock Exchange. He alleges that the sparkling wine bearing the trade-mark PRESIDENT has been the top selling domestic sparkling wine in Canada since 1978. The figures provided and cited below support his claims. The sales figures associated with the trade-mark PRESIDENT sparkling wines in Canada between 1999 and March 2004 total more than four (4) million litres and hundreds of millions of dollars. He filed specimens of labels used over the years, a photograph of a bottle, and advertisements promoting the trade-mark PRESIDENT that were published in Canadian newspapers or appeared on posters in shopping centres. During the same period, the Opponent spent more than $1,000,000 to promote this trade-mark in Canada. The Opponent’s sparkling wine bearing the mark PRESIDENT has won awards in many countries, including England, Russia, Canada, the United States and Spain. There is no doubt in my mind that the mark PRESIDENT is well known in Canada in association with sparkling wines. This factor therefore favours the Opponent.
The length of the use of the marks in Canada also favours the Opponent.
As regards the nature of the wares, the Applicant tried to distinguish the Wares from those of the Opponent. It referred to a photocopy of a photograph attached to Ms. Spénard’s affidavit. The photograph shows a bottle of wine that she acquired in an SAQ store. The bottle bears the Mark and the notation [translation] “Product of Algeria.”. Therefore, the Applicant submits that a still wine from Algeria must be distinguished from a sparking wine from Canada. Even if I were prepared to consider this argument, all I need say to dispose of it is that it is the list of wares appearing in the Opponent’s certificate of registration that must be compared with the list of the Wares. In both cases, the description is the same: wines. Therefore, this factor favours the Opponent.
In addition to the distinctions drawn in the preceding paragraph, the Applicant argues that the natures of the parties’ businesses can be distinguished because the parties’ wines are placed on different shelves in SAQ stores. Thus, in the store she visited, Ms. Spénard would have observed that still wines were placed on different shelves than sparkling wines. Furthermore, still wines would be arranged by country of origin or by region. This is a very tenuous distinction. There is no indication that different types of wine are displayed in the same way in all SAQ stores. Moreover, there is no evidence that this distinction in how the wines are displayed applies anywhere else besides this particular SAQ store. Even if there were such evidence on the record, I am of the view that this distinction is not enough to conclude that the natures of the parties’ businesses are so different such that this factor would favour the Applicant.
Mr. Justice Cattanach described the test for determining whether or not parties’ marks resemble each other in Canadian Schenley Distilleries Ltd. v. Canada’s Manitoba Distillery Ltd. (1975), 25 C.P.R. (2d) 1, as follows:
To determine whether two trade marks are confusing one with the other it is the persons who are likely to buy the wares who are to be considered, that is those persons who normally comprise the market, the ultimate consumer. That does not mean a rash, careless or unobservant purchaser on the one hand, nor on the other does it mean a person of higher education, one possessed of expert qualifications. It is the probability of the average person endowed with average intelligence acting with ordinary caution being deceived that is the criterion and to measure that probability of confusion the Registrar of Trade Marks or the Judge must assess the normal attitudes and reactions of such persons.
In considering the similarity of trade marks it has been held repeatedly that it is not the proper approach to set the marks side by side and to critically analyze them for points of similarities and differences, but rather to determine the matter in a general way as a question of first impression. I therefore propose to examine the two marks here in dispute not for the purpose of determining similarities and differences but rather to assess the attitude of the average reasonable purchaser of the wares as a matter of first impression.
It is true that the first portion of the Mark, CUVEE DU, is different from the Opponent’s trade-mark. However, the word “cuvée” is defined as follows in the dictionary Le Nouveau Petit Robert: [translation] “1. Quantity of wine made at the same time in a vat . . . 2. Product of an entire vineyard.”
I do not see how adding these words distinguishes the Mark from the trade-mark PRESIDENT when it is used in association with wines. The added terms make direct reference to wine. The average Canadian consumer with an imperfect memory would be unable to distinguish these two marks by the words “CUVÉE DU” alone. There is definitely a resemblance in visual appearances and in the ideas suggested by the parties’ marks because of the presence of the shared dominant term, PRESIDENT. This factor, on the whole, favours the Opponent.
The Applicant argued at the oral hearing that the evidence on the record demonstrates that there are other wines with the word “Président” as a component. Apart from the wines of the parties in this case, this very succinct evidence boils down to excerpts from the SAQ’s Web site, which refer to the following wines:
Cuvée du président Thalvin Maroc
La Nonciature Domaine de la Présidente châteauneuf-du-pape 1999
La Nonciature châteauneuf-du-pape 2000 (where Domaine de la Présidente is shown as the supplier)
Without deciding whether it is admissible, I find this evidence to be too weak to conclude that the average wine consumer must distinguish between many marks of wine including the word “président.” This evidence merely uncovers two trade-marks in addition to the Opponent’s marks and the Mark. This is too little. I therefore cannot consider the existence of these two trade-marks to be a significant factor. (It should be noted that, in the absence of any evidence to this effect, I do not consider the supplier’s name to be a trade-mark used in Canada.)
The Applicant filed evidence of the state of registries in foreign jurisdictions by way of an affidavit by Pasqualina D’Addio, a paralegal working for the Applicant’s agent’s firm. According to this evidence, other jurisdictions allow some trade-marks registered in association with alcoholic beverages to exist side by side even though they all include the word “President.” Without determining whether this evidence is admissible, I note that the number of references under each of the foreign jurisdictions mentioned is low and that, in many cases, the referenced marks contain a distinctive term. For example, in the United States, most of the six marks cited include one or more distinctive words, such as “Captain Morgan,” Hancock’s” or “Riccadonna.” In Great Britain, only five marks are cited, including two belonging to the same owner. Finally, the evidence discloses only three marks appearing in the register of the Office for Harmonization in the Internal Market (OHIM). I am of the opinion that this evidence is not a relevant factor in this debate.
Based on this analysis, I conclude that the Opponent has not discharged its burden of proof so as to show, on a balance of probabilities, that the Mark is not confusing with the Opponent’s registered trade-mark, PRÉSIDENT. I therefore maintain the third ground of opposition.
iii) Entitlement to registration under section 16 and distinctiveness of the Mark
It goes without saying that the reference to paragraph 16(3)(a) of the Act is incorrect because this application is based on use in Canada. I note that the Applicant did not raise this issue, and I am of the opinion that this is a typographical error and should have referred to paragraph 16(1)(a) instead. It must be determined whether there is a likelihood of confusion between the Mark and the Opponent’s marks at a date other than that of my decision. Under these two grounds of opposition, the differences in the relevant dates have no effect on the substance of my preceding analysis of the relevant criteria. Given the circumstances, I also allow the fourth and fifth grounds of opposition.
iv) Ground under paragraph 30(i)
Since the Opponent has prevailed on three different grounds of opposition, there is no need for me to rule on the merits of the first ground of opposition.
V Conclusion
Having been delegated authority by the Registrar of Trade-marks pursuant to the provisions of subsection 63(3) of the Act, I refuse the application to register the Mark in association with the Wares, in accordance with the provisions of subsection 38(8) of the Act.
DATED AT BOUCHERVILLE, QUEBEC, THIS 12TH DAY OF JUNE 2008.
Jean Carrière
Member
Trade-marks Opposition Board
Certified true translation
Michael Palles