Trademark Opposition Board Decisions

LE REGISTRAIRE DES MARQUES DE COMMERCE

THE REGISTRAR OF TRADE-MARKS

Citation: 2012 TMOB 212

Date of Decision: 2012-11-28

IN THE MATTER OF AN OPPOSITION by Hillerich & Bradsby Co. to application No. 1,282,602 for the trade-mark X BIONIC in the name of X-Technology Swiss GmbH

 

[1]               On December 12, 2005, X-Technology Swiss GmbH (the Applicant) filed an application to register the X BIONIC trade-mark (the Mark).  The application was filed on the basis of the Applicant’s proposed use in Canada with clothing, headgear and footwear and subsequently amended to:

Clothing, namely, shirts, slips (under garments), underwear, bandannas, knit shirts; footwear, namely, sandals, ski boots, slippers, athletic shoes, bath sandals, bath slippers, beach shoes, sports boots, esparto shoes, esparto sandals, football boots, football shoes, gymnastic shoes, and parts therefor, namely studs for football shoes and boots, inner soles, and traction soles for boots and shoes; headwear, namely, caps and hats; sportswear, namely, sports jerseys, leotards, jerseys, shorts, pants for cycling, and suits for gymnastics; hosiery, namely, stockings and socks, and suspenders therefor, all of the foregoing specifically excluding gloves, golf gloves, gardening gloves, equestrian gloves, fitness gloves, driving gloves, cycling gloves, weightlifting gloves, tennis gloves, hockey gloves, baseball gloves and batting gloves (the Wares).

 

[2]               The application was advertised for opposition purposes in the Trade-marks Journal of September 27, 2006.

[3]               On February 27, 2007, Hillerich & Bradbsy Co. (the Opponent) filed a statement of opposition pleading the grounds summarized below:

(a)    contrary to section 30(i) of the Act, the Applicant could not have been satisfied that it is entitled to use the Mark in association with the Wares as the Applicant was aware of the Opponent’s prior rights in Canada;

(b)   contrary to section 12(1)(d) of the Act, the Mark is not registrable because it is confusing with the Opponent’s registration No. TMA614,187 for BIONIC;

(c)    contrary to section 16(1)(a) of the Act, the Applicant is not the person entitled to registration of the Mark because at the date of filing it was confusing with the Opponent’s Mark previously used and made known in Canada; and

(d)   contrary to section 2 of the Act, the Mark is not distinctive of the Applicant.

I note that the ground of opposition concerning section 16(1)(a) contained a typographical error and should read section 16(3)(a) as the subject application is based on proposed use.

[4]               The Applicant filed and served a counter statement in which it denied the Opponent’s allegations.

[5]               In support of its opposition, the Opponent filed the affidavit of Lawrence B. Edlin, Jr.  In support of its application, the Applicant filed the affidavits of Lesley Gallivan and Professor Bodo W Lambertz.  Both parties filed a written argument and attended a hearing held on July 10, 2012. 

Onus and Material Dates

[6]               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 [John Labatt Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298].

[7]               The material dates with respect to the grounds of opposition are as follows:

Section 30(i) Ground of Opposition

[8]               The section 30(i) ground of opposition may be summarily dismissed since the Applicant has provided the statement required by section 30(i), and this ground should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant [Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB); Multi-Marques Inc v Gesfor Aktiengesellschaft (2008), 74 CPR (4th) 15 (TMOB) at 19]. As the application includes the required statement and there is no allegation or evidence of bad faith or other exceptional circumstances, this ground of opposition is rejected.

Section 12(1)(d) Ground of Opposition

[9]               I have exercised my discretion and checked the register to confirm that registration No. TMA614,187 for BIONIC for use with gloves is extant [Quaker Oats Co of Canada v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)].  Therefore, the Opponent has met its initial burden with respect to this ground. 

[10]           The test to determine the issue of confusion is set out in section 6(2) of the Act where it is stipulated that the use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would likely lead to the inference that the wares and services associated with those trade-marks are manufactured, sold or leased by the same person, whether or not the wares and services are of the same general class. In making such an assessment, I must take into consideration all the relevant surrounding circumstances, including those listed in       section 6(5): the inherent distinctiveness of the trade-marks and the extent to which they have become known; the length of time the trade-marks have been in use; the nature of the wares and services or business; the nature of the trade; and the degree of resemblance between the trade-marks in appearance, or sound or in the ideas suggested by them.

[11]           These criteria are not exhaustive and different weight will be given to each one in a context specific assessment [see Mattel, Inc v 3894207 Canada Inc, [2006] 1 SCR 772 (SCC) at para 54].  I also refer to Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC) at para 49, where the Supreme Court of Canada states that section 6(5)(e), the resemblance between the marks, will often have the greatest effect on the confusion analysis. 

inherent distinctiveness and extent known

[12]           I can take judicial notice of dictionary definitions [Tradall SA v Devil's Martini Inc (2011), 92 CPR (4th) 408 (TMOB) at para 29].  The on-line dictionary www.dictionary.com defines “bionic”, in part, as “utilizing electronic devices and mechanical parts to assist humans in performing difficult, dangerous, or intricate tasks, as by supplementing or duplicating parts of the body”.  Given this definition, neither party’s marks have a high degree of inherent distinctiveness since both suggest that through technology and specialized construction the associated wares may be used to assist consumers with tasks by supplementing the human body.  The X component present in the Mark gives it a slightly higher degree of distinctiveness than the Opponent’s BIONIC trade-mark.

[13]           The evidence of Lawrence B. Edlin, Jr., the President of the PowerBilt Golf Division of the Opponent, provides the following:

•          The Opponent has distributed BIONIC gloves in Canada since November 1, 2005 (para 9).  The BIONIC trade-mark appears on the gloves themselves as is seen in the advertising of the gloves attached as Exhibit E (see for example, the Style at Home reference and the Sports Illustrated advertisements).

•          The Opponent’s BIONIC brand technology is based on the anatomy and function of the hand itself, utilizing relief pads on the thumb, fingers and palm to reduce calluses, blisters and hand fatigue (para 12, Exhibit B).  The Opponent’s website www.bionicgloves.com states that BIONIC gloves “provide greater flexibility and natural dexterity, while also helping keep hands cool and dry” (Exhibit B).

•          The Opponent’s BIONIC technology was first developed for hockey gloves, then evolved to catcher’s mitts, first base mitts and batting gloves for baseball which are worn by players in the National Hockey League and Major League Baseball (para 14).  There is however no indication that these products are sold or used by players in Canada.

•          The Opponent’s BIONIC gloves now include gloves for gardening, golf, equestrian, fitness and driving (para 15; Exhibit C).  Canadian customers interested in purchasing BIONIC gloves can use the www.bionicgloves.com website to purchase them from the Opponent or an online retailer, contact a customer service representative or use the “retailer locator” feature to access a local company selling BIONIC gloves (para 39).

•          The Opponent’s BIONIC gardening, golf and equestrian gloves have been referenced or advertised in various magazines and periodicals (Exhibits F and G) including those set out below.  While the Opponent has not provided any evidence of the circulation of the magazines or newspapers referred to in Mr. Edlin’s affidavit, I can take judicial notice that there is some circulation in Canada of the newspapers and magazines set out below [see, for example, Timberland Co v Wrangler Apparel Corp (2005), 46 CPR (4th) 201 (TMOB) at 207 and Northern Telecom Ltd v. Nortel Communications Inc (1987), 15 CPR (3d) 540 (TMOB) at 543]. 

o   May 8, 2004 – The Washington Post – gardening gloves

o   January 2005 – Town & Country – gardening gloves

o   June 20, 2005 – BusinessWeek – golf gloves

o   July 4, 2005 – Time – gardening gloves

o   November 4, 2004 – The Wall Street Journal – gardening gloves

o   January 2006 – Better Homes & Gardens (Garden, Deck & Landscape) – gardening gloves

o   May 14, 2006 – New York Times – equestrian gloves

o   June 13, 2006 – Sports Illustrated – golf gloves

o   July 18, 2006 – Sports Illustrated – golf gloves

o   May 5, 2007 – Ottawa Citizen – gardening gloves

o   May 2007 – Canadian Living – gardening gloves

o   December 15, 2005 – New York Times – gardening gloves

•          The Opponent’s Canadian distributor of its golf gloves, the Forzani Group, has sold over 4000 pieces in 2006, 7000 pieces in 2007 and 5300 pieces from January to April 30, 2008 (para 38).

Based on the above, I conclude that the Opponent’s BIONIC gardening and golf gloves are known to some extent in Canada.

[14]           The evidence of Professor Bodo W. Lambertz, the Managing Director of the Applicant provides the following:

•          The X BIONIC brand is “functional sportswear” (para 16).  At Exhibit D (p 4) the Applicant’s X BIONIC products are described as follows: 

 X BIONIC has succeeded in the development of unique functional garments that are cool when you sweat and warm when you are cold … X-BIONIC is revolutionary!   It fits like a second skin, is better than nature and incorporates features designed to meet the entire range of sports specific demands.

•           The company’s Canadian distributor is Sport Dinaco (para 30).  The trade-mark X BIONIC was first associated with the Wares in Canada in November 2006 and the Wares have been distributed to retailers throughout Canada by Sport Dinaco (para 36).  Furthermore, the X BIONIC products were promoted at a Montreal exhibition in 2008 where Dinaco was one of the exhibitors (para 30; Exhibit G).

•          The approximate number of units sold in Canada of X BIONIC brand products since November 2006 (para 38) are set out below:

o   2006 – 750

o   2007 - 2,250

o   2008 – 3,900

The Applicant’s evidence suggests that its mark is also known to some extent in Canada.

[15]           Given the evidence of each party, this factor appears to slightly favour the Opponent as the evidence supports the inference that its BIONIC trade-mark is known to a greater extent than the Mark.

the degree of resemblance

[16]           There is a significant degree of resemblance between the marks at issue in appearance and sound as the addition of the X to the beginning of the word BIONIC does not change the appearance or sound of the Mark to any great degree.  Furthermore, the idea suggested by each party’s mark is identical – products designed using technology to assist consumers carry out physically difficult or demanding tasks.

nature of the wares, services, business or trade

[17]           When considering the wares, services and trades of the parties, it is the statement of wares or services in the parties’ trade-mark application or registration that govern in respect of the issue of confusion arising under section 12(1)(d) of the Act [Esprit International v Alcohol Countermeasure Systems Corp (1997), 84 CPR (3d) 89 (TMOB) at 98-99]. However, these statements must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording. The evidence of the parties' actual trades is useful in this respect [McDonald's Corp v Coffee Hut Stores Ltd (1996), 68 CPR (3d) 168 (FCA)].

[18]           The Opponent’s registered wares are for gloves. There is no restriction as to the types of gloves covered by the registration.  The Applicant submits that the average consumer would understand “gloves” to mean gloves worn during the winter months and, as such, different from the Wares.  I do not find this argument persuasive as the Opponent’s evidence clearly shows that its BIONIC gloves are functional in nature and designed for use for particular sports and hobbies, for example, golf and gardening.  The Opponent’s website www.bionicgloves.com include pictures of the following BIONIC gloves: golf gloves, gardening gloves, fitness gloves, equestrian gloves, driving gloves, dress gloves, tennis gloves, motorcycle gloves, and racquet ball gloves (Exhibit C).  The Opponent’s evidence is that its BIONIC brand golf gloves are sold in Canada through The Forzani Group a sports retailer (para 9), its www.bionicgloves.com website and other local retailers (para 39).

[19]           The Applicant’s evidence shows that its X BIONIC clothing is functional clothing designed for sporting activities and sporting purposes generally (para 6).  Mr. Lambertz’s evidence goes so far as to say that X BIONIC incorporates features “designed to meet the entire range of sport specific demands” (Exhibit D).  There is nothing in Mr. Lambertz’s evidence to suggests that the Wares are proposed to be used for activities other than sports.  

[20]            As such, I find that there is overlap in the nature of the wares – functional clothing designed using advanced technology for sports purposes.  I note that the Opponent’s registration contains no restriction limiting its registration to any one type of sporting glove, for example, golf gloves.  I also find a potential overlap in the probable trade of the parties in that both parties’ goods could be sold in sports stores.  My finding appears consistent with the evidence of Lesley Gallivan, an employee of the Applicant’s agent, who indicated that she performed marketplace searches of on-line stores “wherein products such as those sold by the Opponent and the Applicant and its competitors are available for purchase” (para 3).  

[21]           In its written argument and at the hearing, the Applicant argued that the restriction of the Wares set out below reduces the overlap in the nature of wares.

all of the foregoing specifically excluding gloves, golf gloves, gardening gloves, equestrian gloves, fitness gloves, driving gloves, cycling gloves, weightlifting gloves, tennis gloves, hockey gloves, baseball gloves and batting gloves.

 

I find that the entry of the restriction does not serve to lessen the overlap in the nature of wares or trade since gloves are not covered in the application and as a result, such a restriction seems redundant.  At the very least both party’s wares are used to perform sports and leisure activities, albeit different ones, which results in an overlap in the nature of the wares [Wolverine Outdoors Inc v Marker Völkl (2012), 102 CPR (4th) 450 (TMOB) at para 69]. Furthermore, some of the Wares may be sold for use with golfing, gardening, horse back riding, and cycling thus increasing the risk of overlap.  As such, this factor favours the Opponent.

state of the register and marketplace

[22]           The affidavit of Lesley Gallivan, a trade-mark assistant employed by the Applicant’s agent, attaches the results of a search of the trade-marks database and a search of online stores.

[23]           State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace, and inferences about the state of the marketplace can only be drawn where large numbers of relevant registrations are located [see Ports International Ltd v Dunlop Ltd (1992), 41 CPR (3d) 432 (TMOB); Welch Foods Inc v Del Monte Corp (1992), 44 CPR (3d) 205 (FCTD); Maximum Nutrition Ltd v Kellogg Salada Canada Inc (1992), 43 CPR (3d) 349 (FCA)].  Ms. Gallivan attaches four registrations and one application (Exhibit A).  As the Applicant has not provided any evidence to establish that any of these marks has been used in Canada, I am of the view that the limited number of relevant applications and registrations is not significant enough to allow me to draw any conclusions from them in respect of the state of the marketplace.

[24]           Ms. Gallivan also attaches print-outs from various web-sites and directory searches.  Ms. Gallivan provides print-outs of web-sites which show the following relevant brands in association with various clothing, sportswear, sports equipment and accessory products.  I note that for each of these brands, Ms. Gallivan also provides print-outs showing that the entities offering them for sale have dealers or retailers in Canada.  In these circumstances, I am willing to accept this evidence with reduced weight although it is hearsay.

o   APEX BIONIC jackets and gloves (Exhibits C and D);

o   BIONIC T-SHIRT (Exhibit E); and

o   BIONIC Lacrosse Stick (Exhibit G).

I note that I have not included the ALPINESTARS evidence (Exhibit F) or BIONIC BAND evidence (Exhibit H) as relevant since while a shipping rate to Canada is available there is nothing to suggest that Canadians are actually aware of or have purchased these products. 

[25]           While I do find that Ms. Gallivan’s evidence is supportive of the fact that the BIONIC trade-mark of the Opponent is not a strong mark, it is not sufficient for me to conclude that this is a significant surrounding circumstance which overcomes the degree of resemblance between the marks themselves and the nature of the wares.

other use and registrations by the applicant

[26]           The Applicant’s evidence is that its brands include a variety of marks in addition to the Mark including: X SOCKS and X UNDERWEAR (see, for example, Exhibit A) and X TECHNOLOGY (see, for example, Exhibit D).  The Applicant has registrations for X-SOCKS (No. TMA569,734) for use in association with hosiery, namely, stockings and socks, and suspenders therefore (para 13; Exhibit B) and the design below (No. TMA607,932) which is used in conjunction with X-SOCKS, X TECHNOLOGY, X UNDERWEAR and X BIONIC (Exhibits A, D, H).

The existence of these registrations does not assist the Applicant as the ownership of other registrations does not give the automatic right to obtain any further registrations no matter how closely they may be related to the original registration [Coronet-Werke Heinrich Schlerf GmbH v Produits Ménagers Coronet Inc (1984), 4 CPR (3d) 108 (TMOB) at 115].

 

no instances of confusion

[27]           Mr. Lambertz states that “my company has offered X BIONIC products for sale throughout Canada … since November 2006 with no impediments or objections.  No instances of confusion with wares or services of any other company or trade-mark have been brought to the attention of my Company, and I am not aware that any such instances of confusion have occurred.” (para 37).  An adverse inference concerning the likelihood of confusion may be drawn when concurrent use on the evidence is extensive and no evidence of confusion has been given by the opponent [Christian Dior SA v Dion Neckwear Ltd (2002), 20 CPR (4th) 155 (FCA) at para 19]. However, in the present case, I cannot draw such an inference because there is no evidence of extensive concurrent use.

conclusion

[28]           The question that I must answer is whether a consumer, with imperfect recollection of the Opponent's trade-mark, upon seeing the Applicant's trade-mark, is likely to conclude that the Wares share the same source as the Opponent's wares.  Having considered all of the relevant circumstances, I am left in a state of doubt as to whether or not there is a reasonable likelihood of confusion between the Mark and the opponent's BIONIC registration. As stated in Conde Nast Publications Inc v Union des éditions modernes (1979), 46 CPR (2d) 183 at 188 (FCTD), "If there is doubt whether the registration of a trade mark would cause confusion with a prior mark the doubt must be resolved against the newcomer.”  My doubt arises as a result of the visual similarities between the trade-marks and the overlap between the nature of wares and channels of trade in that both parties’ probable channels of trade are goods for use for sporting purposes which may be sold at sports stores.

Section 16(3)(a) Ground of Opposition

[29]           The Opponent has also pleaded that the Mark is confusing with its use of the BIONIC trade-mark under section 16 of the Act. The assessment of this ground of opposition differs from that under section 12(1)(d) in that the material date under section 16(3)(a) is December 12, 2005. 

[30]           In order to meets its initial burden under section 16, the Opponent must provide evidence that it was using its BIONIC trade-mark in Canada prior to December 12, 2005 and had not abandoned this mark as of September 27, 2006, the date of advertisement of the subject application (section 16(5) of the Act).  The Opponent has only evidenced use of its trade-mark in association with BIONIC brand golf gloves (see paras 9 and 18 of the Edlin affidavit discussing sales; see Exhibit E, for example the Sports Illustrated advertisements showing the Opponent’s mark on a golf glove).  Given that at the material date there was only limited use of the BIONIC trade-mark in association with golf gloves, I find that on a balance of probabilities there is no likelihood of confusion since I find that consumers would be able to distinguish between BIONIC used in association with golf gloves and X BIONIC for use in association with the Wares based on the small differences between the marks of the parties given the difference in the specific nature of the wares at issue.  Accordingly, this ground of opposition is rejected.

Section 2 Ground of Opposition

[31]           The Opponent alleges that the Mark is not distinctive. There is an evidential burden on the Opponent to establish that, as of February 27, 2007, that its BIONIC trade-mark was known to such an extent that it could negate the distinctiveness of the Mark [Bojangles' International, LLC v Bojangles Café Ltd (2006), 48 CPR (4th) 427 (FC) at para 33].  An attack based on non-distinctiveness is not restricted to the sale of goods in Canada. It may also be based on evidence of knowledge or reputation of the Opponent's trade-mark spread by means of word of mouth and evidence of reputation and public acclaim and knowledge by means of newspaper or magazine articles [Motel 6, Inc v No. 6 Motel Ltd (1981), 56 CPR (2d) 44 (FCTD) at 58-59].  The Opponent’s evidence pre-dating February 2, 2007 discussed with respect to the section 12(1)(d) ground of opposition is sufficient to meet its burden with respect to use of its BIONIC trade-mark in association with golf gloves.  For the reasons set out with respect to the section 16(3)(a) ground of opposition, I find that the Applicant has met its burden of demonstrating there is no reasonable likelihood of confusion and this ground of opposition is rejected.

Disposition

[32]           Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(8) of the Act.

______________________________

Natalie de Paulsen

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office