IN THE MATTER OF AN OPPOSITION by The Governor and Company of Adventurers of England trading into Hudson's Bay, commonly called Hudson's Bay Company to application No. 777,369 for the trade-mark CDN SPIRIT filed by Duvet Comfort Inc.
On March 8, 1995, the applicant, Duvet Comfort Inc., filed an application to register the trade-mark CDN SPIRIT based on use of the trade-mark in Canada since as early as May 1, 1994 in association with “Ski‑wear, namely: ski jackets and ski pants”, as well as being based upon proposed use of the trade-mark in Canada in association with:
“Sportswear and outerwear, namely: scarves, gloves, mittens, muffs, ear muffs, raincoats, rainjackets, rainpants, belts, suspenders, hosiery, bags, back packs, belt packs, totes, tags, hats, caps and visors, tops, jogging suits, short sets, rompers, swimsuits, pants, overalls, dresses, shorts, vests, blazers, jump suits, leggings, skirts, bodysuits, T‑shirts, cropped tops, tank tops, hooded tops, shirts, polo shirts, reversible tops, sweaters, silk‑screened T‑shirts, sweatshirts, tops, bottoms and two‑piece sets, baseball caps, painter caps, visor caps, flop hats, tulip hats, coats, wind resistant jackets, tote bags, swimwear, bathing‑suit cover ups, ties, tags, ponchos; cycling and roller blading apparel, namely: jackets, pants and tops; golf wear, namely: raincoats, rain jackets, rain hats, rain pants and rain ponchos.”
The applicant has disclaimed the right to the exclusive use of the word CDN apart from its trade-mark.
The present application was advertised for opposition purposes in the Trade-marks Journal of December 4, 1996 and the opponent, The Governor and Company of Adventurers of England trading into Hudson's Bay, commonly called Hudson's Bay Company, filed a statement of opposition on January 27, 1997, a copy of which was forwarded to the applicant on February 6, 1997. The applicant responded by filing and serving a counter statement on March 4, 1997. The opponent submitted as its evidence the affidavits of Randall Castell, Suzanne LaRose, Joan Rataic-Lang and Kate Henderson, together with certified copies of registration Nos. 450,999, 348,859, 463,189, 450,873 and 450,874. The applicant filed as its evidence the affidavits of Johnny Woon Chung Yiu and Linda Victoria Thibeault. Both parties submitted written arguments and neither party requested an oral hearing.
The following are the grounds of opposition asserted by the opponent in its statement of opposition:
a) The present application is contrary to Subsection 30(i) of the Trade-marks Act in that the applicant could not have stated that it was entitled to use the trade-mark CDN SPIRIT in Canada in association with its wares in view of the prior use and registration of the trade-marks NORTHERN SPIRIT, NORTHERN SPIRIT WEAR and NORTHERN SPIRIT WEAR & Design in association with a wide variety of clothing, and in view of the prior use by the opponent of the trade-marks NORTHERN SPIRIT & Design, NORTHERN SPIRIT ACTIVE and NORTHERN SPIRIT ACTIVE & Design, as described in the following grounds of opposition;
b) The applicant’s trade-mark is not registrable in view of Paragraph 12(1)(d) of the Trade-marks Act in that the trade-mark CDN SPIRIT is confusing with the following registered trade-marks
Trade-mark Registration No. Wares
NORTHERN SPIRIT 348,859 Men's apparel and accessories, namely: coats, jackets, trousers, shorts, shirts, T‑shirts, sweatshirts, sweatpants, sweatsuits, sweaters, and ladies' apparel and accessories, namely: coats, jackets, pants, skirts, shorts, blouses, shirts, T‑shirts, jumpsuits, sweatshirts, sweatpants, sweatsuits, vests, sweaters, casual tops and casual bottoms. Men's apparel and accessories, namely: socks, underwear, nightshirts, bath robes and pyjamas. Children's apparel and accessories, namely: coats, jackets, snowsuits, splash suits, vests, pants, skirts, shorts, shirts, T‑shirts, jumpsuits, sweatsuits, sweatpants, sweaters, casual tops and casual bottoms. Men's and ladies' footwear, namely: shoes, boots and hiking boots.
NORTHERN SPIRIT WEAR 450,873 Men's apparel, namely: jackets, vests, pants, shorts, shirts, T‑shirts, sweatshirts, sweatpants, sweatsuits and sweaters. Men's apparel, namely: underwear, nightshirts, bath robes and pyjamas. Socks.
NORTHERN SPIRIT WEAR 450,874 Men's apparel, namely: jackets, vests, pants,
& Design shorts, shirts, T‑shirts, sweatshirts, sweatpants, sweatsuits and sweaters. Men's apparel, namely: underwear, nightshirts, bath robes and pyjamas. Socks.
c) The applicant is not the person entitled to registration of the trade-mark CDN SPIRIT in view of Paragraph 16(3)(a) of the Trade-marks Act in that, as of the filing date of the present application, the applicant’s mark was confusing with the opponent’s trade-marks described in the second ground which had been previously used in Canada in association with the wares identified above, as well as being confusing with the following trade-marks previously used by the opponent in Canada:
Trade-mark Regn. No./Appln. No. Wares
NORTHERN SPIRIT 463,189 Men's apparel and accessories, namely: & Design coats, jackets, trousers, shorts, shirts, T‑shirts, sweatshirts, sweatpants, sweatsuits, sweaters, and ladies' apparel and accessories, namely: coats, jackets, pants, shorts, blouses, shirts, T‑shirts, sweatshirts, sweatpants, sweatsuits, vests and sweaters. Men's apparel and accessories, namely: socks, underwear, nightshirts, bath robes and pyjamas; men's and ladies' footwear, namely: shoes, boots and hickers. Children's apparel and accessories, namely: coats, jackets, snowsuits, splash suits, vests, pants, skirts, shorts, shirts, T‑shirts, jumpsuits, sweatsuits, sweatpants and sweaters. Men's and ladies' footwear, namely: shoes, boots and hikers.
NORTHERN SPIRIT ACTIVE 767,065 Ladies' apparel, namely: jackets, vests, pants, skirts, shorts, shirts, T‑shirts, sweatshirts, sweatpants, sweatsuits, sweaters, casual tops, casual bottoms, jog suits and hats.
NORTHERN SPIRIT ACTIVE 767,066 Ladies' apparel, namely: jackets, vests, & Design pants, skirts, shorts, shirts, T‑shirts, sweatshirts, sweatpants, sweatsuits, sweaters, casual tops, casual bottoms, jog suits and hats.
NORTHERN SPIRIT HOME 815,143 Tie racks, belt racks, pant hangers, sock boxes, sweater boxes, shoe shine kit boxes, shoe trees and cedar moth balls.
NORTHERN SPIRIT 815,139 Shaving kit bags, shower kit bags, cell TRAVELLER phone holders, fanny packs, diskette holders, CD holders, travel organizers, travel beverage mugs, pocket knives and travel alarm clocks.
d) The applicant is not the person entitled to registration of the trade-mark CDN SPIRIT in view of Paragraph 16(1)(a) of the Trade-marks Act in that, as of the claimed date of first use, the applicant’s mark was confusing with the opponent’s trade-marks identified in the second ground which had been previously used in Canada in association with the wares identified in that ground, as well as being confusing with the following trade-marks previously used by the opponent in Canada:
Trade-mark Application. No. Wares
NORTHERN SPIRIT ACTIVE 767,065 Ladies' apparel, namely: jackets, vests, pants, skirts, shorts, shirts, T‑shirts, sweatshirts, sweatpants, sweatsuits, sweaters, casual tops, casual bottoms, jog suits and hats.
NORTHERN SPIRIT ACTIVE 767,066 Ladies' apparel, namely: jackets, vests, & Design pants, skirts, shorts, shirts, T‑shirts, sweatshirts, sweatpants, sweatsuits, sweaters, casual tops, casual bottoms, jog suits and hats.
e) The applicant is not the person entitled to registration of the trade-mark CDN SPIRIT in view of Paragraph 16(3)(b) of the Trade-marks Act in that, as of the filing date of the present application, the applicant’s mark was confusing with the opponent’s trade-marks for which an application had been previously filed in Canada by the opponent, in association with the wares set out below:
Trade-mark Regn. No./Appln. No. Wares
NORTHERN SPIRIT 463,189 Men's apparel and accessories, namely: & Design coats, jackets, trousers, shorts, shirts, T‑shirts, sweatshirts, sweatpants, sweatsuits, sweaters, and ladies' apparel and accessories, namely: coats, jackets, pants, shorts, blouses, shirts, T‑shirts, sweatshirts, sweatpants, sweatsuits, vests and sweaters. Men's apparel and accessories, namely: socks, underwear, nightshirts, bath robes and pyjamas; men's and ladies' footwear, namely: shoes, boots and hickers. Children's apparel and accessories, namely: coats, jackets, snowsuits, splash suits, vests, pants, skirts, shorts, shirts, T‑shirts, jumpsuits, sweatsuits, sweatpants and sweaters. Men's and ladies' footwear, namely: shoes, boots and hikers.
NORTHERN SPIRIT ACTIVE 767,065 Ladies' apparel, namely: jackets, vests, pants, skirts, shorts, shirts, T‑shirts, sweatshirts, sweatpants, sweatsuits, sweaters, casual tops, casual bottoms, jog suits and hats.
NORTHERN SPIRIT ACTIVE 767,066 Ladies' apparel, namely: jackets, vests, & Design pants, skirts, shorts, shirts, T‑shirts, sweatshirts, sweatpants, sweatsuits, sweaters, casual tops, casual bottoms, jog suits and hats.
NORTHERN SPIRIT HOME 815,143 Tie racks, belt racks, pant hangers, sock boxes, sweater boxes, shoe shine kit boxes, shoe trees and cedar moth balls.
NORTHERN SPIRIT TRAVELLER 815,139 Shaving kit bags, shower kit bags, cell phone holders, fanny packs, diskette holders, CD holders, travel organizers, travel beverage mugs, pocket knives and travel alarm clocks.
f) The applicant’s trade-mark is not distinctive in that the trade-mark CDN SPIRIT does not actually distinguish the wares in association with which it is allegedly used and proposed to be used by the applicant from the wares of others, including the wares of the opponent, nor is the applicant’s mark adapted so as to distinguish the applicant’s wares.
The first ground is based on Subsection 30(i) of the Trade-marks Act, the opponent alleging that the applicant could not have stated that it was entitled to use the trade-mark CDN SPIRIT in Canada in association with its wares in view of the prior use and registration of the trade-marks NORTHERN SPIRIT, NORTHERN SPIRIT WEAR and NORTHERN SPIRIT WEAR & Design in association with a wide variety of clothing, and in view of the opponent’s prior use of the trade-marks NORTHERN SPIRIT & Design, NORTHERN SPIRIT ACTIVE and NORTHERN SPIRIT ACTIVE & Design. No evidence has been furnished by the opponent to show that the applicant could not have been satisfied that it was entitled to use the trade-mark CDN SPIRIT in Canada. Moreover, to the extent that the Subsection 30(i) issue is founded upon allegations set forth in the remaining grounds of opposition, the success of the Subsection 30(i) ground is contingent upon a finding that the applicant’s trade-mark CDN SPIRIT is not registrable or not distinctive, or that the applicant is not the person entitled to its registration, as alleged in those grounds [see Consumer Distributing Co. Ltd. v. Toy World Ltd., 30 C.P.R. (3d) 191, at p. 195; and Sapodilla Co. Ltd. v. Bristol-Myers Co., 15 C.P.R. (2d) 152, at p. 155]. I will therefore consider the remaining grounds of opposition.
As its second ground, the opponent has asserted that the trade-mark CDN SPIRIT is not registrable in view of Paragraph 12(1)(d) of the Trade-marks Act in that it is confusing with the registered trade-marks NORTHERN SPIRIT, registration No. 348,859, NORTHERN SPIRIT WEAR, registration No. 450,873 and NORTHERN SPIRIT WEAR & Design, registration No. 450,8734. In assessing whether there would be a reasonable likelihood of confusion between the applicant’s trade-marks CDN SPIRIT and the opponent’s registered trade-marks within the scope of Subsection 6(2) of the Trade-marks Act, the Registrar must have regard to all the surrounding circumstances including, but not limited to, those which are specifically enumerated in Subsection 6(5) of the Act. Further, the Registrar must bear in mind that the legal burden is upon the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks at issue as of the date of my decision, the material date in relation to the Paragraph 12(1)(d) ground [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37 C.P.R. (3d) 413 (F.C.A.)].
Considering initially the inherent distinctiveness of the trade-marks at issue [Para. 6(5)(a)] and the extent to which the marks have become known [Para. 6(5)(a)], the applicant’s trade-mark CDN SPIRIT is inherently distinctive when considered in its entirety even though the element CDN has been disclaimed by the applicant apart from its trade-mark. In this regard, the applicant’s disclaimer of the element CDN apart from its trade-mark is arguably an admission by the applicant that the element CDN is not distinctive in relation to its wares [see Andres Wines Ltd. v. Les Vins La Salle Inc., 3 C.P.R. (3d) 272, at p. 275]. In any event, the element CDN would in my view be perceived by the average consumer as an abbreviation of the word “CANADIAN” which, in turn, indicates that Canada is the place of origin of the applicant’s wares. Indeed, in exhibits “D”, “F”, “G”, “N”, “O” and “P” to the Yiu affidavit, reference is made to Canadian Spirit and, more specifically, in exhibits “F” and “G”, the following appears: “CANADIAN SPIRIT REPRESENTS CANADIAN QUALITY” or “Canadian Spirit represents Canadian quality.”
In his affidavit, Johnny Woon Chung Yiu, President of the applicant, has provided the approximate annual revenues in respect of sales by the applicant of its wares in association with its trade-mark CDN SPIRIT from 1995 to 1998 inclusive, the total during this time being $4,500,000 while the advertising expenditures since 1995 have been approximately $450,000. Mr. Yiu has provided details of the advertising and promotional activities carried on by the applicant in association with its mark. From the applicant’s evidence, I have concluded that the trade-mark CDN SPIRIT has become known in Canada in association with ski and golf clothing and outer garments.
The opponent’s registered trade-mark NORTHERN SPIRIT, NORTHERN SPIRIT WEAR and NORTHERN SPIRIT WEAR & Design are also inherently distinctive when considered in its entireties and, having regard to the Castell affidavit, it is apparent that the opponent’s trade-mark NORTHERN SPIRIT has become known to a greater extent in Canada than has the applicant’s mark. Further, the Castell affidavit establishes that the mark NORTHERN SPIRIT is a private label brand of the opponent for its men’s and women’s clothing generally, as well as footwear. Mr. Castell states that the approximate sales by the opponent of clothing under all of the NORTHERN SPIRIT trade-marks were $62,000,000 in 1995 and $77,000,000 in 1996. While Mr. Castell does not provide a breakdown of sales amongst the various NORTHERN SPIRIT trade-marks used by the opponent, the words NORTHERN SPIRIT are the dominant element of all of the opponent’s marks and therefore sales of the opponent’s wares in association with those marks impact on the reputation associated with its trade-mark NORTHERN SPIRIT.
In view of the above, the extent to which the trade-marks at issue have become known clearly favours the opponent. Likewise, the length of time the trade-marks CDN SPIRIT and NORTHERN SPIRIT have been in use [Para. 6(5)(b)] is a further surrounding circumstance which weighs in the opponent’s favour, the opponent having used its trade-mark NORTHERN SPIRIT in Canada since 1986 whereas the applicant commenced use of its mark in May of 1994.
As for the nature of the wares of the parties [Para. 6(5)(c)] and the nature of the trade associated with those wares [Para. 6(5)(d)], there is clearly an overlap in the sportswear and outerwear covered in the present application and the wearing apparel and accessories covered in the opponent’s registration. Mr. Yiu states in his affidavit that the applicant’s wares are offered to the public through retail stores such as Sporting Life, Powder Ridge, Big Mountain, Tilley Edurables, Glenn Abbey Pro Shop and Blue Springs Pro Shop while the opponent’s clothing is only offered for sale through its own retail outlets. However, there are no limitations in either the applicant’s statement of wares or the statement of wares covered in the opponent’s registrations which limit the channels of trade associated with their respective wares of the parties. Further, there is no ambiguity as to the wares covered in the opponent’s registrations or in the applicant’s application. As a result, I find that the wares of both parties could potentially travel through the same channels of trade.
With respect to the degree of resemblance between the trade-marks at issue, there is a limited degree of similarity in sounding and even less similarity in appearance between the applicant’s trade-mark CDN SPIRIT and the opponent’s registered trade-marks NORTHERN SPIRIT, NORTHERN SPIRIT WEAR and NORTHERN SPIRIT WEAR & Design when these marks are considered in their entireties as a matter of immediate impression and imperfect recollection. Further, to the extent that some consumers might associate the word NORTHERN with CDN or “Canadian”, there is a minor degree of similarity in the ideas suggested by these marks.
As a further surrounding circumstance in assessing the likelihood of confusion between the trade-marks at issue, the applicant relied upon the state of the register evidence submitted by way of the affidavit of Linda Victoria Thibeault. Ms. Thibeault has annexed to her affidavit the results of the search which she conducted to locate all registered trade-marks indexed under the word SPIRIT in connection with wearing apparel, excluding the registrations of the opponent. Also annexed to Ms. Thibeault’s affidavit are copies of the registrations identified in the search sheets. I would note that state of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace [see Ports International Ltd. v. Dunlop Ltd., 41 C.P.R.(3d) 432 (TMOB); and Del Monte Corporation v. Welch Foods Inc., 44 C.P.R.(3d) 205 (F.C.T.D.)]. Further, the decision of the Federal Court of Appeal in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd., 43 C.P.R.(3d) 349 (F.C.A.) supports the proposition that inferences about the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located.
In the present case, the state of the register evidence reveals the existence of thirty relevant third party registrations covering clothing which include the word SPIRIT, including the following registered trade-marks: SPIRIT; ACTIVE SPIRIT & Design; ACTIVE SPIRIT; CLASSIC SPIRIT; DRIVING SPIRIT; INSPIRIT & Design; NEW SPIRIT; ‘E.Z. SPIRIT’; GEO SPIRIT & Design; SPIRIT RIVER; PRO SPIRIT & Design; EARTH SPIRIT; SPIRIT OF THE GAMES; EASY SPIRIT & Design; FOX SPIRIT; FREE SPIRIT; MUSTANG SPIRIT JEANS & Design; WESTCOAST SPIRIT; TRUE SPIRIT; SPIRIT WATER; SPIRIT OF ST. LOUIS & Design; TEAM SPIRIT; ROUGH SPIRIT; SPIRIT OF ‘76; SPIRIT BOOTLEGGER & Design; NEW SPIRIT; SPIRIT MAKERS; THE KNIT RITE SPIRIT & Design; THE SPIRIT OF MUSKOKA RECAPTURED; and THE CASUAL SPIRIT & Design. As well, there are about a dozen additional third party registrations for trade-marks as applied to clothing which are somewhat less relevant than those noted above but which include the word SPIRIT as an element of the trade-mark. Given the number of third party registrations disclosed by the search, I am prepared to assume that at least some of these marks are in active use in the marketplace in Canada and that consumers would therefore have been accustomed to seeing trade-marks which incorporate the word SPIRIT as applied to clothing.
Considering that consumers are accustomed to seeing trade-marks which include the word SPIRIT as applied to clothing and would therefore readily distinguish among such trade-marks on the basis of other components of these marks, and since there is but a limited degree of resemblance between the trade-marks at issue, and even bearing in mind the reputation acquired by the opponent’s trade-mark NORTHERN SPIRIT and the fact that the wares and channels of trade of the parties overlap, I find that the applicant has met the legal burden upon it in that there would be no reasonable likelihood of confusion between its trade-mark CDN SPIRIT and the opponent’s registered trade-marks NORTHERN SPIRIT, NORTHERN SPIRIT WEAR and NORTHERN SPIRIT WEAR & Design. I have therefore rejected the Paragraph 12(1)(d) ground of opposition.
Considering next the non-entitlement ground, I am satisfied that the opponent has met the burden upon it under Subsections 16(5) and 17(1) of the Trade-marks Act of establishing its prior use and non-abandonment of the trade-mark NORTHERN SPIRIT in Canada in association with clothing. Thus, the legal burden is upon the applicant to establish that there would be no reasonable likelihood of confusion between its trade-mark CDN SPIRIT and the opponent’s trade-mark NORTHERN SPIRIT as of the applicant’s filing date and its claimed date of first use, the material dates for assessing this ground. Having regard to my previous comments concerning the surrounding circumstances in assessing the likelihood of confusion in relation to the Paragraph 12(1)(d) ground and, while there were seven fewer third party registrations in existence as of the applicant’s priority dates, there were still twenty-three relevant third party registrations then in existence and consumers would therefore still have been accustomed to seeing trade-marks which incorporate the word SPIRIT as applied to clothing and would readily distinguish among such trade-marks. I find therefore that the Section 16 ground of opposition is also unsuccessful in relation to the opponent’s prior use of the trade-mark NORTHERN SPIRIT and have therefore dismissed this ground of opposition.
As the most relevant of the opponent’s grounds of opposition have been rejected, I am satisfied that the remaining grounds of opposition are also unsuccessful. As a result, and having been delegated by the Registrar of Trade-marks by virtue of Subsection 63(3) of the Trade-marks Act, I reject the opponent’s opposition pursuant to Subsection 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 30th DAY OF NOVEMBER, 1999.
G.W.Partington,
Chairperson,
Trade-marks Opposition Board.