IN THE MATTER OF AN OPPOSITION by
Pyramid Productions Ltd. to application No. 1,020,373
for the trade-mark SALTER STREET FILMS & Design
filed by Salter Street Films Limited
On June 28, 1999, the applicant, Salter Street Films Limited, filed an application to register the trade-mark SALTER STREET FILMS & Design. The trade-mark is shown below:
The applicant has disclaimed the right to the exclusive use of the word FILMS apart from the trade-mark.
The application was advertised for opposition purposes in the Trade-marks Journal of March 12, 2003. The application, at the time of advertisement, was based upon proposed use in association with the wares listed below, use in Canada since at least as early as 1997 in association with the services listed as (1) below, and use in Canada since at least as early as October 1998 in association with the services listed as (2) below.
|
(1)
Television programs on video tape with video graphic and audio |
|
(1)
Broadcast
television programming, production and distribution of (2)
An Internet service,
namely the provision of on-line entertainment and information services. |
On May 9, 2003, the opponent, Pyramid Productions Ltd., filed a statement of opposition against the application. The applicant filed and served a counter statement, which denied each of the grounds of opposition.
As rule 41 evidence, the opponent filed the affidavit of Larry Day.
The applicant elected to not file any evidence in support of its application. It did however amend its application to delete the following wares and services:
Coffee mugs, drinking glasses
Internet services namely the provision of film and television programs
Internet service, namely the provision of on-line entertainment and information services.
Only the applicant filed a written argument. An oral hearing was not requested.
Grounds of Opposition
The following five grounds of opposition have been pleaded:
1. The application does not comply with the requirements of section 30 of the Trade-marks Act as the application contains a date earlier than that which the applicant has used the trade-mark in association with each of the services described in the application as: broadcast television programming, production and distribution of feature film and television programming, and Internet services namely the provision of film and television programs.
2. The application does not comply with the requirements of section 30 of the Act as the application contains a date earlier than that which the applicant has used the trade-mark in association with each of the services described in the application as: Internet service, namely the provision of on-line entertainment and information service.
3. The trade-mark is not registrable in respect of certain of the wares described in the application, namely: coffee mugs and drinking glasses; in that, contrary to paragraph 12(1)(d) of the Act, the mark is confusing with the trade-mark SALTER registered as number UCA 031825 for, amongst other things, jugs, knives, and kitchen hand tools.
4. Pursuant to paragraph 38(2)(d) of the Act, the trade-mark is not registrable in respect of certain of the wares described in the application, namely: coffee mugs and drinking glasses; in that, the trade-mark is not distinctive, nor is it adapted to distinguish, the coffee mugs and drinking glasses of the applicant from the jugs, knives and kitchen tools of George Salter & Co. Limited, the owner of the registered trade-mark: SALTER registered as number UCA 031825.
5. The trade-mark is not registrable as it is contrary to paragraph 12(1)(a) as being primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years.
Onus
Although the applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act, there is an initial 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, 30 C.P.R. (3d) 293 at 298; Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.)]
Opponent’s Evidence – Day Affidavit
Mr. Day is the opponent’s Executive Vice President. I shall outline those portions of his affidavit that I consider to be noteworthy.
Mr. Day attaches as Exhibit “A” a copy of an examiner’s report dated August 18, 2000 wherein the Examiner raised a request for a disclaimer of the word SALTER on the basis of a phone directory search that allegedly revealed that 500 persons bear this surname in Canada.
As Exhibit “B”, Mr. Day attaches the results of two “Web Archive” searches of two sites that he states he knows are operated by the applicant. He states that these searches show “that the applicant did not provide ‘Internet services namely the provision of on-line entertainment and information services’ since 1997 nor did they provide ‘Internet service, namely the provision of on-line entertainment and information services’ since October, 1998.”
Mr. Day also provides a copy of a registration page for registration No. UCA 031825.
Section 30 Grounds of Opposition
Given that the applicant has deleted all Internet services from its application, these grounds are moot in so far as they relate to such services.
With respect to the services of “broadcast television programming, production and distribution of feature film and television programming”, the opponent has not filed any evidence to meet its initial burden.
For the foregoing reasons, neither the first nor the second ground of opposition succeeds.
Paragraph 12(1)(d) Ground of Opposition
Given that the applicant has deleted the wares with which this ground of opposition is concerned, I dismiss the third ground of opposition.
Distinctiveness Ground of Opposition
This ground is also dismissed since it concerns wares that are no longer the subject of the application. In any event, the opponent’s evidence would not have satisfied its initial burden because it did not evidence that the SALTER trade-mark had become sufficiently known as of May 9, 2003 to negate the distinctiveness of the applied-for mark [see Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 at 58 (F.C.T.D.)].
Paragraph 12(1)(a) Ground of Opposition
This ground of opposition fails because the trade-mark applied for is clearly not primarily merely the surname of an individual, comprising as it does other words and a design feature.
Disposition
Having been delegated by the Registrar of Trade-marks by virtue of subsection 63(3) of the Trade-marks Act, I reject the opposition pursuant to subsection 38(8) of the Act.
DATED AT TORONTO, ONTARIO, THIS 4th DAY OF AUGUST 2005.
Jill W. Bradbury
Member
Trade-marks Opposition Board