IN THE MATTER OF AN OPPOSITION
by Interwood Marketing Limited to appli-
cation No. 682,618 for the trade-mark
MULTI-7 filed by 133064 Canada Inc.
doing business as Multirox Promotions
On May 22, 1991, the applicant, 133064 Canada Inc. doing business as Multirox Promotions, filed an application to register the trade-mark MULTI-7 based on proposed use in Canada with the following wares:
car care products namely, car waxes, car washes, chrome
cleaners, vinyl cleaners, tire cleaners, deodorizers, wind-
shield sealants, windshield fluid boosters, carpet cleaners,
spot removers; motor degreasers, oil additives, oil treatments;
windshield wipper [sic] blades.
The application was advertised for opposition purposes on December 25, 1991.
The opponent, Interwood Marketing Limited, filed a statement of opposition on April 27, 1992, a copy of which was forwarded to the applicant on May 29, 1992. The first ground of opposition is that the applicant's application does not comply with the provisions of Section 30(i) of the Trade-marks Act because the applicant could not have been satisfied that it was entitled to use its proposed mark in view of the prior use and registration of the opponent's trade-marks DIDISEVEN and DIDISEVEN Design. The second ground is that the application does not comply with the provisions of Section 30(e) of the Act because the applicant did not intend to use its applied for mark in association with the applied for wares.
The third ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Act because it is confusing with (1) the opponent's trade-mark DIDISEVEN registered under No. 355,189 for the following wares:
household cleaning compounds in powder, solid, liquid
and spray forms
and under No. 388,526 for the following wares:
all purpose stain removers for fabric, carpets, upholstery,
plastic, vinyl, ceramics and metal; all purpose cleaning,
bleaching, rust and spot removing agents
and (2) the opponent's trade-mark DIDISEVEN Design registered under No. 385,932 for the following wares:
stain removers; all purpose cleaning, bleaching, rust and
spot removing agents.
The fourth ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(3) of the Act because, as of the applicant's filing date, the applied for trade-mark was confusing with the trade-marks DIDISEVEN and DIDISEVEN Design previously used in Canada by the opponent. The fifth ground is that the applicant is not the person entitled to registration pursuant to Section 16(3) of the Act because the applicant has not filed an application for a trade-mark that is registrable in accordance with Section 30 of the Act.
The sixth ground of opposition is that the applied for trade-mark is not distinctive because it does not actually distinguish the applicant's wares from "...the wares or services or [sic] others...." The seventh ground is that the applied for trade-mark is not distinctive in view of the prior use and registration of the opponent's two marks.
The applicant filed and served a counter statement. As its evidence, the opponent filed a certified copy of its registration No. 388,526. The applicant did not file evidence. Only the applicant filed a written argument and no oral hearing was conducted.
The opponent's first ground does not raise a proper ground of opposition. The mere fact that the opponent may have used and registered its trade-marks does not preclude the applicant from making the statement required by Section 30(i) of the Act. The opponent did not even allege that the applicant was aware of the opponent's marks. Thus, the first ground of opposition is unsuccessful.
The opponent's second ground does not raise a proper ground of opposition because it is not in compliance with Section 38(3)(a) of the Act. The opponent has failed to allege any facts in support of its contention that the applicant did not intend to use its applied for mark.
Even if it had, it failed to file any supporting evidence. Thus, the second ground is also unsuccessful.
As for the fourth ground, there was an evidential burden on the opponent to evidence use of its two trade-marks prior to the applicant's filing date. The opponent has failed to file any evidence on point and the fourth ground is therefore also unsuccessful.
The fifth ground does not raise a proper independent ground of opposition since it is contingent upon a finding that the trade-mark is not registrable. In other words, the success of this ground is dependent on a successful finding respecting the opponent's third ground of opposition based on Section 12(1)(d) of the Act.
The sixth ground does not raise a proper ground of opposition because it is not in compliance with Section 38(3)(a) of the Act. The opponent did not include any supporting allegations of fact and did not specify the "others" referred to. Thus, the seventh ground is also unsuccessful.
As for the seventh ground of opposition, there was an initial burden on the opponent to evidence use of one or both of its trade-marks. Since the opponent failed to evidence any such use, the seventh ground is also unsuccessful.
As for the third ground of opposition, the more relevant of the opponent's trade-marks is DIDISEVEN and thus a consideration of the issue of confusion as between the opponent's two registrations for that mark and the applicant's mark will decide the outcome of the third ground. The material time for considering the circumstances respecting the issue of confusion with a registered trade-mark is the date of my decision: see the decision in Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R.(3d) 538 at 541-542 (T.M.O.B.). Furthermore, the onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Finally, in applying the test for confusion set forth in Section 6(2) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set forth in Section 6(5) of the Act.
The marks of both parties are inherently distinctive, both being coined terms. However, to the extent that both marks include a number or a numeral, they are not inherently strong. There being no evidence of use of either mark, I must conclude that neither has become known at all in Canada. For the same reason, the length of time the marks have been in use is not a material circumstance in the present case.
Most of the wares of the parties are different, the applicant's wares comprising car care products and automotive goods and the opponent's wares consisting of household cleaning compounds and all purpose cleaning and stain removing agents. It would appear that the trades of the parties would also differ in that the applicant's wares would be sold with automotive products and the opponent's wares would be sold with household cleaning products. The applicant's statement of wares does, however, include "spot removers" and the opponent has registered its mark for "all purpose...spot removing agents." Presumably these wares are similar.
As for Section 6(5)(e) of the Act, the marks at issue bear little or no visual similarity. They do bear a degree of phonetic resemblance due to the use of either the word "seven" or the numeral "7." That degree of resemblance is not particularly significant, however, in view of the fact that the latter part of each mark is inherently weak and is the less prominent portion of each mark. Neither mark suggests any particular idea.
The applicant submitted that an additional surrounding circumstance in the present case is the existence of its registration No. 388,300 for the trade-mark MULTI-7 & Design. That registration, however, is not in evidence. Even if it were, its mere existence on the trade-marks register would have no effect on the issue of confusion in the present case.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of the similarity between the wares "spot removers" and "spot removing agents" and the presence of a degree of phonetic resemblance between the two marks at issue, I find that the applicant has failed to satisfy the burden on it to show that its mark is not confusing with the opponent's registered mark in respect of "spot removers." However, in view of the dissimilarities between the remaining wares at issue, the differences between the trades of the parties, the relatively low degree of resemblance between the marks MULTI-7 and DIDISEVEN and the opponent's apparent lack of interest in this proceeding, I find that the marks are otherwise not confusing. The third ground of opposition is therefore successful with respect to "spot removers" but is otherwise unsuccessful.
In view of the above, I refuse the applicant's application in respect of "spot removers" and I otherwise reject the opponent's opposition. Authority for such a divided result may be found in Produits Menagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf GmbH (1986), 10 C.P.R.(3d) 482 at 492 (F.C.T.D.).
DATED AT HULL, QUEBEC, THIS 31st DAY OF January , 1995.
David J. Martin,
Member,
Trade Marks Opposition Board.