IN THE MATTER OF AN OPPOSITION
by Vancouver Organizing Committee for the
2010 Olympic and Paralympic Winter Games to
application No. 1,217,804 for the trade-mark
SPIRIT OF THE GAME filed by William Brownridge
[1] On May 25, 2004, the applicant, William Brownridge, filed an application to register the trade-mark SPIRIT OF THE GAME based on proposed use in Canada for a lengthy list of wares and services. The application was advertised for opposition purposes on December 22, 2004.
[2] The opponent, Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games (“VANOC”) , filed a statement of opposition on August 11, 2005, a copy of which was forwarded to the applicant on October 4, 2005. The first ground of opposition is that the applied for trade-mark is not registrable pursuant to Sections 9(1)(n)(iii) and 12(1)(e) of the Trade-marks Act because it consists of, or so nearly resembles as to be likely to be mistaken for, the opponent’s official marks SPIRIT OF THE GAME and SPIRIT OF THE GAMES for which the Registrar gave public notice of their adoption and use on May 4, 2005.
[3] The second ground of opposition is that the applicant’s application does not conform to the requirements of Section 30(e) of the Act because the applicant did not intend to use the applied for trade-mark in Canada as stated in his application. The third ground is that the applied for trade-mark is not distinctive in view of the opponent’s use of its official marks and the use by others of the same or similar marks. The fourth ground is that the applicant’s application does not conform to the requirements of Section 30(i) of the Act. In this regard, the opponent alleges that the applicant could not have been satisfied that he was entitled to use the applied for mark in view of the advertisement and use of the opponent’s official marks and the use of identical or similar marks by third parties.
[4] The applicant filed and served a counter statement in which he denied the allegations in the statement of opposition. Further, the applicant noted that the filing and advertisement dates for the present application both predate the filing date and publication date for the opponent’s two official marks.
[5] As its evidence, the opponent submitted the affidavits of Dorothy E. Byrne and Deborah K. Day. As his evidence, the applicant submitted the affidavits of William Roy Brownridge and Gary Maker. Neither party filed a written argument and neither party requested an oral hearing.
The Opponent’s Evidence
[6] In her affidavit, Ms. Byrne identifies herself as the Vice President and Corporate Secretary of the opponent VANOC. She details the history of the opponent which is the body responsible for planning, organizing and hosting the upcoming 2010 Olympic Winter Games and Paralympic Games. Appended as Exhibit 5 to the affidavit is a “memorandum” filed with the Trade-marks Office by the opponent in support of its many official mark requests in order to establish its status as a public authority. Ms. Byrne states that the two official marks relied
on in this opposition have been used by the opponent although she did not provide any information or documentation to support that statement.
[7] Ms. Day’s affidavit summarizes the results of an Internet search she conducted using the Google search engine to locate uses of the phrase “spirit of the game.” She was able to locate a few sites which included those words. Included in her results are copies of pages from what appears to be the applicant’s web site.
The Applicant’s Evidence
[8] The applicant submitted his own affidavit detailing his career as an artist and an author. Much of his work has a hockey-related theme. He states that he started using the tag line “Celebrating the Spirit of the Game” in 2001 and created his web site in 2002. In April of 2004, he created a partnership with Gary Makar and Todd Trifaux to promote his art works and books. Together they developed a sponsorship campaign using the “Spirit of the Game” concept and began marketing the applied for wares and services. Exhibit F to his affidavit is a photocopy of the cover page of a marketing presentation that the partnership made which includes the trading style Spirit of the Game. That same trading style appears on the sample greeting card appended as Exhibit H to the Brownridge affidavit and presumably also refers to the partnership.
[9] In his affidavit, Mr. Makar identifies himself as one of the applicant’s partners. He details the history of the partnership including the work by him and Mr. Trifaux to develop a marketing concept for Mr. Brownridge’s work and their decision to use the tag line “Spirit of the Game.”
The Grounds Of Opposition
[10] The material time for considering the circumstances respecting the first ground of opposition is the date of my decision: see the decisions in Allied Corporation v. Canadian Olympic Association (1989), 28 C.P.R.(3d) 161 (F.C.A.) and Olympus Optical Company Limited v. Canadian Olympic Association (1991), 38 C.P.R.(3d) 1 (F.C.A.). Furthermore, the opponent is not required to evidence use and adoption of the official marks being relied on, at least not in the absence of evidence suggesting that the marks were not used: see page 166 of the Allied decision. Finally, if the applicant is able to cast doubt as to whether or not an official mark owner qualifies as a public authority, the opponent may be required to evidence that status before relying on any such official mark: see page 216 of the trial level decision in Big Sisters Association of Ontario v. Big Brothers of Canada (1999), 86 C.P.R.(3d) 504 (F.C.A.); affg. (1997), 75 C.P.R.(3d) 177 (F.C.T.D.) and Heritage Canada Foundation v. New England Business Service, Inc. (1997), 78 C.P.R.(3d) 531 at 536 and 538 (T.M.O.B.).
[11] As stated in Section 9(1)(n)(iii) of the Act, the test to be applied is whether or not the applicant's mark consists of, or so nearly resembles as to be likely to be mistaken for, the official mark. In other words, is the applicant's mark identical to, or almost the same as, the official mark?: see page 217 of the trial level decision in the Big Sisters case noted above. It has been contended that the words “consists of” are not equivalent to “identical to” but Mr. Justice O’Keefe held otherwise in Canadian Council of Professional Engineers v. APA - The Engineered Wood Association (2000), 7 C.P.R.(4th) 239 (F.C.T.D.) at page 259 as follows:
Having outlined the protection official marks enjoy, based on the provisions of the Act, it must be determined what the scope of prohibited marks is: The meaning of "consists of" most specifically. As a result of the foregoing, which clearly shows the privileged position official marks enjoy, I reject the interpretation of subparagraph 9(1)(n)(iii) proffered by the appellant and declare that the interpretation advanced by the Registrar is correct. In order to offend subparagraph 9(1)(n)(iii) so as to be unregistrable under paragraph 12(1)(e), the proposed mark must either be identical to the official mark or so nearly resemble it so as to be likely to be mistaken for it. The words "consists of" in the subsection of the Act are to be interpreted to mean "identical to" as was apparently held by the Registrar.
[12] At pages 218-219 of the trial level decision in the Big Sisters case, Mr. Justice Gibson confirmed that in assessing the resemblance between the marks at issue, regard may be had to the factors set out in Section 6(5)(e) of the Act. Further, at page 218, Mr. Justice Gibson indicated that the test was to be applied as a matter of first impression and imperfect recollection: see also pages 302-303 of the decision of the Federal Court of Appeal in Canadian Olympic Association v. Techniquip Limited (1999), 3 C.P.R.(4th) 298. Finally, the opponent can rely on a family of official marks if it evidences use of the family members: see pages 303-304 of the Techniquip decision.
[13] In the present case, the applicant has not presented any evidence tending to cast doubt on any aspect of the publications of the opponent’s official marks. Furthermore, the applicant’s trade-mark is identical to one of the opponent’s official marks and is almost the same as the other one. Thus, the applicant’s mark offends the provisions of Sections 9(1)(n)(iii) and 12(1)(e) of the Act and the first ground is therefore successful.
[14] Without the benefit of oral or written argument from either party, it is difficult to determine what position each party is taking. However, from a review of the applicant’s counter statement, it appears that he may have wanted to argue that the opponent should not be allowed to rely on an official mark that was not even applied for until after the applicant’s mark was advertised. Although I have sympathy for that position, the Federal Court of Appeal has made it clear that such a situation is not to be treated differently. As stated at page 166 of the Federal Court of Appeal decision in the Allied case noted above:
In sum, the formulas of the adoption and registration provisions are not parallel. Whatever rights to the use of a mark may flow from its adoption are undisturbed by the subsequent adoption and use of a confusingly similar official mark; the right to register the mark is, however, prohibited from the time of the giving of the public notice.
[15] The recent decision in See You In - Canadian Athletes Fund Corporation v. Canadian Olympic Association (2008), 65 C.P.R.(4th) 421 (F.C.A.) makes it clear that during the initial examination of a request to publish an official mark, the applicant must now establish that its official mark has been adopted and used. Given that the See You In case was not rendered until April 8, 2008, it may well be that the Examination Section of the Trade-marks Office did not require the opponent to evidence adoption and use of its two official marks prior to their publication on May 4, 2005. If such was the case and the applicant was of the view that the opponent had not timely adopted and used its official marks, he should have submitted evidence on point in this opposition. Alternatively, he could have filed an application for judicial review with the Federal Court seeking to set aside the publications of the opponent’s two official marks: see FileNET Corp. v. Registrar of Trade-marks (2002) 22 C.P.R.(4th) 328 at 330 (F.C.A.). In the present case, it appears that the applicant has done neither.
[16] As for the second ground of opposition, the material time for assessing the applicant's conformance with the requirements of Sections 30(e) of the Act is the filing date of his application. Furthermore, the onus or legal burden is on the applicant to show his conformance with that subsection: see the opposition decisions in Joseph Seagram & Sons v. Seagram Real Estate (1984), 3 C.P.R.(3d) 325 at 329-330 and Canadian National Railway Co. v. Schwauss (1991), 35 C.P.R.(3d) 90 at 94 and the decision in John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R.(3d) 293 (F.C.T.D.). There is, however, an evidential burden on the opponent respecting its allegations of fact in support of this ground although it is a lighter burden than in the ordinary case: see page 95 of the Schwauss decision and the opposition decision in Green Spot Co. v. J.B. Food Industries (1986), 13 C.P.R.(3d) 206 at 210-211.
[17] In the present case, the applicant’s own evidence suggests that the intention from the outset was that the applied for trade-mark SPIRIT OF THE GAME was to be used by the partnership rather than just by Mr. Brownridge. Both Mr. Brownridge and Mr. Makar speak in the first person plural when discussing plans for, and the use of, the applied for mark. Thus, the evidence casts some doubt on the applicant’s stated intention in the application to use the mark only by himself and the applicant’s evidence of record does not clarify that discrepancy. The second ground of opposition is therefore also successful.
[18] As for the third ground of opposition, the onus or legal burden is on the applicant to show that his mark is adapted to distinguish or actually distinguishes his wares and services from those of others throughout Canada: see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (T.M.O.B.). Furthermore, the material time for considering the circumstances respecting this issue is as of the filing of the opposition (i.e. - August 11, 2005): see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporatio v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.). Finally, there is an evidential burden on the opponent to prove the allegations of fact in support of its ground of non-distinctiveness.
[19] Apart from a bare allegation in the Byrne affidavit that the opponent’s two official marks have been used, there is no evidence to show use of those marks or the extent, if any, of such use. Further, although the Day affidavit evidences a handful of references to the phrase “Spirit of the Game” on a couple of web sites, there is no evidence of any reputation of note for those uses. Furthermore, the references were located after the material time. Thus, the opponent has failed to satisfy its evidential burden and the third ground is unsuccessful.
[20] The opponent's fourth ground does not raise a proper ground of opposition. The mere fact that the opponent’s official marks were used and advertised and that unidentified third parties have used the same or similar marks does not preclude the applicant from making the statement required by Section 30(i) of the Act. In any event, the opponent did not even allege that the applicant was aware of the opponent's marks or any relevant third party marks. In the case of the opponent’s marks, it appears that the applicant could not have been aware of those marks as of his filing date since the opponent did not file its requests for publication with the Registrar until after the applicant’s advertisement date. Thus, the fourth ground is unsuccessful.
[21] In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I refuse the applicant’s application.
DATED AT GATINEAU, QUEBEC, THIS 10th DAY OF JUNE, 2009.
David J. Martin,
Member,
Trade Marks Opposition Board.