IN THE MATTER OF AN OPPOSITION by Gilbey Canada Inc. application No. 615,342 for the trade-mark BLACK VELVET filed by Mascoll Corporation Limited
On September 16, 1988, the applicant, Mascoll Corporation Limited, filed an application to register the trade-mark BLACK VELVET based upon use of the trade-mark in Canada in association with "cosmetics, namely, hairdressings, hair shampoos, hand and body creams" since at least as early as August, 1972.
The opponent, Gilbey Canada Inc., filed a statement of opposition on June 22, 1989 in which it alleged that the applicant's application does not comply with the requirements of Section 30(c) of the Trade-marks Act in that the applicant has not used the trade-mark BLACK VELVET in association with the wares covered in the application since the claimed date of first use (August, 1972). The opponent also alleged that the applicant's application does not comply with the requirements of Section 30(i) of the Act in that the applicant was aware of the opponent's trade-mark BLACK VELVET in respect of distilled alcoholic beverages and could not have been satisfied that it is entitled to registration of the trade-mark BLACK VELVET in Canada in association with the wares covered in the present application. The opponent further alleged that the trade-mark BLACK VELVET is not registrable and not distinctive, and that the applicant is not the person entitled to its registration, in view of the registration and prior use in Canada of the registered trade-marks BLACK VELVET and BLACK VELVET & Design, registration Nos. 148N.S.37955 and 141,626 respectively, both in association with "whisky".
The applicant served and filed a counterstatement in which it asserted that its application complies with Section 30 of the Trade-marks Act and denied the allegations of confusion set forth in the statement of opposition.
The opponent filed as its evidence the affidavit of Andrew Lawrence Stodart while the applicant failed to file either evidence or a statement that it did not intend to adduce evidence in this opposition.
The opponent alone filed a written argument and the opponent alone was represented at an oral hearing.
The determination of the issue of confusion between the applicant's trade-mark BLACK VELVET as applied to "cosmetics, namely, hairdressings, hair shampoos, hand and body creams" and the opponent's registered trade-mark BLACK VELVET as applied to "whisky" will decide the outcome of each of the opponent's grounds of opposition relating to the registrability and distinctiveness of the applicant's trade-mark, as well as the applicant's entitlement to registration of the trade-mark BLACK VELVET in association with the wares covered in the present application.
In determining whether there would be a reasonable likelihood of confusion between the trade-marks at issue, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in Section 6(5) of the Trade-marks Act. Further, the Registrar must bear in mind that the legal burden is on the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks at issue as of the date of decision, the material time in respect of the ground of opposition based on Section 12(1)(d) of the Act (see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, (1991), 37 C.P.R. (3d) 413 and the recent decision of the Opposition Board in Conde Nast Publications, Inc. v. The Canadian Federation of Independent Grocers, (1991), 37 C.P.R. (3d) 538. Additionally, the material date in respect of the non-entitlement and non-distinctiveness grounds of opposition are respectively the applicant's claimed date of first use (August, 1972) and the date of opposition (June 22, 1989).
With respect to subsection 6(5)(a) of the Act, both the applicant's trade-mark BLACK VELVET as applied to cosmetics and the opponent's trade-mark BLACK VELVET as applied to whisky are inherently distinctive.
As for the extent to which the trade-marks at issue have become known, the applicant failed to file any evidence and its trade-mark BLACK VELVET must be considered to have not become known to any extent in Canada to date. The opponent's evidence establishes that there has been extensive use and advertising of its trade-mark BLACK VELVET in Canada in association with whisky, such that the opponent's trade-mark has become relatively well known in this country. Likewise, the length of time that the trade-marks at issue have been in use in this country favours the opponent in that the Stodart affidavit points to use by the opponent of its trade-mark BLACK VELVET in Canada since May of 1951 while the applicant's application claims use of its trade-mark BLACK VELVET in Canada in association with cosmetics since August of 1972.
As the trade-marks at issue are identical, the only remaining criteria for consideration in respect of those which are enumerated in Section 6(5) of the Trade-marks Act are the nature of the wares of the parties and the channels of trade associated with these wares. In this regard, I consider the wares of the parties to differ. However, the opponent submitted that there is a connection between cosmetics and its wares and, in this regard, relied upon the following paragraphs of the Stodart affidavit:
In view of the above, the opponent submitted that consumers would consider BLACK VELVET cosmetics to be an extension of the BLACK VELVET woman image, such that the average Canadian would assume that the opponent has sponsored or endorsed use by the applicant of the trade-mark BLACK VELVET in association with cosmetics.
Having regard to the above, and while I certainly have my doubts as to whether there would be a reasonable likelihood of confusion between the trade-marks at issue, the legal burden is upon the applicant in respect of the issue of confusion. In this regard, the applicant has filed neither evidence nor written argument and failed to attend the oral hearing to make submissions in support of its application. I have concluded, therefore, that the applicant has failed to meet the legal burden upon it in respect of the issue of confusion and have therefore refused its application pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS _29th____ DAY OF ____May_________, 1992.
G.W.Partington,
Chairman,
Trade Marks Opposition Board.