IN THE MATTER OF AN OPPOSITION by Anheuser-Busch, Incorporated to Application No. 1179024 for the trade-mark AIR BUD filed by Kevin G. Di Cicco trading as Air Bud Productions_______________________________
I The Pleadings
[1] On June 3, 2003, Kevin G. Di Cicco trading as Air Bud Productions (the “Applicant”) filed an application to register the trade-mark AIR BUD, application number 1179024, in association with:
Clothing, namely t-shirts, sweat shirts, hats.; games namely a board game, toys namely plush toys and squeaky toys; sports equipment namely baseballs, basketballs, footballs, soccer balls, volleyballs, hockey pucks, hockey sticks; dog food; pre-recorded video games on DVD’s; paper articles namely children’s books, comic books, how to books (the “Wares”); and entertainment services namely producing motion pictures and television shows (the “Services”).
[2] The application is based on use in Canada since February 29, 1992 and was advertised on May 12, 2004 in the Trade-marks Journal for opposition purposes.
[3] Anheuser-Busch Incorporated (the “Opponent”) filed on October 12, 2004 a statement of opposition that was forwarded by the Registrar to the Applicant on October 26, 2004. The Applicant denied all grounds of opposition in a counter statement filed on November 15, 2004.
[4] The Opponent filed as its evidence the affidavits of John Hanichak and Meghan Dillon while the Applicant filed the affidavit of Kevin Di Cicco. The Registrar issued on August 2, 2005 an order for the cross-examination of John Hanichak and Meghan Dillon. The Opponent requested leave to substitute the affidavit of Nick Gatehouse for the affidavit of John Hanichak and permission was granted. Mr. Gatehouse was cross-examined but not Ms. Dillon. An order for the cross-examination of Mr. Di Cicco was also issued but the Opponent did not proceed with his cross-examination. The transcript of the cross-examination of Mr. Gatehouse and the replies to the undertakings form part of the record.
[5] Both parties filed written arguments and no oral hearing was held.
II The grounds of opposition
[6] The grounds of opposition pleaded are:
1. The application does not comply with the requirements of s. 30(i) of the Trade-Marks Act R.S.C. 1985, c. T-13, (the «Act»), in that the Applicant could not have been satisfied that it was entitled to use the Mark in view of the notoriety and extensive use and promotion of the Opponent’s family of BUD marks, including those listed hereinafter;
2. The application does not comply with s. 30(b) of the Act in that the Applicant has not used the Mark in Canada in respect of each of the Wares and Services from the date claimed;
3. The Mark is not registrable pursuant to the provisions of s. 38(2)(b) and 12(1)(d) of the Act in that the Mark is confusing with the Opponent’s registered trade-marks listed hereinafter which cover beer and/or a wide range of merchandising items and associated services, including clothing, headwear, coolers, bags, drinking vessels, folding seats, umbrellas, pins, posters, bottle openers, key chains and towels:
BUB TMA157723
BUD TMA174608
THIS BUD’S FOR YOU TMA261007
Y’A RIEN QU’UNE BUD TMA312132
BUD LIGHT TMA377887
BUD LIGHT & DESIGN TMA435223
BUD LIGHT & DESIGN TMA434585
BUD LIGHT TMA434860
BUD TMA429251
THIS BUD’S FOR YOU TMA435446
BUD & DESIGN TMA494209
BUD MAN TMA433303
MAKE IT A BUD LIGHT TMA523120
BUD LIGHT & DESIGN TMA551072
4. The Applicant is not the person entitled to registration of the Mark pursuant to the provisions of s. 38(2)(c) and 16(1)(a) of the Act because it is confusing with Opponent’s BUD trade-mark and its family of related BUD marks which had been previously used and/or made known in Canada by the Opponent in association with beer and/or a wide range of merchandising items and associated services, including clothing, headwear, coolers, bags, drinking vessels, folding seats, umbrellas, pins, posters, bottle openers, key chains, towels and the sponsorship of sporting events;
5. Pursuant to s. 38(2)(d) and s. 2 of the Act, the Applicant’s Mark is not distinctive because it does not distinguish and is not adapted to distinguish the Applicant’s Wares and Services from the Opponent’s wares and services due to the Opponent’s registration, and extensive use of its family of BUD trade-marks referred to above.
III Burden of Proof in Trade-marks Opposition Procedure
[7] The legal onus is upon the Applicant to show that its application complies with the provisions of the Act, but there is however an initial evidential 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. Once this initial burden is met, the Applicant has to prove, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark [see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330; John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R. (3d) 293 and Wrangler Apparel Corp. v. The Timberland Company, [2005] F.C. 722].
IV Relevant dates
[8] The relevant dates for the analysis of the grounds of opposition are:
➢ Registrability of the Mark under s. 12(1)(d) of the Act: the date of the Registrar’s decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at 424 (F.C.A)];
➢ Distinctiveness of the Mark: the filing date of the statement of opposition is generally accepted as the relevant date (October 12, 2004) [see Andres Wines Ltd. and E & J Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.) and Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)];
➢ Entitlement to the registration of the Mark where the application is based on use: the date of first use (February 29, 1992) [see s. 16(1) of the Act];
➢ Compliance with the requirements of s. 30(b) and (i) of the Act: the filing date of the application (June 3, 2003) [See John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R. (3d) 293 and Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R. (3d) 469].
V Compliance with the requirements of s. 30(i)
[9] The first ground of opposition as drafted does not constitute a proper ground of opposition. The requirement imposed on an applicant under s. 30(i) is simply to state that the applicant is satisfied that it is entitled to use the trade-mark applied for. Such statement is included in the application. If the Opponent wanted to argue that the statement was made in bad faith, it ought to allege it and prove it, neither of which was done. Therefore the first ground of opposition is dismissed [see Sapodilla Co. Ltd. v. Bristol Myer Co. (1974), 15 C.P.R. (2d) 152].
VI Section 30(b) ground of opposition
[10] The Opponent has an evidential burden when alleging non-compliance to the provisions of s. 30(b) of the Act but it has been characterized as a light one. Moreover the Opponent can rely on the evidence filed by the Applicant itself [see York Barbell Holdings Ltd. v. ICON Health & Fitness, Inc. (2001), 13 C.P.R. (4th) 156]. However such evidence must raise serious doubts on the accuracy of the statements made by the Applicant in its application. [See Tune Masters c. Mr. P’s Mastertune Ignition Services Ltd. (1986) 10 C.P.R. (3d) 84 (T.M.O.B.), Labatt Brewing Co. c. Molson Breweries, a Partnership (1996), 68 C.P.R. (3d) 216 (F.C.T.D.) et Williams Telecommunications Corp. c. William Tell Ltd., (1999) 4 C.P.R. (4th) 107 (T.M.O.B)].
[11] The Opponent is in fact relying on the evidence filed by the Applicant to support this ground of opposition. Mr. Di Cicco is the Applicant and owner, operator and sole proprietor of Air Bud Productions. He states that he is an entertainer and trains animals to perform in the field of entertainment such as public appearances, half time entertainment at sports events, television shows and movies. The relevant evidence to determine whether or not the Applicant has used the Mark in Canada as of the claimed date of first use in the application in association with the Wares and Services may be summarized as follows:
➢ In early 1990 the Applicant started training his golden retriever named “Buddy” to shoot a regular size basketball through a regulation ten foot rim. After six months of training the dog finally sank a basket;
➢ On Christmas day 1991 at a NBA basketball game, the Applicant and his golden retriever performed at half-time and were introduced as “Air Bud”. The Applicant liked the name so much that he started booking their appearances as “Air Bud”;
➢ Mr. Di Cicco clearly states in paragraph 6 of his affidavit that Buddy and him first performed as “Air Bud” on February 29, 1992 at half-time of a NBA basketball game between the Charlotte Hornets and the Indiana Pacers;
➢ He states that such basketball game was on the NBC network and broadcast in Canada;
➢ He produced a nine-page document listing the appearances at various television programs and news report, sporting events and movies. Almost all of these events or broadcasts occurred in the United States with a few overseas. The first mention of an appearance in Canada is with respect to the release on August 1, 1997 of the movie entitled “Air Bud, the motion picture”;
➢ He states that it was after the performance of February 29, 1992 at the NBA game between the Charlotte Hornets and the Indiana Pacers that he was introduced to a licensing agent who offered him a contract to license the use of the Mark to his clients who wanted the right to use the Mark in association with the Wares. There is no mention of the specific date when the license agreement was concluded and when each of the Wares were sold in Canada in association with the Mark nor any mention of the identity of the licensee;
➢ The sample of the board game filed bears the following copyright notice “© 2002”;
➢ The contract for the first film was concluded in February 1996 with the shooting at the end of October 1996 (see exhibit 5) and the movie itself was first released in August 1997;
➢ He produced T-shirts and dog food without stating when they were first introduced on the Canadian market.
[12] Ms. Dillon has been a student-at-law employed by the Applicant’s agent firm. She was asked on June 6, 2005 to conduct an online search for documents referring to the original release date in Canada of a movie entitled “Air Bud”. She used the search engine Google and limited her search to web pages from Canada. The content of these web pages constitutes inadmissible hearsay evidence. In any event they confirmed what has been established through the affidavit of Mr. Di Cicco that the movie was released in Canada n August 1, 1997. Interestingly, she states that while conducting her search she did not see reference to sale of any products in association with the Mark other than DVD’s and videos during her review of the various websites she located.
[13] From this evidence I conclude that the Opponent has met its initial burden to show that the Mark has not been used in Canada with respect to the Wares and Services since the date of first use claimed in the application. There are serious doubts on the accuracy of the claimed date of first use of the Mark in Canada. The allegation made by Mr. Di Cicco that the NBA basketball game aired on the NBC network on February 29, 1992 was broadcast in Canada is inadmissible hearsay evidence. In any event it would not constitute the production of a television show, as there is no evidence that the Applicant produced that show on television. Even if the basketball game was broadcasted in Canada there is no evidence that the half-time show was telecast in Canada and that the Mark was mentioned during such telecast. As for the Wares, at best for the Applicant, a license agreement would have been concluded after February 29, 1992 which would be after the claimed date of first use and thus any sales of Wares that could be accrued to the benefit of the Applicant through the provisions of s. 50 of the Act would have occurred after the claimed date of first use. Finally, the first movie was released in 1997. If there were any production of motion pictures in Canada in association with the Mark, it occurred after the claimed date of first use.
[14] The burden shifted on the Applicant that had to demonstrate the use of the Mark in Canada in association with each of the Wares and Services as of the claimed date of first use. The Applicant’s evidence does not support its claimed date of first use.
[15] For all these reasons I maintain the second ground of opposition.
V Registrability of the Mark
[16] The last three grounds of opposition turn on the issue of the likelihood of confusion between the Mark and the Opponent’s trade-marks. The difference in the relevant dates does not have a bearing on my assessment of that question. I shall discuss first the issue of the registrability of the Mark.
[17] I consider the Opponent’s strongest case to be with the following registered trade-marks:
➢ BUD, certificate of registration TMA157723, in association with beer;
➢ BUD, certificate of registration TMA429251, in association with caps, hats, sweatshirts, sweatpants, shirts and shorts; clothing, namely socks; wearing apparel for men and women, namely shorts, jackets, coats, sweaters, shirts, sweatshirts, pants, headwear namely hats, caps, visors, bags namely handbags, sportbags, cooler bags, shoulder bags, tote bags, golf head covers, drinking vessels namely glasses plastic cups, umbrellas, chairs and folding seats;
➢ BUD LIGHT, certificate of registration TMA377887, in association with beer;
➢ BUD LIGHT, certificate of registration TMA434860, in association with clothing, namely caps, hats, visors, t-shirts, shirts, shorts, jackets, vests, belts, socks, sweatshirts, suspenders, scarves, wind-resistant jackets, sweaters, aprons and warmup suits; wearing apparel for men and women, namely jackets, mitts, bags namely handbags, sportbags, cooler bags, shoulder bags, tote bags, gifts and novelties namely drinking vessels namely plastic cups bottle openers, ornamental pins, umbrellas, key chains.
[18] Printouts from an unidentified database providing the details of these registrations have been filed. Using my discretionary power under these circumstances I checked the register and am satisfied that these registrations are in good standing and are owned by the Opponent. Therefore the Opponent has met its initial burden. Thus the Applicant has to prove, on a balance of probabilities, that there is no likelihood of confusion between the Mark and the Opponent’s registered trade-marks.
[19] The test to determine if there is a likelihood of confusion is set out in s. 6(2) of the Act and I must take into consideration all the relevant surrounding circumstances, including those listed in s. 6(5): the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; the length of time the trade-marks or trade-names have been in use; the nature of the wares, services, or business; the nature of the trade; and the degree of resemblance between the trade-marks or trade-names in appearance, or sound or in the ideas suggested by them. For an analysis of those criteria see the decision of the Supreme Court of Canada in Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321.
[20] The Opponent, in its written argument, admits that the Mark and the trade-mark BUD are inherently distinctive. However the degree of distinctiveness can be enhanced through its use and making known in Canada.
[21] Mr. Gatehouse is the Country Manager of Canada for Anheuser-Busch International (“ABI”) since May 2004 and has been employed by such company since April 1994. ABI and the Opponent are wholly owned subsidiaries of Anheuser-Busch Companies, Inc. (“ABC”). In his affidavit he is referring collectively to ABI, ABC and the Opponent as “Anheuser-Bush”.
[22] The deponent provides some historical facts relating to the adoption and use of the trade-mark BUDWEISER. The Applicant, through its trade-mark agent during the cross-examination of Mr. Gatehouse, admitted and conceded that the trade-mark BUDWEISER is a famous trade-mark for beer. No such admission was made however with respect to the Opponent’s trade-mark BUD which is commonly used to refer to BUDWEISER brand of beer. The trade-mark BUD was first used in the United States in 1939 and in 1960 in Canada. Since 1982 BUDWEISER brand of beer has been brewed in Canada by Labatt Brewing Company Ltd. (“Labatt”) under license from Anheuser-Busch. Beer bearing the trade-mark BUD LIGHT has been brewed in Canada by Labatt since at least 1990 also under license from Anheuser-Busch.
[23] I notice that, while the label on the main portion of a bottle appearing on the second photograph part of exhibit D to Mr. Gatehouse’s affidavit bears the trade-mark BUDWEISER, the label appearing on the neck of the bottle has the trade-mark BUD. Most of the advertising and sponsorship material filed shows the trade-marks BUDWEISER and BUD LIGHT. Except for race car sponsorship and speed boat racing, the trade-mark BUD does not appear alone as it is used in combination with the trade-mark BUDWEISER. In fact during his cross-examination Mr. Gatehouse admitted that the trade-mark BUD is not used alone on the packaging or on the bottles of beer. It is always used in conjunction with the trade-mark BUDWEISER. Even though the trade-mark BUD is used in conjunction with the trade-mark BUDWEISER, there is nothing preventing two trade-marks from being used at the same time.
[24] He states that BUDWEISER/BUD and BUD LIGHT brands of beer are sold in restaurants, other drinking establishments and stores, which sell beer throughout Canada. He filed pictures of samples of packaging bearing the trade-marks BUDWEISER/BUD and BUD LIGHT.
[25] He provides the sales figures (number of barrels) in Canada since 1992 of beer in association with the trade-marks BUDWEISER/BUD and since 1996 in terms of dollars that amounted, during the period of 1996 to 2004, to $3,430,000,000. As for the sales of beer in Canada in association with the trade-mark BUD LIGHT they exceeded $250 million for the period between 1995 to 2004. From 2002 to 2004, annual advertising expenditures, in Canadian dollars, were in excess of $25 million in respect of BUDWEISER/BUD brand of beer and $10 million for BUD LIGHT.
[26] He filed a videotape containing over 30 television commercials for products bearing those trade-marks which were broadcasted on Canadian television, including the Global television network between 1993 and 1996 but we do not have the details of those broadcasts. He did provide a CD-ROM containing various television commercials for the promotion of beer bearing those trade-marks that were broadcasted in Canada including on the Global television network between 1999 and April 2005. Again we do not have any details on the extent of those broadcasts. Therefore I shall give little weight to this portion of the Opponent’s evidence.
[27] He provides a list of all the sports sponsorship that Anheuser-Busch has been involved in Canada including the Canadian Football League, the National Hockey League, the National Basketball Association, the Major League Baseball, including the Toronto Blue Jays, the Olympic games, ski events including the Budweiser Challenge, the Professional Bull Riders and has filed samples of promotional material relating to those events.
[28] He states that beer bearing the trade-marks BUDWEISER/BUD and BUD LIGHT is advertised extensively in Canada, through a variety of media, such as print and television. Total advertising expenditures in Canada for those brands of beer for the period of 1996 to 2004 were well in excess of $250 million.
[29] Since 2005, BUD LIGHT brand of beer has been the official beer of the Rogers Centre in Toronto, Ontario. Samples of material relating to this sponsorship have been filed in the record. Anheuser-Busch also sponsors the Professional Golf Association tour, which includes events in Canada and Mr. Gatehouse produced samples of promotional material relating to those events. Other sponsorship of sporting events include, car races such as Indy car races in Toronto and Vancouver, NASCAR races in the Maritimes and the Canadian Grand Prix in Montreal, Quebec.
[30] He states that BUDWEISER/BUD brand of beer has sponsored university team sports in Canada since at least 1996 and has produced samples of print advertisements. Anheuser-Busch is also a sponsor of the Calgary Stampede since 1993. It also sponsors music events in Canada wherein the Opponent’s trade-marks are displayed prominently, including the Merritt Mountain Music Festival in British Columbia as well as concerts held in the provinces of Quebec, Newfoundland and New Brunswick. He also filed sample material relating to those sponsorship activities.
[31] Mr. Gatehouse alleges that Anheuser-Busch has entered into license agreements granting the right to use the BUDWEISER/BUD and BUD LIGHT trade-marks in association with what has been labelled as collateral merchandising that includes clothing, drinking vessels, sporting goods and novelty items. He states that under these license agreements the licensees must strictly observe and comply with all requirements, procedures and directions of Anheuser-Busch with respect to the use of these trade-marks. It has direct or indirect control over the character and quality of those goods. He filed various catalogues featuring depictions of a wide range of merchandising items bearing the trade-mark BUD including articles of clothing, bags and knapsacks, cassette players, calendars, stickers, key chains, belt buckles, drinking vessels, watches, wallets, golf clubs and golf balls, game items such as checkers and dart sets, umbrellas, towels and coolers. These catalogues have been distributed in Canada since as early as 1991.
[32] The deponent also mentioned that the Opponent operates since 1997 a website at www.budshop.com and filed printouts from the site to illustrate the various products, similar to those listed above, that can be ordered from such website. There is no indication as to the number of Canadians that visited that website and ordered merchandise.
[33] There is also a toll free telephone line accessible to Canadian consumers that allows them to directly place orders for merchandising items bearing the Opponent’s trade-marks BUDEISER/BUD and BUD LIGHT.
[34] Mr. Gatehouse provides the annual sales figures to Canadian businesses from 1997 to 2004 of merchandising items that bear the Opponent’s trade-marks BUDWEISER/BUD and BUD LIGHT which total more than $1,8 million U.S. Direct sales to Canadians of collateral merchandising items totalled an excess of $3 million during the period of 2001 to 2004 inclusive. During his cross-examination and in the reply to undertakings he did state that these products were available in Canada at Wal-Mart, the Bay, Kresge’s, Zellers, Sears and Seaway stores.
[35] I will discuss later on if this material is sufficient to conclude that the trade-marks BUD and BUD LIGHT are famous trade-marks. For the time being I can state that the Opponent’s trade-marks BUB and BUD LIGHT are more known than the Mark in Canada. Therefore the first criterion favours the Opponent.
[36] The Opponent has established use of its trade-mark BUD and BUD LIGHT in Canada in association with beer since at least 1996 (reference to the sales figures in paragraphs 10 and 11 of Mr. Gatehouse’s affidavit) and since 1997 in association with collateral merchandising items. As discussed under the previous ground of opposition, there is no evidence of use of the Mark in Canada in association with the Wares or Services. This factor also favours the Opponent.
[37] As for the nature of the parties’ wares and services and their channels of trade, the Applicant has put a lot of emphasis on those criteria in order to conclude that there is no likelihood of confusion. The Applicant argues that he produces movies featuring a dog named “Buddy”. He states that the Services are catered to children under the age of 12 years. In his written argument the Applicant alleges that Buddy, a dog, has made personal appearances in Canada in venues where the Wares have been promoted such as in elementary schools for example and performed Air Bud as part of fund raising activities. There is no proof of these allegations in Mr. Di Cicco’s affidavit and therefore I shall disregard them.
[38] I must compare the Wares and Services as described in the application with the wares and services listed in the registrations relied upon by the Opponent. Obviously there is no correlation between beer and the Wares and Services. On the other hand there is an overlap between some of the Wares and the wares covered by certificates of registration TMA429251 (BUD) and TMA434860 (BUD LIGHT), such as hats, sweatshirts and shirts. There is no restriction as to the target consumers for the parties’ respective wares and services. The aforesaid registrations do not cover any services. This factor favours the Opponent only with respect to the articles of clothing listed in the application.
[39] As for the parties’ respective channels of trade, the Applicant argues in his written argument, with emphasis during the cross-examination of Mr. Gatehouse, that Canadian laws prohibit the Opponent to market its beer or to direct marketing campaign on any media targeting people under the legal drinking age. Therefore the channels of trade would differ completely as the Applicant’s Wares and Services are aimed at people less than 12 years. As mentioned previously; however there is no restriction of that nature in the Applicant’s description of the Wares and Services. Therefore, even though the Applicant’s Wares may be targeted at children under 12, adults can also purchase them.
[40] The Opponent argues that it sponsors sporting events. I do not see any overlap between the Services and such sponsorship. It might be that the dog Buddy has performed at halftime shows of various sporting events such as at National Basketball Association basketball games while the Opponent sponsors such league, but the Services as described in the application do not cover such entertainment services. Because of the magnitude of the Opponent’s sponsorship of various sporting events, a Canadian consumer could associate the Opponent as the source of supply or at least has authorized the use of the Mark in association sports equipment namely baseballs, basketballs, footballs, soccer balls, volleyballs, hockey pucks, hockey sticks. I conclude that the fourth criterion favours the Opponent only in so far as the items of clothing and sport equipment are concerned.
[41] The degree of resemblance is the most important factor when assessing the likelihood of confusion between two trade-marks. Mr. Justice Cattanach in Beverley Bedding & Upholstery Co. v. Regal Bedding & Upholstering Ltd. (1980), 47 C.P.R. (2d) 145 at par. 28 defined the issue in the following terms:
Realistically appraised it is the degree of resemblance between trade marks in appearance, sound or in ideas suggested by them that is the most crucial factor, in most instances, and is the dominant factor and other factors play a subservient role in the over-all surrounding circumstances.
[42] Moreover the first component of a trade-mark has often been characterized as the most important portion of a trade-mark [see Pernod Ricard v. Molson Breweries (1992), 44 C.P.R. (3d) 359].
[43] The first portion of the Mark differs from the Opponent’s registered trade-marks BUD and BUD LIGHT. The Mark when viewed as a whole differs in the idea suggested when compared to the Opponent’s registered trade-marks. As mentioned by Mr. Gatehouse, the trade-mark BUD is a contraction of the word Budweiser for those familiar with the Opponent’s beer sold under that trade-mark. On the other hand, it would appear that the word Bud as part of the Mark stands for a contraction of a dog’s first name “Buddy”. I do not see any similarities in the ideas suggested by the parties’ respective trade-marks.
[44] There is however a similarity both visually and in sound caused by the presence of the element BUD in all the relevant trade-marks.
[45] As an additional surrounding circumstance the Opponent argues that its trade-marks BUD and BUD LIGHT are famous and thus should benefit from a wider ambit of protection. The scope of protection afforded to famous trade-marks has been discussed in Mattel, Inc., supra, Mr. Justice Binnie after reviewing the case law on this issue made the following statements:
E. Applying the Section 6(5) Circumstances to the Facts of this Case
74 It follows from the foregoing discussion that, while the fame of the BARBIE brand is a "surrounding circumstance" of importance, the scope of its protection requires consideration of all the circumstances, including the enumerated s. 6(5) factors. The Board found that while the BARBIE trade-mark is indeed famous, its fame in Canada is "in association with dolls and doll accessories", not the other items listed in the appellant's registrations, including coffee, pizza and other food products. Nor, in particular, is its fame likely to generate any confusion in relation to the mark applied for by the respondent as a symbol of "restaurant services, take-out services, catering and banquet services". It is important to keep in mind, as the appellant says, that the issue is not the scope of the respondent's existing business but the scope of protection it seeks by its trade-mark application.
[46] Even if I conclude that the trade-marks BUD and BUD LIGHT are famous trade-marks in Canada it would be only in association with beer and not all the collateral merchandising listed in registrations TMA429251 and TMA434860. The fact that BUD and BUD LIGHT are well known trade-marks in Canada coupled with the fact that the Opponent sponsors various sporting events make it reasonable to conclude that a Canadian adult consumer of beer could associate the Opponent as the original source of supply or at least that it has authorized the sale of baseballs, basketballs, footballs, soccer balls, volleyballs, hockey pucks, hockey sticks bearing the Mark. However I am not prepare to take the quantum leap that the Opponent is suggesting and draw the same conclusion for board game as well as toys such as plush toys and squeaky toys, dog food and paper articles and pre-recorded video games on DVD and finally the Services.
[47] From this analysis of the relevant circumstances I conclude that, on a balance of probabilities, there exits a likelihood of confusion between the Mark and the Opponent’s registered trade-marks BUD and BUD LIGHT in so far as clothing, namely t-shirts, sweat shirts, hats and sports equipment namely baseballs, basketballs, footballs, soccer balls, volleyballs, hockey pucks and hockey sticks are concerned. There is no likelihood of confusion with respect to the other wares and the Services.
[48] I base my conclusion on the fact that the wares are the same, in so far as articles of clothing are concerned; there is a similarity both visually and in sound between the marks in issue and that the Opponent’s trade-marks BUD and BUD LIGHT are at least very well known. Finally, the Opponent sponsors so many sporting events that it would create a connection in the mind of the average Canadian consumer between the sporting goods part of the Wares and the Opponent’s well known trade-marks. Accordingly the third ground of opposition is partially maintained.
VI Entitlement and distinctiveness
[49] The difference in the relevant dates when comparing those grounds of opposition with registrability would not have an impact favouring the Applicant. I may add that, because the Applicant failed to prove its use of the Mark in association with the Wares and Services in Canada as of the claimed date of first use, the entitlement ground of opposition must be analyzed as of the filing date of the Application [see American Cyanamid Co. v. Record Chemical Co. Inc. (1972), 6 C.P.R. (2d) 278 (TMOB.); Everything for a Dollar Store (Canada) Inc. v. Dollar Plus Bargain Centre Ltd. (1998), 86 C.P.R. (3d) 269 (TMOB)]. The Opponent had an initial evidential burden to prove prior use or making known of its trade-marks BUD and BUD LIGHT in Canada and that such use was not abandoned at the advertisement date of this application [see s. 16(5) of the Act]. The summary of the Opponent’s evidence described under the previous heading clearly shows that the Opponent has met its evidential burden.
[50] In so far as distinctiveness is concerned, the Opponent has an evidential burden to show that, as of October 12, 2004, its trade-marks BUD and BUD LIGHT had become sufficiently known in Canada to negate the distinctiveness of the Mark [Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 (F.C.T.D.) at 58]. Once this burden is met, the Applicant has a legal onus to show that the Mark is adapted to distinguish or actually distinguishes the Wares and Services from the wares and services of the Opponent throughout Canada [see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R. (3d) 272 (T.M.O.B.)]. Again the Opponent has proved that its trade-marks BUD and BUD LIGHT were used and/or sufficiently made known in Canada as of October 12, 2004.
[51] The main issue with respect to these last two grounds of opposition then becomes one of likelihood of confusion between the Mark and the Opponent’s trade-marks BUB and BUD LIGHT.
[52] For the same reasons described under the previous heading I maintain in part those two grounds of opposition in so far as clothing, namely t-shirts, sweat shirts, hats and sports equipment namely baseballs, basketballs, footballs, soccer balls, volleyballs, hockey pucks, hockey sticks are concerned and reject the opposition for the other wares and the Services.
VII Conclusion
-
[53] Having been delegated authority by the Registrar of Trade-marks by virtue of s. 63(3) of the Act, and pursuant to s. 38(8) of the Act I refuse the Applicant’s application as I maintain the second ground of opposition.
[54] Should I be wrong in reaching such conclusion, applying the principles enunciated in the case of Produits Ménagers Coronet Inc. v. Coronet Werke Heinrich Scherf GmbH 10 C.P.R. (3d) 482, and based on my conclusion relating to the third, fourth and fifth ground of opposition, I would refuse, pursuant to s. 38(8) of the Act, the Applicant’s application for the registration of the Mark, in association with clothing, namely t-shirts, sweat shirts, hats; sports equipment namely baseballs, basketballs, footballs, soccer balls, volleyballs, hockey pucks, hockey sticks and would reject the opposition with respect to board game, toys namely plush toys and squeaky toys; dog food; pre-recorded video games on DVD’s; paper articles namely children’s books, comic books, how to books and entertainment services namely producing motion pictures and television shows.
DATED, IN BOUCHERVILLE, QUEBEC, THIS 13th DAY OF NOVEMBER 2009.