IN THE MATTER OF AN OPPOSITION
by The Brick Warehouse Corporation
to application No. 838,818 for the
trade-mark MATTRESS EXPRESS
filed by Nefco Furniture Ltd.___________
On March 10, 1997, the applicant, Nefco Furniture Ltd., filed an application to register the trade-mark MATTRESS EXPRESS. The application is based upon proposed use of the trade-mark in Canada in association with the services of retail sale of beds, mattresses, box springs, bedding products and components therefore. The applicant has disclaimed the right to the exclusive use of the word "mattress" apart from the trade-mark. The application was advertised for opposition purposes on December 3, 1997.
The opponent, The Brick Warehouse Corporation, filed a statement of opposition on January 21, 1998. The applicant filed and served a counter-statement.
The opponent filed as its evidence certified copies of five Canadian trade-mark registrations, Nos. 379,559, 438,606, 387,554, 395,630 and 395,631, as well as two affidavits of Richard Byers.
As its evidence, the applicant filed the affidavit of Daniel Adelman.
As reply evidence, the opponent filed a certified copy of Canadian trade-mark registration No. 316,768 for the trade-mark NOBODY BEATS THE BRICK and a third affidavit of Richard Byers.
Both parties filed a written argument and an oral hearing was held at which both parties were represented.
The first ground of opposition is based on Paragraph 12(1)(d) of the Trade-marks Act, the opponent alleging that MATTRESS EXPRESS is not registrable because it is confusing with each of the opponent’s trade-marks BEDDING EXPRESS, SOFA EXPRESS, THE BRICK EXPRESS, TELEVISION EXPRESS and APPLIANCE EXPRESS, which have been registered under Nos. 379,559, 438,606, 387,554, 395,630 and 395,631, respectively.
The second ground of opposition is based on Paragraph 16(3)(a) of the Trade-marks Act, the opponent alleging that the trade-mark MATTRESS EXPRESS is confusing with the five aforementioned trade-marks that had been used in Canada by the opponent prior to March 10, 1997. With respect to this ground of opposition, there is an initial burden on the opponent to evidence use of its trade-marks prior to the applicant’s filing date. In addition, Subsections 16(5) and 17(1) of the Trade-marks Act place a burden on the opponent to establish non-abandonment of its marks as of the date of advertisement of the applicant’s application.
The third ground of opposition is that the applicant’s trade-mark is not distinctive since it does not actually distinguish nor is it adapted to distinguish the applicant's services from the services of the opponent, by reason of the use, advertising and reputation of the opponent's trade-marks. Although the legal onus is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its services from the services of others throughout Canada [Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R. (3d) 272 (TMOB)], there is an evidential burden on the opponent to prove the allegations of fact supporting its ground of non-distinctiveness. However, the opponent need not show that its trade-marks are well known in Canada or have been made known solely by the restricted means set out in Section 5 of the Act in order to meet this evidential burden. It need only show that as of the material date one of its trade-marks had become known sufficiently to negate the distinctiveness of the applied-for mark [Motel 6, Inc. v. No. 6 Motel Ltd., 56 C.P.R. (2d) 44, at pp. 55 and 58 (F.C.T.D.)].
Each of the grounds of opposition turns on the issue of confusion. The material dates with respect to each of the grounds are as follows: Paragraph 12(1)(d) - the date of my decision [Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37 C.P.R. (3d) 413 (FCA)]; Paragraph 16(3)(a) - the date of filing of the application, i.e. March 10, 1997; non-distinctiveness - the date of filing of the opposition, i.e. January 21, 1998 [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 Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.)].
The Evidence
BEDDING EXPRESS was registered on February 8, 1991 for operation of a furniture and appliance store based on a declaration of use filed November 29, 1990. The right to the exclusive use of the word BEDDING was disclaimed. Mr. Byers advises that BEDDING EXPRESS was first featured in multi-media advertisements in November 1990. He provides a copy of a page from a November 1990 flyer featuring the BEDDING EXPRESS trade-mark of which approximately one million copies were distributed. Additional evidence of use of BEDDING EXPRESS includes the following: November 23, 1990 advertisement in the Toronto Sun; May 3, 1991 flyers, of which approximately 1.1 million copies were distributed from Ontario through British Columbia; November 1, 1991 flyer, of which approximately 1.1 million copies were distributed; television commercials aired for several days commencing on or about November 3, 1990 and December 31, 1991 on various television stations from Ontario through British Columbia; September 1993 flyer, of which approximately 2.4 million copies were distributed from Ontario through British Columbia; December 1993 flyer, of which approximately 12.4 million copies were distributed from Ontario through British Columbia .
SOFA EXPRESS was registered on February 3, 1995 for operation of a furniture and appliance store based on a declaration of use filed December 20, 1994. The right to the exclusive use of the word SOFA was disclaimed in respect of operation of a furniture store. No evidence of use of this mark was provided by Mr. Byers.
THE BRICK EXPRESS was registered on August 9, 1991 for operation of a store selling furniture, appliances, televisions and audio-video equipment ordered by the customer from backlit photographic representations displayed at the store based on use in Canada since at least as early as March 1, 1990. Evidence showing use of THE BRICK EXPRESS includes five advertisements from publications entitled Lloydminster Meridian, Lloydminister Times and Lloydminster Meridian Booster, all dating from 1990, and signage from a store operated in Lloydminster from March 1990 to March 1997.
TELEVISION EXPRESS was registered on March 13, 1992 for operation of a store selling televisions, audio-visual equipment, furniture and appliances based on a declaration of use filed January 17, 1992. The right to the exclusive use of the word TELEVISION was disclaimed in respect of the operation of a store selling televisions. Four examples of use have been provided for this trade-mark, two dated 1990 and two dated 1993.
APPLIANCE EXPRESS was registered on March 13, 1992 for operation of a furniture and appliance store based on a declaration of use filed January 17, 1992. The right to the exclusive use of the word APPLIANCE was disclaimed in respect of the operation of an appliance store. Three examples of use have been provided for this trade-mark, one dated 1990 and two dated 1993.
In addition to the evidence of use summarized above, the first Byers affidavit provides us with the history and nature of the opponent's business, as well as with some sales figures. The second Byers affidavit merely corrects a typographical error in the first.
Mr. Adelman provides us with the following information concerning the use of MATTRESS EXPRESS. The mark has been displayed on signage at one of the applicant's stores in Winnipeg since March 1997 and has been displayed at two other store locations in Winnipeg since June 1998. Since March 1998, the applicant has used MATTRESS EXPRESS in newspaper advertisements, with seven advertisements having been run in the Winnipeg Free Press between March and December 1998. Advertisements have also been placed in "newspapers published by Transcontinental Publications" but no information has been provided concerning what such newspapers are or where they are circulated.
Mr. Adelman also states that at no time since March 1998 has he been informed by any customer or potential customer nor is he aware of any other incident alleging confusion between the applicant and the opponent as a result of the applicant's use of MATTRESS EXPRESS.
In two instances in his affidavit, Mr. Adelman refers to having been informed and verily believing certain information. The first is with respect to a computer search conducted by the applicant's solicitors and the second concerns circulation figures for the newspapers in which MATTRESS EXPRESS has appeared. As this information is clearly hearsay, I am disregarding it.
Mr. Adelman also informs us that the applicant owns a Canadian trade-mark registration for LEATHER EXPRESS.
The third Byers affidavit concerns the opponent's use and registration of NOBODY BEATS THE BRICK. The opponent's position is that this is proper reply evidence because it responds to an exhibit in Mr. Adelman's affidavit that includes the heading NOBODY BEATS OUR PRICES… I do not consider information concerning NOBODY BEATS THE BRICK to be relevant to the issues in these opposition proceedings. The opponent classifies it as a relevant surrounding circumstance but I disagree. The common use of NOBODY BEATS might be relevant in a passing off action but does not relate to the issue of the likelihood of confusion between MATTRESS EXPRESS and any of the opponent's marks.
Likelihood of Confusion
The test for confusion is one of first impression and imperfect recollection. In applying the test for confusion set forth in Subsection 6(2) of the Trade-marks Act, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in Subsection 6(5) of the Act. Those factors specifically set out in Subsection 6(5) are: the inherent distinctiveness of the marks and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; and the degree of resemblance in appearance or sound of the marks or in the ideas suggested by them. The weight to be given to each relevant factor may vary, depending on the circumstances [Clorox Co. v. Sears Canada Inc. 41 C.P.R. (3d) 483 (F.C.T.D.); Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 C.P.R. (3d) 308 (F.C.T.D.)].
There is a legal burden on the applicant to establish that there would be no reasonable likelihood of confusion between the marks in issue. This means that if a determinate conclusion cannot be reached, the issue must be decided against the applicant [John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293].
I will first consider the Subsection 6(5) factors as they relate to the applicant's mark MATTRESS EXPRESS and the opponent's mark BEDDING EXPRESS. Neither of these marks has much inherent distinctiveness. Both MATTRESS and BEDDING have been disclaimed because they describe the character of the parties' services, and the word EXPRESS is suggestive of quick service. Accordingly this factor favours neither party.
As of March 10, 1997, the extent to which each mark had become known favoured the opponent. As of January 21, 1998, it is difficult to assess if this factor favours either party. I say this because the last evidence of the use or promotion of the opponent's mark is dated 1993. While there was fairly extensive advertising of BEDDING EXPRESS between 1990 and 1993, it is difficult to assess if the mark would still have been known in the marketplace as of January 21, 1998. Prior to January 21, 1998, the applicant's mark had been in use only at one location and there is no evidence of any advertising. As of today's date, more than seven years after the last evidenced use of BEDDING EXPRESS, I consider it fair to conclude that BEDDING EXPRESS is no longer known to any significant extent. As of today's date, the applicant's evidence shows only a low level of making known of MATTRESS EXPRESS because its evidence was filed in 1999 and only shows about two year's of limited activity with respect to MATTRESS EXPRESS.
The opponent's mark was first used in 1990, while the applicant's mark was first used in 1997. However, there is no evidence that use of the opponent's mark continued after 1993.
The services of the applicant and the opponent overlap significantly as both parties use their marks in association with the retail sale of furniture, including mattresses.
I do not consider there to be any significant difference between the two parties’ channels of trade.
There is a considerable degree of resemblance between the marks. Both marks start with a bed-related word and end with the word EXPRESS. Although the first word is traditionally considered to be the more important [Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 at 188 (F.C.T.D.)], its dominance is lessened when it is a descriptive word. It is noted that "bedding" is defined as including mattresses.
There is a high degree of resemblance between the marks in the ideas suggested by them and a lesser degree of resemblance between the marks in appearance and sound.
Two other surrounding circumstances put forward by the applicant are the state of the register and the lack of confusion. As pointed out by the opponent in its written argument, and as discussed above, the evidence concerning the state of the register is hearsay. I will therefore not consider it. I do not consider the lack of confusion to be particularly relevant as the applicant's use has been somewhat limited and it is not clear that the opponent operates a store in the same geographic area as the applicant's stores.
The applicant has submitted that the apparent discontinuance of use of the opponent's mark is a further surrounding circumstance but I have taken note of this under my consideration of the Subsections 6(5) (a) and (b) factors. I agree that the decision in Park Avenue Furniture v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.) held that non-use of a registered trade-mark is to be considered under Subsection 6(5) of the Trade-marks Act. However, that case and its outcome are distinguishable from that of the present since there the resemblance between the marks was less and the opponent appeared to have never used its registered trade-mark while the applicant had made extensive use of its applied-for mark.
The opponent relies on its alleged family of EXPRESS marks as a surrounding circumstance. Whether or not the opponent has a family of marks would not affect my decision in these proceedings so I will not explore this circumstance further.
Conclusion
Having considered all of the surrounding circumstances, I conclude that the applicant has not met the onus on it to show that there is no reasonable likelihood of confusion between the applicant’s MATTRESS EXPRESS trade-mark and the opponent’s registered trade-mark BEDDING EXPRESS as of today's date. In particular, my decision has been influenced by the degree to which the marks resemble one another and the overlap between the parties’ services. The Paragraph 12(1)(d) ground of opposition therefore succeeds.
As one of the grounds of opposition has succeeded, I do not intend to discuss the two remaining grounds in detail. I will say however that I have my doubts that either would have succeeded. With respect to the Section 16 ground, the opponent is required to establish non-abandonment of its BEDDING EXPRESS trade-mark as of the date of advertisement of the applicant’s application. With respect to the distinctiveness ground of opposition, it is questionable if the opponent's trade-mark had become known sufficiently to negate the distinctiveness of the applied-for mark as of January 21, 1998, given that the last evidence of use or advertisement of the opponent's mark was in 1993.
I would also add that I do not believe that any of the grounds of opposition would have succeeded to the extent that they rely on trade-marks other than BEDDING EXPRESS. This is because the opponent's trade-marks TELEVISION EXPRESS, APPLIANCE EXPRESS and THE BRICK EXPRESS are significantly different from MATTRESS EXPRESS. SOFA EXPRESS, for which there is no evidence of use, also resembles MATTRESS EXPRESS less than does BEDDING EXPRESS.
Disposition
Having been delegated by the Registrar of Trade-marks by virtue of Subsection 63(3) of the Trade-marks Act, I refuse the applicant's application pursuant to Subsection 38(8) of the Act.
DATED AT TORONTO, ONTARIO, THIS 10th DAY OF JULY, 2001.
Jill W. Bradbury
Hearing Officer