IN THE MATTER OF AN OPPOSITION by Provigo Inc. to application No. 578,323 for the trade-mark ISI & Design filed UNION AGRICOLE DES COOPERATIVES LAITIERES ISIGNY-SUR-MER & SAINTE-MERE-EGLISE
On February 11, 1987, UNION AGRICOLE DES COOPERATIVES LAITIERES ISIGNY-SUR-MERE & SAINTE-MERE-EGLISE société civile, filed an application to register the trade-mark ISI & Design, a representation of which is set out below, based upon use and registration of the trade-mark in France in association with "milk, butter, cheeses, creams, yoghurts".
The opponent, Provigo Inc., filed a statement of opposition on June 16, 1988 in which it alleged that the applicant's trade-mark is not registrable in that it is confusing with the opponent's registered trade-mark P & Design, registration No. 271,620, a representation of which appears below, covering "services d'exploitation de magasins d'alimentation et épiceries", as well as with the opponent's associated trade-marks covered by registration Nos. 292,826, 210,855, 310,723 and 271,621.
Registration No. 271,620
The second ground is that the applicant is not the person entitled to registration in view of the provisions of Section 16(2)(a) of the Trade-marks Act in that the applicant's trade-mark is confusing with the opponent's trade-mark P & Design, and its associated marks, which had been previously used in Canada in association with services relating to the operation of grocery stores, as well as to identify a large number of food products including dairy products. As its third ground, the opponent alleged that the applicant's trade-mark is not distinctive in that it is incapable of distinguishing the applicant's wares from the opponent's wares and services associated with the marks identified in the first two grounds of opposition.
The applicant served and filed a counter statement in which it denied the allegations of confusion set forth in the statement of opposition.
The opponent filed as its evidence the affidavits of M. Wayne de Rinzy and Frank Haigh while the applicant submitted the affidavit of Paul Lafortune.
The opponent alone submitted a written argument and both parties were represented at an oral hearing.
During the opposition proceeding, the opponent filed evidence that it had assigned its rights in the trade-marks being relied upon in this opposition to Provigo Distribution Inc. Accordingly, this opposition continued in the name of Provigo Distribution Inc. as opponent.
On June 16, 1993, two days prior to the scheduled date for the oral hearing, the applicant requested a retroactive extension of time to file a second affidavit of Frank Haigh as evidence in this opposition. At the oral hearing, I advised the parties that, as this opposition had advanced to the oral hearing stage, I was not prepared to grant the opponent its requested retroactive extension of time. However, I also indicated that I would consider the applicant's letter of June 16 as a request to file the second Haigh affidavit as additional evidence pursuant to Rule 46(1) of the Trade-marks Regulations and invited both parties to make their submissions with respect to the request for leave.
In support of the Rule 46(1) request, the applicant submitted that it had only recently come to its attention that the Opposition Board would give limited weight to state of the register evidence in the absence of evidence that the marks identified in the search were in use in the marketplace in Canada. The applicant also noted that the second Haigh affidavit was intended to correct certain deficiencies in the nature of hearsay evidence contained in the first affidavit of Frank Haigh. Additionally, the applicant undertook to make Mr. Haigh available for cross-examination on his second affidavit if the opponent requested an order for his cross-examination. Finally, the applicant pointed out that it was in the interests of justice that it be granted leave and that the decision in U.A.P. Inc. v. Automaxi S.A., 47 C.P.R. (3d) 158 is authority for the proposition that additional evidence may be adduced at a hearing even though the other party may object to its being filed at such at late date. In the U.A.P. Inc. case, Teitelbaum, J. commented as follows at page 169:
For its part, the opponent pointed out that the applicant had submitted marketplace evidence by way of the first Haigh affidavit, dated February 21, 1990, and therefore could not be said to be unaware until recently of the need to file such evidence in order that weight be given to its state of the register evidence. As well, the opponent pointed out that it would want to cross-examine Mr. Haigh on his second affidavit should I now grant the applicant leave to file the second Haigh affidavit as evidence in this opposition.
Upon review of the first Haigh affidavit, it is apparent that it is almost entirely hearsay evidence and therefore would be accorded little, if any, weight in this opposition. It would also appear that the trade-mark agents for the applicant retained the services of an associate agent to represent it at the oral hearing and that, in preparation for the hearing, the associate agent advised the applicant's trade-mark agents of the deficiencies in the first Haigh affidavit. In my view, that is not a basis upon which I would be prepared to grant the applicant leave to file the second Haigh affidavit as additional evidence in this opposition, bearing in mind the lateness of the applicant's request. I have therefore refused the applicant's request for leave to file the second Haigh affidavit as evidence in this opposition.
The opponent's grounds of opposition turn on the issue of confusion between the applicant's trade-mark ISI & Design and one, or more, of the opponent's trade-marks. It would appear, however, that the opponent is relying principally upon its P & Design trade-mark as it has not even identified its other trade-marks associated with the registration numbers set forth in its statement of opposition. In any event, upon review of the certified copies of the opponent's registrations annexed to the Lafortune affidavit, it is apparent that the most relevant of the trade-marks relied upon by the opponent is its registered trade-mark P & Design. As a result, the determination of the issue of confusion between the trade-marks ISI & Design and P & Design will effectively decide all the issues in this opposition.
With respect to a ground of opposition based on Section 12(1)(d) of the Trade-marks Act, the material date would appear to be as of the date of my decision (see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37 C.P.R. (3d) 413 (FCA) and Conde Nast Publications, Inc. v. The Canadian Federation of Independent Grocers, 37 C.P.R. (3d) 538 (TMOB)). Further, the material date for determining the non-distinctiveness ground of opposition is as of the date of opposition (June 16, 1988) while the material date for the non-entitlement ground is as of the filing date of the applicant's application (February 11, 1987).
In assessing 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, but not limited to, the criteria which are specifically enumerated in Section 6(5) of the Trade-marks Act. Further, the Registrar must bear in mind that the legal burden is upon the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks of the parties as of the material dates noted above.
Initially, I would note that the opponent's evidence by way of the Lafortune affidavit fails to establish any use of the trade-mark P & Design either in association with services relating to the operation of food or grocery stores or in association with food products. Rather, the opponent's evidence points to use of the trade-mark PROVIGO & Design in association with the operation of food stores, as well as in association with food products. While the trade-mark PROVIGO & Design, as represented below, includes as an element thereof the mark P & Design, the latter mark constitutes a minor element of the PROVIGO & Design trade-mark and therefore would not be perceived as a matter of first impression as being used as a trade-mark per se (see Nightingale Interloc Ltd. v. Prodesign Ltd., 2 C.P.R. (3d) 535, at page 538). As a result, the only relevant ground of opposition based on the opponent's trade-mark P & Design is the Section 12(1)(d) ground of opposition.
With respect to the inherent distinctiveness of the trade-marks at issue, the opponent's trade-mark P & Design possesses a somewhat greater degree of inherent distinctiveness than does the applicant's trade-mark ISI & Design. In particular, the applicant's trade-mark includes as a dominant element thereof the initials or letters ISI which add little inherent distinctiveness to the mark while the stylized design of the letter P which dominates the opponent's trade-mark adds some measure of inherent distinctiveness to the opponent's mark. I would note, however, that trade-marks comprising or dominated by letters or initials are weak marks which, in the absence of evidence of acquired distinctiveness, are only entitled to a narrow ambit of protection.
The applicant's design trade-mark has not been shown to have become known to any extent in Canada while the opponent's trade- mark P & Design, as noted above, may have become known to some extent in Canada but only as a relatively minor element of the opponent's trade-mark PROVIGO & Design. As a result, neither the extent to which the trade-marks at issue have become known nor the length of use of the trade-marks at issue are particularly relevant factors with respect to the issue of confusion between the trade-marks ISI & Design and P & Design.
The applicant's food products are related to the opponent's services relating to the operation of food and grocery stores covered in its registration in that dairy products of the type covered in the applicant's application would normally be sold in food and grocery stores. Further, the channels of trade associated with the wares and services of the parties would appear to overlap.
As for the degree of resemblance between the trade-marks P & Design and ISI & Design, I consider there to be very little similarity in appearance and no similarity either in the sounding or the ideas suggested by the trade-marks at issue.
The opponent sought to rely upon its alleged family of trade-marks in support of its allegation that there would be a likelihood of confusion between its trade-mark P & Design and the applicant's trade-mark ISI & Design. However, the opponent's registered trade-marks PROVI-SOIR & Design and AXEP & Design would not, in my view, even be perceived by the average consumer as including a design of a drop while the trade-marks PROVIGO & Design and PHARMAPRIX & Design are dominated by the marks PROVIGO and PHARMAPRIX. Further, apart from the trade-mark PROVIGO & Design, little evidence has been furnished by the opponent of use in the marketplace of any of its trade-marks. As a result, the opponent has failed to establish the existence of an alleged family of trade-marks as a surrounding circumstance in support of its allegation of confusion between the applicant's trade-mark ISI & Design and its trade-mark P & Design.
In view of the above, and considering that there is little resemblance between the applicant's trade-mark ISI & Design and the opponent's trade-mark P & Design and that the trade-marks at issue are generally weak marks and therefore not entitled to a broad ambit of protection, I have concluded that the applicant has met the legal burden upon it in respect of the issue of confusion. I have therefore rejected the opponent's grounds of opposition.
I reject the opponent's opposition pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS _30th______ DAY OF ____July____, 1993.
G.W. Partington,
Chairman,
Trade Marks Opposition Board.