IN THE MATTER OF AN OPPOSITION by Coca-Cola Ltd. to application No. 545,878 for the trade-mark KRO'CO filed by Brasseries Kronenbourg, une société anonyme
On July 9, 1985, Brasseries Kronenbourg, une société anonyme, filed an application to register the trade-mark KRO'CO based upon proposed use of the trade-mark in Canada, as well as being based upon use and registration of the trade-mark in France in association with "bière, ale porter; eaux minérales et gazeuses; autres boissons non alcooliques nommément: bière sans alcool; et préparations non alcooliques à base d'extraits végétaux pour faire des boissons". The applicant claimed and was accorded a priority filing date of June 20, 1985 based on its application for registration filed in France.
The opponent, Coca-Cola Ltd., filed a statement of opposition on April 25, 1988, a copy of which was forwarded to the applicant on May 13, 1988. As its first ground of opposition, the opponent alleged that the applicant's application is not in compliance with Section 29 [now Section 30] of the Trade-marks Act in that the applicant has never used the alleged mark in France and does not and cannot intend to use the alleged mark in Canada. The opponent next alleged that the applicant's trade-mark KRO'CO is not registrable and not distinctive, and that the applicant is not the person entitled to its registration, in that the applicant's trade-mark KRO'CO is confusing with the opponent's registered trade-marks COCA-COLA Design, registration No. TMDA 10433, COCA-COLA, registration No. TMDA 55268 and COKE, registration No. UCA 16464 which had previously been used in Canada in association with the wares covered in the opponent's registrations.
The applicant filed a counter statement in which it denied the allegations set forth in the statement of opposition.
The opponent filed as its evidence the affidavits of Mildred Joan Lusk, Brian H. Jarvis, Donald Adam Burwash and Richard Savard. The applicant filed as its evidence a document identified as being an affidavit of Chantal Bouchard but which appears in substance to be a statutory declaration. Chantal Bouchard was cross-examined on her statutory declaration, the transcript of the cross-examination forming part of the opposition record. As evidence in reply, the opponent submitted the affidavit of John K. Chambers.
The opponent alone submitted a written argument and the opponent alone was represented at an oral hearing.
The opponent's first ground of opposition is based on Section 30 of the Trade-marks Act, the opponent alleging that the applicant's application is not in compliance with Section 29 [now Section 30] of the Trade-marks Act in that the applicant has never used the alleged mark in France and does not and cannot intend to use the alleged mark in Canada. With respect to a ground of opposition based on Section 30 of the Trade-marks Act, there is a legal burden on the applicant to establish that its application was in compliance with Section 30 of the Act as of the filing date of the applicant's application, the material date for considering a Section 30 ground. However, while the legal burden is on the applicant to show that its application complies with Section 30 of the Act, there is an initial evidential burden on the opponent to establish the facts which it alleges in support of the ground of opposition (see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pg. 329).
As pointed out by the Hearing Officer in Tune Masters v. Mr. P's Mastertune Ignition Services Ltd., 10 C.P.R. (3d) 84, at pg. 89, "it is difficult for an opponent to prove an allegation of non-use by an applicant, the relevant facts being readily available to an applicant". While the comments of the Hearing Officer related to a ground of opposition based on Section 29(b) [now Section 30(b)] of the Trade-marks Act, these comments are equally applicable in respect of a ground of opposition based on Section 30(d) of the Act [see 105272 Canada Inc. v. Grands Moulins de Paris, Société Anonyme, 31 C.P.R. (3d) 79]. Also, in Canadian Council of Professional Engineers v. Ontario Corp. No. 407,736 (carrying on business under the trading style Canadian Society for Professional Engineers), 15 C.P.R. (3d) 551, at pg. 553, the Hearing Officer noted that "the amount of evidence required to discharge this evidential burden may be very slight".
With respect to its Section 30 ground, the opponent has relied upon the affidavit of Brian H. Jarvis, a student-at-law, who states the following in his affidavit:
A number of the statements in paragraphs 4 to 6 of the Jarvis affidavit are hearsay evidence. However, to the extent that a hearsay objection goes to the weight which ought to be accorded to the evidence and not to its admissibility as evidence under Rule 43 of the Trade-marks Regulations, I must consider the weight to be given the Jarvis affidavit. In this regard, Mr. Jarvis has not indicated that he made any attempt to ascertain whether the persons he contacted by telephone were in positions to comment on the applicant's use of its trade-marks in France. Indeed, Mr. Jarvis has not even identified the person to whom he spoke concerning the applicant's use of the mark KRO'CO in France. Additionally, the telephone enquiries were made by the affiant on July 26, 1988, more than three years subsequent to the material date with respect to the Section 30(d) issue. I am therefore not prepared to give much weight to the Jarvis affidavit.
The opponent in its statement of opposition alleged that an applicant in France need not use its trade-mark in order to register a trade-mark in that country. Further, at the oral hearing, the agent for the opponent brought to my attention photocopies of pages from a manual of intellectual property which the agent submitted indicated that an applicant need not use its trade-mark in order to register a trade-mark in France. However, evidence relating to the trade-mark law in other countries ought to be filed by way of evidence in the opposition rather than submitting documents to the Hearing Officer at the oral hearing.
In 105272 Canada Inc. v. Grands Moulins de Paris, Société Anonyme, referred to above, it was concluded that largely hearsay evidence dated about two and one-half years subsequent to the material date in respect of a Section 30(d) ground was not sufficient to meet the slight evidential burden on the opponent in that case. Further, the evidence put forward by the opponent in that instance was even more convincing than is the evidence in this opposition. As a result, and even bearing in mind that the evidential burden on the opponent may be slight, having regard to the deficiencies in the Jarvis affidavit, I have concluded that the opponent has failed to meet the evidential burden upon it in respect of the Section 30(d) ground of opposition which I have therefore rejected.
The Section 12(1)(d) ground of opposition, as well as the non-distinctiveness and non-entitlement grounds of opposition, turn on the issue of confusion between the applicant's trade-mark KRO'CO as applied to the wares covered in the present application and the opponent's registered trade-marks COCA-COLA and COKE covering soft drinks or non-alcoholic beverages and syrups used to make these beverages. 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, 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 material dates. The material date in respect of the Section 12(1)(d) ground of opposition is the date of decision [see Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. et al, 37 C.P.R. (3d) 413 (F.C.A.) and Conde Nast Publications, Inc. v. The Canadian Federation of Independent Grocers, 37 C.P.R. (3d) 538 (TMOB)] while the material dates in relation to the non-entitlement and non-distinctiveness grounds are, respectively, the applicant's priority filing date and the date of opposition.
Considering initially the inherent distinctiveness of the trade-marks at issue, both the applicant's trade-mark KRO'CO as applied to the applicant's wares and the opponent's trade-marks COCA-COLA and COKE as applied to soft drinks and syrups used in the manufacture of non-alcoholic beverages are inherently distinctive.
The applicant's trade-mark KRO'CO had not become known to any extent in Canada as of the material dates in this opposition while the opponent's evidence establishes that its trade-marks COCA-COLA and COKE as applied to soft drinks are very well known in Canada. Likewise, the length of time that the trade-marks at issue have been in use favours the opponent in this opposition, the opponent having used its trade-mark COCA-COLA in association with soft drinks in Canada since at least 1905 and its trade-mark COKE since at least 1942. On the other hand, the applicant failed to adduce any evidence that it has commenced use of its trade-mark KRO'CO in this country.
The applicant's "eaux minérales et gazeuses; autres boissons non alcooliques nommément: bière sans alcool" are similar in nature to the opponent's non-alcoholic beverages or soft drink beverages covered in its registrations, while the applicant's "préparations non alcooliques à base d'extraits végétaux pour faire des boissons" are similar in nature to the opponent's syrups used in the manufacture of non-alcoholic beverages. On the other hand, the applicant's "bière, ale et porter" differ from the opponent's non-alcoholic beverages.
As for the channels of trade associated with the respective wares of the parties, the applicant's "eaux minérales et gazeuses", its "préparations non alcooliques...pour faire des boissons" and its "bière sans alcool" would travel through the same channels of trade as the opponent's "non-alcoholic beverages" and its "syrups for the manufacture of such beverages". Further, the applicant's "bière, ale et porter" could also be sold through the same retail outlets as the opponent's wares in the province of Quebec where beer and wine, as well as soft drinks, are sold in grocery stores, supermarkets and the like.
With respect to the degree of resemblance between the trade-marks at issue, I consider there to be no resemblance in appearance or in ideas suggested between the applicant's trade-mark KRO'CO and the opponent's marks COCA-COLA and COKE. As for the sounding of the trade-marks at issue, the applicant relied upon the statutory declaration of Chantal Bouchard, a linguist, while the opponent submitted the affidavit of John K. Chambers, Professor in the Department of Linguistics of the University of Toronto since 1970, as reply evidence to the Bouchard declaration. While the opponent cross-examined Ms. Bouchard on her statutory declaration, the applicant did not challenge Mr. Chambers' evidence by way of cross-examination and has not made any submissions concerning his evidence, having elected not to file a written argument or to attend the oral hearing.
Having regard to their respective qualifications, I am satisfied that both Ms. Bouchard and Mr. Chambers have qualified themselves as experts in linguistics and their opinions are therefore admissible as expert opinion evidence. Further, having regard to the decision in Ethicon Inc. v. Cyanamid of Canada Ltd., 35 C.P.R. (2d) 126, at pp. 135-136, expert evidence relating to the pronunciation of a word would appear to be admissible evidence.
After analyzing the pronunciation of the trade-marks at issue, Ms. Bouchard states in paragraph 18 of her statutory declaration that there would be no risk of phonetic confusion in French between KRO'CO and either COCA-COLA or COKE. Likewise, after analyzing the pronunciation of the trade-marks at issue in the English language, the declarant concludes in paragraph 24 of her statutory declaration as follows:
"24. Je conclus de cette comparaison de la pronunciation anglaise des mots KRO'CO d'une part et COCA-COLA et COKE d'autre part, que les risques de confusion entre KRO'CO et l'une ou l'autre des formes citées sont à peu près nuls."
In support of this conclusion, Ms. Bouchard points out in paragraph 22 that if one compares KRO'CO and COCA-COLA, there is a contrast between two syllables and four. Further, in each case, the first syllable is accentuated, such that the [r] sound in the first syllable of KRO'CO clearly distinguishes this syllable from the initial syllable of COCA-COLA. Additionally, the declarant points out that none of the syllables are identical.
In paragraph 11 of his affidavit, Mr. Chambers states as follows:
11. I turn now to a significant aspect of the English pronunciation of KRO'CO. As Professor Bouchard correctly notes, the English pronunciation of KRO'CO doffers from the French pronunciation in a couple of ways. One way is the stress pattern in English. In English, as Professor Bouchard states in paragraph 22, the first syllable is stressed ("... la premiére [sic] syllable est accentuée). I must emphasize that this difference leads to a phonetic similarity in English which is not found in the French pronunciations of the words under discussion. As Professor Bouchard's phonetic transcription in paragraph 16 correctly indicates, the fact that in French the stress always falls on the final syllable of the word means that, in French, none of these words has exactly the same stressed syllable as the others. That is, in French the stresses fall on the syllables underlined in KRO'CO, COCA-COLA and COKE. In English, however, the stressed syllables are pronounced identically in all three words, as indicated by the underlined parts: KRO'CO, COCA-COLA and COKE. That is, the stressed syllable in all these words is pronounced [ok]."
I fail to understand Professor Chambers' conclusion that the initial syllable KRO, which is the stressed syllable of the applicant's trade-mark, is identical in sounding to the stressed syllable in the opponent's registered trade-mark COCA-COLA. Likewise, Professor Chambers does not respond to Professor Bouchard's observations that the [r] sound appearing in the first syllable of the applicant's mark, as well as the difference in the number of syllables in the two trade-marks, are such that the likelihood of confusion between the marks phonetically is almost non-existent. However, in paragraph 13, Mr. Chambers states the following:
13. Finally, an indication of their potential for confusion which seems to me to be particularly revealing comes from the aural impression when the word KRO'CO is combined with other terms in a name. If KRO'CO were a trade mark, it could potentially be used as a combining term with a further specifier in a compounded word. Plausibly, then, it could occur in compounds such as KRO'CO-Soda, KRO'CO-Cola, KRO'CO-Drink, KRO'CO-Boisson. Whether or not these compounded forms could be used in the marketplace is irrelevant. My point is, simply, that when the word KRO'CO is combined with another word, its phonetic resemblance to COCA and COKE becomes more obvious.
I agree with Professor Chambers conclusion that if KRO'CO were combined with "-Cola" or "-Soda", there would be a greater degree of aural similarity between the applicant's trade-mark and the opponent's trade-mark COCA-COLA. However, the applicant's application does not cover colas and would not therefore be combined with that word in ordering or identifying the applicant's wares. On the other hand, the applicant's mineral waters and carbonated waters are closely related to soda water and could potentially be identified as "KRO'CO soda". However, I do not consider that aural identification of the applicant's remaining wares as "KRO'CO beer", "KRO'CO ale", "KRO'CO porter", "KRO'CO non-alcoholized beer" or "KRO'CO preparations for making drinks" would increase the degree of similarity in sounding between the applicant's trade-mark KRO'CO as applied to these wares and the opponent's trade-mark COCA-COLA.
In addition to giving evidence of the pronunciation of the trade-marks at issue, both Ms. Bouchard and Mr. Chambers have given their opinions as to whether the public would be confused by the sounding of the trade-marks as issue. In Etablissments Leon Duhamel, now K Way International v. Creations K.T.M. Inc., 11 C.P.R. (3d) 33, the following comments concerning the admissibility of expert opinion evidence on the ultimate issue to be decided in an opposition appear at pp. 40-41:
The conflicting opinions of the experts in the present case emphasizes the fact that the Registrar of Trade-marks is not justified in adopting an expert's opinion simply on the basis of his or her expertise. As Mr. Justice Mahoney pointed out in William H. Rorer (Canada) Ltd. v. Johnson & Johnson, 48 C.P.R. (2d) 58, at p. 62, referred to in the above extract from the Etablissments Leon Duhamel decision, the adjudicator must know the facts and/or assumptions upon which the expert based his or her opinion so that he can assess the validity of the opinion and the process by which it was reached. In the present case, both experts based their opinions on similar assumptions and yet appeared to reach opposite opinions on the issue of confusion.
Apart from the above, it is unclear as to whether either expert considered the pronunciation of the trade-marks at issue from the perspective of the average bilingual consumer. In this regard, and having regard to the bilingual character of Canada, it is the average bilingual consumer, either anglophone or francophone, who must be considered in assessing the issue of confusion. Further, equal importance must be accorded to the English language as to the French language in assessing this issue (see Boy Scouts of Canada v. Alfred Strenjakob GmbH & Co. KG et al, 2 C.P.R. (3d) 407, at pp. 412-413; Scott Paper Co. v. Beghin-Say S.A., 5 C.P.R. (3d) 225, at p. 231; Ferrero S.p.A. v. Les Produits Freddy Inc., 22 C.P.R. (3d) 346). In Les Vins La Salle Inc. v. Les Vignobles Chantecler Ltée, 6 C.P.R. (3d) 533, at pages 535 to 536, the Hearing Officer commented on this issue as follows:
In the present case, I believe that the average bilingual Canadian would pronounce both the applicant's trade-mark KRO'CO in the same manner in either English or French and that the opponent's trade-marks COCA-COLA and COKE would likewise be pronounced in the same manner in both French and English. As such, I am less inclined to place as much emphasis on what have been identified by Mr. Chambers and Ms. Bouchard as being the stressed syllables in the French and English languages in the trade-marks at issue. On the other hand, I believe that the aural identification by the average bilingual consumer of the applicant's "eaux minérales et gazeuses" as "KRO'CO soda" would increase the degree of similarity in sounding between the applicant's mark and the opponent's trade-mark COCA-COLA. Further, I would note that this evidence has not been challenged by the applicant. Additionally, there appears to be at least some similarity in sounding between the applicant's mark KRO'CO and the registered trade-mark COKE.
Having regard to the degree of resemblance in sounding between the applicant's trade-mark KRO'CO and the opponent's trade-marks COKE and COCA-COLA, and bearing in mind that the applicant's "eaux minérales et gazeuses" are closely related to the opponent's soft drinks and that the channels of trade associated with these wares would overlap, I have concluded that the applicant has failed to meet the legal burden upon it of establishing that there would be no reasonable likelihood of confusion between its trade-mark KRO'CO as applied to "eaux minérales et gazeuses" and the registered trade-marks COCA-COLA and COKE. On the other hand, I do not consider that there would be any reasonable likelihood of confusion between the applicant's trade-mark KRO'CO as applied to the remaining wares covered in the present application and the opponent's trade-marks. As a result, the applicant's trade-mark KRO'CO is not registrable in view of the provisions of Section 12(1)(d) of the Trade-marks Act in relation to "eaux minérales et gazeuses". In this regard, I would note the finding of the Federal Court, Trial Division in respect of there being authority to render a split decision in Produits Ménagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf GmbH, 10 C.P.R. (3d) 492.
I therefore refuse the applicant's application in relation to "eaux minérales et gazeuses" and otherwise reject the opponent's opposition to registration of the trade-mark KRO'CO in relation to the remaining wares covered in the applicant's application pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS 29TH DAY OF APRIL 1994.
G.W.Partington,
Chairman,
Trade Marks Opposition Board.