IN THE MATTER OF AN OPPOSITION by MAPEI INC. to application No. 872,426 for the trade-mark QUICK-BOND filed by CHEMBOND LIMITED
On March 27, 1998, the applicant, CHEMBOND LIMITED, filed an application to register the trade-mark QUICK-BOND based upon use of the trade-mark in Canada by the applicant since at least as early as March 31, 1995 in association with “Fast setting latex modified dry set mortar adhesive for the installation of ceramic tile; multi purpose floor and wall tile cement”.
The present application was advertised for opposition purposes in the Trade-marks Journal of May 3, 2000 and the opponent, MAPEI INC., filed a statement of opposition on June 12, 2000, a copy of which was forwarded to the applicant on June 20, 2000. The applicant served and filed a counter statement in response to the statement of opposition on September 28, 2000. The opponent submitted as its evidence certified copies of registration Nos. 420,848, 277,112, 405,426, 236,702, and 414,442 for the trade-marks QUICKCEM, KERAQUICK, EPO/BOND, KERABOND and ULTRA/COLOR, respectively, while the applicant elected not to file any evidence. The applicant alone filed a written argument and neither party requested an oral hearing.
As no evidence of use of any of its trade-marks has been adduced by the opponent, the opponent has failed to meet the initial burden on it in respect of its section 16 and non-distinctiveness grounds. Likewise, no evidence has been furnished by the opponent in support of its section 30 ground of opposition. As a result, these grounds of opposition are unsuccessful. Thus, the only remaining ground of opposition for consideration is based on paragraph 12(1)(d) of the Trade-marks Act, the opponent alleging that the applicant’s trade-mark QUICK-BOND is not registrable in that it is confusing with its registered trade-marks QUICKCEM, KERAQUICK, EPO/BOND, KERABOND and ULTRA/BOND, registration Nos. 420,848, 277,112, 405,426, 236,702 and 414,442, respectively.
In determining whether there would be a reasonable likelihood of confusion between the applicant’s trade-mark QUICK-BOND and one, or more, of the opponent’s registered trade-marks, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in subsection 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 its trade-mark QUICK-BOND and one, or more, of the opponent’s registered trade-marks as of the date of my decision, the material date in relation to the paragraph 12(1)(d) ground [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37 C.P.R. (3d) 413 (F.C.A.)].
I would note that the opponent has misidentified either the trade-mark or the registration number of the mark which it has identified in its statement of opposition as being the registered trade-mark ULTRA/BOND, registration No. 414,442. Presumably, the opponent had intended to refer to the registered trade-mark ULTRA/COLOR, registration No. 414,442, as the opponent filed a certified copy of this registration as part of its evidence. However, as this aspect of the opponent’s paragraph 12(1)(d) ground is ambiguous and is therefore contrary to paragraph 38(3)(a) of the Trade-marks Act, I have not considered the paragraph 12(1)(d) ground which is based on the registered trade-mark ULTRA/BOND, registration No. 414,442.
As noted above, the opponent has submitted as its evidence certified copies of its registrations, the particulars of which are set out below:
Trade-mark Registration No. Wares
KERAQUICK 277,112 Fast setting thin set mortar for ceramic tile installation.
KERABOND 236,702 Cement glue.
EPO/BOND 404,426 Liant à l'époxy pour le béton ainsi qu'un obturateur de fissure.
QUICKCEM 420,848 Mortier cimenteux à un, deux ou trois composants, à prise et séchage rapide pour ancrer, obturer et réparer le béton et la maçonnerie; mortier polymérique à un, deux ou trois composants, à prise et séchage rapide pour ancrer, obturer et réparer le béton et la maçonnerie.
With respect to the inherent distinctiveness of the trade-marks at issue [para. 6(5)(a)], the applicant’s trade-mark QUICK-BOND possesses relatively little inherent distinctiveness in that the mark is highly suggestive, if not descriptive, when applied to a fast setting mortar adhesive for the installation of ceramic tile. Likewise, the opponent’s registered trade-mark QUICKCEM is highly suggestive when applied to the wares covered in registration No. 420,848 and it too possesses little inherent distinctiveness. On the other hand, the opponent’s registered trade-marks KERAQUICK, KERABOND, and EPO/BOND as applied to the wares covered in these registrations possess some measure of inherent distinctiveness when considered in their entireties despite the descriptive significance of the elements QUICK and BOND which form components of these marks.
As the parties did not submit any evidence of use of their trade-marks, neither the extent to which the trade-marks at issue have become known [para.6(5)(a)] nor the length of time the marks have been in use [para.6(5)(b)] favours either the applicant or the opponent.
Considering next the nature of the wares of the parties [para.6(5)(c)] and the nature of the trade associated with the trade-marks at issue [para.6(5)(d)], it is the applicant’s statement of wares and the statements of wares covered in the opponent’s registrations identified above which must be considered in assessing the likelihood of confusion in relation to the paragraph 12(1)(d) ground [see Mr. Submarine Ltd. v. Amandista Investments Ltd., 19 C.P.R.(3d) 3, at pp.10-11 (F.C.A.); Henkel Kommanditgesellschaft v. Super Dragon, 12 C.P.R.(3d) 110, at p.112 (F.C.A.); and Miss Universe, Inc. v. Dale Bohna, 58 C.P.R.(3d) 38,1 at pp.390-392 (F.C.A.)]. Furthermore, in assessing the likelihood of confusion between trade-marks in respect of a paragraph 12(1)(d) ground, the Registrar must have regard to the channels of trade which would normally be considered as being associated with the wares set forth in the applicant’s application and the opponent’s registrations.
In the present case, the applicant’s “Fast setting latex modified dry set mortar adhesive for the installation of ceramic tile; multi purpose floor and wall tile cement” is similar to the opponent’s “Fast setting thin set mortar for ceramic tile installation” covered in registration No. 277,112 for the trade-mark KERAQUICK and I would expect that the channels of trade associated with these wares could potentially overlap. On the other hand, the applicant’s wares differ specifically from the wares covered in the remaining registrations relied upon by the opponent although the channels of trade associated with the applicant’s mortar adhesive for the installation of ceramic tile could potentially overlap the channels of trade associated with the opponent’s “cement glue” (regn. No. 236,702), its “liant à l'époxy pour le béton” (regn. No. 404,426), as well as its “mortier cimenteux” and “mortier polymérique” (regn. No. 420,848).
As for the degree of resemblance between the trade-marks at issue [para.6(5)(e)], the applicant’s trade-mark QUICK-BOND bears some degree of similarity to the opponent’s registered trade-mark QUICKCEM both in appearance and in sounding but not in the ideas suggested. Further, the applicant’s mark bears only a minor degree of similarity in appearance and in sounding to the opponent’s registered trade-marks KERAQUICK, KERABOND and EPO/BOND and bears no similarity in the ideas suggested to any of these marks.
Having regard to the foregoing and, in particular, to the limited degree of resemblance between the applicant’s trade-mark QUICK-BOND and the opponent’s registered trade-marks KERABOND and EPO/BOND when these marks are considered in their entireties as a matter of immediate impression, and bearing in mind that the applicant’s wares differ from the wares covered in registration Nos. 236,702 and 404,426, I find that there would be no reasonable likelihood of confusion between the applicant’s trade-mark QUICK-BOND and the opponent’s KERABOND and EPO/BOND trade-marks. Further, while the wares covered by the applicant’s trade-mark QUICK-BOND and the opponent’s registered trade-mark KERAQUICK overlap, as would the respective channels of trade associated with these marks, there is relatively little similarity in appearance or in sounding and no similarity in the ideas suggested by these trade-marks when considered in their entireties as a matter of immediate impression. As a result, I find that there would be no reasonable likelihood of confusion between the applicant’s trade-mark QUICK-BOND and the opponent’s registered trade-mark KERAQUICK. Finally, there is some similarity in appearance and in sounding between the applicant’s mark QUICK-BOND and the registered trade-mark QUICKCEM, and there might be a potential overlap in the nature of the trade associated with the wares covered by these marks even though the wares themselves differ. On the other hand, the opponent’s QUICKCEM trade-mark is inherently weak and is therefore entitled to only a narrow ambit of protection. Consequently, I have concluded that there would be no reasonable likelihood of confusion between the applicant’s trade-mark QUICK-BOND and the opponent’s registered trade-mark QUICKCEM.
Having concluded that there would be no reasonable likelihood of confusion between the applicant’s trade-mark and any of the opponent’s registered trade-marks, I have rejected the opponent’s paragraph 12(1)(d) ground of opposition. As a result, and having been delegated by the Registrar of Trade-marks by virtue of subsection 63(3) of the Trade-marks Act, I reject the opponent’s opposition pursuant to subsection 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS 12TH DAY OF DECEMBER, 2001.
G.W. Partington,
Hearing Officer.