IN THE MATTER OF AN OPPOSITION by Keith Johnstone to application No. 630,158 for the trade-mark THEATRESPORTS filed by Wayne Poncia and Sheila Shanahan, trading as Space Jump Productions
On March 20, 1989, Wayne Poncia and Sheila Shanahan, trading as Space Jump Productions, filed an application to register the trade-mark THEATRESPORTS based upon use of the trade-mark in Canada since February 22, 1989 in association with "printed educational publications, namely books and a quarterly newsletter for schools".
The opponent, Keith Johnstone, filed a statement of opposition on October 9, 1990 which was subsequently amended by him pursuant to Rule 42 of the Trade-marks Regulations on March 7, 1991 and March 19, 1992. In his amended statement of opposition of March 19, 1992, the opponent alleged, inter alia, that the applicant's trade-mark is not registrable by virtue of Section 12(1)(d) of the Trade-marks Act in that the applicant's trade-mark is confusing with his registered trade-marks THEATRESPORTS (registration Nos. 278,262 and 394,849). The earlier registration issued March 31, 1983 and covers the "presentation of dramatic works" while the second registration issued February 28, 1992 and covers various educational and teaching services, as well as the following wares: "booklets, handouts, pamphlets, posters, cards, rulebooks; educational materials, namely booklets, handouts, pamphlets, posters, cards, rulebooks; books; newsletters; T-shirts, sweatshirts, tank tops; postcards".
The applicant filed a counter statement and the opponent alone submitted a written argument. Further, neither of the parties filed evidence and neither party requested an oral hearing.
While the opponent's second registration issued subsequent to both the applicant's claimed date of first use and the date of filing of the opponent's opposition, the material date for assessing the Section 12(1)(d) ground of opposition is the date of my decision [see Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. et al, 37 C.P.R. (3d) 413 (F.C.A.)]. Accordingly, both registrations are of relevance to the Section 12(1)(d) ground of opposition. Further, having regard to the wares covered in the second registration, I consider it the more relevant of the opponent's registrations with respect to the Section 12(1)(d) ground. In determining 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 those specifically enumerated in Section 6(5) of the Trade-marks Act. Additionally, 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 the applicant's trade-mark THEATRESPORTS is identical to the opponent's registered trade-mark THEATRESPORTS and as registration No. 394,849 covers "books; newsletters; educational materials", wares which clearly overlap the applicant's "books and a quarterly newsletter for schools", and bearing in mind that the applicant has filed no evidence or argument in support of its application, 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 the trade-marks at issue. As a result, the applicant's trade-mark is not registrable in view of the provisions of Section 12(1)(d) of the Trade-marks Act.
In view of the above, I refuse the applicant's application
pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 30th DAY OF JUNE,1995.
G.W.Partington,
Chairman,
Trade Marks Opposition Board.