IN THE MATTER OF AN OPPOSITION
by Automobile Club de l'Ouest de La France (ACO)
to application No. 566,969
for the mark LEMANS
filed by Bridgestone/Firestone, Inc.
(formerly The Firestone Tire & Rubber Company)
On July 29, 1986, the applicant, Bridgestone/Firestone, Inc. (under its former name The Firestone Tire & Rubber Company), filed an application to register the trade-mark LEMANS based on use of the mark in Canada in association with "vehicle tires" since at least as early as June 30, 1985. The application was advertised for opposition purposes on December 31, 1986, and opposed by Automobile Club de l'Ouest de La France (ACO) (hereinafter "ACO") on April 21, 1987. A copy of the statement of opposition was forwarded to the applicant on May 14, 1987.
The grounds of opposition, as originally pleaded, are summarized below:
(a) the applied for mark LEMANS is not registrable, pursuant to Section 12(1)(b) of the Trade-marks Act, because the mark LEMANS is clearly descriptive or deceptively misdescriptive in the English or French language, of
(i) the nature or the quality of the wares in association with which the mark is used. The average consumer would conclude that the applicant's wares are suitable for car racing or modelled after tires made for car racing;
(ii) the place of origin of the wares. The average consumer would assume that the applicant's automobile tires originate in the city of Le Mans in France;
(b) the applicant is not the person entitled to registration, pursuant to Section 16(1)(a), because at the date when the applicant first used its mark in Canada, it was confusing with the opponent's marks namely LE MANS, LE MANS & Design, and LES 24 HEURES DU MANS previously made known in Canada in association with automobiles, automobile accessories, and tires;
(c) the applied for mark LE MANS is not distinctive, pursuant to Sections 2 and 38(2)(d), because of its resemblance to the opponent's marks.
The opponent subsequently requested, and was granted, leave to amend grounds (b) and (c) above to additionally rely on ACO's services, namely "organisation de courses automobiles" (see the Board's rulings dated August 21 and October 30, 1992 concerning leave to amend).
There is no evidence that the mark LE MANS & Design has acquired any reputation in Canada, and I will not be making any further references to it. For convenience, I will refer to the opponent's two marks LE MANS and LES 24 HEURES DU MANS as the opponent's LE MANS marks. In this regard, the evidence shows that the marks LE MANS and LES 24 HEURES DU MANS are "twin" terms used interchangeably to identify a car race that has been held annually since 1923 in Le Mans, France.
The applicant served and filed a counter statement effectively denying all of the allegations in the statement of opposition.
The opponent defaulted in filing evidence (pursuant to Rule 43 of the Trade-marks Regulations) in support of its opposition; however, the opponent was granted leave to file its evidence pursuant to Rule 46(1). The opponent's evidence consists of the statutory declarations of Jean-Pierre Moreau, "Directeur Général Sports" of ACO, and Lorraine King, Manager, Canadian Member Services of the Audit Bureau of Circulation.
The applicant's evidence consists of the affidavit of D.A. Thomas, Assistant Secretary of the applicant company. Mr. Thomas and Mr. Moreau were cross-examined on their evidence; their transcripts of cross-examination, as well as their answers to undertakings given at cross-examination, form part of the record herein. The opponent filed the affidavit of Robert W. Sterling, trade-mark agent, as its reply evidence.
Both parties filed written arguments and both parties were represented at an oral hearing.
During the evidence stage of the proceedings, the applicant objected that certain of the undertakings provided by Mr. Moreau went beyond the information requested at cross-examination, and that the opponent was attempting to improperly introduce further evidence in support of its opposition. The Board followed its customary practice and left rulings on evidential matters for the decision stage: in this regard, see the Board letter dated July 23, 1990, and Practice Notice - Procedure Before The Trade-marks Opposition Board.
In my view, the applicant's above mentioned objection should be sustained. Portions of the "answers" provided by Mr. Moreau are confirmatory of ACO's case and offend against the rule that a plaintiff may not split its case: see Bombardier Ltd. v. Restrictive Trade Practices Com'n. (1980), 48 C.P.R.(2d) 248 at p. 257 (F.C.T.D.). Accordingly, I have not had any regard to Mr. Moreau's answers to undertakings Nos. 1 and 5 in so far as those answers (and accompanying exhibits) exceed the information requested by the applicant. In particular, the relevant answer to undertaking No. 1 is that there are no Canadian members of the ACO organization, and the relevant answer to undertaking No. 5 is that statistics are not available to establish the Canadian television audience for the LE MANS car race, or for television news or television sports reports of the race, for the years 1981 to 1990.
I will first consider the ground of opposition pursuant to Section 16(1)(a), denoted by (b) above. The opponent is not alleging it used its LE MANS marks in Canada, but only that its marks were made known in Canada. In this regard, the opponent ACO must demonstrate that its LE MANS marks have been "made known" in Canada as provided for in Section 5, shown below:
In other words, the opponent is obliged, as a matter of law, to show that its mark had been "made known" and had become "well known" by the specific means set out in Section 5: see Valle's Steak House v. Tessier (1980), 49 C.P.R.(2d) 218 at pp. 224-5 (F.C.T.D.), and see Motel 6 Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R.(2d) 44 at p. 56 (F.C.T.D.). It follows that a mark which becomes well known in Canada by means of word of mouth, or through newspaper or magazine articles (as opposed to advertising) is not a mark that has been "made known" in Canada within the meaning of Section 5: see Motel 6, above, at page 59, where this distinction is made.
I infer from the opponent's evidence that a fair number of Canadians would have been informed of the LE MANS race through articles appearing in the magazines Motor Trend, Road and Track, and Sports Illustrated between June, 1985 and November 1987: see exhibits P-27, P-28, P-31, P-33, and P-40 attached to Mr. Moreau's declaration, and see magazine circulation figures provided by Lorraine King in her declaration. However, reports on the LE MANS race in magazine articles do not qualify as advertising. Even if such articles could be considered as advertising, they are insufficient to establish that the LE MANS marks were well known in Canada by the material date June 30, 1985 (the date of first use claimed for the applicant's mark LEMANS). In this regard, of five articles appearing in the above mentioned magazines, three articles appeared well after the material date (two articles appeared in May and October, 1986, and one article appeared in November, 1987). In view of the above, the opponent has not established that its LE MANS marks were made known in Canada within the meaning of Section 5. Accordingly, there is no support for the ground of opposition alleging that the applicant is not entitled to registration.
The third ground of opposition is that the applied for mark is not distinctive of the applicant's wares namely vehicle tires. The material time to consider the circumstances respecting the issue of distinctiveness is as of the filing of the opposition, in this case April 21, 1987: see Faber-Castell Canada Inc. v. Dixon Ticonderoga Inc. (1992) 41 C.P.R.(3d) 284 at p. 287 (TMOB).
As noted in Motel 6, above, at page 58:
"A trade mark can neither distinguish nor
be adapted to distinguish the services of
a person if another person has used the
mark in a foreign country and it has become
known in Canada as the latter's mark in
respect of similar services. On the issue
of lack of distinctiveness of a mark,
although it must be shown that the rival
or opposing mark must be known to some
extent at least, it is not necessary to show
that it is well known or that it has been
made known solely by the restricted means
provided for in s. 5, supra. It is
sufficient to establish that the other mark
has become known sufficiently to
negate the distinctiveness of the mark
under attack."
All relevant evidence which tends to establish non-distinctiveness may be considered. In other words, the opponent may rely on magazine articles to establish that its LE MANS marks acquired a reputation in Canada. In this regard, there is no suggestion that the opponent set out to enhance the reputation of its marks by influencing the extent of magazine coverage for the LE MANS race held in France. Further, I am permitted to take into account evidence of circumstances between the applicant's claimed date of first use (June 30, 1985) and the material date April 21, 1987: see Castle & Cooke, Inc. v. Popsicle Industries Ltd. (1990), 30 C.P.R.(3d) 158 (TMOB). I would also add that the opponent ACO must necessarily rely on the reputation of the LE MANS car race since there is no evidence supporting the opponent's initial pleadings that its LE MANS marks acquired a reputation in Canada in association with automobiles, automobile accessories, and tires.
In view of the opponent's evidence of articles reporting on the LE MANS race in magazines having substantial circulation in Canada, I am satisfied that the opponent's two marks LES 24 HEURES DU MANS and LE MANS had become known in Canada, by the material date April 21, 1987, at least to the extent necessary to support the ground of opposition alleging non-distinctiveness of the applied for mark. I do not accept the opponent's allegations that its LE MANS marks are well known in Canada. In this respect, I find that Mr. Moreau's evidence is deficient in establishing any significant Canadian television audience for the annual LE MANS race; further, it is clear from Mr. Moreau's transcript of cross-examination (see pp. 46-48) that Mr. Moreau does not have personal knowledge of the extent of the Canadian public's familiarity with the LE MANS race.
Nevertheless, the opponent's evidence establishes that at the material date April 21, 1987, a fair number of Canadians were aware of the LE MANS automobile race, and that it is a twenty four hour endurance race testing both the driver and the vehicle. Further, the magazine articles evidenced by the opponent, and to a limited extent encyclopaedia references provided by opponent's counsel at the oral hearing (in regard to considering encyclopaedia references see Scottish Cashmere Assn. v. V. Fraas Mfg. Inc. (1988), 22 C.P.R.(3d) 185 at 187 (TMOB)), illustrate the connection between the LE MANS race and innovative, or prototype, automobile technology.
The relevant part of the applicant's evidence is that its sales in Canada for LEMANS vehicle tires for the fiscal years (November 1 to October 31) 1985, 1986 and 1987 were about $7,000, $214,000, and $156,500 respectively, representing about 160 units, 4530 units, and 3,520 units, respectively. I assume that all of the above sales are for automobile tires, although that is not explicit in the evidence.
Having regard to the above, and noting in particular that a fair number of Canadians would be familiar, to some extent, with the LE MANS race and its connection with automobile technology, and noting that the applied for mark LEMANS is almost identical to the opponent's mark LE MANS, I am in a state of doubt whether the typical Canadian purchaser of a car tire sold under the mark LEMANS would likely assume that the tire was approved or licensed or sponsored by the opponent: see Glenn-Warren Productions Ltd. v. Gertex Hosiery Ltd. (1990), 29 C.P.R.(3d) 7 at p. 12 (F.C.T.D.). Since I am unable to reach a determinative conclusion regarding the distinctiveness of the applied for mark, it follows that the issue must be decided against the applicant: see Joseph E. Seagram & Sons v. Seagram Real Estate Ltd. (1984), 3 C.P.R.(3d) 325 at pp. 329-30 (TMOB), and see John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R.(3d) 293 at pp. 297-300 (F.C.T.D.).
As the opponent has succeeded on the ground of opposition alleging non-distinctiveness, I need not consider the remaining grounds of opposition.
In view of the above, the applicant's application is refused.
DATED AT HULL, QUEBEC, THIS 31st DAY OF January, 1994.
Myer Herzig,
Member,
Trade-marks Opposition Board