Trademark Opposition Board Decisions

IN THE MATTER OF AN OPPOSITION by Modern Houseware Imports Inc. to application No. 1088546 for the trade-mark ON MODERN filed January 9, 2001, by Alta Cultura Inc.                                                       

 

On January 9, 2001, Alta Cultura Inc. (the “Applicant”) filed an application to register the trade-mark ON MODERN based upon proposed use of the mark in Canada by itself and/or through a licensee.  The Applicant claims priority under s. 34 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”) on the ground that an application for registration of the same trade-mark was filed by the Applicant in the United States of America on July 11, 2000, under no. 76/087,812. 

 

The statement of wares and services currently reads:

 

Posters and prints; stationery, namely paper, note cards, envelopes, pads, folders; pencils and pens; bags, namely backpacks, athletic bags, school bags, handbags, tote bags, gift bags; clothing, namely, T-shirts, sweatshirts, caps and scarves.

 

Online retail services in the field of artwork, stationery, books, housewares, gifts, toys, furniture, clothing and other general merchandise; online museum services and information in the field of art, culture and design; online education and distribution of educational materials in the field of art, culture and design; computer services, namely, online greeting cards.

 

 

The application was advertised for opposition purposes in the Trade-marks Journal of November 12, 2003.

 

On April 5, 2004, Modern Houseware Imports Inc. (the “Opponent”) filed a statement of opposition against the application. The Applicant filed and served a counter statement, in which it denied the Opponent’s allegations.

 

The Opponent’s evidence consists of the affidavit of Nazmudin Punjani, Director of Operations for the Opponent. The Applicant’s evidence consists of the affidavit of Jennifer Leah Stecyk, Trade-mark Searcher with the Applicant’s agent, and the affidavit of Savitha Thampi, Student-at-law with the Applicant’s agent.

 

Neither affiant was cross-examined.

 

Both the Applicant and the Opponent filed a written argument.  An oral hearing was conducted at which only the Opponent was represented.

 

Onus

The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act.  There is, however, an initial burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist (see John Labatt Ltd v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D.) at 298; Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.)).

 

Summary of the Opponent’s Evidence

The evidence of the Opponent’s affiant, Mr. Punjani, provides the following information:

• Modern Houseware Imports is a wholesale importer of a wide assortment of houseware and household items, including craft items, stationery items, kitchen utensils and kitchenware;
• since at least as early as 1982, the Opponent has used the trade-marks MODERN and MODERN HOUSEWARES in association with the importation, distribution and sale of houseware and household products in Canada including craft items, stationery items, kitchen utensils, and kitchenware; attached as Exhibit H to Mr. Punjani’s invoice are representative invoices from the Opponent to various retail stores showing the sales of various housewares and household items;
• many of the items imported by the Opponent also bear various trade-marks of the Opponent including MODERNWARE and MODERN;
• the Opponent’s products have been and continue to be sold in retail stores such as Westfair Foods, Army & Navy, Overwaitea, Amy’s Loonie-Toonie Town, and the Great Canadian Dollar Store;
• since at least as early as 2002, the Opponent has used the mark MODERN@HOME in Canada in association with picture frames, hand sanitizers, air fresheners and deodorizers; an example of use of the trade-mark on a picture frame was attached as Exhibit B to the affidavit of Mr. Punjani;
• sales of the Opponent’s products displaying the trade-mark MODERN@HOME were  between $2.5 million and $3.57 million for each of the years between 2000 and 2004;
• since at least as early as 1999 the Opponent has used in Canada the trade-mark MODERNWARE in association with pails, buckets, baskets, wastebaskets, plastic boxes, lunch sets, and plastic shovels; attached as Exhibit C to Mr. Punjani’s affidavit is a plastic container sold by the Opponent in Canada bearing the trade-mark MODERNWARE;
• sales in Canada of the Opponent’s products displaying the MODERNWARE trade-mark were between $7.7 million and $9.6 million between the years 2000 and 2004;
• the Opponent has used and continues to use the trade-mark MODERN in association with envelopes, notebooks, address/telephone books, memo pads, sewing kits and sewing supplies;
• sales in Canada of the Opponent’s products displaying the mark MODERN were between $1.25 million and $2.46 million between 2000 and 2004;
• the Opponent has also used the trade-names MODERN and MODERN HOUSEWARE and/or MODERN HOUSEWARES in association with its business of importing, distributing and selling housewares and household items since as early as 1982. 

 

Summary of the Applicant’s Evidence

Ms. Stecyk, a trade-mark searcher, provides the results of searches that she conducted of the CDNameSearch database on October 25, 2005, compiled from the records of the Canadian Trade-marks Office to locate any active applications and registrations containing the word MODERN.  Attached as Exhibit B to her affidavit is a copy of the report listing the details of the 76 marks which she selected as being the most pertinent marks disclosed by the search.  She states that she selected marks which were used in association with a variety of housewares, craft, paper or household goods or related services. 

 

Ms. Stecyk also provided results of other searches she conducted.  A search of the NUANS database revealed more than 100 listings for corporate, business and trade-names which include the word “modern”. Her search of Canadian telephone listings disclosed 726 listings for businesses with names which contain the word “modern”.   A search of three websites, including www.hbc.ca, www.staples.ca, and www.sears.ca, revealed numerous products advertised for sale with product descriptions that contained reference to the word “modern”.

 

Ms. Thampi, an articling student employed by the Applicant’s agent, conducted searches of various websites to identify products advertised for sale for which product descriptions contain reference to the word “modern”.  She also conducted a Google search to identify websites that reference the words “modern housewares”.

 

Section 12(1)(d) Ground of Opposition

The Opponent has pleaded that the Applicant’s mark is not registrable pursuant to s. 12(1)(d) of the Act because the mark is confusing with the trade-marks MODERN@HOME & Design and MODERNWARE registered in Canada by the Opponent under No. TMA 567, 547 in association with picture frames and under No. TMA 521,933 in association with plastic food storage and microwave containers.

 

The material date with respect to this ground of opposition is the date of my decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks (1991), 37 C.P.R. (3d) 413 (F.C.A.)].

 

The Opponent has met its initial burden because both of its registrations are in good standing.

 

the test for confusion

The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in s. 6(5) of the Act, namely: a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; b) the length of time each has been in use; c) the nature of the wares, services or business; d) the nature of the trade; and e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight.

 

The Supreme Court of Canada has discussed the appropriate process for assessing all the surrounding circumstances to be considered in determining whether two trade-marks are confusing in its decisions in Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 and Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée et al. (2006), 49 C.P.R. (4th) 401. It is with these general principles in mind that I shall now assess all of the surrounding circumstances.

 

s. 6(5)(a) - inherent distinctiveness of the trade-marks and the extent to which each trade-mark has become known

The trade-marks of both parties possess a relatively low degree of inherent distinctiveness as the dominant component of each mark is the word MODERN which is a common dictionary word that connotes an item of contemporary design or appeal.  The Applicant’s mark possesses a slightly greater degree of inherent distinctiveness than the Opponent’s marks because of its unusual grammatical construction.

 

With respect to the extent to which each of the trade-marks have become known, the Opponent has shown significant sales of its products displaying the trade-marks MODERN@HOME and MODERNWARE.  However, as the Opponent has also been selling non-registered wares under these marks (i.e. hand sanitizers, air fresheners and deodorizers under MODERN@HOME; and pails, buckets, waste baskets, baskets and plastics shovels under MODERNWARE), and has not provided a breakdown in sales by product for the registered wares, there is no way of knowing the extent to which the Opponent’s marks have been known or used with the registered wares.   In any event, in view of the volume of sales evidenced by the Opponent, I am prepared to infer that the Opponent’s marks have become known to some extent in Canada.  The Applicant’s mark, on the other hand, has not become known in Canada to any extent.

 

s. 6(5)(b) - the length of time each trade-mark has been in use

The length of time that each mark has been in use favours the Opponent.

 

s. 6(5)(c) and (d) - the nature of the wares, services or business; the nature of the trade

When considering the wares, services and trades of the parties, it is the statement of wares or services in the parties' trade-mark application and registration that govern in respect of the issue of confusion arising under s. 12(1)(d) [Henkel Kommanditgesellschaft auf Aktien v. Super Dragon Import Export Inc. (1986), 12 C.P.R. (3d) 110 (F.C.A.); Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.); Miss Universe Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.)].  However, those statements must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording.  In this regard, evidence of the actual trades of the parties is useful: see the decision in McDonald’s Corporation v. Coffee Hut Stores Ltd. (1996), 68 C.P.R.(3d) 168 at 169 (F.C.A.).

 

The registered wares of the Opponent include picture frames (under its MODERN@HOME and Design trade-mark) and plastic food storage and microwave containers (under its MODERNWARE trade-mark).  I do not find that these wares overlap with the Applicant’s applied for wares.   There is some overlap, however, between the Opponent’s picture frames and the applied for services of the Applicant which include online retail services in the field of housewares and gifts.

 

To the extent that there is some overlap between the wares and part of the Applicant’s services, there could also be overlap in the nature of the trade. The Applicant’s agent submits that the Applicant’s channels of trade are different than the Opponent’s because its housewares and other products are sold online while clients for the Opponent’s wares include retail stores such as Westfair Foods, Army & Navy, Overwaitea, Amy’s Loonie-Toonie Town, and the Great Canadian Dollar Store.    However, although the applied for services are described as online retail services, the Applicant has not restricted its statement of wares to any particular channel of trade and neither has the Opponent.  Some of the Applicant’s wares could therefore be sold through the same stores as the Opponent’s wares.   

 

s. 6(5)(e) - the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them

The resemblance between the marks stem from their common use of the descriptive word “modern”.  It has been previously held that where the shared element between marks is common or descriptive, consumers would be likely to distinguish products sold in association with the shared element by reference to other words or indicia.  It has also been previously held that,  when assessing the likelihood of confusion, the trade-marks at issue must be considered as a whole and not dissected [see, for example Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.)].   In my view, when the marks in issue are considered in their totalities, the marks as a whole are distinguishable from one another visually, aurally and in ideas suggested.

 

further surrounding circumstances

 

state of the register

State of the register evidence is usually introduced to show the commonality of a mark or a portion of a mark in relation to the register as a whole.  Since it is only relevant insofar as one can make inferences from it about the state of the marketplace, it should be comprised of trade-marks which include both the applied for mark or portion of the applied for mark and that are used with wares or services similar to those at issue [(Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432; Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R. (3d) 205 (F.C.T.D.)].  Inferences about the state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located [Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.)].

 

Ms. Stecyk conducted a search based on the word MODERN and attached a copy of the report listing the details of the 76 marks which she considered the most relevant.  A number of references are pending applications that are not particularly relevant given that they may be opposed or based on proposed use.   Further, two of the marks belong to the Opponent, one is the Applicant’s present application and many are for wares that are quite different from those at issue.  Nevertheless, the search results do reveal about 16 or so relevant third party registrations for MODERN marks.   The registrations that are relevant, however, cover a variety of wares ranging from stationery to furniture to clothing, as does the applied for mark.  This number of relevant marks for such a variety of wares is insufficient to enable me to infer that the mark MODERN is broadly used in the marketplace in association with all of the wares at issue.  However, in view that 10 of the 16 relevant registrations are for clothing wares, I am prepared to infer that at least some of these marks were in use and that consumers are to some extent used to seeing marks which include the component MODERN in association with clothing wares.

 

Ms. Thampi’s evidence demonstrates that the words “modern housewares” often appear on the Internet, her search locating 1400 sites containing this term.  Her evidence also shows over 100 product descriptions which contain reference to the word “modern” in association with wares related to those at issue on the following websites: www.hbc.com, www.staples.ca and www.sears.ca.  Although this type of evidence does have evidentiary limitations, it does serve to show that the word “modern” is commonly used as a descriptive term by retail stores to describe housewares and other items.  It also underscores the non-distinctiveness of the word “modern” as a component of the marks at issue.

 

conclusion re likelihood of confusion

In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. Even though the Opponent’s marks have become known to some extent in Canada, the differences between the parties’ marks, wares and services make it seem unlikely that the typical consumer of the Opponent’s MODERN@HOME and MODERNWARE picture frames and plastic food storage and microwave containers would think that the Applicant’s ON MODERN wares and services emanate from the Opponent. The s. 12(1)(d) ground is accordingly dismissed.

 

Section 16(3)(a) Ground of Opposition

Once again, the test for confusion must be applied.  Under s.6(5)(a), neither of the marks are inherently strong because they each contain the ordinary dictionary word “modern”, which is also descriptive of many of the wares at issue.  The extent to which the Opponent’s mark has become known in Canada favours the Opponent as the Opponent has shown extensive use of its mark throughout Canada.  The length of time the marks have been in use (s. 6(5)(b)), also favours the Opponent as it has shown use of its mark since at least as early as 2000 while the Applicant’s mark is based on proposed use in Canada. 

 

As for the nature of the parties’ wares, services and trades, although the Opponent claimed in its statement of opposition that its mark had been used in association with various craft materials and toys and “other wares”, use of the marks was shown in association with envelopes, notebooks, address/telephone books, memo pads, sewing kits and sewing supplies.  While some of these wares of the Opponent (and their channels of trade) would likely overlap with the Applicant’s stationery wares, they would not likely overlap with the other applied for wares.   

 

Both the Applicant and the Opponent also offer services related to the sale of housewares.  However, as pointed out by the Applicant, the parties’ channels of trades appear to be quite different.   In this regard, the Applicant’s applied for services are restricted to online retail services while the Opponent’s evidence shows that it distributes and sells its housewares and other items in inexpensive retail stores such as dollar stores. 

 

Considering next s. 6(5)(e) of the Act, there is a high degree of resemblance visually, aurally and in ideas suggested between the Opponent’s mark and the applied for mark ON MODERN in that the Applicant’s mark includes the Opponent’s MODERN mark in its entirety. 

 

With respect to the Applicant’s state of the register and marketplace evidence, although it was a relevant surrounding circumstance under the s.12(1)(d) ground, I am not giving it much weight under this ground since the searches were conducted after the material date for this ground of opposition, and many of the relevant registered marks had not issued to registration before the material date.

 

At the oral hearing, the Opponent’s agent submitted that I had no authority to render a split decision.  In doing so, he referred to s. 38(8) of the Act where it states that after considering the evidence and representations of the parties, the Registrar shall refuse the application or reject the opposition. 

 

While the authority to render a split decision may not be expressly stated in the Act, the Board has found the authority for such a divided result in the jurisprudence (see Produits Menagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf GmbH (1986), 10 C.P.R. (3d) 482 at 492 (F.C.T.D.) (“Coronet-Werke”)).    In arriving at its decision to allow the registration in part, Justice Teitelbaum stated the following at p.490:

 

“I believe Coronet-Werke wrong when it states that the entire application for registration of Produits Ménagers must be disallowed if it is found that some of the items are in conflict with the registered mark of Coronet-Werke.  The application can be allowed for registration in part, those items in conflict or that may cause confusion can be disallowed, the balance can and should be registered.  This principle was followed in Interlego A.G. v. Mego Corp. (1978), 46 C.P.R. (2d) 198 at p. 201 and Canadian Pacific Express Ltd. v. Canpark Services Ltd. – Les Services Canpark Ltée (1982), 75 C.P.R. (2d) 182 at pp. 189-190.”

 

As was the case in the Coronet-Werke decision, not all of the Applicant’s wares and services in the present case are in conflict with those of the Opponent.  Further, given the non-distinctiveness of the word “modern” as a component of the marks at issue in the present case, I consider that it would be inappropriate to accord such a wide scope of protection to the Opponent’s mark to not allow those applied for wares and services that would not likely cause confusion with the Opponent’s mark.   

 

In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my conclusions above, and particularly in view of the extent to which the Opponent’s MODERN mark has become known, the resemblance between the Opponent’s MODERN mark and the applied for mark and the potential overlap in some of the wares and services of the parties, I find that the Applicant has failed to satisfy the onus on it to show that its mark is not likely to be confused with the Opponent’s MODERN mark in respect of the following wares: stationery, namely paper, note cards, envelopes, pads, folders; and the following services: Online retail services in the field of stationery, housewares, and other general merchandise.

 

On the other hand, given the differences in the nature of the wares, services and trades between the remaining wares and services of the Applicant and the Opponent’s wares, services and trades, I find that the Applicant has satisfied its onus to show that, on a balance of probabilities, confusion between the Opponent’s MODERN mark and the Applicant’s applied for mark as it applies to these particular wares and services is unlikely.   Thus, the s. 16(3)(a) ground is successful in part.

Section 16(3)(c) Ground of Opposition

 

Overall, the s. 16(1)(c) ground succeeds in part with respect to the Opponent’s marks for reasons similar to those set out above in my discussion of the s. 16(3)(a) ground of opposition.

 

Distinctiveness Ground of Opposition

The Opponent has pleaded that the Mark is not distinctive “having regard to the use in Canada by others of the trade-marks and trade-names referred to above.”  However, in its written argument, the Opponent refers to the Applicant’s mark being not distinctive having regard to the use in Canada by the Opponent of the above noted trade-marks and trade-names. 

 

It is clear from the Applicant’s counter statement that the Applicant understood that the Opponent intended this ground to refer to use of the above noted trade-marks and trade-names in Canada by others, including the Opponent.   It is also clear that the Opponent intended to include its use of the above noted marks and names under this ground when the evidence is considered in conjunction with the pleadings.

 

In order to meet its evidential burden with respect to this ground, the Opponent must show that as of the filing of the opposition (i.e. April 5, 2004) its marks and/or names had become known sufficiently to negate the distinctiveness of the Mark [Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 at 58 (F.C.T.D.); Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.); and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 412 at 424 (F.C.A.)]. Mr. Punjani’s evidence satisfies the Opponent’s initial burden.

 

Section 30(i) Ground of Opposition

The fifth ground does not raise a proper ground of opposition.  The mere fact that the Applicant may have known of the Opponent’s prior rights in the trade-marks and trade-names does not, by itself, preclude the Applicant from honestly making the statement in its application required by Section 30(i) of the Act.  Thus, this ground is unsuccessful.

 

Disposition

Stationery, namely paper, note cards, envelopes, pads, folders;

 

Online retail services in the field of stationery, housewares, and other general merchandise;

 

DATED AT Gatineau, Quebec, THIS  22nd  DAY OF April, 2008.

 

 

Cindy Folz

Member

Trade-marks Opposition Board