LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2016 TMOB 13
Date of Decision: 2016-01-26
IN THE MATTER OF AN OPPOSITION
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Benisti Import-Export Inc. |
Opponent |
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and |
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Pirelli & C. S.p.A. |
Applicant |
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1,518,895
for P ZEROTEMPO |
Application |
I Introduction
[1] The Applicant has filed an application to register the trade-mark P ZEROTEMPO (the Mark). The application is based upon proposed use of the Mark in Canada and it covers watches, clocks and costume jewelry.
[2] The Opponent is the owner of registrations for the trade-marks: P ZERO (TMA786,620); POINT ZERO (TMA309,311); POINT ZERO (TMA800,971); POINT ZERO LUXURY (TMA693,470); and Stylized letter P and an oval dot in a rectangle with the words POINTZERO (TMA695,670). In addition, the Opponent is the owner of an application for the trade-mark Patch with oval shape and rectangular shaped top (no. 1, 472,367), which also contains the words POINT ZERO.
[3] The Opponent’s application and registrations cover a range of goods and services, including clothing, watches and jewellery. The particulars for the Opponent’s application and registrations are set out in Schedule “A” attached hereto.
[4] At issue in this proceeding is whether there is a likelihood of confusion between the parties’ trade-marks. For reasons that follow, I have concluded that there is not.
[5] The opposition is therefore rejected.
II File History
[6] The application for the Mark was filed on March 14, 2011.
[7] It was advertised for opposition purposes in the Trade-marks Journal of October 19, 2011 and on March 19, 2012, the Opponent opposed it under section 38 of the Trade-marks Act, RSC 1985, c T-13 (the Act). The grounds of opposition are based upon sections 30(e), 30(h), 30(i), 12(1)(d), 16(3)(a), 16(3)(b), 16(3)(c) and 2 (distinctiveness) of the Act.
[8] The Applicant filed a counterstatement on May 17, 2012, denying each of the allegations set out in the statement of opposition.
[9] As evidence in support of its opposition, the Opponent filed the affidavit of Mario Morellato, sworn December 17, 2012 (the Morellato affidavit). Mr. Morellato was cross-examined and the transcript of his cross-examination has been made of record.
[10] As evidence in support of its application, the Applicant filed the affidavit of Patrick Balzamo, sworn December 18, 2013 (the Balzamo affidavit). Mr. Balzamo was not cross-examined.
[11] Both parties filed a written argument and attended a hearing that was held on September 1, 2015.
III Onus
[12] The Applicant bears the legal onus of establishing on a balance of probabilities that its application complies with the requirements of the Act. However, there is an initial evidential 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 [John Labatt Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298].
IV Evidence
[13] At the outset, I wish to note that in its written argument, the Applicant objected to some of the contents of paragraphs 7 to 11 of Mr. Morellato’s affidavit as being hearsay. The Applicant pointed out that on cross-examination, Mr. Morellato acknowledged that he obtained the information for his affidavit from employees of the Opponent and from the Opponent’s licensees [Q’s 42-43]. Paragraphs 7 to 11 of Mr. Morellato’s affidavits essentially consist of general statements regarding the promotion and use of the Opponent’s trade-marks in Canada and elsewhere. Potential hearsay issues aside, given my overall findings with respect to other deficiencies in Mr. Morellato’s evidence (as discussed in detail below), I do not consider the statements made in these paragraphs to be of much assistance to the Opponent.
IV.1 Opponent’s Evidence
Morellato Affidavit
[14] The Opponent’s evidence consists of the Morellato affidavit. Mr. Morellato is the Vice-President Commercial Credit of the Opponent [para 1]. In paragraphs 2-6, Mr. Morellato provides details pertaining to the Opponent’s trade-marks (including dates of first use) which are the subject of registration Nos. TMA786,620, TMA309,311, TMA800,971, TMA693,470 and TMA695,670, and for the Opponent’s application No. 1, 472,367. Attached as Exhibits A to D of his affidavit are copies of the particulars for the Opponent’s application and registrations.
[15] According to Mr. Morellato, the Opponent manufactures, imports and distributes garments, in particular, coats, jackets, shirts, sweaters and pants under the trade-marks P ZERO and POINT ZERO, as well as the other trade-marks referred to in his affidavit, across Canada and exports to many countries, including the United States [para 7].
[16] In paragraph 8, Mr. Morellato states that the Opponent also uses the trade-marks P ZERO and POINT ZERO “with respect to watches sold across Canada”. However, I note that during cross-examination, Mr. Morellato clarified that the logo as shown in Exhibit “F” (the same or a similar logo to that which is the subject of trade-mark in registration No. TMA695,670) is what actually appears on the Opponent’s watches and he was unable to confirm whether the words P ZERO have actually ever appeared on watches [Morellato transcript, Q’s 128-141].
[17] In paragraph 9, Mr. Morellato states that garments bearing the trade-marks P ZERO and POINT ZERO are sold and advertised in many countries in the world, including Australia, Canada, the United States, Europe, South America and the Middle East. In paragraph 10, he states that the Opponent sells its goods bearing the trade-marks P ZERO, POINT ZERO and the other trade-marks referred to in his affidavit throughout Canada. In paragraph 11, Mr. Morellato states that the Opponent has advertised and marketed its goods bearing P ZERO, POINT ZERO and the other trade-marks referred to in his affidavit, extensively and continuously throughout Canada. Notably, Mr. Morellato has not provided any sales figures for Canada or elsewhere for goods sold in association with any of the Opponent’s trade-marks. Likewise, no advertising expenditures have been provided.
[18] According to Mr. Morellato, the Opponent advertises its trade-marks in magazines and on billboards throughout Canada. Attached as Exhibit E to his affidavit are photographs of such advertisements with their description and location indicated thereon [para 12].
[19] It is not clear in all cases whether the photographs attached as Exhibit E are advertisements which appeared in magazines or on billboards, as some of them are unmarked and Mr. Morellato does not provide any clarification in this regard in his affidavit. The advertisements which are unmarked show the Opponent’s trade-marks POINT ZERO, P ZERO and/or a logo similar to that which appears in the trade-mark which is the subject of the Opponent’s registration No. TMA695,670. While most of the unmarked photographs look as though they may be magazine advertisements, others look as though they might actually be hangtags. In any event, no circulation dates or information or distribution figures have been provided for most of the unmarked advertisements which form part of Exhibit E.
[20] The marked billboard advertisements in Exhibit E appear to have been on display for brief periods of time at various geographic locations, some of which are Canadian (e.g. Montreal, Québec City, Toronto, “200 major malls across Canada, except Province of Quebec, and out West”, etc.). In some cases it is unclear where the advertisements were displayed. For example, one of the press releases attached as Exhibit E simply says “this creative will display on bus in Ontario” and no further details have been provided by Mr. Morellato in his affidavit. The bulk of the advertisements show the trade-marks POINT ZERO and/or the logo which is the subject of the Opponent’s registration No. TMA695,670 or a similar logo. No advertisements showing any of the Opponent’s trade-marks beyond 2006 have been provided in Exhibit E.
[21] Attached as Exhibit F, are extracts of advertisements of watches in the Opponent’s catalogues for Spring/Summer 2010, Fall/Winter 2010 and Fall/Winter 2011 [para 13]. The advertisements show photographs of watches bearing the trade-marks POINT ZERO and the logo which is the subject of the Opponent’s registration No. TMA695,670. No circulation or distribution information has been provided for the catalogues.
[22] Attached as Exhibit G are photographs of part of the Opponent’s collection of watches Attached as Exhibit H is a copy of a past catalogue of the Opponent’s collection of watches. The trade-mark POINT ZERO appears on the packaging for the watches shown in Exhibit G, as well as on the watches themselves. No circulation information has been provided for the catalogue shown in Exhibit H.
[23] According to Mr. Morellato, the Opponent’s watches are sold and distributed throughout Canada through a license granted to the company Kwartz XXI Int’l Imports Inc. Attached as Exhibit I is an extract of the license agreement for use of the trade-mark POINT ZERO by the Opponent’s licensee [para 16]. Attached as Exhibit J is a purchase order and invoice, which according to Mr. Morellato, are for the sale of watches bearing the trademark Point Zero. The purchase order and invoice date back to 2001 [para 17]. The invoice makes reference to POINT ZERO watches and the purchase order indicates that a quantity of 3 watches was sold.
[24] Attached as Exhibit K is a photograph of a jacket sold by the Opponent which Mr. Morellato states bears the trade-mark P Zero, along with accompanying hang tags and an invoice for its sale. The invoice is dated January 31, 2012. The trade-mark appearing on the jacket is P-ZERO and the hang tag features the trade-mark POINT ZERO, as well as the design trade-mark which is the subject of registration No. TMA695,670.
[25] In paragraph 19, Mr. Morellato states that the Opponent promotes its trade-marks and goods through its website. However, he does not indicate how long it has been doing so, nor does he provide any information with respect to the extent to which the website has been accessed by Canadians.
[26] In paragraph 20, Mr. Morellato states that the Opponent’s extensive and continuous sales and advertising and wide range of garments and fashion accessories have contributed to the well-known reputation and distinctiveness of P ZERO, POINT ZERO and the other trade-marks referred to in his affidavit. I am of the view that this statement is not supported by the evidence.
[27] While Morellato states in paragraph 2 of his affidavit that the trade-mark P ZERO has been in use since at least January 1, 2002 in association with watches and numerous other goods, he has not provided any sales figures and none of the photographs which he has provided show use of this trade-mark in association with watches. In addition, although Mr. Morellato has provided some examples of advertisements for this mark [Exhibit E], there is no indication as to which magazines the advertisements appeared in (if they were in fact magazine advertisements – as mentioned previously, some look as though they might possibly be hangtags), how widely they were circulated and in some cases, when they were featured. Moreover, as previously noted, during cross-examination, Mr. Morellato admitted that he wasn’t sure whether the word mark P ZERO has ever appeared on watches [Morellato transcript Q’s 128-141].
[28] The only evidence of use of the trade-mark P ZERO that the Opponent could point to at the hearing was that which was shown in Exhibit K (i.e. the photograph of a jacket sold in January 2012 and the accompanying hangtag and invoice for its sale). Notably, this evidence post-dates the material date for the Opponent’s non-entitlement grounds of opposition.
[29] In view of the foregoing, contrary to the assertions made by Mr. Morellato in paragraph 20 of his affidavit, I am of the view that the Opponent has not established extensive or continuous sales or advertising of the Opponent’s P ZERO trade-mark. Overall, I find that the Opponent has failed to establish any significant reputation in its P ZERO trade-mark for watches or for any other goods.
[30] With respect to the Opponent’s POINT ZERO trade-marks, I note that Mr. Morellato has provided some photographs showing use of this trade-mark in association with watches (Exhibit G). In addition, Exhibits E contains examples of advertisements for this particular trade-mark for clothing and various other goods. Although no information has been provided with respect to how many Canadians would likely have been exposed to the billboard advertisements, in view of the fact they appear to have been displayed in major cities and shopping malls in Canada, I am prepared to infer that Canadians would have had at least some exposure to them.
[31] Notably, the advertisements in Exhibit E only appear to have been on display during specific brief periods of time up until 2006. While the Opponent’s catalogues in Exhibit F appear to be more recent (2010/2011) and also show watches bearing the trade-mark POINT ZERO, Mr. Morellato has not provided any information regarding how or where the Opponent’s catalogues are distributed or indicated the extent to which they were circulated within Canada. This information is also missing with respect to the catalogue in Exhibit H and it is also undated. Information pertaining to advertising on the Opponent’s website is similarly lacking in detail.
[32] As mentioned previously, Mr. Morellato has also not provided any annual sales figures for goods sold in association with any of the Opponent’s trade-marks and only two invoices have been provided (Exhibit J, dated 2001 and Exhibit K, dated 2012), leaving a large gap in evidence pertaining to sales.
[33] Based upon the evidence before me, I find it reasonable to conclude that the Opponent would have acquired at least some reputation in POINT ZERO over various years. However, in view of the lack of detail which has been provided regarding the Opponent’s advertising (i.e. no advertising expenditures, gaps in time and in some cases, insufficient information pertaining to circulation), and in the absence of any sales figures or more representative examples of invoices and/or purchase orders for the Opponent’s goods which might enable me to draw some more meaningful inferences with respect to the extent to which POINT ZERO has been used, I am not prepared to conclude that the Opponent has shown continuous use of its POINT ZERO trade-marks or that it has acquired a significant or substantial reputation in association with them.
[34] The evidence regarding promotion and use of the trade-mark which is the subject of registration No. TMA695,670 for Stylized letter P and an oval dot in a rectangle with the words POINT ZERO is even more scant. More often than not, a different version of this mark consisting of only the P, the oval and the dot portion (without the words POINT ZERO or the rectangular border design), appears in the examples of the Opponent’s advertising. The only evidence of use of this mark is on the hang tag for the jacket shown in Exhibit “K”.
[35] Insofar as the trade-mark POINT ZERO LUXURY is concerned, I note that aside from stating that the Opponent owns the mark in paragraph 5 of his affidavit, Mr. Morellato does not make any specific reference to this mark in his affidavit and it does not appear in any of the exhibits attached to his affidavit.
[36] Finally, I note that Mr. Morellato’s affidavit is silent with respect to any trade-name use.
IV.2 Applicant’s Evidence
Balzamo Affidavit
[37] Mr. Balzamo is a research analyst for Thomson CompuMark [para 1]. His affidavit contains the results of two “common law plus dilution” searches which he performed to identify third-party businesses that use a trade-name, company name or trade-mark that incorporates the terms ZERO or P, as well as third party websites that use a trade-mark that incorporates the terms ZERO or P in association with watches, clocks and jewelry [paras 2-4, 6-8, Exhibits PB-1-PB-3].
[38] Attached as Exhibit PB-1 to Mr. Balzamo’s affidavit are the results of the search for ZERO. A number of third-party businesses and websites that use a trade-mark or trade-name incorporating the term ZERO in association with watches, clocks and/or jewelry were located. Notably, the websites do not all appear to be Canadian.
[39] Attached as Exhibit PB-3 to Mr. Balzamo’s affidavit are the results of the search for P. This search also identified a number of third-party businesses and websites that use a trade-name or trade-mark incorporating the letter P, in association with watches, clocks, and/or jewelry. Again, not all of the websites appear to be Canadian.
[40] Attached as Exhibit PB-2 is a list of the specific Canadian and web common law sources and business name registers that Mr. Balzamo consulted in conducting his searches.
[41] In its written argument, the Applicant identified 7 different third parties from Mr. Balzamo’s searches that appear to sell watches, clocks and/or jewelry in association with trade-marks or trade-names which feature the term ZERO and 5 different parties that appear to do so in association with trade-marks or trade-names which feature the letter P. Notably, none of the trade-names and trade-marks identified by the Applicant appear to incorporate both the terms ZERO and P. In addition, many of them are quite different from the parties’ trade-marks and few are Canadian.
V Analysis of Grounds of Opposition
V.1 Grounds of Opposition Summarily Dismissed
Non-compliance – Sections 30(e), 30(h) and 30(i)
[42] In its statement of opposition, the Opponent raised grounds of opposition under sections 30(e), 30(h) and 30(i) of the Act. In its written argument, the Opponent addressed only part of one of these grounds (section 30(i)), and it did not do so in any detail. At the hearing, the Opponent’s agent informed me that he did not intend to make any representations about any of these grounds and the evidence of record cannot support them. Consequently, they are all dismissed.
[43] Accordingly, the only grounds of opposition to be discussed hereinafter are those based on sections 12(1)(d), 16(3)(a), 16(3)(b), 16(3)(c) and 2 (distinctiveness) of the Act.
V.2 Analysis of Remaining Grounds of Opposition
Non-registrability - Section 12(1)(d)
[44] The Opponent has pleaded that the Mark is not registrable because it is confusing with its trade-marks: P ZERO (TMA786,620); POINT ZERO (TMA309,311); POINT ZERO (TMA800,971); POINT ZERO LUXURY (TMA693,470); and Stylized letter P and an oval dot in a rectangle with the words POINT ZERO (TMA695,670).
[45] The material date to assess a section 12(1)(d) ground of opposition is the date of my decision [Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trade Marks (1991), 37 CPR (3d) 413 (FCA)].
[46] The Opponent has filed copies of the particulars for its registrations as evidence. I have exercised my discretion to check the register to confirm whether they are extant and I note that the Opponent’s registration for P ZERO (No. TMA786,620) has been expunged. [Quaker Oats Co of Canada v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)].
[47] The Opponent has therefore only met its initial burden with respect to this ground in relation to its remaining four registrations (Nos. TMA309,311 for POINT ZERO, TMA800,971 for POINT ZERO, TMA693,470 for POINT ZERO LUXURY and TMA695,670 for Stylized letter P and an oval dot in a rectangle with the words POINT ZERO) and the Applicant must establish on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and these trade-marks.
Test for Confusion
[48] 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 goods or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.
[49] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 6(5) of the Act, namely: (a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; (b) the length of time each has been in use; (c) the nature of the goods, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight [Mattel, Inc v 3894207 Canada Inc (2006), 49 CPR (4th) 321 (SCC) and Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC)].
Section 6(5)(a) – the inherent distinctiveness and the extent to which the marks have become known
[50] The parties’ trade-marks possess some degree of inherent distinctiveness, as they all incorporate elements which do not have any readily apparent significance in relation to their associated goods or services.
[51] The distinctiveness of a trade-mark may be further increased through promotion or use.
[52] In this case, the Applicant has not filed any evidence to establish that the Mark has become known to any extent. While the Opponent has filed evidence of promotion and/or use of some of its registered trade-marks, its evidence is lacking in many respects.
[53] As previously discussed, based upon the evidence before me, I am able to conclude that POINT ZERO has become known to some extent. However, in view of the lack of detail which has been provided in Mr. Morellato’s affidavit, I cannot conclude that it has become known to any significant extent, in association with watches or any other goods or services. The evidence pertaining to the promotion and use of the trade-mark which is the subject of registration No. TMA695,670 (Stylized letter P and an oval dot in a rectangle with the words POINT ZERO) is even weaker and the evidence regarding POINT ZERO LUXURY is practically non-existent.
[54] Overall, I find that this factor, which is a combination of the inherent distinctiveness of the parties’ trade-marks and the extent to which they have become known favours the Opponent, but not to any great extent and primarily in relation to POINT ZERO.
Section 6(5)(b) – the length of time each has been in use
[55] Since the application for the Mark is based upon proposed use and the Applicant has not filed any evidence to establish that use of the Mark has commenced in Canada, I find that this factor also favours the Opponent, but again, only to a minimal extent, and primarily in relation to POINT ZERO.
Sections 6(5)(c) and (d) – the nature of wares, services or business and trade
[56] When considering sections 6(5)(c) and (d) of the Act, it is the statement of goods in the application for the Mark and the statement of goods in the Opponent’s registrations that governs the assessment of the likelihood of confusion under section 12(1)(d) of the Act [Henkel Kommanditgesellschaft auf Aktien v Super Dragon Import Export Inc (1986), 12 CPR (3d) 110 (FCA) and Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA)]. 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. Evidence of the parties' actual trades is useful in this respect [McDonald's Corp v Coffee Hut Stores Ltd (1996), 68 CPR (3d) 168 (FCA); Procter & Gamble Inc v Hunter Packaging Ltd (1999), 2 CPR (4th) 266 (TMOB); and American Optical Corp v Alcon Pharmaceuticals Ltd (2000), 5 CPR (4th) 110 (TMOB)].
[57] The application for the Mark covers “watches, clocks and costume jewelry”.
[58] The applied-for “watches” and “costume jewelry” directly overlap with the goods in two of the Opponent’s registrations (TMA309,311 for POINT ZERO and TMA695,670 for the Stylized letter P and an oval dot in a rectangle with the words POINT ZERO), which cover “watches” and “jewellery”. Further, “clocks” could be considered by consumers to be a related good. In view of the similarities in the nature of the parties’ goods and in the absence of any evidence to the contrary, I consider it reasonable to conclude that there would also be some overlap in their respective channels of trade.
[59] Accordingly, I find that this factor clearly favours the Opponent in relation to registration Nos. TMA309,311 for POINT ZERO and TMA695,670 for Stylized letter P and an oval dot in a rectangle with the words POINT ZERO, but not in relation to its remaining two trade-marks, POINT ZERO (registration No. TMA800,971) and POINT ZERO LUXURY (TMA693,470), as they primarily cover clothing and various other goods and services which are, in my view, unrelated to the goods which are covered in the application for the Mark.
Section 6(5)(e) – the degree of resemblance between the trade-marks
[60] In Masterpiece Inc v Alavida Lifestyles Inc et al [supra], the Supreme Court of Canada clearly indicated that the most important factor amongst those listed under section 6(5) of the Act is often the degree of resemblance between the parties’ trade-marks [see also Beverley Bedding & Upholstery Co v Regal Bedding & Upholstering Ltd (1980), 47 CPR (2d) 145 (FC), at 149, affirmed (1982), 60 CPR (2d) 70 (FCA)]. If the parties’ trade-marks do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion.
[61] It is well-established that when considering the degree of resemblance between trade-marks, the trade-marks must be considered in their totality and it is not correct to lay them side by side and carefully compare and observe the similarities or differences among their elements. It is also not correct to dissect the marks.
[62] In Masterpiece, the Supreme Court also observed that even though the first word of a trade-mark may be the most important, for the purpose of distinctiveness [Conde Nast Publications Inc v Union des éditions modernes (1979), 46 CPR (2d) 183 (FCTD)], the preferable approach when comparing marks is to begin by determining whether there is an aspect of the trade-mark that is particularly striking or unique.
[63] The Mark, P ZEROTEMPO, would, in my view, likely be perceived as a unitary phrase having no discernable meaning. I don’t find that any one part of it stands out as being striking or unique. If anything, it has a foreign flair to it.
[64] Each of the Opponent’s trade-marks consist of the words POINT ZERO, either on their own, or in combination with other descriptive words (e.g. LUXURY) or design elements (stylized P and oval with a dot in a rectangle design).
[65] In my view, POINT ZERO, as a whole, is what stands out in each of the Opponent’s word marks (i.e. TMA309,311 for POINT ZERO, TMA800,971 for POINT ZERO and TMA693,470 for POINT ZERO LUXURY). Contrary to what the Opponent submitted at the oral hearing, I do not find that the letter P stands out on its own in these trade-marks, despite the fact that it appears at the beginning of the marks. However, in the case of the Opponent’s design mark (registration No. TMA695,670 for Stylized letter P and an oval dot in a rectangle with the words POINT ZERO), I do find the oval with the stylized P and dot design (as a whole) to be an equally, if not slightly more prominent part of that particular mark.
[66] Overall, I do not consider there to be a very high degree of resemblance between the Mark and each of the Opponent’s trade-marks. Despite the inclusion of the common element ZERO in the parties’ trade-marks, I find POINT ZERO and POINT ZERO LUXURY, to be quite visually and phonetically different from the Mark P ZEROTEMPO. The Opponent’s design mark (Stylized letter P and an oval dot in a rectangle with the words POINT ZERO), which could conceivably be pronounced as P POINT ZERO (amongst other ways), may be said to be slightly more similar to the Mark, due to the inclusion of the letter P. However, overall, it is still quite different in terms of its composition and construction, resulting in a different visual impression and in phonetic differences.
[67] In terms of suggested idea, I note that the Mark is formed of a letter P and the word ZEROTEMPO. If one were to break it down, it could be broken down into the letter P, the word ZERO and the word TEMPO and it could be said that each of these elements would be recognized as being a letter or word in the English language. However, it is not broken down in this manner in the Mark and I agree with the Applicant that as a matter of first impression, it would more likely be viewed as a whole and perceived as being coined or foreign in nature.
[68] I find that the words POINT ZERO, which are present in all of the Opponent’s trade-marks would be recognized as terms having clear meanings in the English language, but together, would also be perceived as being a meaningless (but different) coined phrase.
[69] Thus, while the parties’ trade-marks may be said to resemble one another to some extent, primarily due to the inclusion of the word ZERO and, in the case of the Opponent’s design mark, the letter P, I do not consider there to be a particularly high degree of resemblance between them.
Surrounding Circumstances
State of the Register
[70] As an additional surrounding circumstance, the Applicant relies on the results of dilution searches conducted by Mr. Balzamo to identify third parties that sell watches, clocks and/or jewelry in association with company names, trade-names or trade-marks incorporating the letter P or the word ZERO. The Applicant submits that third party uses of marks in Canada that have similar defining characteristics to the Opponent’s trade-marks suggests that the Opponent’s trade-marks have lost their distinctiveness and that the Mark cannot reasonably be concluded to be confusing with the Opponent’s trade-marks.
[71] As I noted previously, in its written argument, the Applicant identified only 7 different third parties from Mr. Balzamo’s searches that appear to sell watches, clocks and/or jewelry in association with trade-marks or trade-names which feature the term ZERO and 5 different parties that appear to do so in association with trade-marks or trade-names which feature the letter P. Of these, very few appear to be Canadian, many are quite different from the parties’ trade-marks and none appear to incorporate both the terms ZERO and P.
[72] Based upon this evidence overall, I am not prepared to conclude that the Opponent’s trade-marks have less distinctiveness as a result of third party use of similar trade-marks or trade-names, as submitted by the Applicant.
The Opponent’s Family of POINT ZERO Trade-marks
[73] At the hearing, the Opponent suggested that the existence of its family of POINT ZERO trade-marks would make confusion more likely. The Opponent took the position that the focus is on the P in its POINT ZERO and P ZERO marks and in its logo (registration No. TMA695,670 for Stylized letter P and an oval dot in a rectangle with the words POINT ZERO). The Opponent therefore submits that upon seeing the Mark, which also contains the word ZERO and the letter P, consumers would likely think that it is just another one of the Opponent’s family of trade-marks.
[74] It’s true that where there is a family of marks, there is sometimes a greater likelihood that the public would consider a trade-mark that is similar in nature or composition to be another trade-mark in the family and consequently, assume that the product or service that is associated with that trade-mark is manufactured or performed by the same person. However, it has been held that there can be no presumption of the existence of a family of marks in opposition proceedings. A party seeking to establish a family of marks must establish that it is using more than one or two trade-marks within the alleged family (a registration or application does not establish use) [see Techniquip Ltd v Canadian Olympic Assn (1998), 1998 CanLII 7573 (FC), 145 F.T.R. 59 (FCTD), aff’d 250 NR 302 (FCA); and Now Communications Inc v CHUM Ltd (2003), 32 CPR (4th) 168 (TMOB)]. In this case, the Opponent has not sufficiently evidenced use of its trade-marks. In view of this, I do not find the arguments it made in this regard to be persuasive.
Conclusion on the Likelihood of Confusion
[75] Contrary to the Opponent’s assertions, the Opponent has not established that any of its registered trade-marks have become known to any great extent. It has also failed to demonstrate lengthy or continuous use of its trade-marks. Despite the overlap in the parties’ goods, in the absence of any significant reputation in any of its registered trade-marks, on their own, or in combination with the Opponent’s other unregistered trade-marks, including P ZERO (which would have been a relevant surrounding circumstance), I am of the view that the differences between the parties’ trade-marks in appearance, sound and suggested idea are sufficient to avoid any reasonable likelihood of confusion. Having considered all of the surrounding circumstances, I have therefore concluded on a balance of probabilities, that there is no reasonable likelihood of confusion between the trade-marks at issue.
[76] Accordingly, the section 12(1)(d) ground of opposition is unsuccessful.
Non-Entitlement
Section 16(3)(a)
[77] The Opponent has pleaded that the Applicant is not the person entitled to registration of the Mark because at the filing date of the application for the Mark, it was confusing with the Opponent’s trade-marks P ZERO, POINT ZERO (TMA309,311 and TMA800,971), POINT ZERO LUXURY and Stylized letter P and an oval dot in a rectangle with the words POINTZERO (TMA695,670), which had previously been used or made known in Canada in association with the goods and services which are listed in Schedule “A” attached hereto.
[78] There is an initial burden on the Opponent in respect of this ground to evidence use of its trade-marks prior to the filing date of the application for the Mark and to establish that it had not abandoned its trade-marks as of the date of advertisement of the Applicant’s application [section 16(5)].
[79] Insofar as the Opponent’s previously registered trade-mark P ZERO is concerned, as mentioned above in my review of the evidence, the Opponent has failed to establish use of this mark prior to the filing date of the application for the Mark in association with watches or any other goods or services. While Exhibit K to the Morellato affidavit does show use of P ZERO in connection with the sale of a jacket, the sale occurred in 2012, after the material date for assessing this ground of opposition. No other representative examples of use of the mark on or in association with watches or any other goods have been provided. Thus, the Opponent has failed to meet its initial evidential burden under its section 16(3)(a) ground in respect of this mark.
[80] With respect to the Opponent’s registered trade-marks, even if it had met its initial burden under this ground in respect of any of these marks, it would fail for reasons similar to those set out above in my analysis under section 12(1)(d). Assessing each of the section 6(5) factors as of the filing date of the application for the Mark, rather than as of today’s date, does not significantly impact my previous analysis under section 12(1)(d) of the surrounding circumstances of this case.
[81] Accordingly, this ground of opposition is also unsuccessful.
Section 16(3)(b)
[82] The Opponent has pleaded that the Applicant is not the person entitled to registration of the Mark in view of its previously filed application no. 1,472,367 for the trade-mark Patch with oval shape and rectangular shaped top (no. 1, 472,367), which also contains the words POINT ZERO.
[83] The material date for assessing this ground of opposition is the filing date of the application for the Mark, namely, March 14, 2011.
[84] I have exercised my discretion to check the Trade-marks Office records to confirm the existence of the Opponent’s application [see Royal Appliance Mfg Co v Iona Appliances Inc (1990), 32 CPR (3d) 525 (TMOB) at 529]. I confirm that the Opponent’s application was filed before the Applicant’s application and that it was still pending as of the date of advertisement of the Applicant’s application. The Opponent has therefore met its initial burden in respect of this ground of opposition. Accordingly, the onus shifts to the Applicant to demonstrate that there is no likelihood of confusion between the marks at issue.
[85] While the Opponent has met its initial burden in respect of this ground, it fails for reasons similar to those set out above in my analysis under section 12(1)(d). There is even less of a degree of resemblance between this mark and the Mark, than there is between any of the Opponent’s other trade-marks and the Mark. This mark is no more inherently distinctive than the Mark and it has not been shown to have been used for any length of time or to have become known to any extent. In view of this, as was the case with the Opponent’s registered trade-marks, despite any overlap in the goods associated with these particular trade-marks, I do not consider there to be any reasonable likelihood of confusion between them.
[86] Accordingly, this ground of opposition is also unsuccessful.
Section 16(3)(c)
[87] The Opponent has pleaded that the Applicant is not the person entitled to registration of the Mark in view of the Opponent’s prior use of its trade-name POINT ZERO which had previously been used by the Opponent. The material date for assessing this ground of opposition is the filing date of the application for the Mark [section 16(3)(c)]. In order to meet its initial evidential burden under this ground, the Opponent must show use of its trade-name prior to the filing date of the applicant’s application for the Mark. Mr. Morellato’s affidavit is silent with respect to any trade-name use. I therefore find that the Opponent has failed to meet its evidential burden in respect of this ground.
[88] Accordingly, this ground of opposition is unsuccessful.
Other Non-entitlement Grounds
[89] In paragraph 3.4.1-3.4.4, of its statement of opposition, the Opponent has also pleaded that the Applicant is not the person entitled to registration of the Mark because: 1) the application does not comply with the requirements of section 30; 2) the Mark is not a proposed one but a used one; 3) the Mark is not registrable or does not function as a trade-mark because it is not distinctive; and 4) the Applicant is not a person. The Applicant has not made any submissions with respect to any of these grounds and I consider all of them to be duplicitous of other grounds which are set out in the statement of opposition and/or improperly pleaded under section 16 of the Act.
Non-Distinctiveness
[90] First, the Opponent has pleaded that the Mark is not distinctive in that it does not distinguish and is not adapted to distinguish the goods in association with which it is proposed to be used from those of others, including those of the Opponent.
[91] Second, the Opponent has pleaded that the Mark does not distinguish and is not adapted to distinguish the goods and services of the Applicant from those of others, including those of the Opponent, as it is solely functional or merely decorative.
[92] With respect to the Opponent’s first non-distinctiveness ground of opposition, its evidence must show that one or more of its trade-marks had become known sufficiently as of the commencement of the opposition to negate the distinctiveness of the Mark [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC) and Motel 6, Inc v No. 6 Motel Ltd (1981), 56 CPR (2d) 44 at 58 (FCTD)]. As previously discussed, in this case, the Opponent has not filed sufficient evidence to enable me to conclude that any of its trade-marks have become known to any significant extent. I therefore find that it has failed to meet its initial evidential burden in respect of this ground.
[93] With respect to the Opponent’s second non-distinctiveness ground of opposition, I note that the Mark is a word mark and the Opponent has failed to file any evidence or submissions to support such a ground. To the extent that this ground can be said to be properly pleaded, I therefore find that the Opponent has also failed to meet its initial burden in respect of this ground.
[94] Accordingly, the Opponent’s non-distinctiveness grounds of opposition are also unsuccessful.
VI Disposition
[95] In view of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(8) of the Act.
______________________________
Lisa Reynolds
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
TRADE-MARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
___________________________________________________
HEARING DATE: 2015-09-01
APPEARANCES
Mark Sumbulian FOR THE OPPONENT
Philip Lapin FOR THE APPLICANT
AGENTS OF RECORD
Mark Sumbulian FOR THE OPPONENT
Fetherstonhaugh & Co. FOR
THE APPLICANT
Schedule “A”
|
TRADE-MARK
|
REGISTRATION NO.
|
GOODS/SERVICES |
|
P ZERO |
TMA786,620 |
(1) Men's, women's and children's garments,
namely; undergarments, underwear, dresses, skirts, blouses, scarves, jump
suits, sweaters and pullovers. |
|
POINT ZERO |
TMA309,311 |
(1) Tissus, couve-lits; nappes de tables;
vêtements pour hommes, femmes et enfants, notamment: manteaux, vestes,
gilets, pantalons, sous-vêtements, chemises, blouses, shorts, jeans,
chapeaux, casquettes, mouchoirs, écharpes, jump suits, robes, salopettes,
T-shirts, pull-over, chandails, maillots de corps, maillots de bain,
peignoirs de bain, chaussures, notamment: bottes, souliers, sandales et
pantoufles. |
|
POINT ZERO |
TMA800,971 |
GOODS:
|
|
POINT ZERO LUXURY |
TMA693,470 |
(1) Men's, women's and children's' garments,
namely: coats, jackets, suits, pants, t-shirts, shorts, jeans, hats, caps,
undergarments, underwear, dresses, skirts, bathing suits, vests, blouses,
scarves, jump suits, sweaters, sweatpants, sweatshirts, sleepwear, pyjamas,
bathrobes and pullovers. |
|
|
TMA695,670 |
GOODS:
|
|
|
1,472,367 |
(1) Men's, women's and children's garments, namely: coats, jackets, suits, pants, t-shirts, shorts, jeans, hats, caps, undergarments, underwear, dresses, skirts, bathing suits, vests, blouses, scarves, jump suits, sweaters, sweatpants, sweatshirts, sleepwear, pyjamas, bathrobes and pullovers;(2) footwear, namely: boots, shoes, running shoes, sport shoes, sandals and slippers;(3) fashion accessories, namely: watches, wallets, belts, suspenders, ties, socks, handkerchiefs, hosiery, sunglasses, eyeglasses, jewellery, key chains, purses, umbrellas, gloves and mittens;(4) cosmetics and cleansing preparations, namely: colognes, perfumes, tanning gels, hair gels, deodorants and eau de toilette;(5) luggage and travel bags, namely: suitcases, backpacks, travelling bags, garment bags, handbags, school bags and beach bags;(6) sports equipment, namely: bicycles, scooters, skate boards, skis, ice skates, inline skates, basketballs, footballs and soccer balls;(7) camping equipment, namely: tents and sleeping bags. |