IN THE MATTER OF AN OPPOSITION
by Del-Rain Corporation to application
no. 786,622 for the mark PELONIS filed by
Pelonis USA Ltd.
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On June 26, 1995, the applicant, Pelonis USA Ltd., filed an application to register the mark PELONIS, based on use of the mark in Canada since March 17, 1995 in association with
portable electric heaters for domestic use. The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated January 3, 1996 and was opposed by Del-Rain Corporation on June 3, 1996. The grounds of opposition are succinctly pleaded as shown below:
The applicant responded by filing and serving a counter statement generally denying the opponent’s allegations. In particular, the applicant responded to paragraph (b) above as follows:
I agree with the applicant that, depending on the nature of the allegation, merely tracking the statutory language in the Trade-marks Act may be insufficient to invoke a ground of opposition. In the instant case, with respect to the ground under Section 30(i), it was incumbent on the opponent to allege facts to support the ground of opposition pleaded. The opponent failed to do so in the first instance, and chose not to avail itself of Section 40 of the Trade-marks Regulations, which permits parties to amend their pleadings, after the opponent had been served with the applicant’s counter statement. Accordingly, ground (b) above is rejected because it is not set out in sufficient detail to enable the applicant to reply thereto: see Section 38(3)(a) of the Act and see Nordstrom, Inc. v. Fen-Nelli Fashions Inc. (1997), 83 C.P.R.(3d) 534 at 536-537 (TMOB).
The opponent’s evidence consists of the affidavit of Eliza Lee, President of the opponent company. The applicant’s evidence consists of the affidavit of Sam Pelonis, President of the applicant company, and a certified copy of trade-mark application no.788,095 for the mark PELONIS filed by the opponent on July 12, 1995. Application no.788,095 covers the wares “portable electric heaters for domestic use” and is based on proposed use in Canada. Ms. Lee was cross-examined on her affidavit, the transcript thereof submitted as part of the evidence of record. Only the applicant filed a written argument, however, both parties were represented at an oral hearing.
At the oral hearing there was some debate whether the transcript of cross-examination of Ms. Lee ought to be admitted into evidence. The opponent took the position that it was prejudiced in the cross-examination because two individuals (a Mr. Sluzas and a Mr. Charles) conducted the cross-examination on behalf of the applicant and because one of those individuals was neither (i) the applicant’s agent of record nor (ii) a registered trade-mark agent. With respect to the first objection, my review of the transcript of cross-examination satisfies me that it was conducted by one individual namely, Mr. Sluzas, although Mr. Charles (a member of the firm acting as the applicant’s agent of record) did intervene on a handful of occasions for purposes of clarification. I see nothing prejudicial to the opponent in the manner in which the cross-examination was conducted. While Mr. Sluzas was not the applicant’s agent of record, he was acting for the applicant’s agent for the purposes of cross-examination. Further, my understanding is that Mr. Sluzas was a registered Canadian trade-mark agent at that time. Again, I see no impropriety or prejudice to the opponent. Accordingly, the opponent has failed to substantiate its allegations of prejudice or impropriety with respect to the conduct of the cross-examination.
Mr. Pelonis’ affidavit, filed on behalf of the applicant, may be summarized as follows. The opponent is an American corporation, in the business of designing, manufacturing and marketing portable ceramic heaters. The applicant has been selling heaters in the United States since 1992 and in Canada since 1995; such sales in Canada have averaged about $48,000 annually. Exhibit material attached to Mr. Pelonis’ affidavit supports his testimony.
Ms. Lee’s affidavit, filed on behalf of the opponent, alleges that in the period 1985 to 1997 the opponent sold “in excess of two million heaters under the brand name PELONIS in the United States and Canada” and that such sales in Canada occurred as early as 1992. However, Ms. Lee provided no sales figures specifically for Canada, and no exhibit material to substantiate her claims. Moreover, from Ms. Lee’s transcript of cross-examination it is apparent that she has no personal knowledge of sales of her company’s heaters in Canada, if any. Further, Ms. Lee admitted on cross-examination that the opponent closed its Canadian offices in 1993 or 1994 because there was “not much activity.” I agree with the applicant’s assessment of the opponent’s evidence found at paragraph 31 of the applicant’s written argument, shown below.
In respect of the first ground of opposition, while the legal onus is upon the applicant to show that its application complies with Section 30(b) of the Trade‑marks Act, there is an initial evidential burden on the opponent in respect of its Section 30(b) ground: see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325 at 329‑330. To meet the evidential burden upon it in relation of a particular issue, the opponent must adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support that issue exist. In the instant case, no evidence was submitted by the opponent to contradict the date of first use claimed by the applicant. Thus, the opponent has failed to meet the evidential burden upon it in respect of the Section 30(b) ground of opposition. Further, Mr. Pelonis’ affidavit evidence supports the applicant’s date of first use as claimed in the subject application. Accordingly, the first ground of opposition is rejected. The second ground of opposition has been dealt with previously.
With respect to the third and fourth grounds of opposition, the opponent must establish its use of its mark PELONIS in Canada, or a reputation for its mark in Canada, in association with portable electric heaters as alleged by the opponent in its statement of opposition. In my view, the opponent’s evidence falls far short of establishing such use or making known. At best, I would be able to conclude that there was a transfer of inventory, consisting of a dozen or so of the opponent’s PELONIS heaters, from a United States company associated with the opponent company to the opponent in Canada. I am unable to determine from the evidence of record, including Ms. Lee’s transcript of cross-examination, that the opponent has made even a single sale of PELONIS heaters in Canada in the normal course of trade. Further, trade-mark application no.788,095 for the mark PELONIS for electric heaters, filed by the opponent on July 12, 1995, is based on proposed use in Canada. Of course, that trade-mark application for PELONIS is inconsistent with the opponent having used its mark in Canada prior to March 17, 1995 (the applicant’s date of first use of its mark) and is inconsistent with Ms. Lee’s affidavit evidence. Those inconsistencies have not been explained by the opponent. Accordingly, the opponent has not established use of its mark PELONIS in Canada at any material date. Therefore, the third and fourth grounds of opposition are rejected.
In view of the above, the opponent’s opposition is rejected.
DATED AT HULL, QUEBEC, THIS 2nd DAY OF MARCH, 2001.
Myer Herzig,
Member,
Trade‑marks Opposition Board