Trademark Opposition Board Decisions

IN THE MATTER OF THREE OPPOSITIONS

by A valon Sunsplash Ltd. to application nos.

1171481; 1171482; 1157428 for the trade-marks CANNABIS CULTURE SHOP; CANNABIS CULTURE SHOP & Design; FRIENDLY STRANGER CANNABIS CULTURE SHOP & Design, respectively, filed by The Friendly Stranger Corporation

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The three applications which are the subject of these proceedings are listed below.

I would first note that for the purposes of these proceedings use of the mark CANNABIS

CULTURE SHOP & Design is equivalent to use of the word mark CANNABIS CULTURE

SHOP. In this respect, the "design" features of application no. 1171482 are intrinsic to the letters

forming the word components: see Canadian Jewish Review Ltd. v. The Registrar a/Trade

Marks (1961) 37 C.P.R. 89 (Ex. C.). Further, the exhibit material included with the parties'

evidence shows that the applicant primarily uses the mark FRIENDLY STRANGER

CANNABIS CULTURE SHOP & Design. Variations in the mark occur, however, the

invariables are that (i) the font for the component FRIENDLY STRANGER is noticeably

different, in size as well as in appearance, from the font of the remainder of the mark namely,

CANNABIS CULTURE SHOP, and (ii) the portions FRIENDLY STRANGER and

CANNABIS CULTURE SHOP are separated spatially. In the result, the opponent's use of the

mark FRIENDLY STRANGER CANNABIS CULTURE SHOP & Design also qualifies as use

of the marks CANNABIS CULTURE SHOP & Design per se as well as use of the word mark

CANNABIS CULTURE SHOP per se: see Nightingale Interloc v. Prodesign Ltd. (1984),2

C.P.R.(3d) 535 at 538 (TMOB).

APPLICATION NO. 1171481

On March 17,2003, The Friendly Stranger Corporation filed application no. 1171481 to

register the trade-mark CANNABIS CULTURE SHOP for a number of wares (including

cigarette lighters, glass tobacco pipes, pipe cleaners, pens, posters) and the service of selling the

specified wares, and other wares, through street front outlets and through the Internet. The

application is based on use of the mark over a range of dates. The earliest claimed date of first

use of the mark in respect of the wares "matches" is October 1994 while the latest claimed date is

July 2002 for "collector tubes." The claimed dates of first use in respect of services are July 4,

1994 in respect of store sales and September 1997 in respect of Internet sales. The application

disclaims the exclusive use of the words CANNABIS and SHOP apart from the mark as a whole.

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The subject application was advertised for opposition purposes in the Trade-marks

Journal issue dated February 18,2004, and was opposed by Avalon Sunsplash Ltd. on April 16,

2004. The Registrar forwarded a copy of the statement of opposition to the applicant on May 4,

2004. The applicant responded by filing and serving a counter statement.

STATEMENT OF OPPOSITION

As the grounds of opposition are stated briefly, they are shown in full below:

(a) ,

Contrary to Sections 38(2)(a) and 30(b), at the date of filing of the Application, the Applicant had not used the Opposed Mark in Canada as alleged, or at all, or had subsequently abandoned the Opposed Mark as, particularly,

(i) the Applicant has not used the Opposed Mark in Canada at all in accordance

with Section 4, or

if the Applicant has used the Opposed Mark in Canada, which is denied, then the Applicant has not used the Opposed Mark as of the dates claimed in the Application in association with any or all of the applied for wares and services.

(ii)

(b)

The Opposed Mark is not distinctive, having regard to the provisions of Sections 38(2)( d) and 2 because the Opposed Mark has not, and cannot, function to distinguish the wares and services of the Applicant from those of others, including those of the Opponent, in the marketplace. The Applicant has co-existed with and has been long aware of the Opponent and the Opponent's use of the Opponent's trade-marks CANNABIS CULTURE (Application No. 1,172,936) and CANNABIS CULTURE & Design (Application No. 1,172,935), (collectively, the "Opponent's Marks"). The Applicant sells and advertises for sale wares belonging

to the Opponent which bear the Opponent's Marks in the Applicant's retail store and at the Applicant's website located at www.friendlystranger.com.

EVIDENCE

The opponent's evidence consists of the affidavits of Marc Emery, President of the

opponent company, and Jennifer Drove, paralegal. The applicant's evidence consists of the

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affidavit of Robin Ellins, President of the applicant company; the affidavit of Joy Jacobsen, a

50% owner of the shares of the applicant company; a notarized copy of a pre-incorporation

agreement which forms part of Exhibit 1 of the Ellins affidavit; and a clear copy of page 1 of

Exhibit 7 of the Ellins affidavit. The opponent's evidence in reply consists of the affidavit of

Suzanne Gracon, a manager with CANNABIS CANADA magazine from October 1996 to

September 2000.

OPPONENT'S EVIDENCE

Mr. Emery's evidence maybe summarized as follows. The opponent was incorporated in

1995 and is involved primarily in magazine publishing and in the operation of a store-front retail

store and an online retail business. The opponent sells and distributes, among other things,

magazines, books, clothing, posters, and cigarette rolling papers, all of which bear one or both of

the trade-marks CANNABIS CULTURE (the subject of application no.1172936) or CANNABIS

CULTURE & Design (the subject of application no. 1172935), shown below:

Given the prominence of the words "cannibus culture," I consider that use of the design mark,

above, qualifies as use of the word mark CANNIBUS CULTURE per se: see Nightingale

lnterloc, above.

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The opponent has published CANNABIS CULTURE magazine, in Canada, since about

July 1998. The magazine is published six times a year. As of November 30, 2004, there were 52

issues. The magazine prominently displays the mark CANNABIS CULTURE & Design across

the front cover. Prior to July 1998, the opponent's magazine sold under the name CANNABIS

CANADA.

The opponent distributed CANNABIS CANADA beginning in 1995 until the magazine

was renamed in 1998. CANNABIS CULTURE magazine is available through 328 retail outlets

across Canada, most notably in British Columbia (114 outlets), Ontario (78 outlets), Alberta (67

outlets) and Quebec (25 outlets). Annual sales of the magazine amounted to about $14,000 in

1998 rising steadily to $40,000 in 2004. The opponent has also operated a web site at the domain

name www.cannabisculture.com since May 1998. The site averages over 1,000 hits daily.

The opponent has distributed its CANNABIS CULTURE magazine through the

applicant's online retail store since October 1997. Conversely, the applicant has placed paid

advertisements featuring its marks in every issue of the opponent's CANNABIS CULTURE

magazine since its inception in 1998 (the applicant ceased doing so when these proceedings

commenced). The advertisements are primarily full page (at a cost of about $2,250) and

sometimes quarter page (at a cost of $625). Mr. Emery's testimony is that the applicant is

generally known as "Friendly Stranger" while the opponent is known as "Cannabis Culture."

Ms. Dove's evidence is to the effect that she was unable to locate any wares sold by the

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applicant under the applied for marks on the Internet, but did locate some wares, not specified in

the subject applications, sold under the mark FRIENDLY STRANGER.

APPLICANT'S EVIDENCE

Mr. Ellins' affidavit testimony evidence may be summarized as follows. The applicant is

one of the largest retailers of hemp styled products in Canada. The applicant has its retail store in

Toronto and also sells its products via its website. The retail store was in operation on July 7,

1994 although the applicant did not become incorporated until two months later on September 7,

1994. The subject application, when it was filed, contained inadvertent errors namely, (i) use of

the mark in association with retail store services actually commenced on July 7, 1994 rather than

July 4, 1994 as claimed, (ii) use of the mark in association with matches commenced in January

1995 rather than October, 1994, (iii) the wares watches and posters did not bear the mark which is

the subject of application no. 1171481, (iv) other wares (listed in paragraphs 4(d) and 4(e) of Mr.

Ellins' affidavit) were never in fact sold under the subject mark and the applicant no longer seeks

proprietary trade-mark rights with respect to those wares which did not bear the subject mark.

However, Mr. Ellins takes issue with Ms. Dove's affidavit evidence and explains that not all

products specified in the subject application are offered for sale at all times. In this regard,

inventory for some products sells out quickly and may be temporarily unavailable. Exhibit 4 of

Mr. Ellins' affidavit shows how the mark FRIENDLY STRANGER CANNABIS CULTURE

SHOP & Design is used in association with various of the specified wares. As discussed earlier,

such use qualifies as use of the mark CANNABIS CULTURE SHOP per se.

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The applicant advertises under its marks predominantly via radio, newspapers, and

magazines. Advertising expenses averaged approximately $10,000 or less annually from 1994 to

2000, but increased to average approximately $30,000 annually for the period 2002 to 2005: see

Exhibit 5 of Mr. Ellins' affidavit. Advertising expenses in the opponent's magazine CANNABIS

CANADA totalled about $11,000 for the period 1996-1998 and averaged about $8,650 annually

for the period 1999-2004, that is, after the opponent changed the name of its magazine to

CANNABIS CULTURE. The applicant stopped advertising in the opponent's magazine, and

stopped selling the opponent's magazine, when these proceedings commenced.

In paragraph 12 of his affidavit (shown, in part, below), Mr. Ellins testifies that in 1998 he

contacted Suzanne Gracon, the Managing Editor of CANNABIS CANADA magazine, to express

his concerns over the impending name change of the magazine:

12.

I telephoned Ms. Gracon at the end of May 1998. In that telephone call I told

Ms. Gracon of our concern that the new name of their magazine, "Cannabis Culture" magazine, was too similar to our trade mark, that so long as "Cannabis Canada" magazine

agreed that The Friendly Stranger would be the owner of the phrase "cannabis culture", and provided that all usage of the phrase "cannabis culture" by them was similar to how Ms.

Gracon and "Cannabis Culture" magazine then contemplated using that phrase, The Friendly Stranger would allow them to use the phrase and would not object to their use of that phrase as part of the magazine's new title "Cannabis Culture" magazine. At the end of that telephone

call, Ms. Gracon agreed to that.

Exhibit 7 of Mr. Ellins' affidavit is comprised in part of a letter, from the opponent to the

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applicant, which discusses the factual circumstances giving rise to the present litigation. The letter

also proposes solutions to avoid potential litigation. At the oral hearing, counsel for the applicant

requested that the letter be removed from the evidence of record, or in the alternative, requested

the Board to note that the applicant was not relying on the letter without any admission by the

applicant or prejudice to the applicant. As the opponent did not agree to removing the letter from

the record, the applicant's first request was denied. In respect of the applicant's second request, I

have noted that the applicant is not relying on the letter for the purposes of these proceedings. I

see no prejudice to the applicant in doing so. I would add that in my view the contents of the letter

are privileged and in any event may not be used by the applicant to prejudice the opponent's case.

Portions of Ms. Jacobson's affidavit testimony are inadmissible hearsay, however, Ms.

Jacobson does confirm that Mr. Ellins was concerned about the opponent changing the name of its

magazine to CANNABIS CULTURE and confirms his intention to contact Suzanne Gracon. Ms.

Jacobson also testifies that Mr. Ellins related to her the telephone conversation which took place

between Mr. Ellins and Ms. Gracon.

In summary, the applicant has admitted that it cannot claim use of its mark CANNABIS

CULTURE SHOP in association with services before July 4, 1994. Further, the applicant has

provided very little quantitative evidence to indicate the extent of use of the subject mark in

association with wares. Advertising under the mark, in relation to the applicant's services,

generally amounted to under $10,000 annually until the year 2001, but increased about three fold

thereafter. A substantial portion of the applicant's advertising budget, until the year 2004, paid for

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placements in the opponent's magazine.

OPPONENT'S REPLY EVIDENCE

Ms. Gracon in her affidavit in reply denies the substance of the telephone conversation as

stated by Mr. Ellins in paragraph 12 above, and in particular denies agreeing to any terms or

conditions proposed by him: see paragraphs 7 and 10 of her affidavit, below (where "ASL" refers

to the opponent Avalon Sunsplash Ltd.).

7. I recall participating in a telephone call with Mr. Ellins in which Mr. Ellins made comments regarding ASL's decision to rebrand its magazine title to Cannabis Culture. However,

Mr. Ellins did not further engage in a discussion with me regarding ASL's decision to

rebrand its magazine title and at no time during our conversation did Mr. Ellins present his or The Friendly Stranger Corporation's terms for ASL's use of the phrase "cannabis

culture" .

.

10. Moreover, at no time during my employment with ASL as Managing Editor, Advertising Manager or Distribution Manager, did I have the authority to agree on behalf of ASL to any terms relating to the use of the phrase "cannabis culture". The name of the magazine and ASL's use of the phrase "cannabis culture" is subject matter that falls within the responsibilities of the Publisher. It was and continues to be absolutely clear to me that

matters involving the name of the magazine were beyond my authority and responsibilities in' any of my roles as Managing Editor, Advertising Manager or Distribution Manager.

Given Ms. Gracon's denial of Mr. Ellins' assertions in paragraph 12 of his affidavit, and

keeping in mind that the onus is on the applicant to establish all aspects of its case, I do not accept

the applicant's submission, at page 21 of its written argument, that" . . . because Ms. Gracon had

agreed to the terms Mr. Ellins had related to her in that telephone call, a trade mark[ sic] license

was in place." Of course, if such a license was in place, then the opponent's use of the mark

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CANNABIS CULTURE would enure to the benefit of the applicant. I do not accept that a trade­

mark license was in place.

DISTINCTIVENESS AS A GROUND OF OPPOSITION

The onus or legal burden is on the applicant to show that its mark CANNABIS CULTURE

SHOP distinguishes its wares and services from those of the opponent throughout Canada: see

Muffin Houses Inc. v. The Muffin House Bakery Ltd. (1985),4 C.P.R.(3d) 272 (TMOB). The

presence of an onus means that if a determinate conclusion cannot be reached once all the

evidence is in, then the issue must be decided against the applicant. The material time for

considering the circumstances respecting the issue of distinctiveness is as of the filing of the

opposition, in this case April16, 2004: see Re Andres Wines Ltd. and E. &J. Gallo Winery

(1975),25 C.P.R.(2d) 126 at 130 (F.C.A.); Park Avenue Furniture Corp. v. Wickes/Simmons

Bedding Ltd. (1991),37 C.P.R.(3d) 412 at 424 (F.C.A.). The relevant inquiry in the instant case is

whether the opponent's use of its mark CANNABIS CULTURE is sufficient to negate the

distinctiveness of the applied for mark: see Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56

C.P.R.(2d) 44 at 58 (F.C.T.D.).

Considering the evidence of record, I am able to conclude that the applicant had

established some reputation for its mark CANNABIS CULTURE SHOP by the material date

April16, 2004. However, I cannot conclude that the applicant had established a significant

reputation for its mark at the material date. I arrive at essentially the same conclusions in respect

of the acquired distinctiveness of the opponent's mark CANNABIS CULTURE. I note, however,

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that the appearance of both parties' marks in the same magazine may have created the impression

that one party approved, licensed, or was sponsored by the other: see Glen- Warren Productions

Ltd. v. Gertex Hosiery Ltd. (1990),29 C.P.R.(3d) 7 at 12 (F.C.T.D.).

Considering the factual circumstances of this case, and considering in particular the

contemporaneous use of both parties' marks for the same consumer market, I find that the

applicant has not met the onus on it to establish, on the usual civil balance of probabilities, that

the mark CANNABIS CULTURE SHOP distinguishes the applicant's wares and services from

the wares and services of the opponent sold under the mark CANNABIS CUL TURB. That is, I

have found that, on a balance of probabilities, the distinctiveness of the opponent's mark was

sufficient to negate the distinctiveness of the applied for mark.

In view of the above, application no. 1171481 is refused

I would also note that the applicant's admission that the claimed date of first use of the

mark in association with services is in error is conclusive of non-compliance with Section 30(b) of

the Trade-marks Act as the application does not acknowledge any predecessor in title. The

application may be refused, at least for services, solely on that technical ground: see, for example,

Gainers Inc. v. Sugarplum Desserts Ltd. 59 C.PR.(3d) 256 (TMOB). The result would have been

otherwise had the applicant named the principals of the applicant company, that is, Mr. Ellins and

Ms. Jacobsen, as predecessors in title. In this regard, the weight of the applicant's documentary

evidence, including a pre-incorporation agreement, shows that the applicant's business was in fact

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operational as of July 4, 1994.

APPLICATION NO. 1171482

Application no. 1171482 is identical to application no.117l481 aside from the letters of

the mark appearing in a different font. The pleadings, evidence, issues and material dates in

respect of the two applications are the same, and I therefore arrive at the same conclusion as in the

proceeding respecting application no.1171481. That is, the applicant has not met the onus on it to

establish, on the usual civil balance of probabilities, that the mark CANNABIS CULTURE SHOP

& Design distinguished the applicant's wares and services from the wares and services of the

opponent at the material date April 16, 2004 .

In view of the above, application no. 1171482 is refused

APPLICATION NO. 1157428

The pleadings, evidence, and material dates in respect of the opposition to application no.

1157428 are essentially the same as in the preceding oppositions. However, application no.

1157428 includes the term FRIENDLY STRANGER and therefore it is apparent that the mark

FRIENDLY STRANGER CANNABIS CULTURE SHOP & Design resembles the opponent's

mark CANNABIS CULTURE to a lesser degree than the previous applications. The same

considerations as in the previous applications still apply, however, the reduced degree of

resemblance between the marks in issue is a significant factor which must be taken into account.

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On the one hand, the first portion of a mark is the most important for the purposes of

distinguishing between marks: see Glen- Warren Productions Ltd. v. Gertex Hosiery Ltd. (1990),

29 C.P.R.(3d) 7 at 12 (F.C.T.D.). Thus, in the instant case, the component FRIENDLY

STRANGER serves to distinguish the applied for mark from the opponent's mark CANNABIS

CULTURE. On the other hand, the component CANNABIS CULTURE comprises a substantial,

although not a dominant portion, of the applied for mark. Further, both parties target the same

market segment and the reputation of the opponent's mark at the material date April 16, 2004 was

at least equal to, if not greater than, the reputation of the applied for mark. Moreover, as noted

earlier, the appearance of both parties' marks in the same magazine may have led the public to

assume that one party approved, licensed, or was sponsored by the other. In view of the foregoing,

I arrive at the conclusion that the balance of probabilities is evenly balanced between finding for

the opponent and finding for the applicant. As the onus is on the applicant to establish that its

mark is distinctive, application no. 1157428 must be refused.

DISPOSITION OF THE CASES

Application nos. 1171481; 1171482; and 1157428 are refused.

DATED AT VILLE DE GATINEAU, QUEBEC, THIS 8th DAY OF NOVEMBER, 2007.

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Myer Herzig,

Member,

Trade-marks Opposition Board

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