LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2014 TMOB 264
Date of Decision: 2014-12-01
IN THE MATTER OF AN OPPOSITION by Michael Lannon to application Nos. 1,381,044 and 1,458,132 for the trade-mark KOKO in the name of Cosmoda Concept Corporation
APPLICATION No. 1,381,044 - KOKO
File Record
[1] On January 28, 2008, Cosmoda Concept Corporation filed an application to register the trade-mark KOKO, based on proposed use in Canada in association with:
scarves, gloves, hats, handbags, watches and sunglasses.
During the course of the opposition, on or around November 25, 2009, the applicant changed its name to Gabi Concepts Ltd.
[2] In May 2014 the wares were amended to:
insulated handbags for carrying food and beverages,
non-insulated handbags for carrying food and beverages:
none of the foregoing being handbags made from leather
or imitation leather other than for the use of leather or
imitation leather trim.
[3] The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated July 13, 2011 and was opposed by Michael Lannon (located in Rockland, Massachusetts, USA) on December 13, 2011. The Registrar forwarded a copy of the statement of opposition to the applicant on January 5, 2012, as required by
section 38(5) of the Trade-marks Act, R.S.C. 1985, c. T-13. The applicant responded, on January 25, 2012, by filing and serving a counter statement generally denying the allegations in the statement of opposition.
[4] The opponent’s evidence consists of the affidavit of Michael Lannon. Mr. Lannon was cross-examined on his affidavit on June 3, 2013. The transcript of cross-examination and a response to a question taken under advisement form part of the evidence of record. The response to the question taken under advisement consists of two license agreements between the opponent and (i) Après Health and Fitness, Inc., dated December 2, 2005, and (ii) Koko Fitness, Inc. and Koko FitClub, LLC, dated April 23, 2008. The transcript and license agreements were submitted as evidence by the applicant (in accordance with the usual Board practice) on July 31, 2013. Otherwise, the applicant elected not to file any of its own evidence.
[5] The proceedings advanced to the written argument stage on October 28, 2013. Shortly after, on November 26, 2013, the opponent requested (i) leave to file as additional evidence an Amending and Confirming Agreement dated July 2013, shown below, and (ii) alternatively, that the two license agreements referred to in para. 4, above, be struck from the record.
AMENDING AND CONFIRMING AGREEMENT
This agreement amends a License Agreement entered into as of December 2, 2005 between Michael Lannon as Licensor, Koko Fitness, Inc., then called Après Health and Fitness, Inc. as Licensee.
This agreement amends a License Agreement entered into as of April 23, 2008 between Michael Lannon as licensor, Koko Fitness, Inc. as licensee and Koko FitClub, LLC as Sub-Licensee.
The parties agree that that the Licensor has had and shall at all times have the right to control the character and quality of the wares and services provided in association with the Trademarks.
The parties agree and confirm that the Trademarks licensed and sub-licensed under this agreement include without limitation the trade marks KOKO, KOKO FITCLUB, SMARTRAINER, SMARTSTATION, QUICKTRAINER, Kokoman Design and SMARTRAINER.
[6] The parties to the July agreement were the opponent Mr. Lannon; Koko Fitness, Inc.; and Koko FitClub, LLC. It appears that the opponent Mr. Lannon signed for each party to the agreement.
[7] As noted by the opponent on pg. 2 of its submissions requesting leave, the July agreement is intended to establish that use of the mark KOKO by Koko Fitness, Inc. and by Koko FitClub, LLC inures to the benefit of the opponent by operation of section 50 of the Trade-marks Act, shown below:
50. (1) For the purposes of this Act, if an entity is licensed by or with the authority of the owner of a trade-mark to use the trade-mark in a country and the owner has, under the licence, direct or indirect control of the character or quality of the wares or services, then the use, advertisement or display of the trade-mark in that country as or in a trade-mark, trade-name or otherwise by that entity has, and is deemed always to have had, the same effect as such a use, advertisement or display of the trade-mark in that country by the owner.
(2) For the purposes of this Act, to the extent that public notice is given of the fact that the use of a trade-mark is a licensed use and of the identity of the owner, it shall be presumed, unless the contrary is proven, that the use is licensed by the owner of the trade-mark and the character or quality of the wares or services is under the control of the owner.
[8] In a ruling dated December 2, 2013, the Board refused the opponent’s request for leave to file the July Agreement on the basis that the additional evidence was not in affidavit or statutory declaration form. The applicant had objected to the admission of the additional evidence for further reasons as well, in submissions dated December 4, 2013, which apparently crossed in the mail with the Board ruling. The Board did not deal with the opponent’s alternative request to strike the two license agreements from the record – not doing so appears to have been an inadvertent omission. Having reviewed the parties’ submissions of November 26 and December 4, it is clear that there was no justification for striking the 2005 and 2008 license agreements from the evidence of record. At no time did the opponent raise an objection that he had been prejudiced by the Board’s oversight in not issuing a timely ruling on its alternate request.
[9] Both parties submitted written arguments and both were represented at an oral hearing held on September 3, 2014.
Statement of Opposition
Pleadings
[10] The opponent Mr. Lannon pleads that:
(i) he is the owner of the trade-mark KOKO registered in Canada for use in association with the following wares and services:
exercise equipment namely single-station, multi-function strength training machines; software sold as an integral component of strength training machines,
providing fitness and exercise club services,
(ii) he has sold, in Canada, exercise equipment bearing the mark KOKO since about November 2009,
(iii) fitness clubs in Canada have used the mark KOKO, and related marks such as KOKO FIT CLUB, under license from the opponent since about November 2009,
(iv) sports-related wares including clothing, water bottles, bags and backpacks have been sold, by the opponent and his licensees, bearing the opponent’s mark KOKO.
[11] I note that the opponent applied to register its mark KOKO on August 11, 2008 and that the application was based on proposed use in Canada.
Main Issue
[12] Various grounds of opposition are alleged, however, the determinative issue for decision is whether the applied-for mark KOKO is confusing with the opponent’s mark KOKO. The material dates to assess the issue of confusion are the date of my decision with respect to the first ground of opposition alleging non-registrability, pursuant to section12(1)(d) of the Trade-marks Act; the date of filing the application (January 28, 2008) with respect to the second ground alleging non-entitlement, pursuant to section16(3)of the Act; and the date of opposition (December 13, 2011) with respect to the last ground alleging non-distinctiveness, pursuant to section 2: for a review of case law concerning material dates in opposition proceedings see American Retired Persons v. Canadian Retired Persons (1998), 84 CPR(3d) 198 (FCTD) at 206 – 209.
[13] Before addressing the issue of confusion, I will first review the evidence of record, the meaning of confusion within the context of the Trade-marks Act, and the statutory factors that must be considered in assessing the likelihood of trade-mark confusion.
Opponent’s Evidence
Affidavit of Michael Lannon
[14] The opponent identifies himself as the CEO and cofounder of Koko Fitness, Inc. and Koko FitClub, LLC., which he refers to collectively as “Koko FitClub.” The companies manufacture and sell exercise equipment and offer fitness club franchises in Canada and the United States. Koko FitClub (presumably the latter mentioned company, above) was incorporated in Massachusetts, USA in 2004 where it is located. As of August 22, 2012 (the date of Mr. Lannon’s affidavit), Koko FitClub had franchised fitness club locations in 20 states in the United States.
[15] The opponent licenses his mark KOKO to Koko FitClub which sublicenses the mark to franchisees. Koko FitClub franchises are “automated personal training studios,” that is, they are furnished with exercise machines which program and record the details of clients’ workouts on a USB key. The key is inserted into a USB port on the exercise machines. About 500 keys have been sold in Canada since 2008. Exhibit B of Mr. Lannon’s affidavit shows the mark KOKO displayed on a USB key.
[16] In October 2009 Koko FitClub entered into an agreement with RosKo Fitness, Inc. under which RosKo opened two Koko FitClub fitness clubs in Ontario. One club was located in Oakville; it opened in November 2009. The other club was located in Woodbridge; it opened in July 2010. Both clubs closed in November 2011. Exhibit C shows use of the mark KOKO in association with fitness club services at the Oakville location.
[17] The opponent’s automated exercise equipment, bearing the mark KOKO, and KOKO USB keys, are also sold to non-franchisees including Golds Gym in London and the University of Quebec in Chicoutimi.
[18] KOKO FitClub franchisees offer their members, staff and the public clothing, equipment and accessories “bearing the Koko brands,” including, for example, duffle bags and backpacks (a complete list is provided in Exhibit G). Franchisees purchase such items directly from the opponent’s suppliers.
[19] Mr. Lannon explains why he is concerned about the possibility of confusion between the applied-for mark and his mark in paragraphs 19 to 22 of his affidavit.
19. The fitness club industry makes extensive use of branded promotional items and accessories. The range of accessories distributed by fitness clubs is very broad and includes all of the wares listed in the Gabi Concepts trade mark applications.
20. This can be readily verified from the records of the Registrar of Trade-Marks. The wares listed in the Gabi Concepts applications are commonly listed in applications in Canada to register fitness club trade-marks. Searches of the trade-marks register for the word "fitness" in the services field and one of the wares named by Gabi in the wares field showed the following number of trade marks.
Bags 102
Gloves 634
Hand bags 4
Hats 1130
Gym bags 34
Tote bags 26
Lunch bags 1
Scarves 343
Sunglasses 8
Watches 16
. . . . .
22. As a result of this widespread practice, the public expects that[sic] certain types of articles to bear the brands of fitness clubs. These types of articles include those listed in paragraph 20 above and in Exhibits G and H. No one seeing a logo on this type of good would be surprised to find it associated with a fitness club. An association with our fitness club would readily come to the mind of anyone familiar with our logos who encounters the Gabi Concepts products.
[20] It is apparent that Mr. Lannon’s affidavit evidence, dated August 22, 2012, pertains to the application as initially filed rather than to the application as amended in 2014. The above evidence becomes less pertinent in respect of handbags for carrying food and beverages because, aside from lunch bags, there is no meaningful overlap in the above list of wares with the applicant’s wares.
Transcript of Cross-Examination
[21] Koko Fitness, Inc. designs, manufactures and sells fitness equipment while Koko FitClub, LLC. is involved in “the sale and franchise operations . . .” As of the date of cross-examination on June 3, 2013, there were no KOKO FitClub fitness clubs operating in Canada.
[22] Mr. Lannon licenses his mark to Koko Fitness Inc. who in turn licenses to Koko FitClub LLC. Those licence agreements are of record: see para. 4, above.
[23] The figure of 500 USB keys sold in Canada is based on 250 keys sold to each of the two franchise clubs mentioned in para. 16, above. The opponent is not claiming that “Canadian Franchisees sold any particular number of these keys to their customers:” see pg. 9-12 of the transcript and in particular Q 41 on pg. 12.
[24] Mr. Lannon is not aware of whether franchisees are required, by the terms of their license agreement with Koko FitClub LLC., to indicate that Mr. Lannon is the owner of the mark KOKO.
[25] It is clear from the transcript of cross-examination, at pg. 26-28, that Mr. Lannon did not conduct the trade-mark searches he refers to in paras. 20 and 21 of his affidavit and that he has no familiarity with how the searches were conducted. I therefore find paras. 20 and 21 are inadmissible hearsay.
[26] Mr. Lannon is questioned about license agreements for the mark KOKO with suppliers beginning at pg. 24 of the transcript:
97 Q. . . . Paragraph 17 [i.e., para. 17 of his affidavit] you state that your franchisees can purchase branded items directly from your suppliers?
A. Yes.
98 Q. Who are those suppliers?
A. We use various different suppliers. I -- it's an ever changing list of suppliers. I don't think we've disclosed that or made that as part of the affidavit, but we use third party suppliers in Ontario.
99 Q. Let's look at the period when you had Canadian franchise locations from November 2009 to November 2011. Which suppliers were authorized to sell Koko branded items into Canada?
A. I don't recall.
100 Q. Do you know if any of them were?
A. Yes.
101 Q. Can you recall any suppliers who were authorized to sell Koko branded items into Canada?
A. I don't recall which venders. As I said, we use different venders at different times and we made them available to franchisees at that time. So which selection of venders were being utilized at that point at that time three years ago I don't recall.
102 Q. And do these suppliers manufacturer [sic] these items or arrange for the manufacture by others?
A. I believe so, yes.
103 Q. And is there a licence agreement between you personally and any of these suppliers?
A. No.
104 Q. Is there a licence agreement between Koko Fitness Inc. or Koko FitClub in [sic] any of these suppliers?
A. No.
[27] In view of Mr. Lannon’s above testimony on cross-examination, it is by no means clear that any use of the mark KOKO in Canada in association with the opponent’s services inured to the benefit of the opponent. Further, as noted by counsel for the applicant at the oral hearing, the opponent’s license agreements that were in place (i) do not specifically refer to the opponent’s mark KOKO and (ii) do not contain any quality control provisions. As it is the responsibility of the opponent to prove each aspect of its case, and given the paucity of evidence provided by the opponent concerning licensing of his mark KOKO, I am hesitant to find that Mr. Lannon in fact had direct or indirect control of the character or quality of the services under the mark KOKO provided by any of his licensees or sub-licensees. Consequently, opponent cannot claim that his mark KOKO had acquired any distinctiveness in Canada through sales of KOKO branded items sourced from suppliers: see section 50 of the Trade-marks Act.
Meaning of Confusion between Trade-marks
[28] Trade-marks are confusing when there is a reasonable likelihood of confusion within the meaning of section 6(2) of the Trade-marks Act, shown below:
The 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 . . . or performed by the same person, whether or not the wares or services . . . are of the same general class.
[29] Thus, section 6(2) does not concern the confusion of the marks themselves, but confusion of goods or services from one source as being from another source. In the instant case, the question posed by section 6(2) is whether purchasers of the applicant’s wares sold under the mark KOKO would believe that those wares were produced or authorized or licensed by the opponent who (purportedly) sells exercise equipment and fitness services in Canada under his mark KOKO. The legal onus is on the applicant to show, on the usual civil balance of probabilities standard, that there would be no reasonable likelihood of confusion.
Test for Confusion
[30] The test for confusion is one of first impression and imperfect recollection. Factors to be considered, in making an assessment as to whether two marks are confusing, are “all the surrounding circumstances including ” those specifically mentioned in section 6(5)(a) to section 6(5)(e) of the Act: the inherent distinctiveness of the marks and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; the degree of resemblance in appearance or sound of the marks or in the ideas suggested by them. This list is not exhaustive and all relevant factors are to be considered. Further, all factors do not necessarily have equal weight as the weight to be given to each depends on the circumstances: see Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 CPR(3d) 308 (FCTD). However, as noted by Mr. Justice Rothstein in Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), 92 CPR(4th) 361 (SCC), although the degree of resemblance is the last factor cited in section 6(5), it is the statutory factor that is often likely to have the greatest effect in deciding the issue of confusion.
Consideration of section 6(5) Factors
[31] With respect to the first factor, the parties’ marks are the same coined word having no suggestive connotation in relation to the parties wares and services. Therefore neither party has an advantage in respect of inherent distinctiveness. There is no evidence that the applied-for mark acquired any distinctiveness through use or advertising at the later material dates. However, given the lack of specificity concerning the extent of use of the opponent’s mark, and the lack of certainty concerning whether any use of the opponent’s mark in Canada inures to the benefit of the opponent, I find that, at best, the opponent has established minimal use of his mark KOKO. The first factor, which is the combination of inherent and acquired distinctiveness, therefore does not favour the opponent to any appreciable extent at any material time. Similarly, the opponent has, at best, established use of his mark over a short time (from November 2009 to November 2011, at two locations) and the extent of such use is indeterminate. In such circumstances the second factor does not favour the opponent to any appreciable extent at any material date.
[32] The applicant’s wares as specified in the subject application have little, if any, connection to the opponent’s wares and services. In the absence of evidence to the contrary, I assume that the parties’ channels of trade would also differ. Accordingly, the third and fourth factors favour the applicant. Of course the fifth factor favours the opponent as the parties’ marks are the same. However, as will be seen from a consideration of jurisprudence, below, resemblance between marks is not always the controlling factor when the parties’ wares or services are quite different.
Jurisprudence
[33] I am in general agreement with the applicant’s submissions at paragraphs 53 to 56 of its written argument concerning the importance of the third and fourth factors:
53. In Suzuki Motor Corp. v. Sahara Corp. (1998), 86 C.P.R. (3d) 235 (TMOB), the Board dealt with an opposition to the mark SIDEKICK for booster car seats based, in part, on the opponent's prior registration of the identical mark for automobiles.
54. The Board, in dismissing the opposition, noted the differences in the parties' wares and also their channels of trade. At page 240, Hearing Officer Martin noted as follows:
It may be that some consumers seeing the mark SIDEKICK on a portable booster car seat in a retail store would think of the opponent's SIDEKICK vehicle. But it is highly unlikely that they would conclude that the applicant's product emanated from or was approved by the opponent given the wide differences in the wares and trades.
55. The Federal Court of Appeal's decision in Lexus Foods Inc. v. Toyota Jidosha Kabushiki Kaisha (2000), 9 C.P.R. (4th) 297 is also very instructive in the present circumstances, Linden J.A., speaking for the court, stated as follows:
As it is pointed out in Pink Panther, "the registration of a trade-mark does not grant the registrant ownership of the words or images in that mark". The protection granted must be related to certain wares or services, because confusion is less likely when the wares are markedly different, even when the mark is a well-known one. The use of the phrase "whether or not the wares or services are of the same general class" as used in subsections 6(2), 6(3) and 6(4) does not mean that the nature of the wares is irrelevant in determining confusion; they suggest only that confusion may be generated with goods that are not in the "same general class", but still have some resemblance or linkage to the wares in question. The type of goods being compared in order to determine if there might be confusion is still relevant, and, where they are as dramatically different as cars and canned food, that must be given considerable weight, something the Trial Judge failed to do, but the Registrar properly did. This issue was foreshadowed in Pink Panther where the Court stated: "where one mark refers to household products and the other to automotive products, and they are distributed in different types of shops, there is less likelihood that consumers will mistake one mark for the other". [emphasis added]
56. In the present case, the Opponent is effectively seeking to ignore that
it [sic] has a registration that is limited to very specific wares and services and is now seeking to obtain a monopoly over entirely different wares that would move through different channels of trade.
Conclusion
[34] In view of the foregoing section 6(5) analysis and the above jurisprudence, I find that, at all material times, the applicant has met the onus on it to show that the parties’ marks are not confusing.
APPLICATION No. 1,458,132 - KOKO
[35] The second application was filed on November 5, 2011. It is also based on proposed use in Canada in association with the following wares:
thermal insulated lunch bags; non-metal water bottles;
thermal insulated grocery tote bags; non-insulated tote bags.
[36] As in the previous case, the wares were amended in May 2014. The wares of record are:
thermal insulated lunch bags; thermal insulated grocery tote bags and non-insulated grocery tote bags, none of the foregoing made from leather or imitation leather other than for the use of leather trim or imitation leather trim; non-metal water bottles.
[37] The second application was advertised for opposition purposes in the Trade-marks Journal issue dated December 7, 2011 and was opposed on February 6, 2012.
[38] The issues in the two cases are entirely analogous and the evidence of record is the same in each case. While the material dates for the grounds of opposition differ to some extent, and the second application includes “non-metal water bottles,” the analysis of confusion is essentially the same as in the first opposition case. Equally important is that the same jurisprudence applies. I therefore find that, at all material times, the applicant has met the onus on it to show that the parties’ marks are not confusing.
Disposition
[39] In view of the foregoing, the oppositions to application nos.1,381,044 and 1,458,132 are rejected. These decisions have been made pursuant to a delegation of authority by the Registrar of Trade-marks under section 63(3) of the Trade-marks Act.
__________________
Myer Herzig, Member,
Trade-marks Opposition Board
Canadian Intellectual Property Office