Trademark Opposition Board Decisions

 

IN THE MATTER OF AN OPPOSITION by Black Box Inc. to application Nos. 1146016 and 1146481 for the trade-marks ZERO NINETEEN and ZERO NINETEEN and Design filed by Benisti Import-Export Inc.                                                                         

 

[1]            On July 10, 2002, Benisti Import-Export Inc (the Applicant), filed an application to register the trade-mark ZERO NINETEEN based upon use of the mark in Canada since January 1, 2002, in association with the following wares (as amended):

 

(1)    Men's, women's and children's garments, namely; jackets, pants, t-shirts, shirts, jeans, hats, caps, undergarment, underwear, dresses, skirts, bathing suits, shorts, vests, blouses, scarves, jump suits, sweaters, and pullovers (2) Shoes, namely; boots, shoes, running shoes, sport shoes, sandals and slippers (3) Accessories namely; watches, wallets, belts, ties, sunglasses, eyeglasses, colognes, perfumes, gels, deodorants, eau de toilette, jewellery, key chains, back packs, travelling bags, garment bags, handbags, school bags, beach bags, luggage, purses, umbrellas, gloves, and mittens (4) Sports equipment, namely; bicycles, scooters, skate boards, skis, ice skates, roller blades, basketballs, footballs and soccer balls; (5) Camping equipment, namely: tents and sleeping bags. (6) Housewares, namely: tabletops, glasses, cups, forks, spoons, knives, bed sheets, blankets, quilts, bed comforters, towels, curtains. 

 

 

On July 16, 2002, the Applicant filed an application to register the trade-mark ZERO NINETEEN and Design (shown below) also based upon use of the mark in Canada since January 1, 2002, in association with the following list of wares and services (as amended):

 

Wares:

(1) Men's, women's and children's garments, namely; jackets, pants, t-shirts, shirts, jeans, hats, caps, undergarments, underwear, dresses, skirts, bathing suits, shorts, vests, blouses, scarves, jump suits, sweaters, and pullovers. (2) Shoes, namely; boots, shoes, running shoes, sport shoes, sandals and slippers. (3) Accessories namely; watches, wallets, belts, ties, sunglasses, eyeglasses, colognes, perfumes, gels, deodorants, eau de toilette, jewellery, key chains, back packs, travelling bags, garment bags, handbags, school bags, beach bags, luggage, purses, umbrellas, gloves and mittens. (4) Sports equipment, namely: bicycles, scooters, skate boards, skis, ice skates, roller blades, basketballs, footballs and soccer balls. (5) Camping equipment, namely: tents and sleeping bags. (6) House wares, namely: tabletops, glasses, cups, forks, spoons, knives, utensils, bed sheets, blankets, covers, towels, curtains.

 

Services:

Café and restaurant services, real estate management services, credit card services.

 

 

Both of the Applicant’s trade-mark applications were advertised for opposition purposes in the Trade-marks Journal of June 16, 2004.   

 

[2]            On November 16, 2004, Black Box Inc. (the Opponent) filed statements of opposition against each application. The grounds of opposition for each mark are based on non-compliance with the requirements of s. 30(b) and s.  30(i) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act), non-registrability pursuant to s. 12(1)(d), non-entitlement pursuant to s. 16(1)(a), (b) and (c) and non-distinctiveness.  Most of these grounds are based on confusion with the Opponent’s ZERO trade-mark (Registration No. TMA 575,741) for skateboards and skateboard accessories including wheels and bearings, and the Opponent’s previous use of the trade-mark and trade-name ZERO in association with clothing and some accessories, namely shirts, T-shirts, sweatshirts, pants, shorts, jackets, hats, caps, belts, wallets, backpacks and bags; skateboards and skateboard accessories including wheels and bearings.

 

[3]            The Applicant filed and served a counter statement in each case, in which it denied the Opponent’s allegations.  As its evidence in each case, the Opponent filed the affidavit of Jamie Thomas. The Applicant’s evidence in each case consisted of the affidavit of Mario Morellato.  The Opponent also filed in each case a second affidavit of Mr. Thomas as additional evidence.

 

[4]            Neither affiant was cross-examined in either case.  Both parties filed a written argument in each case and an oral hearing was conducted at which both parties were represented.  At the oral hearing, the Opponent withdrew the ground of opposition based on s. 16(1)(c) for each mark.

 

Preliminary Issue

[5]            As the issue of whether or not the Board has jurisdiction to render a split decision was raised for the first time at the oral hearing, comments on the decision in Produits Menagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf GmbH (1986), 10 C.P.R. (3d) 482 at 492 (F.C.T.D.) were requested from both parties after the oral hearing.   Receipt is acknowledged of the comments from both the Applicant and the Opponent.   

 

[6]            Having reviewed both parties’ submissions, I am of the view that the Board does have the jurisdiction to render a split decision in certain circumstances.

 

Onus and Material Dates

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

 

[8]            The material dates that apply to the grounds of opposition are as follows:

Section 30(b) Ground of Opposition

[9]            The Opponent pleads that the applications do not conform to the requirements of s. 30(b) in that the Applicant’s trade-marks have not been used in Canada in association with the wares and services listed in the applications since the dates of first use alleged in the applications. To the extent that the relevant facts with respect to this ground of opposition are more readily available to the Applicant, the evidentiary burden on the Opponent with respect to this ground of opposition is lower, and can be met by reference to the Applicant’s own evidence [see Tune Masters v. Mr. P’s Mastertune Ignition Services Ltd. (1986), 10 C.P.R. (3d) 84 (T.M.O.B.); Labatt Brewing Company Limited v. Molson Breweries, a Partnership (1996), 68 C.P.R. (3d) 216 (F.C.T.D.)]. In such a case, however, the Opponent must show that the evidence is clearly inconsistent with the Applicant’s claim [see York Barbell Holdings Ltd. v. ICON Health & Fitness, Inc. (2001), 13 C.P.R. (4^th) 156 (T.M.O.B.)].

 

[10]            From the evidence furnished, I am not satisfied that the Opponent has met its initial burden with respect to s. 30(b) in either case.  The Opponent submits that since it raised the s. 30(b) ground in its statements of opposition, the onus was shifted to the Applicant to show continuous use of the Applicant’s trade-marks since the date claimed.  I respectfully disagree. 

 

[11]            In order to meet its burden under this ground, it was up to the Opponent to either file evidence that raises doubt with respect to the Applicant’s claim that its marks were first used on January 1, 2002, or point to enough ambiguities or inconsistencies in the Applicant’s evidence to cast doubt on the veracity of the Applicant’s claimed date of first use.  Although I agree with the Opponent that Mr. Morellato does not provide any documentary evidence showing use of either of the Applicant’s trade-marks at issue pursuant to s. 4 of the Act, Mr. Morellato testifies that the Applicant’s trade-marks have been in use by the Applicant since at least January 1, 2002.  From the remainder of Mr. Morellato’s affidavit, I have no reason to doubt that when he says the Applicant’s trade-marks have been used in association with the applied for wares and services, he understands what qualifies as use pursuant to s. 4.  While I do agree with the Opponent that it is curious that Mr. Morellato only attached examples of advertising of its POINT ZERO trade-mark to his affidavit, this fact alone in my view does not raise any doubt about the veracity of the Applicant’s claim that it has used its trade-marks since as early as January 1, 2002. 

 

[12]            As a result, since the Opponent did not raise any doubt about the veracity of the Applicant’s claim that it had used its trade-marks since as early as January 1, 2002, the Applicant was not obliged to evidence the use of its trade-marks since such date.  If the Opponent wished to pursue this issue, it could have chosen to cross-examine Mr. Morellato.  This ground of opposition is therefore unsuccessful in both cases. 

 

Section 30(i) Ground of Opposition

[13]            Where an applicant has provided the statement required by s. 30(i), a s. 30(i) ground should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant. [Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.) at 155].  As this is not the case in either file, I am dismissing this ground of opposition in both cases.

 

Section 16(1)(b) Ground of Opposition

[14]            The Opponent's fifth ground does not raise a proper ground of opposition.  Although the Opponent's application for its Registration No. TMA 575,741 was filed prior to the Applicant's dates of first use, it was not pending as of the Applicant's advertisement date for each of its marks as required by Section 16(4) of the Act since it had already proceeded to registration on February 17, 2003 [see Governor and Co. of Adventurers of England trading into Hudson’s Bay v. Kmart Canada Ltd. (1997), 76 C.P.R. (3d) 526 (T.M.O.B.)].  The s. 16(1)(b) ground is therefore unsuccessful.

 

Section 38(2)(d) Ground of Opposition

[15]            The Opponent has pleaded under this ground that the Applicant’s trade-marks are either not adapted to distinguish or not capable of distinguishing the wares and services in association with which they have allegedly been used by the Applicant from the Opponent’s wares.  In considering whether the Applicant’s trade-marks are distinctive, one may consider whether either of them is likely to cause confusion with the Opponent’s ZERO mark.

 

[16]            In order to meet its evidential burden with respect to this ground, the Opponent must show that as of the filing of the opposition its trade-mark ZERO had become known sufficiently to negate the distinctiveness of the Applicant’s trade-marks [Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 at 58 (F.C.T.D.); Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.); and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 412 at 424 (F.C.A.)].  A mark must be known to some extent at least to negate the established distinctiveness of another mark, and its reputation in Canada should be substantial, significant or sufficient; it need not be well known in Canada. [Bojangles International, LLC v. Bojangles Café Ltd. (2006), 48 C.P.R. (4th) 427 (F.C.T.D.); Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 (F.C.T.D.) at 58; Andres Wines Ltd. v. E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 (F.C.A.) at 130; and Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.) at 424].

 

[17]            From the evidence furnished, I am satisfied that the Opponent has met its evidential burden under this ground in each case.  In this regard, Mr. Thomas states that the Opponent, through its predecessor-in-title Tum Yeto, has been using the trade-mark ZERO in Canada in association with clothing items, backpacks, bags, wallets, skateboards and skateboard accessories since as early as 1996.  Attached to the second affidavit of Mr. Thomas as Exhibit A is an invoice dated January 22, 1996, from the Opponent’s predecessor-in-title Tum Yeto to its Canadian distributor for various clothing sold under the ZERO mark. Wares including skateboards, skateboard accessories, t-shirts, sweatshirts, pants, shorts, jackets, hats, caps, belts, backpacks, bags and wallets displaying the Opponent’s ZERO mark are depicted in catalogues for the years 2003-2005, attached as Exhibits N through T to his affidavit, which Mr. Thomas states are either distributed by the Canadian distributor or mailed out directly to customers.  At paragraph 8 of his affidavit, Mr. Thomas states that the Canadian sales for wares bearing the trade-mark ZERO for the years 2002, 2003 and 2004 were $390,854, $724,616 and $676,337, respectively.  Although Mr. Thomas does not provide a breakdown of sales for the Opponent’s wares, I am satisfied that the Opponent has shown from its evidence as a whole that its mark has been sufficiently known to negate the distinctiveness of the Applicant’s trade-marks.

 

the test for confusion

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

 

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

 

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

[20]            Marks comprised of numerals are inherently weak [see Pepsico v. Daiwa 80 C.P.R. (2d) 160 (T.M.O.B.)].  In the present case, both the Applicant’s ZERO NINETEEN mark and the Opponent’s ZERO mark are only comprised of numbers and therefore possess very little distinctiveness.  The Applicant’s ZERO NINETEEN and Design mark possesses a higher degree of distinctiveness than the Applicant’s ZERO NINETEEN mark because of its unique design component.

 

[21]            The strength of a trade-mark may be increased by means of it becoming known through promotion or use.   The Opponent’s mark has become known to some extent in Canada.  Although the Applicant has filed considerable evidence concerning its POINT ZERO trade-mark, since the Applicant’s evidence does not allow me to draw any conclusions with respect to the extent to which the Applicant’s trade-marks have been used or made known in Canada, this factor favours the Opponent.

 

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

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

 

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

[23]            The Applicant’s clothing, accessories such as backpacks, bags and wallets, and skateboards clearly overlap with the wares of the Opponent.  As for the parties’ channels of trade, it appears from the evidence furnished that the Opponent’s core business is the sale of skateboards and related accessories.  Nevertheless, as the Applicant’s application does not include any limitations with respect to its channels of trade, nothing would prevent the Applicant’s overlapping wares from being sold in the same types of places where the Opponent’s wares are typically sold. 

 

[24]            The remaining wares in both of the Applicant’s applications (i.e. shoes, namely: boots, shoes, running shoes, sport shoes, sandals and slippers; watches, ties, sunglasses, eyeglasses, colognes, perfumes, gels, deodorants, eau de toilette, jewellery, key chains, umbrellas, gloves and mittens; bicycles, scooters, skis, ice skates, roller blades, basketballs, footballs and soccer balls, camping equipment, namely tents and sleeping bags; and housewares, namely  tabletops, glasses, cups, forks, spoons, knives, bed sheets, blankets, quilts, bed comforters, towels, curtains) differ from the Opponent’s wares, as do the applied for services in the Applicant’s ZERO NINETEEN and Design application.  The channels of trade for these wares and services would therefore likely be different than those of the Opponent.

 

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

[25]            It has been previously held that it is the first word or syllable in a trade-mark that is the most important for the purposes of distinction [see Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183].  In the present case, the Applicant’s ZERO NINETEEN mark contains the Opponent’s mark in its entirety as its first component.   There is therefore a reasonable degree of resemblance between this mark and the Opponent’s mark in appearance, sound and ideas suggested. 

 

[26]            With respect to the Applicant’s ZERO NINETEEN and Design mark, although the “19” design appears above the word ZERO, the component ZERO would arguably still be considered the dominant component of this mark.  I therefore also consider there to be a reasonable degree of resemblance between this mark and the Opponent’s mark.

 

Surrounding Circumstances

[27]            As a further surrounding circumstance, the Applicant raised the issue of the lawfulness of the Opponent’s use of its mark.  The Applicant argued that the Opponent’s registration of the mark ZERO (TMA 575,741) and its application to register the trade-mark ZERO for clothing wares (Application No. 1,233,575) clearly infringe upon the Applicant’s rights derived from its use of the trade-mark POINT ZERO (TMA 309,311), in association with similar wares since 1984. 

 

[28]            While I agree with the Applicant that an Opponent should not be allowed to rely on infringing activities in order to form the basis for opposing an application [see Lunettes Cartier Ltée v. Cartier, Inc. (1991), 36 C.P.R. (3d) 391 (T.M.O.B.)], in the present case there is no finding of infringement by any court, or any evidence that a court action has been commenced.  I therefore cannot consider the Applicant’s allegation as a relevant surrounding circumstance for either of the present cases.

 

[29]            The Applicant has also submitted that its right to use the Applicant’s trade-marks with the applied for wares and services is derived from the rights it has acquired since 1984 through the use of its trade-mark POINT ZERO (TMA 309,311), registered in association with similar wares.  I respectfully disagree with the Applicant on this point as s.19 of the Act does not give the owner of a registration the automatic right to obtain any further registrations no matter how closely the Applicant’s trade-marks may be related to the trade-mark covered in the original registration [see Groupe Lavo Inc. v. Procter & Gamble Inc. (1990), 32 C.P.R. (3d) 533 (T.M.O.B.) at p. 538].

 

conclusion re likelihood of confusion

The issue is whether a consumer who has a general and not precise recollection of the Opponent’s ZERO mark, will, upon seeing the Applicant’s ZERO NINETEEN and ZERO NINETEEN and Design marks, be likely to think that the overlapping wares share a common source.  I find that the Applicant has not met the onus to show, on a balance of probabilities, that there would be no reasonable likelihood of confusion between the marks at issue, in so far as the parties’ overlapping wares are concerned.   However, I do not consider that there would be any reasonable likelihood of confusion between the Opponent’s mark and the Applicant’s marks with respect to the Applicant’s shoes, namely boots, shoes, running shoes, sport shoes, sandals and slippers; watches, ties, sunglasses, eyeglasses, colognes, perfumes, gels, deodorants, eau de toilette, jewellery, key chains, umbrellas, gloves and mittens; bicycles, scooters, skis, ice skates, roller blades, basketballs, footballs and soccer balls; camping equipment, namely tents and sleeping bags; and housewares, namely: tabletops, glasses, cups, forks, spoons, knives, bed sheets, blankets, quilts, bed comforters, towels, curtains; or any of the applied for services in the Applicant’s ZERO NINETEEN and Design application. 

Section 16(1)(a) Ground of Opposition

[30]            The Opponent has further plead that the Applicant is not the person entitled to registration of the Applicant’s trade-marks in view of s. 16(1)(a) because the Applicant’s trade-marks are confusingly similar to the Opponent’s ZERO trade-mark which has been previously used in Canada and which had not been abandoned at the Applicant’s dates of first use.  I am satisfied that the Opponent has discharged its evidential burden with respect to this ground of opposition.

 

[31]            My conclusions above regarding the issue of confusion are for the most part also applicable to this ground of opposition.  The ground of opposition based on s.16 succeeds in part because the Applicant has not satisfied the legal onus on it to establish that there would be no reasonable likelihood of confusion between its either of its marks and the Opponent’s mark in so far as the overlapping wares are concerned.

 

Section 12(1)(d) Ground of Opposition

[32]            As the opposition has succeeded on two grounds, I do not consider it necessary to deal with the s. 12(1)(d) ground of opposition.   

 

Disposition

[33]            In view of the above, and having been delegated by the Registrar of Trade-marks by virtue of s. 63(3) of the Act, I refuse the Applicant’s applications in respect of the following wares:

 

(1) Men's, women's and children's garments, namely; jackets, pants, t-shirts, shirts, jeans, hats, caps, undergarment, underwear, dresses, skirts, bathing suits, shorts, vests, blouses, scarves, jump suits, sweaters, and pullovers (3) wallets, belts, back packs, traveling bags, garment bags, handbags, school bags, beach bags, luggage, purses (4) skate boards.

 

and I otherwise reject the opponent’s oppositions.  As previously noted, authority for such a

divided result may be found in Produits Menagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf GmbH (1986), 10 C.P.R. (3d) 482 (F.C.T.D.) at 492.

 

DATED AT Gatineau, Quebec, THIS 28th DAY OF October, 2009.

 

 

C.R. Folz

Member

Trade-marks Opposition Board