IN THE MATTER OF AN OPPOSITION
by Kingswood Capital Corporation to application
No. 610,813 for the trade-mark KINGSWOOD
Design filed by The Kingswood Community Corp.
On July 6, 1988, the applicant, The Kingswood Community Corp., filed an application to register the trade-mark KINGSWOOD Design (illustrated below) based on use in Canada since June 18, 1988 for the following services:
the operation of a business dealing in residential and
commercial properties.
The application was advertised for opposition purposes on May 10, 1989. During the course of this proceeding, the statement of services was amended to read as follows:
the operation of a business dealing in residential and
commercial properties, namely, properties comprising
residential housing and a regional shopping centre
situated within a one hundred kilometre radius of the
present City Hall in the City of Barrie, Ontario.
Unlike the situation in People's Drug Mart (B.C.) Ltd. v. Asklepios Pharmaceutical Co. (1991), 37 C.P.R.(3d) 179 at 181 (T.M.O.B.), the revised application was accepted apparently because the geographical restriction was in relation to the properties dealt with rather than the services performed.
The opponent, Kingswood Capital Corporation, filed a statement of opposition on August 4, 1989, a copy of which was forwarded to the applicant on August 18, 1989. The grounds of opposition include, among others, that the applicant is not the person entitled to registration pursuant to Section 16(1)(c) of the Trade-marks Act because, as of the applicant's claimed date of first use, the applied for trade-mark was confusing with the trade-name Kingswood Capital Corporation previously used in Canada by the opponent in association with a business dealing in real estate.
The applicant filed and served a counter statement. The opponent's evidence consists of the affidavits of Gary S. Segal, Kenneth G. England and James Szabo. The applicant did not file evidence. Only the opponent filed a written argument and no oral hearing was conducted.
As for the ground of prior entitlement based on Section 16(1)(c) of the Act, in view of the provisions of Sections 16(1) and 16(5), it was incumbent on the opponent to evidence use of its trade-name Kingswood Capital Corporation prior to the applicant's claimed date of first use and to show that its trade-name was not abandoned as of the applicant's date of advertisement (i.e. - May 10, 1989). The opponent's evidence satisfies both of these requirements.
The ground of prior entitlement therefore remains to be decided on the issue of confusion between the opponent's trade-name and the applicant's mark KINGSWOOD Design. The material time for considering the circumstances respecting that issue is as of the applicant's claimed date of first use in accordance with the wording of Section 16(1) of the Act. Furthermore, the onus or legal burden is on the applicant to show no reasonable likelihood of confusion. Finally, in applying the test for confusion in Section 6(3) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set out in Section 6(5) of the Act.
The applicant's trade-mark and the opponent's trade-name are both inherently distinctive. As of the applicant's claimed date of first use, I must conclude that the applicant's mark had not become known at all in Canada. As of that date, the opponent had used its trade-name for a number of years but it would appear that only a limited number of people in the trade were familiar with it. Thus, I must conclude that the opponent's trade-name had not become known to any significant extent.
The opponent's trade-name has been used for a longer period of time than the applicant's mark. Thus, the circumstance in Section 6(5)(b) of the Act favors the opponent.
The applicant's real estate services are similar to the nature of the real estate business operated by the opponent. In the absence of evidence from the applicant, I must conclude that the trades of the parties would also be similar.
As for Section 6(5)(e) of the Act, I consider that there is a high degree of resemblance between the applicant's mark and the opponent's name in all respects. In fact, the applicant's mark is identical to the first and most distinctive component of the opponent's name.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my conclusions above, and particularly in view of the resemblance between the applicant's services and the opponent's business and between the applicant's mark and the opponent's name, I find that the applicant's trade-mark is confusing with the opponent's trade-name. The ground of prior entitlement is therefore successful and the remaining grounds need not be considered.
In view of the above, I refuse the applicant's application.
DATED AT HULL, QUEBEC, THIS 31st DAY OF August , 1994.
David J. Martin,
Member,
Trade Marks Opposition Board.