IN THE MATTER OF AN OPPOSITION by Quo Vadis International Ltd./Ltée to application No. 655,595 for the trade-mark DAY-AT-A-GLANCE filed by Cullman Ventures, Inc.
On April 19, 1990, Cullman Ventures, Inc. filed an application to register the trade-mark DAY-AT-A-GLANCE based upon use of the trade-mark in Canada since at least as early as 1974 in association with “diaries, appointment books, calendars and record books”.
The present application was advertised for opposition purposes in the Trade-marks Journal of November 28, 1990 and the opponent, Quo Vadis International Ltd./Ltée, filed a statement of opposition on May 28, 1991. In its statement of opposition, the opponent alleged the following grounds:
(a) The applicant’s application is not in compliance with Section 30 of the Trade-marks Act in that the applicant has not used the trade-mark DAY-AT-A-GLANCE in Canada in association with the wares covered in the present application since at least as early as 1974;
(b) The trade-mark DAY-AT-A-GLANCE is not registrable in view of the provisions of Section 12(1)(b) of the Trade-marks Act because it is clearly descriptive or deceptively misdescriptive in the English language of the character or quality of the wares in association with which it has allegedly been used in Canada;
(c) The trade-mark DAY-AT-A-GLANCE does not constitute a trade-mark within the scope of Section 2 of the Trade-marks Act in that it does not distinguish nor is it adapted to distinguish the wares of the applicant from those of third parties.
The opponent filed as its evidence the affidavit of Gina Petrone while the applicant submitted as its evidence the affidavits of Catherine Ujihara and Nancy Nephew. As evidence in reply, the opponent filed an affidavit of Olivier Beltrami. All four affiants were cross-examined on their affidavits, the transcripts of the cross-examinations, the exhibits to their cross-examinations, and the responses to undertakings given during the cross-examinations forming part of the opposition record. Both parties submitted written arguments and both were represented at an oral hearing.
During the opposition proceeding, the applicant submitted a revised application in which it asserted use of the trade-mark DAY-AT-A-GLANCE since at least as early as 1974 by it and “its predecessors, Textron Canada Inc. and Shaeffer Pen Canada Inc.”. Further, the opponent was granted leave to amend the first ground of opposition in its statement of opposition to the following:
(a) The applicant’s application is not in compliance with Section 30 of the Trade-marks Act in that the applicant and its alleged predecessors-in-title have not used the trade-mark DAY-AT-A-GLANCE in Canada in association with the wares covered in the present application since at least as early as 1974;
While the legal burden is upon the applicant to establish that its application is in compliance with Section 30(b) of the Trade-marks Act, there is an initial evidential burden on the opponent in respect of the Section 30 ground [see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 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 [see John Labatt Limited v. The Molson Companies Limited, 30 C.P.R. (3d) 293, at p. 298]. Further, that burden is lighter respecting the issue of non-compliance with Section 30(b) of the Act [see Tune Masters v. Mr. P's Mastertune, 10 C.P.R.(3d) 84, at p. 89]. Moreover, in Coca-Cola Ltd. v. Compagnie Française de Commerce, 35 C.P.R. (3d) 406, Board Member Martin noted that the opponent can rely upon the cross-examination of the applicant's affiant to meet the evidential burden upon it. At page 412, Mr. Martin commented as follows:
In the present case, I consider that the opponent has met its evidential burden as a consequence of its cross-examination of the applicant's affiant Jean-Pierre Grivory. Mr. Grivory identifies himself as the Chairman of the applicant and, as noted above, describes how and where his company's trade-mark is used. On cross-examination, the opponent's agent sought to elicit some additional information from Mr. Grivory regarding the use of his company's trade-mark both in Canada and in France. She also questioned him regarding the extent of sales. However, the applicant's agent thwarted the opponent's agent and repeatedly directed Mr. Grivory not to answer such questions.
It was the position of the applicant's agent that the issue of the applicant's claimed date of first use was no longer relevant since the opponent had not independently adduced any evidence directed to the ground of non-compliance with Section 30(b) of the Act. I disagree. The Grivory affidavit dealt with the use of the applicant's mark and the opponent was entitled to question Mr. Grivory on this matter with a view to eliciting evidence respecting the first ground of opposition.
In view of Mr. Grivory's failure to answer appropriate questions regarding his company's activities in Canada, I must infer that his company's claimed date of first use in Canada is incorrect. Since the applicant did not file evidence directed to positively establishing that date, I find that the application does not comply with Section 30(b) of the Act. Consequently, the first ground of opposition insofar as it is based on non-compliance with Section 30(b) of the Act is successful.
In the present case, the opponent has relied upon the Ujihara and Nephew affidavits and the transcripts of their cross-examinations in support of its position that it has met the evidential burden upon it in respect of the Section 30(b) ground. While the opponent has raised a number of issues in respect of the applicant's claim that it and its predecessors have used the trade-mark DAY-AT-A-GLANCE in Canada since at least as early as 1974, I would note that neither of the applicant's affiant's was specifically requested during their cross-examinations to furnish the opponent with documentation which would have supported either the applicant's claimed date of first use or the transfer of trade-mark rights in the trade-mark DAY-AT-A-GLANCE from the applicant's predecessors to the applicant. Further, I would note that Ms. Ujihara, Customer Services Manager of Keith Clark Office Products Limited, the Canadian subsidiary of the applicant, was only able to give evidence relating to activities involving the trade-mark DAY-AT-A-GLANCE in Canada subsequent to the applicant acquiring the trade-mark in March of 1988. As well, Nancy F. Nephew, who joined the Shaeffer-Eaton Division of Textron Canada Inc. as Credit Manager in 1979 and became Sales Administrator of the company in 1983, had no direct knowledge of the transfer of trade-mark rights from the applicant's predecessors to the applicant. Furthermore, as the rights in the trade-mark DAY-AT-A-GLANCE were transferred from Ms. Nephew's company to the applicant in 1988, Ms. Nephew's company no longer had any additional documentation relating to use of the trade-mark DAY-AT-A-GLANCE beyond that which was annexed to her affidavit.
Apart from the above, the applicant's evidence and the transcripts of the Ujihara and Nephew cross-examinations are, in my view, not inconsistent with the applicant's claim that it and its predecessors-in-title have used the trade-mark DAY-AT-A-GLANCE in Canada in association with “diaries, appointment books” since at least as early as 1974. In this regard, I consider that appointment books, diaries, planning books, journals and planners would be used interchangeably by the average consumer when referring to the same wares. On the other hand, the evidence of record does not point to the applicant or its predecessors having used the trade-mark DAY-AT-A-GLANCE in association with what the average consumer would identify as being “calendars and record books”. Rather, the applicant's evidence points to the use of the trade-mark AT-A-GLANCE having been applied to wares identified in the applicant's catalogues as record books of various kinds. As a result, I have concluded that the opponent has met the evidential burden upon it in respect of the Section 30(b) ground as it applies to “calendars and record books” and have therefore refused the applicant's application in respect of these wares.
As its final ground, the opponent has alleged that the trade-mark DAY-AT-A-GLANCE cannot distinguish the applicant's wares from those of others. As no specific allegations of fact have been relied upon by the opponent in support of the non-distinctiveness ground, this ground it limited to the allegation that the applicant's trade-mark is not distinctive in that it is either clearly descriptive or deceptively misdescriptive in the English language of the character or quality of the applicant's wares. Accordingly, the determination of the second ground will effectively decide the final ground of opposition.
The second ground of opposition is based on Section 12(1)(b) of the Trade-marks Act, the opponent alleging that the trade-mark DAY-AT-A-GLANCE is not registrable in that it is either clearly descriptive or deceptively misdescriptive in the English language of the character or quality of the applicant's wares. The issue as to whether the trade-mark DAY-AT-A-GLANCE is clearly descriptive of the character or quality of “diaries, appointment books” must be considered from the point of view of the average purchaser of those wares. Also, in determining whether the trade-mark DAY-AT-A-GLANCE is clearly descriptive of the character or quality of the applicant's wares, the trade-mark must not be dissected into its component elements and carefully analyzed, but rather must be considered in its entirety as a matter of immediate impression [see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks, 40 C.P.R. (2d) 25, at pp. 27-28 and Atlantic Promotions Inc. v. Registrar of Trade Marks, 2 C.P.R. (3d) 183, at p. 186]. Additionally, the material date for considering a ground of opposition based on Section 12(1)(b) of the Act is the date of decision [see Lubrication Engineers, Inc. v. The Canadian Council of Professional Engineers, 41 C.P.R. (3d) 243 (F.C.A.)].
With respect to the second ground, the legal burden is upon the applicant to show that its trade-mark DAY-AT-A-GLANCE is registrable. However, there is an initial evidential burden upon the opponent in respect of this ground to adduce sufficient evidence which, if believed, would support the truth of its allegations that the trade-mark DAY-AT-A-GLANCE is clearly descriptive or deceptively misdescriptive of the character or quality of the applicant's wares. It is therefore necessary to consider the opponent's evidence, as well as the applicant's evidence and the transcripts of the Ujihara and Nephew cross-examinations, in order to determine whether the opponent has met the initial evidential burden upon it.
The opponent has relied upon dictionary definitions for the word “glance” as it appears in several dictionaries. In the Gage Canadian Dictionary and The Funk & Wagnalls Standard College Dictionary, “glance” as a noun is defined inter alia as “a quick look” while The Random House Dictionary of the English Language defines “glance” as “a quick or brief look”. As well, one of the definitions of the word “glance” as a noun appearing in The Houghton Mifflin Dictionary of the English Language is “a brief or cursory look” while Webster's Third New International Dictionary includes the following:
“a quick, brief, hurried, or cursory look ... <museums in which pictures of a single style or artist can be compared and enjoyed at a ~ -R.J.Goldwater>”.
The opponent also referred to Collins Cobuild English Language
Dictionary which includes the following for the word “glance”:
“4 If you see, tell, recognize, etc. something at a glance, you see or notice it immediately, and without having to think pr look carefully. EG He could tell at a glance that she was upset... She recognized at a glance the implication of his statement.”
The opponent has also relied upon the following excerpts from the transcript of the Ujihara cross-examination commencing at page 7:
40 Q. AT-A-GLANCE?
A. Or under that umbrella.
41 Q. What do you mean?
A. Well, in that category you would have several different kinds, like, depending on what the function is.
So, if it, if it had one day per page, we would call it a DAY-AT-A-GLANCE, and if it had one week to an opening, we would call it a WEEK-AT-A-GLANCE, and if it had a whole month when you open the book, then that's a MONTH-AT-A-GLANCE, and if its called a wall calendar with a full year on it, that would be a YEAR-AT-A-GLANCE; but they're all positioned as our, our better product line. Our best, I guess.
And at page 10:
53 Q. And what would it tell to the customer, like--
A. It has --
54 Q. --if they see DAY-AT-A-GLANCE and WEEK-AT-A- GLANCE and MONTH-AT-A-GLANCE?
A. It would tell them that DAY-AT-A-GLANCE would mean that they are getting a one page per day diary that is our best quality. It's got the highest quality cover material and the best quality paper and the nicer graphic style on the pages than what we might normally use on a lower end product.
55 Q. Hm-hmm. And what about WEEK-AT-A-GLANCE?
A. It would have all the same quality characteristics, but that would indicate that there's a week to an opening.
56 Q. And the MONTH-AT-A-GLANCE?
A. That would be when you open it that there would be full month.
57 Q. And the YEAR-AT-A-GLANCE?
A. That would be the whole year. That generally refers to a wall calendar.
In addition to the above, and in response to undertakings given during the Ujihara cross-examination, the applicant furnished two advertising flyers from Grand & Toy relating to appointment books, journals, planners, calendars, diaries and agendas from various companies including the applicant and the opponent. In the flyers, reference is made to numerous descriptions relating to these wares, including the following:
“One day to an opening”
“One day to a page”
“Two days to a page”
“One month to an opening”
“3 DAYS TO A PAGE”
“Week/view and month/view”
“Month-in-view, project/organizer, and more”
“Hard cover 1 week to an opening”
“One month to a page”
“2 weeks to an opening”
“2 days per opening”
“ONE WEEK AT A GLANCE”
“One week at a glance”
“One week per opening...”
“Week at a view and month at a view formats together.”
“Special month at a view section precedes the week at a view section.”
“Month to an opening”
“One month per page”
”Month-in-view; 4-year calendar”
“1 day per opening”
“1 week per opening”
Having regard to the above, I have concluded that the opponent has met the evidential burden upon it in respect of the Section 12(1)(b) ground of opposition in that the trade-mark DAY-AT-A-GLANCE as applied to “diaries, appointment books” describes the function of or the principal result achieved from using the applicant’s wares, that is, that they provide the user with the means whereby he or she can see the entries for a day at a glance once the user has entered the appointments on the diary or appointment book. In this regard, in Thomson Research Associated Ltd. v. Registrar of Trade Marks, 67 C.P.R. (2d) 205, at p. 208, Mr. Justice Mahoney pointed out that the character or quality of a ware includes its function and cited the decision of the Supreme Court of Canada in S.C. Johnson & Son, Ltd. v. Marketing Int'l Ltd., 44 C.P.R. (2d) 16, at p. 25 in support of his conclusion. Indeed, the applicant in its written argument would appear to support the conclusion that its wares are intended to provide the user with the entries for a day at page 11 as follows:
“The Applicant's evidence shows that the Applicant markets an “AT-A-GLANCE” branded line of products. It is admitted that the Applicant's products marketed under the brand “DAY-AT-A-GLANCE” are produced so that appointments and records can be made on a single page for each day, and that when the book is opened and viewed the entries for a whole day can be easily seen, but this does not mean that the mark “DAY-AT-A-GLANCE” clearly describes a character or quality of the products. There is at least a two step process to take the applicant's mark and reach a character or quality, if in fact one could ever do so. It is only once the purchaser has made the entries for that day, and then opens the appointment book to the proper page and looks at the day's entries that the entries are seen. Further, the purchaser of Applicant's products is not interested in the day itself, but in the entries for that day.”
As the opponent has met the initial evidential burden upon it in respect of the second ground, the applicant must meet the legal burden upon it of establishing that its trade-mark is registrable. In paragraph 17 of her affidavit, Ms. Ujihara refers to the wholesale value of sales in Canada of the applicant’s products bearing the trade-mark DAY-AT-A-GLANCE for each fiscal year from 1988 to 1992 was greater than $30,000. Nevertheless, I find that the applicant has failed to meet the legal burden upon it of showing that the trade-mark DAY-AT-A-GLANCE is not clearly descriptive of the character of its wares. Further, the applicant’s evidence falls far short of establishing that the trade-mark DAY-AT-A-GLANCE had become distinctive in relation to its “diaries, appointment books” in Canada as of the filing date of the present application [April 19, 1990], within the scope of Section 12(2) of the Trade-marks Act. I have therefore concluded that the applicant’s trade-mark is not registrable in view of the provisions of Section 12(1)(b) of the Act.
In view of the above, I refuse the applicant's application pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 12th DAY OF APRIL, 1996.
G.W.Partington,
Chairman,
Trade Marks Opposition Board.