IN THE MATTER OF AN OPPOSITION by French Connection Limited to application No. 1,036,021 for the trade-mark F.H.U.K. in the name of International Clothiers Inc.___ _ _ _
On November 15, 1999, International Clothiers Inc. (the “Applicant”) filed an application to register the trade-mark F.H.U.K. (the “Mark”) based upon proposed use of the Mark in Canada in association with clothing, namely, suits, coats, jackets, sweaters, pants, shorts, vests, shirts, t-shirts, ties, socks and hats (the “Wares”).
The application was advertised for opposition purposes in the Trade-marks Journal of April 16, 2003. On June 10, 2003, French Connection Limited (the “Opponent”) filed a statement of opposition against the application. The Applicant filed and served a counter statement in which it denied the Opponent’s allegations.
As evidence pursuant to rule 41 of the Trade-marks Regulations (1996) (the “Regulations”), the Opponent filed the affidavits of Neil Williams and Elizabeth Hardy, plus a certified copy of Canadian trade-mark registration No. TMA515,878.
The Applicant elected to not file any evidence. It did obtain an order for the cross-examination of the Opponent’s affiants, but never conducted such cross-examinations.
Each party filed a written argument.
An oral hearing was not requested.
Likelihood of Confusion
The main issue in these proceedings is the likelihood of confusion between the Mark and the Opponent’s mark FCUK, which the Opponent has registered and used in association with clothing and other items. The likelihood of confusion is the basis for grounds of opposition pleaded under three sections of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”), namely s. 12(1)(d) - registrability, s. 16(3)(a) – entitlement, and s. 2 – distinctiveness. The material dates with respect to those grounds of opposition are as follows: s. 12(1)(d) - the date of my decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks (1991), 37 C.P.R. (3d) 413 (F.C.A.)]; s. 16(3)(a) - the date of filing of the application; non-distinctiveness - the date of filing of the opposition [see Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.) at 324].
The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies 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.).]
The Opponent has met its initial burden with respect to s. 12(1)(d) because the registration upon which it relies, TMA 515,878 for FCUK, is in good standing.
In order to meet its initial burden under s. 16, the Opponent is required to evidence that it used its mark in Canada prior to the Applicant’s filing date and had not abandoned such use as of the advertisement of the Applicant’s application. This onus has been satisfied through Ms. Hardy’s evidence. Ms. Hardy is the Managing Director of French Connection (Canada) Limited, which is the authorized Canadian distributor for the Opponent and the operator of French Connection retail stores and concessions in Canada. She has provided photographs of the Opponent’s FCUK wares, as well as their actual labels, hangtags and packaging. Annual Canadian sales figures have been provided for FCUK branded products from 1998 through 2003, as have exemplary invoices evidencing the delivery/sale of FCUK wares into Canada for resale in 1998, 1999, 2001, 2002, 2003, and 2004. (Exhibits A-D)
In order to meet its initial burden with respect to distinctiveness, the Opponent must show that its trade-mark was “known to some extent at least” as of the filing of its opposition, June10, 2003 [Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 (F.C.T.D.) at 58]. Ms. Hardy’s evidence also meets this burden. In addition to the sales information, she has provided details of advertisements and promotions of the Opponent’s FCUK mark in Canada since as early as July 2000 (Exhibits F1 through K).
the test for confusion
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. Those criteria are not exhaustive and it is not necessary to give each one of them equal weight [See Clorox Co. v. Sears Canada Inc. (1992), 41 C.P.R. (3d) 483 (F.C.T.D.) and Gainers Inc. v. Marchildon (1996), 66 C.P.R. (3d) 308 (F.C.T.D.)].
In two recent decisions, Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321, [2006] 1 S.C.R. 772, and Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée et al (2006), 49 C.P.R. (4th) 401, [2006] 1 S.C.R. 824, the Supreme Court of Canada discussed the appropriate process for assessing all the surrounding circumstances to be considered in determining whether two trade-marks are confusing.
In Veuve Clicquot Ponsardin, Mr. Justice Binnie discussed the test of confusion at paragraph 20, as follows:
The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the name Cliquot on the respondents' storefront or invoice, at a time when he or she has no more than an imperfect recollection of the VEUVE CLICQUOT trade-marks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks. As stated by Pigeon J. in Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp. (1968), [1969] S.C.R. 192 (S.C.C.), at p. 202:
It is no doubt true that if one examines both marks carefully, he will readily distinguish them. However, this is not the basis on which one should decide whether there is any likelihood of confusion.
...the marks will not normally be seen side by side and [the Court must] guard against the danger that a person seeing the new mark may think that it is the same as one he has seen before, or even that it is a new or associated mark of the proprietor of the former mark. (Citing in part Halsbury's Laws of England, 3rd ed., vol. 38, para. 989, at p. 590.)
It is with these general principles in mind that I will now assess the likelihood of confusion between the parties’ marks.
Section 12(1)(d) Ground of Opposition
s. 6(5)(a) - inherent distinctiveness of the trade-marks and the extent to which each trade-mark has become known
A trade-mark consisting only of letters is a trade-mark that lacks inherent distinctiveness. [GSW Ltd. v. Great West Steel Industries Ltd. et al. (1975), 22 C.P.R. (2d) 154 (F.C.T.D.)] Accordingly, neither of the parties’ marks is inherently distinctive.
The Applicant’s Mark has apparently not been used or promoted with the result that it has not become known to any extent. In contrast, there is evidence of substantial use and promotion of the Opponent’s mark, which enables me to conclude that its FCUK mark has become known to a fair degree in Canada.
Overall, this factor favours the Opponent.
s. 6(5)(b) - the length of time each trade-mark has been in use
This factor clearly favours the Opponent.
s. 6(5)(c) and (d) - the nature of the wares, services or business; the nature of the trade
The parties’ wares are the same or overlap and it is reasonable to assume that they would travel similar channels of trade. Accordingly, this factor also favours 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
F.H.U.K. and FCUK, when considered as a whole, bear a considerable degree of resemblance in appearance. There is no evidence how either mark would be sounded, i.e. would each letter be pronounced or would a member of the consuming public articulate the combined letters in the form of a word that the combinations of letters resemble or call to mind? It is also questionable as to what idea they would suggest. However, there is the possibility that both marks would make viewers think of, and even be sounded as, the word “fuck”.
Overall, I find that this factor favours the Opponent.
other surrounding circumstances
It is noted that there is no evidence of any third parties using similar marks in the clothing field.
conclusion re likelihood of confusion
Based on the foregoing, I find that the Applicant has not satisfied the onus on it to prove that, on a balance of probabilities, there is not a reasonable likelihood of confusion between the two marks as of today’s date. I acknowledge that marks comprised of initials are prima facie entitled to only a narrow scope of protection, but this is a case where there is no evidence that the Applicant’s Mark has acquired any distinctiveness, the Opponent’s Mark has acquired distinctiveness, and all of the surrounding circumstances favour the Opponent. The s. 12(1)(d) ground of opposition accordingly succeeds.
Section 16(3)(a) Ground of Opposition
The reputation acquired by the Opponent’s mark as of the filing of the application is far less than it is as of today’s date. Nevertheless, as of the date of filing of the application, the Opponent had sold over a million dollars worth of FCUK products in Canada.
Having considered all the surrounding circumstances as of the date of filing, I find that the Applicant has not satisfied its legal burden concerning the likelihood of confusion as at this date either. The s. 16(3)(a) ground of opposition therefore succeeds.
Remaining Grounds of Opposition
As I have already found in favour of the Opponent under two grounds, I need not address the remaining grounds.
Disposition
Having been delegated by the Registrar of Trade-marks by virtue of s. 63(3) of the Act, I refuse the application pursuant to s. 38(8).
DATED AT TORONTO, ONTARIO, THIS 3rd DAY OF MAY 2007.
Member