LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 112
Date of Decision: 2010-07-23
IN THE MATTER OF AN OPPOSITION by 1373639 Alberta Ltd. to application No. 1,311,285 for the trade-mark NO ATTITUDE in the name of Patchell Holdings Inc.
The Pleadings
[1] On August 1, 2006 Patchell Holdings Inc. (the Applicant) filed an application to register the trade-mark NO ATTITUDE (the Mark), application number 1,311,285, based on proposed use in Canada in association with:
Printed publications, namely; books, newsletters, magazines and newspapers; pre-recorded video and audio cassette tapes and compact disks relating to motivational and instructional topics and subjects; clothing namely, t-shirts, shorts, socks, sweat clothing, namely, sweat pants, sweat shorts, sweat socks, sweat jackets, sweat shirts, sweat suits, shoes, caps, rain and wind outer garments, shirts, sweaters, pants and jackets (the Wares) and
Operating a fitness, health and wellness centre; offering programs, classes, education and instruction relating to physical fitness, wellness, aerobics, free weights, personal training; physiotherapy, exercise equipment, namely; exercise bicycles, rowing machines and multi-station weight training equipment; para-medicine, massage therapy, swimming and aquatic activities; and racquet sports, namely; squash, racquet ball and tennis; offering education and consulting services by means of staging seminars, workshops and conferences relating to health care, fitness and wellness; services of producing and distributing motivational and instructional pre-recorded video and audio tapes and compact disks relating to exercise, health, fitness and wellness matters; services of producing and distributing motivational and instructional radio and television programs relating to exercise, health, fitness and wellness matters; services of distributing books, newsletters, magazines, and newspapers by means of the Internet (the “Services”).
[2] The application was advertised on March 7, 2007 in the Trade-marks Journal for opposition purposes. Sears Canada Inc. (Sears) filed a statement of opposition on November 7, 2007 which was forwarded to the Applicant by the Registrar on December 11, 2007. The Applicant filed a counter statement on January 10, 2008 denying in essence all grounds of opposition listed below.
[3] On June 14, 2010 the Opponent (as hereinafter defined) sought leave to amend its statement of opposition to reflect the change of ownership of the registered trade-mark identified in the statement of opposition and recorded on the register on July 7, 2008 in the name of 1373639 Alberta Ltd. The Applicant, by letter dated July 8, 2010 contested such request. I shall deal with that issue hereinafter.
[4] The Opponent filed the affidavit of Joanne Barry-Babule with exhibits A-N inclusive as its evidence while the Applicant chose not to file any.
[5] Only the Opponent filed a written argument and there was no oral hearing requested.
The Grounds of Opposition
[6] The grounds of opposition pleaded are:
1.The Mark is not registrable under s. 12(1)(d) of the Trade-marks Act, R.S.C. 1985 c. T-13 (the Act) as it is confusing with the Opponent’s registered trade-mark ATTITUDE, registration number TMA317,015 in association with sweaters, blouses, dresses, shirts, suits, pants, skirts and coats; shoes; accessories namely socks;
2. The Applicant is not the person entitled to registration of the Mark pursuant to the provisions of s. 38(2)(c) and 16(3) of the Act because at the filing date of the application, the Mark was confusing with the trade-mark ATTITUDE previously used in Canada by the Opponent in association with the wares described in the previous paragraph as well as shorts, capris, jumpers, vests, jackets, fleece tops and bottoms, accessories namely handbags and sunglasses; jewellery, watches and shoes;
3. Pursuant to s. 38(2)(d) and s. 2 of the Act, the Mark is not distinctive because it does not distinguish and is not adapted to distinguish the wares and services of the Applicant from the wares of the Opponent because of the Opponent’s prior use of its trade-mark ATTITUDE in association with the goods listed in the preceding paragraphs.
Preliminary Issue
[7] The Opponent is seeking leave to amend its statement of opposition to reflect the change in ownership in the mark cited in the statement of opposition. Such change of ownership took effect on February 3, 2008 and was recorded on the register on August 11, 2008. I note that those facts were brought to the Registrar’s attention by letter dated August 11, 2008 where 1373639 Alberta Ltd. requested that it be identified as the opponent.
[8] The request for leave was simply filed in order for the Registrar to address the issue of the change in the identity of the opponent raised previously during the course of the proceedings. In its letter of July 8, 2010 the Applicant is arguing that an assignee of a trade-mark registration does not legally obtain the right to continue a previously started opposition in its own name as the legal grounds of opposition is crystallized at, inter alia, the filing date of the opposition. The relevant date to assess the grounds of opposition pleaded varies from one ground of opposition to another. In the case of a ground of opposition based on s. 12(1)(d) of the Act, the relevant date is the date of the Registrar’s decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at 424]. For a discussion on the various choices available to a new owner of registered trade-marks, once a statement of opposition has been filed, in order to be part of these opposition proceedings I refer to Nabisco Brands Ltd./Nabisco Brands Ltée v. Perfection Foods Ltd. (1985), 7 C.P.R. (3d) 468. It appears that a request for leave to amend the statement of opposition to reflect the change of ownership of the marks cited in the original statement of opposition is one of the possibilities offered to an assignee.
[9] I therefore grant leave to amend the statement of opposition pursuant to rule 40 of the Trade-marks Regulations and I shall refer to 1373639 Alberta Ltd. and Sears indistinctively as the Opponent.
Burden of Proof in Trade-marks Opposition Proceedings
[10] The legal burden is upon the Applicant to show that its application complies with the provisions of the Act, but there is however an initial evidential onus 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. Once this initial onus is met, the Applicant has to prove, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark [see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd. (1984), 3 C.P.R. (3d) 325; John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 and Wrangler Apparel Corp. v. The Timberland Company [2005] F.C. 722].
Registrability of the Mark under s. 12(1)(d)
[11] The Opponent has met its initial burden by filing, through the affidavit of Ms. Barry-Babule, a photocopy of an extract of CIPO Canadian Trade-marks database for certificate of registration TMA317,015 (exhibit B to her affidavit). 1373639 Alberta Ltd. is listed as the current owner. I used my discretion and checked the register. I can confirm that the registration is still in good standing. It covers sweaters, blouses, dresses, shirts, suits, pants, skirts and coats; shoes; accessories namely socks .
[12] Therefore I must determine if there is, on a balance of probabilities, a likelihood of confusion between the Mark and the Opponent’s registered trade-mark ATTITUDE. If the answer is affirmative then the Mark cannot be registered.
[13] The test to decide if there is a likelihood of confusion is set out in s. 6(2) of the Act wherein it is stipulated that the use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would likely 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 making such assessment I must take into consideration all the relevant surrounding circumstances, including those listed in s. 6(5) of the Act: the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; the length of time the trade-marks or trade-names have been in use; the nature of the wares, services, or businesses; the nature of the trade; and the degree of resemblance between the trade-marks or trade-names in appearance, or sound or in the ideas suggested by them. I refer to the decision of the Supreme Court of Canada in Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 for an analysis of those criteria.
[14] The Opponent takes the position in its written argument that the parties’ respective trade-marks have about the same degree of inherent distinctiveness as they do not describe any inherent characteristic or quality of the Applicant’s Wares, except perhaps for pre-recorded video and audio cassette tapes and compact disks relating to motivational and instructional topics and subjects (recording wares), or the Opponent’s wares. Nevertheless the Opponent argues that the Mark may have some relevance in relation with fitness, health and wellness related services as well as the recording wares. However it does not provide any argument to support such contention. I accept the fact that both marks are inherently distinctive, when used in association with the parties’ respective wares and/or services.
[15] The distinctiveness of a trade-mark may be enhanced through use or extensive promotion. The Applicant’s application is based on proposed use and there has been no evidence filed by the Applicant.
[16] Ms. Barry-Babule has been the Buyer Contemporary and Better Brands for Sears and has been employed by Sears since 2000. She describes Sears as the largest single full-line retailer of general merchandise and home-related services selling to the public through retail department stores, specialty stores, catalogue selling outlets and via the Internet. Sears offers a wide variety of goods for sale in association with its own trade-marks and the trade-marks of others. These goods include major appliances, tools and hardware, home electronics, furniture, housewares, linens, clothing, footwear, stationery and toys.
[17] Sears operates 121 full-line department stores, 48 Sears Home stores, 182 dealer stores, 13 outlet stores and 16 Home Central Showrooms, as well as 37 floor covering centres, 5 appliance and mattress stores, 106 travel offices and there are approximately 1,800 independent Sears Catalogue Agent locations across Canada.
[18] She explains that 1373639 Alberta Ltd. is the current owner of the trade-mark ATTITUDE as it was assigned from Sears to such company on February 3, 2008. She states that 1373639 Alberta Ltd. is a wholly-owned subsidiary of Sears. She alleges that by virtue of the terms and conditions of a license agreement Sears has an exclusive license to use the trade-mark ATTITUDE in Canada. 1373639 Alberta Ltd. controls the character, quality, workmanship and style of the wares sold in association with that trade-mark by having the right to approve the nature, quality and manner of all goods in association with the trade-mark ATTITUDE as well as the nature, quality and manner of advertising and promotion of those wares.
[19] She alleges that Sears uses the trade-mark ATTITUDE in Canada in association with clothing, namely sweaters, blouses, dresses, shirts, pants, skirts, jeans, knit shirts, vests, jackets, blouses, t-shirts and turtlenecks since at least as early as February 1, 2005. She states that those wares are sold at Sears retail stores, through its catalogues and online on Sears’ website. To evidence such use she has filed neck labels, hang tags and packaging bearing the trade-mark ATTITUDE.
[20] From 2005 to August 2008 total sales in Canada of products bearing the trade-mark ATTITUDE were in excess of 22 million dollars. She does provide a breakdown on a yearly basis in dollars and in units of clothing.
[21] She describes the different ways used by Sears to promote products bearing the trade-mark ATTITUDE: retail flyers, catalogues, the Internet and signage displayed in Sears’ retail stores. There were in excess of 12 million retail flyers distributed since 2005. She filed samples of such flyers promoting products bearing the trade-mark ATTITUDE and distributed from 2005 to 2008 inclusive.
[22] She alleges that the Sears catalogue, which is Canada’s largest general merchandise catalogue, is delivered to more than 3.9 million households across Canada. Samples of such catalogues distributed between 2005 and 2008 inclusive were filed wherein articles of clothing bearing the trade-mark ATTITUDE are illustrated and offered for sale.
[23] She also filed a photograph of a signage bearing the trade-mark ATTITUDE and being displayed in Sears’ retail stores. Finally she alleges that Sears’ website is visited by more than 200,000 persons per day. She filed extracts of the website wherein various products including articles of clothing are illustrated and offered for sale in association with the trade-mark ATTITUDE.
[24] From this evidence I conclude that the trade-mark ATTITUDE is known in Canada in association with articles of clothing. Overall the first factor listed under s. 6(5) favours the Opponent.
[25] There is no evidence of use of the Mark in Canada while the evidence described above leads me to conclude that the Opponent’s trade-mark ATTITUDE has been in use in Canada since as at least as early as February 2005 in association with articles of clothing. There is also evidence of use of the trade-mark ATTITUDE in association with jewellery, eau de toilette and sunglasses. The second factor described in s. 6(5)(b) of the Act also favours the Opponent.
[26] As for the nature of the wares and services of the respective parties, there is clearly an overlap between the clothing items listed as part of the Wares and the articles of clothing listed in registration number TMA317,015. As for the other Wares and the Services there is no relationship between them and the wares covered by the Opponent’s aforesaid registration. This factor favours the Opponent only in so far as the clothing items enumerated in the Applicant’s application are concerned.
[27] In the absence of evidence on the Applicant’s channels of trade I have to presume that, for the clothing items listed in the application, they could be the same as those used by the Opponent for similar wares. With respect to the remainder of the Wares and the Services, I do not see from their description any relationship with the wares covered by the Opponent’s registration. This factor favours the Opponent only with respect to the clothing items part of the Wares.
[28] The degree of resemblance between two trade-marks is one of the most important criteria when assessing the likelihood of confusion between them [see Beverley Bedding & Upholstery Co. v. Regal Bedding & Upholstering Ltd. (1980), 47 C.P.R. (2d) 145]. One must look at the marks in their totalities and should not dissect each one of them into its components.
[29] It has been held that the first portion of a trade-mark is the most relevant for the purpose of distinction [see Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183]. However in this case it adds little inherent distinctiveness to the Mark. The prefix “NO” represents a negation of the second word, namely ATTITUDE. Consequently, the second word becomes more important, being the most distinctive word in the Mark. Phonetically and visually the marks in issue do resemble one another as the main element of the Mark is the Opponent’s trade-mark ATTITUDE. Overall this factor does favour the Opponent.
[30] From this analysis I conclude that the Applicant failed to discharge its burden to prove, on a balance of probabilities, that there is no likelihood of confusion between the Mark and the Opponent’s trade-mark ATTITUDE for the clothing items listed in the application. Furthermore, I consider that there is no likelihood of confusion between the parties’ trade-marks when the Mark is used in association with the other Wares and the Services as there is no connexity between those wares and the Services and the wares covered by registration TMA317,015. Therefore the first ground of opposition is partially maintained.
The Other Grounds of Opposition
[31] The relevant date associated with the second ground of opposition (entitlement), when the application is based on proposed use, is the filing date of the application (August 1, 2006) [see s. 16(3) of the Act]. The Opponent must show that it had previously used its trade-mark and had not abandoned such use at the advertisement date of the application (March 7, 2007) [see s.16(5) of the Act]. From the evidence described above, I conclude that the Opponent has met its initial onus. Therefore the Applicant must prove that there is no likelihood of confusion between the Mark and the Opponent’s trade-mark ATTITUDE.
[32] The difference in the relevant dates between this ground of opposition and the registrability of the Mark does not have an impact on my analysis of the criteria listed in s. 6(5) of the Act. Consequently this ground of opposition is also maintained in part, for the clothing items only.
[33] The relevant date with respect to the third ground of opposition (distinctiveness) is the filing date of the statement of opposition (November 7, 2007) [see Andres Wines Ltd. and E & J Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 and Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317].
[34] To meet its initial onus the Opponent had to prove that its trade-mark ATTITUDE had become sufficiently known at that relevant date to negate any distinctiveness of the Mark [Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 at 58]. Once this burden is met, the Applicant has a legal onus to show, on a balance of probabilities, that the Mark is not likely to create confusion with the Opponent’s trade-mark ATTITUDE such that it is adapted to distinguish or actually distinguishes the Wares and Services from the Opponent’s wares throughout Canada [see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R. (3d) 272].
[35] The Opponent’s evidence described under the first ground of opposition leads me to conclude that the Opponent’s trade-mark ATTITUDE was sufficiently known in Canada at the relevant date. Therefore the Applicant has the burden to prove, on a balance of probabilities, that the Mark was adapted to distinguish the Wares and Services from the Opponent’s wares.
[36] This ground of opposition essentially turns on the issue of likelihood of confusion between the parties’ trade-marks as of the filing date of the statement of opposition. The difference in the relevant dates with the registrability ground of opposition is not a determining factor in this case as most of the evidence filed relates to the use of the Opponent’s trade-mark ATTITUDE prior to the filing date of the statement of opposition.
[37] Under these circumstances I find that the Applicant’s Mark did not distinguish the Applicant’s items of clothing listed as part of the Wares nor was it apt to distinguish them as it was confusing with the Opponent’s trade-mark ATTITUDE. Thus, the last ground of opposition is also partially maintained.
Disposition
[38] Pursuant to the authority delegated to me under s. 63(3) of the Act, I refuse the application with respect to:
Clothing namely, t-shirts, shorts, socks, sweat clothing, namely, sweat pants, sweat shorts, sweat socks, sweat jackets, sweat shirts, sweat suits, shoes, caps, rain and wind outer garments, shirts, sweaters, pants and jackets;
and reject the opposition with respect to:
Printed publications, namely; books, newsletters, magazines and newspapers; pre-recorded video and audio cassette tapes and compact disks relating to motivational and instructional topics and subjects; and
The services of operating a fitness, health and wellness centre; offering programs, classes, education and instruction relating to physical fitness, wellness, aerobics, free weights, personal training; physiotherapy, exercise equipment, namely; exercise bicycles, rowing machines and multi-station weight training equipment; para-medicine, massage therapy, swimming and aquatic activities; and racquet sports, namely; squash, racquet ball and tennis; offering education and consulting services by means of staging seminars, workshops and conferences relating to health care, fitness and wellness; services of producing and distributing motivational and instructional pre-recorded video and audio tapes and compact disks relating to exercise, health, fitness and wellness matters; services of producing and distributing motivational and instructional radio and television programs relating to exercise, health, fitness and wellness matters; services of distributing books, newsletters, magazines, and newspapers by means of the Internet.
pursuant to s. 38(8) of the Act [see Produits Menagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf Gmbh (1986), 10 C.P.R. (3d) 492 (F.C.T.D.) as authority for a split decision].
______________________________
Jean Carrière
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office