IN THE MATTER OF AN OPPOSITION by Woolworth Canada Inc. (now Venator Group Canada Inc.) to application No. 706,776 for the trade-mark REVERSE filed by LE MANS Mfg. Ltd.
On June 11, 1992, the applicant, LE MANS Mfg. Ltd., filed an application to register the trade-mark REVERSE based upon proposed use of the trade-mark in Canada in association with “Ladies' and mens' sportswear, namely, jeans, jackets, pants, shirts, shorts and skirts”.
The present application was advertised for opposition purposes in the Trade-marks Journal of August 2, 1995 and the opponent, Woolworth Canada Inc., filed a statement of opposition on December 22, 1995, a copy of which was forwarded to the applicant on January 25, 1996. In its statement of opposition, the opponent alleged the following grounds of opposition:
(a) The present application does not comply with the requirements of Subsection 30(i) of the Trade-marks Act in that the applicant could not have been satisfied that it was entitled to use the trade-mark REVERSE in Canada in association with the wares described in the application in that the trade-mark is clearly descriptive or deceptively misdescriptive of the character or quality of the applicant’s wares;
(b) The applicant's trade-mark is not registrable in view of the provisions of Paragraph 12(1)(b) of the Trade-marks Act in that the trade-mark REVERSE is clearly descriptive or deceptively misdescriptive of the character or quality of the wares covered in the present application. The word “Reverse” indicates that the wares can be turned inside out and that the wares claimed can be used on either side;
(c) The applicant's trade-mark is not distinctive in that it is it does not actually distinguish the applicant wares nor is it adapted to distinguish those wares in that the trade-mark is clearly descriptive or deceptively misdescriptive of the character or quality of the applicant’s wares.
The applicant served and filed a counter statement in which it effectively denied the opponent’s grounds of opposition. The opponent filed as its evidence the affidavits of Cathy Fernandes and Ruth Palazzolo while the applicant elected not to file any evidence. The opponent alone filed a written argument and neither party requested an oral hearing. Further, during the opposition proceeding, the opponent advised the Opposition Board that it had changed its name to Venator Group Canada Inc.
The first ground of opposition is based on Subsection 30(i) of the Trade-marks Act. While the legal burden is upon the applicant to show that its application complies with Section 30 of the Trade-marks Act, there is an initial evidential burden on the opponent to establish the facts relied upon by it in support of its 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; and John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R.(3d) 293]. The material time for considering the circumstances respecting the issues of non-compliance with Section 30 of the Act is the filing date of the application [see Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R.(3d) 469, at p. 475].
The opponent has alleged that the present application does not conform to the requirements of Subsection 30(i) of the Act in that the applicant could not have been satisfied that it was entitled to use the trade-mark REVERSE in Canada in association with the wares covered in the present application in that the trade-mark is clearly descriptive or deceptively misdescriptive of the character or quality of such wares. Subsection 30(i) of the Act requires that an applicant must state in its application that it is satisfied that it is entitled to “use” its trade-mark in Canada. Clearly, an applicant can use a trade-mark in Canada even though that mark may be clearly descriptive of the character or quality of the wares or services associated with the mark, bearing in mind that Subsection 12(2) contemplates the registration of trade-marks which offend the provisions of Paragraph 12(1)(b) of the Trade-marks Act. In any event, the opponent has not adduced any evidence to show that the applicant could not properly have been satisfied that it was entitled to use its trade-mark REVERSE in Canada on the basis inter alia that its trade-mark is not clearly descriptive or deceptively misdescriptive of its wares. Thus, the success of this ground would, in any event, be contingent upon a finding that the applicant’s trade-mark offends the provisions of Paragraph 12(1)(b) of the Trade-marks Act.
The second ground of opposition is based on Paragraph 12(1)(b) of the Trade-marks Act, the opponent alleging that the applicant's trade-mark is not registrable in that the trade-mark REVERSE is either clearly descriptive or deceptively misdescriptive of the character or quality of “Ladies' and mens' sportswear, namely, jeans, jackets, pants, shirts, shorts and skirts”. The material date for considering a ground of opposition based on Paragraph 12(1)(b) of the Act is as of the date of decision [see Lubrication Engineers, Inc. v. The Canadian Council of Professional Engineers, 41 C.P.R. (3d) 243 (F.C.A.)] and, while the legal burden is upon the applicant to show that its trade-mark REVERSE is registrable, there is an initial evidential burden upon the opponent to adduce sufficient evidence which, if believed, would support the truth of its allegations that the applicant’s trade-mark is clearly descriptive or deceptively misdescriptive of the character or quality of the its wares. The issue as to whether the applicant's trade-mark is clearly descriptive must be considered from the point of view of the average purchaser of those wares [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)].
The affidavits of Cathy Fernandes and Ruth Palazzolo serve to introduce into evidence photocopies of pages from dictionaries which include definitions for the words “reversible” and “reverse”. In the references relied upon by the opponent, the word “reverse” as a verb is defined inter alia as follows:
“to turn or set in an opposite direction, order, or position”
“to turn into something different or contrary”
“to turn inside out or upside down”
“to turn upside down or completely about in position or direction”
“to turn completely about in position or direction”
and as a noun as follows:
“the opposite or contrary of something”
“the back or rear side of something”
“the back or rear of something,...”
“the back of something”
“the back part of something”
and as an adjective as follows:
“turned backward in position, direction, or order; opposite; contrary”
“opposite to a previous or normal condition”
“back to front; inverted”
“having the back presented to the observer or opponent”
Having regard to the dictionary definitions of the word “reverse”, it is apparent that the applicant’s trade-mark REVERSE clearly suggests that the applicant’s wares are reversible but, in my view, it does not clearly describe the character or quality of the wares as being reversible. I have therefore rejected the Paragraph 12(1)(b) ground of opposition.
As for the opponent’s final ground of opposition, the legal burden is on the applicant to show that its trade-mark actually distinguishes or is adapted to distinguish its wares from those of others. This ground is founded on the allegation that the applicant’s trade-mark REVERSE is clearly descriptive or deceptively misdescriptive of the applicant’s wares. However, having concluded that the applicant’s mark is not clearly descriptive of the applicant’s wares as of the date of this decision, I am equally satisfied that the same conclusion applies as of the date of opposition, the material date for considering the non-distinctiveness ground. I have therefore dismissed this ground of opposition.
Having been delegated by the Registrar of Trade-marks pursuant to Subsection 63(3) of the Trade-marks Act, I reject the opponent’s opposition pursuant to Subsection 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 14th DAY OF AUGUST, 1998.
G.W.Partington,
Chairperson,
Trade-marks Opposition Board.