LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2011 TMOB 24
Date of Decision: 2011-02-22
IN THE MATTER OF AN OPPOSITION by Mizuno Corporation to application No. 1,305,008 for the trade-mark erke design in the name of Fujian Hongxing Erke Sports Goods Co Ltd.
The Pleadings
[1] On June 12, 2006 Fujian Hongxing Erke Sports Goods Co Ltd. (the Applicant) filed application number 1,305,008 to register the trade-mark erke design (the Mark) hereinafter reproduced:
[2] The application was filed on the basis of use and registration in the Applicant’s country of origin, namely China. The Mark was registered in China on January 14, 2004.
[3] By letter dated January 19, 2007 an examiner raised some objections including one based on s. 30(a) of the Trade-marks Act, R.C.S. 1985, c. T-13 (the Act.). The Applicant filed a revised application wherein the wares are now described as follow: Clothing, namely, athletic clothing, beachwear, business attire, bridal wear, casual clothing, children's clothing, clothing for exercise, formal wear, loungewear, maternity, rainwear, sleepwear, undergarments; layettes (clothing); bathing suits; running shoes (with metal nails); shoes; headgear for wear, namely, berets, bridal headpieces, hats, toques, turbans; hosiery; gloves (clothing); neckties; leather belts (clothing) (the Wares).
[4] The application was advertised on July 18, 2007 in the Trade-marks Journal for opposition purposes.
[5] Mizuno Corporation (the Opponent) filed a statement of opposition on August 23, 2007 which was forwarded to the Applicant by the Registrar on September 20, 2007. The Applicant filed a counter statement on October 19, 2007 in which it denied all grounds of opposition listed below.
[6] The Opponent filed the affidavits of Barbara Bailey and John Stacey as well as certified copies of the following application and registrations in the name of the Opponent:
Application 1,315,712 for the trade-mark RUNBIRD Design
Registration TMA442052 for the trade-mark RUNBIRD Design;
Registration TMA483826 for the trade-mark MIZUNO & Design;
[7] The Applicant filed the affidavit of Heidi Eileen Richter.
[8] Only the Opponent filed written submissions and no oral hearing was held.
The Grounds of Opposition
[9] The grounds of opposition pleaded are:
1. The Application does not comply with the requirements of s. 30(d) of the Act in that the Mark had not been used in China in association with the Wares as of the date of filing of the application or at all, and in the alternative, if the Mark was in use, which is not admitted but is expressly denied, any such use has not been continuous;
2. The Mark is not registrable under s. 12(1)(d) of the Act as it is confusing with the Opponent’s registered trade-mark RUNBIRD Design, certificate of registration TMA442052;
3. The Applicant is not the person entitled to registration of the Mark pursuant to s. 16(2)(a) of the Act since at the date of filing of the application, it was confusing with the Opponent’s trade-mark RUNBIRD Design previously used in Canada;
4. The trade-mark erke design is not distinctive, having regard to the provisions of s. 2 of the Act in that the trade-mark erke design is not adapted to distinguish and does not actually distinguish the Applicant’s wares from those of others, including the Opponent’s. Due to the presence of a very similar design in the applied for trade-mark erke design, and the Opponent’s trade-mark RUNBIRD Design, consumers are likely to believe that the applied for trade-mark also belongs to the Applicant and that the Opponent’s wares also originate with the Applicant.
Onus and Burden of Proof in Trade-marks Opposition Proceedings
[10] The legal onus is upon the Applicant to show that its application complies with the provisions of the Act, but there is however an initial evidential 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. Once this initial burden 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].
Relevant dates
[11] The relevant date for the analysis of each ground of opposition varies depending on the ground of opposition to be assessed:
➢ Non-compliance with the requirements of s. 30 of the Act: The filing date of the application (June 12, 2006);
➢ The registrability of the Mark under s. 12(1)(d) of the Act: 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 (F.C.A)];
➢ Entitlement to the registration of the Mark, where the application is based on use and registration abroad: The date of filing of the application (June 12, 2006) [see s. 16(2) of the Act];
➢ Distinctiveness of the Mark: The filing date of the statement of opposition (August 23, 2007) is generally accepted to be the relevant date [see Andres Wines Ltd. and E & J Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.) and Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)].
Section 30(d) Ground of Opposition
[12] The Opponent is arguing in paragraphs 37 and 38 of its written argument that there is an initial evidential burden on the Opponent to show that the Mark was not used in China, in association with the Wares, and if the Mark was in use, whether such use has not been continuous. The legal burden would then shift to the Applicant to show that the Mark was used in China, in association with the Wares, and if the Mark was in use, whether such use has been continuous. I agree with those principles.
[13] However the Opponent concludes that in view of the Applicant’s failure to file any evidence that the Mark was used in China, in association with the Wares, the application should be refused. I disagree with that statement. As mentioned by the Opponent, it does have an initial evidential burden. There is no evidence filed by the Opponent that would shift the burden to the Applicant.
[14] The failure of the Opponent to meet its initial evidential burden justifies the dismissal of the first ground of opposition.
Registrability of the Mark under s. 12(1)(d) of the Act
[15] The Opponent is alleging that the Mark is not registrable pursuant to s. 12(1)(d) of the Act as it is confusing with its registered trade-mark RUNBIRD Design, certificate of registration TMA442052 as illustrated hereinafter:
The registration covers:
Articles of clothing, namely baseball and softball uniforms, wind protection jackets, caps, stockings, undershirts, understockings, sliding pads; badminton shirts, pants, shorts and skirts; tennis caps, jackets, shirts, pants, shorts and skirts; table tennis jackets, pants, shirts and shorts; basketball shirts, pants and jerseys; golf shirts, vests, jackets, pants, socks, caps, raincoats, rain jackets, rain pants and sweaters; rugby shirts and pants; football jackets, pants, shirts and hosiery; volleyball jackets, warm-up shirts, warm-up pants, shirts and pants; ski jackets, pants, stockings and socks, caps, headbands and anorak coats; boxing trunks and shirts; wrestling uniforms; fencing uniforms; track and field shirts, pants, warm-up shirts and warm-up pants; gymnastic shirts and pants; mountaineering and mountain climbing jackets, shirts, pants, socks, breeches, anoraks and capes; bowling shirts; judo uniforms, coats, pants, belts and underwear; karate uniforms, coats, pants, belts and underwear; kendo uniforms, masks, protectors, coats, pants and belts; swim pants, swim suits and swim caps; handball shirts and pants; soccer shirts and pants; wet suits, water-ski jackets and life jackets; wrist bands, headbands; shoes and boots for baseball and softball, badminton, tennis, table tennis, basketball, golf, football, volleyball, floor hockey and ice hockey, archery, skiing, handball, wrestling, track and field, running, mountaineering, mountain climbing and walking, gymnastics, weightlifting, boxing, bicycling, soccer, rugby, all-purpose, cross-training, indoor court, racquetball and squash; ski boots and after-ski boots, and skates.
[16] I used my discretion and checked the register. Registration TMA442052 is extant. Therefore the Opponent has met its initial burden of proof.
[17] I have to determine, on a balance of probabilities, if the Mark is likely to cause confusion with the Opponent’s trade-mark RUNBIRD Design. The test to determine this issue is set out in s. 6(2) of the Act and I must take into consideration all the relevant surrounding circumstances, including those listed in s. 6(5): the inherent distinctiveness of the trade-marks and the extent to which they have become known; the length of time the trade-marks have been in use; the nature of the wares, services, or business; the nature of the trade; and the degree of resemblance between the trade-marks in appearance, or sound or in the ideas suggested by them.
[18] 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.)].
[19] I also note the judgments of the Supreme Court of Canada in Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 and Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée et al. (2006), 49 C.P.R. (4th) 401 where Mr. Justice Binnie commented on the assessment of the criteria enumerated under s. 6(5) of the Act to determine if there is a likelihood of confusion between two trade-marks.
[20] The Mark is inherently distinctive so is the Opponent’s RUNBIRD Design trade-mark. The distinctiveness of a trade-mark may be enhanced through use or promotion in Canada. I shall now summarize the evidence filed by both parties that may serve to conclude that a particular trade-mark is more known than the other.
[21] There is no evidence of use of the Mark in Canada. The only relevant evidence on the promotion of the Mark in Canada is through the affidavit of Ms. Bailey, the Manager of Advertising and Marketing Services of the Opponent’s subsidiary Mizuno Canada Ltd. (Mizuno Canada). She filed extracts of the Applicant’s website on which appear some of the Wares. Those extracts were filed to demonstrate the overlap between the Applicant’s Wares and the Opponent’s wares as well as the targeted clientele. Such evidence does not establish that the Mark was known to any extent in Canada.
[22] Mr. Stacey is the President of Mizuno Canada which has been in operation in Canada since 1992. It is licensed to use the Opponent’s registered trade-marks including the RUNBIRD Design trade-mark.
[23] The Opponent was founded in 1906 in Japan and began its operation selling western sports sundries including baseballs and shortly thereafter, order-made athletic uniforms. He filed a copy of a brochure marking the Opponent’s 100 years.
[24] He states that the Opponent introduced in 1983 running shoes bearing the RUNBIRD Design trade-mark. From 1987 until 1992 athletic shoes bearing the RUNBIRD Design trade-mark were sold in Canada through the Opponent’s authorized distributor. Since 1992 Mizuno Canada has sold those athletic shoes and other products throughout Canada which have consistently and prominently featured the RUNBIRD Design. Such products include athletic apparel and sports equipment as well as casual clothing, clothing for exercise, loungewear, rainwear, undergarments, headgear for wear namely, hats, toques; hosiery; gloves and belts.
[25] The Opponent’s products are available at approximately 1250 retail outlets throughout Canada, including retail chain stores such as Running Room, National Sports, Sport Check, Sports Experts, Play it Again Sports and Golf Town.
[26] To illustrate the use of the RUNBIRD Design trade-mark in Canada Mr. Stacey has provided copies of invoices from 2006 and 2007 to various Canadian distributors relating to the sale of products bearing the RUNBIRD Design trade-mark. He alleges that in 2006 Mizuno Canada sold over 130,000 pairs of athletic shoes and over 20,000 articles of clothing and accessories, including socks, gloves and hats within Canada, all of which prominently bear the RUNBIRD Design trade-mark. In 2007 there were 133,000 pairs of athletic shoes and over 57,000 articles of clothing and accessories sold in Canada bearing the RUNBIRD Design trade-mark.
[27] In her affidavit Ms. Bailey provided numerous examples of promotional material depicting the above-mentioned products bearing the RUNBIRD Design trade-mark such as:
➢ Various brochures and catalogues published in 2008 by the Opponent and circulated in Canada to promote its golf collection, running collection, baseball and softball collection and volleyball collection;
➢ Various brochures and catalogues published in 2007 by the Opponent and circulated in Canada to promote its diamond sports collection (baseball, softball and fast pitch), running collection and volleyball collection;
➢ Various brochures and catalogues published in 2006 by the Opponent and circulated in Canada to promote its baseball and softball collection, running collection and volleyball collection and its 100th anniversary brochure;
➢ Various excerpts of catalogues for each of the years from 1995 to 2005 which illustrate the Opponent’s products bearing the RUNBIRD Design trade-mark.
[28] She also provided the number of brochures and catalogues distributed in Canada during some of those years: over 8000 in 2006; about 10,000 in 2007 and approximately 10,000 in 2008.
[29] She filed photographs of several Opponent’s products in their packaging displaying the RUNBIRD Design trade-mark. Between 1999 and 2007 Mizuno Canada has spent between 5% and 9% of its sales in advertising and promotion of products bearing the RUNBIRD Design trade-mark.
[30] She filed samples of advertising material which appeared in magazines and various publications distributed and available to consumers in Canada. She also filed CDs which contain video commercials aired for example on The Sports Network (TSN) during the Masters Golf Tournament in 2003.
[31] Attached to her affidavit are extracts of the Opponent’s website relating to the Opponent’s golf, diamond, volleyball and running products.
[32] She alleged that Mizuno Canada participates regularly in industry trade shows as well as local sporting events. She attached some promotional materials distributed at the 14th IAAF World Half Marathon Championships held in Edmonton in 2005. She stated that the Opponent’s products bearing the RUNBIRD Design trade-mark have become well known in Canada through the Opponent’s sponsorship and promotion of many international and Canadian athletic events such as for example, Canadian Interuniversity Sport (CIS) Men’s and Women’s Championship for Volleyball, International Association Athletics Federations (IAFF) World Track & Field Championships, Canadian National Championships (Volleyball Canada), Canada Cup (Softball) World League Men’s Championship (Volleyball) to name a few.
[33] The Opponent has been the official supplier to various Canadian associations between 2004 and 2008 such as Baseball Canada, Volleyball Canada and Canadian Junior Golf Association. All of the footwear and apparel provided by the Opponent under these sponsorship contracts bear the RUNBIRD Design trade-mark.
[34] From this evidence I conclude that the Opponent’s RUNBIRD Design trade-mark is known, if not well known, in Canada. Therefore the first relevant factor listed under s. 6(5) of the Act favours the Opponent.
[35] As for the second relevant factor (the length of time the trade-marks in issue have been used in Canada), again from the evidence described above, this factor also favours the Opponent. There is no evidence of use of the Mark in Canada while there is evidence of extensive use of the RUNBIRD Design trade-mark by the Opponent since at least 1987.
[36] In general, when considering the nature of the wares and services of the parties, it is the statement of the wares and services in the application and registration that governs. [See Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.)] Evidence of the actual trades of the parties could be useful in reading the statement of wares with a view of determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording [see McDonald’s Corp. v. Coffee Hut Stores Ltd. (1996), 68 C.P.R. (3d) 168 (F.C.A.)].
[37] There is clearly a similarity between the Wares and the wares covered by the Opponent’s registration TMA442052.
[38] As stated in Mattel supra, the risk of confusion occurring between marks is greater when the parties’ wares are distributed in the same channels of trade. Further the nature and kind of consumer who is likely to buy the wares is a relevant consideration. If the marks occupy the same channel of trade and are purchased by the same consumers, there is an increase in the potential that confusion will arise. In the present case there is no evidence concerning the Applicant’s intended channel of trade. However given the similarity between the Applicant’s Wares and those sold by the Opponent in association with its trade-mark RUNBIRD Design, it is reasonable to presume that the parties’ respective wares could be sold in close proximity in the same retail chain stores. In fact the parties’ wares fall within the categories of clothing, footwear and clothing accessories, such as headwear, gloves, socks, belts and the like. Moreover, as mentioned above, the Bailey affidavit does include extracts of the Applicant’s website which shows how the Wares are or intended to be sold in association with the Mark. It is apparent that the Wares are intended for consumers who would do sports activities.
[39] 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 totality and should not dissect each one of them into their component parts. The test must be taken from the point of view of a consumer who has only a general and not a precise recollection of the earlier mark.
[40] The Mark comprises two elements the word portion “erke” and a design, while the Opponent’s trade-mark RUNBIRD Design has only a design component. Therefore when sounded the marks differ. However the word portion is less dominant than the design portion. The letters of the word portion are smaller than the design element. There is a striking visual similarity between the designs of the parties’ respective trade-marks. The design portion of the Mark has the same relative proportions and positions of a bird’s “head”, “tail” and “feet” oriented in the identical manner to the RUNBIRD Design trade-mark.
[41] As an additional surrounding circumstance, in the absence of written arguments from the Applicant, I have to presume that the purpose of Ms. Richter’s affidavit was to introduce state of the register evidence. I can only speculate on the possible argument that could have been raised by the Applicant. There is no evidence of use of any of the trade-marks covered by the registrations attached to Ms. Richter’s affidavit. There are 11 marks cited. Registrations TMA284782, TMA283853, TMA572992, TMA286601, TMA359052 and TMA554458 can be easily distinguished from the Opponent’s RUNBIRD Design trade-mark; thus leaving at best 5 relevant trade-mark registrations.
[42] It has been ruled that if the state of the register evidence discloses a great number of trade-marks with a common element in a particular industry, it can be inferred that some of them are being used in Canada and as such the Canadian consumer would be able to distinguish them [see Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432 and T. Eaton Co. v. Viking GmbH & Co. (1998), 86 C.P.R. (3d) 382]. The number of relevant citations in this case is not sufficient to draw an inference that a bird’s silhouette is commonly used in the trade in association with running shoes and some articles of clothing such that consumers are accustomed to distinguish them [Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432; Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R. (3d) 205 (F.C.T.D)].
[43] Having considered all the surrounding circumstances, I find that the Applicant has not met its legal burden to show, on a balance of probabilities, that there is no likelihood of confusion between the Mark and the Opponent’s RUNBIRD Design. The Opponent’s RUNBIRD Design trade-mark is known in Canada. It has been used since at least 1992. The Wares are similar to the wares covered by registration TMA442052. The Mark does resemble visually to the Opponent’s trade-mark RUNBIRD Design.
[44] Consequently I find that an ordinary casual consumer, who has an imperfect recollection of the Opponent's RUNBIRD Design trade-mark somewhat in a hurry, will, as a matter of immediate impression, be likely to conclude that the Wares associated with the Mark are somehow associated with the source of the Opponent's RUNBIRD Design wares. Although the word ERKE is a portion of the Mark, it is given less prominence than the design portion of the Mark, which not only dominates the Mark but also is strikingly similar to the Opponent's RUNBIRD Design trade-mark.
[45] Therefore I maintain the second ground of opposition.
Entitlement
[46] The third ground of opposition is also based on the likelihood of confusion between the Mark and the Opponent’s RUNBIRD Design trade-mark.
[47] The evidence of use of the Opponent’s trade-mark RUNBIRD Design described under the ground of registrability is ample sufficient to discharge the Opponent’s initial burden under this ground of opposition. It does establish use of the RUNBIRD Design trade-mark in Canada prior to the filing date of the application; and that the Opponent had not abandoned such use at the advertisement date of the application (s. 16(5) of the Act).
[48] Consequently the onus was on the Applicant to show, at the relevant date, that there was no likelihood of confusion between the Mark and the Opponent’s RUNBIRD Design trade-mark. The same criteria listed under s. 6(5) of the Act are applicable to make such determination.
[49] For the same reasons to those outlined in my analysis regarding the ground of opposition under s. 12(1)(d), I find that the Applicant was not entitled to register the Mark on June 12, 2006 as it was confusing with the Opponent’s trade-mark RUNBIRD Design. I therefore maintain the third ground of opposition.
Distinctiveness
[50] Having ruled in favour of the Opponent with respect to two different grounds of opposition, it is not necessary to assess the last ground of opposition.
Disposition
[51] Pursuant to the authority delegated to me under s. 63(3) of the Act, I refuse the application pursuant to s. 38(8) of the Act.
______________________________
Jean Carrière
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office