IN THE MATTER OF AN OPPOSITION
by Nabisco Group Grocery Division
to application No. 560,995 for the
trade-mark CLUB SANDWICH filed by
British Confectionery Company Limited
On April 9, 1986, the applicant, British Confectionery Company Limited, filed an application to register the trade-mark CLUB SANDWICH for "chocolates and confectionaries [sic], namely chocolate bars" based on proposed use in Canada. The application was advertised for opposition purposes on September 3, 1986.
The opponent, Nabisco Group Grocery Division, filed a statement of opposition on March 20, 1987, a copy of which was forwarded to the applicant on May 6, 1987. The grounds of opposition include `inter alia' that the applicant is not the person entitled to registration pursuant to Section 16(3) of the Trade-marks Act because, as of the applicant's filing date, the applied for trade-mark was confusing with the trade-mark CLUB previously used by the opponent and its predecessor in title Associated Biscuits Limited in association with "chocolate coated biscuits and fruit biscuits."
The applicant filed and served a counterstatement. As its evidence, the opponent filed the affidavit of Stephen A. Walker. The applicant did not file evidence. Both parties filed a written argument and an oral hearing was conducted at which both parties were represented.
As for the opponent's ground of prior entitlement, the opponent has satisfied the onus on it to show prior use and non-abandonment of its mark in Canada. The ground therefore remains to be decided on the issue of confusion as of the applicant's filing date. The onus is on the applicant to show no reasonable likelihood of confusion. Furthermore, in applying the test for confusion set forth in Section 6(2) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set forth in Section 6(5) of the Act.
The marks of both parties are inherently distinctive, neither having a meaning or suggestion relating directly to the associated wares. The applicant having failed to file evidence, I must conclude that its mark had not become known at all in Canada as of the material time. By way of contrast, the opponent has evidenced Canadian sales of approximately $2 million of its CLUB product for the period 1979-86. Thus, I am able to conclude that the opponent's mark CLUB had become known to some extent in Canada as of the applicant's filing date.
The length of time the marks have been in use clearly favors the opponent. The wares of the parties are very similar, the exhibits to the Walker affidavit establishing that the opponent's product is sold in much the same format as a chocolate bar. Presumably, the trades of the parties would be similar if not identical.
As for Section 6(5)(e) of the Act, I find there to be a fair degree of resemblance between the marks of the parties. In fact, the applicant has adopted the whole of the opponent's mark as the first portion of its proposed mark.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my conclusions above, and particularly in view of the similarities between the wares, trades and marks of the parties, I find that the applicant has failed to satisfy the onus on it to show that its mark is not confusing with the opponent's mark. The ground of prior entitlement is therefore successful and the remaining grounds need not be considered.
In view of the above, I refuse the applicant's application.
DATED AT HULL, QUEBEC, THIS 31st DAY OF May , 1990.
David J. Martin,
Member,
Trade Marks Opposition Board.