IN THE MATTER OF AN OPPOSITION
by Sears Canada Inc. to application No.
773,713 for the trade-mark LATITUDE
filed by Latitude Men’s Wear Ltd.
On January 24, 1995, the applicant, Latitude Men’s Wear Ltd., filed an application to register the trade-mark LATITUDE. The application was advertised for opposition purposes on January 3, 1996. The application as advertised covers the following wares:
(1) clothing namely outer jackets and coats, sports jackets, blazers, suits, pants, jeans, shorts, sweaters, sweatshirts, shirts, T‑shirts, tank tops, vests, caps, hats, socks, ties, underwear; footwear, namely, boots, slippers and shoes; belts, watches, key chains, wallets, briefcases, tote bags, knapsacks
(2) dresses, skirts; jewellery, namely earrings, necklaces, pins, rings; purses
and the following services:
(1) retail sale of clothing, footwear and accessories
(2) retail sale of ladies clothing.
The application is based on use in Canada since August 16, 1989 for the wares and services marked (1) and on proposed use in Canada for the wares and services marked (2).
The T. Eaton Company Limited filed a statement of opposition on June 3, 1996, a copy of which was forwarded to the applicant on June 17, 1996. As a consequence of a change in ownership of the trade-mark relied on in the statement of opposition, the opponent is now Sears Canada Inc.
The first ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Trade-marks Act because it is confusing with the trade-mark ATTITUDE registered under No. 272,125 for the “operation of a female fashion boutique” and under No. 317,015 for the following wares:
(1) sweaters, blouses, dresses, shirts, suits, pants, skirts and coats,
(2) shoes, (3) accessories namely, socks and tights, (4) lingerie namely underwear, briefs and camisoles.
The second ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(1)(a) of the Act for its previously used wares and services because, as of the applicant’s claimed date of first use, the applied for trade-mark was confusing with the trade-mark ATTITUDE previously used in Canada by the opponent for wares and services. The third ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(3)(a) of the Act for its proposed wares and services because, as of the applicant’s filing date, the applied for trade-mark was confusing with the trade-mark ATTITUDE previously used in Canada by the opponent for wares and services. The fourth ground of opposition is that the applied for trade-mark is not distinctive because it is confusing with the opponent’s trade-mark ATTITUDE.
The applicant filed and served a counter statement. The opponent’s evidence consists of an affidavit of Tina Conte. Ms. Conte was cross-examined on her affidavit and the transcript of that cross-examination forms part of the record of this proceeding. The applicant’s evidence comprises the affidavits of Samuel Pearlman and Dawn M. Urquhart. Both parties filed a written argument and an oral hearing was conducted at which both parties were represented.
The Opponent’s Evidence
In her affidavit, Ms. Conte identifies herself as the Compliance Manager of The T. Eaton Company Limited (“Eatons”). According to Ms. Conte, beginning in the 1970's, Eatons operated specific areas or boutiques in its department stores in association with the trade-mark ATTITUDE. Ms. Conte states that Eatons used the mark ATTITUDE with the services listed in registration No. 272,125 since 1974 and with the wares listed in registration No. 317,015 since 1985.
Ms. Conte appended exhibits to her affidavit which illustrate the manner of use and advertising of the trade-mark ATTITUDE. She indicated that ATTITUDE wares and services were offered exclusively through Eatons stores. On cross-examination, she conceded that the trade-mark ATTITUDE had only been used with women’s clothing and accessories although the exhibits to her affidavit do show some use of that mark for children’s clothing as well.
According to Ms. Conte, revenues from wares sold and services performed in association with the trade-mark ATTITUDE for the period 1984 to 1996 were in excess of $150 million. Advertising expenditures in relation to the mark for the period 1985 to 1996 were approximately $4.5 million.
The applicant submitted that reduced weight should be given to Ms. Conte’s affidavit in view of a number of unjustified refusals to answer questions that arose during the cross-examination. I disagree. For the most part, Ms. Conte’s refusals were justified. For example, it was not incumbent on Ms. Conte to evidence the state of the trade-marks register since such evidence is clearly otherwise available to the applicant. Likewise, Ms. Conte was not obliged to give her opinion as to the “idea suggested” by the trade-mark ATTITUDE for the purposes of Section 6(5)(e) of the Act. However, the questions asked of Ms. Conte by her own agent on re-examination were inappropriate and I have given no weight to that portion of the transcript. Furthermore, I have given no weight to Ms. Conte’s opinion set out in paragraph 19 of her affidavit regarding what consumers would believe when faced with the applicant’s trade-mark.
The Applicant’s Evidence
In his affidavit, Mr. Pearlman identifies himself as the President of the applicant. He states that the applicant opened its first LATITUDE clothing store in August of 1989 in Regina and has opened six additional stores since then throughout western Canada. According to Mr. Pearlman, most of the wares sold through the applicant’s stores bear a label and/or a hang tag
with the trade-mark LATITUDE appearing on thereon. However, a review of the advertisements and sample products appended to Mr. Pearlman’s affidavit suggests that only a minority of wares sold bear a LATITUDE label. It appears that most of the applicant’s sales are of products bearing third party trade-marks which may also have a LATITUDE hang tag attached to them.
The applicant’s sales to date have been of menswear items and accessories only. Furthermore, the applicant’s sales have been made only through its own retail outlets. According to Mr. Pearlman, sales through the applicant’s stores for the period 1989 to 1997 were in excess of $27 million. Advertising expenditures for that period were about $250,000.
Mr. Pearlman notes that four of the applicant’s retail outlets are located in shopping malls or plazas in which a store is also operated by Eatons. Mr. Pearlman also notes that the applicant has not encountered a single customer who has been confused as between the applicant and Eatons as to the stores or the products available. He did not detail the basis for making such a statement. On the other hand, the opponent did not evidence any instances of actual confusion or mistake between the marks at issue.
The Urquhart affidavit evidences a third party registration for the trade-mark WHERE EXCELLENCE IS AN ATTITUDE for clothing. Also appended to the Urquhart affidavit are dictionary definitions for the words “attitude” and “latitude.”
The Grounds of Opposition
As for the first ground of opposition, the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark is the date of my decision: see Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R.(3d) 538 at 541-542 (T.M.O.B.). The onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Contrary to the applicant’s submissions, that onus remains on the applicant throughout notwithstanding that, in this case, the opponent filed its evidence after the applicant. 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.
As for Section 6(5)(a) of the Act, the marks of both parties are inherently distinctive in relation to clothing wares and services. Given the level of sales and advertising by the applicant, I am able to conclude that its trade-mark LATITUDE has become known to some extent in western Canada. As for the opponent’s trade-mark ATTITUDE, the Conte affidavit allows me to conclude that it has become fairly well known throughout Canada. As noted by the applicant, however, it appears that the opponent has often used its mark in the form EATON ATTITUDE or the like such that consumers have likely often associated the mark ATTITUDE with the house mark EATON.
The length of time the marks have been in use favors the opponent. As for the wares and trades of the parties, it is the applicant’s statement of wares and services and the opponent’s statement of wares and statement of services in its two registrations that govern: see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R.(3d) 3 at 10-11 (F.C.A.), Henkel Kommanditgesellschaft v. Super Dragon (1986), 12 C.P.R.(3d) 110 at 112 (F.C.A.) and Miss Universe, Inc. v. Dale Bohna (1994), 58 C.P.R.(3d) 381 at 390-392 (F.C.A.). However, those statements must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording. In this regard, evidence of the actual trades of the parties is useful: see the decision in McDonald’s Corporation v. Coffee Hut Stores Ltd. (1996), 68 C.P.R.(3d) 168 at 169 (F.C.A.).
There is a direct overlap in the wares and services of the parties. Although the opponent has only sold women’s and children’s clothing and accessories to date, its registration No. 317,015 is not so restricted. Likewise, although the applicant has only sold menswear to date, the clothing items, footwear and accessories listed as item (1) in its application are unrestricted as to type. As for the wares noted as (2), they are restricted to women’s clothing items and accessories.
As for the services, the opponent’s registration No. 272,125 is restricted to the operation of a female fashion boutique. The applicant’s first statement of services, on the other hand, has no such restriction and therefore overlaps with the opponent’s registered services. The
applicant’s second statement of services is virtually identical to the opponent’s registered services.
In view of the above, I consider that the trades of the parties would, or could, be the same. The fact that both parties have restricted their trades to menswear on the one hand and women’s and children’s clothing on the other hand is not determinative where the applicant seeks broad protection in its application for the retail sale of clothing and clothing generally. Likewise, the fact that both parties have restricted the sale of their wares to their own outlets is not determinative. The opponent’s registrations contain no such restriction and neither do the statements of wares and services in the applicant’s application.
As for Section 6(5)(e) of the Act, I consider there to be a high degree of resemblance between the marks ATTITUDE and LATITUDE both visually and phonetically. The only difference of note is the initial L in the applicant’s mark. The visual and phonetic resemblance could be even greater to a bilingual or francophone consumer since the French word ATTITUDE is feminine and could be presented as L’ATTITUDE. The principal ideas suggested by the two marks do not bear any significant degree of resemblance.
The applicant has submitted that the significance of any resemblance between the marks is mitigated by the state of the trade-marks register evidence introduced by the Urquhart affidavit. State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace: see the opposition decision in Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R.(3d) 432 and the decision in Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R.(3d) 205 (F.C.T.D.). Also of note is the decision in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R.(3d) 349 (F.C.A.) which is support for the proposition that inferences about the state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located.
The Urquhart affidavit only evidences one third party registration for a clothing trade-mark incorporating the word ATTITUDE, namely WHERE EXCELLENCE IS AN ATTITUDE. The mere existence of one mark on the register is insufficient to allow any conclusions to be made about possible common adoption of such marks in the marketplace.
The applicant has also relied on the absence of any evidence of actual confusion or mistake between the marks at issue notwithstanding the contemporaneous use of the two marks, particularly in those areas where both parties operate retail stores in the same shopping mall or plaza. However, given the actual trades of the parties to date, the absence of such evidence is not surprising. Both parties have restricted the sales channels for their wares to their own stores. Furthermore, the opponent has restricted its trade to women’s and children’s clothing and accessories while the applicant has sold only menswear and accessories. The issue at hand, however, is whether or not confusion is likely if the parties use their marks in the manner contemplated by the wares and services claimed in the application and registrations at issue.
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 inherent distinctiveness of the marks at issue, the reputation associated with the opponent’s mark, the overlap in the wares, services and trades of the parties as claimed and the high degree of visual and phonetic resemblance between the two marks, I find that I am left in a state of doubt respecting whether there would be a reasonable likelihood of confusion between the applied for mark LATITUDE and the registered mark ATTITUDE. I must therefore resolve that doubt against the applicant and find the first ground of opposition to be successful.
As for the second ground of opposition, the opponent has evidenced use of its trade-mark ATTITUDE for wares and services prior to the applicant’s claimed date of first use of August 16, 1989. The second ground therefore remains to be decided on the issue of confusion between the marks of the parties as of the applicant’s claimed date of first use. For the most part, my conclusions respecting the first ground of opposition are also applicable to the second ground. Thus, I find that the applicant failed to satisfy the onus on it to show that its mark LATITUDE was not confusing with the opponent’s mark ATTITUDE as of the material time. The second ground is therefore also successful.
Likewise, as for the third ground of opposition, the opponent has evidenced use of its trade-mark ATTITUDE for wares and services prior to the applicant’s filing date. The third ground therefore remains to be decided on the issue of confusion between the marks of the parties as of January 24, 1995. Again, for the most part, my conclusions respecting the first ground of opposition are also applicable to the third ground. Thus, I find that the applicant failed to satisfy the onus on it to show that its mark LATITUDE was not confusing with the opponent’s mark ATTITUDE as of the material time. The third ground is therefore also successful.
As for the fourth ground of opposition, the onus or legal burden is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its wares and services from those of others throughout Canada: see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (T.M.O.B.). Furthermore, the material time for considering the circumstances respecting this issue is as of the filing of the opposition (i.e. - June 3, 1996): see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.).
As of June 3, 1996, the opponent had used its trade-mark ATTITUDE only for women’s and children’s clothing and accessories and only through its own stores. As of that date, the applicant, too, had only used its trade-mark LATITUDE for menswear and only through its own stores. However, the applicant is seeking registration for a much broader range of wares and services including the type of wares sold by the opponent and the type of services performed by the opponent. My conclusions respecting the issue of confusion under the first ground of opposition are, for the most part, also applicable to the fourth ground. Thus, I find that the marks at issue were confusing as of the filing of the opposition and the fourth ground is therefore successful.
In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I refuse the applicant’s application.
DATED AT HULL, QUEBEC, THIS 6th DAY OF JUNE, 2001.
David J. Martin,
Member,
Trade Marks Opposition Board.