IN THE MATTER OF AN OPPOSITION
by Home Hardware Stores Limited
to application No. 548,209 for
the trade-mark HOME CARE filed
by Home Care Industries, Inc.
On August 26, 1985, the applicant, Home Care Industries, Inc., filed an application to register the trade-mark HOME CARE for "disposable vacuum cleaner bags" based on use and registration (No. 735,833) in the United States. The application was advertised for opposition purposes on March 12, 1986.
The opponent, Home Hardware Stores Limited, filed a statement of opposition on August 12, 1986, a copy of which was forwarded to the applicant on September 5, 1986. 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 a number of registered trade-marks of the opponent. The most pertinent of those marks is HOME HARDWARE registered under No. 276,387 for a long list of wares (including "electric vacuum cleaners") commonly sold through hardware stores, building supply stores and department stores. The registration also covers the following services:
service in connection with the operations of
hardware merchants of providing facilities for
quantity and economic purchase of merchandise;
of providing advice and material in connection
with the promotion of merchandise and of providing
advice and assistance with respect to merchandising
generally.
The second ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(2) of the Act because, as of the applicant's filing date, the applied for trade-mark was confusing with a number of the opponent's trade-marks. Again, the most pertinent of those marks is the trade-mark HOME HARDWARE. The third ground of opposition is one of prior entitlement based on the opponent's prior use of its trade-name Home Hardware Stores Limited. The fourth ground is that the applied for trade-mark is not distinctive of the applicant's wares in view of the opponent's use of its trade-marks and trade-name.
The applicant filed and served a counter statement. As its evidence, the opponent filed the affidavits of Eileen Castellano and Ray Gabel. Mr. Gabel was cross-examined on his affidavit and the transcript of that cross-examination and the subsequently filed undertakings form part of the record of this proceeding. As its evidence, the applicant filed the affidavits of Martin Bosses and Nicola M. Hunt. Both parties filed written arguments and an oral hearing was conducted at which only the applicant was represented.
All of the grounds of opposition essentially turn on the issue of confusion between the applicant's mark and the opponent's trade-name and its various trade-marks. Given that the most pertinent of the foregoing is the opponent's trade-mark HOME HARDWARE, a consideration of the issue of confusion between that mark and the applicant's mark will effectively decide the outcome of this opposition. The latest material time to consider the circumstances is as of the filing of the opposition. Furthermore, the onus or legal burden is on the applicant to show no reasonable likelihood of confusion. Finally, 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 opponent's trade-mark is inherently weak in that it suggests that its registered wares are either "hardware" items or products intended for home use or both. In fact, the opponent's mark is arguably descriptive in view of the opponent's own disclaimer of the words "home hardware" in two of its trade-mark registrations and the notation on registration No. 276,387 that registrability was recognized under Section 12(2) of the Act. Although Mr. Gabel, in his affidavit, attests to significant sales by the opponent, he did not provide a breakdown of those sales by particular trade-mark or product line. In fact, from a review of the excerpts from the opponent's catalogue appended as Exhibit C to the Gabel affidavit, it is reasonable to conclude that most of the opponent's sales would have been of goods bearing third party trade-marks. Thus, I cannot attribute any significant acquired reputation in relation to the opponent's trade-mark solely on the basis of the sales figures provided. However, there has been extensive advertising by the opponent in association with its trade-mark HOME HARDWARE. Thus, I am able to conclude that the opponent's mark had become fairly well known throughout most of Canada.
The applicant's mark, too, is inherently weak since it suggests that the applicant's wares are to be used in the care of the home. The applicant has only evidenced use of its mark in the United States and has not established any measurable reputation in Canada as a consequence of its American activities.
The length of time the marks have been in use favors the opponent. For the most part, the applicant's wares are different from the opponent's wares and services. Registration No. 276,387 does, however, include "electric vacuum cleaners" but Mr. Gable has indicated that the opponent has only sold vacuum cleaners and vacuum cleaner bags of others and not in association with any of its trade-marks including the word HOME. The opponent's wares are sold to its approximately 1,000 member chain of independent retail outlets which deal in hardware, housewares, appliances and building products. Thus, the trades of the parties are somewhat related since the applicant's wares could be sold through those retail outlets.
As for Section 6(5)(e) of the Act, the marks of the parties bear some similarity as a consequence of the common use of the word "home" in their trade-marks. However, as noted above, that word is inherently weak in relation to the wares and services at issue in the present case. Furthermore, the state of the register evidence respecting trade-marks incorporating the word "home" for related wares and services diminishes, to some extent, the effect of any resemblance between the marks at issue. On my review of the Hunt affidavit, I find there to be about two dozen relevant third party registrations owned by 17 different owners. I am thus able to conclude that at least some of those marks are in use and that therefore consumers would be at least somewhat accustomed to seeing trade-marks incorporating the word "home" in the commercial fields populated by the parties. Thus, consumers would be somewhat more likely to center on the other aspects of such trade-marks and would tend to emphasize the differences in the marks.
As an additional surrounding circumstance, I have considered the manner of operation of the opponent's business and the consequent effect on the distinctiveness of its mark. Paragraph 8 of the Gabel affidavit reads as follows:
On August 26th, 1985, the date of which the
Applicant applied for registration of its mark,
Home Hardware was and continues to be a 100%
dealer-owned wholesaler which sponsors over
1,000 Home Hardware stores, all 100% Canadian
owned and operated and located in and throughout
all of the Provinces of Canada.
Mr. Gabel was questioned about this and he indicated that the dealers own the opponent and that these independent retailers all use the trade-mark HOME HARDWARE to identify their operation (see page 8 of the Gabel transcript). Some of those retailers also use their own trade-name or trade-mark in identifying their stores.
Thus, as of the material time, there were approximately 1,000 independent retailers using the opponent's trade-mark. Since there are no registered user recordals respecting the opponent's trade-mark registration, the presumption is that the use of the mark HOME HARDWARE for retail services by each individual retailer is the retailer's use and not the opponent's use. Given the widespread non-distinctive use of the opponent's mark, I must presume that the average consumer would associate the opponent's registered mark with a multitude of sources and would therefore be even less likely to perceive a resemblance between it and the applicant's 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 inherent weakness of the opponent's mark, the absence of a high degree of resemblance between the marks and the widespread non-distinctive use of the opponent's mark, I find that the applicant has satisfied the onus on it to show that its trade-mark is not confusing with the opponent's registered mark HOME HARDWARE. In view of my previous comments, all of the grounds of opposition are therefore unsuccessful.
In view of the above, I reject the opponent's opposition.
DATED AT HULL, QUEBEC, THIS 28th DAY OF MARCH 1991.
David J. Martin,
Member,
Trade Marks Opposition Board.