IN THE MATTER OF AN OPPOSITION by Levi Strauss & Co. and Levi Strauss & Co. (Canada) Inc. to application No. 1,248,742 for the Design trade-mark filed by 167081 Canada Inc.
[1] On February 23, 2005, 167081 Canada Inc. (the “Applicant”) filed an application to register the trade-mark illustrated hereafter (the “Mark”) based upon proposed use in Canada.
[2] The Mark has been applied for registration in association with the following wares:
wearing apparel, namely, skirts, pants, shorts, shirts, blouses, t-shirts, tank tops, sweatshirts, sweatpants, sweat suits, suits, sweaters, jumpers, overalls, rompers, dresses, slacks, jackets, jeans, vests, coats, hats, caps, headbands, earmuffs; eyewear, namely eyeglasses and sunglasses, as well as handbags and luggage.
[3] The application was advertised in the Trade-marks Journal of August 31, 2005.
[4] Levi Strauss & Co. (“LS&CO”) and Levi Strauss & Co. (Canada) Inc. (“LSC”) filed a joint statement of opposition on January 31, 2006. The grounds of opposition are that the Mark is not registrable pursuant to s. 12(1)(d) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”) because it is confusing with the registered trade-marks DOUBLE ARCUATE Design (Registration No. UCA39879) and ARCUATE Design (Registration No. TMA517,605) owned by LS&CO; the Applicant is not the person entitled to registration of the Mark pursuant to s. 16(3) of the Act because, at the filing date of the application, the Mark was confusing with the aforementioned trade-marks previously used in association with clothing products and in respect of which applications for registration had been previously filed in Canada by LS&CO; and the Mark is not distinctive and is not adapted to distinguish the Applicant’s wares.
[5] The Applicant filed and served a counter statement on March 20, 2006 in which it denies each and every ground of opposition. The Applicant also alleges that LSC is not a proper party to the opposition.
[6] The evidence filed by LS&CO and LSC (hereinafter sometimes referred to collectively as the “Opponent”) consists of an affidavit of Ellen Baker, sworn April 19, 2006, together with Exhibits A to O1 (the “Baker Affidavit”). Ms. Baker is a Trade-mark Specialist employed by LSC, a wholly owned subsidiary of LS&CO. She was not cross-examined by the Applicant.
[7] The Applicant elected not to file evidence.
[8] Only the Opponent filed a written argument.
[9] Both parties were represented at the oral hearing, where the Applicant’s agent advised that the Applicant no longer took issue with the standing of LSC as a party to the opposition.
[10] From the outset, I note that the Opponent apparently relies upon the applications that resulted in Registration Nos. UCA39879 and TMA517,605 to support the ground of opposition based upon s. 16(3)(b) of the Act. Since these applications had proceeded to registration at the advertisement date of the Mark, I find that the ground of opposition has been improperly pleaded [see Governor and Co. of Adventurers of England trading into Hudson’s Bay v. Kmart Canada Ltd. (1997), 76 C.P.R. (3d) 526 (T.M.O.B.)]. Therefore, I dismiss the non-entitlement ground of opposition based upon s. 16(3)(b) of the Act.
Onus
[11] The Applicant bears the legal onus of establishing on a balance of probabilities that the application complies with the requirements of the Act. 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 [see John Labatt Ltd v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D.); Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.)].
Opponent’s evidence
[12] Ms. Baker, who has been employed by LSC since 1980, states that commencing in 1989, her duties have included coordinating the registration and enforcement of LSC’s and LS&CO’s trade-marks in Canada. She has been employed full time in respect of her trade-mark responsibilities since 1991.
[13] In reviewing the Opponent’s evidence, I consider the reference to the Arcuate Design trade-mark throughout the Baker Affidavit as a reference to both the registered trade-marks DOUBLE ARCUATE Design (No. UCA39879) and ARCUATE Design (No. TMA517,605). Furthermore, in my view, there is no debate that the word “overalls” was used in 1950 as a general term for trousers that today would be called “jeans”, that is trousers commencing at the waist without a bib or shoulder straps [see Levi Strauss & Co. v. Canada (Registrar of Trade-marks) (2006), 51 C.P.R. (4th) 434 (F.C.)].
[14] The allegations contained in the Baker Affidavit and the exhibits thereto may be summarized as follows:
• Copies of the “particulars” of Registration Nos. UCA39879 and TMA517,605 are filed as Exhibit A [paragraph 3].
• LSC is licensed by LS&CO to use the Arcuate Design trade-mark and LS&CO has, under the license, control of the character or quality of the wares in association with which the trade-mark is used by LSC [paragraph 5].
• Virtually all of the LEVI’S brand “overall” type garments (including jeans) sold in Canada by LSC since Ms. Baker has been with the company have been sold in association with the Arcuate Design trade-mark [paragraph 6, Exhibit C].
• The Arcuate Design trade-mark is illustrated on hang tags and flashers attached to LEVI’s brand garments sold in Canada by LSC [paragraph 7, Exhibits D1 and D2].
• From 1972 until 2006, LSC has sold in Canada in excess of 160 million garments bearing the Arcuate Design trade-mark, which represented a wholesale value in excess of $3.4 billion [paragraph 8].
• Copies of representative sale invoices are filed as Exhibit E [paragraph 9].
• LSC’s garments are sold throughout Canada through retail stores, including: LEVI’S retail stores that primarily sell LEVI’S brand products; department stores and mass merchants, such as The Bay, Sears, Zellers and Fields; retail chains such as Pantorama, Saan Stores, Mark’s Work Wearhouse and Bootlegger; and individual retail stores [paragraph 10].
• Since 1972, LSC has extensively advertised its LEVI’S brand products in print and broadcast media as well as by various promotions; these advertisements frequently display the Arcuate Design trade-mark. Total advertising expenditures since 1972 have been approximately $200 million [paragraph 11].
• Specimens of representative advertisements filed as exhibits to the Baker Affidavit include, inter alia, storyboard and videotape of television commercials, billboard advertisements, outdoor posters and transit shelter advertisements, advertisement in magazines, catalogues distributed to retailers of LEVI’S brand garments, sample consumer advertising slicks, point-of-sale advertisements [paragraphs 12 to 17].
• Continuous efforts are being made by LS&CO and LSC to educate their employees on proper use of the trade-marks of LS&CO [paragraph 18, Exhibit M].
• LS&CO and LSC have alerted the trade as to their trade-mark rights through advertisement [paragraph 19, Exhibits N1 and N2].
• In a text entitled LEVI’S: The “Shrink-to-fit” business that stretched to cover the world, published in 1978, the author referred to the Arcuate Design trade-mark as “seemingly the oldest clothing trade-mark in continuous use” [paragraph 20, Exhibit O1].
[15] I have exercised the Registrar’s discretion to confirm that Registration No. UCA39879 and No. TMA517,605 are in good standing as of today’s date. The details of the registrations are as follows:
• The trade-mark DOUBLE ARCUATE Design of Registration No. UCA39879, as shown and described hereafter, was registered on July 21, 1950 in association with “garments, namely overalls” based on making known and on use in Canada since 1873.
A double arcuate design applied to the hip pockets of garments such as overalls.
• The trade-mark ARCUATE Design of Registration No. TMA517,605, as shown and described hereafter, was registered on October 5, 1999 in association with “pants, bib overalls, coveralls, shorts, skirts, jackets and shirts” based on use in Canada since 1873.
The trade-mark consists of a double line of stitching forming two arcs meeting in a cusp.
Analysis of the grounds of opposition
[16] The issue of confusion between the Mark and the trade-marks DOUBLE ARCUATE Design and ARCUATE Design is the determinative factor for each of the three grounds of opposition.
[17] The material date in respect of the ground of opposition alleging non-registrability is the date of my decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks (1991), 37 C.P.R. (3d) 413 (F.C.A.)]; the material date in respect of the ground of opposition alleging non-entitlement is the date of filing the subject application, that is February 23, 2005 [s. 16(3) of the Act]; and the material date in respect of the issue of distinctiveness is the date of filing of the opposition, that is January 31, 2006 [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)].
[18] In the circumstances of this case, nothing turns on whether the issue of confusion is determined at any particular material date, which both parties’ agents acknowledged at the oral hearing. Also, I am satisfied that the Opponent has discharged the initial burden upon it with respect to the three grounds of opposition. Therefore, the burden of proof lies on the Applicant to convince the Registrar, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and the trade-marks DOUBLE ARCUATE Design and ARCUATE Design. I will assess the likelihood of confusion in the context of the ground of opposition based upon s. 12(1)(d) of the Act. A determination of the issue of confusion under that ground will effectively decide the outcome of the non-entitlement ground of opposition based upon s. 16(3)(a) of the Act as well as the outcome of the distinctiveness ground of opposition.
[19] Unless indicated otherwise, and pursuant to the Baker Affidavit, any subsequent reference to the Arcuate Design trade-mark throughout my decision is a reference to the trade-marks DOUBLE ARCUATE Design (No. UCA39879) and ARCUATE Design (No. TMA517,605).
[20] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that the use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in s. 6(5) of the Act, namely: a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; b) the length of time the trade-marks have been in use; c) the nature of the wares, services or business; d) the nature of the trade; and e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight [see Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.) and Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée et al. (2006), 49 C.P.R. (4th) 401 (S.C.C.) for a thorough discussion of the general principles that govern the test for confusion].
s. 6(5)(a) - inherent distinctiveness of the trade-marks and the extent to which they have become known
[21] I find that both the Mark and the Arcuate Design trade-mark are inherently distinctive since they are not in any way descriptive or suggestive of the wares associated therewith.
[22] The strength of a trade-mark may be increased by means of it becoming known through promotion or use. The Mark has been applied for registration based on proposed use in Canada and the Applicant has adduced no evidence that it had commenced use of the Mark subsequent to the filing of the application. Although the Baker Affidavit does not distinguish the sales and advertising figures by type of garments, it establishes extensive sales and advertising associated with the Arcuate Design trade-mark. As such it can reasonably be concluded that the Arcuate Design trade-mark is well known in Canada.
[23] In view of the above, the overall consideration of the inherent distinctiveness of the trade-marks and of the extent to which they have become known clearly favours the Opponent.
s. 6(5)(b) - the length of time the trade-marks have been in use
[24] This factor clearly favours the Opponent.
s. 6(5)(c) and (d) - the nature of the wares, services or business and the nature of the trade
[25] In considering the nature of the wares and the nature of the trade, it is the statement of wares in the application and the statement of wares in the registrations that govern the assessment of the likelihood of confusion under s. 12(1)(d) of the Act [see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.); Miss Universe, Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.)].
[26] The Opponent argues, and correctly so, that the Applicant’s proposed wares “skirts”, “pants”, “shorts”, “shirts”, “overalls”, “jackets” and “jeans” are identical to the wares of Registration Nos. UCA39879 and TMA517,605. The Opponent further argues that the great majority of the rest of the Applicant’s proposed wares are related items within the general category of casual clothing and other items that are worn or would be sold in the same channels of trade. At the oral hearing, the agent for the Applicant conceded that the wares “wearing apparel, namely, skirts, pants, shorts, shirts, blouses, t-shirts, tank tops, sweatshirts, sweatpants, sweat suits, suits, sweaters, jumpers, overalls, rompers, dresses, slacks, jackets, jeans, vests, coats, hats, caps, headbands, earmuffs” are either identical or overlapping with the wares of Registration Nos. UCA39879 and TMA517,605. To the extent that wares are either identical or overlapping, the agent for the Applicant also conceded that it could be concluded that the parties’ channels of trade are either identical or overlapping for the purposes of considering confusion.
[27] The agent for the Applicant argued that the proposed wares “eyewear, namely eyeglasses and sunglasses, as well as handbags and luggage” are not similar to the wares of Registration Nos. UCA39879 and TMA517,605. The Applicant’s agent further argued that the Opponent has failed to evidence an overlap between these wares. At the oral hearing, the Opponent’s agent conceded that there was no evidence to show a connection between the wares. However, he submitted that judicial notice could be taken that clothing manufacturers also manufacture eyewear, handbags and luggage. I cannot agree with that submission. In so finding, I am guided by previous decisions where this Board refused to take judicial notice of a connection between the parties’ trade [see Manhattan Industries, Inc. v. Wurttembergische (1988), 19 C.P.R. (3d) 226 (T.M.O.B); St. Lawrence Textiles Inc. v. Leo Chevalier International Ltd. (1988), 20 C.P.R. (3d) 373 (T.M.O.B)].
[28] In the absence of evidence establishing a connection, I agree with the Applicant’s submissions that the proposed wares “eyewear, namely eyeglasses and sunglasses, as well as handbags and luggage” differ from the wares of Registration No. UCA39879 and No. TMA517,605. Since it would seem likely that one would expect eyewear, or at least sunglasses, handbags and luggage to be sold in department stores, it is not without merit for the Opponent to submit that the wares could be sold through the same channels of trade. However, there is no evidence that the parties’ wares at issue would be sold in close proximity in department stores.
s. 6(5)(e) - the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
[29] The remaining criterion is the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested. In most instances, it is the dominant factor and other factors play a subservient role in the overall surrounding circumstances [see Beverly Bedding & Upholstery Co. v. Regal Bedding & Upholstery Ltd. (1980), 47 C.P.R. (2d) 145, conf. 60 C.P.R. (2d) 70 (F.C.T.D.)].
[30] Since the trade-marks at issue are design trade-marks, I find that there is no degree of resemblance between them in “sound”.
[31] At the oral hearing, I noted to the Applicant’s agent that the Applicant had provided no description of the Mark when it filed the application. It was then suggested by the Applicant’s agent that I could rely on the Vienna Code Descriptions used by the Canadian Intellectual Property Office (“CIPO”) for a description of the Mark. The Applicant’s agent went on to suggest that the Vienna Code Descriptions used to index the trade-marks at issue support a finding that there is no resemblance between the parties’ marks in appearance as well as in the ideas suggested. As I indicated at the oral hearing, I disagree with the suggestion that information used by CIPO for indexation purposes is relevant when assessing the degree of resemblance between the trade-marks. I venture to suggest that in a situation where the Vienna Code Descriptions would not favour her case, the Applicant’s agent would subscribe to my view.
[32] At the oral hearing, the Applicant’s agent suggested various descriptions of the Mark. Not surprisingly, none of them was close to the descriptions found in LS&CO’s registrations. Although the Applicant’s agent finally settled for “a type of roller coaster design”, I do not afford much significance to this description, as it was obviously self-serving. In any event, it is ultimately up to the Registrar to assess the degree of resemblance between the trade-marks in considering the likelihood of confusion a matter of first impression and imperfect recollection. I would add that while both parties relied on various decisions to support their respective position with respect to the degree of resemblance between the trade-marks, including decisions involving the Arcuate Design trade-mark, the issue of confusion between the parties’ trade-marks is a question of probabilities and surrounding circumstances based on the particular facts of this case. In other words, each case has to be decided upon its own merit.
[33] With respect to the degree of resemblance in appearance, the Opponent submits that like the Arcuate Design trade-mark, the Mark comprises two arcs that meet in the middle, that irrespective of the use of the double lines or thicker line, this same dominant impression is given and that similarly, slight asymmetry does not detract from the dominant impression. Given her various descriptions of the Mark, the agent for the Applicant argued that the Mark does not look like two arcs that meet in the middle and that the visual elements of the Mark are not similar to the Arcuate Design trade-mark.
[34] As to the ideas suggested by the trade-marks, the Opponent submits that its evidence establishes that the trade-mark DOUBLE ARCUATE Design is used as a stitching design on pockets of garments and that the Mark similarly evokes an image of a stitching design. The Opponent further submits that the presence of a thinner line at the left-hand side of the Mark adds to the impression of a thread. The Opponent argues that the consumer would react to the Mark as a double arced stitching design, regardless of the type of “stitches” used. The Applicant’s agent argued that there is no similarity between the ideas suggested because the Mark does not suggest any ideas.
[35] Considering the degree of resemblance between the trade-marks as a matter of first impression and not of close scrutiny, I find that there are points of similarity, that is two arcs that meet in the middle, as well as points of difference, that is the visual elements forming the two arcs.
[36] In support of its contention as to the resemblance between the trade-marks, the Opponent also submits that because the application does not impose any restrictions on the Applicant when using the Mark, the latter could be applied on pockets in a similar manner to the trade-mark DOUBLE ARCUATE Design. I do not find it necessary to consider that argument in order to find in the Opponent’s favour with respect to the Applicant’s wares within the general category of casual clothing. Indeed, in view of my conclusions above and weighing all the factors and their relative importance together, I find that the Applicant has not discharged its onus of showing, on a balance of probabilities, that the Mark in association with “wearing apparel, namely, skirts, pants, shorts, shirts, blouses, t-shirts, tank tops, sweatshirts, sweatpants, sweat suits, suits, sweaters, jumpers, overalls, rompers, dresses, slacks, jackets, jeans, vests, coats, hats, caps, headbands, earmuffs” is not confusing with the registered trade-marks DOUBLE ARCUATE Design and ARCUATE Design.
[37] However, as I am of the view that the trade-marks are as similar as they are different from one another, I find that the factor listed at s. 6(5)(c) of the Act tips the balance of probabilities in favour of the Applicant when considering the wares “eyewear, namely eyeglasses and sunglasses, as well as handbags and luggage”. Accordingly, I conclude that the Applicant has discharged its onus of showing, on a balance of probabilities, that the Mark in association with the aforementioned wares is not confusing with the registered trade-marks DOUBLE ARCUATE Design and ARCUATE Design. Given the evidence of record and the very nature of the Applicant’s aforementioned wares, in my view the Opponent’s argument regarding the lack of restrictions imposed on the Applicant when using the Mark is a stretch too far. Suffice it to say that The Canadian Oxford Dictionary defines “pocket” as “a small bag sewn into or on clothing, for carrying small articles” (my emphasis).
[38] Having regard to the foregoing, I find that ground of opposition based upon s. 12(1)(d) of the Act is successful with respect to the wares “wearing apparel, namely, skirts, pants, shorts, shirts, blouses, t-shirts, tank tops, sweatshirts, sweatpants, sweat suits, suits, sweaters, jumpers, overalls, rompers, dresses, slacks, jackets, jeans, vests, coats, hats, caps, headbands, earmuffs”.
[39] As previously indicated, I consider that the determination of the issue of confusion under the registrability ground of opposition effectively decides the outcome of the two other grounds of opposition. Accordingly, I find that both the non-entitlement and distinctiveness grounds of opposition are successful with respect to the wares “wearing apparel, namely, skirts, pants, shorts, shirts, blouses, t-shirts, tank tops, sweatshirts, sweatpants, sweat suits, suits, sweaters, jumpers, overalls, rompers, dresses, slacks, jackets, jeans, vests, coats, hats, caps, headbands, earmuffs”.
Disposition
[40] Having regard to the foregoing, and with the authority delegated to me under s. 63(3) of the Act, I refuse the application with respect to the wares “wearing apparel, namely, skirts, pants, shorts, shirts, blouses, t-shirts, tank tops, sweatshirts, sweatpants, sweat suits, suits, sweaters, jumpers, overalls, rompers, dresses, slacks, jackets, jeans, vests, coats, hats, caps, headbands, earmuffs” and I reject the opposition with respect to the wares “eyewear, namely eyeglasses and sunglasses, as well as handbags and luggage” pursuant to s. 38(8) of the Act [see Produits Menager Coronet Inc. v. Coronet-Werke Heinrich Schlerf Gmbh (1986), 10 C.P.R. (3d) 492 (F.C.D.T.) as authority for a split decision].
DATED AT MONTREAL, QUEBEC, THIS 6th DAY OF MAY 2009.
Céline Tremblay
Member
Trade-marks Opposition Board