LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2014 TMOB 56
Date of Decision: 2014-03-13
IN THE MATTER OF AN OPPOSITION by Vincor International Inc. to application No. 1,508,768 for the trade-mark 1884-THE PRESIDENT’S BLEND in the name of S.A. Establecimientos Vitivinicolas Escorihuela
[1] Vincor International Inc. (the Opponent) opposes registration of the trade-mark 1884-THE PRESIDENT’S BLEND (the Mark) that is the subject of application No. 1,508,768 by S.A. Establecimientos Vitivinicolas Escorihuela (the Applicant). The application is based upon proposed use of the Mark in Canada in association with “wines”.
[2] The Opponent alleges that: (i) the application does not conform to sections 30(e) and 30(i) of the Trade-marks Act, RSC 1985, c T-13 (the Act); (ii) the Mark is not registrable under section 12(1)(d) of the Act; (iii) the Applicant is not the person entitled to registration of the Mark under section 16(3)(a) of the Act; and (iv) the Mark is not distinctive under section 2 of the Act.
[3] For the reasons that follow, the application ought to be refused.
The Record
[4] The Opponent filed its statement of opposition on October 18, 2011. The Applicant then filed and served its counter statement denying all of the grounds of opposition alleged in the statement of opposition on February 20, 2012.
[5] In support of its opposition, the Opponent filed the affidavit of Steven Bolliger, Senior Vice-President, Marketing at Constellation Brands (Canada) Inc., with Exhibits “A” to “X”. The Applicant did not file any evidence.
[6] Only the Opponent filed written arguments; an oral hearing was held and only the Opponent was represented.
The Parties’ Respective Burden or Onus
[7] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is 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 CPR (3d) 293 (FCTD) at 298].
Grounds of Opposition Summarily Dismissed
[8] The grounds of opposition raised under sections 30(e) and 30(i) of the Act are summarily dismissed for the reasons that follow.
[9] The section 30(e) ground of opposition, which alleges that the Applicant does not itself intend to use the Mark in Canada, is dismissed for the Opponent’s failure to meet its evidential burden. The Opponent did not file any evidence in support of this ground of opposition, nor did it make any submission in this regard.
[10] Section 30(i) of the Act requires an applicant to include a statement in the application that the applicant is satisfied that it is entitled to use the trade-mark in Canada. Where an applicant has provided the required statement, non-compliance with section 30(i) of the Act can only be found where there are exceptional circumstances that render the applicant’s statement untrue, such as evidence of bad faith [see Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155]. There is no such evidence here.
Analysis of the Remaining Grounds of Opposition
[11] The remaining issues revolve around the likelihood of confusion between the Mark and the Opponent’s registered trade-marks comprising of or containing the term PRESIDENT, as detailed in Schedule “A” to this decision. I will analyse each of the issues in turn.
Is the Mark Confusing with the Opponent’s Registered Trade-marks?
[12] The material date for considering this issue, which arises from the section 12(1)(d) ground of opposition, is the date of my decision [see Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trade Marks (1991), 37 CPR (3d) 413 (FCA)]. For the reasons that follow, I accept the ground of opposition and decide this issue in favour of the Opponent.
[13] Having exercised the Registrar’s discretion, I confirm that the Opponent’s registration Nos. UCA27871, UCA27872, TMA251,873 and TMA679,858 are extant under its new name Constellation Brands Canada, Inc. According to the last footnote on each registration page entered by the Canadian Intellectual Property Office on August 2, 2012, the Opponent’s change of name from Vincor International Inc. to Constellation Brands Canada, Inc. occurred on June 1, 2012. Even though the Opponent did not seek to amend the record to reflect its new name, it has no consequence in this proceeding.
The test for confusion
[14] Since the Opponent has satisfied its initial evidential burden, the issue becomes whether the Applicant has met its legal burden to establish, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and any of the Opponent’s registered trade-marks.
[15] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that 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.
[16] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 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 each has 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 CPR (4th) 321 (SCC); Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée et al (2006), 49 CPR (4th) 401 (SCC); and Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC) for a thorough discussion of the general principles that govern the test for confusion.]
[17] Comparing the Mark and the registered trade-mark PRESIDENT (No. UCA27871) will effectively decide the section 12(1)(d) ground of opposition. In other words, if confusion is not likely between the Mark and PRESIDENT, then it would not be likely between the Mark and any of the registered design marks alleged by the Opponent (No. UCA27872, TMA251,873 and TMA679,858).
[18] In Masterpiece, the Supreme Court of Canada discussed the importance of section 6(5)(e) in conducting an analysis of the likelihood of confusion. Specifically, the Court noted that the degree of resemblance is the statutory factor that is often likely to have the greatest effect on the confusion analysis; the other factors become significant only once the marks are found to be identical or very similar.
[19] I will now turn to the assessment of the section 6(5) factors starting with the degree of resemblance between the Mark and PRESIDENT.
Section 6(5)(e) – the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
[20] When considering the degree of resemblance, the law is clear that the trade-marks must be considered in their totality. It is not correct to lay them side by side and compare and observe similarities or differences among the elements or components of the trade-marks. Moreover, while the first word of a trade-mark may be the most important for purposes of distinctiveness in some cases, the preferable approach when comparing trade-marks is to begin by determining whether there is an aspect of the trade-mark that is particularly striking or unique [see Masterpiece at para 64]. For the reasons that follow, I find that there is a significant degree of resemblance between the marks. This factor favours the Opponent.
[21] The Mark encompasses the entirety of the Opponent’s mark. In this regard, the word “PRESIDENT” is not inherently strong due to its somewhat laudatory nature as it evokes the idea of a “leading” or first rate product [see Vincor International Inc v Cerveceria Nacional Dominicana C por A 2004 CarswellNat 4534 (TMOB)]. Nevertheless, it is the sole feature of the Opponent’s mark that serves to distinguish the Opponent from other sources of wine. Likewise, the term “PRESIDENT’S” is also not inherently strong however it is the dominant feature of the Applicant’s Mark as the remaining elements have very little inherent distinctiveness. Aside from the definite article “THE”, the number “1884” evokes the idea of time while the word “BLEND” describes a mixture of grapes. When the marks are viewed in their entirety, although there are some differences between the parties’ marks, the degree of resemblance is nevertheless significant due to their nearly identical distinctive features, namely the word “PRESIDENT” and the term “PRESIDENT’S”.
Section 6(5)(a) – the inherent distinctiveness of the trade-marks and the extent to which they have become known
[22] The overall consideration of the section 6(5)(a) factor, which involves a combination of inherent and acquired distinctiveness of the parties’ trade-marks, favours the Opponent. Neither mark is inherently strong. Nevertheless, the Opponent has shown evidence of use of its trade-mark PRESIDENT in Canada for an extended period of time while there is no evidence of promotion or use of the Mark by the Applicant in Canada.
[23] Neither trade-mark has a high degree of inherent distinctiveness. As mentioned above, the word “PRESIDENT” and the term “PRESIDENT’S” are not inherently strong due to their somewhat laudatory nature. As for the remaining elements of the Applicant’s Mark, the definite article “THE”, the punctuation “-”, and the numerals “1884” all have little inherent distinctiveness [see Hudson’s Bay Co v Boyner Holding Anonim Sirketi 2010 TMOB 16 and Noxzema Chemical Co of Canada Ltd v Estee Lauder Cosmetics Ltd (1975), 23 CPR (2d) 214 (TMOB)], while the word “BLEND” is descriptive of the wares.
[24] The strength of a trade-mark may be increased by means of it becoming known in Canada through promotion or use. The Applicant did not provide any evidence of promotion or use of the Mark. Conversely, the Opponent introduced extensive evidence of promotion and use of its trade-mark PRESIDENT in Canada through the Bolliger affidavit.
[25] Mr. Bolliger states that the Opponent is the largest producer and marketer of wines in Canada. According to the affiant, the Opponent’s name was changed to Constellation Brands Canada, Inc. on June 1, 2012 following a series of mergers and acquisitions that took place between 1992 and 2006.
[26] In terms of use of the mark, Mr. Bolliger states that one of the Opponent’s best known brands is the “popular-priced” PRESIDENT line of wines which has historically included port, sherry, wine and most importantly, Canadian champagne, a sparkling wine which has been available in Canada since 1947. The affiant further states that the mark PRESIDENT, alone or in combination with other elements, has been used by the Opponent and its predecessors in title in Canada in association with wines for over 60 years. To this end, Mr. Bolliger attaches as Exhibits “F” and “H” to his affidavit sample labels featuring the trade-mark PRESIDENT for bottles of wine, said to be representative of those used in Canada for “many years” by the Opponent and its predecessors in title, “well prior to” the filing date of the subject application. Sample photos of wine bottles bearing labels featuring the trade-mark PRESIDENT, said to be representative of those “sold in Canada in the early 2000’s” and “in recent years” are also attached as Exhibits “I” and “J” respectively to the Bolliger affidavit. Photos of a limited edition wine bottle with a label bearing the trade-mark PRESIDENT from 2004 are also produced as Exhibits “R” and “S”.
[27] In all the sample labels and photos, the word PRESIDENT is shown with various additional elements including the design of a crest as well as reading material including the type of wine and terms such as “Cuvée 2001”, “RÉSERVE SPÉCIALE”, “GRANDE RÉSERVE” and “MÉTHODE CUVE CLOSE”. Several sample labels also include references to the “President Champagne Company” which is the Opponent’s registered trading style as evidenced by copies of business style registrations issued by the Ontario government to the Opponent attached as Exhibit “G” to the Bolliger affidavit. Other labels include the term “Brights”, which according to Mr. Bolliger, was the house mark used by the Opponent’s predecessor in title, T.G. Bright & Co., Limited.
[28] The use of a trade-mark in combination with additional words or features constitutes use of the registered mark if the public as a matter of first impression, would perceive the trade-mark per se as being used [see Nightingale Interloc Ltd v Prodesign Ltd (1984), 2 CPR (3d) 535 (TMOB) and Canada (Registrar of Trade-marks) v Cie International pour l’informatique CII Honeywell Bull (1985), 4 CPR (3d) 523 at 525 (FCA)]. In the present case, the word PRESIDENT appears prominently in all the labels, separate from the additional elements. Given the positioning and the use of the different fonts and sizes, I am satisfied that that the word PRESIDENT would be perceived as use of the Opponent’s trade-mark PRESIDENT per se.
[29] In terms of sales, Mr. Bolliger states that PRESIDENT wines have been made available and sold across Canada for decades. Copies of representative sample price lists for PRESIDENT wines used by liquor boards in British Columbia, Manitoba, Ontario, Nova Scotia, Newfoundland and Yukon, are attached as Exhibit “K-1” to the Bolliger affidavit. I note that some of the documents are dated in 2003 and 2006. Mr. Bolliger further states that over 40 million litres of PRESIDENT wine have been sold in Canada over the years, with the PRESIDENT Canadian Champagne as Canada’s best selling Canadian Champagne since at least 1978. In this regard, he provides the annual sales figures and the number of litres of wines sold in association with the Opponent’s mark from 2007 to 2012. The numbers vary between 180,000 and 365,000 litres, representing in excess of $10 million dollars of sales over the six-year period.
[30] In terms of promotion, Mr. Bolliger sets out the Opponent’s annual expenditures for marketing and promotion of PRESIDENT wines in Canada to be between $20,000 and $70,000 dollars from 2007 to 2011, representing $215,000 during the five-year period. The affiant further states that for over 40 years, advertisements for PRESIDENT wines appeared in many printed publications in Canada, including Financial Post, Globe & Mail [sic], Ottawa Citizen, Toronto Star and Toronto Sun. Copies of representative samples are attached as Exhibit “M” to the Bolliger affidavit. Pictures of wine bottles with the trade-mark PRESIDENT shown prominently on the label can be seen in most of the sample ads, some of which appear to be from the 1960s, 1970s, 1980s and 2000s. No circulation figures have been provided. I am, however, prepared to take judicial notice of the fact that Financial Post and The Globe and Mail have wide circulation in Canada and each of the other papers mentioned above has some circulation in their named areas [Milliken & Co v Keystone Industries (1979) Ltd (1986), 12 CPR (3d) 166 (TMOB) at 168-169].
[31] Mr. Bolliger explains that since 1967, the Opponent and its predecessors in title have sponsored a number of events at which PRESIDENT wines were served and promoted. Moreover, the Opponent and its predecessors in title have won many awards for its PRESIDENT wines, earning medals in international competitions for many years. In support, Mr. Bolliger sets out a list of 41 such awards dated between 1950 and 1996 for competitions that took place in Canada, the United States and Europe. The affiant states that these awards are often mentioned in well known wine magazines for wine aficionados that have been circulated in Canada, such as Wine Spectator and Winetidings. Given the lack of information regarding the circulation of these specialised magazines in Canada, I am not prepared to take judicial notice that they were well known or that they have been circulated in Canada.
[32] Finally, Mr. Bolliger provides that “for many years and in particular prior to” the filing date of the subject application, the opponent’s PRESIDENT wines are promoted at point of sale retail locations by the display of promotional materials which included images of PRESIDENT bottles shown with the trade-mark. Attached as Exhibit “U” are representative samples of the promotional materials bearing the mark PRESIDENT placed on tables in restaurants. Representative samples of advertising campaign posters, showing wine bottles bearing PRESIDENT labels, said to have been displayed at shopping malls throughout Canada “for many years”, are also attached as Exhibit “N” to the Bolliger affidavit.
[33] Upon review of the Opponent’s evidence concerning the sales, advertising and promotion of its wines in association with the trade-mark PRESIDENT in Canada, including its sales and advertising expenditures from 2007 to 2012, I am satisfied that there has been wide promotion and substantial use of the Opponent’s mark PRESIDENT in Canada in association with wines for an extended period of time. As there is no evidence of promotion and use of the Mark in Canada, it can only be concluded that the Opponent’s mark has become known in Canada to a larger extent than the Mark. Accordingly, the section 6(5)(a) factor favours the Opponent.
Section 6(5)(b) – the length of time the trade-marks have been in use
[34] The overall consideration of the section 6(5)(b) factor clearly favours the Opponent. The application for the Mark is solely based upon proposed used in Canada. As mentioned earlier, there is no evidence of use of the Mark by the Applicant in Canada to date. By comparison, I note that the earliest date of first use claimed in registration No. UCA27871 for the trade-mark PRESIDENT is November 3, 1947. Moreover, as per my review of Mr. Bolliger’s affidavit discussed above, the Opponent has shown use of the mark PRESIDENT in association with wines within the meaning of section 4(1) of the Act for an extended period of time in Canada.
Sections 6(5)(c) and (d) – the nature of the wares, trade and business
[35] Sections 6(5)(c) and (d) factors, which involve the nature of the wares, trade and business, also favour the Opponent.
[36] The parties’ wares are identical; both marks are associated with wines. In terms of channels of trade, Mr. Bolliger states that the Opponent’s PRESIDENT wines are sold in retail outlets operated by all twelve provincial and territorial liquor control boards across Canada, grocery stores in Quebec, Wine Rack stores in Ontario, as well as restaurants and licensed establishments throughout the country. In the absence of evidence from the Applicant and given that the parties’ wares are identical, for the purpose of assessing confusion, I conclude that there is potential for overlap between the parties’ channels of trade.
Conclusion in the likelihood of confusion
[37] To the extent that it revolves around confusion with the Mark and the mark PRESIDENT, the non-registrability ground of opposition is successful. In applying the test for confusion, I have considered it as a matter of first impression and imperfect recollection. Having considered all of the surrounding circumstances, in particular, the similarities between the parties’ trade-marks in appearance and sound, as well as in ideas suggested, evidence of the Opponent’s mark being used in Canada, the identical wares, and the potential for overlap between of the channels of trade, I am not satisfied that the Applicant has discharged its burden of showing, on a balance of probabilities, that there is no reasonable likelihood of confusion between Mark and PRESIDENT.
[38] As I find that comparing the Mark with PRESIDENT effectively decided the outcome of this ground of opposition, it is not necessary to consider whether the Opponent has discharged its evidential burden for its registered design marks (Nos. UCA27872, TMA251,873 and TMA679,858).
Was the Applicant the person entitled to registration of the Mark at the filing date of the application?
[39] The material date for considering this ground of opposition is the filing date of the application for the Mark, namely December 21, 2010. For the reasons that follow, I accept the ground of opposition and decide this issue in favour of the Opponent.
[40] The Opponent has the initial burden of proving that each of the trade-marks alleged in support of this ground of opposition was used in Canada prior to the material date and had not been abandoned at the date of advertisement of the application for the Mark [section 16(5) of the Act].
[41] Once again, I find that comparing the Mark with the trade-mark PRESIDENT will effectively decide the ground of opposition. Thus, I find it unnecessary to consider whether the Opponent has discharged its evidentiary burden to establish prior use of the design marks alleged in the statement of opposition.
[42] I am satisfied that the Opponent has discharged its evidentiary burden to show prior use and non-abandonment of its trade-mark PRESIDENT. Further, assessing each of the section 6(5) factors as of December 21, 2010 rather than as of today’s date does not significantly impact my previous analysis of the surrounding circumstances of this case. I conclude that the Applicant has not discharged its burden of showing, on a balance of probabilities, that there is no reasonable likelihood of confusion between its Mark and the Opponent’s mark PRESIDENT in association with wines as of December 21, 2010.
[43] Accordingly, the section 16(3)(a) ground of opposition is successful.
Was the Mark distinctive of the Applicant’s services at the filing date of the statement of opposition?
[44] The ground of opposition as pleaded is based upon the likelihood of confusion between the Mark and the Opponent’s trade-marks alleged in the statement of opposition. The material date to assess the ground of opposition is the filing date of the statement of opposition, namely October 18, 2011 [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC)]. For the reasons that follow, I accept the ground of opposition and decide this issue in favour of the Opponent.
[45] I am satisfied that the Opponent has met its evidentiary burden to establish that its mark PRESIDENT had become known sufficiently in Canada, as of October 18, 2011, to negate the distinctiveness of Mark [see Motel 6, Inc v No 6 Motel Ltd (1981), 56 CPR (2d) 44 (FCTD); Bojangles’ International, LLC and Bojangles Restaurants, Inc v Bojangles Café Ltd 2006 FC 657 (CanLII), (2006), 48 CPR (4th) 427 (FC)]. As I find that comparing the Mark with the mark PRESIDENT will effectively decide the outcome of this ground of opposition, it is not necessary to consider whether the Opponent has discharged its evidentiary burden for the design marks alleged in the statement of opposition.
[46] Assessing each of the section 6(5) factors as of October 18, 2011 does not significantly impact my previous analysis of the surrounding circumstances of this case. For reasons similar to those expressed previously, I conclude that the Applicant has not discharged its burden of showing, on a balance of probabilities, that there is no reasonable likelihood of confusion between its Mark and the Opponent’s mark PRESIDENT in association with wines as of October 18, 2011.
[47] Accordingly, the non-distinctiveness ground of opposition is successful.
Disposition
[48] Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application under section 38(8) of the Act.
______________________________
Darlene H. Carreau
Chairperson
Trade-marks Opposition Board
Canadian Intellectual Property Office
Schedule “A”
|
|
The Opponent’s Trade-marks |
Registration Nos. |
Wares |
|
1. |
PRESIDENT
|
UCA27871 |
Wines. |
|
2. |
|
UCA27872 |
Wines. |
|
3. |
|
TMA251,873 |
Wines. |
|
4. |
|
TMA679,858 |
Wines. |