LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2013 TMOB 58
Date of Decision: 2013-03-28
IN THE MATTER OF AN OPPOSITION by Principauté de Monaco to application No. 1,351,481 for the trade-mark DIAMOND REWARDS CLUB MONTE CARLO INN & Design in the name of Monte Carlo Holdings Corp.
[1] On May 30, 2007, Monte Carlo Holdings Corp. (then known as Monte Carlo Hotel / Motel Innternational Inc.) (the Applicant) filed an application to register the trade-mark DIAMOND REWARDS CLUB MONTE CARLO INN & Design (shown below) (the Mark) based on use of the Mark in Canada since May 23, 2007 in association with the following services:
The operation of a loyalty program whereby frequent customers of the applicant's franchised hotels / motels who choose to become members of the program can accumulate points that can be applied towards the purchase of the goods or services of the applicant or of other goods or service providers who agree to become associated with the applicant's loyalty program. (the Services)
[2] The application includes the following colour claim and disclaimer:
The applicant claims colour as a feature of the trade-mark, namely, blue, tourquoise [sic], gold, yellow, red and black. The mark consists of a rectangular design that includes a blue background, to the left, a series of ten diamond shapes arranged in a triangular pattern, the colours of which change, from left to right, from dark to pregressively [sic] lighter shades of tourquoise [sic] and finally white, the word DIAMOND REWARDS CLUB in gold lettering, a stylized tourquoise [sic] crown in the centre that features six more diamond shapes in the centre of the crown above the inscription MONTE CARLO INN in gold lettering, and a smaller red, gold and black stylized crown to the lower right of the design.
The right to the exclusive use of the word INN is disclaimed apart from the trade-mark.
[3] The application was advertised for opposition purposes in the Trade‑marks Journal on March 12, 2008.
[4] On May 12, 2008, Principauté de Monaco opposed the application jointly with Société Anonyme des Bains de Mer et du Cercle des Étrangers à Monaco (Société Anonyme). The statement of opposition was amended a first time on November 28, 2008, and again on December 8, 2008. On July 14, 2010, each of the joint opponents requested leave to file a further amended statement of opposition reflecting the fact that they would now be represented individually by separate counsel. Leave was granted by the Registrar by way of Office letter dated March 24, 2011. As a result, the present decision pertains to the statement of opposition as last amended by Principauté de Monaco (the Opponent) on July 14, 2010. A separate decision pertaining to the opponent Société Anonyme is being issued in parallel to the present case.
[5] The grounds of opposition the Opponent relies upon can be summarized as follows:
1. the application does not comply with section 30 of the Trade-marks Act, RSC 1985, c T-13 (the Act) in that:
i. the Mark has not been used by the Applicant in association with the Services since the claimed date of first use in Canada;
ii. the trade-mark for which use is alleged is not the Mark;
iii. use of the Mark in association with each of the Services has been discontinued;
iv. the Services are not recited in ordinary commercial terms; and
v. the Applicant could not have been satisfied that it was entitled to use the Mark in Canada knowing that it would violate the rights of the Opponent;
2. the Mark is not registrable pursuant to section 12(1)(b) of the Act in that whether written, depicted or sounded, the Mark is deceptively misdescriptive in the English or French language of the character or quality of the Services or of the conditions of the persons employed in their production or their place of origin, namely the Principality of Monaco (of which Monte-Carlo is one of its districts) or of an entity under its control;
3. the Mark is not registrable pursuant to section 12(1)(d) of the Act in that it is confusing with Canadian trade-mark registration No. TMA631,932 for THERMES MARINS MONTE CARLO owned by Société Anonyme (the particulars of which are attached herewith under Schedule “A”);
4. the Mark is a trade-mark whose adoption is prohibited pursuant to sections 9 and 10 of the Act in that:
i. the Mark is composed of, or resembles such that it could be mistaken for any territorial or civil flag of a country of the Union for the Protection of Industrial Property, namely the Opponent and is contrary to sections 12(1)(e) and 9(1)(i.2) of the Act;
ii. the Mark is composed of what may resemble a badge, mark or emblem adopted by a public authority in Canada as its official mark for wares and services, namely the official mark MONTE-CARLO, published under No. 907,706 in the name of the Opponent, contrary to sections 12(1)(e) and 9(1)(n) of the Act;
iii. the element “MONTE-CARLO” in the Mark, in the course of ordinary business practice has become known in Canada as designating the place of origin of the services in connection with which it has been used, namely the services associated with, in one manner or another, the Opponent, such that the Mark is contrary to sections 12(1)(e) and 10 of the Act;
iv. the Mark is objectionable pursuant to section 9(1)(i) of the Act in that it consists of, or so nearly resembles as to likely be mistaken for one or more of the territorial or civic flags, crests or emblems of the Opponent, namely the ones listed in the attached Schedule “B”, which have been the object of a public notice by the Registrar on November 30, 1983;
5. the Applicant is not the person entitled to registration of the Mark in that as of the Applicant’s claimed date of first use of the Mark in Canada, the Mark was confusing with the trade-mark MOSAIK MONTE CARLO in respect of which an application for registration had been previously filed by Société Anonyme, namely application No. 1,254,597 (the particulars of which are attached herewith under Schedule “A”); and
6. the Mark is not distinctive of the Applicant within the meaning of section 2 of the Act in that it does not serve to distinguish the Services of the Applicant from those of the Opponent, and the Applicant has allowed third parties to use the Mark without proper licensing contrary to sections 50 and 48(2) of the Act.
[7] The Applicant filed a counter statement in which it denied the Opponent’s allegations.
[8] The Opponent’s evidence in chief that was filed jointly with Société Anonyme consists of the following:
• a certified copy of application No. 1,254,597 for the trade-mark MOSAIK MONTE-CARLO in the name of Société Anonyme;
• a certified copy of registration No. TMA631,932 for the trade-mark THERMES MARINS MONTE CARLO in the name of Société Anonyme;
• certified copies of the following publications in the name of the Opponent:
o publication No. 907,076 for the official mark MONTE CARLO;
o publication No. 970,618 for the official mark SHIELD & Design;
o publication No. 970,619 for the official mark SHIELD & Design;
o publication No. 970,620 for the official mark SHIELD & Design; and
o publication No. 970,623 for the official mark CROWN & Design
• the solemn declaration of Iana Alexova dated November 25, 2008; and
• the solemn declaration of Marie-Ève Rock dated December 4, 2008.
[9] The Applicant’s evidence consists of the affidavit of Domenic Meffe, sworn on February 24, 2010.
[10] The Opponent thereafter filed as evidence in reply the solemn declaration of Anne-Christine Boudreault dated March 19, 2010. The Applicant submits that the Boudreault declaration is not proper reply evidence as it does not respond to the Applicant’s evidence and should be declared inadmissible. I agree. The Boudreault declaration puts forth dictionary definitions of “Kelly” and “Rainier”. More particularly, the declaration apparently purports to establish a connection between the Principauté de Monaco, Grace Kelly and Prince Rainier. However, I fail to see how these dictionary definitions reply to or contradict the Applicant’s evidence. Accordingly, I find that the Boudreault declaration is inadmissible and will not discuss it further.
[11] None of the witnesses were cross-examined.
[12] Both parties filed written arguments. Only the Applicant attended at an oral hearing.
Onus
[13] 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 evidentiary 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 [John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD); and Dion Neckwear Ltd v Christian Dior, SA et al (2002), 20 CPR (4th) 155 (FCA)].
Analysis of the grounds of opposition
[14] While the Opponent indicates in its written argument that it maintains each of the grounds of opposition pleaded in the statement of opposition as last amended on July 14, 2010, the Opponent’s representations have been solely restricted to the ground of opposition based on section 9(1)(i) of the Act.
[15] That said, and applying the principles above to the present case, I find that except for the sections 9(1)(i), 12(1)(d) and 16(1)(b) and non-distinctiveness grounds of opposition discussed below, all of the grounds of opposition pleaded by the Opponent can be summarily dismissed for the following reasons:
Grounds summarily dismissed
Section 30 grounds of opposition
[16] Even if I were to assume that each of the section 30 grounds of opposition is properly pleaded, the Opponent has failed to satisfy its evidentiary burden with respect to each of these grounds. Indeed, the Opponent has simply not provided any evidence or argument supporting its allegations.
Section 12(1)(b) ground of opposition
[17] The Opponent has failed to satisfy its evidentiary burden with respect to this ground. Suffice it to say that while the Alexova declaration provides dictionary definitions which establish that “Monaco” is a principality forming an enclave within the French territory, and that “Monte-Carlo” is famous for its casino and the destination of an annual car rally, it fails to establish that “Monte-Carlo” would have a reputation for a customer loyalty program.
Sections 12(1)(e) and 9(1)(n) ground of opposition
[18] The Opponent has failed to satisfy its evidentiary burden with respect to this ground. The Applicant has raised sufficient doubts concerning whether the Opponent is in fact a public authority in Canada [Canada Post Corporation v United Postal Service (2007), 54 CPR (4th) 121 (FCA); and Ecosmart Foundation Inc v SJ Electro Systems Inc, 2012 TMOB 104 CanLII].
Sections 12(1)(e) and 10 ground of opposition
[19] The Opponent has the evidentiary burden to establish that “MONTE CARLO” has been recognized in Canada as designating the place of origin of the services associated with, in one manner or the other, the Opponent. Even if I were to find that the Opponent has met its burden, I would find that the Applicant has satisfied its legal onus to establish that the Mark as a whole does not so nearly resemble as to likely be mistaken for the so-called mark “MONTE CARLO”. The element “MONTE CARLO” is used in combination with distinctive elements such that it does not dominate the Mark.
Sections 12(1)(e) and 9(1)(i.2) ground of opposition
[20] Even if I were to find that the Opponent has satisfied its evidentiary burden with respect to this ground, the Applicant has satisfied its legal onus to establish that the Mark as a whole does not so nearly resemble as to likely be mistaken for the Opponent’s national flag.
Remaining grounds of opposition
Section 12(1)(d) ground of opposition
[21] The Opponent has satisfied its evidentiary burden with respect to this ground by providing a certified copy of Canadian trade-mark registration No. TMA631,932 for THERMES MARINS MONTE CARLO owned by Société Anonyme. I have exercised the Registrar’s discretion to confirm that such registration is in good standing as of today’s date, which date is the material date to assess a ground of opposition based on section 12(1)(d) of the Act [Park Avenue Furniture Corp v Wickers/Simmons Bedding Ltd, (1991), 37 CPR (3d) 413 (FCA)].
[22] As the Opponent’s evidentiary burden has been satisfied, the Applicant must therefore establish, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and the trade-mark THERMES MARINS MONTE CARLO.
[23] 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.
[24] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those listed at 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 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. This list is not exhaustive; all relevant factors are to be considered, and are not necessarily attributed equal weight [Mattel, Inc v 3894207 Canada Inc (2006), 49 CPR (4th) 321 (SCC); Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée (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].
[25] That said, and as recently reminded by Mr. Justice Rothstein in Masterpiece, supra:
[…] the degree of resemblance, although the last factor listed in s. 6(5), is the statutory factor that is often likely to have the greatest effect on the confusion analysis […]. As Professor Vaver points out, if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion. The other factors become significant only once the marks are found to be identical or very similar […]. As a result, it has been suggested that a consideration of resemblance is where most confusion analysis should start [...]
[26] As I consider the degree of resemblance between the marks in issue to be the determining factor in the present case, I will analyse this factor first.
[27] The only common element between the Mark and the trade-mark THERMES MARINS MONTE-CARLO is “MONTE CARLO”, which is a weak element due to its descriptive nature in terms of geographical significance. Furthermore, such element does not dominate the Mark as a whole. Indeed, I agree with the Applicant that the dominant portions of the Mark are the diamond designs as well as the words “DIAMOND REWARDS CLUB”. The “MONTE CARLO” element is further used in conjunction with the word “Inn” as a reference to the Applicant’s MONTE CARLO INN motel/hotel properties, as evidenced by the Meffe affidavit.
[28] The Mark as a whole is not only different from that of Société Anonyme in appearance and sound, but also in the ideas suggested. Indeed, the idea suggested by the Mark is one where the Applicant’s “diamond members” are offered “rewards”. In contrast, the cited trade-mark is suggestive of a “Monte Carlo marine thermal bath”.
[29] I do not find it necessary to proceed with a detailed analysis of the remaining factors. There is no evidence that the trade-mark THERMES MARIN MONTE CARLO has been used and become known to any extent whatsoever in Canada or elsewhere in association with the various wares and services covered by registration No. TMA631,932 so as to enhance its distinctiveness. The wares and/or services in issue also differ in that the Services are a loyalty program directed to the Applicant’s franchised hotel/motel guests whereby they can accumulate and redeem points. The wares and services recited in Société Anonyme’s registration, on the other hand, include specialized therapies in the form of thermal bath treatments, algae treatments, revitalization treatments using thalassotherapy and baineotherapy, hydrotherapy and physisotherapy as well as other wares and services relating thereto.
[30] As indicated above, the issue is whether a consumer, who has a general and not precise recollection of the cited trade-mark, will, upon seeing the Mark, be likely to believe that their associated wares or services share a common source. This is not such a case.
[31] Before concluding on this ground, I wish to note that prior to the filing of the application for the Mark, the Applicant had registered in Canada, the following trade-marks:
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Registration No. TMA442,550 |
Registration No. TMA442,551 |
both covering, among others, hotel/motel services [Meffe affidavit - paras 3 and 4; Exhibits “A1” and “A2” that consist of printouts of the registration particulars for these registrations]. However, it is trite law that section 19 of the Act does not give the owner of a registration the automatic right to obtain any further registrations no matter how closely they may be related to the original registration [Coronet-Werke Heinrich Schlerf GmbH v Produits Menagers Coronet Inc (1984) , 4 CPR (3d) 108 (TMOB)].
[32] In view of the above, the section 12(1)(d) ground of opposition is dismissed.
Non-entitlement pursuant to section 16 of the Act
[33] The Opponent has satisfied its evidentiary burden with respect to this ground by providing a certified copy of Canadian trade-mark application No. 1,254,597 for the trade-mark MOSAIK MONTE CARLO, which application had been previously filed in Canada by Société Anonyme and was not abandoned as of the date of advertisement of the Applicant’s application for the Mark [section 16(4) of the Act].
[34] As the Opponent’s evidentiary burden has been satisfied, the Applicant must therefore establish, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and the trade-mark MOSAIK MONTE CARLO. The test for confusion has been set out above under the section 12(1)(d) ground of opposition. However, the material date that applies to a section 16(1)(b) ground of opposition differs from that of a section 12(1)(d) ground in that it is the date of first use of the Mark as claimed in the application.
[35] I find that the differences existing between the marks in issue are, by themselves, sufficient to preclude a likelihood of confusion. Like for Société Anonyme’s trade-mark THERMES MARINS MONTE CARLO discussed above under the section 12(1)(d) ground of opposition, the only common element between the marks in issue is “MONTE CARLO”, which is a weak element. This is particularly true when one considers the Mark as a whole: the element “MONTE CARLO” can by no means be considered to dominate the Mark. Likewise, I consider the word “MOSAIK” in the cited mark to be the dominant element of the mark as it appears first and is inherently more distinctive than the word “MONTE CARLO”, which is descriptive in terms of geographical significance. In the absence of evidence of use of the trade-mark MOSAIK MONTE CARLO in Canada or elsewhere, I do not find it necessary to proceed with a detailed analysis of the remaining factors listed in section 6(5) of the Act.
[36] As indicated above, the issue is whether a consumer, who has a general and not precise recollection of the cited mark, will, upon seeing the Mark, be likely to believe that their associated wares or services share a common source. This is not such a case.
[37] In view of the above, the section 16(1)(b) ground of opposition is dismissed.
[38] In closing, I note that the Opponent has also pleaded under the introductory paragraph of section 16 of the Act that the application does not conform to the requirements of section 30 of the Act, that the application is not for a trade-mark that is being used but a proposed trade-mark, and that the Mark is not registrable and does not function as a trade-mark. I am of the view that such pleading does not raise a valid ground of opposition. Such pleading would be more appropriately raised under section 38(a) (non-compliance with section 30 of the Act) or (b) (non-registrability pursuant to section 12) discussed elsewhere in my decision. Accordingly, this ground is dismissed.
Sections 12(1)(e) and 9(1)(i) ground of opposition
[39] While the Opponent has pleaded in its statement of opposition that the Mark is objectionable pursuant to section 9(1)(i) of the Act in that it consists of, or so nearly resembles as to likely be mistaken for one or more of the territorial or civic flags, crests or emblems of the Opponent listed in the attached Schedule “B”, the Opponent has restricted its representations to only four of them, namely those published under Nos. 970,623; 970,618; 970,619; and 970,620. I will therefore focus my analysis on these four prohibited marks of the Opponent, which present the Opponent’s strongest case. If the Opponent is not successful with respect to any of these marks, it would not achieve a more favourable result with the other marks.
[40] Both parties have submitted in their respective written arguments that the test of resemblance to be applied to this ground of opposition has been set out by the Federal Court of Canada in Canadian Olympic Association v Health Care Employees Union of Alberta (1992), 46 CPR (3d) 12 (FCTD) (hereinafter Canadian Olympic). In that case, the Canadian Olympic Association was appealing a decision of the Registrar rejecting its opposition to the registration of the respondent’s word and design trade-mark, which included the use of five interlocking rings. There was no issue that the respondent’s mark was not identical to the official marks of the appellant. The issue was whether a comparison of the rings on the appellant’s and the respondent’s marks gave rise to the resemblance contemplated by section 9(1)(n)(iii). The Court stated that a close and careful look is not the test to be applied. Rather, the question must be determined in the context of a person who, on a first impression, knowing one mark only and having an imperfect recollection of it, would likely be deceived or confused.
[41] As set out by the Applicant in its written argument, the test was further developed to include all three aspects of resemblance referred to in section 6(5)(e) of the Act, namely appearance, sound and the ideas suggested [Ontario v McMillan (1994), 54 CPR (3d) 159 (TMOB) relying on WWF-World Wide Fund for Nature v 676166 Ontario Ltd (1992), 44 CPR (3d) 563 (TMOB) at 567; and Big Sisters Association v Big Brothers of Canada (1997), 75 CPR (3d) 177 (FCTD)]. I see no reason not to apply the same test under section 9(1)(i) of the Act.
[42] As indicated above, the dominant features of the Mark are the diamond shapes in a triangular pattern and the words “DIAMOND REWARDS CLUB”. As such, I agree with the Applicant that the Mark is different in appearance and sound from the Opponent’s prohibited marks. I further agree with the Applicant that the idea suggested by the Mark sets it apart from the Opponent’s marks. The words “DIAMOND REWARDS CLUB” are suggestive of a club where “diamond membership” has rewards. In distinct contrast, the Opponent’s prohibited marks are suggestive of royalty, reminiscent of the medieval era. All of the foregoing differences serve to differentiate the Mark from those of the Opponent. As a result, I agree with the Applicant that notwithstanding that the Mark comprises diamond shapes and an ornamental motif similar to those found in the Opponent’s prohibited marks, there are nevertheless sufficient differences so that a person, on first impression, knowing of the Opponent’s prohibited marks only, and having an imperfect recollection of them, would not be deceived or confused by the Applicant’s Mark.
[43] In view of the above, the sections 12(1)(e) and 9(1)(i) ground of opposition is dismissed.
Non-distinctiveness ground of opposition
[44] The non-distinctiveness ground, as pleaded by the Opponent, has essentially two prongs, namely that the Mark is not distinctive of the Applicant within the meaning of section 2 of the Act in that it is confusing with the Opponent’s prohibited marks; and the Applicant has allowed third parties to use the Mark without proper licensing, contrary to sections 50 and 48(2) of the Act.
[45] The material date that applies to this ground of opposition is the date of filing of the opposition [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC)]. While there is a legal onus on the Applicant to show that the Mark is adapted to distinguish or actually distinguishes the Services from those of others throughout Canada [Muffin Houses Incorporated v The Muffin House Bakery Ltd (1985), 4 CPR (3d) 272 (TMOB)], there is, as indicated above, an evidentiary burden on the Opponent to establish the facts relied upon in support of the ground of opposition.
[46] The Opponent has failed to satisfy its evidentiary burden with respect to the second prong. Indeed, the Opponent has simply not provided any evidence or argument supporting its allegations.
[47] As for the first prong, even if I were to find that the Opponent has satisfied its evidentiary burden to establish that each of its prohibited marks has become known to some extent at least so as to negate the distinctiveness of the Mark, I would find that the Applicant has satisfied its legal onus to establish that the Mark as a whole does not so nearly resemble any of them.
[48] In view of the above, the first and second prongs of the non-distinctiveness ground of opposition are dismissed.
Disposition
[49] In view of the foregoing and pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(8) of the Act.
______________________________
Annie Robitaille
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
Schedule “A”
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Appl’n or Reg. No. / Appl’n or Reg. Date |
Trade-mark |
Wares / Services |
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TMA631,932 Issued on Feb. 03, 2005 |
THERMES MARINS MONTE CARLO |
(1) Savons; parfumerie […];cosmétiques
[…]. |
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1,254,597 Filed on April 19, 2005 Abandoned on May 7, 2008 |
MOSAIK MONTE CARLO |
(1) Coutellerie, fourchettes et cuillers. Appareils photographiques,
cinématographiques, nommément […]; appareils optiques, nommément […];
appareils pour l'enregistrement, la transmission, la reproduction du son ou
des images, nommément[…]; supports d'enregistrement magnétiques, nommément
[…]; distributeurs automatiques et mécanismes pour appareils de prépaiement;
caisses enregistreuses […]. Ustensiles et récipients pour le ménage ou la
cuisine […]
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Schedule “B”
Schedule “B” – Cont’d