IN THE MATTER OF AN OPPOSITION
by Bally Schuhfabriken AG to application
No 666,414 for the trade-mark BALIWEAR
Design filed by QSI International
On September 13, 1990, the applicant, QSI International, filed an application to register the trade-mark BALIWEAR Design (illustrated below) based on proposed use in Canada with the following wares:
men's and ladies' shorts, t-shirts, sun dresses, skirts,
pants, sarongs, shirts, hats, caps, visors, sweatbands,
sunglasses, thongs and towels.
The application was advertised for opposition purposes on November 20, 1991.
The opponent, Bally Schuhfabriken AG, filed a statement of opposition on March 6, 1992, a copy of which was forwarded to the applicant on May 4, 1992. The opponent was granted leave to amend its statement of opposition on October 29, 1993. The grounds of opposition include, among others, 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 opponent's trade-mark BALLY registered under No. 285,783 for the following wares:
(1) shoes (2) shoes, also including beach shoes, boots and slippers;
stockings, socks and pantyhoses, hats and caps; shirts, polo shirts,
blouses, jackets, pullovers, vests, pants, slacks, suits, dresses and
coats; underwear made of knitted fabrics (excluding brassieres,
girdles and foundation garments); ties, suspenders, gloves, hand-
kerchiefs, shawls, shoe polishes, shoe cleaning preparations,
impregnating preparations for footwear and leathers; handbags,
bags for provisions, travel bags, leather suitcases, beachbags,
portfolios for documents, files, cosmetic bags, wallets, leather cases;
soaps, perfumes, essential oils, after-shaves, eau-de-cologne, hair
lotions and toothpaste.
The applicant filed and served a counter statement. As its evidence, the opponent filed the affidavits of Merle Sloss and Helen M. Bisson. The applicant filed an affidavit of Michael Finigan but it was deemed not to form part of the record of this proceeding when Mr. Finigan failed to attend for cross-examination. Only the opponent filed a written argument and no oral hearing was conducted.
As for the ground of opposition based on Section 12(1)(d) of the Act, the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark is the date of my decision: see the decision in Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R.(3d) 538 at 541-542 (T.M.O.B.). Furthermore, the onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. 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 applicant's proposed mark is comprised of the word "Bali" which is the name of an Indonesian island and the word "wear" which is a non-distinctive description of the clothing items for which the applicant is seeking registration. Thus, the applicant's mark is not inherently strong. There being no evidence of record from the applicant, I must conclude that its mark has not become known at all in Canada.
The opponent's registered mark BALLY is inherently distinctive since it has no readily apparent meaning in relation to the opponent's wares. The Sloss affidavit evidences significant Canadian sales and advertising of BALLY wares for a number of years although it appears that the vast majority of the sales were of shoes. Thus, I am able to conclude that the opponent's mark has become well known in Canada for shoes.
The length of time the marks have been in use favors the opponent. The applicant's wares overlap with the statement of wares in registration No. 285,783. Presumably, the trades of the parties would also overlap.
As for Section 6(5)(e) of the Act, there is a fair degree of visual resemblance between the marks at issue and an even greater degree of phonetic resemblance. When sounded, the opponent's registered mark BALLY is identical to the first and only distinctive component of the applicant's mark. In fact, when sounded, the applicant's mark could be heard as "BALLY wear" which consumers might assume was a line of the opponent's clothing wearing apparel.
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 resemblance between the wares, trades and marks of the parties, I find that the applicant has failed to satisfy the onus on it to show that its proposed mark BALIWEAR Design is not confusing with the opponent's registered mark. The ground of opposition based on Section 12(1)(d) of the Act is therefore successful and the remaining grounds need not be considered.
In view of the above, I refuse the applicant's application.
DATED AT HULL, QUEBEC, THIS 31st DAY OF MARCH, 1995.
David J. Martin,
Member,
Trade Marks Opposition Board.