IN THE MATTER OF OPPOSITIONS by Canadian Olympic Association to application No. 678,637 for the trade-mark OLYMEL filed by COOPÉRATIVE FÉDÉRÉE DE QUÉBEC, and presently standing in the name of OLYMEL, SOCIÉTÉ EN COMMANDITE; and to application No. 711,842 for the trade-mark OLYMEL & Design filed by OLYMEL, SOCIÉTÉ EN COMMANDITE
On March 27, 1991, the applicant, COOPÉRATIVE FÉDÉRÉE DE QUÉBEC, filed an application to register the trade-mark OLYMEL based upon proposed use of the trade-mark in Canada in association with “viande et produits dérivés de viande” and in association with the following services: “commerce d’achat, d’abattage, de transformation de viande et la commercialisation d’animaux vivants, de viande et de produits dérivés notamment de porc et de boeuf; commerce de charcuterie; et commerce d’encan d’animaux”. The applicant amended its application at the examination stage to cover the following wares: “Viande, viande transformée, viande préparée, produits de viande transformée, sous‑produits de viande et sous‑produits de viande transformée” as well as the following services: “L’exploitation d'une entreprise traitant du commerce d'achat de viande, de la commercialisation d'animaux vivants, de viande et de produits dérivés; du commerce de charcuterie et du commerce d'encan d'animaux”. The application was subsequently assigned to OLYMEL, SOCIÉTÉ EN COMMANDITE, the present applicant of record.
On August 27, 1992, OLYMEL, SOCIÉTÉ EN COMMANDITE filed an application to register the trade-mark OLYMEL & Design, a representation of which appears below, based upon use of the trade-mark in Canada since April 6, 1992 in association with the following wares: “Viande, viande transformée, viande préparée, produits de viande transformée, sous‑produits de viande et sous‑produits de viande transformée”, as well as being based upon use of the trade-mark in Canada since February 17, 1992 in association with the following services: “L’exploitation d'une entreprise traitant du commerce d'achat de viande, de la commercialisation d'animaux vivants, de viande et de produits dérivés; du commerce de charcuterie et du commerce d'encan d'animaux”.
Application No. 711,842
The opponent, Canadian Olympic Association, filed a statement of opposition to registration of the trade-mark OLYMEL, application No. 678,637, on October 16, 1992 and a statement of opposition to registration of the trade-mark OLYMEL & Design, application No. 711,842, on November 8, 1993. The opponent filed as its evidence the affidavit of John Allport in both oppositions while the applicant submitted the affidavits of Serge Bergeron, Michael Godwin and David Lech in the OLYMEL opposition and the affidavits of Serge Bergeron, David Lech, Larry Burden, Roland Soucy and two affidavits of Michael Godwin, dated April 18, 1994 and April 11, 1995, in the OLYMEL & Design opposition. John Allport, Serge Bergeron and David Lech were cross-examined on their affidavits filed in both proceedings and Michael Godwin was only cross-examined on his two affidavits submitted in the OLYMEL & Design opposition. The transcripts of the cross-examinations and the exhibit to the Allport cross-examination form part of the records of both oppositions. The opponent was also granted an order to cross-examine Larry Burden on his affidavit filed in the OLYMEL & Design opposition but subsequently elected not to proceed with that cross-examination.
The applicant alone filed a written argument in both oppositions although both parties were represented at an oral hearing which applied to both cases.
As the first ground in both oppositions, the opponent alleged that the applicant’s applications do not comply with Section 30(i) of the Trade-marks Act in that, at the time of filing its applications, the applicant was aware of the opponent’s marks and therefore could not have been satisfied that it was entitled to use its trade-marks OLYMEL and OLYMEL & Design in Canada in association with the wares and services covered in application Nos. 678,637 and 711,842. Although the onus or legal burden is on the applicant to show that its applications comply with the provisions of Section 30 of the Trade- marks Act, there is an evidentiary burden on the opponent to prove the allegations of fact being relied upon by it in support of the Section 30(i) grounds [see Joseph Seagram & Sons v. Seagram Real Estate, 3 C.P.R.(3d) 325 at pp. 329-330; and John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R.(3d) 293 (F.C.T.D.)]. In other words, the opponent must make out a ‘prima facie’ case that the applicant has not complied with the provisions of Section 30(i) of the Act.
As the applicant has formally complied with the provisions of Section 30(i) of the Trade-marks Act by including the required statements in its applications, the issue arises as to whether or not the applicant has substantively complied with that section, that is, were the statements true when the applications were filed? Even had the applicant been aware of the opponent’s marks and name prior to filing the present applications, such a fact is not inconsistent with the statement in the applications that the applicant was satisfied that it was entitled to use the trade-marks OLYMEL and OLYMEL & Design in Canada on the basis inter alia that its trade-marks do not so nearly resemble as to be likely to be mistaken for the opponent’s marks and are not confusing with the opponent’s trade-name. Thus, the success of this ground is contingent upon a finding that the trade-marks at issue are confusing with the opponent’s trade-name or so nearly resemble as to be likely to be mistaken for the opponent’s official marks. I will therefore consider the remaining grounds of opposition.
With respect to its opposition to registration of the trade-mark OLYMEL & Design, the opponent alleged that the applicant’s trade-mark was not in use by the applicant as of the claimed dates of first use of April 6, 1992 in relation to wares and February 17, 1992 in respect of the services covered in the application. As no evidence has been furnished by the opponent in respect of this ground, the opponent has failed to meet its evidentiary burden upon it. I have therefore dismissed this ground of opposition.
The next ground in each opposition is based on Section 16 of the Trade-marks Act, the opponent alleging that the applicant is not the person entitled to registration of the trade-marks OLYMEL and OLYMEL & Design in that the applicant’s trade-marks are confusing with its trade-name Canadian Olympic Association which had previously been used in Canada. As the opponent has not adduced any evidence relating to its use of its trade-name, the opponent has failed to establish its prior use of its trade-name and has therefore not met the burden upon it under Sections 16(5) and 17(1) of the Trade-marks Act in respect of the Section 16 ground. Consequently, these grounds of opposition are unsuccessful.
The opponent next alleged that the applicant's trade-marks are not registrable in view of the provisions of Sections 9, 11 and 12(1)(e) of the Trade-marks Act in that the opponent had public notice given in the Trade-marks Journal of January 29, 1975 for the following official marks pursuant to Section 9(1)(n)(iii) of the Act:
Canadian Olympic Association Olympique Canadienne & Design
Canadian Olympic Association
Association Olympique Canadienne
and had public notice given in the Trade-marks Journal of March 5, 1980 for the following official
marks:
Olympic Games
Olympiad
Olympian
Olympic
Olympique
Summer Olympics
Canada’s Olympic Teams
Winter Olympics
Winter Olympic Games
and also had public notice given in the Trade-marks Journals of May 9, 1984 and June 11, 1986, respectively, for the following official marks:
Olympia
Olympus
Section 9(1)(n)(iii) of the Trade-marks Act provides, in part, that no person shall adopt in connection with a business, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, any mark adopted and used by any public authority in Canada as an official mark in respect of which the Registrar has given public notice of its adoption and use. The material time for considering the Section 9(1)(n)(iii) grounds of opposition would appear to be the date of my decision [see Allied Corporation v. Canadian Olympic Association, 28 C.P.R.(3d) 161 (F.C.A.); affg. 16 C.P.R.(3d) 80 (F.C.T.D.); revg. 6 C.P.R.(3d) 500 (T.M.O.B.); and Olympus Optical Company Limited v. Canadian Olympic Association, 38 C.P.R.(3d) 1 (F.C.A.); affg. 31 C.P.R.(3d) 479; revg. 16 C.P.R.(3d) 455 (T.M.O.B.)]. While the legal burden is on the applicant to show that its marks are not prohibited marks, to the extent that the facts alleged by the opponent are not self-evident or admitted, there is in accordance with the usual rules of evidence an evidentiary burden on the opponent to support the facts alleged [see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330]. The opponent is not required to evidence use and adoption of each official mark relied on [see page 166 of the Federal Court of Appeal's reasons in the Allied case, referred to above]. Finally, the test to be applied is one of straight comparison of the marks in question apart from any marketplace considerations such as the wares, services or trades involved [see page 166 of the Allied Corporation decision; and page 65 of the Trial Division's decision in Canadian Olympic Association v. Konica Canada Inc., 39 C.P.R.(3d) 400 (F.C.A.); revg. on other grounds 30 C.P.R.(3d) 60 (F.C.T.D.)]. As stated in Section 9(1)(n)(iii) of the Trade-mark Act, that test is whether or not the applicant's mark consists of, or so nearly resembles as to be likely to be mistaken for, the official mark. In other words, is the applicant's mark identical to, or almost the same as, the official mark? [see Ontario Federation of Anglers and Hunters v. Murphy, 34 C.P.R.(3d) 496 (T.M.O.B.)].
The applicant’s trade-marks OLYMEL and OLYMEL & Design certainly are not identical to any of the opponent’s official marks identified above. Moreover, from a visual comparison of the applicant’s trade-marks OLYMEL and OLYMEL & Design and the opponent’s Section 9(1)(n)(iii) marks, I do not consider the applicant’s trade-marks to be almost the same as any of the opponent’s official marks. However, the test for resemblance under Section 9(1) is not restricted to a visual comparison of the marks but rather includes all three aspects of resemblance referred to in Section 6(5)(e) of the Trade-marks Act [see WWF-World Wide Fund for Nature v. 676166 Ontario Ltd., 44 C.P.R.(3d) 563, at p. 567]. Thus, I consider there to be no similarity in sounding or in the ideas suggested between the applicant’s trade-marks and any of the opponent’s official marks identified above.
The opponent’s agent submitted at the oral hearing that the state of the register evidence adduced by way of the Godwin affidavits was of no relevance to the Section 9(1)(n)(iii) grounds of opposition. While I had my doubts as to the relevance of state of the register evidence to a Section 9(1)(n)(iii) ground of opposition [see Canadian Olympic Association v. IMI Norgren Enots Ltd., 23 C.P.R. (3d) 389] prior to the decision of the Federal Court, Trial Division in Canadian Olympic Association v. Health Care Employees Union of Alberta and The Registrar of Trade-marks, 46 C.P.R. (3d) 12 (F.C.T.D.), it may well be that such evidence is of relevance in so far as it negates any proprietorial significance of the common feature of the official marks relied upon by an opponent. In this regard, the results of the Godwin search point to the existence of over eighty registered trade-marks or official marks incorporating the four letters or word OLYM, many of which are quite similar to a number of the opponent's official marks being relied upon in these oppositions. As a result, the state of the register evidence supports the conclusion that little weight can be accorded the opponent’s official marks were the same to be considered to constitute a family or series of such marks.
I would note that the opponent has not specifically asserted that it is relying upon a family or series of official marks. Nevertheless, I am of the view that I must consider this issue in view of the number of official marks comprising the OLYMP component being relied upon by the opponent. Having regard to the Health Care Employees Union decision, referred to above, I am obliged to consider that a public authority can rely upon a series or family of official marks and that the public authority need not evidence use of its Section 9 marks in order to establish the existence of the family of official marks. While I disagree with the decision reached in the Health Care Employees Union case, I cannot conclude that the learned trial judge went so wrong as to preclude my ignoring this decision [see Canadian Olympic Association v. Express services, Inc., 51 C.P.R. (3d) 102]. In the present case, the common characteristic of the opponent's official marks are the initial letters OLYMP and I have concluded that the opponent has submitted evidence relating to the existence of an alleged family of marks comprising these letters. However, as noted above, the state of the register evidence submitted by the opponent significantly reduces any significance which might be accorded such a family of marks.
In view of the above, I have concluded that one would not be likely to mistake the applicant’s trade-marks OLYMEL and OLYMEL & Design for any of the opponent’s official marks identified above. Consequently, the applicant has met the legal burden upon it in respect of the Sections 12(1)(e) and 9(1)(n)(iii) grounds of opposition in both proceedings and I have therefore dismissed these grounds.
The final ground of opposition in each opposition relates to the alleged non-distinctiveness of the applicant’s trade-marks. In each case, the opponent has relied upon its official marks identified above in asserting that the applicant’s trade-marks are not adapted to distinguish the applicant’s wares and services from the wares and services of others and more particularly the wares and services of the opponent’s official marks. However, having rejected the grounds of opposition based on Section 9(1)(n)(iii), I have likewise dismissed the non-distinctiveness grounds of opposition.
Having been delegated by the Registrar of Trade-marks pursuant to Section 63(3) of the Trade-marks Act, I reject the opponent’s oppositions to application Nos. 678,637 and 711,842 pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 21st DAY OF MAY, 1997.
G.W. Partington,
Chairman,
Trade Marks Opposition Board.