IN THE MATTER OF AN OPPOSITION by Ocean Fisheries Limited to application No. 605,748 for the trade-mark OCEAN CLUB filed by Eurotrade Import-Export Inc.
On April 26, 1988, the applicant, Eurotrade Import-Export Inc., filed an application to register the trade-mark OCEAN CLUB based upon proposed use of the trade-mark in Canada in association with "fish, namely smoked fish and canned fish".
The opponent, Ocean Fisheries Limited, filed a statement of opposition on November 2, 1988 in which it alleged that the applicant's trade-mark is not registrable and not distinctive, and that the applicant is not the person entitled to its registration, in view of the registration and prior user by the opponent of its registered trade-marks: OCEAN BRAND, registration No. 285,905; OCEAN'S & Design, registration No. 298,015; OCEAN'S & Design, registration No. 309,431; OCEAN'S & Design, registration No. 331,646 and OCEAN'S ROYALE, registration No. 341,551.
The applicant served and filed a counterstatement in which it denied the allegations of confusion set forth in the statement of opposition.
The opponent filed as its evidence the affidavit of Edward Anthony Safarik while the applicant filed as its evidence the affidavit of Eko Altic. As evidence in reply, the opponent submitted the affidavit of Elizabeth Enid Waite. The Waite affidavit purports to introduce into evidence copies of the opponent's registrations and, not being strictly confined to matter in reply, is not admissible as reply evidence in this opposition. In any event, the Board can have regard to the opponent's registrations relied upon in the statement of opposition without copies thereof being introduced into evidence.
Both parties submitted written arguments and both were represented at an oral hearing.
With respect to the grounds of opposition based on Section 12(1)(d) of the Trade-marks Act, the material date would appear to be as of the date of my decision in view of the recent decision of the Federal Court of Appeal in Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, (1991), 37 C.P.R. (3d) 413 and the recent decision of the Opposition Board in Conde Nast Publications, Inc. v. The Canadian Federation of Independent Grocers, (1991), 37 C.P.R. (3d) 538. Further, the material date in respect of the non-entitlement ground of opposition is as of the applicant's filing date of April 26, 1988.
In determining whether there would be a reasonable likelihood of confusion between the trade-marks at issue, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in Section 6(5) of the Trade-marks Act. Further, the Registrar must bear in mind that the legal burden is on the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks at issue.
With respect to the inherent distinctiveness of the trade-marks at issue, the opponent's trade-mark OCEAN'S & Design (registration Nos. 298,015 and 309,431) possesses little inherent distinctiveness in that it is suggestive of the source of the wares associated with the trade-mark and the design features add little inherent distinctiveness to the trade-mark. Likewise, the opponent's registered trade-mark OCEAN BRAND possesses little inherent distinctiveness in that the element OCEAN is suggestive of the source of the wares and the word BRAND is non-distinctive. The opponent's trade-mark OCEAN'S ROYALE possesses some measure of inherent distinctiveness in that the word ROYALE, while being somewhat laudatory, does add some inherent distinctiveness to the mark. The opponent's registered trade-mark OCEAN'S & Design, registration No. 331,646, is inherently distinctive as applied to the wares covered in the registration, namely, hats, t-shirts, sweat bands, socks, sweat shirts, pens and umbrellas. The applicant's trade-mark OCEAN CLUB possesses some measure of inherent distinctiveness when considered in its entirety in that the word CLUB has no apparent significance in relation to fish.
In first affidavit, Mr. Safarik states that the opponent has sold its salmon, tuna and other fish products in Canada in association with its trade-marks OCEAN'S & Design and OCEAN BRAND. However, there is no evidence showing the manner of use of the trade-mark OCEAN BRAND in association with any of the opponent's wares and the opponent's promotional literature annexed to the Safarik affidavit fails to make any reference to the OCEAN BRAND trade-mark. Further, Mr. Safarik makes no reference in his affidavit to the trade-mark OCEAN'S ROYALE being in use in Canada although the mark does at least appear in Exhibit "C" to his affidavit. As well, there is no evidence that the opponent's trade-mark OCEAN'S & Design has become known in Canada in association with any of the wares covered by registration No. 331,646. As a result, I have concluded that the vast majority of the opponent's $34,000,000 in sales in Canada of its seafood products from 1984 to 1987 are in association with its trade-mark OCEAN'S & Design and that this trade-mark has become relatively well known in Canada in association with canned salmon and tuna. Additionally, Mr. Safarik has noted that the estimated annual sales for 1988 of his company's products will exceed $20,000,000.
The applicant has not filed any evidence relating to sales or advertising of OCEAN CLUB fish in Canada even though Mr. Altic has annexed as exhibit F to his affidavit a sample of the applicant's product showing the manner of use of the trade-mark OCEAN CLUB. As a result, I have concluded that the applicant's trade-mark has not become known to any extent in this country. As well, the length of time that the trade-marks have been in use favours the opponent.
With the exception of the wares covered by registration No. 331,646, the wares and channels of trade of the parties are clearly overlapping. On the other hand, the clothing, pens and umbrellas covered by registration No. 331,646 bear no similarity whatsoever to the smoked fish and canned fish covered in the applicant's application.
As for the degree of resemblance between the trade-marks at issue, the applicant's trade-mark OCEAN CLUB and the opponent's trade-marks OCEAN BRAND, OCEAN'S & Design and OCEAN'S ROYALE are similar in appearance, sounding, and in the ideas suggested by them when considered in their entireties as a matter of immediate impression and imperfect recollection.
As a further surrounding circumstance, the applicant has relied upon evidence of trade-marks registered with the Trade-marks Office and annexed as exhibits to the Altic affidavit. In paragraphs 3 to 5 of his affidavit, Mr. Altic states:
3. Also at about this time, that is to say the beginning of 1988, Eurotrade Import Export Inc. decided to commence importing sea food products, and selected the trade mark OCEAN CLUB. Our trade mark counsel, Mr. George Rolston, made a search in respect of the trade mark OCEAN CLUB. A computer search was made and a copy of the computer printout is now shown to me marked Exhibit A. This is a true copy of the actual computer printout which was supplied to Eurotrade Import Export Inc. by Mr. Rolston. In view of the large number of trade names and trade marks which appear to incorporate the word OCEAN, for various products, a lot of which are either fish or seafood products, we came to the conclusion that there was no problem with the adoption of the trade mark OCEAN CLUB by Eurotrade Import Export Inc. for fish and seafood products.
4. An application was filed. No objection was made by the Trade Marks Officer (sic.) Examiner in charge of the application, and I was most surprised to hear that there was an objection made on behalf of Ocean Fisheries Ltd.
5. That since that time, I have caused various searches to be made.
A manual search of the trade Marks Register was made by Mr. Rolston's agents. A copy of that manual Trade Mark Search Report is now shown to me marked Exhibit B.
Now shown to me marked Exhibit C are copies of certain Trade Mark Registrations supplied to Mr. Rolston by the Trade Marks Office in September 1989. ...
Exhibit A to the Altic affidavit is identified as a copy of a computer printout of a search made by counsel for the applicant. While this exhibit is evidence that the computer printout was supplied to the applicant by its counsel, it is hearsay evidence with respect to Mr. Altic. Accordingly, little if any weight can be attributed to it in this opposition. Likewise, Exhibit B to Mr. Altic's affidavit, identified as a copy of a manual trade-mark search of the Trade-marks Register which was caused to be made by the affiant is evidence that such a search was made by (unidentified) agents acting on behalf of the trade-mark agent for the applicant. Otherwise, the contents of the search are hearsay evidence with respect to Mr. Altic.
Exhibit C is identified by Mr. Altic as being "copies of certain Trade Mark Registrations supplied to Mr. Rolston by the Trade Marks Office in September 1989". While the copies were not prepared by the affiant and are not certified copies which would be admissible evidence as to their contents pursuant to Section 54 of the Trade-marks Act, the photocopies do appear to be copies of registrations of trade-marks on the register with the Trade-marks Act. I am therefore prepared to accord at least some weight to them as evidence in this opposition. The copies reveal the existence of the following registered trade-marks:
Trade-mark Regn. No. Relevant Wares
OCEANS & Design 302,730 cooked, dried and salt fish
OCEAN-SELECT & Design 293,076 fresh, frozen, salted, smoked and canned fish, and fish products
FIVE OCEANS & Design 347,570 fish and seafood products
OCEAN STAR 305,287 fish and crustaceans
OCEAN SNACKS 171,212 fish products consisting of fish, breading and seasonings
TURKEY OF THE OCEAN 277,944 fish and chips
OCEAN DELIGHT 132,978 clams, oysters, tuna, salmon, scallops, crabs, lobsters and other shellfish
OCEAN-ELITE & Design 293,229 fresh, frozen, and processed fish and crustacean products
OCEAN GARDEN 107,143 fish and crustaceans
OCEAN CROWN 307,381 fresh, frozen and salted fish
OCEAN GEM 288,329 canned seafood, namely, crustaceans and fish
OCEAN HARVEST 265,179 processed seafoods
OCEAN MAID 154,050 frozen fish, fresh fish,...
OCEAN PRIDE 112,472 fresh fish, frozen fish,...
2-OCEANS 252,719 fruits de mer, nommément, poissons,...
BLUE OCEAN 239,116 canned fish
OCEAN BOUNTY 246,938 fresh fish,...
TRADE OCEAN BRAND 315,151 frozen and canned fish and & Design shellfish,...
The above points to the possible existence of 18 registrations, 13 of which begin with the word OCEAN, standing in the name of 17 different trade-mark owners, the registrations covering a variety of seafood products. In Ocean Fisheries Ltd. v. A. Raptis & Sons, 35 C.P.R. (3d) 473, the Board Member considered evidence relating to the state of the register in respect of an opposition by the present opponent to registration of the trade-mark OCEAN PEARL as applied to fish and fish products. At page 476 of the decision, the Board Member commented as follows:
In the present case, and bearing in mind that diminished weight must be accorded to Exhibit C to the Altic affidavit for the reasons noted above, Exhibit C nevertheless constitutes at least some evidence that some of the registered trade-marks noted above are in use and that the average consumer would be accustomed to seeing OCEAN-prefixed trade-marks applied to seafood products in the marketplace.
Mr. Altic states that he arranged for correspondence to be sent to trade-mark owners of certain of the registrations identified in Exhibit C with the view to obtaining possible evidence of use of the trade-marks. However, Mr. Altic does not indicate who he made the arrangements with or who ultimately sent the correspondence although presumably such person (or persons) were acting under Mr. Altic's instructions. Mr. Altic further notes that replies were received from four companies which he has identified in his affidavit, the companies enclosing copies of their packaging which, as asserted by Mr. Altic, incorporate the word OCEAN. Mr. Altic also points out that the names of individuals have been blanked from the correspondence "to preserve confidentiality". However, there is no evidence that any of the labels, copies of which comprise Exhibit D, are in use in the marketplace in Canada. Given that there is no indication as to who sent the correspondence to the various companies and under what instructions, and considering further that the responses received from the companies are hearsay evidence with respect to Mr. Altic, little weight can be accorded this evidence.
As yet a further surrounding circumstance, the applicant adduced some evidence of use in the marketplace of the trade-marks BLUE OCEAN and OCEAN GARDEN as applied to seafood products as a result of searches conducted personally by Mr. Altic. This evidence establishes that at least two seafood products are being offered for sale in the marketplace in association with trade-marks including the word OCEAN. However, this evidence does not indicate the extent to which these products have become known to the average consumer in Canada. The affiant also adduced evidence of the existence of OCEAN SPRAY cranberry sauce which is of no relevance to the issue of confusion between the trade-marks of the parties. Further, I am mindful of the fact that the evidence of use in the marketplace is dated subsequent to the applicant's filing date and therefore is of limited value when considering the non-entitlement ground of opposition.
Having regard to the above and, in particular, to the inherent weakness of the word OCEAN as an element of a trade-mark applied to seafood products, as well as combined effect of the applicant's evidence of the relatively common adoption of the word OCEAN as an initial component of a trade-mark as applied to fish and other seafood products, I have concluded that the applicant has met the legal burden upon it of establishing that there would be no reasonable likelihood of confusion between the applicant's trade-mark OCEAN CLUB and the opponent's trade-marks OCEAN BRAND, OCEAN'S ROYALE and OCEAN'S & Design. Accordingly, the applicant's trade-mark OCEAN CLUB is registrable and distinctive, and the applicant is the person entitled to its registration.
I reject the opponent's opposition pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 30th DAY OF APRIL 1992.
G.W. Partington,
Chairman,
Trade marks Opposition Board.