Editor’s Note: Corrigendum released on May 12, 2015. Original decision has been corrected with text of corrigendum appended.
LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2015 TMOB 20
Date of Decision: 2015-01-30
IN THE MATTER OF AN OPPOSITION by Honda Motor Co., Ltd. to application No. 1,514,876 for the trade-mark CROSS COUNTRY TOUR in the name of Polaris Industries Inc.
[1] On February 11, 2011, Polaris Industries Inc. (the Applicant) filed application no. 1,514,876 (the application) to register the trade-mark CROSS COUNTRY TOUR (the Mark). The application is based upon proposed use in Canada in association with “motorcycles and structural parts therefor” and it claims a February 10, 2011 priority filing date based upon United States of America application No. 85239258.
[2] Honda Motor Co., Ltd. (the Opponent) is the owner of Canadian trade-mark application No. 1,425,380 for the trade-mark Crosstour, which was filed on January 22, 2009 based upon proposed use in Canada in association with an assortment of “air vehicles”, “water vehicles” and “land vehicles”, including “motorcycles”.
[3] The Opponent has opposed the application for the Mark under section 38 of the Trade-marks Act, RSC 1985, c T‑13 (the Act), based upon the grounds that: (i) the application does not conform to the requirements of sections 30(e) and 30(i) of the Act; (ii) the Applicant is not the person entitled to registration of the Mark under section 16(3)(a) of the Act in view of the Opponent’s prior use of its trade-mark Crosstour, since at least December of 2009; (iii) the Applicant is not the person entitled to registration of the Mark under section 16(3)(b) of the Act in view of the Opponent’s previously filed application for its trade-mark Crosstour; and iv) the Mark is not distinctive within the meaning of section 2 of the Act.
[4] A counterstatement was filed by the Applicant on March 13, 2012.
[5] In support of its opposition, the Opponent filed the affidavit of Mr. Jerry Chenkin, sworn July 30, 2012 (the Chenkin affidavit). Mr. Chenkin was cross-examined on his affidavit and the transcript of the cross-examination has been made of record.
[6] As its evidence, the Applicant filed the affidavit of Karen Thompson, sworn August 1, 2013 (the Thompson affidavit) and the affidavit of Rachael Belanger, sworn August 12, 2013 (the Belanger affidavit). Ms. Thompson and Ms. Belanger were not cross-examined. The Applicant also filed a certified copy of the file history for the application for the Mark.
[7] Only the Applicant filed a written argument.
[8] An oral hearing was held and attended by both parties.
Onus
[9] 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 Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298].
Grounds of Opposition Summarily Dismissed
Non-compliance - Sections 30(e) and 30(i)
[10] Since the application contains a statement that the Applicant by itself and/or through a licensee intends to use the Mark in Canada and since it also contains a statement that the Applicant is satisfied that it is entitled to use the Mark, it formally complies with sections 30(e) and 30(i) of the Act. The Opponent did not file any evidence to establish that the Applicant falsely made its section 30(e) statement and it has been held that where an applicant has provided the statement required by section 30(i), a ground of opposition based upon this section should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant [see Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155]. The Applicant has not demonstrated that this is an exceptional case. Accordingly, both of these grounds of opposition are dismissed.
Analysis of Remaining Grounds of Opposition
Non-entitlement – Section 16(3)(a)
[11] The Opponent has pleaded that the Applicant is not the person entitled to registration of the Mark under section 16(3)(a) of the Act in view of the Opponent’s prior use of its trade-mark Crosstour in Canada, since at least as early as December of 2009, in association with “automobiles”.
[12] Despite the burden of proof on the Applicant to establish, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and the Opponent’s trade-mark, the Opponent has an initial onus to prove that its trade-mark was in use prior to the February 10, 2011 priority filing date of the application for the Mark and had not been abandoned as of the September 7, 2011 date of advertisement for the Mark [section 16(5) of the Act].
[13] The word "use" is a legal term which is specifically defined in section 4 of the Act and one must look at the evidence filed in order to determine if in fact there has been use of a trade-mark in association with goods within the meaning of section 4.
[14] In its written argument and at the hearing, the Applicant submitted that the Opponent has not shown any “use” of its trade-mark prior to the February 10, 2011 priority filing date of the application for the Mark.
[15] The Chenkin affidavit provides us with information regarding the Opponent, its business and its trade-mark. Mr. Chenkin is the Executive Vice President of Honda Canada Inc., which is described as being an “affiliate” of the Opponent [Chenkin affidavit, para 1]. Mr. Chenkin states that Honda Canada Inc. supports a network of 232 Honda and 50 Acura authorized automotive dealers in Canada and that there are also over 600 dealers of Honda motorcycle and power equipment products in Canada [Chenkin affidavit, para 5]. According to Mr. Chenkin, Honda Canada Inc. is licensed by the Opponent to use its Crosstour trade-mark in Canada for all of the goods which are covered by the Opponent’s application for its trade-mark (application No. 1,425,380) and under this license, Honda Canada Inc. has sold “automobiles” bearing the Opponent’s trade-mark Crosstour in Canada since at least as early as December of 2009 and continuously to date [Chenkin affidavit, para 5].
[16] In paragraph 6 of his affidavit, Mr. Chenkin states that the Opponent’s products bear the Crosstour trade-mark. In paragraph 7 of his affidavit, Mr. Chenkin provides figures pertaining to the volume and value of the products identified by the Crosstour trade-mark which have been sold in Canada from November of 2009 until the time Mr. Chenkin swore his affidavit in July of 2012. In 2010, the Opponent sold 2175 units, which amounted to $81,451,500 in sales. For the year of 2012, up until the time that Mr. Chenkin sowre his affidavit, 437 units had been sold in Canada, which amounted to $16,540,080 in sales.
[17] Attached as Exhibit “C” to Mr. Chenkin’s affidavit are representative invoices which Mr. Chenkin states feature various Crosstour model codes. Mr. Chenkin states that the invoices pertain to sales of automobiles in Canada from 2009 to present. The trade-mark Crosstour is not shown on any of the invoices.
[18] In paragraph 9, Mr. Chenkin states that the trade-mark Crosstour appears directly on each automobile exterior and on floor mats. He also states that sales of each automobile are typically accompanied by written materials which feature the trade-mark. Attached as Exhibit “D” is a photograph of what Mr. Chenkin describes as being a 2012 model Crosstour automobile which he states demonstrates the manner in which the trade-mark appears directly on the goods.
[19] Attached as Exhibit “E” are copies of an Owner’s Manual and a Navigation System Manual which Mr. Chenkin states are for the 2012 Crosstour automobile sold in Canada and demonstrate some of the ways in which the trade-mark is used [Chenkin affidavit, para 9]. CROSSTOUR appears on these 2012 materials. Exhibit “F” consists of samples of product brochures which are made available to Canadian consumers in the various automobile dealerships which are authorized to sell Crosstour branded automobiles in Canada. These materials also appear to be from 2012.
[20] Although Mr. Chenkin has not mentioned it in his affidavit, Exhibit “E” also includes Owner’s Manuals for 2010 and 2011 and these materials do not show CROSSTOUR, per se. Rather, they show ACCORD CROSSTOUR or Accord Crosstour.
[21] During cross-examination, Mr. Chenkin admitted that when initially launched in 2009, the Crosstour vehicles were marketed as the ACCORD CROSSTOUR [Chenkin transcript, Q’s 177-181]. He was unable to recall when the ACCORD part was dropped. The fact that the Exhibit “E” materials dated 2012 feature CROSSTOUR, while the materials dated 2010 and 2011 feature ACCORD CROSSTOUR suggests that the ACCORD part may have been dropped sometime in 2012.
[22] During the hearing, the Opponent suggested that I could infer from statements made in Mr. Chenkin’s affidavit that CROSSTOUR was used on its own (i.e. without ACCORD) in years prior to 2012, in addition to in 2012. In particular, the Opponent referred me to paragraphs 5 and 9 of the Chenkin affidavit, where Mr. Chenkin stated that the trade-mark Crosstour had been in use since at least as early as December of 2009 and continuously to date (para 5) and that it appears directly on each automobile’s exterior and floor mats (para 9). The Opponent suggested that if the Applicant wanted to see examples of use of CROSSTOUR on its own pre-dating 2012, it could have asked Mr. Chenkin to provide such examples by way of an undertaking during cross-examination. The Opponent also submitted that both ACCORD and CROSSTOUR are trade-marks and that there is nothing to prevent two trade-marks from being used together. The Opponent cited some case law in support of its submissions at the hearing [A.W. Allen Ltd v Canada (Registrar of Trade-marks) (1985), 6 CPR (3d) 270 (FCTD); Aurora Limited v Acuity Brands, Inc (2009) 78 CPR (4th) 139 (TMOB)].
[23] At the outset, I wish to note that I do not consider the use of ACCORD CROSSTOUR to constitute use of the Opponent’s trade-mark Crosstour [Nightingale Interloc Ltd v Prodesign Ltd (1984), 2 CPR (3d) 535 (TMOB) and Canada (Registrar of Trade Marks) v Cie internationale pour l'informatique CII Honeywell Bull, SA (1985), 4 CPR (3d) 523 (FCA)]. Moreover, I am not persuaded by the Opponent’s submission that use of ACCORD CROSSTOUR constitutes use of two separate trade-marks, namely, ACCORD and Crosstour. Mr. Chenkin stated during cross-examination that they are separate trade-marks. However, he also made it quite clear that he does not have any trade-mark expertise and there is no evidence to suggest that consumers would recognize the words ACCORD CROSSTOUR as they appear in the Exhibit “E” materials as being anything other than a single trade-mark [Chenkin transcript, Q’s 229-232]. In the materials which are included as part of Exhibit “E”, the words ACCORD and CROSSTOUR or Accord and Crosstour appear side by side and they are in exactly the same font size and style. There is nothing to set them apart from one another or distinguish them as being separate trade-marks.
[24] This leaves us with the question of whether I am prepared to draw an inference of use of Crosstour per se prior to the material date based upon the statements which have been made in paragraphs 5 and 9 of Mr. Chenkin’s affidavit. I am not.
[25] The Opponent`s section 16(3)(a) ground of opposition is based upon an assertion of prior rights and to succeed under this ground of opposition, the Opponent must establish the existence of those rights. Specifically, the Opponent has an initial onus upon it to evidence “use” of its trade-mark prior to the priority filing date of the application for the Mark. As previously discussed, whether there has been “use” within the meaning of section 4 of the Act is a legal determination which must be made based upon an assessment of the evidence.
[26] While Mr. Chenkin states that the Opponent’s Crosstour trade-mark has been in use since prior to the material date, the exhibits which were attached to his affidavit and the statements which he made during cross-examination suggest otherwise. In particular, the 2010 and 2011 materials which are attached as Exhibit “E” to Mr. Chenkin’s affidavit show ACCORD CROSSTOUR or Accord Crosstour and Mr. Chenkin admitted during cross-examination that its cars were initially launched as the “Accord Crosstour”. Although he didn’t say when, he also admitted that the ACCORD part was later dropped. In light of these circumstances, I do not find it reasonable to infer that use of Crosstour per se was made prior to the February 10, 2011 material date based upon the statements which were made in paragraphs 5 and 9 of Mr. Chenkin’s affidavit.
[27] With respect to the Opponent’s contention that the Applicant could have asked Mr. Chenkin during cross-examination for an undertaking to provide examples showing the Opponent’s use of Crosstour on its own prior to the material date if it wished to see them, I note that it is up to the Opponent to meet its initial evidential burden and the Applicant is under no obligation to assist it with doing so.
[28] At the hearing and in its written argument, the Applicant also called into question whether the Opponent had properly licensed Honda Canada Inc. to use its Crosstour trade-mark such that any use by Honda Canada Inc. would enure to the benefit of the Opponent. In light of my above findings regarding use, I do not consider it necessary to address this issue.
[29] As I am unable to conclude that the Opponent has shown use of its trade-mark prior to the material date, I therefore conclude that the Opponent has not discharged its initial evidential burden in support of its section 16(3)(a) ground of opposition.
[30] Accordingly, the section 16(3)(a) ground of opposition is unsuccessful.
Non-entitlement – Section 16(3)(b)
[31] In support of its non-entitlement ground of opposition under section 16(3)(b) of the Act, the Opponent relies on its application no. 1,425,380 for its Crosstour trade-mark, which covers a wide range of vehicles, including “motorcycles”. The application was filed on January 22, 2009.
[32] The material date for assessing this ground of opposition is the priority filing date of the application for the Mark, namely, February 10, 2011.
[33] I have exercised my discretion to check the Trade-marks Office records to confirm the existence of the Opponent’s application [see Royal Appliance Mfg Co v Iona Appliances Inc (1990), 32 CPR (3d) 525 (TMOB) at 529]. I confirm that the Opponent’s application was filed before the Applicant’s application and that it was still pending as of the date of advertisement of the Applicant’s application. The Opponent has therefore met its initial burden in respect of this ground of opposition. Accordingly, the onus shifts to the Applicant to demonstrate that there is no likelihood of confusion between the marks at issue.
[34] 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 goods or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.
[35] In applying the test for confusion, the Registrar must have regard to all of the surrounding circumstances, including those specifically enumerated in s. 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 goods, 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, in general, Mattel, Inc v 3894207 Canada Inc (2006), 49 CPR (4th) 321 (SCC) and Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC).]
Section 6(5)(a) – the inherent distinctiveness of the trade-marks and the extent to which they have become known
[36] The parties’ marks are both comprised of ordinary dictionary terms. In particular, the Opponent’s trade-mark Crosstour is formed of a combination of the words “cross” and “tour” and the Mark is formed of a combination of the words “cross”, “country” and “tour”.
[37] Attached to the Belanger affidavit, are copies of several dictionary definitions for each of these words. I will not reproduce all of them here, but I will note that in The Canadian Oxford Dictionary, “cross” has been defined as “a hybrid” or “a mixture of two things”, “tour” is defined as “a journey from place to place as a holiday”, “an excursion, ramble, or walk” or “an organized and guided trip, excursion or visit” and “cross-country” has been defined as “across field or open country, rather than on roads or tracks” and “across a country” [Belanger affidavit, ExhibitsA-1-A-3, B-1-B-3 and C-1-C-3].
[38] The Applicant submits that the Opponent’s trade-mark Crosstour is suggestive as “cross” is defined as meaning “a hybrid” or a “mixture of two things” and Mr. Chenkin confirmed during cross-examination that the Opponent’s Crosstour is part of a new category of vehicle called a “crossover” vehicle, which he explains is not a car or a truck, but kind of both [Chenkin transcript, Q’s 40 and 49]. I find that the Mark is also suggestive, in that the term “cross country” suggests off-road travel or travel across the country. Moreover, the term “tour” which appears in both marks is suggestive of some sort of journey, trip or excursion.
[39] Accordingly, I do not find either of the parties’ trade-marks to possess a high degree of inherent distinctiveness.
Section 6(5)(b) – the length of time each has been in use
[40] The application for the Mark is based upon proposed use and the Applicant has not filed any evidence of use. Although the Opponent has filed some evidence of use, as discussed previously, it post-dates the material date for assessing this ground of opposition.
Sections 6(5)(c) and (d) – the nature of the goods, services, trade and business
[41] The Opponent’s application and the application for the Mark both cover “motorcycles”. Thus, there is direct overlap in the parties’ goods. In view of this overlap, it is fair to assume that there would also be overlap in the parties’ channels of trade.
Section 6(5)(e) – the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
[42] In most instances, the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested is the dominant factor and other factors play a subservient role in the overall surrounding circumstances [see Beverly Bedding & Upholstery Co v Regal Bedding & Upholstery Ltd (1980), 47 CPR (2) 145, conf. 60 CPR (2d) 70 (FCTD)]. This principle was upheld by the Supreme Court of Canada in Masterpiece and the court further noted that the preferable approach when comparing marks is to begin by determining whether there is an aspect of the trade-marks that is particularly striking or unique [see Masterpiece at para 64].
[43] In the present case, both of the parties’ trade-marks are comprised of ordinary dictionary terms, which are somewhat suggestive in the context of their associated goods. In view of this, I do not find any one aspect of the parties’ trade-marks to be particularly striking or unique.
[44] As noted above in the analysis of the inherent distinctiveness of the trade-marks, the parties’ marks are somewhat different in connotation, with the Opponent’s trade-mark possibly being suggestive of a cross-over type of vehicle and the Mark suggesting a type of vehicle that would be suitable for a tour across the country or on off-road terrain. However, to the extent that both of the parties’ trade-marks contain the words “cross” and “tour”, there is still a fairly high degree of resemblance between them in appearance and sound, particularly because these words appear at the very beginning and at the very end of the marks.
Other surrounding circumstances
State of the Register and State of the Marketplace Evidence
[45] The Applicant introduced evidence of the state of the register in Canada through the Thompson affidavit, which showed that there are 37 applications or registrations on the register for marks containing the component “cross” and 53 applications or registrations on the register for marks containing the component “tour”, all in class 12, which Ms. Thompson states covers “vehicles; apparatus for locomotion by land, air or water” [Thompson affidavit, paras 3-8]. A list of the 37 marks containing “cross” is attached as Exhibit “A” to her affidavit and copies of the particulars for those applications and registrations is attached as Exhibit “B”. A list of the 53 marks containing “tour” is attached as Exhibit “C” to her affidavit and copies of the particulars for those applications and registrations is attached as Exhibit “D”.
[46] Ms. Belanger then conducted internet searches for all of the trade-marks that are listed in Exhibits “A” and “C” to the Thompson affidavit. Ms. Belanger doesn’t provide a lot of detail with respect to how she conducted her searches, but she does state that she “looked for some indication that the website was a Canadian website or had what appeared to be Canadian pricing or Canadian content” and she printed out relevant website pages or “screen captures” [Belanger affidavit, paras 3-5]. She also used the internet archiving website “Wayback Machine” to try to access archived website pages from prior to February 2011 [Belanger affidavit, para 6]. Copies of the web pages and archived web pages as printed or screen captured are attached as Exhibits “E-1” to “E-35” of Ms. Belanger’s affidavit.
[47] The Opponent submits that the contents of the Belanger affidavit constitute hearsay and citing the decision in Cross-Canada Auto Body Supply (Windsor) Ltd v Hyundai Auto Canada (2005) 43 CPR 4th 21, the Opponent also takes issue with the provenance of the affidavit, as Ms. Belanger was a student with the agent for the Applicant at the time that her affidavit was sworn.
[48] These issues aside, I find the state of the register evidence of Ms. Thompson and the state of the marketplace evidence of Ms. Belanger to be of little assistance to the Applicant. A number of the marks which were located relate to goods which, if at all, are only marginally related to “motorcycles” and a number of the marks which were located bear little resemblance to the parties’ trade-marks (for example, BLUE BIRD LTC 40 LUXURY TOURING COACH & DESIGN, TERRA TRAC CROSS-V, AVID TOURING-S & Design, etc.). More importantly, none of the marks (aside from those of the parties) include both the component “cross” and the component “tour” in combination and it is these two components which the parties’ trade-marks have in common.
Conclusion
[49] Having considered all of the surrounding circumstances, I find that the probability of confusion between the parties’ trade-marks is evenly balanced between a finding of confusion and a finding of no confusion.
[50] Neither of the parties’ trade-marks is particularly inherently distinctive and the evidence does not establish that either of the parties’ trade-marks had acquired distinctiveness or been used as of the material date. I have therefore reached my conclusion primarily based upon the degree of resemblance between the marks and the fact that the parties’ goods are identical and would likely travel in the same channels of trade. In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. Despite any differences in connotation between the parties’ trade-marks, there is still a fair degree of resemblance between them. The Opponent’s trade-mark consists of only two words, namely, “cross” and “tour” and both of those words have been incorporated into the Mark in precisely the same positions in which they appear in the Opponent’s trade-mark (i.e. at the beginning and at the end). In view of these similarities, and in view of the fact that the parties’ trade-marks are intended to be used on identical goods, I find that the probability of confusion between the parties’ trade-marks is evenly balanced between a finding of confusion and a finding of no confusion. Having made this finding, I cannot conclude that the Applicant has met its burden in respect of this ground.
[51] Accordingly, the section 16(3)(b) ground of opposition is successful.
Non-distinctiveness – Section 2
[52] The Opponent has pleaded that the Mark is not distinctive in that it does not distinguish and is not adapted to distinguish, the Applicant’s goods from those of the Opponent, in association with which it has used or intends to use its Crosstour trade-mark in Canada.
[53] The material date to assess this ground of opposition is the filing date of the statement of opposition, namely, February 7, 2012 [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC)]. In order to meet its initial evidentiary burden in respect of this ground, the Opponent must establish that its trade-mark had become known sufficiently in Canada as of that date, to negate the distinctiveness of the 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), 48 CPR (4th) 427 (FC)]. In this case, the Opponent has not done so.
[54] As discussed under the section 16(3)(a) ground of opposition, all of the materials showing use of Crosstour, per se were dated 2012. Thus, at best, there is only about a one month period of use which can be considered under this ground of opposition. While Mr. Chenkin has provided information pertaining to the value and volume of sales which took place in 2012, it is not broken down on a month to month basis. I must therefore conclude that the Opponent has failed to meet its initial evidential burden in respect of this ground.
[55] Accordingly, this ground of opposition is unsuccessful.
Disposition
[56] In view of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(8) of the Act.
______________________________
Lisa Reynolds
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2015 TMOB 20
Date of Decision: 2015-05-12
IN THE MATTER OF AN OPPOSITION by Honda Motor Co., Ltd. to application No. 1,514,876 for the trade-mark CROSS COUNTRY TOUR in the name of Polaris Industries Inc.
[1] It has been brought to my attention that in my decision dated January 30, 2015, there is a typographical error in the application number which has been identified in the heading of the decision. More particularly, my decision referenced application No. 1,514,870, instead of application No. 1,514,876. As I meant to identify application No. 1,514,876, I hereby amend the heading of my decision dated January 30, 2015 to refer to application No. 1,514,876, as shown above.
______________________________
Lisa Reynolds
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office