Trademark Opposition Board Decisions

lN THE MATTER OF AN OPPOSITION by Les Editions Gesca Ltée to application no. 850777 for the trade-mark GOLF MAGAZINE filed by Time4 Media, Inc.

-----------------------------------------------------­

On July 14, 1997, Times Mirror Magazines, Inc., the predecessor-in-title to the current

applicant Time4 Media Inc., filed an application to register the trade-mark GOLF MAGAZINE

for a "magazine published monthly." The application is based on (i) use of the mark in Canada

since at least as early as January, 1996, and (ii) use and registration of the mark, on January 24,

1989 under no. 1521775, in the USA.

The Examination Section of the Trade-marks Office raised, at different times, several

objections to the application as filed. Consequently, the applicant amended the application to

identify a predecessor-in-title and to claim the benefit of Section 14 of the Trade-marks Act. The

applicant was also permitted, pursuant to Section 31( c) of the Trade-marks Regulations, to

change the date of first use of the mark in Canada to "since at least as early as 1972." The last

amended application is dated May 30, 2001.

The subject application was advertised for opposition purposes in the Trade-marks

Journal issue dated March 19,2003 and was opposed, on August 14,2003, by Les Editions

Gesca Ltée and 88766 Canada Inc.(the second opponent subsequently withdrew from the

proceedings). The applicant responded by filing and serving a counter statement generally

denying the allegations in the statement of opposition. Neither party submitted evidence and

neither party requested an oral hearing. Only the applicant submitted a written argument.

STATEMENT OF OPPOSITION

Included in the several grounds of opposition pleaded are:

2a                     the applied for mark is not registrable, pursuant to Section 12(1)(b) of the Trade­

marks Act, because the mark GOLF MAGAZINE is clearly descriptive or deceptive1y misdescriptive of the applicant's wares,

2b.1, b.2           the applied for mark is not registrable, pursuant to Section 12(1)(d) of the Act,

because the mark GOLF MAGAZINE is confusing with trade-mark registration nos. 158029 and 516227 for the mark GOLF DIGEST standing in the name of Advance Publishers Inc.

OPPONENT'S BURDEN OF  PROOF

In its written argument the applicant submits that:

Decisions of the Trademarks Opposition Board have made it clear that, in respect of each ground of opposition relied upon in an opposition proceeding~ an opponent faces an initial evidential burden requiring it to adduce admissible evidence from which it might reasonably be concluded that the facts alleged to support the ground of opposition exist: Joseph E. Seagram & Sons Ltd. v. Seagram Real Estate Ltd. (1984), 3'C.P.R. (3d) 325 (T.M.O.B.) at 329 (“Seagram1"); Joseph E. Seagram & Sons v. Ridout Wines Ltd. (1992), 47 C.P.R. (3d) 279 (T.M.O.B.) at 281 (ItSeagram2"); Canadian Bankers'Assn. v. Canada Trustco Mortgage Co. (1990), 33C.P.R. (3d) 157 (T.M.O.B.) at 159 ("Canadian Bankers"). This principle has also been accepted by the Federal Court Trial Division and the Federal Court of Appeal in John Labatt Ltd v. Mo/son Cos.Ltd (1990),30 C.P.R. (3d) 293 (F.C.T.D.).("John Labatt TD"); affd (1992),42 C.P.R. (3d) 495(F.C.A.). .                              .

. . ... ...

Since neither party filed evidence, the Applicant submits that the Opponent has failed to meet its evidential burden in respect of each of its grounds of opposition. Therefore, in the words of the Federal Court Trial Division as affirmed by the Federal Court of Appeal, the issues raised in the Statement of Opposition cannot "be considered at all" by the Opposition Board. As a result, each ground of opposition in the Statement of Opposition must fail.

2

The applicant has correctly stated the general principle of the evidential burden on the

opponent and the consequences for the opponent's case if the evidential burden is not met.

However, there are exceptions to the general principle. It is not always the case that evidence is

required to support a ground of opposition.

SECTION 12(1)(B)

With respect to the ground of opposition based on Section 12(1)(b) of the Act, an

opponent need not necessarily adduce evidence where the opponent's legal argument may be

based entirely on the ordinary meaning of the words comprising a trade-mark: see, for example,

Rothmans, Benson & Hedges Inc. v. Imperial Tobacco Ltd. 60 C.P .R. (3d) 567 (TMOB). In the

instant case, the opponent is not required to adduce evidence as the basis for opponent's objection

is evident from the plain meaning of the words GOLF MAGAZINE. If the applicant's wares

namely, a "magazine published monthly" in fact concerns golf, then, from the point of view of

the everyday purchaser of magazines and as a matter of immediate impression, the mark is

clearly descriptive of the character of the magazine. If the magazine does not concern golf, then,

from the point of view of the everyday purchaser of magazines and as a matter of immediate

impression, the mark is deceptively misdescriptive of the character of the magazine. Thus, the

mark is either c1early descriptive or deceptively misdescriptive of the character of the applicant's

wares. The opponent therefore succeeds on the ground of opposition based on Section 12(1)(b) of

the Act.

3

SECTION 12(1)(D) & REGISTRAR'S DISCRETION

With respect to the ground of opposition based on Section 12(1)( d) of the Act, an

opponent is not always required to evidence the trade-mark registrations pleaded in the statement

of opposition. In this regard, the Registrar has discretion, exercised in the public interest, to

check the Register of Trade-marks which he maintains in order to confirm the existence of

registrations relied on by the opponent: see Quaker Oats of Canada Ltd./ La Compagnie Quaker

Oats du Canada Ltée v. Menu Foods Ltd. (1986), Il C.P.R. (3d) 410 (TMOB). In doing so, 1

noted that (i) registration no. 158029 for the mark GOLF DIGEST covers the wares "a magazine,

books, sound and video cassettes," (ii) regn. no. 516227 for the mark GOLF DIGEST covers a

large variety of wares including golf equipment. Of course, there is no requirement in the Trade­

marks Act for an opponent to be the owner of the registration pleaded in support of a ground of

opposition based on Section 12(1)( d).

The material date to consider the issue of confusion arising pursuant to Section 12(1)(d) is

the date of my decision: see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd.

(1991), 37 C.P.R. (3d) 413 (F.C.A.); Conde Nast Publications Inc. v. The Canadian Federation of

Independent Grocers (1991), 37 C.P.R. (3d) 538 (TMOB).

ONUS ON APPLICANT

The legal onus is on the applicant to show that there would be no reasonable likelihood of

confusion, within the meaning of Section 6(2), between the applied for mark GOLF MAGAZINE

and the mark GOLF DIGEST, registration no. 158029. The presence of an onus on the applicant

4

means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue

must be decided against the applicant: see John Labatt Ltd. v. Mo/son Companies Ltd. (1990) 30

C.P.R.(3d) 293 at 297-298 (F.C.T.D.).

SECTION 6( 5) FACTORS

The test for confusion is one of first impression and imperfect recollection. Factors to be

considered, in making an assessment as to whether two marks are confusing, are set out in Section

6(5) of the Act:the inherent distinctiveness of the marks and the extent to which they have become

known; the length of time each has been in use; the nature of the wares~ services or business; the

nature of the trade; the degree of resemblance in appearance or sound of the marks or in the ideas

suggested by them. This list is not exhaustive; all relevant factors are to be considered. All factors

do not necessarily have equal weight. The weight to be given to each factor depends on the

circumstances: see Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996),

66 C.P.R.(3d) 308 (F.C.T.D.).

DISCUSSION OF SECTION 6( 5) FACTORS

The marks GOLF MAGAZINE and GOLF DIGEST possess a minimal degree of inherent

distinctiveness as the marks are at least descriptive or misdescriptive, if not c1early descriptive or

deceptively misdescriptive, of the wares "magazine." Acquired distinctiveness is not a factor that

requires consideration as there is no evidence to establish that either mark has acquired

distinctiveness through use in the marketplace. Similarly, the length of time that the marks have

been in use is not a factor for consideration because it is not in evidence. The nature of the wares

5

covered by the subject application and the registration for GOLF DIGEST overlap with respect to

the wares "magazine." In the absence of evidence to the contrary, I assume that the trade-mark

owners are in the business of publishing magazines and that their magazines would travel through

the same channels of trade. The marks in issue resemble each other to a fair extent as they share the

prefix GOLF and further, the word DIGEST is fairly synonymous with the word MAGAZINE in the

context of a periodic publication.

DECISION

Having regard to the above, and even keeping in mind that the marks GOLF MAGAZINE

and GOLF DIGEST are inherently weak marks and small differences may suffice to distinguish weak

marks (see GSW Ltd. v: Great West Steel Industries Ltd. (1975),22 C.P.R.(2d) 154 (F.C.T.D.), 1

find that the applicant has not met the onus on it to show, on a balance of probabilities, that the

marks GOLF MAGAZINE and GOLF DIGEST are not confusing. Accordingly, the opponent

succeeds on the ground of opposition pursuant to Section 12(1)(d).

Having found for the opponent on two grounds of opposition, it is not necessary to

6

consider the remaining grounds.

The applicant's application is refused.

DATED AT VILLE DE GATINEAU, QUEBEC, THIS 10th DAY OF JANUARY, 2007.

~~

Myer Herzig,

Member,

Trade-marks Opposition Board

7