IN THE MATTER OF AN OPPOSITION
by Bedford Furniture Industries Inc. to appli-
cation No. 569,941 for the trade-mark THE
MATTRESS KING filed by Ernest Duff and
Arlene Duff carrying on business in partner-
ship as The Mattress King and subsequently
assigned to Factory Surplus Mattress Inc.
On September 25, 1986, Ernest Duff and Arlene Duff carrying on business in partnership as The Mattress King filed an application to register the trade-mark THE MATTRESS KING for “operation of a retail store” based on use in Canada since June 21, 1984. The application was amended to include a disclaimer to the word MATTRESS and was subsequently advertised for opposition purposes on May 25, 1988. The application was later assigned to Factory Surplus Mattress Inc., the current applicant of record.
The opponent, Bedford Furniture Industries Inc., filed a statement of opposition on September 26, 1988, a copy of which was forwarded to the applicant on October 19, 1988. The first ground of opposition is that the applicant’s application does not comply with the provisions of Section 30(a) of the Trade-marks Act because the applicant’s statement of services is not in ordinary commercial terms. The second ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Act because it is confusing with the trade-mark KIRO KING registered under No. 251,436 for “mattresses” and the trade-mark KING KOIL registered under No. 300,120 for the following wares:
mattresses, box springs, crib mattresses, hollywood beds, bed springs, cots, bunk beds, pillows, and upholstery furniture, namely sofa beds, lounges, studio couches, daven beds, chairs, love seats and chesterfields.
The third ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(1)(a) of the Act because, as of the applicant’s claimed date of first use, the applied for trade-mark was confusing with (1) the trade-mark KING KOIL previously used in Canada by the opponent and its predecessors in title The United States Bedding Co. and King Koil Licensing Company Inc. and (2) the trade-mark KIRO KING previously used in Canada by the opponent and its predecessor in title Heath Manufacturing Limited. The fourth ground is that the applied for trade-mark is not distinctive in view of the opponent’s use of its trade-mark KING KOIL and its trade-names King Koil Sleep Products and Literie King Koil.
The applicant filed and served a counter statement. As its evidence, the opponent submitted an affidavit of its General Manager, Erving Erlick. Mr. Erlick was cross-examined on his affidavit and the transcript of that cross-examination forms part of the record of this proceeding. As its evidence, the applicant filed the affidavits of Maria L. Bossio, Ernest Duff and Walter Mark Wilson. Both parties filed a written argument and an oral hearing was conducted at which both parties were represented.
The evidence establishes that the opponent began using the trade-mark KING KOIL in association with mattresses and related wares in 1968 under a license from The United States Bedding Co. The opponent continued to use that mark under license from King Koil Licensing Company, Inc., the successor in title to the original American licensor. Canadian rights to the mark were assigned to the opponent on January 11, 1983. The opponent continued to manufacture and sell mattresses and related wares in association with the mark.
The original applicant claims a date of first use of its mark of June 21, 1984. In his affidavit, Mr. Duff states that the original applicant began using the mark THE MATTRESS KING in 1982 but he fails to provide evidence to support that assertion. Mr. Duff states that annual sales through the original applicant’s store in St. Catherines, Ontario were about $2 million. Rights to the trade-mark THE MATTRESS KING were assigned to the current applicant of record who continued to use the mark in Thunder Bay, Ontario through two licensees.
As for the first ground of opposition, the legal burden or onus is on the applicant to show its compliance with Section 30(a) of the Act. However, there is an evidential burden on the opponent to prove its supporting allegations of fact. Since the opponent has not filed any evidence on point, the first ground is unsuccessful.
As for the second ground of opposition, 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.). The onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Furthermore, 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. Finally, the more relevant of the opponent’s registered marks is KING KOIL particularly in view of the fact that there is no evidence of use of the registered mark KIRO KING. Thus a consideration of the issue of confusion between the registered mark KING KOIL and the applicant’s mark will effectively decide the outcome of the second ground.
As for Section 6(5)(a) of the Act, the applicant’s mark is inherently weak, the first part of the mark being descriptive of the type of merchandise sold through the applicant’s stores and the second part being somewhat laudatory. The Wilson affidavit establishes that the trade-mark THE MATTRESS KING has become known in the Thunder Bay area. Due to the use of the mark up to 1989 by the original applicant, there may also be some minor residual reputation associated with the mark in the St. Catherines area.
As stated in the previous opposition decision in Bedford Bedding & Upholstery Ltd. v. Duff (1989), 24 C.P.R.(3d) 327 at 328:
The opponent’s mark is also inherently weak. The word “koil” is the phonetic equivalent of the word “coil” which is a common component of mattresses. Again, the word “king” is somewhat laudatory and, in the case of the opponent’s mark, possibly descriptive of a particular type of mattress.
In his affidavit, Mr. Erlick sets out fairly substantial sales and advertising figures for the mark KING KOIL although the cross-examination of Mr. Erlick revealed that those figures were inflated. Furthermore, on cross-examination (at page 29), Mr. Erlick undertook to provide the opponent’s actual sales figures for each specific year but that undertaking was never fulfilled. However, once the inflation in Mr. Erlick’s figures has been discounted, it is still apparent that the opponent has effected fairly significant sales of mattresses and related wares under the trade-mark KING KOIL. Thus, I am able to conclude that the opponent’s mark has become known to some extent in Canada.
The length of time the marks have been in use favors the opponent. There is a connection between the wares and services of the parties since the opponent manufactures mattresses and related wares which are the kinds of goods sold through the applicant’s retail outlets. However, the trades of the parties do differ to some extent since the applicant is a retailer and the opponent is a wholesaler.
As for Section 6(5)(e) of the Act, I have relied on the following finding from page 329 of the Duff decision which involved the same trade-marks:
There is a fair degree of resemblance between the marks of the parties in all respects. The only distinctive component of the applicant’s mark is the word “king” and that is the first and dominant element of the opponent’s mark and the more distinctive component of that mark.
It is worth noting again, however, that both marks are inherently weak.
As an additional surrounding circumstance, the applicant has relied on third party uses of trade-marks in the bedding industry which include the word KING. Mr. Duff states that he is familiar with such companies as Sleepking Bedding, Miracle King Bedding Limited and Kingsdown Inc. who manufacture mattresses and bedding. Mr. Wilson states that he is aware of the company Miracle King Bedding Limited and that the applicant’s retail outlets sell bedding products manufactured by Sleepking Bedding. The Wilson affidavit also evidences a retail outlet in Mississauga, Ontario operating under the trading style King City Bedding. Thus, it appears that consumers have become accustomed to some extent to seeing trade-marks in the bedding field which include the word KING such that they would be more likely to center on the other components of such marks to distinguish them.
As another surrounding circumstance, I have considered the fact that there has been fairly extensive use of both marks over a number of years with no instances of actual confusion having been evidenced. The original applicant’s annual sales in St. Catherines were of the order of $2 million through 1989 and the current applicant’s sales in Thunder Bay since 1989 have been about $4 million. Given the opponent’s fairly extensive sales throughout Canada during that period, one would have expected there to be at least some instances of actual confusion if confusion were, in fact, likely to occur. As noted, no such instances have been evidenced.
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 inherent weakness of the marks at issue, the differences in the trades of the parties, the use of KING marks by other traders in the industry and the absence of evidence of actual confusion despite coextensive use of the marks, I find that the applicant has satisfied the onus on it to show that its mark THE MATTRESS KING for the operation of a retail store is not confusing with the opponent’s mark KING KOIL for mattresses and the like. The last three factors noted above serve to distinguish this case from the Duff case where the marks at issue were found to be confusing. Thus, the second ground is also unsuccessful.
As for the third ground of opposition, it was incumbent on the opponent to evidence use of its two marks prior to the applicant’s claimed date of first use of June 21, 1984. The applicant claimed that the Duff affidavit evidences use of its mark even earlier in 1982 and thus 1982 should be the relevant date for the purposes of Section 16 of the Act. Although it is open to an applicant to establish an earlier date of first use (see the opposition decision in DeCaria Hair Studio Ltd. v. Massimo de Berardinis (1984), 2 C.P.R.(3d) 309 at 312), the applicant in this case failed to do so.
The opponent failed to evidence any use of its mark KIRO KING and thus the third ground is unsuccessful insofar as it relies on prior use of that mark. The opponent did, however, evidence prior use of its mark KING KOIL by itself, both as owner of the mark since January of 1983 and previously by itself or by its predecessors in title. The third ground therefore remains to be decided on the issue of confusion between the marks KING KOIL and THE MATTRESS KING as of the applicant’s claimed date of first use.
For the most part, my conclusions respecting the second ground of opposition are equally applicable for the third ground. One difference of note is that the applicant’s mark had not become known as of the earlier material time while the opponent’s mark had already become known in Canada as of that date. Another difference of note is that the evidence does not point to use of KING marks by other traders as of June 21, 1984. As of that date, there also had not been extensive use of both marks with no evidence of actual confusion. However, I am prepared to infer from the subsequent evidence of coextensive use of the marks with no evidence of actual confusion that confusion was also unlikely as of the earlier date. In view of that inference, the inherent weakness of the marks, the difference in the trades of the parties and the fact that there is not a high degree of resemblance between the marks, I find that the applicant has satisfied the onus on it to show that its mark THE MATTRESS KING for the operation of a retail store is not confusing with the opponent’s previously used mark KING KOIL for mattresses and the like. Thus, the third ground is also successful.
As for the fourth ground of opposition, the onus or legal burden is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its services from the wares and services of others throughout Canada: see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (T.M.O.B.). Furthermore, the material time for considering the circumstances respecting this issue is as of the filing of the opposition (i.e. - September 26, 1988): see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.). Finally, there is an evidential burden on the opponent to prove the allegations of fact in support of its ground of non-distinctiveness.
The fourth ground essentially turns on the issue of confusion between the applicant’s mark and the opponent’s trade-mark KING KOIL. Given my conclusions above respecting the issue of confusion respecting the third ground, it also follows that the applicant’s mark is not confusing with the opponent’s trade-mark as of the filing of the present opposition. Thus, the fourth ground is also unsuccessful.
In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I reject the opponent’s opposition.
DATED AT HULL, QUEBEC, THIS 13th DAY OF MAY, 1997.
David J. Martin,
Member,
Trade Marks Opposition Board.