IN THE MATTER OF AN OPPOSITION by Cluett, Peabody Canada Inc. to application No. 682,473 for the trade-mark RUGGED CLASSICS filed by The John Forsyth Company Inc. and Forsyth Apparel Inc., doing business as Forsyth Trading Company
On May 24, 1991, the applicant, The John Forsyth Company Inc. and Forsyth Apparel Inc., doing business as Forsyth Trading Company, filed an application to register the trade-mark RUGGED CLASSIC based on intent to use in Canada in association with “men’s shirts”. The application was amended to include a disclaimer to the word CLASSICS and was subsequently advertised for opposition purposes in the Trade-Marks Journal of September 23, 1992. The opponent, Cluett, Peabody Canada Inc., filed a statement of opposition on November 19, 1992. The opponent requested and was granted leave to file an amended statement of opposition on July 28, 1994.
The first ground of opposition is that the applicant is not the person entitled to registration of the mark pursuant to s.38(2)(c) and s.16(3)(b) of the Trade-Marks Act, R.S.C. 1985 c.T-13 (hereinafter the Act), because at the date of filing (i.e. May 24, 1991), the trade-mark RUGGED CLASSIC was confusing with the trade-mark RUGGED WEAR BY/PAR ARROW in respect of which application No. 584,467 had been previously filed in Canada by the opponent on May 20, 1987, and was based on proposed use in Canada in association with “clothing, namely shirts, sweaters, jackets, pants and coveralls”. As its second ground of opposition, the opponent maintains that the trade-mark is not distinctive pursuant to s.38(2)(d) and s.2 of the Act by virtue of the opponent’s use of the trade-mark ARROW RUGGED WEAR in Canada in association with shirts. The opponent alleges as its third ground of opposition that the applied for mark is not registrable pursuant to s.38(2)(b) and s.12(1)(d) of the Act as it is confusing with the opponent’s registered mark ARROW RUGGED WEAR, Registration No. 425,665, for “clothing, namely shirts sweaters, jackets, pants and coveralls”.
The applicant filed and served a counterstatement on March 31, 1993, in which it denied the allegations asserted by the opponent in its original statement of opposition. The applicant did not plead to the amended statement of opposition. As its evidence, the opponent filed the affidavit of Phillip C. Turner, President of Cluett, Peabody Canada Inc. The affidavit of Christopher Aide, associate with the law firm acting as agent for the applicant, was submitted as the applicant’s evidence. Both the opponent and the applicant filed written arguments and both were represented at an oral hearing.
With respect to the first ground of opposition, the opponent has met its evidentiary burden in that its application No. 584,467, for the trade-mark RUGGED WEAR BY/PAR ARROW in association with “clothing namely, shirts, sweaters, jackets, pants and coveralls”, was filed May 20, 1987, which was before the applicant’s application (i.e. May 24, 1991). Furthermore, in accordance with Section 16(4) of the Act, the opponent’s application was pending as of the applicant’s advertisement date (i.e. September 23, 1992), the opponent’s application not having yet proceeded to registration.
In view of the above, the first ground of opposition remains to be decided on the issue of confusion. The onus or legal burden is on the applicant to show no reasonable likelihood of confusion. Finally, 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 the following specifically set forth in s.6(5) of the Act: a) the inherent distinctiveness of the trade-mark and the extent to which the trade-marks have become known; b) the length of time the trade-marks have been in use; c) the nature of the wares, 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. I will review the evidence in light of these criteria and any other surrounding circumstances.
With respect to the inherent distinctiveness of the marks, the applicant has disclaimed the right to the exclusive use of the word “CLASSICS” apart from its trade-mark and therefore has effectively acknowledged that the word is, if not clearly descriptive of men’s shirts, then at least not distinctive in relation to such wares (see Andres Wines Ltd. v. Les Vins La Salle Inc., 3 C.P.R. (3d) 272 (T.MO.B.). The opponent submits that the word CLASSICS is descriptive in relation to clothing as it is defined in Oxford Concise Dictionary as “made in simple style not much affected by changes of fashion; garment in classic style”. Although the opponent did not file these dictionary definitions as evidence, I am permitted to take judicial notice of them (see Classic Door & Millwork Ltd. v. Oakwood Lumber & Millwork Co. (No. 3) (1992), 42 C.P.R. (3d) 315 (T.M.O.B.) ). Further, although the applicant has not disclaimed the word “RUGGED”, it has submitted evidence showing dictionary listings for “RUGGED” indicating that it is suggestive in relation to clothing. For example, The Shorter Oxford Dictionary, submitted as Exhibit D-2 to the Aide affidavit, indicates that one of its meanings is “Of cloth: hairy, coarse, rough...of a rough but strong or sturdy character...strong, robust, vigorous”. Consequently, I do not find that the applicant’s mark possesses a great degree of inherent distinctiveness.
Regarding the opponent’s trade-mark, the applicant submits that ARROW is the only component of the opponent’s mark which may be considered to be inherently distinctive because the opponent disclaimed the right to the exclusive use of the words RUGGED and WEAR. It argued that by disclaiming the right to the exclusive use of the words RUGGED and WEAR, the opponent concedes that these words are available for all traders to use freely. Thus, in assessing confusion, the applicant submitted that the Registrar should only consider whether the word ARROW is confusingly similar with the applicant’s mark RUGGED CLASSIC. I disagree. I consider the proper approach is that taken in American Cyanamid Co. v. Record Chemical Co. Inc. (1972), 7 C.P.R. (2d) 1; affirmed 14 C.P.R. (2d) 127 (F.C.A.) where Justice Noel made the following comments at page 5:
“A trade-mark may consist of a number of words some of which may be what are called weak words or less strong words than others. The matter, however, of determining whether a mark is confusing or not, under s.6 of the Trade-Marks Act must still be decided by looking at the entirety of the trade-mark without breaking it up into parts and looking at one part only and downgrading the other on the basis that no one can obtain a monopoly in a particular descriptive word. The appellant, as already mentioned, disclaimed the word “pine” but the marks must still be considered in their totalities in determining whether there is a likelihood of confusion between them”.
Accordingly, despite the fact the words RUGGED and WEAR are disclaimed, in considering the question of confusion between the trade-marks, both trade-marks must be considered in their totalities and the presence of the words RUGGED and WEAR in the opponent’s mark cannot be ignored. I agree with the applicant that the opponent’s disclaimer of the words RUGGED and WEAR constitutes an acknowledgement that the words RUGGED and WEAR are weak in terms of distinctiveness in relation to shirts. However, in my view, the component ARROW does add some distinctiveness to the opponent’s mark which gives the opponent’s mark RUGGED WEAR BY/PAR ARROW a higher degree of distinctiveness than the applicant’s mark RUGGED CLASSIC.
As there is no evidence of use of either of the parties’ marks, I conclude that the extent to which the trade-marks have become known is not a material circumstance in the present case. Similarly, the length of time the marks have been in use is not a material circumstance.
The wares are almost identical since the opponent’s application covers “clothing, namely shirts...” and the applicant seeks registration for men’s shirts. Therefore, I must conclude that the wares of the parties would overlap. Presumably, the trades of the parties would also be the same.
As for Section 6(5)(e) of the Act, it was held in Conde Nast Publications Inc. v. Union Des Editions Modernes (1979), 46 C.P.R. (2d) 183 at 188 (F.C.T.D.), that the first word or first syllable in a trade-mark is far the more important for the purpose of distinction. In the present case, although there is not much resemblance in the respective ideas suggested by the marks, there is a high degree of visual and phonetic resemblance between the marks in view that the first component of both marks is the word RUGGED.
As a further surrounding circumstance, I have considered the applicant’s evidence pointing to third party use of the registered mark RUGGED TERRAIN in association with jackets. The Aide affidavit establishes at paragraph 6 and Exhibits C1 and C2 that the third party mark RUGGED TERRAIN was in use in association with jackets in Canada on July 5, 1994.
The applicant also relied on the state of the trade-marks register to demonstrate that the term RUGGED is a common element of trade-marks used in association with clothing. State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace: see Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R.(3d) 432 (T.M.O.B.) and Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R.(3d) 205 (F.C.T.D.). See also Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R.(3d) 349 (F.C.A.) which is support for the proposition that inferences about the state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located.
The applicant’s state of the register evidence was introduced by means of the Aide affidavit. My review of Mr. Aide’s search results reveals only four third-party registrations for trade-marks incorporating the word RUGGED for clothing and/or footwear (not including the registration for RUGGED TERRAIN mentioned above). In the absence of evidence of use of these marks, the existence of only four third-party registrations is insufficient evidence to allow me to conclude that there has been common adoption of RUGGED marks in the trade.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of the above, and particularly in view of the similarities between the wares, trades and marks of the parties, I find that I am left in a state of doubt regarding the issue of confusion between the applied for mark RUGGED CLASSICS for “men’s shirts” and the opponent’s trade-mark RUGGED WEAR BY/PAR ARROW for “clothing, namely shirts...” Since the legal burden is on the applicant, I must resolve that doubt against it. Consequently, the first ground of opposition is successful.
With respect to the third ground of opposition, the material time for considering the circumstances respecting the issue of confusion between the opponent’s registered mark ARROW RUGGED WEAR and the applicant’s mark RUGGED CLASSICS pursuant to s.12(1)(d) of the Act is the date of my decision (Park Avenue Furniture Corporation v. Wickes/ Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.)). The onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Finally, 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 s.6(5) of the Act.
As stated above, the applicant’s mark RUGGED CLASSIC does not possess a high degree of inherent distinctiveness in relation to men’s shirts. Similarly, I consider the opponent’s mark ARROW RUGGED WEAR, to be suggestive of men’s shirts. However, despite the fact that the opponent disclaimed use of the words RUGGED and WEAR, I consider that the opponent’s mark in its entirety possesses a slightly higher degree of distinctiveness than the applicant’s mark because of the component ARROW.
Having regard to the Turner affidavit, it would appear that the opponent’s mark has become known in Canada. Mr. Turner asserts at paragraph 5 of his affidavit that his company commenced to use the trade-mark ARROW RUGGED WEAR in Canada on shirts in or about the fall of 1992 and continues to use the trade-mark in Canada on shirts today. At paragraph 6 he asserts that the exclusive customer for his company’s ARROW RUGGED WEAR brand shirts has been and continues to be The Bay. He also states that sales to The Bay by his company of ARROW RUGGED WEAR brand shirts for the fall of 1992 and 1993 total $280,155. A sample hang tag and neck label depicting the marks used in association with the shirts were attached to the Turner affidavit as Exhibits C1 and C2 respectively. The applicant submits that there is no evidence that these sales occurred in Canada. However, given that Mr. Turner states that his company has used the mark in Canada, and that paragraph 6 of the same affidavit states that the exclusive customer for such shirts in The Bay, I am prepared to draw the logical conclusion that the sales occurred in Canada. As there is no evidence of use of the applicant’s proposed mark, I conclude that the extent to which the trade-marks have become known favours the opponent.
The length of time the trade-marks have been in use also favours the opponent. As stated above, Mr. Turner states that the opponent has used its mark in association with shirts since the fall of 1992.
The wares are almost identical since the opponent’s application covers “clothing, namely shirts” and the applicant seeks registration for men’s shirts. Therefore, I must conclude that the wares of the parties would overlap. Presumably, the trades of the parties would also be the same.
As for Section 6(5)(e) of the Act, I find there to be some degree of visual and phonetic resemblance between the marks in that both marks contain the component RUGGED. However, I do not consider that there is much resemblance in the respective ideas suggested by the marks.
As a further surrounding circumstance, I have considered the applicant’s evidence pointing to third party use of the registered mark RUGGED TERRAIN in association with jackets. The applicant has also relied on state of the register evidence. However, in the absence of evidence of use, I am unable to conclude that there has been a common adoption of the word RUGGED in the trade from four third party registrations for trade-marks incorporating the word RUGGED for clothing and/or footwear (not including the registration for RUGGED TERRAIN).
The applicant also submitted that another surrounding circumstance is the fact that the opponent’s mark has not been used as it is registered. It states that the sample hang tag and neck label attached as Exhibits C1 and C2 to the Turner affidavit show use of the element ARROW alone which element is clearly divided and set apart from the words RUGGED WEAR by a pictorial of an arrow. It further argues that consumers viewing this hang tag or label would clearly consider the trade-mark depicted to be ARROW or ARROW & Design and would only regard the words RUGGED WEAR as descriptors for the opponent’s clothing.
I note that the opponent is using the mark with a design feature although the mark is registered as a word mark. However, I am prepared to conclude that the public, as a matter of first impression, would still perceive the mark ARROW RUGGED WEAR as being used as a trade-mark as the words ARROW, RUGGED and WEAR are the striking elements of the trade-mark being used.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of the above, and particularily in view of the similarities between the wares and trades of the parties and the fact that the opponent’s mark has become known in Canada, I find that I am left in a state of doubt regarding the issue of confusion between the applied for mark RUGGED CLASSICS for “men’s shirts” and the opponent’s trade-mark ARROW RUGGED WEAR for “clothing, namely shirts...” Since the legal burden is on the applicant, I must resolve that doubt against it. Consequently, the third ground of opposition is also successful.
Having regard to the remaining ground of opposition under s.38(2)(d), the onus or legal burden is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its wares and services from those 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. November 19, 1992 ): 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 supporting its ground of non-distinctiveness (i.e. that the mark ARROW RUGGED WEAR has become known sufficiently to negate the distinctiveness of the applicant’s proposed mark RUGGED CLASSIC).
In the present case, the Turner affidavit shows use of the mark ARROW RUGGED WEAR commencing in the fall of 1992. From this evidence, I am not prepared to infer that use of the opponent’s mark has been shown prior to November 19, 1992. In view that the opponent has not shown use of its trade-mark prior to the date of opposition, I conclude that the opponent has not mets its evidentiary burden with respect to the non-distinctiveness ground. Consequently, the second ground of opposition is not successful.
In view of the reasons stated above, I am not satisfied that the applicant has met the legal burden upon it under s.16(3) and under s.12(1)(d) to show that there would be no reasonable likelihood of confusion between the trade-marks at issue at the respective material dates, within
the meaning of s.6 of the Act. Accordingly, and with the authority delegated to me under s. 63(3) of the Act, I refuse the applicant’s application pursuant to s.38(8) of the Act
DATED AT HULL, QUEBEC, THIS 24th DAY OF JANUARY 1997.
Cindy R. Vandenakker
Hearing Officer
Trade-Marks Opposition Board