IN THE MATTER OF AN OPPOSITION by The War Amputations of Canada/ Les Amputés de Guerre du Canada to application No. 773,989 for the trade-mark PLAYSAFE filed by Fortco Limited
On January 30, 1995, the applicant, Fortco Limited, filed an application to register the trade-mark PLAYSAFE based upon use of the trade-mark in Canada since December 3, 1992 in association with “Rubber granulars combined with polyurethane or epoxy resins to create a rubberized safety surface for a seamless playground area which provides a safe shock absorbing rubberized surface in which to help prevent children from serious injury”.
The present application was advertised for opposition purposes in the Trade-marks Journal of August 30, 1995 and the opponent, The War Amputations of Canada/ Les Amputés de Guerre du Canada, filed a statement of opposition on February 28, 1996, a copy of which was forwarded to the applicant on April 4, 1996. The applicant served and filed a counter statement in response to the statement of opposition. The opponent submitted as its evidence the affidavit of Danita Chisholm while the applicant filed as its evidence the affidavit of Sandro Forte. Both parties submitted written arguments and both were represented at an oral hearing.
The following are the grounds of opposition relied upon by the opponent:
a) The applicant has not used the trade-mark PLAYSAFE in Canada in association with the wares set forth in the application since December 3, 1992, as alleged in the present application;
b) The applicant is not the person entitled to registration of the trade-mark PLAYSAFE in view of Paragraph 16(1)(a) of the Trade-marks Act in that, as of the applicant’s claimed date of first use, the applicant’s trade-mark was confusing with the opponent’s trade-mark PLAYSAFE which had been previously used in Canada in association with “Films, pamphlets and brochures dealing with amputation and the prevention of accidental amputation” and in association with “Promotion of safety among children to aid in preventing accidental amputation”;
c) The applicant’s trade-mark PLAYSAFE is not registrable in view of Paragraph 12(1)(d) of the Trade-marks Act in that the applicant’s mark is confusing with the opponent’s registered trade-mark PLAYSAFE, registration No. 300,590;
d) The applicant’s trade-mark is not distinctive.
The opponent withdrew its first ground of opposition at the oral hearing. As a result, the Subsection 30(b) ground need not be considered. The remaining grounds of opposition turn on the issue of confusion between the applicant’s trade-mark PLAYSAFE and the opponent’s trade-mark PLAYSAFE as registered and as previously used in Canada in association with wares and services identical to those covered in its registration. With respect to the Paragraph 16(1)(a) ground, there is an initial burden on the opponent in view of the provisions of Subsections 16(5) and 17(1) of the Trade-marks Act to establish its prior use of its trade-mark PLAYSAFE in Canada, as well as to show that it had not abandoned its trade-mark PLAYSAFE in this country as of the date of advertisement of the present application.
The issue arises as to whether the opponent has used its mark PLAYSAFE as a trade-mark in association with “films, pamphlets and brochures dealing with amputation and the prevention of accidental amputation”, as contemplated by Subsection 4(1) of the Trade-marks Act. Having regard to the Chisholm affidavit, it would appear that the opponent has not manufactured, sold, leased or hired its pamphlets or brochures and has therefore not shown prior use of its trade-mark PLAYSAFE in association with these wares [see The War Amputations of Canada/ Les Amputés de Guerre du Canada v. Faber-Castell Canada Inc., 41 C.P.R. (3d) 557, at p.560]. With respect to films, Ms. Chisholm states in paragraph 7 of her affidavit that the opponent has circulated two PLAYSAFE videos in Canada since 1978 and that organized distribution channels provide quick access to the videos for schools, youth programs, parent/teacher associations, industrial safety groups, television stations and community channels. However, Ms. Chisholm does not indicate whether the videos are sold or leased by the opponent or whether they are distributed without charge as a promotional vehicle for the opponent’s safety program. In any event, the opponent has failed to show that it has used its trade-mark PLAYSAFE in association with films within the scope of Subsection 4(1) of the Trade-marks Act.
In The War Amputations of Canada/ Les Amputés de Guerre du Canada v. Faber-Castell Canada Inc., 41 C.P.R. (3d) 557, a previous decision of the Opposition Board involving the trade-mark PLAYSAFE as applied to “fibre tip pens, and colouring markers”, I commented as follows
concerning the present opponent’s use of its trade-mark PLAYSAFE in association with its services at pages 560-562 of the reported decision:
“As for the opponent's services, the applicant submitted that a service could only be performed within the scope of s. 4(2) of the Act if it is performed for money whereas the opponent is a non‑profit organization which renders a public service. A "trade mark" is defined in s. 2 of the Trade‑marks Act as meaning a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others. This definition brings trade marks covering services within the scope of the Trade‑marks Act as there is no common law right to a trade‑mark in connection with services. Indeed, trade marks covering services were not established in Canada until the enactment of the present Trade‑marks Act. In this regard, Mr. Justice Strayer in Kraft Ltd. v. Registrar of Trade Marks (1984), 1 C.P.R. (3d) 457, [1984] 2 F.C. 874 (T.D.) commented as follows at pp. 461‑2:
By way of summary, when faced with an absence of any definition in the Act and any binding jurisprudence, I can see no reason why the registrar should impose a restrictive interpretation on the word "services" as added to the Trade Marks Act 1953. If the applicant chooses to offer a coupon programme and to use a trade mark to distinguish it from its other operations, I can see no harm to the public nor to its competitors. If such there be, it has not been demonstrated to me. In the absence of any such justification for a restrictive interpretation I see no reason why the decision of the applicant to use this mark for such a programme should not be accepted and protected by registration.
In Carling O'Keefe Breweries of Canada Ltd. v. Anheuser‑Busch, Inc. (1985), 4 C.P.R. (3d) 216 (T.M. Opp. Bd.), the Opposition Board considered whether "the services of promoting the sale of the opponent's Carlsberg beer in Canada" are services within the scope of s. 4(2) of the Trade‑marks Act. At pp. 219‑20, the hearing officer commented as follows:
In order for an activity to be considered as a service, it would seem logical that there must be some members of the public, some consumers or purchasers, who receive a benefit from the existence of that activity. With respect to the opponent's promotion of the sale of its Carlsberg Beer, the only one who could reasonably be said to have received a benefit is the opponent itself. The opponent's agent submitted that because the opponent promotes its beer by displaying its team of horses (known as the Carlsberg Championship Team or the Carlsberg Team and Wagon), a benefit is provided to the public. Such displays may well provide a benefit to the public; however, even if this is so it would only in my view establish use of the opponent's mark in association with the service of displaying its team of horses and not in association with the service of promotion of its Carlsberg beer.
Reference was made at the hearing to the recent decision Kraft Ltd. v. Registrar of Trade Marks (October 3, 1984, unreported. T‑83‑84 [reported 1 C.P.R. (3d) 457]), in which Strayer J. concluded that "providing coupon programs pertaining to a line of food products" is a proper statement of services. At p. 6 [p. 461] of the decision Strayer J. states:
"Kraft has submitted that it is providing a service by making its coupons widely and randomly available to consumers who, by the use of such coupons can obtain its products at a reduced price. I see no reason why this cannot be described as a service..."
A clear distinction can therefore be made with the present case in that in that case a benefit was provided to consumers, i.e., they were able to obtain products at a reduced price.
Having regard to the above, I conclude that "promoting the sale of the opponent's Carlsberg beer in Canada" is not a service within the meaning of s. 4 of the Trade Marks Act and that therefore the opponent has failed to establish prior use of its alleged trade mark. Accordingly, I reject the opponent's ground of opposition that the applicant is not the person entitled to registration.
In the present case, the public receives a benefit from the opponent's educational safety program. Further, there is no provision in the Trade‑marks Act which states that a service must be paid for in order for the service to be performed and I am not prepared to infer that such should be the case. Further, unlike s. 4(1) of the Trade‑marks Act, s. 4(2) does not include reference to services being "in the normal course of trade". As well, I am mindful of the comments of Strayer J. in the Kraft Ltd. decision where he states that he could see no reason for imposing a restrictive interpretation on the word "services" in the Trade‑marks Act.”
In view of the above, and having regard to the Chisholm affidavit, I have concluded that the opponent has established its prior use and non‑abandonment of its trade-mark PLAYSAFE in Canada in association with a safety program among children to aid in preventing accidental amputation and has therefore met the burden upon it in respect of this aspect of the non‑entitlement ground. In any event, the opponent is still entitled to rely upon its registration for the trade-mark PLAYSAFE in respect of its Paragraph 12(1)(d) ground of opposition.
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 Subsection 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 as of the material date. In this regard, the material date with respect to the Paragraph 12(1)(d) ground is the date of my decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, (1991), 37 C.P.R. (3d) 413 (F.C.A.)] while the material dates in respect of the non-entitlement and non-distinctiveness grounds are the applicant’s claimed date of first use [December 3, 1992] and the date of opposition [February 28, 1996] respectively.
Considering the inherent distinctiveness of the trade-marks at issue [Para. 6(5)(a)], the opponent’s trade-mark PLAYSAFE is, in my opinion, clearly descriptive of the character of a program which promotes safety among children, as well as being clearly descriptive of films, pamphlets and brochures relating to such a program. The applicant’s trade-mark PLAYSAFE as applied to the wares covered in the present application is highly suggestive if not descriptive of the result achieved from using the applicant’s wares, that is, that children will be able to play safely on the applicant’s “rubberized safety surface for a seamless playground area”. As such, the trade-marks at issue possess relatively little inherent distinctiveness.
Regardless of whether or not the opponent’s activities constitute trade-mark use in association with services, I am of the view that the opponent’s evidence establishes that its trade-mark PLAYSAFE is relatively well known in Canada in association with its safety program for children as a result of the opponent’s public service announcements, its participation in parades, the opponent’s annual mail campaigns, its distribution of decals, crests and the like, as well as the circulation of its PLAYSAFE videos since 1978. On the other hand, it would appear from the Forte affidavit that the applicant’s PLAYSAFE trade-mark has only become known to a limited extent within the playground industry in Canada through advertising of its PLAYSAFE rubberized surfacing for playgrounds in trade magazines.
Having regard to the foregoing, both the extent to which the trade-marks at issue have become known [Para. 6(5)(a)] and the length of time that the trade-marks have been in use in Canada [Para. 6(5)(b)] clearly favour the opponent in respect of its PLAYSAFE safety program. As the trade-marks at issue are identical, the only remaining criteria of those enumerated in Subsection 6(5) of the Act are the nature of the wares and services of the parties [Para. 6(5)(c)] and the nature of the trade associated with their wares and services [Para. 6(5)(d)]. In this regard, I consider there to be no similarity between the applicant’s rubberized safety surface for a seamless playground area and either the opponent’s services or its wares. Further, and in the absence of any evidence to the contrary, I do not consider that there would be any overlap in the channels of trade associated with the wares and services of the parties.
The opponent has submitted that its program is generally intended to prevent injury to children while the applicant’s trade-mark PLAYSAFE is applied to wares which are intended to prevent injury to children. Further, the opponent has noted that Exhibit “G” to the Forte affidavit emphasizes this by pointing to the fact that the applicant’s PLAYSAFE safety surfaces have enabled children of all handicaps and disabilities to use and access playgrounds for the first time and these children are the ones who benefit from the opponent’s program which assists in enabling handicapped children to adapt to everyday life with other children without physical challenges. As a result, the opponent has argued that the public might assume that the opponent has licensed or approved or is somehow connected with the applicant’s PLAYSAFE wares. While there is no evidence of any licensing or sponsorship by the opponent of its trade-mark PLAYSAFE to date, I am of the view that the opponent need not establish that it has either sponsored or licensed the use of its trade-mark in association with wares in order for the average consumer to conclude that there is a possible connection between the applicant’s use of the trade-mark PLAYSAFE in association with a rubberized safety surface for a seamless playground area and the opponent.
The applicant has argued that there is no evidence of actual confusion despite the concurrent use by it and the opponent of their respective trade-marks in the marketplace. However, I am not prepared to conclude that the absence of evidence of instances of actual confusion is a particularly relevant factor in this opposition as the applicant’s evidence is sketchy at best as to the extent to which it has used its PLAYSAFE trade-mark in Canada. The applicant has also submitted that it would be unable to use its trade-mark PLAYSAFE in Canada should it not succeed in this proceeding. However, the issue of the applicant’s continued use of its trade-mark PLAYSAFE in Canada is not a matter for determination in this proceeding. Rather, the issue in this proceeding is whether the applicant’s trade-mark should be registered under the provisions of the Trade-marks Act.
In view of the above, and bearing in mind that the legal burden is upon the applicant in respect of the issue of confusion, and considering further that the opponent’s mark, while initially a very weak mark, has become relatively well known in Canada in association with its safety program and further that the applicant’s wares are intended to prevent injury to children, and bearing in mind the previous decision of the Opposition Board in The War Amputations of Canada/ Les Amputés de Guerre du Canada v. Faber-Castell Canada Inc., 41 C.P.R. (3d) 557, referred to above, I find that there exists some doubt as to whether or not there would be a reasonable likelihood of confusion between the trade-marks at issue. In particular, I believe that the average consumer might possibly conclude as a matter of immediate impression that the opponent may have sponsored or approved the use by the applicant of a trade-mark identical to that of the opponent for wares intended for the safety of children. As a result, the applicant’s trade-mark is not registrable in view of the provisions of Paragraph 12(1)(d) of the Trade-marks Act.
Having been delegated by the Registrar of Trade-marks by virtue of Subsection 63(3) of the Trade-marks Act, I refuse the applicant’s application pursuant to Subsection 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS 3rd DAY OF MARCH, 2000.
G.W. Partington,
Chairperson,
Trade-marks Opposition Board.