IN THE MATTER OF AN OPPOSITION by Guang Dong Kelon Electrical Holdings Co., Ltd. and Kelon USA Inc. to application No. 1,223,158 for the trade-mark KELON filed by Kelon Canada Ltd.______________
On July 12, 2004, Kelon Canada Ltd. (the “Applicant”) filed an application to register the trade-mark KELON (the “Mark”) based upon use of the Mark in Canada since December 25, 2000 in association with the following wares and services:
Clothes washers
and dryers; dishwashers; air conditioners; refrigerators; rice cookers;
electric blender for food; soy milkmakers; toaster ovens; toasters; microwaves;
irons; fans; hot pots; voltage converters; electric massagers; solar power
systems; solar water heaters; telephones; portable audio cassette and CD
players and radios; hot plates; hair dryers; shavers; batteries; antennas; DVD
players; electronic receivers; home theatre systems; infrared rays therapeutic
devices which provide infrared heat, massage and stimulation to different body
parts; bicycles; electric bicycles; televisions; headphones; microphones;
stereos; radios; cigarette lighters.
Home appliance repair.
The application was advertised for opposition purposes in the Trade-marks Journal of January 12, 2005.
On June 13, 2005, Guang Dong Kelon Electrical Holdings Co., Ltd. and Kelon USA Inc. (collectively the “Opponent”) filed a statement of opposition against the application. The Applicant filed and served a counter statement, in which it denied the Opponent’s allegations.
The Opponent’s evidence consists of the affidavit of Hallee Lauriola.
The Applicant’s evidence consists of the affidavit of Guang Yuan Meng.
Neither of the affiants was cross-examined.
Only the Applicant filed a written argument. An oral hearing was not requested.
Onus
The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”). There is however an initial 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 Ltd v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D.) at 298; Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.).]
Summary of Opponent’s Evidence
Ms. Lauriola, a legal assistant, provides details of certain Canadian trade-mark applications and registrations and states that December 25th is a major religious holiday in Canada on which most stores of a retail nature are not open for business.
Summary of Applicant’s Evidence
Mr. Guang, the Applicant’s Director and President, says that the Applicant is a retailer and wholesaler of bicycles, electronic appliances, devices and accessories, as well as a provider of installation, maintenance and repair services for such wares. He discusses some of the history and activities of the Applicant and provides several items showing use of the KELON trade-mark, such as a photograph of store signage and a business card. He also provides details of items purchased from manufacturers or wholesalers and of advertisements placed, plus invoices for wares sold by the Applicant.
Section 30 Grounds of Opposition
The Opponent has pleaded two grounds of opposition under s. 30 of the Act. The material date with respect to s. 30 is the filing date of the application [see Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R. (3d) 469 at 475].
The legal burden on the Applicant to show that its application complies with s. 30 includes both the question as to whether or not the Applicant has filed an application which formally complies with the requirements of s. 30 and the question as to whether or not the statements contained in the application are correct. To the extent that the Opponent relies on allegations of fact in support of its s. 30 grounds, there is an evidential burden on the Opponent to prove those allegations. [Joseph E. Seagram & Sons Ltd. et al. v. Seagram Real Estate Ltd. (1984), 3 C.P.R. (3d) 325 (T.M.O.B.), affd 33 C.P.R. (3d) 454] This burden can be met by reference not only to the Opponent's evidence but also to the Applicant's evidence [see Labatt Brewing Company Limited v. Molson Breweries, a Partnership (1996), 68 C.P.R. (3d) (F.C.T.D.) 216 at 230].
Section 30(b)
The Opponent has pleaded that the application does not comply with s. 30(b) of the Act for various, alternative reasons, namely:
- the Applicant does not use KELON as a trade-mark for the wares and services as claimed in the application; any wares sold by the Applicant are third-party branded with the Applicant being a mere retailer; the Applicant exercises no control over the character or quality of the wares
- any use by the Applicant did not commence on December 25, 2000 as that date is a statutory holiday
- any use has not been continuous since December 25, 2000; nor has any use been effected in the normal course of trade.
The initial burden on the Opponent is lighter respecting the issue of non-conformance with s. 30(b), because the facts regarding the Applicant’s first use are particularly within the knowledge of the Applicant. [See Tune Masters v. Mr. P's Mastertune Ignition Services Ltd. (1986), 10 C.P.R. (3d) 84 (T.M.H.O.) at 89.]
The only evidence from the Opponent directed to this ground is that the Applicant’s claimed date of first use, December 25, 2000, is a statutory holiday and a day on which most retail stores are closed. This satisfies the Opponent’s light initial burden with respect to its claim that the Applicant did not commence use on that day.
Mr. Guang did not introduce any evidence to counter this point and so the Applicant has not met its legal burden and the s. 30(b) ground succeeds on this point.
I note that in its written argument, the Applicant states, “The Applicant operated its business virtually everyday of the year, including the statutory holidays, primarily in Toronto’s Chinatown area.” However, there is no evidence that supports this statement. I further note that although Mr. Guang attests that the Applicant has been using the trade-mark KELON since its incorporation on September 28, 2000, his evidence does not show use in accordance with s. 4 of the Act, either on December 25, 2000, or before that date. Yes, there is evidence that the Applicant was taking steps prior to December 25, 2000 to commence business, such as obtaining a vendor’s permit, ordering a sign and a stamp, as well as purchasing inventory from third parties, but all of the invoices provided to show sales by the Applicant are dated 2001 and the evidence of advertisements placed by it are dated 2001 or later; even its business cards appear to have been purchased in 2001.
Section 30(i)
The Opponent has also pleaded that the application does not comply with s. 30(i) of the Act because the Applicant could not have been satisfied that it was entitled to use the Mark as applied for because the Applicant knew of the prior reputation and goodwill of the Opponent’s KELON trade-mark in association with appliances. The Opponent has stated that, as a result of the fame of its KELON mark in China, its mark has acquired a protectable reputation and goodwill in Canada, particularly amongst the segment of the public who are of Chinese ancestry or who have recently emigrated to Canada from China.
The Opponent has not filed any evidence that shows that its mark has any reputation in Canada. Accordingly, its s. 30(i) ground cannot succeed. In any event, where an applicant has provided the statement required by s. 30(i), a s. 30(i) ground 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 C.P.R. (2d) 152 (T.M.O.B.) at 155.]
The s. 30(i) ground therefore is dismissed.
Distinctiveness Ground of Opposition
The Opponent has also pleaded that the Mark is not distinctive of the Applicant’s wares or services, nor is it adapted to distinguish the Applicant’s wares and services from those of the Opponent.
In order to meet its initial burden with respect to this ground, the Opponent must show that as of the filing of the opposition its trade-mark had become known sufficiently to negate the distinctiveness of the Mark. [Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 at 58 (F.C.T.D.); 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.)]
In the present case, there is no evidence that shows that the Opponent’s trade-mark had become known to any extent in Canada at any time, including prior to the filing of the opposition. The Opponent has therefore not satisfied its initial burden and the distinctiveness ground of opposition is accordingly dismissed.
Disposition
Having been delegated by the Registrar of Trade-marks by virtue of s. 63(3) of the Act, I refuse the application pursuant to s. 38(8).
DATED AT TORONTO, ONTARIO, THIS 10th DAY OF SEPTEMBER 2007.
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