IN THE MATTER OF AN OPPOSITION by
Essilor International (Compagnie générale) to Application No. 844937 for the Trade-mark CRYSTAL CLEAR filed by King Optical Group Inc.
On May 13, 1997 King Optical Group Inc (the «Applicant»), filed an application to register the trade-mark CRYSTAL CLEAR (the «Mark») in association with anti-reflective coating for eyeglasses (the «Wares») based on proposed use. The application was advertised in the Trade-mark Journal issue of August 5, 1998.
The Opponent filed on September 30, 1998 a statement of opposition containing the following grounds of opposition:
a) The application does not comply with Section 30 of the Trade-mark Act («Act») in that:
(i) The Applicant had already used the Mark in whole or in part in Canada;
(ii) The Applicant never had the intention to use the Mark in Canada or abandoned it in whole or in part;
(iii) The Applicant falsely declared that it was entitled to use the Mark in Canada in view of the facts hereinafter set forth;
b) The Mark was not registrable in view of the provisions of Section 12 (1)(d) of the Act as:
(i) It is confusing with the Opponent’s registered trade-mark «CRIZAL», registration number TMA 423878 in association with ophthalmic lenses and glasses for eyeglasses;
c) The Applicant is not the person entitled to the registration of the Mark in view of the provisions of section 16 of the Act as:
(i) At the date of filing, the Mark was creating confusion with the trade-mark CRIZAL previously used or made known in Canada by the Opponent or its predecessor-in-title in association with its wares, services and business related to optical products;
(ii) The application doesn’t comply to the provisions of section 30 of the Act , the Mark was used or abandoned as the case may be and is not registrable;
d) The Mark is not distinctive, within the meaning of section 2 of the Act, of the Applicant’s Wares nor is it adapted to distinguish them from those of the Opponent because:
(i) Of the adoption, use made known and registration of the Opponent’s famous trade-mark;
(ii) Subsequent to its transfer, there remained use rights to two or more entities which were exercised by them concurrently the whole contrary to the provisions of section 48(2) of the Act;
(iii) The Applicant allowed third parties to use the Mark in Canada, and in fact those third parties used it, outside the scope of protection of licensed use provided in Section 50 of the Act.
An amended Statement of opposition was filed on November 2nd, 1998 wherein the Opponent’s business address was changed. The Applicant filed a counterstatement denying each and every ground of opposition.
The Opponent’s evidence consists of Mr. Jean-Christophe Paris’s affidavit and a certificate of authenticity of trade mark registration number 423878 for the trade-mark CRIZAL. The Applicant filed the affidavits of Mr. Kenneth Hiebert and Ms. Ludmila Spaleny. Finally, as reply evidence, the Opponent filed the affidavit of Ms. Catherine Bergeron.
Both parties filed written submissions and were present at an oral hearing.
Mr. Paris is the marketing director of Essilor Canada Ltd (the «licensee») a licensee of the Opponent since July 7, 1995. The Opponent manufactures and distributes ophthalmic lenses and lenses for eyeglasses. The licensee distributes, in Canada, products bearing the trade-mark CRIZAL. The Opponent controls the quality and the characteristics of the products sold in association with the trade-mark ESSILOR. Essilor Canada completes the manufacturing process of the products in Canada by applying the treatment CRIZAL on the ophthalmic lenses and lenses for eyeglasses conceived by the Opponent. Thereafter the lenses are sold in Canada in association with the trade-mark CRIZAL.
The sale figures in Canada of lenses sold in association with the trade-mark CRIZAL varies from approximately $4,3 million in 1995, to $19,25 million for the period between January and July 1999. Mr. Paris filed, as exhibit JP-1, a representative sample of lenses’ packaging sold in association with the trade-mark CRIZAL. Representative invoices issued by the licensee between March 1997 and January 1999 to Canadian opticians and eye care professionals were filed as exhibit JP-2. He filed, as exhibit JP-3, a sample of an advertisement and an information brochure on the ophthalmic lenses and lenses for eyeglasses sold in association with the trade-mark CRIZAL.
In paragraph 12 of his affidavit, he states that because of his years of experience in the field of eyeglasses, it appears to him that the trade-mark CRIZAL is a distinctive and well known trade-mark. Theses statements are conclusion in law to be determined by the Registrar from the evidence filed in the record. Therefore they constitute inadmissible evidence, excluded from the record.
The certificate of authenticity of registration number 423878 issued on February 25, 1994, confirms that the Opponent is the registered owner of the trade-mark CRIZAL in association with ophthalmic lenses and lenses for eyeglasses.
Mr. Hiebert is the Applicant’s vice-president since January 1996.The Applicant operates optical retail stores under the following trade names: Shorney’s Optical, Shopper’s Optical, Braddock Optical and Stewart N. King. King Optical began its operation in 1956 in Winnipeg. Currently the Applicant operates 85 retail stores across Canada under the various trade names listed above. The Opponent’s history is summarized on web pages filed as exhibit A to his affidavit. The Mark has been used in Canada since July 1997 in association with the Wares. Forty percent (40%) of the eyeglass lenses sold by the Applicant in its retail stores have been treated with CRYSTAL CLEAR lens coating. The Applicant sales of lenses with CRYSTAL CLEAR coating varied from $1,6 million for the period of July to December1997 to $5 million for the period of January 1999 to September 1999.
He alleges that the Mark is prominently displayed on point of purchase displays, signs, packaging and accompanying product inserts. Exhibit B to his affidavit is a sample package illustrating the use of the Mark on lens packaging. Exhibit C to his affidavit is a sample package insert on which appears the Mark. Exhibit D is a sample poster displayed in the King Optical stores showing the Mark. Exhibit E to his affidavit is sample advertising brochures and flyers that contain references to the Mark.
He alleges being aware of the Opponent trade-mark which would be pronounce «KRIZHALL». He is not aware of any instances of confusion between the trade marks CRIZAL and CRYSTAL CLEAR.
Ludmila Spaleny is an articling student at Bereskin & Parr, trade-marks agent for the Applicant. She was asked to visit a store where prescription lenses/glasses are sold and notice how the term CRIZAL would be pronounce by the sales staff. She visited one of such store in Toronto. After being offered a different product than the Opponent’s lenses sold under the trade-mark CRIZAL, she asked the salesperson if they would have the Opponent’s product and showed him a CRIZAL promotional brochure filed as Exhibit A to her affidavit. The salesperson pronounced CRIZAL as KRIZHA-AL. According to her such pronunciation did not sound like the term CRYSTAL that is allegedly pronounced KRISTL, in which the A is silent
The Opponent filed as reply evidence the affidavit of Catherine Bergeron an articling student at Robic, agents for the Opponent. She consulted “Le Petit Robert, Dictionnaire Alphabétique et Analogique de la Langue Française”, in order to determine how the words «CRISTAL» and «CRIZAL» would be pronounced in the French language. She filed pertinent extracts of such dictionary and concluded that the word CRISTAL is pronounced [kristal] while the coined word CRIZAL would be pronounced [krizal]. I shall discuss hereinafter the admissibility of the evidence filed by both parties on the pronunciation of the marks in issue.
The legal burden is upon the Applicant to show that its application complies with the provisions of Section 30 of the Act, but there is however an initial evidential burden on the Opponent to establish the facts relied upon by it in support of such grounds of opposition. Once this initial burden is met, the burden shifts to the Applicant who must prove that the particular grounds of opposition should not prevent the registration of the Mark. [See Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330; and John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R. (3d) 293]
There has been no evidence adduced by the Opponent with respect to the grounds of opposition a), c) ii and d) ii and iii described above and therefore such grounds of opposition are dismissed.
The material time for considering the issue of non-entitlement based on Subsection 16(3) of the Act is the filing date of the application (May 13, 1997) [Section 16 of the Act]. The material date for assessing the issue of distinctiveness is generally accepted to be the date of filing of the opposition (September 30, 1998) while registrability under 12(1)(d) must be assess as of the date of the Registrar’s decision. [See 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) 413 at 424 (F.C.A) ]
Section 12(1)(d) ground of opposition
I shall now examine the issue of confusion of the Mark with the Opponent’s registered trade-mark. The burden of proof lies on the Applicant who must convince the Registrar, on the balance of probabilities, that there is no likelihood of confusion between the Mark and the Opponent’s trade-mark at the abovementioned relevant dates. [See Sunshine Biscuits Inc. c. Corporate Foods Ltd. (1982), 61 C.P.R. (2d) 53 and Christian Dior, S.A. v. Dion Neckwear Ltd [2002] 3 C.F.405]
In order to determine whether trade-marks are confusing, section 6(5) of the Act lists some of the surrounding circumstances that the Registrar must consider:
i) The inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
ii) The length of time the trade-marks or trade names have been in use;
iii) The nature of the wares, services, or business;
iv) The nature of the trade; and
v) The degree of resemblance between the trade-marks or trade-names in appearance, or sound or any ideas suggested by them.
It has been established that the criteria listed in section 6(5) of the Act are not exhaustive and it is not necessary to give each one of them equal weight [See Clorox Co. v. Sears Canada Inc. (1992), 41 C.P.R.(3d) 483 (F.C.T.D.) and Gainers Inc. v. Marchildon (1996), 66 C.P.R.(3d) 308 (F.C.T.D.)]. Mr. Justice Cattanach describe the test of confusion in the following words in Canadian Schenley Distilleries Ltd. v. Canada’s Manitoba Distillery Ltd. (1975), 25 C.P.R. (2d) 1:
«To determine whether two trade marks are confusing one with the other it is the persons who are likely to buy the wares who are to be considered, that is those persons who normally comprise the market, the ultimate consumer. That does not mean a rash, careless or unobservant purchaser on the one hand, nor on the other does it mean a person of higher education, one possessed of expert qualifications. It is the probability of the average person endowed with average intelligence acting with ordinary caution being deceived that is the criterion and to measure that probability of confusion the Registrar of Trade Marks or the Judge must assess the normal attitudes and reactions of such persons.
In considering the similarity of trade marks it has been held repeatedly that it is not the proper approach to set the marks side by side and to critically analyze them for points of similarities and differences, but rather to determine the matter in a general way as a question of first impression. I therefore propose to examine the two marks here in dispute not for the purpose of determining similarities and differences but rather to assess the attitude of the average reasonable purchaser of the wares as a matter of first impression.»
The test has been also enunciated in the following terms by Mr. Justice Décary in Miss Universe Inc. v. Bohna (1994), [1995] 1 F.C. 613 (F.C.A.):
«To decide whether the use of a trade-mark or of a trade-name causes confusion with another trade-mark or another trade-name, the Court must ask itself whether, as a matter of first impression on the minds of an ordinary person having a vague recollection of that other mark or name5*ftnote5 See Coca-Cola Co. v. Pepsi-Cola Co. (1942), 2 D.L.R. 657 (P.C.), at p. 661, Lord Russell of Killowen. , the use of both marks or names in the same area in the same manner is likely to lead to the inference that the services associated with those marks or names are performed by the same person, whether or not the services are of the same general class.»
I shall therefore apply these principles to the evidence filed in the record by the parties.
i inherent distinctiveness
The parties agree that the Opponent’s registered trade-mark, being a coined word not found in either official language, has a greater measure of inherent distinctiveness than the Mark.
ii length of time the trade-marks have been in use
The Opponent, at the time of filing of the application, alleged to have used in Canada its trade-mark CRIZAL since July 1995. The Applicant based its application on proposed use but Mr. Hiebert in his affidavit alleged use in Canada of the Mark since July 1st, 1997.
The Applicant argues that the evidence filed by the Opponent to support the allegation of use of its mark CRIZAL doesn’t constitute proper evidence of use within the meaning of the Act. A sample of a packaging was filed as Exhibit JP-1 to substantiate the allegation of use of the Opponent’s mark CRIZAL. The packaging contains the following inscription ESSILOR CRIZAL ® and has a bar code label, which has, in small prints, the following inscription: orma 15 crizal. The test on composite mark has been set out by Mr. Justice Pratte in Registrar of Trade Marks v. CII Honeywell Bull, [1985] 1 F.C. 406, at 408 in the following terms:
“The problem to be resolved is not whether CII deceived the public as to the origin of its goods. It clearly did not. The real and only question is whether, by identifying its goods as it did, CII made use of its trade mark BULL. That question must be answered in the negative unless the mark was used in such a way that the mark did not lose its identity and remained recognizable in spite of the differences between the form in which it was registered and the form in which it was used. The practical test to be applied in order to resolve a case of this nature is to compare the trade mark as it is registered with the trade mark as it is used and determine whether the differences between these two marks are so unimportant that an unaware purchaser would be likely to infer that both, in spite of their differences, identify goods having the same origin.”
By applying such test, I conclude that the Opponent hasn’t filed any proper evidence of use of the mark CRIZAL. As such this criteria favours the Applicant. [Reference can also be made to Nightingale Interloc Ltd. v. Prodesign Ltd., (1984) 2 C.P.R. (3d) 535 at 540]
iii & iv nature of the wares and trade
The Applicant in its written submissions admits that the Wares are closely related to Opponent’s wares. The Applicant, however, argues that there is some difference in that the Applicant’s Wares consist of a coating applied to lenses, whereas the Opponent’s wares are lenses themselves. I’m not convince that this minute distinction would be sufficient to conclude that there exists a significant difference in the nature of the wares sold by the parties.
Finally the Applicant argues that the Wares are sold only in association with lenses and eyeglasses sold by the Applicant in its stores. I must refer to the description of the Wares contained in the application to determine if there is some overlap or potential overlap in the nature of the wares or trade.[See Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.); Miss Universe, Inc. v. Dale Bohna (1984), 58 C.P.R. (3d) 381 (F.C.A.)] As the description of the Wares doesn’t contain any such restriction, I conclude that there is a possibility of overlap in the nature of the trade.
v degree of resemblance
With respect to this criterion, Mr. Justice Cattanach stated in Beverly Bedding & Upholstery Co. v. Regal Bedding & Upholstery Ltd. (1980), 47 C.P.R. (2d) 145, conf. 60 C.P.R. (2d) 70:
“Realistically appraised it is the degree of resemblance between the trade-marks in appearance, sound or in ideas suggested by them that is the most crucial factor, in most instances, and is the dominant factor and other factors play a subservient role in the over-all surrounding circumstances.”
The marks in issue differ visually. The Applicant’s Mark contains the distinctive vowel “Y” while the Opponent’s trade-mark contains the distinctive letter “Z”. Moreover the Applicant’s Mark is form of two words known in the English language. The Applicant’s Mark consists of a coined word. Finally the Mark constitutes an English expression.
The Opponent argued at length how phonetically the marks in issue are close and referred to the evidence contained in Ms. Bergeron’s affidavit. The Applicant has challenged the admissibility of such evidence by arguing that Ms. Bergeron is not an expert in linguistic or pronunciation of words. I agree with the Applicant. Ms Bergeron hasn’t established herself as an expert in liguistic or pronunciation of words. The probative value of her affidavit is limited to her pronunciation of the marks in issue.
The Opponent further argues that I should refer to the dictionary’s extracts filed by Ms. Bergeron to conclude to the similarity in the pronunciation in French of the words CRIZAL and CRYSTAL. The Opponent relies on the case of Thorold Concrete Products Ltd.v. Registrar of Trade-marks, (1961) 37 C.P.R. 166 to support such contention. This case is easily distinguishable with the present situation. In Thorold, the Court referred to a dictionary to establish the meaning of an English word, not for its pronunciation. In any event being a coined word, the dictionary is of little assistance to establish the pronunciation of the word CRIZAL. Therefore the evidence in the record doesn’t enable me to conclude that there is a close similarity in the pronunciation in the French language between CRIZAL and CRYSTAL.
As an additional surrounding circumstance I have considered the fact that there has been no instances of confusion despite the co-existence of the marks in issue since July 1997. [Cornell Trading Ltd. v. Saan Stores Ltd 8C.P.R.(4th) 233 and Compulife Software inc v. CompuOffice Software inc (2001) 13 C.P.R.(4th) 117]
Taking into consideration all of the above surrounding circumstances, I conclude that the Applicant has discharged its onus to show, on the balance of probabilities, that the Mark, viewed as a whole, would not likely cause confusion with the Opponent’s trade-mark CRIZAL when used in association with the Wares. The Opponent’s ground of opposition b) described above is therefore dismissed.
Section 16 ground of opposition
The question of confusion between the Opponent’s trade-mark and the Applicant’s Mark is also the central issue with respect to grounds of opposition c)i) describe above except that, as discussed earlier, the relevant date for such ground of opposition is different from the critical date used under section 12(1)(d). Notwithstanding such difference, the result on the issue of entitlement to the registration of the Mark would have been identical to the one reached on the question of registrability of the Mark (Section 12(1)(d) of the Act). As an additional factor to dismiss such ground of opposition, I conclude that the Opponent failed to discharge its initial burden, under such ground of opposition, to prove use of the trade-mark CRIZAL at the date of filing of the application for the reasons outlined above. Therefore ground of opposition c)i) is also dismissed.
Lack of distinctiveness
Having concluded that the Mark is not confusing with the Opponent’s trade-mark, based on the evidence filed in the record, I conclude that the Mark is apt to distinguish the Wares from the Opponent’s wares sold in association with the trade-mark CRIZAL.
Therefore, having been delegated authority by the Registrar of Trade-marks by virtue of Section 63(3) of the Act, I reject the opposition filed by the Opponent against the Applicant’s application for the registration of the Mark, the whole pursuant to Subsection 38(8) of the Act.
DATED, IN MONTREAL, QUEBEC, THIS 15th DAY OF DECEMBER 2003.
Jean Carrière,
Trade-marks Opposition Board