IN THE MATTER OF AN OPPOSITION by 172674 Canada Inc. to Application No. 1,024,741 for the trade-mark METROPOLIS in the name of Holiday Group Inc./Groupe Holiday Inc.
Holiday Luggage (Canada) Inc./Bagages Holiday (Canada) Inc., now Holiday Group Inc./Groupe Holiday Inc., (the “Applicant”) filed an application to register the trade-mark METROPOLIS (the “Mark”) on August 4, 1999. The Mark has been applied for registration on the basis of proposed use in association with “luggage, attache cases, briefcases, portfolios, garment bags, boarding luggage, club bags, weekend bags, suitcases, carry-alls, back-packs, sports bags, handbags, purses, shaving kits (empty) and cosmetic bags (empty), fanny packs”.
The application was advertised for opposition purposes in the Trade-marks Journal of January 3, 2001. 3343031 Canada Inc. filed a statement of opposition on February 15, 2001. The grounds of opposition can be summarized as follows:
1. The application does not conform to the requirements of Section 30 of the Trade-marks Act (the “Act”) in that (a) the Applicant by itself did not intend to use the Mark in Canada pursuant to Section 30(e); and (b) the Applicant could not have been satisfied that it was entitled to use the Mark pursuant to Section 30(i) in view of the opponent’s prior rights identified in the statement of opposition.
2. The Mark is not registrable pursuant to Section 12(1)(d) since it is confusing with the opponent’s trade-mark METROPOLIS of Registration No. 331,120 for men's, women's and children's clothing.
3. The Applicant is not the person entitled to registration of the Mark pursuant to Section 16(3)(a) since, at the date of the application, the Mark was confusing with the trade-mark METROPOLIS previously used in Canada by the opponent and its predecessors-in-title in association with the wares identified in the above-mentioned registration as well as in association with “sacs fourre-tout, fourre-tout, sacs-tout, sacs à dos, sacs de sports ainsi que des services de vente au détail de vêtements et d’accessoires”.
4. The Mark is not distinctive and is not adapted to distinguish the Applicant’s wares from the opponent’s wares since it is confusing with the trade-mark METROPOLIS used in Canada by the opponent and its predecessors-in-title in association with the aforementioned wares and services.
The Applicant timely filed and served a counter statement. Both parties filed evidence, which I am analyzing hereafter. Neither party filed a written argument nor requested an oral hearing.
By letter of May 14, 2003, the Board was provided with copy of an assignment whereby 172674 Canada Inc. became the owner of all the rights, title and interest in and to the trade-mark METROPOLIS in April 2003. Therefore, the term “Opponent” shall be used throughout to refer to the entity that was the opponent at the relevant time.
Opponent’s evidence
The evidence consists of an affidavit of Antonio Raimondo, President of 3343031 Canada Inc., also doing business under the name Metropolis. The deponent has not been cross-examined.
Mr. Raimondo deposes that his company has been doing business in the manufacturing and retail sale of clothing and accessories for men, women and children since its incorporation date of February 3, 1997 and provides a certified copy of the Certificate of Incorporation (Exhibit P-1). He further declares that his company owns Registration No. 331,120 for the trade-mark METROPOLIS (the “Opponent’s Mark”) since June 25, 1997, which is confirmed by the Certificate of Authenticity of the registration (Exhibit P-2) The trade-mark is registered in association with “men's, women's and children's clothing, namely: pants, sweaters, smocks, shirts, dresses, t-shirts, jumpsuits, tunics, skirts, jackets, shorts, track jackets, bathing suits, blazers, saris, caftans, ponchos, ski jackets and pants, coats, overcoats and underwear”.
Mr. Raimondo deposes that since at least as early as June 25, 1997, his company has used the Opponent’s Mark in association with men's, women's and children's clothing, namely: pants, sweaters, smocks, shirts, dresses, t-shirts, jumpsuits, tunics, skirts, jackets, shorts, track jackets, bathing suits, blazers, saris, caftans, ponchos, ski jackets and pants, coats, overcoats and underwear, which correspond to the wares identified in the registration, as well as in association with backpacks and sports bags. Mr. Raimondo states that backpacks and sports bags are primarily sold during back to school period. I should note that throughout his affidavit, Mr. Raimondo testifies on the use of the Opponent’s Mark generally referring to the wares as “les Produits” (paragraph 9). Therefore, unless indicated otherwise, the term “Products” when used hereafter should be understood as a reference to all the aforementioned wares. I would add however that any ambiguity resulting from Mr. Raimondo’s general reference to “les Produits” in his affidavit will be resolved against the Opponent [see Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.)].
Mr. Raimondo also deposes that his company has used the Opponent’s Mark in association with “services de vente au detail de vêtements et accessoires” since at least as early as June 25, 1997 (paragraph 11). Mr. Raimondo provides the addresses of the retail stores in operation at the date of his affidavit (October 18, 2001), which amount to eleven stores located in the Province of Quebec. I note that Mr. Raimondo does not specify the accessories sold in the Opponent’s retail stores. I acknowledge that he refers to the sale of backpacks and sports bags, but he indicates that these are primarily sold during back to school period. In any event, given the vagueness of Mr. Raimondo’s statement and considering his affidavit in its entirety, I find that I am justified in concluding that the “accessoires” are clothing accessories.
The following exhibits are filed as representative specimens of use of the Opponent’s Mark in association with the Products and in association with retail store services since June 25, 1997: labels for the Products (P-3); photographs of the entry sign of three stores (P-4); photocopies of stores invoices for the years 1997 to 1999 (P-5); two plastic bags (P-6), one business card (P-7); and photographs of different Products bearing the Opponent’s Mark (P-8). I note that the invoices (Exhibit P-5) all relate to the sale of clothing and that the photographs (Exhibit P-8) show clothing articles that seem to be jersey, shirt and T-shirts.
Mr. Raimondo identifies Les Bagages Aero Luggage Inc. as one of the companies that manufactures the backpacks and sports bags according to the design and request of his company (paragraph 17). He provides copies of 1998 invoices from Les Bagages Aero Luggage Inc. with respect to backpacks and sports bags bearing the Opponent’s Mark (Exhibit P-9).
Mr. Raimondo deposes that the Products and services associated with the Opponent’s Mark are promoted though different means, especially advertisement in magazines, but mainly through the Merchants Association and the shopping centres where the METROPOLIS stores are located. In some instances, the publicity costs are included in the business leases. He provides specimens of advertisement in Via Mode, Nuit Magique and Journal Le Local T’Informe (Exhibit P-10) as well as specimens of print advertisements for the years 1999 to 2001 with copies of the corresponding invoices (Exhibit P-11). These specimens, which all display the Opponent’s Mark, consist of discount coupons redeemable in the METROPOLIS stores and of photographs of models wearing clothing.
According to the yearly breakdown provided by Mr. Raimondo, his company has spent an approximate amount of $335,000 for advertising the Products and the METROPOLIS stores associated with the Opponent’s Mark from 1997 to 2000. The approximate sale revenues of the METROPOLIS stores have amounted to more than 48 million dollars for the same period. As Mr. Raimondo declares that the Products represent approximately 30% of the clothing and accessories sold in the METROPOLIS stores, I conclude that the sales value of Products associated with the Opponent’s Mark would have been approximately 14,4 million dollars from 1997 to 2000, although the value of sales of specific wares is unknown. Given Mr. Raimondo’s affidavit, I believe I may reasonably conclude that most of the wares sold in association with the Opponent’s Mark are articles of clothing. Mr. Raimondo states that the Products associated with the Mark are and have always been sold in the METROPOLIS stores.
Applicant’s evidence
The Applicant’s evidence consists of affidavits of Fred Fitzhugh and of Katherine Guillemette. None of the deponents has been cross-examined.
Affidavit of Fred Fitzhugh
Mr. Fitzhugh, Vice-President of the Applicant, deposes that use of the Mark in Canada in association with luggage commenced in the fall of 1999 when the Mark first appeared in the Applicant’s price lists “…but no product sales may have been made in 1999”. The Canadian sales of luggage associated with the Mark were in excess of $100,000 in 2000 and in excess of $36,000 in 2001. The luggage associated with the Mark was promoted at the Canadian Luggage & Leathergoods Show held in Toronto in April 2000. A brochure distributed at the Show is attached as Exhibit A. A representative selection of invoices for the sales of luggage associated with the Mark is attached as Exhibit B. I note that these invoices have been issued in 2000 and 2001 to customers, whose names have been blacked out as confidential information, domiciled in the provinces of Quebec, Ontario, Alberta, and British Columbia. Mr. Fitzhugh also provides a copy of a sample hangtag (Exhibit C) and copy of the product knowledge literature (Exhibit D) accompanying each of the luggage items sold in Canada. Both exhibits display the Mark.
Affidavit of Katherine Guillemette
Ms. Guillemette is a Trade-Mark Assistant employed by the Applicant’s trade-mark agents. She introduces as evidence extracts from the website “www.metropolis-clothing.com” that she accessed on May 15, 2002 (Exhibit A), as well as Canada 411 and Yellow Pages Internet searches with respect to telephone listings for Metro (Exhibit B). She deposes that Metro Sportswear Ltd. has been located by both searches. She also introduces as evidence copies of six registrations and of one application for trade marks involving the term METRO, which she obtained on May 15 2002 from the Strategis database maintained over the Internet by the Canadian intellectual Property Office (Exhibit C). I note that the Applicant did not make any submissions as to what it is trying to establish with this evidence but, as discussed hereafter, I do not ascribe any significant impact to said evidence.
While Exhibit A may prove that the site existed on the World Wide Web on May 15, 2002, it does by no means prove that the site relates to an entity operating in Canada. In fact, there is a mention that it is possible to order from the site in either British Pounds or U.S. Dollars. Moreover, there is no evidence as to the extent to which Canadians have accessed the site. With respect to Exhibit B, Ms. Guillemette did not provide any information on the content of the on-line sources consulted and her reference to the third party Metro Sportswear Ltd. remains unexplained. Even if I was to not question the reliability of the on-line sources, there is no evidence that any of the entities was then, or is still, in operation nor is there evidence that any of these entities uses its name as a trade-mark or trade-name. Finally, since Exhibit C is seemingly filed as state of the register evidence, I note that said evidence is relevant only to the extent that inferences can be drawn from it concerning the state of the market [Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432 (T.M.O.B.); Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R. (3d) 205 (F.C.T.D.)]. Given the small number of registrations, I do not consider that inferences concerning the state of the market can be drawn from this evidence [Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.)].
I will now consider the different grounds of opposition. While the ultimate legal burden is always upon the Applicant, there is an initial evidential 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.); Dion Neckwear Ltd. v. Christian Dior, S.A. (2002), 20 C.P.R. (4th) 155 (F.C.A.)].
Section 30
The material date for considering the circumstances with respect to the grounds of opposition based upon non-conformity to Section 30 is the filing date of the application [see Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 (T.M.O.B.)]. Since it is difficult to prove a negative, and certainly more so in a case of a proposed use application, the initial burden upon the Opponent with respect to the ground of opposition based upon non-compliance with Section 30(e) is a relatively light one [see Molson Canada v. Anheuser-Busch Inc., (2003) 29 C.P.R. (4th) 315 (F.C.T.D)]. While the Opponent may rely upon the Applicant’s evidence to meet its initial burden, the Opponent must show that the Applicant’s evidence is “clearly” inconsistent with the Applicant’s claim [see York Barbell Holdings Ltd. v. ICON Health & Fitness, Inc. (2001), 13 C.P.R. (4th) 156 (T.M.O.B.)].
The Opponent failed to include any allegations of fact in support of its contention that the Applicant by itself did not intend to use the Mark. Even if it had, however, there is no evidence of record on which the Opponent may rely to establish that the statement that the Applicant by itself intended to use the Mark is not true. I therefore dismiss the ground of opposition based upon non-conformity to Section 30(e).
As for the ground of opposition based upon non-conformity to Section 30(i), the Opponent has essentially alleged that the Applicant falsely made the statement in view of the Opponent’s prior rights identified in the statement of opposition. Presumably, the Opponent meant to allege that the Applicant was aware of the Opponent’s Mark, but there is no evidence of record on which the Opponent may rely to establish that the Applicant was aware of the Opponent’s Mark. Moreover, even if it had been established that the Applicant was aware of Opponent’s Mark, that fact alone would not have precluded it from truthfully making the statement required by Section 30(i). Thus, this ground of opposition is unsuccessful.
Section 12(1)(d)
The material date for considering the issue of confusion pursuant to Section 12(1)(d) is the date of my decision [see Park Avenue Furniture Corp v. Wickers/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.)]. Since the Opponent has met its burden by filing the Certificate of Authenticity of Registration No. 331,120 for the trade-mark METROPOLIS, the burden of proof lies on the Applicant to convince the Registrar, on a balance of probabilities, that there is no reasonable likelihood of confusion between the trade-marks. In Wrangler Apparel Corp. v. The Timberland Company (2005) FC 722 (F.C.T.D), Mr. Justice Snider made the following comments with respect to the balance of probabilities:
“Applying a burden of balance of probabilities requires a weighing of evidence or a series of findings. Where one side bears the burden, the result of this measurement of the evidence must be that the scale upon which the weighing is done tips in favour of the party bearing the burden. In this case, with respect to the use of TIMBER CREEK BY WRANGLER for clothing, the balance favoured the Applicant and the Registrar concludes that the Respondent's marks were not confusing with the Respondent's trade-mark and trade-name.
However, if the scale is tipped toward the opposing party or is completely balanced, the burden will not be satisfied. If the Registrar, after carefully analyzing each relevant factor, concludes that the probabilities are equally balanced, the applicant will lose.”
It has been held repeatedly that in determining whether trade-marks are confusing, the test to be applied is one of first impression and imperfect recollection. In assessing whether there would be any reasonable likelihood of confusion between the trade-marks in question, within the scope of Section 6(2), factors to be considered are set out at Section 6(5) as: the inherent distinctiveness of the trade-marks and the extent to which they have become known; the length of time the trade-marks have been in use; the nature of the wares, services or business; the nature of the trade; and the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. These factors need not be given equal weight. All the factors listed at Section 6(5) are not exhaustive since all the surrounding circumstances have to be considered. The weight to be given to each relevant factor may vary, depending on the circumstances [see Clorox Co. v. Sears Canada Inc. (1992), 41 C.P.R. (3d) 483 (F.C.T.D.); Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 C.P.R. (3d) 308 (F.C.T.D.)].
Although the word METROPOLIS is a common English word, it has no connotation with the parties’ wares and as such each trade-mark has a certain degree of inherent distinctiveness. While there has been use of each party’s trade-mark in Canada, in view of the significant sales of clothing associated with the Opponent’s Mark, an overall consideration of the inherent distinctiveness and of the extent to which the trade-marks have become known favours the Opponent.
The length of time the trade-marks have been in use as well as the degree of resemblance between the trade-marks in appearance, sound, and the ideas suggested all favour the Opponent.
In considering the nature of the wares and the nature of the trade, it is the statement of wares in the application and the statement of wares in the registration that govern the assessment of the likelihood of confusion under Section 12(1)(d) [see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.); Miss Universe, Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.)]. However, those statements must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trade that might be encompassed by the wording. Evidence of the actual trades of the parties is particularly useful where there is ambiguity as to the wares or services covered by the application or registration at issue [see McDonald’s Corporation v. Coffee Hut Stores Ltd. (1996), 68 C.P.R. (3d) 168 (F.C.A.)].
In so far as the nature of the wares is concerned, I find that the articles of clothing identified in the registration differ from the wares identified in the application. While the wares of the parties do differ, I am of the view that the Applicant’s handbags and purses could be considered as clothing accessories. Since clothing accessories overlap with clothing, I conclude that there could be an overlap between the Applicant’s handbags and purses and the articles of clothing identified in the registration. There is no restriction with respect to the channels of trade associated with the Mark. Although Mr. Raimondo's evidence is that the Opponent sells its clothing through its own retail stores, the statement of wares does not restrict the marketing of the Opponent’s clothing to any particular channel of trade. Accordingly, for the purpose of determining the likelihood of confusion, I find that there is potential for overlap in the parties' channels of trade in respect of the Applicant’s wares handbags and purses.
In applying the test for confusion, I have considered it as a matter of first impression and imperfect recollection. Despite the similarities between the trade-marks, I find that the balance of probabilities tips in favour of the Applicant when considering the wares “luggage, attache cases, briefcases, portfolios, garment bags, boarding luggage, club bags, weekend bags, suitcases, carry-alls, back-packs, sports bags, shaving kits (empty) and cosmetic bags (empty), fanny packs”. Therefore, I am satisfied that the Applicant has discharged it burden to prove that there is no reasonable likelihood of confusion between the Mark in association with these wares and the trade-mark METROPOLIS of Registration No. 331,120. However, I find that the balance of probabilities is evenly balanced between a finding of confusion and a finding of no confusion when considering the wares “handbags, purses”. As the onus is on the Applicant to establish on a balance of probabilities that the Mark is not confusing with the registered trade-mark, I must decide against the Applicant and I therefore find that the Section 12(1)(d) ground of opposition is successful with respect to the wares “handbags, purses” [see Produits Menager Coronet Inc. v. Coronet-Werke Heinrich Schlerf Gmbh (1986), 10 C.P.R. (3d) 492 (F.C.D.T.) as authority for a split decision].
Non-entitlement
The relevant date in assessing the risk of confusion between the Mark and the Opponent’s Mark in support of the ground of opposition based upon Section 16(3)(a) is the date on which the application for registration was filed, i.e. August 4, 1999. Despite the onus of proof on the Applicant to establish, on a balance of probabilities, that there is no risk of confusion, the Opponent has the initial onus of proving that its trade-mark was being used at the relevant date and that use had not been abandoned at the date of advertisement of the application, i.e. January 3, 2001 [Section 16(5)].
I am satisfied that the Opponent has discharged its initial onus of proving prior use and non-abandonment of its trade-mark in association with clothing as well as in association with the retail sale of clothing and accessories. Insofar as the wares “sacs fourre-tout, fourre-tout, sacs-tout, sacs à dos, sacs de sports” are concerned, I note that the Opponent’s evidence deals only with backpacks (“sacs à dos”) and sports bags (“sacs de sports”). Mr. Raimondo has testified that the Opponent’s Mark has been used in association with backpacks and sports bags since at least as early as June 25, 1987. Further, he has provided labels (Exhibit B) testifying that they are representatives of the labels affixed on the Products since at least as early as June 25, 1987. In addition, Exhibit 9, which evidences that backpacks and sports bags bearing the Opponent’s Mark were manufactured for the Opponent in 1998, is consistent with Mr. Raimondo’s testimony. As Mr. Raimondo was not cross-examined on his affidavit, his testimony is not contradicted and must be taken at face value. I therefore find that the Opponent has discharged its initial onus of proving prior use and non-abandonment of its trade-mark in association with backpacks and sports bags only.
An overall consideration of the inherent distinctiveness and of the extent to which the trade-marks have become known favours the Opponent when considering the clothing and the retail store services associated with the Opponent’s Mark. However, in the absence of evidence with respect to the level of sales of its backpacks and sports bags, an overall consideration of the inherent distinctiveness and of the extent to which the trade-marks have become known does not favour the Opponent insofar as these wares are concerned.
The length of time the trade-marks have been in use as well as the degree of resemblance between the trade-marks in appearance, sound, and the ideas suggested all favour the Opponent.
Considering the nature of the wares, I have previously found that there could be an overlap between “handbags” and “purses” and articles of clothing and that there is potential for overlap in the parties' channels of trade with respect to these wares. The Applicant’s wares “back-packs” and “sports bags” are identical to the Opponent’s wares. Further, the Applicant’s wares “luggage, attache cases, briefcases, portfolios, garment bags, boarding luggage, club bags, weekend bags, suitcases, carry-alls, shaving kits (empty) and cosmetic bags (empty), fanny packs” are somewhat related to backpacks and sports bags. Although there is no evidence that the applicant intends to sell its wares through the same channels of trade as the Opponent's wares, there is nothing in the statement of wares that would prevent the Applicant from doing so. Therefore, the parties’ channels of trade could overlap.
In applying the test for confusion, I have considered it as a matter of first impression and imperfect recollection. I find that the Applicant has not discharged its burden of showing, on a balance of probabilities, that the Mark is not confusing with the Opponent’s Mark. I therefore accept the ground of opposition based upon non-entitlement pursuant to Section 16(3)(a).
Non-distinctiveness
The material date with respect to the last ground of opposition has been generally accepted as the date of filing of the statement of opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)]. Once the Opponent has met its initial burden to establish the facts relied upon in support of this ground of opposition, the legal onus is on the Applicant to show that the Mark is adapted to distinguish or actually distinguishes its wares 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.)].
The main issue in assessing the last ground of opposition is the likelihood of confusion between the Mark and the Opponent’s Mark. I am satisfied that the Opponent’s evidence is sufficient to demonstrate that, at the time of the statement of opposition, its trade-mark in association with clothing and the retail sale of clothing and accessories had become known sufficiently to negate the distinctiveness of the Mark in association with handbags and purses. However, I am not satisfied that the evidence is sufficient to demonstrate that, at the time of the statement of opposition, the Opponent’s Mark in association with backpacks and sports bags had become known sufficiently to negate the distinctiveness of the Mark in association with the other wares identified in the application, i.e. luggage, attache cases, briefcases, portfolios, garment bags, boarding luggage, club bags, weekend bags, suitcases, carry-alls, back-packs, sports bags, shaving kits (empty) and cosmetic bags (empty), fanny packs.
Accordingly, for reasons similar to those set out above with respect to the Section 12(1)(d) ground of opposition, I find that this ground of opposition succeeds with respect to the wares “handbags, purses”.
Conclusion
Having regard to the foregoing, and with the authority delegated to me under Section 63(3) of the Act, I reject the application to register the Mark pursuant to Section 38(8) of the Act.
DATED AT BOUCHERVILLE, QUEBEC, THIS 7th DAY OF SEPTEMBER 2005.
Céline Tremblay
Member
Trade-marks Opposition Board