IN THE MATTER OF AN OPPOSITION
by Intergold Limited to application No. 844,687
for the trade-mark Commerce Ring Design
filed by Cameron Doherty
On May 12, 1997, the applicant, Cameron Doherty, filed an application to register the trade-mark Commerce Ring Design (shown below) for “commerce rings.” The description of the trade-mark is as follows:
The trade-mark is shown in the attached drawing. The representation of the ring shown in the dotted outline does not form part of the trade-mark.
The application is based on use of the mark in Canada since March 1, 1989. The application was advertised for opposition purposes on November 5, 1997.
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The opponent, Intergold Limited (“Intergold”), filed a statement of opposition on January 6, 1998, a copy of which was forwarded to the applicant on February 20, 1998. The first ground of opposition is that the applicant’s application is not in conformance with the provisions of Section 30(b) of the Trade-marks Act (“the Act”) because the applicant has not used the applied for trade-mark in Canada since the date of first use claimed. The second ground of opposition appears under the heading “Trade-mark is not registrable” and reads as follows:
The mark is not in compliance with the Act as the mark is purely ornamental and does not meet the definition of a trade-mark under the Act.
The third ground of opposition is that the applicant’s trade-mark is not registrable pursuant to Section 12(1)(d) of the Act because it is confusing with an unspecified registered trade-mark of the opponent. The fourth ground reads as follows:
The applicant is not the person entitled to registration of the trade mark in that, contrary to Section 16 of the Act, at the date of application therefor the trade mark was confusing with the opponents [sic] trade mark comprising of [sic] the same design mark used continuously and made known in Canada by the opponent or by his [sic] predecessor in title since the date of first usage [sic] alleged in the application.
The fifth ground of opposition reads as follows:
The applicant is not entitled to register the mark as applied for herein as the opponent is the lawful and rightful owner of a copyright on the proposed mark.
The sixth ground is that the applicant’s trade-mark is not distinctive because it has been used by the opponent and others.
The applicant filed and served a counter statement. As its evidence, the opponent submitted an affidavit of its President, Miran Armutlu. As his evidence, the applicant submitted an affidavit of Thomas Cameron Doherty. As evidence in reply, the opponent submitted a second affidavit of Miran Armutlu. Mr. Armutlu was cross-examined on his two affidavits and the transcript of that cross-examination forms part of the record of this proceeding. Only the opponent filed a written argument and no oral hearing was conducted.
The Evidence
In his affidavit, Mr. Doherty states that he alone designed the ring which bears the trade-mark which is the subject of the present application. He states that he designed the ring in December of 1987 and had a jeweller make a mold of the ring and two rings from that mold. He then approached Intergold in the winter of 1988/89 in his capacity as President of his company, Commerce Ring Company Ltd. (“CRC”) (which later changed its name to Thomas Cameron Corporation (“TCC”)), to engage their services in the manufacturing of the ring he had designed. Mr. Doherty states that he asked Intergold to copy the design already used by the other jeweller.
In support of his contention that he was the sole designer and creator of the commerce ring, Mr. Doherty appended as an exhibit to his affidavit copies of invoices from the first jeweller for making the master ring and mold. Also appended as an exhibit to his affidavit is a copy of a Canadian industrial design registration dated August 29, 1989 in his name covering the design of the commerce ring.
In his affidavits, Mr. Armutlu asserts that Mr. Doherty approached Intergold in his capacity as President of CRC (now TCC) with a view to jointly developing a design for a commerce or morality ring. Mr. Armutlu claims that he, other Intergold employees and Mr. Doherty jointly worked on various design changes to the ring. He contends that there was an informal partnership between the parties based on an oral agreement that Intergold would
absorb most of the costs of producing the ring but that both parties would share ownership in any intellectual property rights.
Having reviewed the affidavits of record and the transcript of the Armutlu cross-examination, I find that Mr. Doherty’s evidence is more reliable and more credible. The opponent’s evidence is lacking in any written or physical evidence to confirm Mr. Armutlu’s characterization of the relationship between the parties as a partnership. In contrast, Exhibit G to the Doherty affidavit comprises photocopies of invoices from Intergold to CRC dated May 12 and August 15, 1989 charging for molds and rings. Also of note are the invoices comprising Exhibit 1 to the Armutlu cross-examination for the period 1991-1992 evidencing numerous sales of commerce rings to CRC. Such invoices are more consistent with CRC’s (and later TCC’s) status as an Intergold customer than as an Intergold partner.
Mr. Armutlu relied on the fact that Intergold cut at least three separate dies for the commerce ring to support his contention that Intergold was jointly involved in the design of the ring. However, as noted by Mr. Doherty, different dies were cut simply for different sized versions of the ring, not as a consequence of any design changes (see paragraph 9 of the Doherty affidavit).
Mr. Armutlu stated that when the rings were manufactured by Intergold, they were marked on the inside with one of his company’s registered trade-marks, either INTERGOLD or KAPO. Later on, at the direction of Mr. Doherty, they were marked with the mark TC CORP. The marks were engraved in very small letters next to a carat indicator. Mr. Armutlu sought to rely on these markings as evidencing use of the respective trade-marks although it appears that they were primarily (if not exclusively) used for the purposes of complying with the Precious Metals Marking Act.
During the cross-examination of Mr. Armutlu, he was somewhat vague and evasive on several points. For example, he didn’t know what prices were charged for the ring and he didn’t know how many sales there had been. He also couldn’t remember the particulars of the alleged collaborations with Mr. Doherty as to various supposed design changes. Further, he couldn’t explain why Intergold took no action against Mr. Doherty or his company in 1994 after having viewed TCC’s sales and marketing presentation which claimed ownership in the design of the commerce ring.
Exhibits 2, 3 and 4 to the Armutlu cross-examination are copies of documents relating to an action in the Court of Queens Bench of Alberta between the parties in which Intergold was apparently seeking payment of a debt owed to it by TCC for unpaid rings. Again, this material is more consistent with TCC’s status as a customer of Intergold’s rather than as a partner.
In view of the above, I find, on a balance of probabilities, that the commerce ring design was the creation of the applicant, Mr. Doherty. The opponent was engaged by Mr. Doherty’s company to manufacture the ring but did not significantly contribute to the design nor did it acquire any rights in or to the design. On the other hand, there is no evidence of sales of the ring to any customers. More importantly, there is no evidence that the applicant or his company promoted the ring design as a trade-mark or a distinguishing guise to the consuming public.
The Grounds of Opposition
Initially, it should be noted that the third ground does not constitute a proper ground of opposition. The opponent failed to identify its registered trade-mark and thus failed to meet the requirements of Section 38(3)(a) of the Act. Thus, the third ground is unsuccessful.
It should also be noted that the fourth ground does not raise a proper ground of prior entitlement pursuant to the provisions of Section 16(1)(a) of the Act. The opponent did not allege use or making known of a confusing mark by itself prior to the applicant’s claimed date of first use. Thus, the fourth ground is also unsuccessful.
Finally, it should be noted that the fifth ground does not raise a proper ground of prior entitlement . The ownership of copyright in a design by the opponent does not support a ground of opposition pursuant to the provisions of Section 16(1) of the Act. Such an allegation might have supported a ground of non-conformance with Section 30(i) of the Act but no such ground was pleaded. Thus, the fifth ground is also unsuccessful.
The second ground of opposition appears to have two aspects, namely (1) that the applied for mark is a distinguishing guise and the applicant has not met the requirements for
registration for such a mark or (2) that the applied for mark is functional in the sense of being purely ornamental and therefore does not qualify as a trade-mark.
The first aspect of the opponent’s second ground of opposition is that the applied for mark is not an ordinary trade-mark but rather is a distinguishing guise and therefore subject to the additional requirements set forth in Sections 13 and 32 of the Act. Section 2 of the Act defines a distinguishing guise as including the shaping of wares. This definition can be taken to include the shaping of a part of the wares.
In the present case, the applied for mark is clearly a shaping of a part of the wares. The applied for three-dimensional design is the primary ornamental feature of the applicant’s ring. As discussed, the ornamental nature of the applied for mark has been recognized by the applicant who has obtained an industrial design registration for it. Thus, I consider that the present application is for a distinguishing guise.
In view of the above, it was necessary for the applicant to provide evidence showing that its distinguishing guise had become distinctive in Canada as of the filing date of the present application. In this regard, Mr. Doherty failed to evidence any sales to consumers of the commerce ring at any date. Furthermore, there is little or no evidence of any advertising of the guise to the public. Finally, there is no evidence that Mr. Doherty or his company took any steps to educate the public as to the applied for mark’s status as a trade-mark or a distinguishing guise.
In view of the above, I find that the applicant failed to meet the requirements of Sections 13(1)(a) and 32(1) of the Act. Thus, the first aspect of the second ground of opposition is successful.
The second aspect of the second ground is in the alternative. In other words, assuming that the applied for trade-mark is not a distinguishing guise, does it qualify for registration as an ordinary trade-mark?
Where an applicant seeks registration of a three-dimensional mark as an ordinary trade-mark, the onus is on him to show that the mark is not primarily functional from either an ornamental or a utilitarian point of view. However, there is an initial burden on the opponent to adduce sufficient evidence tending to establish the primarily functional nature of the applicant’s mark.
In the present case, the evidence shows that the applied for mark is the ornamental portion of a ring. The ring was designed to appeal to a specific class of purchasers, namely commerce or business graduates. The applicant himself recognized the primarily ornamental nature of the ring by obtaining a Canadian industrial design registration for it. In their marketing materials (including the licensing proposal appended as Exhibit F to the Doherty affidavit), the applicant and TCC describe the design of the ring as a stylized “M” for the word “morality” which was intended to recognize business and commerce graduates. Reference is also made in such materials to the industrial design protection obtained by the applicant. However, no reference is made to the ring design as a trade-mark or distinguishing guise. In other words, the applicant and TCC apparently did nothing to notify the public of their claim to trade-mark rights in the ring design.
In view of the above, I find that the opponent has met the evidential burden on it respecting the second aspect of the second ground of opposition. The applicant’s mark appears to be primarily functional from an ornamental perspective and does not appear to have any existence separate and apart from its existence as part of the applicant’s ring. As stated by MacGuigan, J.A. at page 475 of the decision in Remington Rand Corp. v. Philips Electronics N.V. (1995), 64 C.P.R.(3d) 467 (F.C.A.):
If functionality goes either to the trade mark itself (Imperial Tobacco, and Parke, Davis) or to the wares (Elgin Handles), then it is essentially or primarily inconsistent with registration. However, if it is merely secondary or peripheral, like a telephone number with no essential connection with the wares, then it does not act as a bar to registration.
Since the applicant failed to meet the legal burden on him to show that the applied for mark is capable of functioning as an ordinary trade-mark, I find that the second aspect of the second ground is also successful.
As for the opponent's first ground of opposition, the onus or legal burden is on the applicant to show that his application conforms to the requirements of Section 30(b) of the Act: see the opposition decision in Joseph Seagram & Sons v. Seagram Real Estate (1984), 3 C.P.R.(3d) 325 at 329-330 and the decision in John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R.(3d) 293 (F.C.T.D.). There is, however, an evidential burden on the opponent respecting its allegations of fact in support of that ground. That burden is lighter respecting the issue of non-conformance with Section 30(b) of the Act: see the opposition decision in Tune Masters v. Mr. P's Mastertune (1986), 10 C.P.R.(3d) 84 at 89. Furthermore, Section 30(b) requires that there be continuous use of the applied for trade-mark in the normal course of trade since the date claimed: see Labatt Brewing Company Limited v. Benson & Hedges (Canada) Limited and Molson Breweries, a Partnership (1996), 67 C.P.R.(3d) 258 at 262 (F.C.T.D.). Finally, the opponent’s evidential burden can be met by reference to the applicant’s own evidence: see Labatt Brewing Company Limited v. Molson Breweries, a Partnership (1996), 68 C.P.R.(3d) 216 at 230 (F.C.T.D.).
The opponent’s evidence is primarily directed at establishing that the commerce ring was jointly designed by the applicant and the opponent. The opponent failed to make its case on this point. However, its evidence did raise some questions about the alleged use of the mark by the applicant. As discussed, the evidence of record suggests that the applied for three-dimensional mark is not a trade-mark at all, either an ordinary trade-mark or a distinguishing guise. Since the applicant failed to satisfy the legal burden on him to show that his applied for mark is a trade-mark, this supports the contention that there could not have been trade-mark use from March 1, 1989 on.
The evidence also suggests that, if there was any use of the applied for mark as a trade-mark, it was not use by the applicant. Any marketing of the commerce ring was apparently carried out by the applicant’s company rather than by the applicant himself. It appears that the intention was that CRC (later TCC) would also sell the rings.
In view of the above, I find that the opponent has met its evidential burden respecting the first ground of opposition. It was therefore incumbent on the applicant to evidence continuing use of his mark in Canada since the date claimed. The applicant failed to satisfy that burden. Thus, I find that the applicant has failed to satisfy the onus on it and the first ground is successful.
As for the sixth ground of opposition, the onus or legal burden is on the applicant to show that his mark is adapted to distinguish or actually distinguishes his 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.). However, as before, there is an initial burden on the opponent to prove its allegations of fact in support of this ground. The material time for considering the circumstances respecting this issue is as of the filing of the opposition (i.e. - January 6, 1998): 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.).
The opponent contends that the sale of rings bearing the marks KAPO and INTERGOLD engraved in tiny letters on the inside of the rings renders the applicant’s mark non-distinctive because it points to a source other than the applicant. However, as discussed, it appears that those marks were engraved on the rings merely to comply with the requirements of the Precious Metals Marking Act and that they did not (and perhaps could not) function to alert consumers that the design incorporated into the ring was a trade-mark, much less a trade-mark of the opponent. More importantly, the opponent has failed to evidence any sales of commerce rings to consumers, particularly any sales which identified the design of the ring as a trade-mark and associated that design with the opponent or any other party. Thus, the opponent has failed to satisfy its evidential burden and the sixth ground is unsuccessful.
In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I refuse the applicant’s application.
DATED AT GATINEAU, QUEBEC, THIS 17th DAY OF JULY, 2002.
David J. Martin,
Member,
Trade Marks Opposition Board.