LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 221
Date of Decision: 2010-12-20
IN THE MATTER OF AN OPPOSITION by Metalsmiths Master Architects of Jewelery Inc. to application No. 1,177,813 for the trade-mark M & Design in the name of Brilliant Jewelers/MJJ Inc.
File Record
[1] On May 13, 2003, Brilliant Jewelers/MJJ Inc. filed an application to register the trade-mark M & Design, illustrated below, based on use of the mark in Canada since at least as early as September 30, 1999 in association with jewellery, and also based on use and registration of the mark in the United States of America, the applicant’s country of origin.
[2] The applicant claims April 7, 2003 as its priority filing date based on the filing date of its corresponding United States trade-mark application: see s.34 of the Trade-marks Act, R.S.C. 1985, c. T-13. The applicant submitted a certified copy of its United States trade-mark registration pursuant to s.31(1) of the Act.
[3] A trade-marks application Examiner with the Canadian Intellectual Property Office raised an objection that the applied for mark was confusing with the registered mark M & Design, shown below, for use in association with various types of jewellery and with the services of designing and selling jewellery.
[4] The applicant responded to the objection by providing the Examiner with a state of the trade-marks register search showing fifty-four marks, for use in association with jewellery, comprised primarily of the letter M, seven of which were comprised of the letter M enclosed within a circle. The applicant argued that (i) trade-marks which are comprised of one letter lack inherent distinctiveness and therefore should be allowed only a narrow ambit of protection, (ii) the owner of the cited registration does not own a monopoly on the letter M, and (iii) due to the visual differences between the cited mark and the applied for mark there should be no confusion in the marketplace. The applicant’s submissions were accepted and the subject application was advertised for opposition purposes in the Trade-marks Journal issue dated September 20, 2006.
[5] The application was opposed, on April 8, 2008, by Metalsmiths Master Architects of Jewelery Inc., the owner of the mark M & Design initially cited by the Examiner. I note in passing that the delay from advertisement to opposition is attributable to the opponent receiving several extensions of time to oppose, with the consent of the applicant. The Registrar forwarded a copy of the statement of opposition to the applicant on May 9, 2008, as required by s.38(5) of the Act. The applicant responded by filing and serving a counter statement generally denying the allegations in the statement of opposition.
[6] The opponent’s evidence consists of the affidavit of John Konidas. The applicant elected not to file any evidence. Neither party submitted a written argument and neither party responded to the Registrar’s notice, dated December 3, 2009, advising the parties that an oral hearing may be requested.
Grounds of Opposition
[7] The first ground of opposition, pursuant to s.12(1)(d), alleges that the applied for mark is not registrable because it is confusing with the opponent’s trade-name and registered trade-mark M & Design, illustrated earlier, used in association with:
wares
(1) jewelry, (2) costume jewelry, (3) precious metal and non-precious and semi-precious gemstones, (4) jewelry with and without precious and semi-precious gemstones, (5) precious gemstones, (6) semi-precious gemstones, (7) jewelry, namely rings, hair ornaments, earrings, bracelets, bangles, bands, necklaces, pendants, pins, brooches and body jewelry, (8) jewelry, namely sterling silver jewelry, (9) items of jewelry incorporating precious or semi-precious stones, (10) watches, (11) beads, (12) pearls,
services
(1) retail design, manufacture, sale, distribution and repair of jewelry, gemstones and related items, (2) custom manufacture of jewelry to customer specifications, (3) custom jewelry design, (4) jewelry repair, sizing and restoration, (5) repair of watches and watch accessories.
[8] The second ground of opposition, pursuant to s.30(i), alleges that the applicant could not have been satisfied as to its entitlement to use the applied for mark, as the applicant was aware or should have been aware of the opponent’s trade-name and trade-mark.
[9] The third ground, pursuant to s.16(1)(a), alleges that the applicant is not entitled to register the applied for mark, because “as of the filing date[sic] of the application,” the applied for mark was confusing with the opponent’s mark M & Design previously used or made know by the opponent in Canada.
[10] The third ground, above, incorrectly pleads the date of filing as the material date. The material date, as clearly set out in s.16(1), is the date of first use of the applied for mark, in this case September 30, 1999. I will treat the error in pleading as an inconsequential technicality.
[11] The fourth ground, also pursuant to s.30(i), alleges that the applicant could not have been satisfied as to its entitlement to use the applied for mark in view of the opponent’s prior use, adoption and registration of its mark M & Design.
[12] The fifth ground alleges that the applied for mark is not adapted to distinguish the applicant’s wares from those of the opponent, in view of the above pleadings.
Opponent’s Evidence
John Konidas
[13] Mr. Konidas identifies himself as Secretary of the opponent company. The opponent has been using its mark M & Design since July 2001 in association with the jewellery and retail services as listed in paragraph 7 above. As of the date of his affidavit, that is, January 8, 2009, the opponent was operating 39 retail locations across Canada. The exhibit material attached to Mr. Konidas’ affidavit demonstrates how the opponent’s mark is displayed in its retail stores, on items of jewellery, hang tags, promotional material, wrapping and packaging. The opponent expends about $80,000 annually on product catalogues and about $20,000 annually on promotional mail-outs to advertise its wares and services under its mark M & Design.
Discussion of Grounds of Opposition
[14] With respect to the second and fourth grounds of opposition, the allegations pursuant to s.30(i) require a pleading of fraud, bad faith or violation of specific federal statutory provision on the part of the applicant: see, for example, Sapodilla Co. Ltd. v. Bristol‑Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.) at 155; Canada Post Corporation v. Registrar of Trade‑marks (1991), 40 C.P.R. (3d) 221. In the instant case, the pleadings themselves do not support a ground of opposition based on s.30(i) and neither is there any evidence of malfeasance on the part of the applicant. Therefore, the second and fourth grounds are rejected.
[15] The remaining grounds of opposition turn on the issue of confusion between the applied for mark M & Design and the opponent’s mark M & Design. The legal onus on the applicant is to show that there would be no reasonable likelihood of confusion, within the meaning of s.6(2) of the Act, shown below, between the applied for mark and the opponent’s mark:
The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares . . . associated with those trade-marks are manufactured . . . by the same person, whether or not the wares . . . are of the same general class.
[16] Thus, s.6(2) does not concern the confusion of the marks themselves, but confusion of goods from one source as being from another source. In the instant case, the question posed by s.6(2) is whether there would be confusion of jewellery emanating from the applicant as being jewellery sourced from the opponent.
Material Dates
[17] The material dates to assess the issue of confusion are (i) the date of decision, with respect to the ground of opposition alleging non-registrability: 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.); (ii) the date of first use as claimed in the subject application, in this case September 30, 1999, with respect to the ground of opposition alleging non-entitlement: see s.16(1) of the Trade-marks Act; (iii) the date of opposition, in this case, April 8, 2008, in respect of the ground alleging non-distinctiveness: see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.) and Clarco Communications Ltd. v. Sassy Publishers Inc. (1994), 54 C.P.R.(3d) 418 (F.C.T.D.).
Test for Confusion
[18] The test for confusion is one of first impression and imperfect recollection. Factors to be considered, in making an assessment as to whether two marks are confusing, are set out in s.6(5) of the Act: the inherent distinctiveness of the marks and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; the degree of resemblance in appearance or sound of the marks or in the ideas suggested by them. This list is not exhaustive; all relevant factors are to be considered. All factors do not necessarily have equal weight. The weight to be given to each depends on the circumstances: see Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 C.P.R.(3d) 308 (F.C.T.D.).
Consideration of s.6(5) Factors
[19] Neither mark in issue possesses a high degree of inherent distinctiveness as the dominant feature of each mark is the letter M. I infer from the evidence of record that the opponent’s mark had acquired some distinctiveness at the later material dates while there is no evidence indicating that the applied for mark had acquired any reputation in Canada at any material date. Thus, the first factor, which is a combination of inherent and acquired distinctiveness, favours the opponent at the two later material times. The length of time that the marks in issue have been in use favours neither party. In this regard, although the applicant’s claimed date of first use (September 30, 1999) is about two years earlier than the opponent’s date of first use (July 31, 2001), the applicant has not established any meaningful use of its mark. In such circumstances the applicant’s greater length of time of use of its mark is inconsequential.
[20] The applicant’s wares overlap with the opponent’s wares to a large extent and, in the absence of evidence to the contrary, I assume that the parties’ channels of trade would also overlap. Thus, the two latter factors favour the opponent, in the sense that it would be advantageous to the applicant to distinguish its wares and channels of trade from those of the opponent. As both parties’ marks are comprised primarily of the letter M, I find that there is a high degree of resemblance between the marks in issue in all respects. Again, the last factor is disadvantageous to the applicant.
[21] As the state of the trade-marks register search and the applicant’s arguments that were initially submitted to the Examiner were not filed as part of this opposition proceeding, I have not taken them into account. To do so would be prejudicial to the opponent.
[22] In view of the foregoing, I find that the applicant has not shown that, on a balance of probabilities, there is no reasonable likelihood of confusion between the applied for
mark and the opponent’s mark at the two later material dates. Accordingly, the application must be refused.
Disposition
[23] The application is refused. This decision has been made pursuant to a delegation of authority under s.63(3) of the Trade-marks Act.
___________________
Myer Herzig
Member
Trade-marks Opposition Board