LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2011 TMOB 235
Date of Decision: 2011-11-23
IN THE MATTER OF AN OPPOSITION by Head Technology GmbH to application No. 1,328,090 for the trade-mark STUNT HEADS & Design in the name of Jimmy Tees inc.
[1] On December 13, 2006, Jimmy Tees inc. (the Applicant) filed an application to register the trade-mark STUNT HEADS & Design (the Mark), which is shown below:
[2] The application covers the following wares:
(1) Men's clothing namely, shirts, sweaters, sweatshirts, sweatpants, jackets, ties, t-shirts, pants, shorts. Women's clothing namely shirts, sweaters, jackets, ties, t-shirts, pants, skirts, skorts, shorts, blouses, sweatshirts, sweatpants. Kid's clothing namely shirts, sweaters, jackets, ties, t-shirts, pants, skirts, skorts, shorts, blouses, sweatshirts, sweatpants. Adult and kid's footwear namely dress shoes, sport shoes, athletic shoes, socks. Men's women's and kid's headwear namely caps, hats, bandanas, headbands. Bags namely sport bags, backpacks. Snowboards, skateboards, Wakeboards, surfboards bicycles, roller blades. Protective sports gear namely helmets, mouth guards and pads. Outdoor sporting equipment, namely kayaks, canoes, snow skis, snowboards. Promotional stickers, labels. Promotional and marketing material namely, water bottles, tattoos, pens, pencils, magnets, license plates.
(2) Video games, board games, console games, theme park equipment namely swing
sets, ramps, jungle gyms, skateboard park equipment namely ramps, hurdles,
rails, barriers, mats. Water skis, ATV's, water sport tubes.
[3] The application is based on use of the Mark in Canada since January 12, 2001 in association with the wares (1) and proposed use in association with the wares (2).
[4] The application was advertised for opposition purposes in the Trade-marks Journal of June 25, 2008.
[5] On November 24, 2008, Head Technology GmbH (the Opponent) filed a statement of opposition against the application. The Opponent has pleaded grounds of opposition pursuant to s. 38(2)(a), (b), (c) and (d) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act).
[6] The Applicant filed and served a counter statement in which it denied the Opponent’s allegations.
[7] In support of its opposition, the Opponent filed affidavits of Klaus Hotter and Sharon O’Connor.
[8] In support of its application, the Applicant filed an affidavit of James Earl. The Opponent obtained an order for the cross-examination of Mr. Earl on his affidavit but did not proceed with a cross-examination.
[9] In reply to the Applicant’s evidence, the Opponent filed the affidavits of Jason Figueiredo and Malgorzata Gortat.
[10] Both parties filed written arguments. An oral hearing was not requested.
Onus
[11] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, 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 Limited v. The Molson Companies Limited (1990), 30 C.P.R. (3d) 293 (F.C.T.D.) at 298].
Section 38(2)(a)/30(b) Ground of Opposition
[12] The Opponent has pleaded that the application does not comply with s. 30(b) of the Act in that the Applicant has not used the Mark in Canada for the wares (1) since January 12, 2001.
[13] There is an initial evidential burden on the Opponent respecting the issue of the Applicant's non-compliance with s. 30(b). 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]. However, while the Opponent may rely upon the Applicant’s evidence to meet its evidential burden in relation to this ground, the Opponent must show that the Applicant’s evidence is clearly inconsistent with the Applicant’s claims as set forth in its application [see Ivy Lea Shirt Co. v. 1227624 Ontario Ltd. (1999), 2 C.P.R. (4th) 562 at 565-6 (T.M.O.B.), affirmed 11 C.P.R. (4th) 489 (F.C.T.D.)]. In addition, s. 30(b) requires that there be continuous use of the applied for trade-mark in the normal course of trade from the date claimed to the material date [see Labatt Brewing Co. v. Benson & Hedges (Canada) Ltd. (1996), 67 C.P.R. (3d) 258 (F.C.T.D.) at 262]. The material date with respect to s. 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.) at 475].
[14] The only evidence that Mr. Earl, the Applicant’s Director, provides regarding the use of the Mark is the following sentence: “I am absolutely sure that Jimmy Tees Inc. has used and continues to use the mark STUNT HEADS & Design for the wares (1) set out in the Application No. 1,328,090, commercially, in Canada, since at least January 12th, 2001, at flea markets and other consumer events and through individual sales.” That statement is clearly not inconsistent with the claim set forth in the application. The Opponent had the opportunity to cross-examine Mr. Earl, but chose not to; instead it filed the evidence of Mr. Figueiredo (an investigator), Ms. O’Connor (a law clerk), and Ms. Gortat (a law clerk) directed to the issue of whether the Applicant has complied with s. 30(b).
[15] Mr. Figueiredo attended certain flea markets in 2010 and was unable to locate the Applicant’s wares. This evidence is of no import for two reasons. First, it is long after the material date. Second, evidence of an affiant visiting a number of stores in one city or geographic area is not sufficient evidence to meet an opponent’s evidential burden under s. 30(b) [see Valenite Inc. v. Modco Coatings Ltd. (2001), 13 C.P.R. (4th) 348 (T.M.O.B.)].
[16] Ms. O’Connor conducted various Internet searches in 2009 and failed to locate the Mark. This evidence is again long after the material date and does not meet the Opponent’s evidential burden.
[17] Ms. Gortat provides a copy of “the Corporations Canada profile report” for the Applicant plus a copy of a Certificate of Dissolution for the Applicant. Both documents list a date of dissolution of October 4, 2005, but the former document also indicates that as of January 13, 2006 the status of the corporation was active, revival having occurred on such date.
[18] I find that the evidence of the dissolution meets the Opponent’s light initial burden. Moreover, the Applicant has not provided any evidence or argument that explains or shows how, despite the dissolution, there was continuous use of the Mark in the normal course of trade from October 4, 2005 to January 13, 2006. The Applicant has therefore not met its legal burden.
[19] The s. 30(b) ground accordingly succeeds. However, it is noted that the s. 30(b) ground only applies to wares (1).
Section 38(2)(a)/30(e) Ground of Opposition
[20] The Opponent has pleaded that the application does not comply with s. 30(e) of the Act in that the Applicant did not and does not intend to use the Mark in Canada for the wares (2) or alternatively the Applicant had used the Mark in Canada prior to the filing date of the application.
[21] The evidence does not support the Opponent’s allegations and the Opponent has not filed any submissions in support of this ground. The s. 30(e) ground is accordingly dismissed on the basis that the Opponent has not met its initial burden.
Section 38(2)(a)/30(i) Ground of Opposition
[22] The Opponent has pleaded that the application does not comply with s. 30(i) of the Act in that the Applicant could not have been satisfied that it was entitled to use the Mark in Canada having regard to the fact that at all material times the Mark was confusing with the Opponent’s trade-marks HEAD and HEAD & Design. However, 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, which is not the case here [see Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.) at 155].
[23] The s. 30(i) ground is accordingly dismissed.
Section 38(2)(b)/12(1)(d) Ground of Opposition
[24] The Opponent has pleaded that the Mark is not registrable pursuant to s. 12(1)(d) of the Act as it is confusing with the following registered marks of the Opponent:
(a) HEAD, registration No. 117,580;
(b) HEAD, registration No. 430,867;
(c) HEAD, registration No. 578,095;
(d) HEAD & Design, registration No. 166,629.
[25] The HEAD & Design mark that is the subject of registration No. 166,629 is shown below, followed by its statement of wares:
(1) Ski clothing, namely,
ski pants, ski parkas, ski sweaters, ski gloves, ski goggles and hard helmets.
(2) Ski equipment, namely, skis, poles, waxes, ski pole rings, ski tip
protectors, ski edge touch-up tools, ski surface repair kits and ski equipment
bags.
(3) Tennis equipment namely, racquets;
(4) Tennis clothing, namely, shoes, pants, jackets, suits, shirts, sweaters,
skirts and dresses.
[26] The statement of wares in registration No. 578,095 reads:
(1) Bags namely sports
bags, rucksacks, waist bags, tennis bags, ski bags, ski boot bags, ski sacks.
(2) Wrist watches; travelling bags, handbags, suitcases, small suitcases,
shopping bags, beach bags, camping bags, purses, vanity cases, toilet bags,
satchels, wheel bags.
(3) Glasses.
[27] The statement of wares in registration No. 430,867 reads:
(1) Bicycles and monocycles.
[28] The statement of wares in registration No. 117,580 reads:
(1) Skis.
(2) Ski equipment, namely, poles, wax, ski pole rings, ski tip protectors, ski
edge touch-up tools, ski surface repair kits and ski equipment bags;
(3) Ski clothing, namely, pants, ski parkas, sweaters, gloves, goggles and
helmets;
(4) Tennis equipment, namely, racquets
(5) Tennis clothing, namely, shoes, pants, jackets, suits, shirts, sweaters,
skirts and dresses.
(6) Goods of leather and imitation leather, namely, travel suitcases and small
suitcases, attaché cases, briefcases, shopping bags and shopping nets,
handbags, wallets and purses, vanity cases, travelling manicure sets and sewing
kits, travel bags, backpacks, travel suit bags, key cases, camping bags, bags
with wheels.
(7) Sports clothing, namely shorts.
(8) Pants.
(9) Shirts.
(10) Socks.
(11) Gloves.
(12) Caps and headbands.
(13) Snowboards.
(14) Racquet ball racquets.
(15) Squash racquets.
(16) Wrist bands and all purpose sports bags.
(17) Racquet ball gloves.
(18) Mountain shoes.
(19) Squash shoes.
(20) Athletic footwear, namely training shoes and indoor sport shoes.
(21) Casual footwear, namely moccasins and sandals.
(22) Ski boots and snowboard boots.
(23) Wallets and hipbags.
(24) Protective wear for athletic use, namely, spine protectors and hip
protectors.
(25) Ski bindings; badminton racquets and badminton racquet bags; shuttlecocks.
(26) Snowboard bindings and snowboard bags.
(27) Grip tapes for racquets.
(28) Protective eyewear.
(29) Casual and dress gloves.
(30) Bicycles.
[29] I will begin by discussing the likelihood of confusion between the mark that is the subject of registration No. 117,580 and the Mark, as I consider that registered mark to present the Opponent’s strongest case.
[30] The material date for assessing the likelihood of confusion under this ground is today’s date [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks (1991), 37 C.P.R. (3d) 413 (F.C.A.)].
[31] The Opponent’s initial onus has been met because registration No. 117,580 is extant.
[32] Section 6(2) of the Act indicates that 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 or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
[33] The test for confusion is one of first impression and imperfect recollection. In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in s. 6(5) of the Act, namely: (a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; (b) the length of time each has been in use; (c) the nature of the wares, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight. [See, in general, Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.), Veuve Cliquot Ponsardin v. Boutiques Cliquot Ltée (2006), 49 C.P.R. (4th) 401 (S.C.C.) and Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), 92 C.P.R. (4th) 361 (S.C.C.).]
the inherent distinctiveness of the marks, the extent to which each mark has become known, and the length of time the marks have been in use
[34] Both marks are inherently distinctive.
[35] Although the Applicant claims use of its Mark since January 12, 2001, there is no evidence of the use or promotion of the Mark. In contrast, the Opponent claims use of the HEAD trade-mark in Canada since the 1950s and Mr. Hotter has provided copies of advertisements and invoices relating to HEAD wares. Since 2005, annual Canadian sales of HEAD wares have exceeded 11,000,000 Euros. Between 2005 and 2009, approximately 2,759,000 Euros were spent advertising HEAD wares in Canada.
the nature of the wares, services, business and trade
[36] When considering the wares and trades of the parties, it is the statement of wares or services in the parties’ trade-mark application and registration that govern in respect of the issue of confusion arising under s. 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. Dale Bohna (1984), 58 C.P.R. (3d) 381 (F.C.A.)].
[37] As indicated earlier, the only information that we have concerning the Applicant’s business or trade is that it sells its wares through flea markets. The Opponent sells its wares through dealers across Canada including independent retailers as well as outlets of large sporting goods retail chains such as Sport Chek, National Sports, Sport Mart and Sports Experts. The Opponent began by selling HEAD skis but subsequently expanded use of its HEAD mark to related wares and other sports equipment.
[38] The marks of both parties are associated with sports equipment and apparel and there is no reason to assume that the parties’ wares could not travel similar channels of trade.
[39] However, there are some wares in the application that do not seem to be related to any of the Opponent’s wares, namely “video games, board games, console games, theme park equipment namely swing sets, ramps, jungle gyms, and ATV’s”.
the degree of resemblance between the marks
[40] Visually, there are marked differences between the marks. However, there is a fair degree of resemblance when the marks are sounded. The Mark suggests that the associated wares would be of interest to those who like to perform stunts. There is no particular idea suggested by the Opponent’s mark, insofar as the related wares are concerned. However, given that skiers often perform stunts, someone familiar with HEAD skis and the like might respond to the Mark as being a special version of the Opponent’s wares geared towards those who like to perform stunts.
[41] Although the Mark begins with a word that is not in the Opponent’s mark, the Applicant has incorporated the Opponent’s mark in its entirety into its Mark.
conclusion
[42] Having considered all of the surrounding circumstances, I find that the Applicant has not established, on a balance of probabilities, that confusion is not likely between STUNT HEADS & Design and HEAD for all of the wares other than “video games, board games, console games, theme park equipment namely swing sets, ramps, jungle gyms, and ATV’s”. Confusion appears likely with respect to the remainder of the Applicant’s wares given the resemblance between the marks, the fact that only the Opponent’s mark has acquired a reputation, and the overlap between the wares. However, confusion does not seem likely with respect to “video games, board games, console games, theme park equipment namely swing sets, ramps, jungle gyms, and ATV’s” because there is no evidence that the Opponent sells such wares or that such wares would be a natural extension of the Opponent’s business.
[43] The s. 12(1)(d) ground of opposition therefore succeeds in part based on registration No. 117,580.
[44] The Opponent’s position is no stronger based on its other pleaded registrations.
Section 38(2)(c)/16 Grounds of Opposition
[45] The Opponent has pleaded that the Applicant is not the person entitled to register the Mark because as of January 12, 2001 and December 13, 2006, the Mark was confusing with
i) the Opponent’s marks HEAD and HEAD & Design, previously used in Canada in association with a variety of sports equipment and sports apparel, contrary to s. 16(1)(a) and 16(3)(a);
ii) the Opponent’s HEAD & Design mark which is the subject of application No. 1,192,930 filed October 7, 2003, contrary to s. 16(1)(b) and 16(3)(b); and
iii) the Opponent’s trade-name Head, which has been in prior use in Canada in association with a variety of sports equipment and sports apparel, contrary to s. 16(1)(c) and 16(3)(c).
[46] The Opponent has met its initial burden with respect to its s. 16(1)(a) and 16(3)(a) grounds. Although the material dates for assessing confusion under such grounds (January 12, 2001 with respect to wares (1) and December 13, 2006 with respect to wares (2)) are considerably earlier than the one applicable to the s. 12(1)(d) ground of opposition, the earlier dates do not result in a different conclusion. For the reasons already canvassed under the s. 12(1)(d) ground of opposition, the s. 16 (1)(a) ground succeeds with respect to all the wares (1) but the s. 16(3)(a) ground succeeds only with respect to the wares (2) other than “video games, board games, console games, theme park equipment namely swing sets, ramps, jungle gyms, and ATV’s”.
[47] The Opponent has met its initial burden with respect to its s. 16(3)(b) ground but not its s. 16(1)(b) ground, because its application No. 1,192,930 was filed before the filing date of the application for the Mark, but not before the Applicant’s claimed date of first use. Application No. 1,192, 930 was still pending on June 25, 2008, as required by s. 16(4) of the Act.
[48] The wares covered by application No.1,192,930 are antiperspirants, deodorants, bath and shower gels and the like. Such wares are not related to any of the Applicant’s wares and there is no evidence that the Opponent’s mark has acquired a reputation in association with such wares. For these reasons, I find that confusion between the Mark and the mark that is the subject of application No. 1,192,930 was not likely as of December 13, 2006.
[49] For the foregoing reasons, the s. 16(1)(b) and 16(3)(b) grounds do not succeed.
[50] The Opponent’s written argument does not assess the likelihood of confusion between the Mark and the Opponent’s trade-name, which was pleaded pursuant to s. 16(1)(c) and 16(3)(c). Moreover, it appears the Opponent has not met its initial burden in regards to such grounds as it is not clear to me that the evidence shows use of the trade-name in Canada prior to either January 12, 2001 or December 13, 2006. I am therefore dismissing the s. 16(1)(c) and 16(3)(c) grounds.
Distinctiveness Ground of Opposition
[51] The Opponent has pleaded that the Mark is not distinctive of the wares of the Applicant because it is confusing with the Opponent’s registered HEAD and HEAD & Design marks.
[52] The material date for assessing confusion under this ground is the filing date of the opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.)]. The Opponent has met its initial burden since its evidence establishes that its marks had, at that time, acquired a reputation in Canada that was sufficient to affect the distinctiveness of the Applicant’s Mark [see Bojangles' International LLC v. Bojangles Café Ltd. (2006), 48 C.P.R. (4th) 427 (F.C.)].
[53] In the circumstances of this case, nothing turns on the date at which the issue of confusion is determined. Therefore the outcome of the distinctiveness ground is the same as the outcome of the s. 12(1)(d) ground.
Disposition
[54] Pursuant to the authority delegated to me under s. 63(3) of the Act, I refuse the application with respect to the following wares:
Men's clothing namely, shirts, sweaters, sweatshirts, sweatpants, jackets, ties, t-shirts, pants, shorts. Women's clothing namely shirts, sweaters, jackets, ties, t-shirts, pants, skirts, skorts, shorts, blouses, sweatshirts, sweatpants. Kid's clothing namely shirts, sweaters, jackets, ties, t-shirts, pants, skirts, skorts, shorts, blouses, sweatshirts, sweatpants. Adult and kid's footwear namely dress shoes, sport shoes, athletic shoes, socks. Men's women's and kid's headwear namely caps, hats, bandanas, headbands. Bags namely sport bags, backpacks. Snowboards, skateboards, Wakeboards, surfboards bicycles, roller blades. Protective sports gear namely helmets, mouth guards and pads. Outdoor sporting equipment, namely kayaks, canoes, snow skis, snowboards. Promotional stickers, labels. Promotional and marketing material namely, water bottles, tattoos, pens, pencils, magnets, license plates. Skateboard park equipment namely ramps, hurdles, rails, barriers, mats. Water skis, water sport tubes.
I reject the opposition with respect to the remainder of the wares pursuant to s. 38(8) of the Act. [See Produits Ménagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf Gmbh (1986), 10 C.P.R. (3d) 482 (F.C.T.D.) as authority for a split decision.]
______________________________
Jill W. Bradbury
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office