Trademark Opposition Board Decisions

TRADUCTION/TRANSLATION

 

 

IN THE MATTER OF THE OPPOSITION BY Canadian Tire Corporation, Limited to application for registration No. 758,790 filed by Raymond Gorsky for the trade-mark L’OPTION MAXIMALE GARANTIE

_____________________________________________________________________

 

On July 13, 1994, Raymond Gorsky (“the Applicant”) filed an application for registration of the trade-mark L’OPTION MAXIMALE GARANTIE (“the Mark”) based on intended use in Canada.  The application for registration currently on file is an amended application accepted by notice on August 20, 1999.

 

The application for registration covers a long and varied list of goods and services, including: publications; affinity credit cards; games and toys; computer software and programs; household products; home appliances; toiletries; clothing; food products; alcoholic products; animal feed and animal products; nutritional supplements; building materials; furnishings; bedding and table linens; domestic and household kitchen containers; furniture; alarm systems; home and garden accessories; promotional items; drawing items; stationery items; electronic devices; sporting goods; plant products; jewellery; information booths for public spaces; sales, advertising and home delivery services for all goods and services; do-it-yourself stores, home and garden tool rental; home and family general store; business and financial brokerage services; operation of a third-party goods and services buying club; development and administration of promotional programs for third parties with or without supplying goods, items or services as incentives for buying goods and services; on-site, point-of-sale and place-of-business distribution of promotional samples for third parties; and development of sales and marketing plans and programs and exclusive financial programs for third parties and networks of independent distributors.  This list of goods and services is by no means complete, as these general, non-specific descriptions give only an overview of the hundreds of specific goods and services listed in the application for registration.

 

The Applicant withdrew the right to exclusive use of MAXIMALE and GARANTIE separately from the Mark.

 

The application was published in the Trade-marks Journal for purposes of opposition on January 22, 1997.  Canada Post Corporation filed an opposition to the application, but withdrew it after the amended application for registration was approved.  The opponent in this instance, Canadian Tire Corporation, Limited (“the Opponent”), filed a statement of opposition on March 20, 1997.  On February 16, 2005, the Opponent was granted permission to file an amended statement of opposition dated October 14, 2004.

 

The first ground of opposition, which was added to the amended statement of opposition, is that the application for registration does not meet the requirements of paragraph 30(e) of the Trade-marks Act, R.S.C. 1985, c. T-13 (“the Act”) because the Applicant does not intend to use the Mark in Canada in connection with the goods and services identified in the application. The second ground of opposition is that the Mark cannot be registered under paragraph 12(1)(d) of the Act because it is confusing with the following marks registered by the Opponent:

 

Mark	Reg. No.	Goods/Services
OPTIONS	466,383	Debit, credit and charge card services.
OPTIONS	423,828	Operation of an incentive program in which points redeemable for awards are accumulated by Canadian Tire credit card holders.
	425,030	Operation of an incentive program in which points redeemable for awards are accumulated by Canadian Tire credit card holders.
OPTIONS	429,984	Operation of a transaction based incentive program in which points are accumulated and are redeemable for awards.
	433,631	Operation of an incentive program in which points redeemable for awards are accumulated by Canadian Tire credit card holders.
OPTIONS CARDMEMBER REWARD PROGRAM	436,962	Operation of an incentive program in which points redeemable for awards are accumulated by Canadian Tire credit card holders.
CANADIAN TIRE OPTIONS	437,419	Operation of an incentive program in which points redeemable for awards are accumulated by Canadian Tire credit card holders.
	440,986	Operation of an incentive program in which points redeemable for awards are accumulated by Canadian Tire credit card holders.
EXTEND YOUR OPTIONS	463,614	Debit, credit and charge card services, and related services, namely identification for cheque cashing purposes, cash advances, access to information for repair and emergency services, auto club services, and a transaction based incentive program in which points are accumulated for purchases and are redeemable for awards.
OPTIONS EXTRA	455,951	Printed matter and publications, namely pamphlets, brochures, newsletters and magazines related to the issuance and use of credit, debit and charge cards.

 

The third ground of opposition is that the Applicant is not entitled to register the Mark under paragraph 16(3)(a) because on the date the application was filed, the Mark was confusing with the trade-marks OPTIONS (registration numbers 423,828 and 429,984), OPTIONS & DESIGN (Registration Number 425,030), OPTIONS CARDMEMBER REWARD PROGRAM (Registration No. 436,962), OPTIONS CARDMEMBER REWARD PROGRAM & DESIGN (Registration No. 440,986), CANADIAN TIRE OPTIONS (Registration No. 437,419) and OPTIONS EXTRA (Registration No. 455,951) previously used by the Opponent.

 

The last ground of opposition is that the Mark is not distinctive because it does not and is not likely to distinguish the Applicant’s goods and services from the services associated with the Opponent’s trade-marks as identified above.

 

The Applicant filed its counter-statement on May 9, 1997.  It did not deem it appropriate to obtain permission to file an amended counter-statement.

 

The Opponent filed an affidavit from Scott W. Doan as evidence under section 41 of the Trade­marks Regulations, 1996 (“the Regulations”).  After an order was issued for Mr. Doan’s cross-examination, the Opponent requested permission to file an affidavit from Chris Mindorff as evidence under section 44 of the Regulations in place of Mr. Doan’s affidavit because Mr. Doan was not available for cross-examination.  The Opponent was granted permission to file Mr. Mindorff’s affidavit on October 28, 1999.  Shortly after, the Applicant waived cross-examination.  To keep the file in proper order, I confirm that since Chris Mindorff’s affidavit was substituted for Scott W. Doan’s affidavit, Mr. Doan’s affidavit dated November 7, 1997, is no longer part of the file.  On February 16, 2005, the Opponent also obtained permission to file an affidavit from Elizabeth Manley as evidence under section 44 of the Regulations.  The Applicant’s evidence under section 42 of the Regulations consists in her affidavit signed on June 10, 1998.  The Applicant was cross-examined on November 29, 1999.  The transcript of the cross-examination and Exhibit RG-1 were placed on file.  Exhibit RG-1 is a binder containing copies of applications for registration and registrations for 27 trade-marks in the Applicant’s name.  The copies were apparently downloaded from the Strategis database on November 3, 1999.

 

The Opponent filed a written argument.  Further, since that original written argument was filed before the amended statement of opposition and Elizabeth Manley’s affidavit were accepted, the Opponent obtained permission on September 13, 2005, to file an additional written argument dealing only with the ground of opposition added to the amended statement and Ms. Manley’s affidavit.  The Applicant did not file any written argument.  Only the Opponent was represented at the hearing.

 

Opponent’s Evidence

 

Affidavit of Chris Mindorff

 

Mr. Mindorff identified himself as General Manager of MasterCard since September 1999.  He listed the various positions he previously held at Canadian Tire Acceptance, Limited (“Canadian Tire Acceptance”), among them “Loyalty Marketing Manager”, a position he took up in January 1999.

 

Mr. Mindorff stated that the Opponent sells products to affiliated stores which then resell them to the public. On July 13, 1994, the Opponent had 424 affiliated stores across Canada; on the day Mr. Mindorff signed his affidavit [November 3, 1999], it had 425.

 

Mr. Mindorff described the main activity of Canadian Tire Acceptance, a full affiliate of the Opponent, as financing and managing credit accounts for customers of the Opponent arising from the sale of goods and services in Canadian Tire stores affiliated with the Opponent and at the Opponent’s gas bars.  Canadian Tire Acceptance is also responsible for processing major bank credit card transactions in the Opponent’s affiliated stores and at its gas bars.  On June 30, 1998, Canadian Tire Acceptance and one of its subsidiaries were managing more than $921,000,000 in accounts receivable, most of it related to the Opponent’s credit cards.

 

Mr. Mindorff entered in evidence copies of the registration certificates of 10 trade-marks identified in support of the second ground of opposition and pointed out that the trade-marks were the property of the Opponent and Canadian Tire Acceptance was a licensed user of the marks.  Mr. Mindorff also provided a copy of the licensing contract and copies of the updates of the list of marks covered by the licence, and described the Opponent’s control over the activities of Canadian Tire Acceptance.  I note that with the exception of one reference to three marks used for the first time in 1992, Mr. Mindorff referred to the Opponent’s trade-marks collectively throughout his affidavit.  I summarize below Mr. Mindorff’s statements regarding the use and promotion of the Opponent’s trade-marks.

 

The marks registered under numbers TMA436,962, TMA437,419 and TMA440,986 were used for the first time in October 1992 when the OPTIONS program was launched in Calgary, a campaign that continued in Alberta and Saskatchewan from August to October 1993 and in the Kingston region from October to December 1993. The OPTIONS program was launched nationwide between January 17 and March 1, 1994 (new Canadian Tire credit cards issued, new advertising material, coupons for bonus points mailed to more than 3.5 million Canadian Tire credit card holders across Canada).  Samples of the material used for these activities (copies of letters mailed to Canadian Tire credit card holders, promotional material, script of radio advertisements) are attached to the affidavit (exhibits “N” to “T”).  Since 1994, millions of dollars have been spent promoting across Canada the services associated with the Opponent’s trade-marks. That promotion by the Opponent and Canadian Tire Acceptance is done through catalogues, newspaper inserts, pamphlets, mailings, point-of-sale material and television advertisements.  Mr. Mindorff stated that a total of 42.6 million copies of catalogues were distributed between 1993 and 1999.  Samples of promotional material (May 1995 television advertisements, catalogue pages from 1994 to 1999, pamphlet pages from 1994 to 1997, examples of bonus offers and messages mailed to cardholders, promotional items) are attached to the affidavit  (exhibits “U” to “AA”).

 

In 1995, Canadian Tire Acceptance became licensed by MasterCard International to use the MASTERCARD mark in association with the Opponent’s credit card.  The project was launched on a trial basis in October 1995 by offering a group of credit card holders the opportunity to replace their Canadian Tire credit card with an OPTIONS MASTERCARD card.  Other pilot projects were carried out in the fall of 1996 and 1997.  By June 1998, more than 412,000 Canadian Tire OPTIONS MASTERCARD credit cards had been issued.  Copies of the mail offer of the OPTIONS MASTERCARD card (Exhibit “BB”) and the material sent to customers who accepted the offer (Exhibit “CC”) are attached to the affidavit.  Since March 22, 1996, all OPTIONS MASTERCARD cardholders have been receiving with their monthly statement an OPTIONS EXTRA newsletter; representative samples of the newsletter are attached to the affidavit (Exhibit “DD”).  Approximately 1.5 million cardholders receive the newsletter each month.

 

Mr. Mindorff stated that participants in the program accumulate points that are “redeemable for awards” and added that on the date of his affidavit, almost 1.7 million credit card holders each had more than 3,000 points to redeem.

 

Finally, I lend no credence to Mr. Mindorff’s statement that on the day of its application for registration, the Applicant ought to have been aware of the Opponent’s marks.  Nor do I lend any credence to his opinion regarding the risk of confusion and the Mark’s lack of distinctiveness.

 

Affidavit of Elizabeth Manley

 

Ms. Manley, a legal assistant employed by the Opponent’s agents, entered in evidence the results of a Strategis search she conducted on October 6, 2004, to locate all of the trade-marks registered in the name of Raymond Gorsky.  I note from the list compiled by Ms. Manley (Exhibit “A”) that there are 67 trade-marks, among them marks which have been deregistered and marks for which the application for registration has been abandoned or rejected.  Ms. Manley pointed out that 20 applications for registration identified by her search are not identified in Exhibit RG-1 because of their respective filing dates.  She attached copies of those 20 applications for registration downloaded from Strategis (Exhibit “B”).

 

Applicant’s Evidence

 

In addition to a statement that he is satisfied his application for registration has merit and does not cause injury to the Opponent, Mr. Gorsky entered in evidence an excerpt from the dictionary Le Robert defining the word “option” (Exhibit “1”).  He also entered in evidence a “[translation] photocopy of computer data pertaining to the 104 trade-marks” containing the word “option” that he found on June 10, 1998, by doing a search of the Trade-mark Office database (Exhibit “2”).  That search appears to constitute proof of the status of the trade-mark register regarding the word “option”.  Evidence related to the state of the register is relevant only insofar as it can be used to draw inferences regarding the state of the market [Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432 (C.O.M.C.); Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R. (3d) 205 (F.C., Trial Division)].  Moreover, inferences regarding the state of the market cannot be drawn from such evidence unless a large number of pertinent registrations are included [Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.)].  Although I do not question the reliability of the database consulted, the “computer data” on the 104 trade-marks are presented in the form of a “Mark Preview Keep List”.  In the absence of full details about the registrations in question, I cannot consider this evidence as having significant impact.

 

Finally, Mr. Gorsky attached a photocopy of Scott W. Doan’s affidavit of November 7, 1997, and his exhibits “H”, “I” and “J” (Exhibit “3”).  Aside from the fact that I fail completely to see how this Exhibit is relevant to the Applicant’s evidence, I ascribe no significance to this affidavit as an attachment to Mr. Gorsky’s affidavit.

 

It appears from the transcript of the cross examination that Mr. Gorsky confirmed in response to questions from counsel for the Opponent that he did a search before he filed his application and identified the Opponent’s marks in effect at that time (p. 16).  He also answered questions about the search attached to his affidavit and his knowledge or lack of knowledge of certain companies and marks identified in that search (pp. 23-27).  However, Mr. Gorsky refused to answer questions from counsel for the Opponent regarding his education, training, past and current work experience, operation of a business, and expertise in various fields related to the list of goods and services identified in the application for registration (pp. 4-12).  He also refused to answer questions about the measures taken to market the goods and services identified in the application.  He confirmed his intention to market all of the goods and services personally, personally and through licensees, or through licensees (p. 12), but refused to answer a question about whether he had ever marketed such goods and services before (p. 14).  Mr. Gorsky also refused to answer questions about the list of goods and services in the application, the trade-marks he owns, and the reason why he used the same list of goods and services for all of the applications for registration he filed (pp. 16-19).  He also refused to answer questions about his activities in the past five years (pp. 27-28).

 

Mr. Gorsky’s systematic refusal to answer pertinent questions leads me to make negative inferences that have a significant bearing on the fate of the first ground of opposition which I analyse below [Joseph E. Seagram & Sons Ltd. et al. v. Seagram Real Estate Ltd. (1984), 3 C.P.R. (3d) 325 (T.M. Opp. Bd.); Mr. Goodwrench Inc. v. General Motors Corp. (1992), 42 C.P.R. (3d) 451 (T.M. Opp. Bd.)].

 

The pertinent date for considering the first ground of opposition is the date the application for registration was filed [Georgia-Pacific Corp v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 (T.M. Opp. Bd.)].  The onus may be on the Applicant to show that his application satisfies paragraph 30(e), but the Opponent must first establish the facts on which it relies in presenting its ground of opposition.  Because it is hard to prove a negative proposal, even more so in the case of an application for projected use, the initial burden on the Opponent is relatively light.  To discharge that burden, the Opponent can rely not only on its own evidence, but also the Applicant’s evidence, including the transcript of Mr. Gorsky’s cross examination [Molson Canada v. Anheuser-Busch Inc. (2003), 29 C.P.R. (4^th) 315 (F.C., Trial Division)].  Even though it can rely on the Applicant’s evidence to discharge its burden, the Opponent must show that the Applicant’s evidence is clearly incompatible with the claims made in the application.  Once the Opponent has discharged its initial burden, the Applicant must show that the ground of opposition should not prevent it from registering the Mark [Joseph E. Seagram & Sons Limited v. Seagram Real Estate Ltd. (1984), 3 C.P.R. (3d) 325 (T.M. Opp. Bd.); John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C., Trial Division)].

 

Because the application for registration contains a statement to the effect that the Applicant intends to use the Mark in Canada, the application meets the form requirements of paragraph 30(e).  The issue is whether the Applicant actually intended to use the Mark [Jacobs Suchard Ltd. v. Trebor Bassett Ltd. (1996), 69 C.P.R. (3d) 569 (T.M. Opp. Bd.); Home Quarters Warehouse, Inc. v. Home Depot U.S.A., Inc. (1997), 76 C.P.R. (3d) 219 (T.M. Opp. Bd.)].  In other words, is the statement true?

 

I took note of the Opponent’s argument that the Applicant’s filing of multiple applications for trade-mark registration in respect of similar goods and services constitutes evidence that it does not intend to use its mark, but find that that argument is purely speculative.  There is no provision in the Act that prevents a person from filing applications to register other trade-marks for similar goods and services.  That factor alone is therefore not enough to question whether the Applicant, on the date of the application for registration, intended to use the Mark in Canada in association with the specified good and services.  However, in the case at hand, the evidence on file coupled with Mr. Gorsky’s refusal to answer pertinent questions must lead to negative inferences regarding his intent to use the Mark in Canada on the pertinent date in association with all of the goods and services identified in the application.  Consequently, I believe that the Opponent has discharged its initial burden of proof.  I further believe that the Applicant did nothing to discharge his burden of proof.  Accordingly, I accept the first ground of opposition.

 

Since the application is rejected in respect of all of the goods and services identified in the application for registration, it is superfluous to examine the other grounds of opposition, all of which are based on the issue of confusion between the Mark and the Opponent’s trade-marks and would require analysis of all of the circumstances at play, including those set out in subsection 6(5) of the Act, among them the nature of the wares, services or businesses.

 

In accordance with the powers delegated to me by the Registrar of Trade-marks under the provisions of subsection 63(3) of the Act, I reject the application for registration under the provisions of subsection 38(8) of the Act.

 

DATED AT BOUCHERVILLE, QUEBEC, THE 19th DAY OF OCTOBER 2005.

 

Céline Tremblay

Member of the Trade-marks Opposition Board