Trademark Opposition Board Decisions

IN THE MATTER OF AN OPPOSITION by Hola, S.A. to application no. 1074858 for the trade-mark HOLA filed by Telelatino Network Inc.

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On September 15, 2000, Telelatino Network Inc. filed an application to register the trade­

mark HOLA, based on proposed use in Canada, in association with a number of wares and

services. The wares as initially specified were subsequently amended to overcome objections

raised by the Examination Section of the Trade-marks Office. The wares and services of record

covered by the application are shown below:

wares

umbrellas; beach balls, flying disks, beach towels; glasses, mugs, playing cards, docks, lapel pins, ornamental novelty buttons, ice scrapers, letter openers, paper weights, key chains, calendars, posters, pens and pencils, and television pro gram and entertainment guides

services

entertainment services, namely radio and television programming and broadcasting services; film/movie production services

The subject application was advertised for opposition purposes in the Trade-marks

Journal issue dated April 9, 2003 and was opposed by Hola, S.A. on September 9,2003. The

Registrar forwarded a copy of the statement of opposition to the applicant on December 2, 2003.

The applicant responded by filing and serving a counter statement.

The opponent's evidence consists of the affidavits of Thierry Sabouret, Vice-President of

a magazine distributing service; and Donald Brown, articling student. The applicant did not file

any evidence in support of its application. Both parties submitted a written argument and the

applicant submitted a further written reply to the opponent's argument. The Trade-marks

Regulations do not contemplate such further submissions, however, the opponent consented for

the Board to take the additional submissions into account. Both parties were represented at an

oral hearing.

STATEMENT OF OPPOSITION

The statement of opposition pleads that the opponent is the owner of the registered trade­

marks HOLA covering the wares "agendas, livres, revues, publications litteraires et artistiques;"

and HELLO! & Design, shown below, covering "magazines and periodical publication."

HELLO!

The grounds of opposition allege that:

(i) the applied for mark is not registrable "in view of Section 12(2)(b )[ sic] of the Trade­marks Act" because the applied for mark HOLA is confusing with the opponent's registered trade-marks HOLA and HELLO! & Design, referred to above,

(ii) the applicant is not entitled to register the applied for mark HOLA, pursuant to Section 16(3) of the Act, in view of the opponent's previous use of its marks HOLA and HELLO! & Design, referred to above,

(iii) the applied for mark is not distinctive and not adapted to distinguish "the wares of the Applicant from the wares of the Opponent."

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OPPONENT'S EVIDENCE

Mr. Sabouret's affidavit testimony may be summarized as follows. Mr. Sabouret's

company distributes magazines, newspapers and periodical publications across Canada. More

specifically, Mr. Sabouret states that "One of the publications distributed by my company is a

Spanish language magazine sold under the trade-mark HOLA." A sample of the magazine that

Mr. Sabouret is referring to is attached as Exhibit 1 to his affidavit. The attachment shows how

the opponent's mark is used on the front cover of the magazine, that is, the trade-mark HOLA is

bordered by an inverted exclamation point to the left and an exclamation point to the right, as

shown below:

The publisher of the magazine, that is, the opponent Hola, S.A., is identified at page 49 of

Exhibit 1, as shown below:

mmrn

Fundador:

ANTONIO SANCHEZ GOMEZ

Presidenta de honor: MERCEDES JUNCO CALDERON Empresa editora: HOlA, S. A. Presidente y director: EDUARDO SANCHEZ JUNCO

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I note that there may be an argument to the effect that the opponent has not been using the

mark HOLA per se (see Registrar of Trade marks v. Compagnie Internationale pour

l'informatique CU Honeywell Bull, Societe Anonyme et al. (1985),4 C.P.R. (3d) 523 (F.C.A.)).

However, as the applicant has not raised the issue, nothing further need be said.

Mr. Sabouret further states that his company has sold HOLA magazines in Canada since

1991. Exhibit 2 of his affidavit is comprised of a computer printout showing the number of sales

of HOLA magazines, per week, for the years 2002 and 2003. From a cursory visual inspection of

the data, weekly sales in 2002 appear to be generally in the range of 360 to 500 issues, while

weekly sales in 2003 were generally of the same magnitude but somewhat less. The magazine

includes articles about well-known people, fashion, lifestyle, cooking and travel. The opponent

also publishes the English language magazine HELLO! which is sold in Canada.

Mr. Brown's affidavit introduces into evidence, among other things, a list of thirteen

magazines which have associated television shows. Included in the list are Playboy and Playboy

TV; Car & Driver and Car & Driver Television; Report on Business Magazine and Report on

Business Televison, and so on.

MAIN ISSUE

The determinative issue raised in the statement of opposition is whether the applied for

mark HO LA is confusing with the opponent's trade-mark HOLA. The material dates to assess the

issue of confusion are (i) the date of my decision with respect to the ground of opposition

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alleging non-registrability; (ii) the date of filing the application, that is, September 15, 2000, with

respect to the ground of opposition alleging non-entitlement; and (iii) the date of opposition, that

is, September 9, 2003, with respect to the ground of opposition alleging non-distinctiveness: for a

review of case law concerning material dates in opposition proceedings see American Retired

Persons v. Canadian Retired Persons (1998),84 C.P.R.(3d) 198 at 206 - 209 (F.C.T.D.).

LEGAL ONUS

The legal onus is on the applicant to show that there would be no reasonable likelihood of

confusion, within the meaning of Section 6(2) of the Trade-marks Act, between the applied for

mark HOLA and the opponent's trade-mark HOLA. The presence of an onus on the applicant

means that if a determinate conclusion cannot be reached once all the evidence is in, then the

issue must be decided against the applicant: see John Labatt Ltd. v. Molson Companies Ltd.

(1990) 30 C.P.R.(3d) 293 at 297-298 (F.C.T.D.). 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 Section 6(5) of the Trade-marks 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 the 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.).

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DISCUSSION OF S. 6(5) FACTORS

The opponent's mark HOLA possesses a fair degree of inherent distinctiveness as it is not

a word found in an English or French language dictionary. However, the inherent distinctiveness

of the mark is lessened to the extent that a number of Canadians would recognize the term "hola"

as Spanish for "hello." Of course, the applied for mark is identical to the opponent's mark and

therefore possesses equal inherent distinctiveness. Based on the evidence of record, I conclude

that the opponent's mark HOLA was known in Canada to a limited extent, at least by the later

material dates. The applied for mark is based on proposed use and there is no evidence that it

acquired any reputation at any material date. The length of time that the parties' marks have been

in use favours the opponent as the opponent's evidence indicates that it has been using its mark

HOLA since 1991. However, the length of time that the opponent's mark has been in use in

Canada must be given reduced significance as the opponent has not provided any quantitative

evidence of use prior to the year 2002.

The nature of the parties' wares and services are discussed at paragraphs 21 - 23 of the

applicant's written argument, shown below:

21.

As to the nature of the wares and services, there is no similarity ,between the majority of

. the Wares and aIl of the Services listed in the Application on the, one hand and the Opponent's

magazines on the other hand. Furthermore, there is no similarity between the businesses of the Applicant and the Opponent. Accordingly, their wares would not travel in the same or related

channels of trade. Also, given that the Opponent has not led any evidence that it provides any

services, the Applicant's Services would not trave1 in the same or related channels of trade as

any services provided by the Opponent.

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22.

The only wares in the Application that bear even a remote relation to the Opponent' s

magazines are "television program and entertainment guides". Based upon an examination of

the entirety of the Wares and Services listed in the Application, however, it is reasonable to

conclude that these "television pro gram and entertainment guides" relate to the services offered

by the Applicant, namely its "radio and television programming and broadcasting services" and

its "film/move production services".

23.

Byway of contrast, the Opponent's HOLA magazine cannot be categorized as a

"television program guide" nor can it be categorized as an "entertainment guide" since the focus of this. magazine is not to list or provide information about television programs or entertainment events.

Not surprisingly, the opponent takes a contrary view of the matter, at paragraphs 35 - 36

of its written argument:

35.

The evidence also establishes a clear relationship between the  magazines and

the television and/or radio services referenced in the subject application. In particular, it is common for magazines, and other periodical publications, to have related television or radio programs or specialty channels operated or offered in association with the same name.

36.

As such, consumers in Canada are routinely exposed to magazines and

related television/radio shows or channels with identical or very similar names.

As a result of this overlap, an average Canadian consumer upon seeing the

trade-mark HOLA used in association with the television and radio services

referenced in the subject application would likely be lead to the inference that

those services emanate from the same source as, or are related to, the

Opponent's HOLA magazine.

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No quantitative data is provided to show how extensively the magazines, referred to

earlier by Mr. Brown, circulate in Canada or how extensive the television audience for the related

shows may be. Further, I am not prepared to extrapolate from the opponent's evidence that it is

common, rather than exceptional, for magazines to be associated with companion television

shows.

I am inclined to agree with the applicant that the parties' wares and services are more

different than they are alike, however, I accept the opponent's submission that magazines and

many of the applicant's wares could potentially be sold through the same retail outlets such as

convenience stores.

DECISION

Considering all of the above, and considering in particular that the opponent's mark did

not acquire a substantial reputation in Canada at any material time, and that the parties' wares and

services are different, I find that the applicant has met the onus on it to show, on a balance of

probabilities, that the marks in issue are not confusing at all material times. I appreciate that there

is a potential for the opponent to expand into broadcasting or movie services. However, given the

limited reputation of the opponent's mark HOLA, it is not credible that the average Canadian

would be prompted to believe that broadcasting or film services provided under the mark HOLA

emanate from the opponent.

Essentially the same reasoning as above applies to the issue of confusion between the

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applied for mark and the opponent's mark HELLO & Design relied on in the statement of

opposition, and the same result follows. In this regard, the opponent's case is weaker in relying

on its mark HELLO & Design as (i) there is no quantitative evidence indicating the extent of use

of the mark at any time, and (2) there is a low degree of resemblance between the mark HOLA

and the mark HELLO & Design.

Accordingly, the opposition is rejected.

DATED AT VILLE DE GATINEAU, QUEBEC, THIS 16th DA Y OF APRIL, 2007.

Myer Herzig,

Member,

Trade-marks Opposition Board

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