IN THE MATTER OF AN OPPOSITION
by Brown University in Providence and the
State of Rhode Island and Providence Planta-
tions et al. to application No. 713,004 for the
trade-mark IVY LEAGUE filed by Kinney
Canada Inc. and now standing in the name
of Woolworth Canada Inc.
On September 17, 1992, Kinney Canada Inc. filed an application to register the trade-mark IVY LEAGUE for “shoes and knapsacks” based on use in Canada since September 1, 1989. The application was advertised for opposition purposes on April 7, 1993. As a consequence of an amalgamation, the application now stands in the name of Woolworth Canada Inc.
The opponent, Brown University in Providence and the State of Rhode Island and Providence Plantations, The Trustees of Columbia University in the City of New York, Cornell University, The Trustees of Dartmouth College, The Presidents and Fellows of Harvard College, The Trustees of the University of Pennsylvania, The Trustees of Princeton University and Yale University all trading as the Council of Ivy Group Presidents, filed a statement of opposition on November 8, 1993, a copy of which was forwarded to the applicant on February 8, 1994.
The first ground of opposition is that the application does not comply with the provisions of Section 30 of the Trade-marks Act because the applied for mark is not a trade-mark within the meaning of Sections 2 and 4 of the Act. The second ground is that the application does not comply with the provisions of Section 30(b) of the Act since the applied for mark has not been used since the date claimed. The third ground is that the application does not comply with the provisions of Section 30(i) of the Act. The opponent alleges that the applicant could not have been satisfied that it was entitled to use the applied for mark in Canada in view of the prior use of the trade-marks and trade-names IVY LEAGUE and THE IVY LEAGUE by the opponent and its licensees.
The fourth ground of opposition is that the applied for trade-mark is not registrable pursuant to Sections 9(1)(n)(ii) and 12(1)(e) of the Act in view of the mark THE IVY LEAGUE (No. 906,090) in respect of which the Registrar gave public notice of its adoption and use in the November 3, 1993 edition of the Trade-marks Journal. The fifth ground is that the applicant is not the person entitled to registration pursuant to Sections 16(1)(a) and 16(1)(c) of the Act because, as of the applicant’s claimed date of first use, the applied for mark was confusing with the trade-marks and trade-names IVY LEAGUE and THE IVY LEAGUE previously used and make known in Canada by the opponent and its licensees for the following wares and services:
(1) apparel for men, women and children,
(2) novelty items, including pennants and buttons,
(3) the provision of televised entertainment services in the nature of athletic and sporting events,
(4) publications, including media guides for sporting events, and
(5) educational services.
The sixth ground is that the applied for trade-mark is not distinctive because it is confusing with the opponent’s trade-marks and trade-names.
The applicant filed and served a counter statement on March 7, 1994. The counterstatement contains a number of assertions including one that Section 12(1)(e) of the Act should not apply where an applicant’s mark is adopted prior to public notice being given of the opponent’s mark. The applicant has also asserted that if Section 9(1)(n)(ii) of the Act creates a monopoly right in a word then the section is unconstitutional.
As its evidence, the opponent submitted the affidavits of Daniel R. Maze, Gary T. Daniel, Sandra Gerrard and Jeffrey H. Orleans. As its evidence, the applicant submitted the affidavits of Jillian D. Sexsmith and Rick Chan. Both parties filed a written argument and an oral hearing was conducted at which both parties were represented.
The first ground has not been pleaded in sufficient detail to allow the applicant to reply to it and is thus in contravention of Section 38(3)(a) of the Act. The opponent has not indicated which subsection of Section 30 has been contravened. Furthermore, the opponent has not provided any allegations of fact to support its conclusion that the applied for mark is not a trade-mark. Thus, the first ground is unsuccessful.
As for the opponent's second ground of opposition, the onus or legal burden is on the applicant to show its compliance with the provisions 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-compliance 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.).
With respect to the applicant’s wares “knapsacks”, the opponent was unable to point to anything in the evidence which would suggest that the applicant’s mark had not been used with those wares since September 1, 1989. Thus, the second ground of opposition is unsuccessful in respect of those specific wares.
With respect to the wares “shoes”, Exhibit B to the Gerrard affidavit is a certified copy of the Trade-marks Office file for application No. 622,935 for the trade-mark IVY LEAGUE for “shoes” filed by Kinney Canada Inc. on January 10, 1989 based on proposed use in Canada. By letter dated March 5, 1990, Kinney Canada Inc.’s trade-mark agent indicated that marketing plans had not progressed to the stage where evidence of use of the mark could be provided. The application was subsequently abandoned.
The foregoing satisfies the opponent’s light evidential burden since the statement made on March 5, 1990 suggests that the applicant’s mark IVY LEAGUE was not in use earlier, namely as of September 1, 1989. It was therefore incumbent on the applicant to adduce evidence supporting continuous use from that claimed date. The Chan affidavit meets that requirement. Mr. Chan’s affidavit establishes that IVY LEAGUE shoes were first offered for sale in Canada on September 1, 1989 through stores operated by Kinney Canada Inc. and that substantial sales were effected from that date on. Although there is no direct evidence of an actual sale on or before September 1, 1989, I am prepared to infer that such sales took place. I have also noted that there was a gap of three years between Kinney Canada Inc.’s purchase orders for IVY LEAGUE shoes from its importers in 1989 and its purchase orders in 1992. However, given the sizable purchases effected in 1989, it seems likely that IVY LEAGUE shoes would have been available at the retail level throughout that three year period. Thus, I find on a balance of probabilities that the applicant has been using its mark for shoes continuously since the date claimed. The opponent’s second ground is therefore unsuccessful.
The third ground does not raise a proper ground of opposition. The prior use of the opponent’s trade-marks and trade-names would not, by itself, have precluded the applicant from being satisfied that it was entitled to use its applied for mark in Canada. The opponent did not even allege that the applicant was aware of the opponent’s trade-marks and trade-names. Thus, the third ground is unsuccessful. Even if it had been pleaded in more detail, the success of the ground would have been contingent on a finding of prior use of at least one of the opponent’s marks and names and a finding of confusion between that mark or name and the applicant’s mark.
As for the fourth ground of opposition, Section 9(1)(n)(ii) of the Act reads as follows:
9.(1) No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for....
(n) any badge, crest, emblem or mark....
(ii) of any university....
in respect of which the Registrar has, at the request....
of the university....given public notice of its adoption
and use.
Public notice of the university mark THE IVY LEAGUE was given on November 3, 1993 in the name of Brown University in Providence and the State of Rhode Island and Providence Plantations, The Trustees of Columbia University in the City of New York, Cornell University, The Trustees of Dartmouth College, The Presidents and Fellows of Harvard College, The Trustees of the University of Pennsylvania, The Trustees of Princeton University and Yale University with no indication of any common association or trading style. In other words, public notice was given in the name of eight American universities together. In my view, Section 9(1)(n)(ii) is restricted to a badge, crest, emblem or mark of a single university. To expand the subsection to include groups of universities is an unwarranted extension of the already very broad protection afforded to university marks and indicia. It is also, in my view, an informal sanctioning by the Registrar of non-distinctive use of a mark by several parties. If Parliament had intended to include groups of universities in the subsection, it would have explicitly done so.
Notwithstanding my view, it is certainly arguable that the word “university” in Section 9(1)(n)(ii) can also be read in the plural thereby allowing public notice to be given of university marks owned by more than one university. Although I disagree with the Registrar’s decision to give public notice of the university mark THE IVY LEAGUE, I cannot say that it was clearly wrong. Thus, the opponent is free to rely on that mark in this proceeding.
The applicant has submitted that the opponent cannot rely on the provisions of Section 9(1)(n)(ii) of the Act because it confers a monopoly right and is therefore unconstitutional. However, in line with the opposition decision in Canadian Olympic Association v. McArthur (1987), 18 C.P.R.(3d) 376, the constitutionality of provisions of the Trade-marks Act cannot be considered by the Opposition Board.
The material time for considering the circumstances respecting the fourth ground of opposition would appear to be the date of my decision: see the decisions in Allied Corporation v. Canadian Olympic Association (1989), 28 C.P.R.(3d) 161 (F.C.A.) and Olympus Optical Company Limited v. Canadian Olympic Association (1991), 38 C.P.R.(3d) 1 (F.C.A.). The applicant submitted that the opponent was obliged to evidence adoption and use of the university mark relied on. However, unlike Section 9(1)(n)(iii) of the Act, Section 9(1)(n)(ii) does not use the words adopted and used (although the concluding words of Section 9(1)(n) speak of adoption and use). Even if it did, by way of analogy with official marks under Section 9(1)(n)(iii), the opponent would not be required to evidence use and adoption of the university mark relied on unless perhaps the applicant had cast doubt on any claim to use and adoption: see page 166 of the Allied decision and pages 271-273 of the decision in The Canadian Council of Professional Engineers v. Krebs Engineers (1996), 69 C.P.R.(3d) 267 (T.M.O.B.). As noted by the opponent, the applicant’s evidence in the present case is insufficient to meet that burden.
As stated in Section 9(1) of the Act, the test to be applied is whether or not the applicant's mark consists of, or so nearly resembles as to be likely to be mistaken for, the official mark. In other words, is the applicant's mark identical to, or almost the same as, any of the opponent’s official marks?: see page 47 of the unreported decision of the Federal Court, Trial Division in Big Sisters Association of Ontario v. Big Brothers of Canada (Court No. T-29-94; May 20, 1997). At page 49 of that decision, Mr. Justice Gibson confirmed that in assessing the resemblance between the marks at issue, regard may be had to the factors set out in Section 6(5)(e) of the Act. Further, at page 48, Mr. Justice Gibson indicated that the test was to be applied as a matter of first impression and imperfect recollection and he concurred with the following test set out by Mr. Justice Rothstein at page 19 of the decision in Canadian Olympic Association v. Health Care Employees Union of Alberta (1992), 46 C.P.R.(3d) 12 (F.C.T.D.):
The question must be determined in the context of whether a person who, on a first impression, knowing one mark only and having an imperfect recollection of it, would likely be deceived or confused.
This would appear to be a broader test than the test of straight comparison previously applied in numerous opposition decisions although the result in the Big Sisters case might suggest otherwise.
In the present case, the applicant’s mark IVY LEAGUE is not identical to the university mark THE IVY LEAGUE. However, it is almost identical to the university mark and the fourth ground is therefore successful.
As for the fifth ground of opposition, it was incumbent on the opponent to evidence use or making known of one or both of its marks prior to the applicant’s claimed date of first use of September 1, 1989 or prior use of one or both of its trade-names. This the opponent has failed to do. The Orleans affidavit evidences references to The Ivy League in certain publications of member universities but those references do not, in my view, constitute use of that phrase as a trade-mark for any wares or services. Furthermore, although Mr. Orleans states, in his affidavit, that the opponent entered into a licensing agreement on October 7, 1994 to distribute IVY LEAGUE merchandise in Canada, he provides no evidence of any use of that mark or name in this country. He also states that IVY LEAGUE clothing has been sold since 1992 but there is no indication that it has been sold in Canada. More importantly, even if these activities could somehow be construed as establishing use of the opponent’s mark or name in Canada, such use would have occurred well after the material time. Thus, the fifth ground of opposition is unsuccessful.
As for the sixth ground of opposition, the onus or legal burden is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its 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.). Furthermore, the material time for considering the circumstances respecting this issue is as of the filing of the opposition (i.e. - November 8, 1993): 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.). Finally, there is an evidential burden on the opponent to prove the allegations of fact supporting its ground of non-distinctiveness.
In the present case, the opponent has restricted its ground of non-distinctiveness to allegations of confusion with its trade-marks and trade-names IVY LEAGUE and THE IVY LEAGUE. However, the Orleans affidavit fails to establish any use of those terms as trade-marks or trade-names in Canada at any time. Thus, the opponent has failed to meet its evidential burden respecting its sixth ground and it is therefore unsuccessful. Even if I could somehow construe the Orleans affidavit as showing some minor use of the opponent’s mark in Canada, it would pale in comparison to the fairly extensive use shown to date of the applicant’s mark IVY LEAGUE. Thus, the sixth ground would have been unsuccessful in any event.
The opponent contended that it had made its trade-marks and trade-names known in Canada for many years. However, as noted, the evidence of record does not establish any use of the terms IVY LEAGUE and THE IVY LEAGUE in Canada as a trade-mark or trade-name. At most, the opponent’s evidence establishes that a relatively small number of Canadians have attended one of the eight universities comprising the opponent and that many of those individuals would be aware of the fact that those universities comprise an informal association called The Ivy League. There is also some evidence that some Canadian high school students who have been recruited by one or more of the eight universities may be aware of the phrase The Ivy League.
Even if the opponent had broadly worded its sixth ground to rely on all activities associated with the words IVY LEAGUE and THE IVY LEAGUE, the ground would have been unsuccessful. The evidence, in fact, tends to show that those words are not distinctive of anyone other than the applicant. As stated by the opponent at page nine of its written argument, the opponent is not a separate entity but is rather an unincorporated association. Thus, the present opposition has effectively been pursued as a joint opposition by the eight American universities and the evidence of record tends to show that some of those universities use the words IVY LEAGUE or THE IVY LEAGUE on their own. Mr. Orleans states, in his affidavit, that the eight universities use the words with the license or permission of the Council of Ivy Group Presidents. However, there is no direct evidence of that fact and given that the Council is not a separate entity it is difficult to conceive how it can function as a licensor.
It should be noted that the words “Ivy League” are defined in Webster’s New Collegiate Dictionary as relating to a group of eastern U.S. colleges widely regarded as high in scholastic and social prestige. Given the non-distinctive uses of the words by the eight universities and
others, it would appear that the words “Ivy League” have come to designate a group of universities and cannot serve to distinguish one such school from another.
Even if the opponent had been able to establish that many Canadians know that the words “Ivy League” refer to a particular group of universities, that fact would not have been sufficient to negate the distinctiveness of the applicant’s mark. Even if the average consumer is aware of that meaning of the words “Ivy League”, he or she would not likely assume that shoes or knapsacks bearing those words as a trade-mark have been produced under sponsorship, approval or license from one or more of the eight universities.
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 HULL, QUEBEC, THIS 8th DAY OF SEPTEMBER, 1997.
David J. Martin,
Member,
Trade Marks Opposition Board.