IN THE MATTER OF AN OPPOSITION by
Mark’s Work Wearhouse Ltd. to application No. 819,823
for the trade-mark MOUNTAIN GEAR & Design
filed by Mountain Gear, Inc.
On August 6, 1996, the applicant, Mountain Gear, Inc., filed an application to register the trade-mark MOUNTAIN GEAR & Design. The application is based upon proposed use of the trade-mark in Canada in association with footwear, namely hiking shoes, hiking boots, work shoes and work boots. The application is also based upon use and registration of the mark in association with the same wares in the United States of America and claims a convention priority filing date of March 25, 1996 based upon the corresponding U.S. application. The applicant has disclaimed the right to the exclusive use of the words MOUNTAIN GEAR apart from the trade-mark. The mark is shown below:
The application was advertised for opposition purposes in the Trade-marks Journal of October 21, 1998. The opponent, Mark’s Work Wearhouse Ltd., filed a statement of opposition on December 21, 1998. In its statement of opposition, the opponent states that it is the owner of the following Canadian trade-mark registrations:
• No. 326,921 for MOUNTAIN GEAR & Design registered on May 1, 1987 in association with wearing apparel, namely jackets based on use since at least as early as October 1984
• No. 418,697 for MOUNTAIN GEAR & Design registered on October 22, 1993 in association with jackets, boots, hiking boots, gloves, mitts, headwear namely, hats, caps and toques; sport bags, backpacks, fanny packs, duffle bags and wearing apparel namely, coats, pants and shirts based on a declaration of use filed July 19, 1993
The opponent has disclaimed the right to the exclusive use of the word GEAR apart from the trade-mark in each of its registrations.
The applicant filed and served a counter statement in which it denied the grounds of opposition.
The opponent filed as its evidence certified copies of its two trade-mark registrations and the affidavit of Richard G. Harrison.
As its evidence, the applicant filed the affidavit of Jong S. Woo and three affidavits of Gladys Tibbo Witt. By letter dated October 18, 2000, the applicant was granted leave to file a fourth affidavit of Gladys Tibbo Witt.
No reply evidence was filed and none of the affiants was cross-examined on his/her affidavit. Only the opponent filed a written argument. An oral hearing was not requested.
The Evidence
Mr. Harrison, the opponent’s Senior Vice-President, Merchandising, informs us that the opponent manufactures all types of leisure and workwear clothes and footwear and operates retail clothing stores. As of September 1, 1999, the opponent operated numerous retail clothing stores across Canada. The opponent sells some products in its stores that bear other parties’ trade-marks but the majority of the wares that it sells are products bearing its own trade-marks. According to Mr. Harrison, one of the opponent’s trade-marks is MOUNTAIN GEAR. He provides some materials concerning such trade-mark, including the following:
• Catalogues circulated to customers by way of direct mail and as a hand out in stores (e.g. the 1990 annual catalogue advertises jackets and boots in association with the MOUNTAIN GEAR & Design mark registered under No. 326,921 and the 1994 Fall and Winter Guide advertises jackets in association with the MOUNTAIN GEAR & Design mark registered under No. 418,697)
• “specimen labels and tags of my company’s MOUNTAIN GEAR (DESIGN) trade-mark which is used in association with the various articles of clothing and footwear by applying it to the products themselves, to the packaging, or as tags attached to the products” - the items provided show the trade-mark that is the subject of registration No. 418,697, which suggests that the opponent may only now be using its more recently registered mark
• 1987 newspaper ad for clothing displaying registered trade-mark No. 326,921
• 1988 Fall Shopping Guide promoting footwear in association with registered trade-mark No. 326,921
• a 1995 flyer advertising footwear bearing registered trade-mark No. 418,697
• a 1995 flyer advertising clothing bearing registered trade-mark No. 418,697
• a 1997 Outdoor Shoe Guide advertising footwear in association with registered trade-mark No. 418,697
• annual sales for the years 1994 through 1998 for MOUNTAIN GEAR (DESIGN) (i.e. the trade-mark registered under No. 418,697) broken down by clothing and footwear – footwear sales ranged from $246,116 (or 4,690 pairs) in 1994 to $810,297 (or 16,468 pairs) in 1998 while solar fleeces had large sales in 1994 and 1995 (about $2 million and $5 million respectively) but sank to no sales in 1998
Mr. Woo, the applicant’s Vice-President, explains that products manufactured under the control of the applicant are sold through footwear and sporting goods retailers such as FOOT LOCKER and VIM. He provides sales figures and volume for footwear sold in association with the applied for trade-mark from 1996 through 1999 but as he states that these figures relate to sales in the United States and Canada, and does not distinguish between the two countries, these figures are not meaningful in these proceedings.
Mr. Woo states,
“at the time that the applicant adopted the stylized design for the mark of the Canadian 819,823 application, applicant was aware that other companies used the word combination ‘mountain gear’, either alone or in combination with various different graphic designs, to identify various articles of clothing and/or footwear and/or equipment manufactured and/or sold in countries such as the U.S.A., Canada, and countries in Central America, South America and Europe. Applicant was not aware of any such use of the words ‘mountain gear’ by Mark’s Work Wearhouse, Ltd. prior to applicant’s adoption of its distinctive mark. In the course of the proceedings involving the Canadian 819,823 application, in recognition of the common use of the word combination ‘mountain gear’, and at my direction, applicant disclaimed the right to the exclusive use of the words MOUNTAIN GEAR apart from the trade-mark as a whole.”
Mr. Woo provides some examples of magazine advertisements relating to his company’s footwear but there is no admissible evidence that these were distributed in Canada. His statement that the applicant’s mark is also displayed in billboard advertising in major U.S. metropolitan areas visited by Canadian residents cannot be accorded any weight both because the extent and timing of such ads is not provided and because of his vagueness concerning their exposure to Canadians.
The most pertinent portions of Ms. Tibbo Witt’s evidence are as follows:
• there are 3 Canadian trade-mark registrations for marks incorporating the words “mountain gear”, in addition to the present parties’ marks, namely
o registration no. 474,246 issued April 7, 1997 in the name of Mountain View Bag Inc. for the mark BLACK BEAR MOUNTAIN GEAR for sport bags, shirts, gloves, helmets, protective apparel namely elbow pads and shoulder pads
o registration No. 427,231 issued May 13, 1994 in the name of Whistler Mountain Resort Limited Partnership for the mark WHISTLER MOUNTAIN GEAR & Design for men’s, women’s and children’s clothing, hand implements, tools and accessories, jewellery, writing instruments, travel cases, eyewear, fancy goods and certain sporting goods such as shoe laces
o registration No. 516,672 issued September 21, 1999 in the name of Whistler Mountain Resort Limited Partnership for the mark WHISTLER MOUNTAIN GEAR & Design for men’s, women’s and children’s wearing apparel, shoe laces, overshoes, shoes, runners, sandals, boots, etc.
▪ telephone listings for 2 Canadian companies that incorporate the words “Mountain Gear” in their name: Altus Mountain Gear and Extreme Mountain Gear
▪ Internet web site pages referring to the following: Balsam Mountain Gear, Brule Mountain Gear (in Canada but doesn’t appear to sell footwear), Mountain Gear Inc., Mountain Gear Corp., Solstice Technical Mountain Gear, Jagged Edge Mountain Gear, Appalachian Mountain Gear, Mountain Sports Gear, Any Mountain gear, Ski Mountaineering Gear
Ms. Tibbo Witt also provides evidence of names or marks that include either the word MOUNTAIN, the word GEAR or a Mountain Design, but I do not consider these particularly relevant.
Likelihood of Confusion
One of the grounds of opposition is that the applicant’s trade-mark is not registrable pursuant to paragraph 12(1)(d) of the Trade-marks Act because it is confusing with each of the opponent’s above-mentioned registered trade-marks. I will first consider the likelihood of confusion between the applicant’s mark and the opponent’s mark that is registered under No. 418,697.
The material date with respect to the paragraph 12(1)(d) ground of opposition is the date of my decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37 C.P.R. (3d) 413 (F.C.A.)].
There is a legal burden on the applicant to establish that there would be no reasonable likelihood of confusion between the marks in issue. This means that if a determinate conclusion cannot be reached, the issue must be decided against the applicant [see John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D.)]. However, the opponent has an initial burden to prove the allegations of fact supporting its grounds of opposition. The opponent has met its initial burden by furnishing a certified copy of its trade-mark registration.
The test for confusion is one of first impression and imperfect recollection. In applying the test for confusion set forth in subsection 6(2) of the Trade-marks Act, the Registrar must have regard to all the surrounding circumstances, including but not limited to those specifically enumerated in subsection 6(5) of the Act. Those factors specifically set out in subsection 6(5) are: the inherent distinctiveness of the trade-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; and the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. The weight to be given to each relevant factor may vary, depending on the circumstances [see Clorox Co. v. Sears Canada Inc. 41 C.P.R. (3d) 483 (F.C.T.D.); Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 C.P.R. (3d) 308 (F.C.T.D.)].
Each of the trade-marks combines the words “mountain gear” with designs depicting the “great outdoors”, in particular mountains. Although both marks have some inherent distinctiveness, neither one has an advantage over the other in this category.
The extent to which each mark has become known favours the opponent, as does the length of time that they have been in use.
The parties’ wares overlap.
Both parties’ wares are sold to members of the general public through retail stores.
The parties’ marks are identical when sounded. In idea suggested, they are very similar. In addition, they are similar in appearance.
As a further surrounding circumstance, I have considered Mr. Woo’s statement that there has been no confusion. However, there is insufficient evidence of the marks being in the same geographic area for any significant period of time to make a lack of confusion meaningful.
The state of the marketplace is another surrounding circumstance. I turn first to the evidence of the state of the register. Such evidence can be used to make inferences about the state of the marketplace but inferences can only be drawn where large numbers of relevant registrations are located [see Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432; Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R. (3d) 205 (F.C.T.D.); Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.)]. The existence of three registrations for trade-marks incorporating the words MOUNTAIN GEAR is insufficient for me to make any meaningful conclusions about the marketplace. Moreover, there is no evidence of the use of any of these three marks, two of these registrations do not cover shoes, and each of them includes a leading distinctive word (Black Bear or Whistler), which would serve to distinguish them from the opponent’s mark.
The applicant’s evidence of telephone directories, web sites and the like shows that the phrase “mountain gear” is not unique and I acknowledge that neither of the marks at issue is inherently strong. However, I believe that only three of the businesses located are in Canada and each of these prefaces the words “mountain gear” with another word (Altus, Brule, and Extreme), which would serve to distinguish their names from the opponent’s mark. Moreover, there is no evidence that any of these businesses sell footwear in association with their “mountain gear” names.
Having considered all of the surrounding circumstances, I conclude that the applicant has not met the legal onus on it to show, on a balance of probabilities, that there is not a reasonable likelihood of confusion between its trade-mark and the trade-mark that is the subject of registration no. 418,697.
I do not intend to address the remaining grounds of opposition in detail. Suffice it to say that if the opponent has properly pleaded a ground of opposition under section 16, then that ground would have succeeded. It is however questionable if the opponent alleged use of its mark(s) prior to the convention priority filing date of the application. I do nevertheless note that the section 16 ground would have been stronger than the paragraph 12(1)(d) ground because there is no evidence of third party use of the words “mountain gear” as of the section 16 material date. Similarly, if the distinctiveness ground of opposition was properly pleaded, then it too would have succeeded. The ground of opposition based on subsection 30(i) would have however failed.
In view of the above, and having been delegated by the Registrar of Trade-marks by virtue of subsection 63(3) of the Trade-marks Act, pursuant to subsection 38(8) of the Act I refuse the application.
DATED AT TORONTO, ONTARIO, THIS 8th DAY OF APRIL, 2004.
Jill W. Bradbury