IN THE MATTER OF AN OPPOSITION by
Wallace International Silversmiths, Inc. to
application No. 739,993
for the trade-mark ROGERS CO. & Design
filed by Stanley Roberts, Inc.
On October 27, 1993, the applicant, Stanley Roberts, Inc., filed an application to register the trade-mark ROGERS CO. & Design. The application is based upon use of the trade-mark in Canada since at least as early as June 1993 in association with the following wares:
Cutlery namely, kitchen knives, carving knives, steak knives,
butcher knives, paring knives, boning knives, cheese knives, vegetable
knives, bread knives, grapefruit knives, knife sharpeners, and
peelers, individually and as sets including knife holders; flatware,
namely knives, forks, and spoons used as tableware, individually and
as sets, kitchen tools and utensils namely spoons, spatulas, forks,
ladles, salad servers, food mashers, and wood cutting boards,
individually and sets, kitchen ware, namely, pots and pans, tea
kettles.
The mark is shown below:
The application was
advertised for opposition purposes in the Trade-marks Journal of November 8,
1995. The opponent, Wallace International Silversmiths, Inc., filed a statement of opposition on
November 12, 1996. The applicant filed and served a counter statement.
As rule 41 evidence, the opponent filed the affidavit of Faye A. Florence plus certified copies of eight Canadian trade-mark registrations.
As rule 42 evidence, the applicant filed the affidavit of Edward L. Pomeranz plus two affidavits of Gladys Tibbo Witt.
The applicant requested and obtained leave to file further evidence pursuant to rule 44, namely a third affidavit of Gladys Tibbo Witt.
Only the applicant filed a written argument. An oral hearing was not requested.
Grounds of Opposition
Although the ultimate legal burden lies on the applicant in opposition proceedings, there is an evidential burden on the opponent to first adduce sufficient evidence to support the truth of its allegations. [see John Labatt Limited v. The Molson Companies Limited (1990), 30 C.P.R. (3d) 293 at 298]
Paragraph 12(1)(d) Ground of Opposition
The first ground of opposition alleges 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 one or more of eight registered trade-marks owned by the opponent. Each of these marks includes the word ROGERS and is for use in association with flatware, silverware, cutlery or hollowware. The opponent alleges that it owns a family of such marks.
The opponent has filed certified copies of each of its eight registrations. However, the applicant’s rule 44 evidence shows that each of these registrations was expunged in 2004.
As the material date for assessing the likelihood of confusion under paragraph 12(1)(d) 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.)] and the opponent’s registrations are no longer in good standing, I dismiss this ground of opposition.
Paragraph 16(1)(a) Ground of Opposition
The second ground of opposition alleges that the applicant is not the person entitled to registration since at the date of first use alleged in the application, the applicant’s trade-mark was confusing with the opponent’s family of ROGERS trade-marks, which had been previously used in Canada.
With respect to this ground of opposition, there is an initial burden on the opponent to evidence use of its trade-marks prior to the applicant’s claimed date of first use. The opponent’s affiant has not shown that the opponent used its marks in Canada prior to June 1993; in fact she has not even stated that the opponent has used its marks in Canada at any time. As the mere filing of a certified copy of an opponent's registration will not support the opponent's evidential burden with respect to a ground of opposition based on allegations of non-entitlement, the opponent has not met its evidential burden. This ground of opposition accordingly fails.
Subsection 30(i) Ground of Opposition
The third ground of opposition, which is based on subsection 30(i) of the Act, also fails because the opponent has not pleaded or shown that the applicant was aware of the opponent’s trade-marks when the applicant filed its application.
Distinctiveness Ground of Opposition
The final ground of opposition is that the applicant’s trade-mark is not distinctive and does not actually distinguish nor is it adapted to distinguish the applicant’s wares from the wares of the opponent. To meet its evidential burden with respect to this ground of opposition, the opponent must show that one of its marks had become known sufficiently to negate the distinctiveness of the applied-for mark as of the filing date of the statement of opposition. [see Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 (F.C.T.D.), Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 (F.C.A.), Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 412 (F.C.A.) and Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.) at 324] As there is no evidence showing that any of the opponent’s marks had acquired any reputation in Canada through use or promotion as of any date, the opponent has not met its initial burden and this ground fails.
Disposition
Having been delegated by the Registrar of Trade-marks by virtue of subsection 63(3) of the Trade-marks Act, I reject the opposition pursuant to subsection 38(8) of the Act.
DATED AT TORONTO, ONTARIO, THIS 12th DAY OF AUGUST 2005.
Jill W. Bradbury
Member
Trade-marks Opposition Board