LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2011 TMOB 25
Date of Decision: 2011-02-22
IN THE MATTER OF AN OPPOSITION by Cooper Industries, LLC to application No. 1,266,954 for the trade-mark BLACK MAX in the name of KDS Corporation
[1] On August 2, 2005, KDS Corporation (the Applicant) filed an application to register the trade-mark BLACK MAX (the Mark). The application is based on use of the Mark in Canada in association with spare blades for utility knives since as early as November 5, 2002.
[2] The application was advertised for opposition purposes in the Trade-marks Journal of March 16, 2006.
[3] On May 15, 2006, Cooper Industries, LLC (the Opponent) filed a statement of opposition. The Applicant filed and served a counter statement in which it denied the Opponent’s allegations.
[4] In support of its opposition, the Opponent filed an affidavit of Paul Whalen. The Applicant elected to not file any evidence in support of its application and did not cross-examine Mr. Whalen.
[5] On November 25, 2009, the Opponent was granted leave to amend its statement of opposition.
[6] Only the Opponent filed a written argument. An oral hearing was held in which only the Opponent participated.
Likelihood of Confusion
[7] The Opponent has pleaded a number of grounds of opposition pursuant to the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act) but this proceeding is primarily concerned with the likelihood of confusion between the Mark and the Opponent’s trade-mark BLACK MAX (the Opponent’s Trade-mark). The Opponent’s Trade-mark has been registered under No. TMA667,106 for tape measures and its registration claims use of the mark in Canada since at least as early as January 1990. I will focus my discussion on the two following grounds of opposition:
1. contrary to s. 12(1)(d), the Mark is not registrable because it is confusing with the Opponent’s Trade-mark, registration No. TMA667,106;
2. contrary to s. 16(1), the Applicant is not the person entitled to registration of the Mark because, at the Applicant’s claimed date of first use, the Mark was confusing with the Opponent’s Trade-mark, which had been previously used in Canada in association with tape measures and tape blades.
[8] The material dates with respect to the aforementioned grounds of opposition are 1) the date of my decision [Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks (1991), 37 C.P.R. (3d) 413 (F.C.A.)] and 2) the Applicant’s claimed date of first use.
[9] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist [see John Labatt Limited v. The Molson Companies Limited (1990), 30 C.P.R. (3d) 293 (F.C.T.D.) at 298].
[10] I will first assess the likelihood of confusion under the s. 12(1)(d) ground as of today’s date. The Opponent has met its initial burden because registration No. TMA667,106 is extant.
[11] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
[12] In applying the test for confusion, I must have regard to all the surrounding circumstances, including those specifically enumerated in s. 6(5) of the Act, namely: (a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; (b) the length of time each has been in use; (c) the nature of the wares, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight. [See, in general, Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.).]
inherent distinctiveness of the trade-marks and the extent to which they have become known
[13] The parties’ marks are identical and have the same degree of inherent distinctiveness. However, as only the Opponent has provided evidence of the use and promotion of its mark, a consideration of the extent to which the marks have become known favours the Opponent.
length of time each trade-mark has been in use
[14] A consideration of the length of time that each mark has been in use favours the Opponent.
nature of the wares, services, business or trade
[15] When considering the wares, services and trades of the parties, it is the statement of wares or services in the parties’ trade-mark application or registration that govern in respect of the issue of confusion arising under s. 12(1)(d) [Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.); Miss Universe, Inc. v. Dale Bohna (1984), 58 C.P.R. (3d) 381 (F.C.A.)].
[16] Although there are differences between tape measures and replacement blades for utility knives, these wares can both be classified as small, inexpensive hardware tools. Accordingly, in the absence of evidence to the contrary, I will assume that the parties’ channels of trade could overlap. I also note that Mr. Whalen has attested that the Opponent has two business segments (i. electrical products and ii. tools and hardware) and that the Applicant markets a wide variety of measuring tapes (albeit not under the Mark).
[17] A consideration of the nature of the parties’ wares, services, business or trade favours the Opponent.
degree of resemblance between the trade-marks
[18] As the parties’ marks are identical, a consideration of the degree of resemblance between the marks necessarily favours the Opponent.
Conclusion
[19] Each of the factors listed under s. 6(5) favours the Opponent and the Applicant has filed neither evidence nor argument in support of its application. The Applicant has clearly not met its legal burden and the s. 12(1)(d) ground of opposition succeeds.
[20] Mr. Whalen’s evidence satisfies the Opponent’s initial burden under its s. 16(1) ground of opposition and all of the s. 6(5) considerations similarly favour the Opponent as of that ground’s earlier material date. Accordingly, the s. 16(1) ground succeeds for reasons similar to those discussed under the s. 12(1)(d) ground.
Disposition
[21] Pursuant to the authority delegated to me under s. 63(3) of the Act, I refuse the application pursuant to s. 38(8) of the Act.
______________________________
Jill W. Bradbury
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office