LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2017 TMOB 1
Date of Decision: 2017-01-04
IN THE MATTER OF AN OPPOSITION
|
|
1587431 ONTARIO LTD., operating as DRIVETIME
|
Opponent |
| and |
||
|
|
1850420 Ontario Inc., operating as DRIVETIMEOTTAWA
|
Applicant
|
|
|
|
|
|
|
1,655,711 for DRIVETIMEOTTAWA
1,655,712 for DRIVETIMEOTTAWA & Design |
Applications
|
[1]
1850420 Ontario Inc., operating as DRIVETIMEOTTAWA (the Applicant) has applied-for registration of the trade-marks DRIVETIMEOTTAWA and DRIVETIMEOTTAWA & Design set out below for use in association with automobile dealership services; arranging for automobile purchase financing (the Services). The Applicant’s applications are based on the use of these trade-marks in Canada since at least as early as December 20, 2011.
[2]
1587431 ONTARIO LTD., operating as DRIVETIME (the Opponent), has used the trade-mark DRIVETIME since November 2010 in association with the same services in London, Ontario and has opposed the registration of the DRIVETIMEOTTAWA trade-marks on the basis that these trade-marks are confusing with its trade-mark.
[3]
For the reasons that follow, I find that these applications should be refused.
Application No. 1,655,711
[4]
I will first consider the Opponent’s opposition to application No. 1,655,711.
File Record
[5]
The Applicant filed application No. 1,655,711 on December 10, 2013 for registration of the trade-mark DRIVETIMEOTTAWA (the Mark) based on its use of the Mark in association with the Services since at least as early as December 20, 2011.
[6]
The application was advertised in the October 8, 2014 issue of the Trade-marks Journal.
[7]
The statement of opposition was filed on December 4, 2014 and raises five grounds of opposition under section 38 of the Trade-marks Act, RCS 1985, c T‑13 (the Act) which can be summarised as follows:
1.
The application does not conform to the requirements of section 30(b) of the Act as the Applicant has not used the Mark in association with the Services since December 20, 2011;
The application does not conform to the requirements of section 30(i) of the Act as the Applicant cannot claim that it is satisfied that it is entitled to use the Mark in Canada in association with the Services while being aware of the Opponent’s previous use in Canada of its trade-name and trade-mark DRIVETIME;
The Applicant is not the person entitled to registration under section 16(1)(a) of the Act because the Mark is confusing with the Opponent’s trade-mark DRIVETIME which had previously been used and made known in Canada by the Opponent in association with the same services;
The Applicant is not the person entitled to registration under section 16(1)(c) of the Act because the Mark is confusing with the Opponent’s trade-name DRIVETIME which had previously been used and made known in Canada by the Opponent in association with the same services; and
The Mark is not distinctive within the meaning of section 2 of the Act and does not actually distinguish nor is it adapted to distinguish the Services of the Applicant from those of the Opponent.
[8]
The Applicant filed and served a counter statement denying all of the grounds of opposition.
[9]
In support of its opposition, the Opponent filed the affidavit of Pablo Pelloni (dated May 25, 2015). The Applicant did not file any evidence. No written arguments were filed. The Opponent requested a hearing; however, at the scheduled time and date it requested a brief adjournment as it had retained new counsel. A brief adjournment was granted. The Opponent did not confirm its attendance, nor attend the rescheduled hearing.
Onus and Material Dates
[10]
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 CPR (3d) 293 (FCTD) at 298].
[11]
The material dates that apply to the grounds of opposition are as follows:
·
sections 38(2)(a)/30 - the date of filing of the application [see Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 at 475 (TMOB)];
·
sections 38(2)(c)/16(1) – the date of first use set out in the application [section 16(1) of the Act]; and
·
sections 38(2)(d)/2 - the date of filing of the opposition [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC)].
Section 30(b) Ground of Opposition
[12]
The Opponent alleges that the Applicant has not used the Mark in Canada in association with the Services since the date claimed in the application. There is no evidence to support such an allegation. As such, this ground of opposition is rejected.
Section 30(i) Ground of Opposition
[13]
The Opponent alleges that the Applicant could not have been satisfied that it was entitled to use the Mark in Canada while being aware of the previous use in Canada by the Opponent of its trade-mark and trade-name DRIVETIME. Where an applicant has provided the statement required by section 30(i) of the Act, a section 30(i) ground should only succeed in exceptional cases, such as where there is evidence of bad faith on the part of an applicant [see Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155]. As there is no evidence of bad faith or exceptional circumstances, this ground of opposition is rejected.
Section 16(1)(a) Ground of Opposition
[14]
The Opponent has an initial evidential burden of establishing use or making known of its trade-mark DRIVETIME prior to the first use date set out in the application (December 20, 2011) as well as non-abandonment of its trade-mark at the date of advertisement (October 8, 2014). I am satisfied that Mr. Pelloni’s, the General Manager of the Opponent, evidence that the DRIVETIME trade-mark has been featured on Bills of Sale showing the purchase of used cars from the Opponent (see, for example, Exhibits C-D) prior to the Applicant’s first use date is sufficient to meet the Opponent’s burden.
[15]
As I am satisfied that the Opponent has met its evidential burden, I must now determine whether the Applicant has met its onus of proving that there is no reasonable likelihood of confusion on a balance of probabilities.
[16]
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 goods or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.
[17]
In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 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 goods, 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 CPR (4th) 321 (SCC); and Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC).] Below, I consider each of the circumstances enumerated in section 6(5) of the Act.
inherent distinctiveness and extent known
[18]
The Opponent’s trade-mark DRIVETIME possesses a fairly low degree of inherent distinctiveness as the mark suggests that when it is time for a consumer to purchase a car to drive, that it purchase one at the Opponent’s auto dealership (see, for example, the May 19, 2015 television script at Exhibit Q). Similarly, the Mark also possesses a low degree of inherent distinctiveness as it suggests similar services offered in the Ottawa area.
[19]
A trade-mark may acquire distinctiveness by becoming known through use or promotion. There is no evidence that the Mark has acquired distinctiveness. In contrast, Mr. Pelloni states that since November, 2010, the Opponent has used and made known in Canada the trade-mark DRIVETIME in association with automobile dealership services and automobile financing services (para 3). As evidence, Mr. Pelloni attaches two Bills of Sale featuring the trade-mark DRIVETIME showing the purchase and financing of cars (Exhibits C-D), invoices from the Print Studio for signage (Exhibits F-G) and photographs of signage (Exhibits U) and information pertaining to the airing of commercials for the DRIVETIME auto dealership (Exhibits N-R).
[20]
Although the Opponent could have provided more fulsome details pertaining to the use of its trade-mark DRIVETIME, the evidence permits me to find that the Opponent has used the trade-mark DRIVETIME on at least some Bills of Sale (Exhibit C-D) and on signage (see Exhibit U, along with Exhibit F for the invoice from the Print Studio for signage dated September 16, 2010). Further, average monthly sales during the time period covering the Bills of Sales were approximately $200,000 (para 4). Taken as a whole Mr. Pelloni’s evidence leads me to the conclusion that the Opponent’s trade-mark is known to at least some extent in London, Ontario. Further, while no samples or video of television commercials airing have been provided, the scripts attached as Exhibit Q indicate that the DriveTime logo was featured 2010 footage which would have contributed to the acquired distinctiveness of the Opponent’s trade-mark. With respect to the use of the description DriveTime logo in the scripts, as the design trade-mark featured in Mr. Pelloni’s affidavit at Exhibit U includes minimal embellishment, I find that use of the DriveTime logo is use of the trade-mark DRIVETIME.
length of time each has been in use
[21]
Mr. Pelloni asserts that the trade-mark DRIVETIME has been used in Canada since at least as early as November 2010 and provides proof of use from November 22, 2010 (Exhibit D – Bill of Sale dated November 22, 2010); there is no evidence that the Applicant has used the Mark.
degree of resemblance
[22]
The Mark incorporates the entirety of the Opponent’s trade-mark DRIVETIME. While the trade-marks must be assessed in their entirety, it is still possible to focus on particular features of the mark that may have a determinative influence on the public’s perspective of it [United Artists Pictures Inc. v Pink Panther Beauty Corp., [1998] 3 FC 534 (FCA) at para. 34]. Where the parties' trade-marks share features but the differences serve to dominate those common features, there will be little likelihood of confusion [Chalet Bar B-Q (Can.) Inc. v. Foodcorp Ltd. (1982), 66 CPR (2d) 56 at 73 (FCA)]. However, here the word OTTAWA modifies DRIVETIME and does not serve to diminish the degree of resemblance as it is descriptive [Reno-Dépôt Inc. v Homer TLC Inc. (2009), 84 CPR (4th) 58 (TMOB) at para. 58]. Further, the differences between the marks may compound rather than eliminate confusion since consumers may well regard the Mark as indicating an Ottawa location of the Opponent’s business.
nature of goods, business and trade
[23]
This factor favours the Opponent as it operates an automobile dealership which offers financing. Given that the parties’ services are identical, I infer that the nature of the business and trade of each is at the very least similar or related.
conclusion
[24]
Based on the foregoing, I find that the Applicant has not satisfied its legal onus on a balance of probabilities of establishing that there is no reasonable likelihood of confusion as between the Mark and the Opponent’s DRIVETIME trade-mark.
Section 16(1)(c) Ground of Opposition
[25]
The Opponent has an initial evidential burden of establishing use of its trade-name prior to the first use date set out in the application (December 20, 2011) as well as non-abandonment of its trade-name at the date of advertisement (October 8, 2014). Since the Opponent’s evidence relates exclusively to the use of the trade-mark DRIVETIME rather than the trade-name DRIVETIME, this initial burden has not been satisfied. Consequently, the ground of opposition based on section 16(3)(c) of the Act is rejected.
Distinctiveness Ground of Opposition
[26]
In order to meet its evidential burden, the Opponent must show that its DRIVETIME trade-mark or trade-name had become sufficiently known to negate the distinctiveness of the Mark [Bojangles’ International, LLC v Bojangles Café Ltd 2006 FC 657 at paras 33-34]. When an opponent’s reputation is restricted to a specific area of Canada, an opponent’s evidential burden may be satisfied if its trade-mark is well known in a specific area [Bojangles, supra; CEG License Inc v Joey Tomato’s (Canada) Inc. (2011), 97 CPR (4th) 436 (TMOB) aff`d (2012), 110 CPR (4th) 398 (TMOB)]. However, the evidence of record does not allow me to conclude that the Opponent’s trade-mark or trade-name DRIVETIME is well known in a specific area of Canada. In the absence of more specific information regarding the extent of the Opponent’s use of the trade-mark or trade-name DRIVETIME or the exposure of those in the London area to this trade-mark or trade-name, I cannot conclude that either is well-known in this area.
Application No. 1,655,712 for DRIVETIMEOTTAWA & Design
[27]
Application No. 1,655,712 for the trade-mark DRIVETIMEOTTAWA & Design was filed on December 10, 2013, and is based on the Applicant’s use in Canada in association with the Services since at least as early as December 20, 2011. The grounds of opposition, issues, material dates and evidence are entirely analogous to those discussed with respect to application No. 1,655,711. For the same reasons as with application No. 1,655,711, the Opponent fails to meet its initial evidential burden with respect to the grounds of opposition based on sections 30(b), 30(i), 16(1)(c) and 2 of the Act and these grounds are rejected.
[28]
With respect to the section 16(1)(a) ground of opposition, the section 6(5) factors differ from application No. 1,655,711 in the following respects. The inherent distinctiveness of the trade-mark DRIVETIMEOTTAWA & Design is greater than that of the Opponent’s trade-mark DRIVETIME due to the prominent design elements. With respect to the degree of resemblance, however, there is still a high degree of resemblance between the Opponent’s trade-mark DRIVETIME and the applied-for trade-mark DRIVETIMEOTTAWA & Design. The addition of the design elements which include a car and truck design and the descriptive words Ottawa and “cars, trucks, anything that drives, we sell” will not assist consumers distinguish between this trade-mark and the Opponent’s DRIVETIME trade-mark. As such, I find that the Applicant has not satisfied its legal onus on balance of probabilities of establishing no reasonable likelihood of confusion as between the trade-mark DRIVETIMEOTTAWA & Design and the Opponent’s DRIVETIME trade-mark.
Disposition
[29]
Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse both applications.
_____________________________
Natalie de Paulsen
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
TRADE-MARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
HEARING DATE: December 16, 2016
APPEARANCES
No One Appearing For the Opponent
No One Appearing For the Applicant
AGENTS OF RECORD
No Agent Appointed For the Opponent
O'BRIEN TM SERVICES INC For the Applicant