Citation: 2017 TMOB 120

Date of Decision: 2017-09-06

[UNREVISED ENGLISH

CERTIFIED TRANSLATION]

IN THE MATTER OF THE OPPOSITIONS

	Tarkett Inc.	Opponent
and
	Les Planchers Mercier Inc.	Applicant
	1,653,633 for PURE EXPRESSION 1,653,634 for PURE EXPRESSION 1,653,635 for PURE EXPRESSION	Applications

Introduction

[1]  Tarkett Inc. (the Opponent) opposes the registration of the PURE EXPRESSION trade-mark (the Mark) covered by each of applications 1,653,633; 1,653,634; and 1,653,635 in the name of Les Planchers Mercier Inc (the Applicant), filed on November 26, 2013, with the Registrar of Trade-marks.

[2]  Each of these applications based on the proposed use in Canada in association with the following goods: [TRANSLATION] “pre-oiled wood flooring”.

[3]  Application 1,653,635 concerns the word mark PURE EXPRESSION, while applications 1,653,633 and 1,653,634 also include a figurative element and the following exclusions:

1,653,633		The words “Fini”, “Par Mercier” and “Certifié GreenGuard” are not part of the mark.
1,653,634		The words ‘Finish’, ‘By Mercier“ and ‘GreenGuard Certified’ are not part of the mark.

[4]  Except when otherwise indicated, I will refer collectively to these three trade-marks as “the Mark”.

[5]  The Opponent essentially bases each of its oppositions on the question of the likelihood of confusion within the meaning of the Trade-marks Act, RSC 1985, c. T-13 (the Act), between the Mark and the EXPRESSIONS trade-mark, registered on June 17, 2010, under TMA769,971 in association with the goods: Flooring, namely vinyl composition tiles, belonging to the Opponent and having allegedly been used by it in Canada.

[6]  As my analysis will reveal, I find there is reason to reject each of the oppositions.

The cases:

[7]  Each of the registration applications was advertised for opposition purposes in the Trade-marks Journal of September 24, 2014.

[8]  Each of the statements of opposition was filed on November 21, 2014, and alleges the Mark is not distinctive within the meaning of section 2 of the Act, that it is not registrable within the meaning of section 12(1)(d) of the Act, and that the Applicant is not the person entitled to registration of the Mark within the meaning of section 16(3)(a) of the Act, because it is confusing with the Opponent’s EXPRESSIONS trade-mark described above. Each of the statements of opposition also raises a ground of opposition based on the non-compliance of the application in question within the meaning of section 30(i) of the Act.

[9]  A counter statement denying each of the grounds of opposition pleaded was filed on March 27, 2015, in each case.

[10]  In support of each of its oppositions, the Opponent filed a statutory declaration by Cindy Labbé, Legal Assistant with the firm representing the Opponent, dated October 15, 2015, attaching a certificate of authenticity of the Opponent’s EXPRESSIONS trade-mark.

[11]  In support of each of its applications, the Applicant filed, in a single comb-bound document with a triple header, the statutory declarations of Jean-François Pleau, lawyer and trade-mark agent with the firm representing the Applicant, dated February 4, 2016, of Élisabeth Breton, lawyer with the same firm, dated February 16, 2016; and of Michel Collin, the Applicant’s Director of Marketing, dated February 17, 2016.

[12]  The two parties filed a written argument in each case and participated in the hearing held for all these cases.

Preliminary Remarks

Applicant’s Evidence

[13]  In each of its written arguments in cases 1,653,633 and 1,653,635, the Opponent maintains that the Applicant failed to file evidence on the ground that a single copy of the comb-bound document had been filed by the Applicant in case 1,653,634. I note in this regard that according to the Registrar’s records, the original copy instead was placed in case 1,653,633, with a copy of the front page filed in cases 1,653,634 and 1,653,635. This front page indicates in its subject that the document consists of the Applicant’s evidence in response to the opposition proceedings brought by the Opponent against each of applications 1653633, 1653634 and 1653635, and bears a triple heading identifying each case.

[14]  Under the circumstances, and after discussion with the parties at the beginning of the hearing, the Opponent withdrew its objection to the effect that no evidence had been placed on the records of cases 1,653,633 and 1,653,635. In other words, the evidence contained in the only comb-bound copy is valid for the other cases.

Admissibility of the Applicant’s Evidence

[15]  In each of its written arguments and during the hearing, the Opponent maintained that the statutory declarations of Mr. Pleau and Ms. Breton had to be excluded from the evidence, on the ground that as lawyers and agents acting on behalf of the Applicant in these cases, they are in a conflict of interest.

[16]  Mr. Pleau’s statutory declaration seeks to establish the Applicant’s good faith at the time of the filing of each of the present applications, in response to the ground of opposition under section 30(i) of the Act. More specifically, Mr. Pleau affirms he [TRANSLATION] “acted in good faith, on behalf of the Applicant, [because he] sincerely believe[d] the Applicant had the right to use [the Mark]” and that “at all relevant times, [the Applicant and he] were unaware of the existence of the trade-mark held by the Opponent”. I agree with the Opponent that such a declaration is problematic in the case at bar. As a lawyer and agent who proceeded to file these applications, Mr. Pleau cannot testify on behalf of the Applicant on this question. Also, I will not account for this statutory declaration in my analysis of the grounds of opposition.

[17]  Ms. Breton’s statutory declaration seeks to file evidence of the state of the Trade-marks Registry. Ms. Breton simply affirms that she was [TRANSLATION] “given the mandate to conduct a search in the databases contained on the website of the Canadian Intellectual Property Office [...] in order to take note of the trade-marks using the term ‘Expressions’ currently in force in Canada”. Ms. Breton explains that she searched for the term “Expressions” by using the “Repérage de marque de commerce” (Trademark lookup) and attaches the results of her search to this effect as Exhibit EB‑1. Exhibit EB‑1 consists of a list of 245 registration application files or registration files, and nothing more. Under the circumstances, I find Ms. Breton’s declaration admissible and non-contentious, although it is more or less useful in the case at bar, as will emerge from my analysis of the likelihood of confusion between the parties’ marks.

Ground of opposition not argued

[18]  In each of its written arguments, the Opponent submits that the Mark is non-registrable under section 12(1)(b) of the Act, on the ground it is clearly descriptive or falsely and misleadingly descriptive of the quality of the goods in association with which the Applicant plans to use it. However, such a ground was not argued by the Opponent in the statements of opposition on the record.

[19]  When questioned on this subject at the beginning of the hearing, the Opponent’s agent recognized this was an error and stated the hypothesis that such an argument had been developed due to the Mark’s low inherent distinctiveness. I will return to the inherent distinctiveness of the Mark later on in my analysis of the likelihood of confusion between the parties’ marks. It is insufficient for now to mention that no ground under section 12(1)(b) of the Act has been argued in these cases.

Analysis

The burden incumbent on the Parties

[20]  It is initially up to the Opponent to establish that its opposition is well-founded. However, the legal onus of showing that the Mark is registrable falls to the Applicant, according to the balance of probabilities [see John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) and Dion Neckwear Ltd v Christian Dior, SA et al (2002), 20 CPR (4th) 155 (FCA)].

Grounds of Opposition Summarily Rejected

[21]  The following grounds of opposition may be rejected summarily without it being necessary to discuss them at length:

Ground of opposition based on non-compliance of each of the applications under Section 30(i) of the Act.

[22]  Each of the statements of opposition alleges that the application in question is not compliant with section 30(i) of the Act in that the Applicant could not, and still cannot, be satisfied it is entitled to use the Mark in Canada due to the use of the previous registration of the EXPRESSIONS mark by the Opponent.

[23]  This ground of opposition, as argued, is invalid. Section 30(i) of the Act simply requires that an applicant provide a statement proving that the applicant is satisfied that he is entitled to use the trade-mark in Canada in association with the goods or services described in his application. The Applicant complied strictly with the requirements of this provision. Moreover, I will add that it is well established in the jurisprudence that a ground of opposition based on section 30(i) should be upheld only in exceptional cases, particularly when the applicant’s bad faith is established [see Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at page 155]. However, nothing establishes the Applicant’s bad faith in the case at bar. On the contrary, the evidence filed by the Applicant through Mr. Collin’s statutory declaration is to the effect that [TRANSLATION], “at any relevant time, the Applicant was unaware of the existence of the trade-mark held by the Opponent” [see paragraphs 8 to 11 of Mr. Collin’s statutory declaration].

Ground based on non-entitlement to registration within the meaning of section 16(3)(a) of the Act

[24]  The Opponent argues that the Applicant is not the person entitled to registration of the Mark under section 16(3)(a) of the Act, because on the filing date of each of the applications, the Mark was confusing with the EXPRESSIONS mark previously used in Canada by the Opponent.

[25]  To discharge its initial burden regarding Section 16(3)(a) of the Act, the Opponent must prove that its EXPRESSIONS trade-mark had been used in Canada previous to the date of filing of each of these applications, and had not been discontinued on the date of their announcement in the Trade-Marks Journal [Section 16(5) of the Act]. This initial burden was not satisfied in the case at bar.

[26]  The only evidence filed on behalf of the Opponent consists of a certificate of authenticity for its registered EXPRESSIONS mark. Although this registration includes a claim of use in Canada of the EXPRESSIONS mark dating back to June 1985, such certificate cannot establish more than one use de minimis [see Entre Computer Centers, Inc v Global Upholstery Co (1992), 40 CPR (3d) 427 (TMOB)]. In other words, this does not inherently establish the use of the EXPRESSIONS mark within the meaning of sections 4 and 16(5) Act.

[27]  I will add on this point that, contrary to the Opponent’s claims during the hearing, the Applicant’s evidence filed through Mr. Collin − which includes, as Exhibit MC‑4, an excerpt from the website of a retailer of the Opponent’s goods, dated February 10, 2016, for the purposes of showing the differences that exist between the parties’ goods in the context of the analysis of the test for confusion (discussed later in my decision) - in no way assists the Opponent. It is sufficient to mention that this excerpt is dated subsequent to the relevant date to assess this ground.

Ground of opposition based on non-distinctiveness of the Mark

[28]  The Opponent alleges the Mark is not distinctive within the meaning of section 2 of the Act, nor adapted to distinguish the Applicant’s goods from those of the Opponent used in association with its EXPRESSIONS trade-mark, due to the confusion created with it.

[29]  To discharge its initial burden in regard to non-distinctiveness, the Opponent must show that its EXPRESSIONS trade-mark had become sufficiently known in Canada on the date of each of its statements of opposition, such as to deny the distinctiveness of the Mark [see Motel 6, Inc v No 6 Motel Ltd (1981), 56 CPR (2d) 44 (FCTD); and Bojangles’ International LLC and Bojangles Restaurants Inc v Bojangles Café Ltd (2006), 48 CPR (4th) 427 (FCTD)]. This burden has not been satisfied in the case at bar, for essentially the same reasons as those indicated above under the ground of opposition based on article 16(3)(a) of the Act. I will add, moreover, that the evidence filed by Mr. Collin does not allow anyone to assess the extent of the use of the Opponent’s EXPRESSIONS mark that may have been made in Canada.

Remaining grounds of opposition

Ground based on the non-registrability of the Mark within the meaning of section 12(1)(d) of the Act.

[30]  The Opponent alleges that the Mark is not registrable within the meaning of Section 12(1)(d) of the Act on the ground it is confusing with the Opponent’s EXPRESSIONS registered mark described above.

[31]  The relevant date for deciding on a ground of opposition based on the non-registrability of a trade-mark in regard to the confusion created with a registered trade-mark is the date of my decision [see Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd (1991), 37 CPR (3d) 413 (FCA)].

[32]  I exercised my discretion and checked that the registration claimed by the Opponent in support of this ground is still in effect in the trade-marks register. Since this is the case, the Opponent has met the initial burden of proof incumbent on it. The Applicant must now show, according to the balance of probabilities, that there is no risk of confusion between the Mark and this mark registered by the Opponent.

The Test for Confusion

[33]  The test for confusion is that of first impression and imperfect recollection. According to subsection 6(2) of the Act, 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.

[34]  In deciding whether these trade-marks cause confusion, the Registrar must take into account all circumstances in the case, specifically those listed in subsection 6(5) of the Act, i.e. a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; b) the length of time the trade-marks or trade-names have been in use; c) the nature of the goods, services or business; d) the nature of the trade; e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. This list is not exhaustive and a different weight could be given to each of these factors, depending on the situation [see Mattel, Inc v 3894207 Canada Inc (2006), 2006 SCC 22, 49 CPR (4th) 321 (SCC); Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée et al (2006), 2006 SCC 23, 49 CPR (4th) 401 (SCC) and Masterpiece Inc v Alavida Lifestyles Inc (2011), 2011 SCC 27, 92 CPR (4th) 361 (SCC)] for a more thorough examination of the general principles governing the test for confusion].

The inherent distinctiveness of the trade-marks and the extent to which they have become known

[35]  The parties’ marks each have an inherent distinctiveness in the context of the goods associated with them. Although they do not consist of invented words, they are no more clearly descriptive of the goods associated with them.

[36]  As has been said, I agree with the Opponent that the Mark is suggestive to a certain extent, in that even in Mr. Collin’s opinion, it seeks to distinguish a type of oiled finish applied to pre-varnished hardwood goods. I reproduce in this regard paragraphs 13 and 14 of Mr. Collin’s statutory declaration. [TRANSLATION]

The “PURE EXPRESSION” oiled finish is intended to be minimalist, close to the material, and thus allows appreciation of the uniqueness of each plank of wood, while offering resistance and durability.

In short, the “PURE EXPRESSION” Mark reflects the ability of the finish to allow the wood to express its own purity and its naturalness, hence the name ‘PURE EXPRESSION’, the whole such as it appears from an excerpt from the Applicant’s website […], filed as Exhibit MC‑2. [I note this excerpt refers to the PURE EXPRESSION name mark and the figurative version covered by application 1,653,633]

[37]  The figurative element contained in applications 1,653,633 and 1,653,634, although inherently original, adds to some extent to the suggestiveness of the Mark, in that it reproduces horizontal wood planks in the background, surrounded by an imperfect sphere probably evoking a drop of oil.

[38]  Likewise, I agree with the Applicant that the Opponent’s EXPRESSIONS mark is suggestive to some extent in the context of ‘vinyl tile compositions’, which could be used to create several compositions of varied patterns and/or colours, as further illustrated in the Opponent’s brochure filed as Exhibit MC‑3 in support of Mr. Collin’s statutory declaration. I will return later to the ideas suggested by the parties’ marks in my appreciation of the degree of resemblance between the marks.

[39]  It is possible to increase the strength of a trade-mark by making it known through promotion or use in Canada.

[40]  In the case at bar, the only evidence of any use of any of the marks involved is found in Mr. Collin’s statutory declaration.

Mr. Collin’s statutory declaration

[41]  Mr. Collin affirms that the Applicant is a company founded 35 years ago and is a leader in the pre-varnished hardwood flooring industry. It distributes its goods throughout North American via many retailers [see paragraphs 4 and 5].

[42]  Mr. Collin affirms that the Applicant is recognized for offering upscale goods, manufactured in Quebec, and proposing pre-varnished goods, thus avoiding the inconveniences for consumers of having their floors sanded and varnished on site, the whole such as it appears from the copy of the Applicant’s website, which he files as Exhibit MC -1. Thus, the goods offered by the Applicant are upscale wood flooring intended for consumers wishing to add style and cachet to their residence [see paragraphs 6 and 7].

[43]  More specifically concerning the Mark, Mr. Collin affirms that it is meant to distinguish, as indicated above, a type of oiled finish applied to pre-varnished hardwood goods.

[44]  Mr. Collin then discusses the Opponent’s EXPRESSIONS vinyl tiles. More specifically, his assertions seek to argue the differences existing between the parties’ goods and their respective markets. I will return in detail to this aspect of the evidence in the analysis of the third and fourth factors set out in section 6(5) of the Act. It is sufficient to retain, at this stage, that this is the perspective in which Mr. Collin files, as Exhibit MC‑4, the excerpt from the website of a retailer of the Opponent’s goods, dated February 10, 2016.

[45]  In light of all this evidence, I can not conclude that either of the parties’ marks has become known in such a manner as to increase its distinctiveness significantly, if only due to the absence of any sales or advertising figures, etc.

[46]  Thereby, my overall assessment of this first factor, which concerns both the inherent distinctiveness and the acquired distinctiveness of the marks in question, does not significantly and deterministically favour any party to the detriment of the other.

The period during which the trade-marks have been in use

[47]  There is no conclusive evidence allowing an assessment of the period during which the parties’ marks have been in use. In view of the presumption of use de minimis mentioned above, this factor tends to favour the Opponent, although more weight may be assigned to this factor in the circumstances.

The type of goods and the nature of the trade

[48]  In considering the type of goods and the nature of the trade, I must compare the statement of goods covered by this application with the statement of goods covered by the Opponent’s registration [see Henkel Kommanditgesellschaft auf Aktien v Super Dragon Import Export Inc (1986), 12 CPR (3d) 110 (FCA); and Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA)]. However, these descriptions must be read so as to determine the likely type of trade of the parties instead of all the possible trades they may include. The evidence of the parties’ real trade proves useful in this regard [see McDonald’s Corp v Coffee Hut Stores Ltd (1996), 68 CPR (3d) 168 (FCA); Procter & Gamble Inc v Hunter Packaging Ltd (1999), 2 CPR (4th) 266 (TMOB); and American Optional Corp v Alcon Pharmaceuticals Ltd (2000), 5 CPR (4th) 110 (TMOB)].

[49]  The Opponent submits that the parties’ goods belong to the same general class, namely international class 19 (particularly covering non-metallic building materials). It submits that the parties’ goods are of the same nature and could be sold via the same distribution channels and points of sale, such as the retailer found in Exhibit MC‑4 attached to Mr. Collin’s statutory declaration. The Opponent also recalls that for the purposes of testing for confusion, it is unnecessary for the goods to be in the same general class.

[50]  The Applicant submits, on the contrary, that the mere fact the parties both operated in the floor covering field is not sufficient to conclude the goods are the same type. It submits that in the vast possible range of floor coverings, the goods concerned by the parties’ marks are considerably different and do not present any risk of overlap. The Applicant further argues that to conclude otherwise would allow the Opponent to hold a monopoly of every type of floor covering containing the term “expression”, such as concrete, ceramic, wood, asphalt, glass, carpeting, marquetry, terrazzo, synthetic grass, etc.

[51]  Concerning the nature of the trade, the Applicant argues that the parties’ goods are intended for two completely distinct markets. In fact, the wood flooring sold by the Applicant is intended for residential use [as explained by Mr. Collin], whereas the vinyl tiles sold by the Opponent are intended for commercial, industrial or institutional use [such as it appears from the Opponent’s brochure under Exhibit MC‑3 and the Internet excerpt under Exhibit MC‑4 respectively describing the EXPRESSIONS vinyl tiles as: “the perfect flooring solution for Education, Retail and Main Street applications…” and “…ideal for health care, education, retail and public spaces”]. The Applicant submits that in the case at bar, the buyer interested in purchasing upscale wood flooring for his residence has no chance of making a mistake and dealing with a commercial vinyl tile flooring provider. On the other hand, a commercial, industrial or institutional customer has no chance of procuring the Applicant’s goods by mistake, when he would be interested in procuring a vinyl covering.

[52]  I agree with the Opponent that some overlap exists between the parties’ distribution channels, in that it cannot be excluded that their respective goods will be sold via the same points of sale, such as the retailer found under Exhibit MC‑4, attached to Mr. Collin’s statutory declaration. Moreover, neither the Opponent’s statement of goods or the Applicant’s statement of goods includes a limitation to a specific market.

[53]  This having been said, however, I agree with the Applicant that the parties’ goods consist of different kinds of floor coverings for distinct applications.

The degree of resemblance between the trade-marks in the presentation or sound, or in the ideas they suggest

[54]  As recalled by the Supreme Court in the Masterpiece case cited above, in paragraph 49, the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them is the factor that is often likely to have the greatest effect on the confusion analysis and the one that proves decisive in most cases.

[55]  Moreover, as previously mentioned, it is well-established in case law that the likelihood of confusion is a matter of first impression and imperfect recollection. In this regard, “[w]hile the marks must be assessed in their entirety (and not dissected for minute examination), it is still possible to focus on particular features of the mark that may have a determinative influence on the public’s perception of it.” [see Pink Panther Beauty Corp v United Artists Corp (1998), 80 CPR (3d) 247 (FCA), at paragraph 34]. Even though it is true that in some cases the first word will be the most important element to establish the distinctiveness of a trade-mark, the approach to prefer is to consider whether one of its aspects is particularly striking or unique [see Masterpiece, supra, at paragraph 64].

[56]  In applying these principles to this case, I agree with the Applicant that significant differences exist between the parties’ marks.

[57]  Regarding the ideas suggested, the use of the plural in the Opponent’s EXPRESSIONS mark suggests the vinyl tiles can be used to create several expressions or “compositions” or varied patterns or colours [see Exhibit MC‑3: Create a custom designed floor with the endless possibilities of design options using Expressions…]. The use of the singular in the Mark instead suggests the idea that only one purity exists, that of wood. The addition of the word “PURE” also characterizes the term “EXPRESSION” to give it a completely different scope, even an opposite scope, to that of the Opponent’s mark.

[58]  I agree with the Applicant that the meaning of the Mark is strengthened when one considers the figurative element included in applications 1, 653,633 and 1,653,634, reproducing horizontal wood planks in the background, surrounded by an imperfect sphere probably evoking a drop of oil.

[59]  Visually and phonetically, the Mark consists of two words, of which the world “PURE” appears as the first element, while the Opponent’s mark consists of a single word. Although I agree with the Opponent that this element is praiseworthy, it nonetheless remains that it confers its full meaning on the Mark by characterizing the word “EXPRESSION”. In this, it is my opinion that the two words “PURE” and “EXPRESSION” are of equal importance. The word “EXPRESSION” does not dominate the word “PURE”, or vice versa. The figurative element included in applications 1,653,633 and 1,653,634 also adds to the differences existing between the Mark and the Opponent’s mark.

Additional circumstance – State of the register

[60]  As indicated above, the Applicant filed state of the Canadian trade-marks register evidence by way of Ms. Breton’s affidavit.

[61]  Evidence of the state of the register serves to show the common nature or the distinctiveness of a mark or part of a mark in relation to all the marks appearing in the register. The evidence regarding the state of the register is relevant only insofar as one can draw conclusions from it concerning the state of the market, and conclusions regarding the state of the market can only be drawn if a large number of relevant registrations are identified [see Ports International Ltd v Dunlop Ltd (1992), 41 CPR (3d) 432 (TMOB); Welch Foods Inc v Del Monte Corp (1992), 44 CPR (3d) 205 (FCTD); and Maximum Nutrition Ltd v Kellogg Salada Canada Inc (1992), 43 CPR (3d) 349 (FCA)].

[62]  In the case at bar, Ms. Breton’s affidavit simply had the purpose of filing, as Exhibit EB‑1, a list of 245 registration application files or registration files, and nothing more. In each of the written arguments, the Applicant argues that several of these trade-marks are identical to the Opponent’s EXPRESSIONS mark, including registrations TMA632,538 in association with hair accessories; TMA751,989 in association with bedding; TMA755,504 in association with garage doors; TMA737,664 in association with a vinyl covering; TMA913,659 in association with cosmetics and jewellery; TMA886,557 association with clothing, sporting goods and toys, and TMA553,559 in association with kitchen utensils.

[63]  The list filed as Exhibit EB‑1 does not include the details of the registrations in question, including the statements of goods associated with them and alleged by the Applicant in its written arguments. Moreover, apart from the so-called registration TMA737,664 in association with a vinyl covering, none of the registrations discussed by the Applicant in its written arguments apparently concerns floor coverings.

[64]  In the circumstances, I agree with the Opponent that no negative inferences can be drawn regarding the prevalence of the word “EXPRESSION” as a component of trade-marks in relation to floor coverings on the Canadian market.

Conclusion – Likelihood of Confusion

[65]  As indicated on page 163 in the Dion Neckwear case cited above, the Registrar does not have to be convinced beyond all doubt that there is no likelihood of confusion. Indeed, “[t]he ‘beyond doubt’ standard imposes an insurmountable burden because certainty in matters of likelihood of confusion is rare”. [Also see John Labatt Ltd v Molson Companies Ltd, supra].

[66]  Given my analysis above, I find that the Applicant has established, according to the balance of probabilities, that a consumer having an imperfect recollection of the Opponent’s EXPRESSIONS trade-mark would be unlikely to conclude that the Applicant’s “pre-oiled flooring” goods originate from the same source or are otherwise related to or associated with the Opponent’s vinyl tile goods.

[67]  As indicated above, neither of the marks of the parties is particularly strong. The differences existing between them visually, phonetically and in suggested ideas, combined with the differences existing in the nature of the parties’ floor coverings, are sufficient to exclude any reasonable probability of confusion.

[68]  I therefore reject the ground of opposition based on the non-registrability of the Mark within the meaning of section 12(1)(d) of the Act, in each case.

Decision

[69]  In exercising the authority delegated to me pursuant to subsection 63(3) of the Act, I reject each of the oppositions under section 38(8) of the Act.

Annie Robitaille

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office Certified translation Arnold Bennett

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS REGISTERED IN THE CASE

___________________________________________________

DATE OF HEARING 2017-07-18

APPEARANCES

Me Simon Lemay	FOR THE OPPONENT
Me Anik Bernatchez	FOR THE APPLICANT

AGENT(S) OF RECORD

Robic	FOR THE OPPONENT
Beauvais, Truchon s.e.n.c.r.l.	FOR THE APPLICANT