OPIC		CIPO
LE REGISTRAIRE DES MARQUES DE COMMERCE THE REGISTRAR OF TRADE-MARKS

   Citation: 2018 TMOB 29

Date of Decision: 2018-03-28

IN THE MATTER OF AN OPPOSITION

	Autopark Superstore Inc.	Opponent
and
	Chery Automobile Co., Ltd.	Applicant
	1,573,323 for A and design	Application

background

[1]  On April 16, 2012, Chery Automobile Co., Ltd. (the Applicant) filed an application to register the trade-mark A and design set out below (the Mark):

[2]  The application is based on the Applicant’s proposed use in association with the following Services:

Automobile repair and maintenance; Car washes; Vehicle lubrication services; Automobile greasing; Automobile buffing and polishing; Rustproofing services; Maintenance and repair of vehicles; Maintenance and repair of motor vehicles; Tire retreading; Tire vulcanization services; Rebuilding engines; Installation of home appliances; Electrical repair and installation of air conditioners; Computer repair services; Tin plating; Installation of car alarms.

[3]  The application was advertised for opposition purposes in the Trade-marks Journal issue dated June 3, 2015.

[4]  On November 3, 2015, Autopark Superstore Inc. (the Opponent) filed a statement of opposition.  Subsequently, the Applicant requested an interlocutory ruling.  The interlocutory ruling issued March 10, 2016 and struck one of the grounds of opposition. The Applicant filed and served a counter statement.  The Opponent subsequently requested and obtained leave to file an amended statement of opposition.  All references to the statement of opposition in this decision are to the amended statement of opposition.

[5]  Neither the Applicant nor the Opponent filed any evidence. Only the Applicant filed a written argument.  A hearing was not requested.

The Grounds of Opposition

[6]  One of the main issues in this case is to determine what grounds of opposition are pleaded.  The Applicant submits at page 3 of its written argument:

With the striking out of the Section 30(i) ground of opposition and the Board finding … paragraph 20 in the [statement of opposition] and the sections of the Trade-marks [Act] that follow do not set out grounds of opposition, the only valid ground of opposition asserted by the Opponent is one of non-entitlement to registration pursuant to Section 16, alleging that, as at the date of filing the [application], the [Mark] was confusing with the Opponent’s A Design trade-mark (registration No. TMA721,426) purportedly previously used by the Opponent …

[7]  In its statement of opposition, under the heading “the grounds of opposition are as follows:”, the Opponent sets out the following (emphasis added):

(para 2) The [Applicant] … is not the person entitled to registration of the [Mark] as at the date of filing, the Mark was confusing with the [Opponent’s A DESIGN trade-mark].

(para 6) The trade-mark A DESIGN (Registration No. TMA721,426) was filed by the [Opponent] with CIPO on August 28, 2007.  The [Opponent’s A DESIGN trade-mark] looks as follows:

 

(para 7) [the Opponent] uses the A DESIGN trade-mark for the following services, as described in its trade-mark application. …

(para 14) The [Applicant] is not entitled to register its [Mark] because at the date of filing of the [Mark] … [it] was confusing with the [Opponent’s A DESIGN trade-mark], which had been previously used in Canada, namely since at least as early as November 1997, by Autopark.

(para 15) The use of the [Mark] will likely lead to the incorrect inference that the [Services] are produced or marketed by the [Opponent].  This inference is heightened in this case as [the Mark] already has affiliated marks in the marketplace.  [The Applicant] and [the Opponent] are not affiliated or connected in any way.

 

[8]  The statement of opposition also states at paragraph 20 that Autopark pleads and relies on the following sections of the Trade-marks Act, RSC 1985, c T-13 [Act] and sets out the definition of “confusing” from section 2 of the Act, along with the entirety of sections 6(1), 6(2), 6(5), 12(1)(d), 16(3)(a), (b), and (c), 30(i), and 38(1)-(2).  An allegation of confusion with another trade-mark has the potential to form the basis of four separate grounds of opposition based on these sections of the Act, as follows:

(a)  A ground of opposition pursuant to sections 38(2)(b) and 12(1)(d) of the Act, if confusion with a registered trade-mark is alleged;

(b)  A ground of opposition pursuant to sections 38(2)(c) and 16(3)(a) of the Act, if confusion with a trade-mark that had been previously used or made known in Canada is alleged;

(c)  A ground of opposition pursuant to sections 38(2)(c) and 16(3)(b) of the Act, if confusion with a trade-mark for which an application to register had been previously filed is alleged; and

(d)  A ground of opposition pursuant to sections 38(2)(d) and 2 of the Act, if confusion with a trade-mark that had been previously used or had a reputation in Canada is alleged.

The specific ground of opposition pleaded may have a significant impact on the ultimate disposition of a case since the different grounds of opposition have different material dates and different requirements for meeting an opponent’s evidential burden.  For example, the material date for a section 12(1)(d) ground of opposition is the date of the decision [Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trade Marks (1991), 37 CPR (3d) 413 (FCA)] and an opponent’s burden is met if the pleaded registration(s) is extant as of this date [Quaker Oats Co of Canada v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)].  In contrast, the material date for a section 16(3)(a) ground of opposition is the date of filing the application and an opponent’s burden is met if it evidences use or making known of its trade-mark as of that date [see section 16 of the Act].

The Grounds of Opposition at Issue Include Section 16(3)(a) and 16(3)(b)

[9]  I find that the Opponent has pleaded grounds of opposition based on sections 16(3)(a) and 16(3)(b) of the Act.  I reach this conclusion because the Opponent alleges that the Applicant appears to not be the person entitled to registration based on (i) the Opponent’s use of a confusing trade-mark (para 14 of the statement of opposition) and (ii) the filing of an application for a confusingly similar trade-mark (paras 2 and 6 of the statement of opposition).

There is No Section 12(1)(d) Ground of Opposition Pleaded in the Statement of Opposition

[10]  While the Opponent cites section 12(1)(d) in paragraph 20 of the statement of opposition and provides the particulars of its registration, I do not consider this ground of opposition to be pleaded.  Nowhere does the Opponent state that the Mark is not registrable as it is confusing with a registered trade-mark, nor does it cite section 12(1)(d) of the Act anywhere other than paragraph 20.  In the interlocutory ruling of March 10, 2016, the Registrar warned the Opponent that paragraph 20 of the statement of opposition does not set out grounds of opposition.

I agree with the applicant that para. [20] of the statement of opposition and the section of the [Act] that follow do not set out grounds of opposition.  However, I see no reason why their inclusion in the statement of opposition is improper.

[11]  Further, the Registrar also indicated in the interlocutory ruling that “with respect to paras. 2 and 14 of the statement of opposition”, that the Opponent was limited to relying on its use of the A Design trade-mark and could not rely on any other trade-mark use by any other party.  In so finding, the Registrar confirms that these grounds of opposition related to section 16(3)(a) of the Act because section 16(5) of the Act restricts this ground of opposition to one that relies on an opponent’s own use of its trade-mark. 

If there is a Section 12(1)(d) Ground of Opposition in the Statement of Opposition it is struck as being Improperly Pleaded

[12]  If I am incorrect in finding that the Opponent did not plead a section 12(1)(d) ground of opposition in the statement of opposition, I would have struck the section 12(1)(d) ground as being insufficiently pleaded. 

[13]  The Opponent failed to set out that it would rely on a challenge based on the fact that the Mark is not registrable as it is confusing with a registered trade-mark.  I therefore conclude that the section 12(1)(d) ground of opposition is not in sufficient detail to enable the Applicant to reply thereto.  Moreover, the Opponent did not seek leave to amend its statement of opposition to include this ground after receiving the interlocutory ruling or the Applicant’s written submissions, nor make any submissions asserting that the section 12(1)(d) ground of opposition was properly set out in the statement of opposition.  Finally, while a ground of opposition which is deficient at the pleadings stage may no longer be so in view of the evidence filed [Novopharm Limited v AstraZeneca AB 2002 FCA 387] in this case the Opponent did not file any evidence.

 

Analysis of the Grounds of Opposition

 

Section 16(3)(a) and (b) Grounds of Opposition

[14]  The statement of opposition alleges that the Applicant is not the person entitled to registration of the Mark since the Mark was confusing with the A Design trade-mark (registration No. TMA721,426) filed and used by the Opponent (paras 2,6-7, and 14 of the statement of opposition).  The Opponent further alleges that it has used its A Design trade-mark in association with the sale and lease of used automobiles; the repair and servicing of vehicles, and the sale of parts to be used in servicing vehicles (paragraphs 7-8 of the statement of opposition).

The Opponent Fails to Meet its Burden With Respect to the Two Pleaded Grounds

  Section 16(3)(a) Ground of Opposition

[15]  To discharge its evidential burden, the Opponent must show that its trade-mark A Design had been used in Canada prior to the filing date of the application.  Although the Opponent cites its registered trade-mark which includes a claim to use, such a claim is not sufficient to support a ground of opposition based on entitlement.  Rather, some evidence of use is required [Rooxs, Inc v Edit-SRL (2002), 23 CPR (4th) 265 (TMOB)].  This ground of opposition is therefore rejected.

Section 16(3)(b) Ground of Opposition

[16]  To discharge its evidential burden, the Opponent must show that its application was (i) filed prior to the filing date of the application for the Mark and (ii) pending at the date of advertisement of the application for the Mark [section 16(4) of the Act].  An application which is pending is one which has not yet matured to registration [Governor and Co of Adventurers of England trading into Hudson's Bay v Kmart Canada Ltd (1997), 76 CPR (3d) 526 (TMOB) at 528].  As registration No. TMA721,426 matured to registration on August 20, 2008, its corresponding application was not pending at the date of advertisement of the Mark.  This ground of opposition is therefore rejected.

Disposition

[17]  Pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(8) of the Act.

_____________________________

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

___________________________________________________

No Hearing Held

Agents of Record

Minden Gross LLP	For the Opponent
Cassan Maclean IP Agency Inc.	For the Applicant