Citation: 2018 TMOB 35

Date of Decision: 2018-04-18

IN THE MATTER OF AN OPPOSITION

	Basilia Betty Kesselman	Opponent
and
	International Herbs Medical Marijuana Ltd.	Applicant
	1,659,875 for ZENABIS	Application

File Record

[1]  On January 16, 2014, Monark Investments Ltd. filed an application to register the trade-mark ZENABIS, based on proposed use in Canada, in association with a number of goods and services related to marijuana. Shortly after, on March 19, 2014, the mark and application were assigned to International Herbs Medical Marijuana Ltd., the applicant currently of record. On March 2, 2015 the application was amended to cover the following goods and services:

goods

medical marijuana, dried;

cannabis seeds and packaging; medical marijuana seeds and packaging;

cannabis clones, namely, cannabis plant cuttings, seedlings and plants;

cannabis paraphernalia, namely, rolling papers, vaporizers, diffusers, and cannabis grinders.

 

services

production, distribution, retail sale and online sale of medical marijuana, cannabis seeds, cannabis clones, namely, cannabis plant cuttings, seedlings and plants, and cannabis paraphernalia, namely, rolling papers, vaporizers, diffusers, and cannabis grinders;

educational services, namely providing an online directory information service featuring information regarding medical marijuana, medical marijuana laws, legal medical marijuana pharmacies and stores, health care provider and equipment for administering medical marijuana, on behalf of third parties;

providing research services in the area of cannabis namely marijuana;

product development services in the area of cannabis namely marijuana.

 

[2]    The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated July 1, 2015 and was opposed by Basilia Betty Kesselman on September 1, 2015. The Registrar forwarded a copy of the statement of opposition to the applicant on September 9, 2015 as required by s.38(5) of the Trade-marks Act, R.S.C. 1985, c. T-13. The applicant responded by filing and serving a counter statement generally denying the allegations in the statement of opposition.

[3]  The opponent’s evidence consists of the affidavit of Demetra Georganas. The applicant’s evidence consists of the affidavit of Marianne Crozier. The opponent’s evidence in reply consists of the affidavit of Josephine Lai.  Both parties filed a written argument and both were represented at an oral hearing.

 

Statement of Opposition

[4]  The opponent pleads several grounds of opposition including grounds which may be dismissed summarily either because they are not properly pleaded (they disclose no valid ground of opposition) or because the opponent did not meet her evidential burden to put the grounds into issue. The remaining grounds of opposition in issue are:

(1) The applied-for mark ZENABIS is not registrable, pursuant to section 12(1)(d) of the Trade-marks Act, because ZENABIS is confusing with the opponent’s registered mark ZEN which covers the following goods:  cigarette papers and tobacco smoking accessories, namely, tobacco pouches, tobacco rolling machines and tobacco products. The material date to assess the issue of confusion arising pursuant to section 12(1)(d) is the date of my decision.

2. The applicant is not entitled to registration, pursuant to section 16(3)(a) of the Act, because ZENABIS is confusing with the opponent’s mark ZEN previously used in Canada by the opponent. The material date to assess the issue of confusion arising pursuant to section 16(3)(a) is the date of filing of the application, in this case January 16, 2014.

3. The applied-for mark ZENABIS is not adapted to distinguish the applicant’s goods from the opponent’s goods previously sold in association with the opponent’s mark ZEN, pursuant to section 2, because the applied-for mark ZENABIS is confusing with the opponent’s mark. The material date to assess the issue of confusion arising pursuant to section 2 is the date of opposition, in this case September 1, 2015.

[5]  It is apparent that the sole issue for decision is whether the applied-for mark ZENABIS is confusing with the opponent’s mark ZEN, at any one of the material dates. Before assessing the issue of confusion, I will first review the parties’ evidence, the meaning of confusion within the context of the Trade-marks Act, and the factors and jurisprudence relevant to assessing whether the marks in issue are confusing.

 

Opponent’s Evidence

[6]  Ms. Georganas identifies herself as Controller of Zoe International Distributing Inc. (“ZIDI”) where she has been employed since 1999. She has had direct and extensive involvement in ZIDI’s operations, and in the Canadian tobacco and tobacco accessory industry, since joining ZIDI.

[7]  The opponent is a founder, Director, President and Secretary of ZIDI, incorporated in 1999. The opponent has always used the mark ZEN in Canada through licensees, and ZIDI has always used the mark ZEN under license from the opponent. The opponent is involved in the management of ZIDI’s day-to-day operations, including managing the character and quality of products that ZIDI sells. Attached as Exhibit A to Ms. Georganas’ affidavit is a trade-mark license agreement between the opponent and ZIDI, dated February 21, 2013, concerning the mark ZEN (and other marks).

[8]  ZIDI does business under the names HBI Canada and HBI Distributing Canada. ZIDI is a wholesaler, selling ZEN products to retailers across Canada since June 2000. Those products include cigarette papers; tobacco pouches; tobacco rolling machines; filters and roll boxes for roll-your-own cigarettes; pipe cleaners; and, since 2014, electronic cigarettes.

[9]  An inspection of the exhibit materials attached to Ms. Georganas’ affidavit confirms that the mark ZEN appears prominently on product packaging, advertising and promotion. Total sales of ZEN products in Canada amounted to $51,000 in 2005, rising steadily to $130,000 in 2015. Since 2001, ZIDI has spent about $300,000 in promoting and marketing its various products, including ZEN products, in Canada to its retailer customers and in printed catalogues. Almost all such advertising and promotion mentions the ZEN mark and ZEN products.

[10]  Ms. Georganas describes the connection between the opponent’s and the applicant’s  goods and businesses in paras. 17-19 of her affidavit:

17.  ZIDI is a wholesaler. It sells products, including ZEN Products, to physical and online retailers across Canada, who in turn sell them to consumers. These retailers include convenience stores, specialty shops and medical marijuana dispensaries. Many of these retailers are “head shops” that specialize in equipment and accessories used for consuming tobacco, cannabis and similar products, and also e-cigarettes and related products (the popularity and availability of which has grown significantly over the past few years).

 

18.  Many ZEN Products, such as rolling papers, filters, rollers and rolling boxes, are used to roll cigarettes, whether with tobacco, medical marijuana or other herbs. Individual consumers who buy ZEN Products do so in order to use them for those purposes, both for recreational and medical reasons. Such users could buy tobacco or medical marijuana from other providers and then use ZEN Products to prepare and consumer[sic] tobacco or medical marijuana cigarettes, for example.

 

19.  As mentioned, ZEN Products are sold through convenience stores, specialty shops and medical marijuana dispensaries. There is a clear overlap between retailers that sell ZEN Products and the end customers who buy and use ZEN Products, and retailers that might sell and consumers that might buy the products covered under the ZENABIS trade-mark application . . .

 

Applicant’s Evidence

Marianne Crozier

[11]  Ms. Crozier identifies herself as a paralegal employed by the firm representing the applicant. Her affidavit serves to introduce into evidence, by way of exhibit materials, the results of various online computer searches, discussed below:

Exhibits A and B

[12]  The exhibits consist of printouts from reference websites pertaining to the meaning of the terms “ZEN” and “ZENABIS.”

[13]  As I understand from the exhibit materials, the term ZEN refers to the Buddhist practice of meditation resulting in having compassion for all sentient beings. The term ZEN also refers to a state of mind that involves discarding “illusions” and seeing the world without thoughts that distort reality. The term ZEN refers to a teaching and a practice that contemplates the essential nature of the individual, leading to inner peace.

[14]  I also note that the term ZENABIS is not a dictionary word; it is a fanciful or coined term that has no meaning. However, it is readily apparent that the term ZENABIS is formed by combining the word “Zen” with the last two syllables of the word “cannabis.”  The term ZENABIS therefore suggests some kind of connection with Zen or connection between Zen and cannabis.

 

Exhibit C and D

[15]  The exhibits consist of printouts of computer searches of the trade-marks register for active marks consisting of, or including, the term ZEN. The first search returned 159 marks. The second search was restricted to Nice Classes 21 and 34 (which include tobacco and smoking paraphernalia) and returned 13 marks. I note that a few of the marks in the first search consist of, or include, the term XEN rather than ZEN.

 

Exhibit E

[16]  The exhibit consists of printouts of a computer search of the NUANS database for corporate and business registries across Canada for company names which consist of, or include, the term ZEN. As I understand the results, about 200 active companies were located.

 

Exhibit F

The exhibit consists of printouts of a computer search of the online 411.ca database for commercial entities, across Canada, the names of which consist of, or include, the term ZEN. 304 such businesses were located.

 

Exhibits G, H and I

The above exhibit materials relate to the applicant becoming a Licensed Producer of medical marijuana under the auspices of Health Canada.

 

Exhibit J

The exhibit consists of printouts from the applicant’s website promoting and providing information on how to obtain the applicant’s medical marijuana products.

 

 

Opponent’s Reply Evidence

Josephine Lai

[17]  Ms. Lai identifies herself as a paralegal employed by the firm representing the opponent. She conducted two searches of the trade-marks register for (1) all active trade-marks containing the component “zen” and (2) active trademarks containing the component “zen” confined to Nice Class No. 34 (which class includes several of the opponent’s goods). The first search located 416 marks while the second search located only five third party marks.

Meaning of Confusion between Trade-marks

[18]  As mentioned earlier, the determinative issue for decision is whether the applied-for mark ZENABIS, for the goods and services covered in the subject application, is confusing with the opponent’s mark ZEN used in association with the opponent’s goods related to tobacco.  Trade-marks are confusing when there is a reasonable likelihood of confusion within the meaning of s.6(2) of the Trade-marks Act, shown below:

The 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  . . . or performed by the same person, whether or not the goods or services . . . are of the same general class.

 

[19]  Thus, s.6(2) does not concern mistaking one mark for the other, but confusion of goods or services from one source as being from another source. In the instant case, the question posed by s.6(2) is whether purchasers of the applicant’s goods and services, sold under the mark ZENABIS, would believe that those goods or services were produced or authorized or licensed by the opponent who sells tobacco related goods under the mark ZEN. The legal onus is on the applicant to show, on the usual civil balance of probabilities standard, that there would be no reasonable likelihood of confusion. 

 

Test and Factors for Assessing Confusion

[20]  The test for confusion is one of first impression and imperfect recollection. Factors to be considered, in making an assessment as to whether two marks are confusing, are “ all the surrounding circumstances including”  those specifically mentioned in s.6(5)(a) to s.6(5)(e) of the Act: the inherent distinctiveness of the marks and the extent to which they have become known; the length of time each has been in use; the nature of the goods, services or business; the nature of the trade; the degree of resemblance in appearance or sound of the marks or in the ideas suggested by them.  This list is not exhaustive and all relevant factors are to be considered.  Further, all factors do not necessarily have equal weight as the weight to be given to each depends on the circumstances: see  Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks  (1996), 66 CPR(3d) 308 (FCTD). However, as noted by Mr. Justice Rothstein in Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), 92 CPR(4th) 361 (SCC), although the degree of resemblance is the last factor cited in s.6(5), it is the statutory factor that is often likely to have the greatest effect in deciding the issue of confusion.

 

Consideration of Factors for Assessing Confusion

Factor 1 - Inherent and Acquired Distinctiveness

[21]  The applicant’s submissions regarding the inherent distinctiveness of the parties’ marks are found at paras. 40-43 of its written argument:

40.  . . . “zen,” originated in ancient China and spread to Japan and other countries, emphasizes the practice of  meditation to bring the body and the mind in a state of focus and togetherness in order to achieve enlightenment. In everyday language, it refers to a mental state of peace and relaxation . . . 

 

41.  The Opponent’s Mark is inherently weak due to its everyday and long history of use, its commonly accepted meaning, and its suggestive character. When used in association with tobacco smoking accessories, the Opponent’s Mark strongly suggests to the viewers that the use of the tobacco smoking accessories would achieve the state of peace and relaxation, or “zen.”

 

42.  The commonly understood meaning and everyday use of the word “zen,” and the notion it represents, are desired not only by the Opponent but also by many other traders.  Exhibit A to the Lai Affidavit contains a list of more than 400 active ZEN or ZEN-derivative marks, in association with a wide variety of goods and services.  Exhibits E and F to the Crozier Affidavit contain, respectively, 200 and 304 businesses in Canada with ZEN as the name or part of the name. Even assuming some of the businesses in the two lists overlap, we submit the number of relevant businesses is still 200 at the minimum . . .

 

43.  The Opposed Mark is a coined word with no dictionary meaning. Accordingly, it possesses a significantly higher level of inherent distinctiveness than the Opponent’s Mark, and deserves a much wider ambit of protection than the Opponent’s mark.

 

[22]  I agree with the applicant’s reasoning, in the quoted paragraphs above, that the opponent’s mark ZEN is a relatively weak mark and that the applied-for mark ZENABIS has a higher degree of inherent distinctiveness because it is a coined word. However, I do not agree that ZENABIS has a “significantly” higher degree of inherent distinctiveness than the mark ZEN. In this regard, the suffix “ABIS” is derived from the last two syllables of “cannabis” and therefore the mark ZENABIS as a whole is suggestive of the applicant’s goods and services. The suggestive nature of the mark lessens its inherent distinctiveness even though ZENABIS is a coined word.

[23]  The applicant’s submissions regarding the acquired distinctiveness of the mark ZEN are found at paras. 45-46 of its written argument:

45.  The Opponent has made only minimal sale of products bearing the  Opponent’s Mark. During the 11 years of sale (2005-2015), the Opponent sold  products for a total value  of $1,120,000. That is just over $100,000 in annual sales or $8,500 in monthly sales. The advertising expenditure since 2001 is $300,000 for  all of ZIDI’s products. That is $20,000 per year, or $1,700 a month, for ZIDI's very many products collectively . . .

46.  We submit that the value of the sale of products bearing the Opponent’s Mark is so insignificant that it would not have achieved a meaningful level of acquired distinctiveness that warrants protection over and above what would be accorded to an inherently weak mark.

 

[24]  I would first note that in the absence of cross-examination of Ms. Georganas, I accept her evidence that the opponent’s mark ZEN was, at all material times, used under license in conformity with section 50(1) of the Trade-marks Act. Therefore use of the mark by licensees inures to the benefit of the opponent. Second, I do not agree with the applicant that the opponent’s sales are “insignificant.”  The sales and advertising figures indicate that the opponent’s mark ZEN would have acquired at least some reputation at all material times, although the evidence is ambiguous with respect to which of the applicant’s goods that reputation applies. However, I agree that the evidence of acquired distinctiveness for the opponent’s mark ZEN does not result in an ambit of protection significantly greater than what would ordinarily be accorded to a weak mark: weak marks are discussed further in para. 30 below.

[25]  The applicant’s mark ZENABIS is a proposed use mark and there is no evidence that it acquired any reputation at any material time. On the basis of the evidence of record, I am unable to determine that the first factor, which is a combination of inherent and acquired distinctiveness, significantly favours either party. 

Factor 2- Length of Time the Parties’ Marks have been In Use

[26]  The second factor favours the opponent as its mark ZEN has been in use since at least as early as June 2000 while there is no evidence to indicate that the applicant has commenced use of its mark ZENABIS.

 

Factors 3 and 4 - the nature of the goods, services, and trades

[27]  The parties’ goods overlap with respect to “rolling papers” and, based on the limited evidence of record, it appears that there is potential for the parties’ channels of trade to overlap. In this regard, I accept the opponent’s evidence that its products are sometimes sold through marijuana dispensaries. Further, in the absence of evidence to the contrary, I assume that there is potential for the applicant’s goods “rolling papers, vaporizers, diffusers, and cannabis grinders” to be sold through outlets that sell the opponent’s goods. The third factor therefore favours the opponent with respect to the applicant’s goods “rolling papers,” but not with respect to the other goods specified in the subject application. The fourth factor, that is, the parties’ channels of trade, favours the opponent at least to some extent with respect to the parties’ goods, but there is no evidence to indicate overlap with respect to the applicant’s services.

 

Factor 5 – Resemblance between the Parties’ Marks Visually, in Sounding, and in Ideas Suggested

[28]  The marks in issue necessarily resemble each other to some extent visually and in sounding as the first component of the applied-for mark ZENABIS incorporates the whole of the opponent’s mark ZEN. Further, it is an accepted principle of trade-mark law that the first portion or first syllable of a mark is the more important for the purposes of distinction: see Conde Nast Publications Inc. v. Union Des Editions Modernes (1979) 26 CPR(2d) 183 at 188 (FCTD). However, when the first term is a common, descriptive word, its importance diminishes: see, for example, United Artists Corp. v. Pink Panther Beauty Corp. (1998), 80 CPR (3d) 247 (FCA) at p. 263. In the instant case, the term Zen is common in English parlance, lessening its importance for the purpose of distinguishing between trade-marks. I therefore conclude that the parties’ marks are more different than alike visually and in sounding owing to the suffix “ABIS” comprising the applied-for mark ZENABIS.

[29]  The ideas suggested by the parties’ marks overlap but are different. The opponent’s mark suggests a “Zen” state of mind, while the applied-for mark suggests Zen achieved by means of cannabis (owing to the suffix “abis”).  When all three aspects of resemblance are considered, the parties’ marks are decidedly more different than alike. The fifth factor therefore favours the applicant.

 

Further Jurisprudence

[30]  Another relevant principle of trade-mark law is that in the case of weak marks (such as ZEN), small differences may be accepted to distinguish one mark from another, and a greater degree of discrimination may be fairly expected of the public: see GSW Ltd. v. Great West Steel Industries Ltd. (1975), 22 CPR(2d) 154 at 169 (FCTD). The applicant discusses this principle at para. 37 of its written argument:

37.  Marks  that do  not  have  much  inherent  distinctiveness deserve  less of  an  ambit of protection  than  marks  that[sic] made  up with  coined  words.  These marks are weak because of their use in everyday language, or their being tinged with a descriptive or suggestive character, and the extent or protection will vary  accordingly.  G.M. Pfaff  Aktiengesellschaft v. Creative Appliance Corp. (1988), 22  C.P.R. (3d) 340 (F.C.T.D.)  at  343:

A word in everyday use employed as a trade mark[sic] deserves more limited protection than a rare, unique or invented word. It is well-settled law that everyday words taken from dictionary [sic] are not strong marks, whereas a completely made-up word may strike the imagination and become more firmly rooted in the consumer’s memory.

     

Disposition

[31]  Having regard to the above considerations, and keeping in mind in particular that (1) the parties’ marks are decidedly more different than alike, (2) the opponent’s weak mark is entitled to only a narrow ambit of protection in the absence of evidence of a significant degree of acquired distinctiveness, I find that the applied-for mark ZENABIS is not confusing, at any material time, with the opponent’s mark ZEN in respect of the goods “rolling papers, vaporizers, diffusers, and cannabis grinders” or in respect of any other of the goods and services specified in the subject application (despite the potential for overlap in the parties’ channels of trade for their goods).

[32]  The opposition is therefore rejected.

[33]  This decision has been made pursuant to a delegation of authority by the Registrar of Trade-marks under s.63(3) of the Trade-marks Act.

Myer Herzig

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

 

 

 

 

 

 

 

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE  2018-01-15

APPEARANCES

Kevin Wright	FOR THE OPPONENT
Kathleen Lemieux	FOR THE APPLICANT

AGENT(S) OF RECORD

DLA Piper (Canada) LLP	FOR THE OPPONENT
Borden Ladner Gervais	FOR THE APPLICANT