Citation: 2019 TMOB 52

Date of Decision: 2019-06-12

IN THE MATTER OF AN OPPOSITION

	Virgin Enterprises Limited	Opponent
and
	Virgin Water Inc.	Applicant
	1,332,202 for VIRGIN	Application

Introduction

[1]  Virgin Enterprises Limited (the Opponent) opposes registration of the trade-mark VIRGIN (the Mark), applied for under application No. 1,332,202 by Virgin Water Inc. (the Applicant).

[2]  The application is based on proposed use in Canada in association with “non-alcoholic beverages, namely water, mineral water, aerated water, fruit flavoured water, soft drinks, fruit flavoured drinks” and “coffee” (the Goods).

[3]   The Opponent owns registrations for the trade-marks VIRGIN and VIRGIN DESIGN (TMA524,590 and TMA524,506, respectively) covering the goods “wines, potable and distilled spirits namely, vodka, gin, whisky, brandy, rum, tequila, slivovitz, aquavit, saki, arak, ouzo; and liqueurs”.  

[4]  The determinative issue in this proceeding is the likelihood of confusion with the Opponent’s registered VIRGIN trade-marks. For the reasons set out below, I find that the application ought to be refused.

The Record

[5]  The application for the Mark was filed on January 22, 2007, and was advertised for opposition purposes in the Trade-marks Journal of March 9, 2016.

[6]   On August 8, 2016 the Opponent filed a statement of opposition under section 38 of the Trade-marks Act, RSC 1985, c T-13 (the Act). The grounds of opposition pleaded by the Opponent include sections 12(1)(d), 16(3)(a), 16(3)(c), and 2 of the Act, all of which turn on the issue of a likelihood of confusion between the Mark applied for and the Opponent’s trade-marks and/or VIRGIN trade-name. The Opponent has also pleaded grounds of opposition under sections 30(e) and 30(i) of the Act.    

[7]  The Applicant filed a counter statement on August 29, 2016.

[8]  In support of its opposition, the Opponent advised by way of letter dated December 28, 2016, that it intended to rely on its registrations for the trade-marks VIRGIN (TMA524,590) and VIRGIN DESIGN (TMA524,506). In support of its application, the Applicant filed the affidavit of Gary Kimel, president of Virgin Water Inc. as well as City Water International Inc. Mr. Kimel was not cross-examined on his affidavit.

[9]  Only the Opponent filed a written argument, however both parties were represented at a 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 [John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) at 298].

[11]  The material dates that apply to the grounds of opposition pleaded are:

·  Sections 38(2)(a)/30 – the filing date of the application [Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB) at 475];

·  Sections 38(2)(b)/12(1)(d) - the date of my decision [Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trade-marks (1991), 37 CPR (3d) 413 (FCA)];

·  Sections 38(2)(c)/16(3) – the filing date of the application [section 16(3) of the Act]; and

·  Sections 38(2)(d)/2 – the date of filing of the opposition [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 2004 FC 1185 (CanLII), 34 CPR (4th) 317 (FC)].

Preliminary Remarks

Decision in a previous opposition proceeding concerning application No 1,316,254 for the trade-mark VIRGIN WATER and previous summary expungement proceedings involving the parties

[12]   The parties are not strangers to one another as the Applicant and/or its predecessor in title City Water International Inc. and the Opponent have previously been involved in an opposition proceeding against one another. They have also been involved in two previous summary expungement proceedings. Through the affidavit of Mr. Kimel, the Applicant has introduced copies of these decisions (Kimel affidavit, Exhibits B, C, D).

[13]  The earlier opposition between the parties involved the Applicant’s application No. 1,316,254 to register its trade-mark VIRGIN WATER in association with the goods “water coolers, water filtration systems and coffee” and the services “services of renting, leasing and selling water filtration systems and water coolers” [Virgin Enterprises Limited v City Water International Inc., 2015 TMOB 19]. In this proceeding, no reasonable probability of confusion was found between the applicant’s trade-mark VIRGIN WATER and various of the Opponent’s VIRGIN trade-marks (including VIRGIN (TMA524,590) and VIRGIN DESIGN (TMA524,506)).

[14]  At the hearing, both parties referenced this earlier proceeding. While recognizing that the facts in the present proceeding are different, and that each case must be decided on its own merits [Sunny Crunch Foods Ltd v Robin Hood Multifoods Inc (1982) 70 CPR (2d) 244 (TMOB) at 249], I will refer to the previous decision where it is appropriate to do so.

[15]  The earlier summary expungement proceedings between the parties involved the Opponent’s registrations for the trade-marks VIRGIN (TMA509,209; TMA553,902), VIRGIN & Design (TMA553,903) and VIRGIN & Bottle Design (TMA573,241) and resulted in the full or partial expungement of these registrations [Aird and Berlis LLP c Virgin Enterprises Limited, 2009 CanLII 90538 (CA COMC) and Aird & Berlis LLP v Virgin Enterprises Limited, 2010 TMOB 147]. For the same reasons as noted above, I do not consider these decisions to be relevant to the present proceeding.

Analysis of the Grounds of Opposition

Grounds of opposition summarily dismissed

Sections 30(e) and 30(i) grounds

[16]  The Opponent has not met its initial burden with respect to the grounds of opposition based on sections 30(e) and 30(i) of the Act.

[17]  The Opponent has pleaded that contrary to section 30(e) of the Act, at the time of filing the application (January 22, 2007), the Applicant was already using the Mark in Canada in association with the Goods. In the alternative, the Opponent has pleaded that the Applicant, by itself or through a licensee, or by itself and through a licensee, never intended to use the Mark in Canada in association with each of the Goods, be it in the way the Mark is presented in the opposed application or for the Goods referenced in the application. The Opponent alleges that contrary to section 30(e) of the Act, the trade-mark proposed to be used is not the Mark as applied for but another, different from the one referred to in said application, namely VIRGIN WATER. However, no evidence or argument was filed in support of these grounds of opposition. 

[18]  The Opponent has pleaded that contrary to section 30(i) of the Act, the Applicant was aware – or deemed aware, of the VIRGIN trade-marks and/or trade-names of the Opponent and filed the opposed application with knowledge that the Mark would create confusion with trade-marks and/or trade-names of the Opponent and therefore the statement made by the Applicant as to its entitlement to the use of the Mark is false.

[19]   Where an applicant has provided the statement required by section 30(i), this ground should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant [Sapodilla Co v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155]. The application for the Mark contains the requisite statement and there is no evidence that this is an exceptional case.

[20]  Accordingly, these grounds of opposition are summarily dismissed.

Sections 16(3)(a), 16(3)(c), and 2 grounds

[21]  With respect to the grounds of opposition pleaded under sections 16(3)(a) and 16(3)(c) of the Act, an opponent meets its evidentiary burden under such grounds if it shows that as of the date of filing of the application for the Applicant’s Mark in Canada, the opponent’s trade-mark or trade-name had been previously used or made known in Canada and had not been abandoned as of the date of advertisement of the applicant’s application [section 16(5) of the Act]. In this case, the Opponent has simply cited two trade-mark registrations on which it intends to rely; this is insufficient to establish prior use of the Opponent’s trade-marks or its VIRGIN trade-name. The Opponent has therefore not met its burden under either of these grounds.

[22]  For the ground of opposition pleaded under section 2, there is an initial burden on the Opponent to establish that as of the filing of the opposition, its VIRGIN trade-marks were known to a sufficient extent that could negate the distinctiveness of the applied-for Mark [Bojangles’ International LLC v Bojangles Café Ltd (2006), 2006 FC 657 (CanLII), 48 CPR (4th) 427 (FC)]. To do so, the Opponent must establish that its trade-marks are either known to some extent in Canada or are well known in a specific area of Canada [Bojangles, supra at paras 33-34]. In this case, the Opponent has filed no evidence demonstrating the extent to which its VIRGIN trade-marks have become known in Canada.

[23]  As the Opponent has failed to meet its initial evidentiary burden, these grounds of opposition are summarily dismissed.

Section 12(1)(d) ground of opposition

[24]  The Opponent has pleaded that the Mark is not registrable pursuant to section 12(1)(d) in view of the Opponent’s registrations for the trade-marks VIRGIN (TMA524,590) and VIRGIN DESIGN (TMA524,506), the particulars of which are set out in Schedule A.

[25]  Having exercised the Registrar’s discretion to check the Register [Quaker Oats of Canada Ltd/La Compagnie Quaker Oats du Canada Ltée v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)], I confirm that these registrations are in good standing. The Opponent has therefore met its initial burden for this ground of opposition.

[26]  As the Opponent has satisfied its initial burden, I now have to determine, on a balance of probabilities, if the Mark is likely to cause confusion with the Opponent’s registrations for the trade-marks VIRGIN and VIRGIN DESIGN.

[27]  In assessing this ground of opposition, I will focus on the Opponent’s registration for the word mark VIRGIN (TMA524,590) as I consider this registration to present the Opponent’s strongest case. If there is no likelihood of confusion found between the Mark and this registration, it is unlikely that a likelihood of confusion would be found between the Mark and the Opponent’s registration for VIRGIN DESIGN.  

Test to determine confusion

[28]  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.

[29]  Thus, the issue is not confusion between the trade-marks themselves, but confusion of goods and services from one source as being from another source. In the instant case, the question posed by section 6(2) of the Act is whether purchasers of the Goods sold in association with the trade-mark VIRGIN would believe that those items were produced, authorized or licensed by the Opponent.

[30]  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.

[31]  These criteria are not exhaustive and different weight will be given to each one in a context specific assessment [Mattel, Inc v 3894207 Canada Inc (2006), 2006 SCC 22 (CanLII), 49 CPR (4th) 321 (SCC)]. I also refer to Masterpiece v Alavida Lifestyles Inc (2011), 2011 SCC 27 (CanLII), 92 CPR (4th) 361 (SCC) (Masterpiece) at para 49, where the Supreme Court of Canada states that section 6(5)(e), the resemblance between the marks, will often have the greatest effect on the confusion analysis.

Inherent distinctiveness

[32]  Both parties’ trade-marks are comprised of the conventional dictionary word “virgin”. In The Canadian Oxford Dictionary (2 ed.), this word is defined, as an adjective, as follows [see Tradall SA v Devil’s Martini Inc, 2011 TMOB 65 (CanLII) at para 29 which provides that the Registrar can take judicial notice of dictionary definition]:  

adjective

[usu. attributive]

• 1. being a virgin.

• o ■ of or befitting a virgin: virgin modesty.

• 2. not yet used, explored, or exploited: virgin prairie.

• 3. undefiled, spotless.

• 4. (of olive oil) obtained from the first pressing of olives etc.; unrefined.

• 5. (of clay) not yet fired.

• 6. (of metal) freshly produced from smelted ore rather than from scrap metal.

• 7. (of wool) that has never, or only once, been spun or woven.

• 8. (of an insect) producing eggs without impregnation.

 

[33]  Considering the above, in particular that “virgin” can be defined as meaning “undefiled, spotless”, I find that the applied for Mark holds some suggestive connotation, particularly with respect to “water, mineral water, aerated water”. Indeed, and as noted by the Opponent, at paragraph 5 of the Kimel affidavit, Mr. Kimel states that he “specifically chose the trade-mark VIRGIN… as a result of what I thought it suggested, namely water that was clean and pure”.

[34]  With respect to the Opponent’s trade-mark, in its written argument, the Opponent submits that its VIRGIN trade-mark benefits from a high degree of inherent distinctiveness, considering that the mark does not describe or suggest any intrinsic quality or characteristic of the Opponent’s goods. However, I consider that the Opponent’s trade-mark does hold some suggestive connotation, in that it is similarly suggestive of the quality of some of the Opponent’s goods (distilled spirits), in that they are free from impurities. 

[35]  The strength of a trade-mark may be increased by means of its becoming known through promotion or use. However, the Opponent has filed no evidence of use of its VIRGIN trade-mark, and the Applicant’s evidence indicates that it is waiting for the issuance of a registration before commencing use (Kimel affidavit, paras 8, 9).

[36]  Accordingly, overall, this factor does not significantly favour either party.

Length of time in use

[37]  The Opponent’s registration No. TMA524,590 is based solely on use and registration in the United Kingdom.  The Applicant’s application is based on proposed use in Canada. Neither party has provided evidence of use of their respective trade-mark. This factor therefore favours neither party.

The nature of the goods and trade and business

[38]  When considering sections 6(5)(c) and 6(5)(d) of the Act, it is the statement of goods and services in the application and the statement of goods and services in an opponent’s registration that govern the assessment of the likelihood of confusion under section 12(1)(d) of the Act  [Henkel Kommanditgesellschaft auf Aktien v Super Dragon Import Export Inc (1986), 12 CPR (3d) 110 (FCA); Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA)]. However, those statements must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording. In this regard, evidence of the actual trades of the parties is useful [McDonald's Corp v Coffee Hut Stores Ltd (1996), 1996 CanLII 3963 (FCA), 68 CPR (3d) 168 (FCA); Procter & Gamble Inc v Hunter Packaging Ltd (1999), 2 CPR (4th) 266 (TMOB); American Optical Corp v Alcon Pharmaceuticals Ltd (2000), 5 CPR (4th) 110 (TMOB)].

[39]  The Applicant has applied to register the Mark in association with “non-alcoholic beverages, namely water, mineral water, aerated water, fruit flavoured water, soft drinks, fruit flavoured drinks”, and “coffee”. The Opponent’s goods as listed in its registration are “wines, potable and distilled spirits, namely, vodka, gin, whisky, brandy, rum, tequila, slivovitz, aquavit, saki, arak, ouzo; and liqueurs”.

[40]  The Opponent, in its written argument and at the hearing, submits that there is undoubtedly an overlap between the parties’ respective goods in that they both fall into the same general category of beverages [T.G. Bright & Cod Ltd v Blake (1985), 4 CPR (3d) 368 (TMOB); Cie Champenoise PH-CH. Piper Heidsieck Ancienne Maison Heidsieck Fondee en 1785 v Jimenez (2016), 141 CPR (4th) 313 (TMOB) at paras 51-55; Pom Wonderful LLC v Nagar (2013), 110 CPR (4th) 1 (TMOB)].

[41]  At the hearing, the Applicant emphasized that its Goods are very different from the alcoholic beverages listed in the Opponent’s registration. In doing so, counsel for the Applicant referred to arguments that it made in a previous section 45 proceeding between the parties [Aird & Berlis LLP v Virgin Enterprises Limited, 2010 TMOB 147 at paras 18-20]. The Applicant also referred to the finding by Board member Reynolds in the previous opposition proceeding between the parties that “the wine and spirit industries are entirely different from the water filtration business or from the coffee business, both of which are non-alcoholic in nature” [Virgin Enterprises Limited v City Water International Inc., 2015 TMOB 19 at para 111].

[42]  Notwithstanding that these previous proceedings dealt with different facts and issues, and are therefore of no consequence in the present case, I nonetheless agree with Member Reynolds’ finding that the wine and spirit industries are different from the coffee business, and I consider that in the present case, the coffee, non-alcoholic beverages, and wine and spirit industries to be different. That being said, I also consider the parties’ goods to be somewhat related in that they inhabit the same general class of goods, namely beverages [Moosehead Breweries Ltd v Stokely-Van Camp (2001), 20 CPR (4th) 181 (Moosehead); PomWonderful LLC v Nagar (2013), 110 CPR (4th) 1 at para 47].

[43]  On the channels of trade, the Opponent submits that absent any restrictions, both parties’ goods may well travel through the same channels in Canada considering the Goods as described contain no restrictions on price, customer type or demographic, or location where the goods are to be sold. In support of this position, the Opponent referred to the decision in Moosehead, supra at paragraph 27 where the Registrar considered it reasonable to take judicial notice that restaurants and bars across Canada sell both alcoholic and non-alcoholic beverages, in support of the premise that there could be overlap in these channels.

[44]  The Applicant, at the hearing, submitted that evidence of its channels of trade is provided through the affidavit of Gary Kimel. In this regard, pertinent portions of the Kimel affidavit are reproduced below:

…

2. City Water specializes in bottle-less water cooler water filtration systems and has been in operation since 1991. Since our inception, sales, installation and servicing of bottle-less water filtration has been our sole focus. Virgin Water Inc. was incorporated on June 19, 2015 and performs and will perform similar services, and sells and will sell various kinds of water including non-alcoholic beverages, namely water, mineral water, aerated water, and coffee. We may also branch out into flavoured waters and syrups.

3. We operate in the commercial and industrial areas, focusing primarily on installation of bottle-less water coolers and water filtration systems in offices in Canada and the United States. We intend to operate also on a retail level.

…

9. What Virgin Water proposes to do, if we are issued a registration for the application, is to use the mark in association with Non-alcoholic beverages, namely water, mineral water, aerated water, fruit flavoured water, soft drinks, fruit flavoured drinks and coffee. We also propose to use the mark in association with coffee products that would be sold alongside the water products, for use in offices in commercial and industrial locations.

10…. The purchasers of our products are reasonably sophisticated individuals, often office managers or executives who put some thought into a purchase, in particular as our cooler systems often have a long-term contract associated with them.

[45]  At the hearing, the Applicant argued that the Kimel affidavit establishes that the Applicant’s Goods would not be sold on the street or in restaurants or bars, and while there might perhaps be some retail sales, the Applicant’s main goal would be for the Goods to be sold alongside the Applicant’s water coolers as ancillary product. In other words, the sale of these Goods is intended to be aligned with the Applicant’s office water products business.

[46]  I note that while it may well be that at the time of swearing the affidavit, the Applicant proposed to sell the Goods in offices in commercial and industrial locations (para 9), the statement of Goods as it appears in the application is not restricted as such. Indeed, Mr. Kimel even indicates that the Applicant also intends to operate also on a retail level (para 3).

[47]  Similarly, while Mr. Kimel indicates that the purchasers of its products are “often managers or executives who put some thought into a purchase, in particular as our cooler systems often have long-term contracts associated with them” (para 10), there is nothing in the application’s statement of goods restricting the prospective consumer base to office buyers for commercial and industrial locations. Further, there is nothing in the application which would even appear to suggest this demographic as the intended purchaser of the Goods – in this regard, I note the subject application does not include among its goods and services any water coolers or water filtration systems or associated services (unlike the Applicant’s previously opposed application No. 1,316,254 for the trade-mark VIRGIN WATER, which includes among its goods “water coolers and water filtration systems” and the services “services of renting , leasing and selling water filtration systems and water coolers”).

[48]  Based on the foregoing, and in particular, considering the absence of any restrictions on the channels of trade for the Goods in the Applicant’s application, I consider that the channels of trade for the parties’ respective goods could potentially overlap, particularly in the retail sphere.

Degree of Resemblance

[49]  In most instances, the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested is the dominant factor and other factors play a subservient role in the overall surrounding circumstances [Beverly Bedding & Upholstery Co v Regal Bedding & Upholstery Ltd (1980), 47 CPR (2) 145, conf. 60 CPR (2d) 70 (FCTD)]. This principle was upheld by the Supreme Court of Canada in Masterpiece [Masterpiece, supra at para 49].

[50]  In the present case, the parties’ marks are identical both visually and when sounded. In terms of ideas suggested, as noted above in the analysis of the inherent distinctiveness of the marks (paragraphs 32-34 of this decision), they are also similar.

[51]  Overall, this factor strongly favours the Opponent.

Additional surrounding circumstance – Opponent’s fame and diversification

[52]  At the hearing, the Applicant submitted that in the previous opposition proceeding between the parties [Virgin Enterprises Limited v City Water International, Inc., supra], the same objections and arguments were made by the Opponent, albeit with a much stronger evidentiary base. Citing paragraph 127 of the previous decision, the Applicant noted that in the previous proceeding the Registrar was unable to conclude that the Opponent was “sufficiently diversified” in Canada:

 [127]  Having considered all of the surrounding circumstances, I have concluded that there is not a reasonable probability of confusion between the trade-marks at issue. In coming to this conclusion, I acknowledge that the parties’ marks are very similar and that in most instances the degree of resemblance between the trade-marks is the most crucial factor in determining the issue of confusion [see Beverley Bedding & Upholstery Co v Regal Bedding & Upholstery Ltd (1980), 47 CPR (2d) 145 (FCTD) at 149, affirmed 60 CPR (2d) 70 and Masterpiece supra]. I also acknowledge the fame of Richard Branson and the fact that some of the Opponent’s Virgin Marks have become well-known or famous in Canada through promotion and use or by virtue of a presence in the media. I also acknowledge that there is no evidence to establish that the Mark has been used or acquired any reputation in Canada. However, I am unable to conclude that the Opponent is sufficiently diversified in Canada or that the average consumer in Canada would be sufficiently knowledgeable about the diversification of the Opponent in other jurisdictions such that upon seeing the Mark in the context of the Applicant’s goods and services, he or she would be likely to conclude that those goods and services originate with or are somehow associated with the Opponent.  [emphasis added]

[53]  In response, the Opponent noted that in the subject proceeding, it has not sought to establish that its VIRGIN trade-mark is well-known, and so contrary to the scenario in the above paragraph (a different proceeding based on different evidence), the Opponent in the present case is not asking the Registrar to conclude that the Opponent is sufficiently diverse in Canada.

[54]  As the fame and diversification of the Opponent’s VIRGIN trade-mark is not a factor that has been advanced by the Opponent in this case, it will not be considered as a surrounding circumstance.

Additional surrounding circumstance – Applicant’s prior registration of the trade-mark VIRGIN WATER

[55]  I do not find the existence of the prior registration of the trade-mark VIRGIN WATER by the Applicant to be of assistance in proving that there is no likelihood of confusion between the subject Mark and the Opponent’s VIRGIN trade-mark.

[56]  It has been established that an applicant’s ownership of one or more other trade-marks does not give it the automatic right to obtain a further registration [Coronet-Werke Heinrich Schlerf GmbH v Produits Ménagers Coronet Inc (1984), 4 CPR (3d) 108 at 115 (TMOB); 385229 Ontario Limited v ServiceMaster Company, 2012 TMOB 59 (CanLII) at para 47]. 

[57]  Further, notwithstanding that the Applicant’s registration for the trade-mark VIRGIN WATER differs from its applied for trade-mark VIRGIN, given that there is no evidence of use of VIRGIN WATER for the goods covered in registration No. TMA956,814 (particularly coffee) or for those goods covered in the application for the Mark, I am of the view that the circumstances in this case do not support a finding that the existence of the Applicant’s prior registration should be considered to be a relevant surrounding circumstance [Caesarstone Sdot-Yam Ltd v Ceramiche Caesar S.P.A 2016 FC 895 (CanLII) at paras 50-56].

[58]  At the hearing, the Applicant also relied on the previous opposition proceeding in support of its submission that the Board should reject the present opposition through the application of res judicata and estoppel. Leaving aside the issue of the applicability of these doctrines in opposition proceedings [Sunny Crunch Foods v Robin Hood Multifoods, 70 CPR (2d) 244 (TMOB); Georgia Pacific Corporation v Scott Paper Limited, 1996 CanLII 11429 (CA TMOB); with respect to estoppel see Baron Petroleums Inc. v. Pronto Auto Repair Dealerships Inc., (1984) (FCTD) 2 CPR (3d) 558 at 560-1; Asset Inc v Park It & Sell It of Canada Ltd, 2007 CanLII 80801 (CA TMOB)], I would decline to apply res judicata in this case primarily because of the differences between the two proceedings. This includes differences in the trade-marks at issue and in the evidential record.

Conclusion

[59]  The test to be applied is a matter of first impression in the mind of a casual consumer “somewhat in a hurry” who sees the Mark in association with the Goods at a time when he or she has no more than an imperfect recollection of the Opponent’s VIRGIN trade-mark and does not pause to give the matter any detailed consideration or scrutiny [Veuve Clicquot, supra at para 20].

[60]  Having considered all of the surrounding circumstances, I find that at best for the Applicant, the probability of confusion between the Mark and the Opponent’s trade-mark VIRGIN is evenly balanced between a finding of confusion and no confusion. As the onus is on the Applicant to show on a balance of probabilities that there is no reasonable likelihood of confusion between the trade-marks, I must therefore find against the Applicant. In reaching this conclusion, I have had regard to the fact that the parties’ marks are visually and aurally identical, and share similarities in the ideas suggested. I have also had regard to the fact that while the parties’ goods do not closely overlap or inhabit the same industry, they are still somewhat related, and that there is at least some potential for overlap in the channels of trade.

[61]  Accordingly, the section 12(1)(d) ground of opposition is successful.

Disposition

[62]  Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(8) of the Act.

Jennifer Galeano

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

Schedule A

Reg. No.	Trade-mark	Goods	Claims
TMA524,590	VIRGIN	Wines; potable and distilled spirits namely, vodka, gin, whisky, brandy, rum, tequila, slivovitz, aquavit, saki, arak, ouzo; and liqueurs.	Priority Filing Date: May 17, 1994, Country: UNITED KINGDOM, Application No: 1,572,219 in association with the same kind of goods. Used in UNITED KINGDOM. Registered in or for UNITED KINGDOM on September 26, 1997 under No. 1,572,219.
TMA524,506		Wines; potable and distilled spirits namely, vodka, gin, whisky, brandy, rum, tequila, slivovitz, aquavit, saki, arak, ouzo; and liqueurs.	Priority Filing Date: May 17, 1994, Country: UNITED KINGDOM, Application No: 1,572,214 in association with the same kind of goods. Used in UNITED KINGDOM. Registered in or for UNITED KINGDOM on September 26, 1997 under No. 1,572,214.

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2018-04-25

APPEARANCES

Gabriel St-Laurent	FOR THE OPPONENT
Kenneth R. Clark	FOR THE APPLICANT

AGENTS OF RECORD

Robic LLP	FOR THE OPPONENT
Aird & Berlis LLP	FOR THE APPLICANT