Citation: 2020 TMOB 41

Date of Decision: 2020-04-30

IN THE MATTER OF AN OPPOSITION

	Sjoklaedagerdin HF	Opponent
and
	Les Placements Arden Inc. / Arden Holdings Inc.	Applicant
	1,683,088 for 82° NORTH & Design	Application

Introduction

[1]  Sjoklaedagerdin HF (the Opponent) opposes registration of the trademark 82° NORTH & Design (the Mark), shown below, which is the subject of application No. 1,683,088 by Les Placements Arden Inc. / Arden Holdings Inc. (the Applicant):

[2]  The application is based on proposed use in Canada with “parkas, jackets, coats, hats, scarves, gloves and mittens exclusively for sale in the applicant's own or licensed retail stores” (the Goods).

[3]  The Opponent alleges grounds of opposition based on non-compliance with sections 30(b), 30(e) and 30(i) of the Trademarks Act, RSC 1985, c T-13 (the Act), confusion with a registered trademark (section 12(1)(d)), entitlement (section 16), and distinctiveness (section 2). This Act was amended on June 17, 2019. All references in this decision are to the Act as amended, with the exception of references to the grounds of opposition which refer to the Act before it was amended (see section 70 of the Act).

[4]  The key issue in the proceeding is the likelihood of confusion between the Mark and the Opponent’s trademarks set out below registered for use in association with a variety of clothing including jackets, hats, gloves and mittens.

[5]  For the reasons that follow, the application is refused.

The Record

[6]  The application for the Mark was filed on June 27, 2014 and was advertised in the Trademarks Journal on March 4, 2015.

[7]  The Opponent filed a statement of opposition on April 24, 2015.

[8]  The Applicant filed and served a counter statement on June 17, 2015.

[9]  The grounds of opposition are summarized below:

(a)  The application does not conform to the requirements of section 30(b) of the Act as the Applicant had actually commenced use of the Mark prior to filing and has not listed the correct date from which the Applicant has used the Mark. In the alternative, the application does not conform to the requirements of section 30(e) of the Act as the Applicant did not intend to use the Mark in Canada.

(b)  The application does not conform to the requirements of section 30(i) of the Act as the Applicant could not have been satisfied it was entitled to use the Mark, in light of the grounds of opposition based on sections 30(b) and 30(e) and non-registrability, non-entitlement and non-distinctiveness.

(c)  The Mark is not registrable because it is confusing with any one or combination of the Opponent’s trademark registration Nos. TMA757,275 and TMA481,618.

(d)  The Applicant is not the person entitled to register the Mark pursuant to section 16(3)(a) of the Act as the Mark was confusing with the previous use of the Opponent’s trademarks 66° NORTH & Design and 66°N.

(e)  The Mark is not distinctive of the Applicant within the meaning of section 2 of the Act as it was confusing with the Opponent’s trademarks 66° NORTH & Design and 66°N.

[10]  In support of its opposition, the Opponent filed the affidavit of Fannar Páll Aŏalsteinsson. In support of its application, the Applicant filed the affidavits of Mark Dervishian and Laurence Virtue-Deshaies. The applicant filed a written argument. Both parties were represented at a hearing.

Evidential Burden and Legal Onus

[11]  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].

Analysis of the grounds of opposition

[12]  I will first consider the section 12(1)(d) ground of opposition.

Section 12(1)(d) Ground of Opposition

[13]   The material date for this ground of opposition is the date of this decision [Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trademarks (1991), 37 CPR (3d) 413 (FCA)].

[14]  The Opponent has pleaded that the Mark is not registrable because it is confusing with the Opponent’s registered trademarks set out below:

Registration No.	Trademark	Goods
TMA757,275		(1) Clothing and outdoor clothing, namely T-shirts, shirts, trousers, overalls, jackets, hats, caps, mittens, gloves, balaclavas, headbands, socks.
TMA481,618		(1) Clothing, namely trousers, overalls, helmets, jackets, socks and mittens.

[15]  I have exercised my discretion to check the Register to confirm that these registrations are extant [Quaker Oats Co of Canada v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)]. The Opponent has therefore met its initial evidential burden. I will focus my analysis on the likelihood of confusion between the Opponent’s registration No. TMA757, 275 for 66° NORTH & Design and the Mark. If the Opponent is not successful based on this mark, then it will not be successful based on its other mark since the Mark has a greater degree of resemblance to this mark as compared to the other.

Test to Determine Confusion

[16]  The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or or appear in the same class of the Nice Classification.

[17]  In Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23, the Supreme Court of Canada sets out the approach to be taken (at para 20):

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], at a time when he or she has no more than an imperfect recollection of the [prior] trademarks, and does not give pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks. …

[18]  The notion of the ‘casual consumer’ was discussed in Mattel, Inc v 3894207 Canada Inc 2006 SCC 22 at para 58:

… To those mythical consumers, the existence of trademarks or brands make shopping decisions faster and easier. The law recognizes that at the time the new trademark catches their eye, they will have only a general and not very precise recollection of the earlier trademark, famous though it may be or, as stated in Coca-Cola Co. of Canada Ltd. v Pepsi-Cola Co. of Canada Ltd., 1942 CanLII 344 (UK JCPC), [1942] 2 DLR 657 (PC), “as it would be remembered by persons possessed of an average memory with its usual imperfections” (p 661). The standard is not that of people “who never notice anything” but of persons who take no more than “ordinary care to observe that which is staring them in the face”: Coombe v. Mendit Ld. (1913), 30 RPC 709 (Ch D), at p 717. However, if ordinary casual consumers somewhat in a hurry are likely to be deceived about the origin of the wares or services, then the statutory test is met.

[19]  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 trademarks 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 trademarks in appearance or sound or in the ideas suggested by them.

[20]  These criteria are not exhaustive and different weight will be given to each one in a context specific assessment [Mattel, supra at para 54]. I also refer to Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC) 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

[21]  The parties’ trademarks possess some measure of inherent distinctiveness as there is no evidence that the latitudes identified in the marks (66° North and 82°North) are descriptive of the parties’ goods or that consumers are familiar with them.  To the extent that these latitude cordinates suggest a northern location, the parties’ trademarks are suggestive of the associated winter-wear goods and therefore are weak marks. Finally, the Mark has a slightly greater degree of inherent distinctiveness than the Opponent’s trademark 66° NORTH & Design due to its more elaborate design features.

Extent to which the Trademarks have become Known

[22]  This factor favours the Opponent as it has shown that its trademark 66° NORTH & Design is known to a greater extent than the Mark.

[23]  The evidence of Fannar Páll Aŏalsteinsson, Project Manager of Marketing of the Opponent, provides the following evidence of acquired distinctiveness which enhances the protection afforded to its trademark 66°NORTH & Design.

·  Since at least as early as the 1970’s, the Opponent has operated under the name 66°NORTH. This name is derived from the latitudinal line of the Artic Circle which touches the area in Iceland where the company was founded in 1926.  The 66°NORTH & Design trademark is prominently featured on the Opponent’s clothing (para 7).

·  The Opponent has one retail location in Canada (para 8) and one major business to business distributor for fisherman’s clothing (para 8). The Opponent also sells products online from the website at www.66north.com fulfilling orders for its products from all around the world, including in Canada (para 8). The Opponent has offered online sales since 2005 (para 8).

·  The Opponent attaches representative photos and screenshots of its products showing how its 66° NORTH & Design trademark is featured (Exhibit B). Mr. Aŏalsteinsson explains that “the look of marks on the clothing is consistent with the way in which the products have been marketed since they were first launched in Canada to present date” (Exhibit B, para 12) and that “every single one of the products offered by the Opponent prominently features the 66° NORTH trademarks” (para 10).

·  The Opponent provides yearly worldwide sales information between 2010 and May 2016. Yearly sales in Canada between 2010-2015 were not less than 300,000 CDN per year (para 14) (for the purposes of this decision I have taken judicial notice that 100 ISK and $1 CDN have been roughly equivalent over the last decade).  The Opponent’s evidence of sales is supported by invoices attached as Exhibit D showing approximately $50,000 of sales.

·  While the evidence is that the Opponent has advertised and promoted its 66°NORTH trademarks in magazines, through trade shows and fairs and on social media such as Facebook, Twitter, YouTube, Google+, and Instagram (paras 9, 13), there is no evidence that any Canadian consumers are aware of this promotion.

[24]  The Applicant’s evidence on the acquired distinctiveness of its trademark is provided by Mark Dervishian, the Chief Operating Officer (COO) of Arden Holdings (para 1). Mr. Dervishan’s affidavit provides that the Applicant sells a line of fashion winter clothing with the Mark in Ardene Stores (para 7) and provides pictures of parkas including the mark on hang tags and tags on the jackets (Exhibit C). Mr. Dervishian’s evidence is that Arden Holdings has 369 Ardene Stores in Canada (para 5). Given the number of Ardene stores, I find it reasonable to infer that the Mark has become known to some extent.  In the absence of sales information, however, I cannot find that the Mark’s acquired distinctivenesss approaches that of the Opponent.

Length of time the trademarks have been in use

[25]  The application was filed on the basis of proposed use on June 27, 2014; in contrast, the Opponent has provided evidence of sales in Canada since at least September 2010 through its sales information, pictures of goods and Mr. Aŏalsteinsson’s statement that the pictures in Exhibit B are consistent with the way that the Opponent’s products have been marketed since their launch (paras 12, 14, Exhibit B).

Nature of the goods and trade

[26]  It is the Applicant’s statement of goods as defined in its application versus the Opponent’s registered goods that governs my determination of this factor [Esprit International v Alcohol Countermeasure Systems Corp (1997), 84 CPR (3d) 89 (TMOB) at 98-99].

[27]  The Opponent’s website shows that its goods range in cost from $19.00 for a cap to $680 for a parka (the currency is not provided).  Several of the Opponent’s jackets are in the $200 range. The Applicant’s evidence is that it has 369 Ardene stores in Canada (Dervishian affidavit, para 5) and that its primary focus is to bring to customers fashionable products at prices that are affordable (para 4). Mr. Dervishian states that the average prices of the products sold at Ardene are $15 – footwear; $22 – apparel and $10.50 for accessories. The 82° NORTH product line is sold between $98.50-119.50 CDN (para 7).

[28]  The nature of the goods overlaps as both parties’ goods are to keep consumers warm in winter. The Mark covers parkas, jackets, coats, hats, scarves, gloves and mittens “exclusively for sale in the applicant's own or licensed retail stores”. The Opponent’s registrations include jackets, socks and mittens (registration No. TMA481,618) and jackets, hats, caps, mittens, gloves, and balaclavas (registration No. TMA757,275).

[29]  The parties’ evidence indicates that the parties’ goods are sold at different price points and may be intended for different segments of the market. I do not find that this means that the goods or trade are of a different nature [Bagagerie SA v. Bagagerie Willy Ltée 1992 CanLii 8489, 45 CPR (3d) 503 at 509-51]. In Tommy Hilfiger Licensing Inc v International Clothiers Inc., 2003 FC 1087 at para 43 (3) Justice MacKay explains:

… In a generic sense the wares to which they related, men's polo shirts in particular, and boys' short sets, are within the general class of wares, i.e., articles of clothing for men and boys, the general market that the plaintiffs and INC both served. Those markets may have differed in the comparative wealth or purchasing interests of prospective consumers. The plaintiffs' goods are described as "high-end" products, intended for all age groups, those of the defendant are described as trendy, up-to-date, fashionable and moderately priced. The parties do not consider their wares to be comparable in quality or design and they do not consider themselves to be direct competitors, but in my opinion, the nature of the wares are generally similar, and the parties are engaged in a single trade, i.e., sales of men's and boys' clothing among the wares both sold.

Further, there is no limitation in the Opponent’s registration limiting it to only selling goods of a certain quality and price point [Suzuki Motor Corp. v Hayabusa Fightwear Inc. 2014 FC 784 at para 46 where the Court holds that when comparing the likelihood of confusion between two trademarks, that when dealing with a registered trademark, one must consider the entire scope of rights granted under the registration, and its potential use must be considered as well as its actual use].

[30]  I do not find that the restriction in the application  “exclusively for sale in the applicant's own or licensed retail stores” necessarily diminishes the likelihood of confusion. In particular, the part of the restriction which says “licensed retail stores” would permit the Applicant to sell in any retail establishment so long as it was licensed.

[31]  Finally, I find the cases submitted by the Applicant in its written argument to be distinguishable from this opposition. First, the conclusion on the effect of the difference in the nature of the goods and channels of trade and reduction of likelihood of confusion in Bally Schuhfabriken, [1992] 41 CPR 3d 205 para 18 (TMOB) appears to be based on part on survey evidence. Second, the findings of the Federal Court in A&W Food Services of Canada v McDonald’s Restaurants 2005 FC 406 para 81-82 appears to be based on facts specific to the fast food industry.

Degree of Resemblance

[32]  When considering the degree of resemblance between trademarks, they must be considered in their totality; it is not correct to lay them side by side and compare and observe similarities or differences among the elements or components of the marks [Veuve Clicquot, supra at paragraph 20].

[33]  The parties’ marks resemble each other somewhat owing to the fact that they both consist of a two digit number with a degree symbol and the word north; although the differences in the numbers and designs certainly result in some visual differences. The first component of a mark is often considered more important for the purpose of distinction;  however, when the first component is a non-distinctive component, as in this case with the first components being the numbers 66 and 82, the significance of the first component lessens [Conde Nast Publications Inc. v Union des Editions Modernes (1979), 46 CPR (2d) 183 (FCTD); 100 Mile Market Inc v Catch International Inc, 2013 TMOB 4]. To the extent that the parties’ marks suggest a specific idea to consumers, I find that it is that the goods are for cold conditions. In my view, the resemblance between the marks considered in their entireties is a factor which favours neither party.

State of the Register and Marketplace evidence

[34]  State of the register and marketplace evidence favours an applicant when the presence of a common element in marks causes purchasers to pay more attention to the other features of the marks, and to distinguish between them by those other features [McDowell v Laverana GmbH & Co. KG, 2017 FC 327 at para 42].

[35]  For example, in Kellogg Salada Canada Inc v Maximum Nutrition Ltd, [1992] 3 FC 442, 43 CPR (3d) 349 (CA), where the issue was whether confusion existed between the trademark NUTRI-VITE and the trademarks NUTRI-MAX and NUTRI-FIBRE, the FCA found that consumers were accustomed to making fine distinctions between various NUTRI trademarks based on small differences in their suffixes. In Kellogg, there were at least 47 trademark registrations and 43 trade names, plus a further 18 trademark registrations after the filing date that contained the word “Nutri” as part of the mark.

[36]  In McDowell, Justice MacTavish explains that evidence of third party trademark registrations with a common element is only significant where the registered marks are commonly used in the market in question: Cie Gervais Danone v Astro Dairy Products Ltd., 1999 CanLii 7656 (FC), 160 FTR 27 at para 17, [1999] FCJ No 408 (FCTD). For an inference to be drawn that a word or element is common to the trade, there must be evidence of common use in the marketplace by third parties: Cie Gervais, above at paras 17-18; Kellogg, above at para. 14.

[37]  Ms. Virtue-Deshaies’ affidavit includes the results of searches for trademark applications and registrations containing one of the following: (i) a number with the word DEGREE; (ii) a number with a degree symbol and (iii) a number with the word NORTH. Ms. Virtue-Deshaies also conducts a search of the Internet. Ms. Virtue-Deshaies describes her Internet search as follows (para 4.2):

a search on the Internet to locate the trademarks containing the above mentioned combinations which are used in the Canadian market but not necessarily registered on the Canadian Trademarks Register.

[38]  I am prepared to accord a limited significance to Ms. Virtue-Deshaies’ evidence as it seems clear that some third parties have been active under trademarks and tradenames that incorporate a number, NORTH and DEGREE or ° in the general field that the parties operate within. As such, this factor favours the Applicant to some extent with the following three caveats. First, it is not at all clear that a sufficient number of relevant registrations and examples of use in the fields of the parties has been provided for this factor to significantly favour the Applicant. Second, there is very limited evidence that any of these third party trademarks or tradenames has acquired any reputation in the marketplace. Third, most of the marks located in the search are not as similar to the Opponent’s trademark 66° NORTH Design as the Mark is. I explore these points further below. Ms. Virtue-Deshaies’ evidence only located a few intances of each of these components appearing together in a similar manner as to the Mark and the Opponent’s trademarks, including the following. My comments on the most relevant registrations are below.

Trademark No.	Trademark	Comments
TMA540,941		The website searches show this is a business organization promoting Abitibi-Témiscamingue which is consistent with the registered services.
TMA643,660		The website shows a jacket sold under the 90° NORTH brand name with a note “COMING SOON” on the website.
TMA643,877	90° NORTH
TMA821,935		Registered for use in association with bicycle parts and components.
TMA852,576		The website shows that this business is a restaurant which is consistent with the registered services.
TMA696,925	NORTH 49	The registered goods include jackets and winter parkas.
TMA328,733	ZERO DEGREE	These marks cover relevant goods, however, the mark appears to indicate temperature.
TMA702,957	ZERO DEGREE
TMA381,251	DEGRÉ 7	The registered goods include parkas.
TMA470,764		The registered goods are men’s and boys’ hosiery but the trademark appears to suggest temperature.
TMA617,240	NORTH FORTY FOUR	The registered goods jackets, coats and hats.
TMA692,115		The registered goods include jackets and hats.

[39]  With respect to the brands located through internet searches, including 32 Degrees, 11 Degrees clothings, 360 DEGREES NW and Six Degrees Apparel, there is no evidence that goods with these brands have been sold in Canada, purchased by Canadians or are otherwise known to Canadians. I cannot, therefore, find that marks comprising the common elements are in fairly extensive use in the market in which the marks under consideration are being used or will be used [Kellog Salada, supra at 359].

[40]  Below, I note additional deficiencies in Ms. Virtue-Deshaies’ evidence which diminish its impact.

(a)  Ms. Virtue-Deshaies’ searches identified applications which are not yet allowed and allowed applications filed on the basis of use and registration abroad and proposed use. In the absence of evidence of use, these applications do not result in the inference that these marks are in use in Canada: 2 DEGREES Logo (1,674,758), 105 DEGREES (1,721,659); 360 DEGREE SENIOR LIVING PROFILE (1,745,120), and 66° NORDLAND (1,752,449).  With respect to the application for NORTH 40 OUTFITTERS & Design (1,696,243) this application is only searched and the website attached only references shipping in the United States.

(b)  Ms. Virtue-Deshaies’ searches of the trademarks database and websites also revealed several irrelevant results as the owners of these third party marks operate in entirely different fields of interest than the Applicant and the Opponent. These include a brewing company (application No. 1,779,719 and 1,779,721), a film production company (application Nos. 1,761,123, 1,761,134, 1,761,136 and 1,761,138), a car company whose mark appears on HOT WHEELS toy cars (TMA854,674), a restaurant (TMA852,576), a paintball company (TMA623,556); fitness trainers (TMA876,423); a coffee roaster (TMA926,322); a promoter of music in the city of Toronto (TMA942,491); a music group (650 NORTH); a bicycle company (1,695,023); and detachable moulded anti-skid sole attachments with cleats (TMA877,359).

(c)  Where the parties’ marks show three points of commonality, a number, the word degrees or the symbol °, and NORTH, several marks identified by Ms. Virtue-Deshaies include only a single of these elements. Others include two of these elements but are significantly different from the parties’ marks. The following marks do not lead to the inference that consumers can distinguish between the Mark and the Opponent’s trademarks: NORTH END TECHNO 3.1 (TMA612,454); 360° FIT & Design (TMA634,367); SIX DEGREES (TMA693,408); SIX DEGREES OF SEPARATION (TMA744,177); FERRARI 150 ITALIA Design (TMA854,674); 3RD Degree TRAINING (TMA876,423); 23 DEGREES ROASTERY & Design (TMA926,322); NORTH END clothing; SPIN 180° (TMA547,784); V°73 (TMA866,680); LOFT 8° & Design (TMA718,184); THE NORTH DEGREE & Design (TMA572,312); SEVAEN Design (1,736,498); 361° & Design (TMA794,855); and 361° DEGREE BEYOND (1,701,125 and 1,701,123); ONE DEGREE BEYOND (1,701,128); and NORTH FACE clothing.

 

Conclusion on the likelihood of confusion

[41]  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 when he or she has no more than an imperfect recollection of one or more of the Opponent’s trademarks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the trademarks [Veuve Clicquot Ponsardin, supra].

[42]  The ultimate test is the first impression in the mind of a consumer who has an imperfect recollection of the trademark 66°North & Design, who sees the Goods with the Mark, will that consumer think that the Opponent is the source of these Goods?  In particular, as stated by Pigeon J. in Benson & Hedges (Canada) Ltd. v St. Regis Tobacco Corp. [1969] SCR 192 (SCC), at  202:

It is no doubt true that if one examines both marks carefully, he will readily distinguish them. However, this is not the basis on which one should decide whether there is any likelihood of confusion.

 ...the marks will not normally be seen side by side and [the Court must] guard against the danger that a person seeing the new mark may think that it is the same as one he has seen before, or even that it is a new or associated mark of the proprietor of the former mark. (Citing in part Halsbury's Laws of England, 3rd ed., vol. 38, para. 989, at p. 590.)

[43]  I find that the probabilities between a reasonable likelihood of confusion and no reasonable likelihood of confusion are evenly balanced. The Applicant has failed to meet its legal onus of proving that the average purchaser as a matter of first impression and with an imperfect recollection of the Opponent's 66°North & Design trademark would be able to distinguish the Mark.  In so finding, I have had regard to the fact that only the Opponent had evidenced sales of its mark to a significant extent and there is overlap in the nature of the goods and trade. This ground of opposition therefore succeeds.

Section 16(3)(a) Ground of Opposition

[44]  In order to meet its initial burden with respect to its section 16(3)(a) ground of opposition, the Opponent must show that it had used one of its trademarks as of June 27, 2014 and had not abandoned such use as of March 4, 2015 (see section 16(5)). The Opponent’s evidence of photographs of its products at Exhibit B including the 66° NORTH & Design trademark, Mr. Aŏalsteinsson’s statement that the way the trademark appears is consistent with the the way in which the products have been marketed since they were first launched in Canada (para 12) and the invoices at Exhibit D, several which are dated prior to the material date, is sufficient to meet its evidential burden. The Applicant must now show, according to the balance of probabilities, that there was not a likelihood of confusion between the Mark and the Opponent’s trademark 66° NORTH Design on the date of filing of its application.

[45]  In my view, the difference in the material dates does not have a significant impact on the determination of the issue of confusion. This ground of opposition therefore succeeds.

Section 2 Ground of Opposition

[46]  The material date for this ground of opposition is the date of filing the statement of opposition [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC)].

[47]  The Opponent has pleaded that the Mark is not distinctive of the Goods because it is confusing with the Opponent’s trademarks 66°N and 66°NORTH & Design. The Opponent  meets its initial evidential burden since its evidence of sales establishes that its 66° NORTH & Design trademark had, as of the date April 24, 2015, acquired a substantial, significant or sufficient reputation in Canada [see Bojangles' International LLC v Bojangles Café Ltd (2006), 48 CPR (4th) 427 at para 34 (FC)]. In my view, the difference in the material dates does not have a significant impact on the determination of the issue of confusion. This ground of opposition therefore succeeds.  

Section 30(b), 30(e) and 30(i) Grounds of Opposition

[48]  The Opponent has not provided any evidence or submissions in support of its grounds of opposition based on sections 30(b) and 30(e) of the Act. As such, the Opponent has failed to meet its evidential burden with respect to these grounds of opposition and they are rejected.

[49]  With respect to the ground of opposition based on section 30(i) of the Act, 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 an applicant [Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155]. As the Opponent has not adduced any evidence of bad faith, this ground of opposition is rejected.

Disposition

[50]  Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(12) of the Act.

Natalie de Paulsen

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2020-01-07

APPEARANCES

Paul W. Braunovan Méliane Etien-Usher	FOR THE OPPONENT
Maxime Gagné Clara Martel	FOR THE APPLICANT

AGENT(S) OF RECORD

PERLEY-ROBERTSON, HILL & MCDOUGALL LLP	FOR THE OPPONENT
CABINET JURIDIQUE ST. LAWRENCE S.E.N.C.R.L. / ST. LAWRENCE LAW FIRM LLP	FOR THE APPLICANT