Citation: 2020 TMOB 32

Date of Decision: 2020-04-15

IN THE MATTER OF AN OPPOSITION

	LANAFORM LANA ALLPEAK S.A. (ALSO TRADING AS LANA S.A.)	Opponent
and
	Prolana GmbH	Applicant
	1,685,028 for PROLANA	Application

Introduction

[1]  Lanaform Lana Allpeak S.A. (also trading as Lana S.A.) (the Opponent) opposes registration of the trademark PROLANA (the Mark), which is the subject of application No. 1,685,028, filed by Prolana GmbH (the Applicant) on the basis of proposed use of the Mark in Canada in association with:

Goods of wood, cork, raw cane, wicker, namely, bedroom furniture, bedroom furniture parts; mattresses wholly or mainly of natural goods, furniture, in particular bed frames of wood; fabrics and textiles, in particular quilts, underblankets, cushions, protective felt for mattresses, children’s sleeping bags, bed linen; all the aforesaid goods wholly or mainly made from natural goods; clothing, namely, shirts, pants, coats, dresses, sleepwear, undergarments, infant clothing, baby clothing; footwear, namely, bed slippers; headgear, namely, hats, caps; all the aforesaid goods wholly or mainly made from natural goods; games and playthings, namely, stuffed toy animals and dolls for playing.

(the Goods)

[2]  For the reasons that follow below, I find the opposition ought to be rejected.

The record

[3]  The application for the Mark was filed on July 14, 2014 and advertised for opposition purposes in the Trademarks Journal on September 2, 2015.

[4]  On November 1, 2016, the Opponent filed a statement of opposition under section 38 of the Trademarks Act, RSC 1985, c T-13 (the Act). This Act was amended on June 17, 2019. All references herein 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 which provides that section 38(2) of the Act, as it read prior to June 17, 2019, applies to applications advertised before that date).

[5]  The Opponent raises grounds of opposition based upon sections 30 (non-compliance); 12 (non-registrability); 16 (non-entitlement); and 2 (non-distinctiveness) of the Act, which can be summarized as follows:

(a)  The application does not conform to the requirements of section 30(e) of the Act because at the date of filing of the application, the Mark had previously been used by the Applicant in Canada or, alternatively or cumulatively, the Applicant did not intend to use the Mark in Canada in association with the Goods.

(b)  The application does not conform to the requirements of section 30(i) of the Act because the Applicant could not have been satisfied that it was entitled to use the Mark in light of its knowledge of prior use of the Opponent’s trademark and trade name.

(c)  The Mark is not registrable pursuant to section 12(1)(d) of the Act as it is confusing with the Opponent’s trademark LANAFORM registered under No. TMA475,609 in association with:

Clothing for slimming, namely tights, bermuda shorts, cyclists’ shorts, breeches, bodysuits, belts; shoes.

Slimming gels and creams; essential oils; stockings for varicose veins, medical panty girdles; anti-bedsore woolen undersheets for use on beds and chairs for use against rheumatism; heel guards, knee guards and elbow guards made from natural sheepskins for use in easing rheumatism, and for preventing and healing bedsores; portable muscle stimulators; belts which send electric impulses for use in toning the muscles and to prevent cellulitis.

(d)  The Applicant is not the person entitled to registration of the Mark under section 16(3)(a) of the Act because, as of the date of filing of the application, it was confusing with the Opponent’s trademark LANAFORM previously used or made known in Canada.

(e)  The Applicant is not the person entitled to registration of the Mark under section 16(3)(c) of the Act because, as of the date of filing of the application, it was confusing with the Opponent’s trade name Lanaform Lana Allpeak or Lanaform previously used in Canada.

(f)  The Mark is not distinctive pursuant to section 2 of the Act because it does not and is not capable of distinguishing the Applicant’s Goods from those of the Opponent.

[6]  On March 16, 2017, the Applicant filed and served a counter statement denying each ground of opposition pleaded in the statement of opposition.

[7]  In support of its opposition, the Opponent filed a certified copy of registration No. TMA475,609 for the trademark LANAFORM.

[8]  In support of its application, the Applicant filed the affidavit of Lesley Gallivan, a trademark agent employed by the firm representing the Applicant, seemingly sworn on February 14, 2018 and comprising Exhibits A to F (the Gallivan affidavit). Ms. Gallivan introduces state of the register evidence in the form of searches of the Canadian Trademarks Database. As a preliminary remark on the Applicant’s evidence, I note that the Gallivan affidavit bears a date of February 14, 2017, while the said exhibits are dated February 14, 2018. This typographical error in the date of the affidavit appears to be an oversight. I also note that the commissioner’s stamp apposed on the Gallivan affidavit and on Exhibits A to F thereto seems to indicate that the commissioner’s appointment expires August 5, 2016. However, considering that the Opponent has not raised any objection, I will treat these flaws as technical deficiencies without adverse consequences for the Applicant [Rickitt Benckiser NV v Iron Out, Inc (2005) 49 CPR (4th) 372 (TMOB); C-Gem Seafoods Inc v Pêcheries Belle-Ile Fisheries Ltée, 2008 CarswellNat 4339 (TMOB)].

[9]  Only the Applicant filed a written argument; no hearing was held.

Analysis

The parties’ respective burden or onus

[10]  The Opponent has the initial evidential burden to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist. Once that burden is met, the Applicant bears the legal onus of establishing, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark [John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD); Dion Neckwear Ltd v Christian Dior, SA et al, 2002 FCA 29, 20 CPR (4th) 155].

[11]  Applying these principles to the present case, some of the grounds of opposition can be summarily rejected for the Opponent having failed to satisfy its initial evidential burden in respect thereof, as explained below.

Grounds of opposition summarily rejected

Non-compliance of the application with section 30 of the Act

Non-compliance with section 30(e) of the Act

[12]  There is no evidence that supports this ground of opposition.

Non-compliance with section 30(i) of the Act

[13]  Section 30(i) of the Act merely requires that an applicant include a statement in its application that it is satisfied that it is entitled to registration of its trademark. Where this statement has been provided, a section 30(i) ground should only succeed in exceptional cases, such as where there is evidence of bad faith on the part of the applicant [Sapodilla Co Ltd v Bristol Myers Co (1974), 15 CPR (2d) 152 (TMOB)]. Mere knowledge of the existence of an opponent’s trademark or trade name does not in and of itself support an allegation that an applicant could not have been satisfied of its entitlement to use its mark [Woot, Inc v WootRestaruants Inc Les Restaurants Woot Inc, 2012 TMOB 197]. The application for the Mark contains the statement required under section 30(i) of the Act and there is no evidence that this is an exceptional case.

Non-entitlement under sections 16(3)(a) and 16(3)(c) of the Act

[14]  An opponent meets its evidential burden under these grounds if it shows that, as of the date of filing of the applicant’s application, its trademark or trade name had been previously used in Canada and had not been abandoned as of the date of advertisement of the applicant’s application [section 16(5) of the Act]. The Opponent has not filed any evidence of use of its trademark or trade name.

[15]  In this regard, I note that the Opponent’s registration for the trademark LANAFORM is solely based upon registration of the mark in the Benelux Office for IP and use of the mark in Belgium, i.e. it does not contain any statement of use of the mark in Canada. As such, I cannot even infer de miminis use of this trademark [Gilmar SpA v Entertainment Holdings, Inc, 2010 TMOB 148]. Moreover, even if I were to infer de minimis use of the Opponent’s relied-upon trademark, such use would not give rise to an inference of continuing use of the mark [Entre Computer Centers, Inc v Global Upholstery Co (1992), 40 CPR (3d) 427 (TMOB)] and meet the requirements of section 16 of the Act [Rooxs, Inc v Edit-SRL (2002), 23 CPR (4th) (TMOB)].

Non-distinctiveness under section 2 of the Act

[16]  An opponent meets its evidential burden under this ground if it shows that its trademark had become known in Canada as of the filing date of the statement of opposition so as to negate the distinctiveness of the applied-for trademark [Bojangles’ International LLC v Bojangles Café Ltd, 2006 FC 657, 48 CPR (4th) 427]. As mentioned above, the Opponent has not filed any evidence demonstrating the extent to which its trademark LANAFORM has become known in Canada.

Remaining ground of opposition - non-registrability under section 12(1)(d) of the Act

[17]  The Opponent has pleaded that the Mark is not registrable in view of the provisions of section 12(1)(d) of the Act in that it is confusing with the Opponent’s registered trademark LANAFORM, identified above.

[18]  I have exercised the Registrar’s discretion to confirm that the Opponent’s registration is in good standing as of today’s date, which is the material date for assessing a section 12(1)(d) ground of opposition [Park Avenue Furniture Corp v Wickers/Simmons Bedding Ltd (1991), 37 CPR (3d) 413 (FCA)].

[19]  Hence, the Opponent has met its evidential burden in respect of this ground of opposition. The Applicant must therefore establish, on a balance of probabilities, that there is not a reasonable likelihood of confusion between the Mark and the Opponent’s registered trademark.

The test for confusion

[20]  The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act provides that the 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 appear in the same class of the Nice Classification.

[21]  Thus, section 6(2) of the Act does not concern the confusion of the trademarks themselves, but of the goods or services from one source as being from another. In the present case, the question is essentially whether a consumer, with an imperfect recollection of the Opponent’s LANAFORM trademark, who sees the Applicant’s Goods in association with the Mark, would think that they emanate from, are sponsored by or approved by the Opponent.

[22]  In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those listed at 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 the trademarks have 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. This list is not exhaustive, and all relevant factors are to be considered. Further, all factors are not necessarily attributed equal weight as the weight to be given to each depends on the circumstances [see Mattel, Inc v 3894207 Canada Inc 2006 SCC 22, 49 CPR (4th) 321; Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée 2006 SCC 23, 49 CPR (4th) 401; and Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27, 92 CPR (4th) 361 for a thorough discussion of the general principles that govern the test for confusion].

The inherent distinctiveness of the trademarks and the extent to which they have become known

[23]  As a whole, neither of the marks has a particular meaning and neither can be found in commonly used English or French dictionaries. Thus, both marks are inherently distinctive. In its written argument, the Applicant submits that the FORM portion of the Opponent’s mark can allude to the nature of the goods as being used for slimming purposes (e.g., aiding the user to achieve a leaner body form). I can take judicial notice of dictionary definitions [Tradall SA v Devil’s Martini Inc, 2011 TMOB 65, 92 CPR (4th) 408 (TMOB)] and, in support of this argument, I note that the term FORM can be defined in the online Oxford Learner’s Dictionaries as: “how fit and healthy somebody is; the state of being fit and healthy” and as “the shape of somebody/something”. While the marks at issue should not be dissected into their component parts, I agree with the Applicant that, to the extent the FORM portion of the Opponent’s mark is suggestive of shaping/slimming garments, its inherent distinctiveness is arguably somewhat diminished.

[24]  The degree of distinctiveness of a trademark may be increased by means of it becoming known through promotion or use. However, there is no evidence that either of the parties’ trademarks has been used in Canada pursuant to section 4 of the Act or that either trademark has become known in Canada to any extent.

The length of time the trademarks have been in use

[25]  In view of my comments above, this factor does not favour one party over the other.

The nature of the goods, services or business; and the nature of the trade

[26]  When considering the nature of the goods and the nature of the trade, I must compare the Applicant’s statement of goods with the statement of goods in the registration relied upon by the Opponent [Henkel Kommanditgesellschaft auf Aktien v Super Dragon Import Export Inc (1986), 12 CPR (3d) 110 (FCA); and Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA)]. However, 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. Evidence of the parties’ actual trades is useful in this respect [McDonald’s Corp v Coffee Hut Stores Ltd (1996), 68 CPR (3d) 168 (FCA); Procter & Gamble Inc v Hunter Packaging Ltd (1999), 2 CPR (4th) 266 (TMOB); and American Optional Corp v Alcon Pharmaceuticals Ltd (2000), 5 CPR (4th) 110 (TMOB)].

[27]  Relying on JINX, Inc v JINXD Yoga Essentials Inc (2016), 142 CPR (4th) 475 (TMOB), the Applicant submits there are sufficient differences in the nature of the goods and trades at issue which would preclude confusion in the marketplace. Although some parallels may be drawn, I find the circumstances of the present case distinguishable from JINX in that ample evidence had been provided by the parties’ therein, unlike in the present case.

[28]  That said, I agree with the Applicant that some of the goods covered by the parties’ trademarks are completely different and unrelated. For instance, reference can be made to the furniture goods, cushions, children’s sleeping bags, as well as to the games and playthings covered by the Mark, which find no counterpart in the Opponent’s registration for the trademark LANAFORM. Furthermore, while there is some overlap in respect of some of the parties’ general categories of goods in that they both cover clothing and footwear items as well as bed coverings, I tend to agree with the Applicant’s submissions that the goods which share similarity may be distinguished since the Opponent’s registered goods, as described above, essentially appear as specialty goods used for slimming and medical purposes. For instance, reference can be made to the Opponent’s goods described as “[c]lothing for slimming” or “stockings for varicose veins, medical panty girdles; anti-bedsore woolen undersheets […] for use against rheumatism”, which would arguably be purchased for a very specific purpose. However, considering there is a connection between some of the parties’ general categories of goods and in the absence of evidence to the contrary, there is no reason to conclude that their channels of trade could not potentially overlap.

The degree of resemblance between the trademarks in appearance or sound or in the ideas suggested by them

[29]  As noted by the Supreme Court in Masterpiece, supra, at paragraph 49, “the degree of resemblance, although the last factor listed in [section] 6(5) [of the Act], is the statutory factor that is often likely to have the greatest effect on the confusion analysis […] if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion”.

[30]  Moreover, as previously mentioned, it is well-established in the jurisprudence that likelihood of confusion is a matter of first impression and imperfect recollection. In this regard, “[w]hile the marks must be assessed in their entirety (and not dissected for minute examination), it is still possible to focus on particular features of the mark that may have a determinative influence on the public’s perception of it” [Pink Panther Beauty Corp v United Artists Corp (1998), 80 CPR (3d) 247 (FCA), at para 34]. I also must take into consideration the fact that the first portion of a trademark is often considered the most important one for the purpose of distinction [Conde Nast Publications Inc v Union des Editions Modernes (1979), 46 CPR (2d) 183 (FCTD)].

[31]  Applying those principles to the present case, I find that the parties’ marks bear little to no resemblance.

[32]  In its written argument, the Applicant submits that:

51. When assessing confusion, it is, of course, not proper to dissect trade-marks into their component parts, rather, marks must be considered in their entirety. Yet, in this case, a dissection and focus on one element is what is necessary to find any potential similarity in appearance, sound and idea suggested.

[…]

53. The marks, for the purposes of comparison are LANAFORM and PROLANA. While both marks share the portion LANA, the marks are differentiated in appearance by the end portion FORM in respect of the Opponent’s mark and the first portion PRO in respect of the Applicant’s mark.

54. The Applicant’s mark includes a different first portion, rendering it visually and orally distinguishable from the Opponent’s mark. This factor serves to further distinguish the Applicant’s mark from the Opponent’s mark as it is well established that the first portion of a trade-mark is the most important for the purpose of distinction. […]

55. Considered in their respective totalities, the marks are not similar owing the dominance of the first portion PRO in the Applicant’s mark and the end portion FORM in the Opponent’s mark. […]

56. In order to conclude that the marks in question are similar in appearance, sound and idea suggested, one would be required to parse the terms and seek out the common portion LANA. However, the marks are completely different and convey distinct ideas.

[33]  With the distinction that, when considered as a whole, none of the parties’ marks strike me as having one single dominant feature over another, I am in general agreement with the Applicant. Dissecting the parties’ marks and focusing on their two shared syllables in an effort to find resemblance between them is not the correct approach. Both trademarks begin and end with different components which gives each of them a dissimilar appearance and sound. Both trademarks are devoid of meaning and, although the component FORM in the Opponent’s mark can suggest the ideas of health, fitness or that of being in physical shape, it does not necessarily follow that LANAFORM has a readily clear meaning per se. All in all, while the parties’ trademarks might share a common element, there are important differences between them, visually, in sound as well as in the ideas they might suggest.

State of the register evidence

[34]  State of the register evidence can be introduced to show the commonality or distinctiveness of a trademark or portion of a trademark in relation to the register as a whole and that consumers are therefore accustomed to distinguishing between the trademarks based on relatively small differences. However, such evidence is only relevant insofar as one can make inferences from it about the state of the marketplace, inferences which can only be drawn when a large number of relevant registrations are located [Ports International Ltd v Dunlop Ltd (1992), 41 CPR (3d) 432 (TMOB); Welch Foods Inc v Del Monte Corp (1992), 44 CPR (3d) 205 (FCTD); Maximum Nutrition Ltd v Kellogg Salada Canada Inc (1992), 43 CPR (3d) 349 (FCA)].

[35]  In its written argument, the Applicant submits that “[t]he term LANA is common to the general trade of both parties” and that “prospective purchasers are clearly used to seeing LANA registered and used in association with the relevant goods”. As mentioned above, the Applicant has filed state of the register evidence through the Gallivan affidavit, which contains printouts of search results of active trademark applications and registrations including the component LANA in association with goods that have been classified as falling in Nice Classes 24 (textiles), 25 (clothing, footwear, headwear) and/or 28 (games, toys and playthings).

[36]  The search results in the Gallivan affidavit are not limited to registered trademarks, as I note they also include pending applications and official marks. I further note that there is no date mentioned in Ms. Gallivan’s affidavit as to when she performed the referenced searches, except to state that a request for such searches was made on or around November 7, 2017. That said, since the relevant date for this ground of opposition is the date of my decision, this flaw is not fatal to the Applicant.

[37]  In its written argument, the Applicant specifically directs my attention to the following 12 search results depicting registered trademarks comprising the component LANA mostly in association with textile and clothing, amongst other goods:

-  LANATEX (reg. NFLD2381) for “cloths and fabrics in general”;

-  LANA GATTO TOLLEGNO DAL 1900 & Design (reg. TMA647,623) for, amongst others, “yarns, threads, textiles, namely […]; bed blankets, […]; clothing articles, namely […];”

-  LANA SPORT (reg. TMA570,612) for “ladies’ wearing apparel, namely […]”;

-  WAI LANA and Wai Lana (regs. TMA862,028 and TMA845,934) for, amongst others, “clothing, namely, […]”;

-  SVETLANA (reg. TMA717,224) for “women’s clothing, namely, […]”;

-  COMOLANA design (reg. TMA378,445) for “men’s clothing namely, […]”;

-  LANA-LEE (reg. TMA939,241) for “women’s apparel, namely […]”;

-  ZEALANA (reg. TMA742,015) for “raw fibrous textile materials; animal fibers; raw and treated wool and fur; […]”;

-  TRESLANA (reg. TMA431,368) for “men’s, young men’s and boys’ jeans, slacks, walk shorts […]”;

-  SILANA (reg. TMA327,977) for “clothing, namely, […]”;

-  Alana (reg. TMA827,539) for, amongst other things, “[…] leather and imitation leather and goods made of these materials namely boots, […]; […] Furniture, namely, bedroom furniture, […]; fabrics and textile goods, namely […] bed linen, […]; bed and table covers; comforters, blankets, bedspreads; […]. Textile goods (clothing) produced exclusively by using natural raw materials namely […]”.

[38]  I note that three of the registrations highlighted by the Applicant are currently expunged, that a couple are owned by the same entities and that a couple of others contain design elements. While I agree with the Applicant that some of the results yielded through Ms. Gallivan’s searches may to a certain extent support its argument above (at least in so far as clothing is concerned), I am not prepared to draw inferences about the state of the marketplace given the low number of relevant registrations adduced and without any evidence of actual use. Be that as it may, I find it unnecessary to rely on the Gallivan affidavit to conclude in favour of the Applicant.

Conclusion regarding the likelihood of confusion

[39]  Having considered all of the surrounding circumstances, I find that the Applicant has met its onus to show, on a balance of probabilities, that the Mark is not likely to cause confusion with the Opponent’s trademark LANAFORM. I reach this conclusion as I find the differences existing between the parties’ trademarks in terms of appearance, sound and ideas suggested, outweigh the potential for overlap with respect to some of the parties’ goods and their channels of trade. Accordingly, the section 12(1)(d) ground of opposition is hereby rejected.

 

Disposition

[40]  Pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(12) of the Act.

Annie Robitaille

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

No Hearing Held

AGENTS OF RECORD

ROBIC	For the Opponent
MARKS & CLERK	For the Applicant