Citation: 2021 TMOB 63

Date of Decision: 2021-03-31

IN THE MATTER OF AN OPPOSITION

	Barbara Lee Murray	Opponent
and
	Guide Outfitters Association of British Columbia	Applicant
	1,701,184 for Bears Matter	Application

[1] Guide Outfitters Association of British Columbia (the Applicant) has applied to register the trademark Bears Matter (the Mark) based on its proposed use in association with the following goods (the Goods):

(1) Apparel, namely hats, hunting caps, shirts, t-shirts, tank tops, jackets, sweaters, sweater shirts, sweat pants, coats and vests. (2) Promotional items, namely duffel bags, briefcases, stickers, bumper stickers, mouse pads, key chains, flags, banners, balloons, novelty buttons, greeting cards, note cards, pencils, pens, coffee mugs and magnets. (3) Printed educational, instructional and teaching materials, namely handbooks, books, newsletters, bulletins, brochures, pamphlets, market reports and manuals. (4) Stationary, namely letterhead, paper, notepads, labels, business cards, binders and file folders;

and in association with the following services (the Services):

(1) Providing marketing strategies for others, namely guide outfitters and other hunter related organizations. (2) Operation of websites for the benefit of the general public to provide information services in the field of hunting, wilderness survival and environmentalism. (3) Promoting public awareness of environmental issues and initiatives through classes, seminars, retreats, conferences, and training sessions, in the field of hunting, wilderness survival and environmentalism. (4) Film and video production to provide information to guide outfitters, organizations, and the general public in the field of hunting.

[2] Barbara Lee Murray (the Opponent) opposes this application, based primarily on allegations that (i) the Mark is confusing with the trade name Bears Matter (the Trade Name) that she has been using in association with a bear conservation advocacy business and (ii) the Applicant does not intend to use the Mark but rather to confuse the public and to prevent the Opponent from using her identical trade name.

[3] For the reasons that follow, I refuse the application.

The record

[4] Application no. 1,701,184 for the Mark (the Application) was filed on November 4, 2014, and advertised for opposition purposes in the Trademarks Journal on October 12, 2016.

[5] On April 26, 2017, the Opponent filed a statement of opposition pursuant to section 38 of the Trademarks Act, RSC 1985, c T-13 (the Act). The grounds of opposition are based on sections 38(2)(a) and 38(2)(c) of the Act and deal, respectively, with the application requirements under sections 30(e) and 30(i) and with entitlement to registration under section 16(3)(c).

[6] Numerous amendments to the Act came into force on June 17, 2019. Pursuant to the transitional provisions in section 70 of the Act for applications advertised before June 17, 2019, the grounds of opposition will be assessed based on the Act as it read immediately before amendment, an exception being that, with respect to the definition of confusion, sections 6(2) to (4) of the Act as it currently reads will be applied.

[7] On June 29, 2017, the Applicant filed and served a counter statement denying each of the grounds of opposition and pleading certain allegations of fact in response. There are also several documents attached to the counter statement; however, the Act does not provide for the filing of evidence in pleadings. Accordingly, any evidence in the counter statement that has not also been introduced by way of an affidavit or statutory declaration, in accordance with section 38(8) of the Act and section 49 of the Trademarks Regulations, SOR/2018-227 (the Regulations), has been disregarded.

[8] On August 2, 2017, the Opponent filed an amended statement of opposition to correct a copying error affecting the original statement of opposition. The amended statement of opposition also narrows certain allegations of fact regarding the Trade Name and corresponding domain names.

[9] The Opponent filed as evidence her own affidavit, dated November 8, 2017, (the Murray Affidavit) as well as the following nine brief affidavits (collectively the Supporting Affidavits):

• affidavit of Sylvia Dolson, Executive Director of Get Bear Smart Society, dated August 15, 2017;
• affidavit of Gail Martin, Executive Director and founder of Critter Care Wildlife Society, dated October 18, 2017;
• affidavit of Wayne McCrory, Director of Valhalla Wilderness Society, dated October 24, 2017;
• affidavit of Karen McKee, owner of Warm Buddy Company, dated October 12, 2017;
• affidavit of Christine Miller, Executive Director of the North Shore Black Bear Society, dated October 12, 2017;
• affidavit of Jill Robinson, CEO and founder of Animals Asia Foundation, dated September 13, 2017;
• affidavit of Ralph Sultan, Member of the Legislative Assembly for West Vancouver-Capilano, dated October 12, 2017;
• affidavit of Richard Walton, Mayor of North Vancouver, dated August 24, 2017; and
• affidavit of Julianne Woodyer, Campaigns Director at Zoocheck Canada, dated October 3, 2017.

[10] The Applicant filed as its evidence the affidavit of its Executive Director, Scott Ellis, dated August 29, 2018 (the Ellis Affidavit).

[11] None of the affiants was cross-examined.

[12] Both parties filed written arguments and attended an oral hearing; however, only the Applicant made submissions at the hearing. In accordance with section 38(8) of the Act and section 49 of the Regulations, to the extent that the parties’ submissions allege facts not in evidence, I have not had regard to such allegations.

Preliminary matters: Scope of proceedings and Opponent’s rights

[13] Before considering the grounds of opposition, I will address certain preliminary matters arising in this case with respect to the scope of the proceedings and the rights claimed by the Opponent.

Scope of the application

[14] On March 10, 2017, the Applicant requested to amend the statement of Goods and Services; however, by way of an office letter dated March 17, 2017, the Registrar refused the amendment pending clarification from the Applicant. As was noted at the hearing, in the absence of a response to the Registrar’s letter, the statement of Goods and Services will remain as advertised in the Trademarks Journal. To date, no response has been received. However, upon reviewing the amendment that had been requested, I wish to note that its acceptance would not change my decision in this case.

Scope of the opposition

[15] The Opponent’s written argument refers to “Bears Matter” not only as a trade name, used to identify the Opponent’s business, but also as a trademark, used in association with goods and services provided by the Opponent. The written argument also contains allegations that the Mark is unregistrable and not distinctive of the Goods and Services. However, the statement of opposition does not claim the Opponent’s use or registration of “Bears Matter” as a trademark or in association with goods or services; nor does it refer to the Mark’s registrability under section 38(2)(b) of the Act or to a lack of distinctiveness under section 38(2)(d).

[16] The Registrar has no jurisdiction to deal with a ground not found in the statement of opposition. Where an opponent has pleaded that the application fails to comply with a section of the Act based on a particular set of circumstances, it is not permissible to refuse it on the basis that it does not comply with the Act for reasons different than those pleaded [see Massif Inc v Station Touristique Massif du Sud (1993) Inc, 2011 FC 118; and Procter & Gamble Inc v Colgate-Palmolive Canada Inc, 2010 FC 231].

[17] Although the evidence includes instances of use of the phrase “Bears Matter” that qualify as use of a trademark and trade name simultaneously, this is not a case where the evidence would clarify a broad or ambiguous pleading. The scope and meaning of the Opponent’s pleadings are clear on their face: the claim is to prior use of a confusing trade name, in association with a business, and the grounds of opposition are limited to those under sections 38(2)(a) and 38(2)(c) of the Act. If, after the statement of opposition was filed, the Opponent wished to add allegations based on prior use of a confusing trademark or allegations that the Applicant’s Mark is not registrable or is not distinctive, then the Opponent was required to seek and obtain leave to amend her statement of opposition.

[18] I would also note that I find “Bears Matter” to be the only trade name on which the Opponent relies. Although it is spelled “Bears Matters” in paragraph 2 of the statement of opposition, it is clear to me that this is merely a typographical error (like the misspelling of the Mark in paragraphs 11 and 12) and not an attempt to also reference a second trade name.

Scope of the evidence

[19] In his affidavit, Mr. Ellis alleges that several of the affiants giving evidence in the Supporting Affidavits display “animus and bias” against the Applicant or “significant bias against hunting” (paras 24, 25, 28). He further alleges that a majority of the affiants are “persons with a long-term association with Ms. Murray who share a common goal and with a common agenda” and that they all “seem unaware” of the status of the Opponent’s business, such that their evidence should be “viewed critically and given little weight” (para 29).

[20] However, it was open to the Applicant to cross-examine the Opponent’s affiants to address any concerns regarding their motives or credibility; the Applicant chose not to do so. In the circumstances, I am not prepared to give the factual evidence in the Supporting Affidavits reduced weight on the basis of the Applicant’s allegations. Evidence from customers, business associates, and the like is generally admissible as concerns their own familiarity with a trademark or trade name, although it is not necessarily representative of the general public’s perceptions and therefore not probative in that regard [see CIBC World Markets Inc v Stenner Financial Services Ltd, 2010 FC 397; and Joseph E Seagram & Sons Ltd v Canada (Registrar of Trade Marks) (1990), 33 CPR (3d) 454 (FCTD)].

[21] That being said, as none of the affiants in this case has been established as an expert in trademark law or in human behaviour, I have disregarded any assertions that are equivalent to an opinion or conclusion on the questions of fact and law to be decided in this proceeding, including the extent to which the Trade Name had become known and the likelihood of confusion.

[22] Furthermore, to the extent that the affidavit of Jill Robinson concerns use and promotion of the Trade Name outside Canada, it is not of assistance.

[23] I have reviewed all the evidence on file; however, only those portions of the evidence that are directly relevant to my findings are discussed in my decision.

Whether the Opponent is a person that carries on business and can claim rights in a trade name under the Act

[24] The Opponent identifies herself in her affidavit as the “Founder and Director of the non-profit business Bears Matter” and states that this business has been “continuously operating”, originally as a sole proprietorship, then through the corporation Bears Matter Holdings Ltd., and then again as a sole proprietorship (paras 12, 36, 54). She explains that the business was originally called “Bear Matters B.C.”, but then started to use “Bears Matter” as a trade name, at first interchangeably with “Bear Matters” and then exclusively (paras 2, 22). The Opponent is located and operates in British Columbia.

[25] As described in the Murray Affidavit, the Opponent’s business was founded to “meet a need for more bear conservation, fundraising, advocacy and education ” (para 2). It provides information in the field of bear conservation to other organizations, government decision makers, the media, and the general public; it also conducts fundraising and assists other conservation organizations with event coordination and publicity. With respect to fundraising, the Opponent has also partnered with a third party, Warm Buddy Company, for the development and sale of co-branded teddy bears containing hot/cold packs, and of bear paw style mittens, with a portion of the proceeds going to organizations in the field of bear conservation (Murray paras 22, 3940, Exhibits A15, A27, A30; McKee paras 2, 5).

[26] The Applicant submits that the Opponent cannot own a trade name, because the Opponent does not carry on a “business”, in the sense that she does not provide goods or services but rather is merely a “concerned individual who seeks to influence Government Policy” (written argument, paras 6, 89). In the Applicant’s submission, the Opponent “abandon[ed] any semblance of being a business carrying out any of those activities [providing goods or services manufactured, sold, leased, hired or performed] as a result of the voluntary dissolution of her limited company in British Columbia on April 7, 2016” (para 6). The Applicant submits that, “any time after that date the Opponent simply became a concerned citizen and [no] longer fit the definition of either ‘trade-mark’ or ‘trade-name’ in the definition section of the Act ” (para 8). For similar reasons, the Applicant submits that the Opponent does not fit the definition of a “person” under the Act (para 6).

[27] I would first note that the material date to assess the grounds of opposition in this case is November 14, 2014, which predates the dissolution of Bears Matter Holdings Ltd. However, the Applicant’s submissions are still relevant to the extent that they also apply to the Opponent’s activities as a sole proprietorship before that date and to the issue of abandonment under the entitlement ground, discussed below.

[28] Section 2 of the Act defines a trade name as “the name under which any business is carried on, whether or not it is the name of a corporation, a partnership or an individual”, and defines “person” as including “any lawful association engaged in trade or business or the promotion thereof”. However, the Federal Court has held that the definition of the word “business” as it is used in the Act should not be given an overly narrow interpretation, and does not require business activities to be aimed at financial gain (see Carbon Trust Inc v Pacific Carbon Trust, 2013 FC 946 at para 3639). The Federal Court has also recognized the Registrar’s adoption of “a broader definition of ‘business’ as one which ‘could encompass any purposeful activity which might well … be charitable or educational in purpose’ ” (ibid. at para 40, citing Harvard Club of Montreal v Vêtements Howick Apparel Ltd./Ltée (1986), 8 CPR (3d) 493 (TMOB) at para 6). I find that the Opponent’s activities meet this definition.

[29] I am also satisfied that the Opponent’s business is associated with goods and services, through its sale of teddy bears and mittens, through the provision of bear conservation information services, and through the service of assisting others with organization and publicity of events and campaigns.

[30] As for the definition of “person”, although it specifically includes lawful associations, individuals are not excluded.

[31] In view of the foregoing, for the purposes of this proceeding, I am satisfied that the Opponent is a “person” who carries on business and can have rights in a trade name within the definitions of the Act.

Effect of failure to register a trade name or business

[32] The Applicant also submits that there is no evidence of the Opponent having registered the Trade Name or the associated business and that the Opponent cannot have rights in an unregistered trade name. However, there is no evidence before me of a requirement to register a trade name or non-profit business in British Columbia and, in any event, questions of compliance with provincial laws, including legislation governing the use of business names, are outside the Registrar’s jurisdiction. Accordingly, there is no basis for me to deny the Opponent the ability to rely on an unregistered trade name for the purposes of this opposition (for similar conclusions, see 2076631 Ontario Limited (Shoe Club) v 2169-5762 Quebec Inc, 2011 TMOB 92 at para 130; and Wood v Cherish Arts International Inc, 2009 CarswellNat 3272 (TMOB) at para 37).

Use of the Trade Name by Bears Matter Holdings Ltd.

[33] The Applicant also takes the position that any rights in the Trade Name were abandoned upon dissolution of the corporation Bears Matter Holdings Ltd. (written argument paras 2223).

[34] The Opponent responds that use of the Trade Name within Bears Matter Holdings Ltd.’s corporate name was with her “consent and license”, such that the Trade Name has been used continuously—by the Opponent directly from 2006, by her company with her consent from 2010 to 2016, and by herself again from the company’s dissolution in 2016 (written argument paras 11, 13).

[35] The Murray Affidavit contains the Opponent’s evidence with respect to the involvement of the corporation in the business. She states that “Bears Matter became Bears Matter Holding[s] Ltd. for seven [sic] years starting on April 7, 2010” (para 36). She explains, “I took the opportunity to change the name (and activity) of our family’s BC incorporated company in 2010 to Bears Matter Holding[s] Ltd. I felt having an incorporated business was prudent since I was committing more time and effort to my fundraising efforts in the shopping mall in Nanaimo” (para 36). As the first page of Exhibit A27 to her affidavit, she attaches the Certificate of Name Change from the BC Registrar of Companies.

[36] She further states, “In 2016, after ten years of fundraising for bear organizations, I suspended my fundraising activities. To lessen my operating costs of my non-profit business, Bears Matter, I voluntarily dissolved Bears Matter’s incorporation status and returned back to operating a ‘sole proprietorship’ ” (para 36). She explains, “I opted for voluntary dissolution of the incorporation of Bears Matter Holding[s] Ltd. on April 07, 2016 as I was taking my organization in a different direction and did not feel it necessary to maintain a costly incorporation status. I felt confident then, and feel confident at this present time that operating as a sole proprietorship is both effective and efficient” (para 54). As Exhibit A43 to her affidavit, she attaches the first two pages of a BC Registry Services company summary for Bears Matter Holdings Ltd., which appears to have been copied from the full document attached to the Applicant’s counter statement (stamped “Attachment #1”). I am prepared to accept these pages, on which both parties seek to rely, as confirmation that Bears Matter Holdings Ltd. was voluntarily dissolved on April 7, 2016, and note that they also identify the Opponent as a director of the corporation, along with Patrick John Murray (who appears to be her husband, per the McCrory Affidavit at para 3).

[37] The Opponent’s written argument contains allegations of fact regarding the effect of dissolution under B.C. legislation; however, they are unsupported and must be disregarded. The Registrar’s expertise does not extend to provincial legislation, whose effects must be established by evidence.

[38] On balance, although the evidence could have been clearer on the distinction and relationship between the Opponent and the corporation, I find the evidence consistent with “Bears Matter” being used by Bears Matter Holdings Ltd. in its corporate name and as a trade name under licence from the Opponent, who controlled the character and quality of any goods or services associated with the business carried on under the names “Bears Matter” and “Bears Matter Holdings Ltd.”

[39] In this respect, the Opponent’s evidence is that she personally changed the name and activity of the family company and, although Patrick John Murray is also listed as a director, there is no indication that he played an active role in running the Bears Matter business. She describes the fundraising from 2010 to 2016 as “my” fundraising activities and the business operating at the time as “my” non-profit business and “my” organization. Her public statements also imply that she was continuously running the same business, first in her personal capacity and then through a company whose activities she controlled. For example, in an April 15, 2014 e-mail to her Member of Legislative Assembly (MLA), she stated, “My fundraiser is run thru my company, (with a staff of one.. me) Bears Matter Ltd.,’ has raised over $60,000 since 2004” (Murray para 50, Exhibit A39, emphasis added).

[40] I would also note that the Supporting Affidavits do not draw a distinction between the business operated in association with the Trade Name by the Opponent personally and that operated through the corporation. This is consistent with the Opponent operating a single “Bears Matter” business, at times through a corporation, and controlling the character and quality of the goods and services provided through that corporation.

[41] I am satisfied that this arrangement meets the requirements of section 50 of the Act, whereby licensed use of a trademark as or in a trade name is deemed to have the same effect as such a use by the licensor. Accordingly, for the purposes of this proceeding, any use of Bears Matter as a trade name by Bears Matter Holdings Ltd. benefits the Opponent in the same way as it would if she had so used it as a trade name directly.

Evidential burden and legal onus

[42] I will now address the three grounds of opposition.

[43] In opposition proceedings, the legal onus is on the applicant to show that its application complies with the provisions of the Act. However, for each ground of opposition, 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 that ground of opposition exist. For a ground of opposition to be considered at all, the opponent must meet its evidential burden [Joseph E Seagram & Sons Ltd v Seagram Real Estate Ltd (1984), 3 CPR (3d) 325 (TMOB)].

[44] If this initial burden is met, then the applicant must satisfy the Registrar, on a balance of probabilities, that the ground of opposition pleaded should not prevent the registration of the mark at issue. The legal onus being on the applicant means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant [John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD)].

Ground of opposition based on section 38(2)(c) of the Act

[45] The Opponent pleads that the Applicant is not the person entitled to registration under section 38(2)(c) of the Act because the Mark is confusing with the trade name Bears Matter, previously used by the Opponent, as a sole proprietorship, in operating and carrying out a “bear conservation advocacy business” to “conserve, protect and enhance the lives, environment and well being of bears” (paras 2, 3, 7, 8). More particularly, the Opponent pleads that the public would assume “from the longstanding use of the phrase by the Opponent that, in some manner, the Applicant … was associated with conservation” and had “somehow taken over, absorbed or otherwise appropriated the Opponent’s advocacy business” (paras 910).

[46] The Applicant submits in its written argument that the Opponent has not set out her grounds of opposition in sufficient detail that would enable the Applicant to reply. However, it is clear that the above allegations amount to a non-entitlement ground of opposition based on confusion with a previously used trade name under section 16(3)(c) of the Act. Furthermore, the Opponent has specified the alleged trade name used and the nature of the business associated with it. The ground is therefore sufficiently pleaded.

[47] I note that, under the heading “S. 38(2)(c)” in the statement of opposition, the Opponent also pleads that the Applicant knew or ought to have known that the public would associate the Mark with the Opponent’s efforts towards conservation and enhancement of the bear population (para 8); that the Applicant deliberately filed the Application in an attempt to wrongfully convey to the public that there was a connection between the Applicant and the Opponent and that the latter was no longer an advocate against the Applicant’s business operations. (paras 4, 5, 11); and that the public would assume that the Opponent’s long-standing opposition to the Applicant’s commercial business had been thwarted (para 10). However, such allegations are more properly raised under the ground of opposition based on section 30(i) of the Act, discussed below.

The Opponent’s initial burden

[48] To meet its initial burden under the entitlement ground of opposition, the Opponent must evidence use of Bears Matter as a trade name prior to the Application’s filing date, in accordance with section 16(3)(c) of the Act, and that this trade name had not been abandoned at the date of advertisement of the Application, as stipulated in section 16(5) of the Act.

Prior use

[49] An opponent relying on prior use of a trade name must demonstrate its use in the normal course of a functioning business and in relation to the class or classes of persons with whom such business is to be conducted [see Mr Goodwrench Inc v General Motors Corp (1994), 55 CPR (3d) 508 (FCTD)]. Although there is no specific definition of “use” in the Act pertaining to trade names, the principles in sections 2 and 4 of the Act regarding trademark use have been held to apply, such that display of a trade name in the performance or advertising of services available in Canada will suffice to show use of the trade name in the course of business [see Carbon Trust, supra, at para 68].

[50] I note that some of the Opponent’s evidence regarding use and promotion of the Trade Name relates to events outside Canada, while other evidence regarding her activities features different trade names or none at all. Furthermore, some of the documentary evidence is undated or is in draft form, and some of the documents are unclear as to their source or manner of distribution. The relevant evidence is that which shows “Bears Matter” displayed as a trade name on materials the Opponent distributed or otherwise presented in Canada in the course of business prior to the material date of November 4, 2014.

[51] I would also note that I do not consider use of the trade name Bear Matters or Bear Matters B.C. to be use of the Trade Name, Bears Matter. Although similar to the Trade Name visually and phonetically, the expression “Bear Matters” differs conceptually. It does not convey the idea that bears are important but instead simply suggests topics or issues relating to bears. However, I do consider use of the trade names “Bears Matter BC”, “Bears Matter B.C.” and “Bears Matter Ltd.” to be use of the Trade Name, since the addition of “BC”, “B.C.” or “Ltd.” is a minor deviation that merely indicates the location of the business or the fact of incorporation.

[52] I find that the following examples from the Murray Affidavit show use of the Trade Name prior to the Application’s filing date:

• The Bears Matter hang tag attached to teddy bears sold in 2006, referencing the Opponent’s partnership with Warm Buddy Company and featuring household tips on how to coexist peacefully with bears (Exhibit A15 p. 66). The Opponent ran a booth selling such teddy bears and bear paw mitts in retail settings in Vancouver and then Nanaimo as an annual fundraiser from 2006 to 2015 (paras 22, 39–40, Exhibits A15, A27, A30).
• The slideshow the Opponent presented on October 22, 2009 at a public meeting of the Council for the Corporation of the District of North Vancouver regarding a proposed bear rehabilitation facility (para 33, Exhibit A24). In addition to the Trade Name being used in the text of certain slides, a logo consisting of the Trade Name under a paw print design (the Original Logo) is displayed on slides promoting the Opponent’s fundraiser for B.C. wildlife rehabilitation centres and providing information on four such centres.
• The business card printed in 2009 and the postcard featuring information on a threatened subspecies of bear printed in “approximately 2009”; a thousand postcards were given out along with the business cards at Bears Matter displays and booths in connection with the Opponent’s fundraiser (para 40, Exhibit A30 pp. 137–138). On both cards, the Trade Name appears not only in text but also as a logo consisting of the Trade Name in stylized lettering under a line drawing of a bear with mountains and trees (the New Logo).

[53] At the hearing, the Applicant drew attention to portions of the Ellis Affidavit commenting on statements made in the Murray Affidavit. Specifically, Mr. Ellis notes the Opponent’s involvement in other bear advocacy organizations (Murray paras 35) as well as her adoption of the trade name Bear Matters and he comments, “Ms. Murray has not been consistent over the years of her advocacy in using the ‘Bears Matter’ name to identify herself nor her endeavours” (Ellis para 13). In addition, Mr. Ellis notes the Opponent’s statement that she “adopted” the New Logo from the Northshore Spring Bear Festival Society after that society was dissolved (Murray para 34) and he comments, “Ms. Murray felt it appropriate and justified to ‘adopt’ a logo after the dissolution of a society” (Ellis para 14). In this last respect, I note that the New Logo features the same line drawing and lettering style as the logo of the Northshore Spring Bear Festival that ran from 2006 to 2008 and of which Ms. Murray was a director (Murray para 34, Exhibit A25).

[54] However, it is well established that multiple trademarks or trade names may be used at the same time if they are perceived as separate trademarks or trade names [see AW Allen Ltd v Warner-Lambert Canada Inc (1985), 6 CPR (3d) 270 (FCTD); Loro Piana SPA v Canadian Council of Professional Engineers (CCPE), 2009 FC 1096]. As long as they are not combined in a way that renders the individual marks or names indistinguishable, their validity is not affected [see Philip Morris Products SA v Marlboro Canada Ltd., 2010 FC 1099 at para 217].

[55] In the present case, I do not find that the Opponent’s involvement with other organizations or her use of other trade names prior to or concurrently with the Trade Name detracts from her use of the Trade Name. Likewise, although there is no explanation as to how the design elements used in the New Logo were “taken” from the Northshore Spring Bear Festival (Murray para 34), there is no indication that their use is unlawful, and I do not find that they negate the use of the Trade Name within the logo. In my view, the Trade Name, the line drawing design, and the composite logo are each separately identifiable and the Trade Name retains an identity that is distinguishable from the whole. Although the design elements may suggest a connection between the Opponent’s business and the Northshore Spring Bear Festival, the Trade Name continues to identify the Opponent. The fact that the name also forms part of a composite trademark or logo does not constitute a bar to it simultaneously being recognized as a trade name [see CEG License Inc v Joey Tomato’s (Canada) Inc, 2011 TMOB 221; see also Consumers Distributing Company Limited v Toy World Limited, 1990 CarswellNat 1398 (TMOB); and Road Runner Trailer Manufacturing Ltd v Road Runner Trailer Co. (1984), 1 CPR (3d) 443 (FCTD) which discuss how trademark and trade name usages are not necessarily mutually exclusive].

Non-abandonment

[56] Abandonment requires both an absence of use and an intention to abandon use [Labatt Brewing Co v Formosa Spring Brewery Ltd (1992), 42 CPR (3d) 481 (FCTD); Marineland Inc v Marine Wonderland and Animal Park Ltd (1974), 16 CPR (2d) 97 (FCTD)].

[57] I find the following evidence from the Murray Affidavit sufficient to show that the Trade Name had not been abandoned at the date of advertisement of the Application:

• Although the Bears Matter annual fundraiser was discontinued in 2015, the Opponent posted a Letter to Readers on her website at bearsmatter.com on February 28, 2016, announcing that, “Bears Matter will continue to support bears behind the scenes and help with various campaigns and fundraising goals of individual grassroots organizations”; the Letter urged readers to continue purchasing the fundraising teddy bears and mitts at B.C. wildlife centres (Exhibit A27 p. 116).
• The Opponent confirms that, at the date of her affidavit, Warm Buddy Company “remains the main sponsor of Bears Matter and continues to contribute funds annually to our Bears Matter Fund” (para 39).
• The Opponent confirms that, since closing “the corporate fundraising aspect of the business”, she has continued to make annual donations to eight bear organizations “in the name of Bears Matter” (para 41).

[58] The Supporting Affidavit of Karen McKee, owner of Warm Buddy Company, corroborates the evidence in the Murray Affidavit. In particular, Ms. McKee states, “From 2006 to present day Warm Buddy Company continues to sponsor Bears Matter and help various grass roots bear organizations” (para 3).

[59] The foregoing evidence demonstrates that there was no intention to abandon use of the Trade Name at the time the annual fundraiser was closed and the Opponent’s corporation was dissolved but merely an intention to decrease the level of fundraising. There is also no indication that the Opponent’s intentions changed between that time and the advertisement of the Application. Indeed, there is evidence of the Trade Name being displayed shortly thereafter, in a Facebook post promoting the Spectacled Bear Conservation Society Craft Sale held “with Bears Matter” in Nanaimo from November 17, 2016 to November 20, 2016 (Exhibit A37 p. 241).

[60] The present case is distinguishable from the case in Abirahim Ali-Rage v Muqdisho Football Club, 2018 TMOB 69, cited by the Applicant. In that case, the evidence failed to establish that the opponent was the rightful owner of the contested trade name or that the opponent had ever used that trade name for its own benefit rather than for the benefit of the applicant club. In the present case, I am satisfied that it is the Opponent who acquired rights in the phrase “Bears Matter” through its use as a mark and trade name, which she then licensed to her family’s corporation upon changing its name to Bears Matter Holdings Inc. I am also satisfied that the Opponent retained ongoing control over the business conducted through this corporation before it was dissolved and she returned to operating as a “sole proprietorship”. Thus the corporation’s use of “Bears Matter” as or in a trade name enured to the Opponent’s benefit.

[61] In view of the foregoing, I am satisfied that the Opponent has shown use of the Trade Name prior to the material date and that the Trade Name had not been abandoned when the Application was advertised on October 12, 2016.

The test for confusion

[62] The Opponent having met her initial burden, the onus is on the Applicant to establish, on a balance of probabilities, that the Mark is not likely to cause confusion with the Trade Name.

[63] The relevant test for confusion in this case is outlined in section 6(3) of the Act, which stipulates that the use of a trademark causes confusion with a trade name if the use of both in the same area would be likely to lead to the inference that the goods or services associated with the trademark and those associated with the business carried on under the trade name are manufactured, sold, leased, hired or performed by the same person. Also, where it is likely the public will assume the applicant’s goods or services are approved, licensed, or sponsored by the opponent, so that a state of doubt and uncertainty exists in the minds of the purchasing public, it follows that the trademark and trade name are confusing [see Glen-Warren Productions Ltd v Gertex Hosiery Ltd (1990), 29 CPR (3d) 7 (FCTD)].

[64] The test is to be applied as a matter of first impression in the mind of a casual consumer somewhat in a hurry, who sees the applicant’s mark at a time when he or she has no more than an imperfect recollection of the opponent’s trade name and does not pause to give the matter any detailed consideration or scrutiny [see Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 at para 20].

[65] Regard must be had to all the surrounding circumstances, including those set out in section 6(5) of the Act: (a) the inherent distinctiveness of the trademark and trade name and the extent to which they have become known; (b) the length of time the trademark and trade name have been in use; (c) the nature of the goods, services and business; (d) the nature of the trade; and (e) the degree of resemblance between the trademark and trade name in appearance or sound or in the ideas suggested by them. These criteria are not exhaustive and it is not necessary to give each of them equal weight [see Veuve Clicquot, supra; Mattel USA Inc v 3894207 Canada Inc, 2006 SCC 22; Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27].

Degree of resemblance

[66] As indicated by the Supreme Court of Canada in Masterpiece, the most significant factor in assessing the likelihood of confusion is often the degree of resemblance between the trademarks or trade names at issue. In the present case, the Mark and Trade Name are identical and, accordingly, this factor favours the Opponent.

Inherent distinctiveness and extent known

[67] The Mark and Trade Name are identical and each suggests an aspect of the associated goods, services and business, namely, that of promoting the importance of bears. In this respect, I note that Mr. Ellis states the Mark would promote the conservation of bears “through a recognition of their inherent value and worth as a species from all standpoints” (Ellis para 10) while the Opponent notes that her business has used the slogan “Bears Matter” in its mission statement since 2006 (Murray para 2).

[68] Being identical and equally suggestive, the Mark and Trade Name have a similarly limited degree of inherent distinctiveness. However, distinctiveness can be enhanced through use and promotion in Canada, and only the Opponent filed evidence in this respect. I note the following examples from the Murray Affidavit:

• The Bears Matter hang tag, business card, and postcard discussed above, as well as the slideshow promoting Bears Matter’s fundraiser and advocacy in the field of bear rehabilitation, also discussed above.

• The full-page advertisement published in the Vancouver Sun on February 16, 2010, for a campaign the Opponent worked on with Pacific Wild to ban trophy hunting in B.C.’s Great Bear Rainforest, displaying the Original Logo among those of other sponsors (para 37, Exhibit A28).
• Signage at the 2010 and 2011 fundraising booths in Country Club Centre in Nanaimo, displaying the Trade Name and New Logo, respectively (Exhibit A27 pp. 113–114).
• The “Certificate of Guardianship” displaying the New Logo distributed over the years in recognition of support during the annul fundraiser; one version of the certificate is shown at the 2010 fundraising booth (para 40, Exhibit A27 p. 113, Exhibit A30 p. 151).
• Facebook posts for the “Bears Matter Xmas’13 Fundraiser & Sale” (Exhibit A30 p. 144) and for various events that the Opponent helped coordinate for others as “an ongoing service to conservation organizations”, including a 2011 raffle, a 2012 media presentation, a 2013 craft sale, and four 2013 live shows featuring speakers on bear topics—the posts indicate that the events are “Hosted by Bears Matter” and some also display the New Logo (para 48, Exhibit A37 pp. 221240).
• The media advisory for a January 20, 2014, rally against trophy hunting hosted by the Opponent at Capilano University and the attached petition with 82 public signatories, wherein the media contact and the source of the petition respectively are identified as “Bears Matter” (para 44, Exhibit A33 p. 209–211).

[69] In addition, the Trade Name was promoted through the partnership with Warm Buddy Company. Karen McKee, the owner of Warm Buddy Company, states in her affidavit that, “we advertised [the] Bears Matter website on our website in 2007 under our page Partners…” (para 2). She adds that in 2007 Warm Buddy Company also branded several items of clothing with the Original Logo for the Opponent and confirms that “[o]ver the years” Warm Buddy Company has had “thousands of full color tags printed to hang on our stuffed bear products and bear paw mitts describing our sponsorship of Bears Matter” as well as printing postcards describing the partnership to give out at “various tradeshows across Canada” and at vendors’ places of business (para 5).

[70] I also accept statements in some of the Supporting Affidavits from politicians and members of Canadian conservation organizations as confirmation that at least those individuals became familiar with the Trade Name and its use prior to the material date. By way of example, I note the following:

• “I have verified my records from the grizzly bear rehabilitation campaign and verified that from the time I met Ms. Murray in 2006, she has operated under the name Bears Matter” (Woodyer para 3).
• “By 2009 she [Ms. Murray] had a website and Facebook and Twitter accounts called Bears Matter” (Miller para 3).
• “In 2009, Barb Murray came back to the District of North Vancouver to make a presentation under her new organization[’]s name Bears Matter” (Walton para 3).
• “Since 2009 I have noticed that from time to time Bears Matter is referenced in local media. In 2014 Bears Matter hosted a rally at Capilano University to protest the Grizzly Bear Hunt in B.C. The rally was mentioned in the local paper and also mentioned on at least one radio station” (Walton para 5).

[71] In view of the foregoing, I am satisfied that, at the material date, the Trade Name had become known to at least some extent in British Columbia in association with the Opponent’s business, first run by the Opponent in her personal capacity and then through her corporation.

[72] Overall, while the Mark and the Trade Name have an approximately equal degree of inherent distinctiveness, there is evidence that the Trade Name has become known to at least some extent in British Columbia, whereas there is no evidence that the Mark has become known in Canada at all. Accordingly, this factor the Opponent.

Length of use

[73] The evidence shows that the Opponent has used Bears Matter as a trade name since at least as early as 2006, whereas there is no evidence that the Applicant has commenced use of the Mark in Canada. Again, this factor favours the Opponent.

Nature of the goods, services or business and nature of the trade

[74] I find there to be considerable overlap in the nature of the parties’ respective goods, services and businesses.

[75] Services (2) and (3) in the Application specifically include the following: (i) providing websites with information for the general public in the field of hunting and environmentalism; and (ii) promoting public awareness of environmental issues and initiatives through classes, seminars, retreats, conferences, and training sessions in the field of hunting and environmentalism.

[76] These Services directly overlap with the following services provided in the normal course of the Opponent’s business: (i) providing a website with information for the general public on conservation, including the impact of hunting thereon, and (ii) promoting public awareness of environmental issues and initiatives, including with respect to hunting, through campaigns, presentations, and coordination of live shows with speakers.

[77] In this respect, I note that the Services are not restricted to providing information on hunting or environmentalism from any particular perspective. Thus the Services are broad enough to cover information on the same aspects of hunting and conservation as are addressed by the Opponent’s services. Indeed, in his affidavit, Mr. Ellis identifies the Applicant as a non-profit society in British Columbia representing the interests of both sportspersons and conservationists that has published various documents and hosted and participated in various forums and symposiums in the field of science-based conservation (para 2, 6, 7). He explains that the Applicant’s model for conservation of species allows for “the ethical use and harvest of abundance of those species” and that the Mark would “promote the conservation, rather than preservation, of bears … considering all connotations of the words ‘conserve’ and ‘conservation’ ” (paras 5, 10).

[78] I find that the remaining Services are sufficiently related to the Opponent’s business to create an apparent nexus and potential for overlap. I note the following examples:

• The Services include providing information and promoting public awareness in the field of wilderness survival; the Opponent’s hang tags provide information on how to “peacefully co-exist with our wildlife” as “human activities expand into wilderness habitats” (Exhibit A15 at p. 66).

• The Services include film and video production to provide information in the field of hunting; the Opponent’s Bears Matter Fundraisers have included a CD slide presentation to provide information in the field of bear conservation (Exhibit A30 pp. 178200).

• The Services include providing marketing strategies for guide outfitters and other hunter related organizations; the Opponent’s business involves assisting other organizations publicize events, petitions and campaigns (see para 48, Exhibit A37).

[79] With respect to the Goods, they fall into four general categories: (1) apparel; (2) promotional items such as bags, stickers, greeting cards, coffee mugs, etc; (3) printed education, instructional and teaching materials, such as books, newsletters and pamphlets; and (4) stationary, including labels and business cards.

[80] These four categories overlap with those of the Opponent’s business, as the Opponent’s business is associated with (1) the sale of apparel (mitts) for fundraising (Exhibit A24, A27); (2) the handing out of promotional items such as postcards (Exhibit A30); (3) the provision of educational and instruction material, including both printed materials (Exhibit A30 pp. 175-177) and printable blogs (Exhibit A61); and (4) the use of branded stationary such as business cards and hang tags (Exhibits A15, A30).

[81] I would also note that the Opponent has had apparel branded with the Original Logo to wear at functions since 2007 (Murray Exhibit A15; McKee para 5) and has distributed business cards printed with the New Logo since 2009 (Murray para 40, Exhibit A30). As the Application has no restrictions on the channels of trade, Goods such as apparel or business cards may be purchased by the Applicant’s members for use in a similar manner.

[82] In the circumstances, I find that the various Goods and Services may be perceived as an extension of or complement to the Opponent’s goods and services.

[83] Moreover, both the Applicant and the Opponent are non-profit businesses (Ellis para 2; Murray para 2), whose target audience includes individuals interested in hunting (be it pro or against) and wildlife conservation, as well as government officials and the general public. Thus there is overlap in the likely channels of trade for the parties’ goods and services, which further contributes to the likelihood of confusion.

[84] In summary, for the reasons discussed above, I find that there is either direct overlap, a relationship creating a potential for overlap, or an apparent nexus between each of the Goods and Services on the one hand and the goods and services associated with the Opponent’s business on the other hand, and I also find there to be overlap in the likely channels of trade. Accordingly, these factors also favour the Opponent.

Conclusion with respect to likelihood of confusion

[85] Having considered all the surrounding circumstances, I find it reasonable to conclude that a casual consumer of the Goods and Services having only an imperfect recollection of the Trade Name would be likely to infer, as a matter of first impression upon seeing the Mark, that the Goods and Services are from the same source as the Opponent’s conservation business or have been approved, licensed or sponsored by the Opponent. I come to this conclusion particularly in view of the fact that the Mark and Trade Name are identical and that there is considerable overlap in the nature of the goods, services, businesses, and trades, bearing in mind also that the Trade Name has acquired at least some distinctiveness through use in the B.C. area.

[86] Accordingly, I find that the Applicant has not met its legal onus to show, on a balance of probabilities, that there is no reasonable likelihood of confusion. The ground of opposition based on entitlement to registration under section 16(3) of the Act is therefore successful.

Ground of opposition based on sections 38(2)(a) and 30(e) of the Act

[87] The Opponent pleads that the Application does not comply with section 30(e) of the Act because the Applicant did not intend to use the Mark but rather filed the Application “as a means of forestalling any other person from making a subsequent application” and “to prevent the use by another party” (paras 16, 17). In this respect, the Opponent alleges that registration of the Mark would “force the Opponent to abandon her long-term use of the phrase” and cause her to “suffer loss, damage, and expense as a result” (paras 16, 17). The Opponent also alleges that the Applicant has been carrying on business for “a considerable number of years” without ever having used the Mark as a trade name (para 17).

[88] Again, I note that a portion of the allegations—in particular that with respect to damages—may also apply to the ground of opposition based on section 30(i) of the Act, which will be discussed in the next section.

[89] Section 30(e) of the Act requires an applicant for a proposed trademark to state that, by itself and/or through a licensee, it intends to use the proposed trademark in Canada. Since the Application contains such a statement and, as such, complies formally with section 30(e), the issue is whether the Application also complies substantively, i.e. whether the Applicant’s statement is true. The material date for assessing this ground of opposition is the application’s filing date [Canadian National Railway Co v Schwauss (1991), 35 CPR (3d) 90 (TMOB)].

[90] Given that the facts supporting an applicant’s intentions are particularly within the knowledge of the applicant, the evidential burden on an opponent with respect to a section 30(e) ground of opposition is a relatively light one [Molson Canada v Anheuser-Busch Inc (2003), 2003 FC 1287]. Even so, I am not satisfied that the Opponent has met her evidential burden in the present case.

[91] First, there is no requirement on an applicant to show use of its trademark before its application has been allowed and no requirement that the Applicant have first used its trademark as a trade name. Therefore, the fact that the Applicant may not have used the Mark as a trade name in the past is not relevant.

[92] Second, the fact that the Applicant may have wanted to stop others from registering or using the Mark does not preclude the Applicant from also having a bona fide intention to use the Mark itself. Indeed, in the present case, there is evidence that the Applicant has already used the somewhat similar trademark CONSERVATION MATTERS, as the title of a paper on “specific species and conservation issues” resulting from the Applicant’s symposiums (Ellis para 7) and promoted in connection with a grizzly bear conservation campaign on the Applicant’s website (Murray Exhibit A71).

[93] Since the Opponent did not provide or point to any evidence in support of her contention that the Applicant did not intend to use the Mark, the Opponent has not met her evidential burden. Accordingly, the ground of opposition based on noncompliance with section 30(e) of the Act is rejected.

Ground of opposition based on sections 38(2)(a) and 30(i) of the Act

[94] Finally, the Opponent pleads that the Application does not conform to the requirements of section 30 of the Act, as required by section 38(2)(a) of the Act, because, when the Application was filed, the Applicant knew or ought to have known that “it would be in violation of the provisions of the Act. It was not the entity that was entitled to use the phrase ‘Bears Matter’ as its trademark in association with the services described in the application” (para 12).

[95] In this respect, the Opponent further pleads that the Applicant either knew that the Opponent had used the phrase for a “lengthy period of time” in respect of her advocacy for the well-being of bears or failed to make reasonable enquiries as to the Opponent’s use (para 13).

[96] The Opponent further alleges that the Applicant’s registration of the Mark would have a “direct and significant impact on the goodwill of the ‘business’ of the Opponent’s undertaking” and would “damage the image of the Opponent’s business”; “lessen the effectiveness of the Opponent’s advocacy for the welfare of bears”; and “mislead the public into believing that the Opponent had ‘sold out’ to trophy hunters and those who support their activities in British Columbia” (para 14).

[97] These allegations amount to a ground of opposition based on non-compliance with section 30(i) of the Act, which requires an applicant to be satisfied of its entitlement to use the trademark it is applying to register. Although the heading for this ground in the statement of opposition is “S.38(2)(a) and S.30(h)”, it is clear that section 30(h) of the Act, which deals with design marks, is not applicable to the Application, which is for a word mark. I am therefore prepared to accept the reference to section 30(h) as a typographical error that does not affect the validity of the Opponent’s section 30(i) ground.

[98] As discussed in my summary of the other two grounds, they contain certain more specific allegations with respect to the Applicant’s intentions and with respect to the effect registration of the Mark would have on the Opponent. Given that there is conceptually a relationship between entitlement to registration, satisfaction of entitlement to use, and intent to use, I am prepared to accept those allegations as also implicitly applying to the present ground. However, even if I did not consider those additional allegations in interpreting the section 30(i) ground, it would not affect my ultimate decision with respect to this ground.

[99] Section 30(i) requires an applicant to state that it is satisfied it is entitled to use its trademark in Canada in association with the goods and services described in the application. Mere awareness of an allegedly confusing trademark or trade name does not preclude an applicant from being satisfied of its own entitlement to use the mark it is applying to register in association with the goods and services in its application [see Woot, Inc v WootRestaurants Inc, 2012 TMOB 197]. Accordingly, where, as here, the required statement is included in the application, an opponent may only rely on section 30(i) in exceptional cases, such as where bad faith or fraud on the part of the applicant is alleged, or where federal legislation arguably prevents registration of the mark [see Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB); and Interprovincial Lottery Corp v Western Gaming Systems Inc (2002), 25 CPR (4th) 572 (TMOB)].

[100] I would first note that, although the Opponent alleges registration of the Mark would mislead the public and damage the Opponent’s goodwill, it is not clear how or even whether the Opponent might be relying on sections 7 or 22 of the Act, regarding passing off and depreciation of goodwill, respectively. I also note that the statement of opposition does not assert trademark rights, whereas enforcement of section 22 requires a registered trademark and there is jurisprudence suggesting that resort to section 7 requires a trademark as well [see Kirkbi AG v Ritvik Holdings Inc, 2003 FCA 297, aff'd 2005 SCC 65]. I therefore find that the section 30(i) ground of opposition is limited to allegations of bad faith.

[101] In her written argument, the Opponent submits that the Applicant’s advocacy in support of trophy hunting of bears is diametrically opposite to the bear conservation and bear rehabilitation objectives of the Opponent and that there is no evidence that the Applicant filed the Application or intends to use the Mark for any bona fide purpose rather than to confuse the public and cause harm and prejudice to the Opponent (para 23).

[102] In her affidavit, the Opponent states that Bears Matter was very active in opposing the trophy hunting of grizzly bears in 2014, such that it would be hard to believe the Applicant would not know of it (para 77). She also cites the following passage from a press release issued by the Applicant on January 30, 2012 (para 84, Exhibit A72):

The anti-hunting movement has been united and well-funded, successfully appealing to the 70% in the middle with their loud emotional messaging. … If we as hunters do not relay and enhance the legacy of the hunter conservationist, someone else will formulate a vision for wildlife management.

[103] Furthermore, through the Supporting Affidavits, the Opponent furnishes evidence of a reputation and goodwill in the Trade Name that may be damaged if the Applicant were to register the Mark. In particular, Karen McKee, the owner of Warm Buddy Company, indicates that her company’s association with Bears Matter provides “value-added when purchasing our bear products”, but claims that if the Application were to be successful, “[w]e would have to rebrand our bear products and work toward easing all connections with the name ‘Bears Matter’ ”, given that Warm Buddy “promote[s] the well-being of humans and creatures, especially bears, not the pursuit of killing them, especially for trophy and sport” (para 7).

[104] On behalf of the Applicant, Mr. Ellis states in his affidavit that the Application was filed after “a thorough search to determine if there was an existing trademark for ‘Bears Matter’ or if there was a pending application to trademark ‘Bears Matter’ ” (para 4). However, I note that his affidavit is silent with respect to searches for existing B.C. business names or the like prior to filing the Application.

[105] In any event, as noted above, mere awareness of an allegedly confusing trademark or trade name does not necessarily preclude an applicant from being satisfied of its own entitlement to use the mark. The initial burden is on the opponent to adduce evidence of the applicant’s bad faith, and I do not consider a difference in the parties’ respective approaches to conservation—or even a desire to have one’s approach prevail—to be sufficient in this respect. This decision turns on prior use and the likelihood of confusion and not on the potentially antagonistic relationship between the parties.

[106] In view of the foregoing, I find that the Opponent has failed to meet her evidential burden for the ground of opposition based on noncompliance with section 30(i) of the Act, which is therefore rejected as well.

Disposition

[107] In view of all the foregoing and 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.

Oksana Osadchuk

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

 

 

 

 

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2020-08-17

APPEARANCES

No one appearing	FOR THE OPPONENT
Brenda Gibson	FOR THE APPLICANT

AGENTS OF RECORD

No agent appointed	FOR THE OPPONENT
No agent appointed	FOR THE APPLICANT