Citation: 2021 TMOB 282

Date of Decision: 2021-12-15

IN THE MATTER OF AN OPPOSITION

	Les constructions Gart Inc.	Opponent
and
	Nicole Bleach	Applicant
	1,734,516 for SUPERKIDUPER	Application

Introduction

[1] Nicole Bleach (the Applicant) has applied for registration of the trademark SUPERKIDUPER (the Mark), based on proposed use in Canada, in association with the following goods and services:

Clothing, namely handcrafted casual clothing, children’s clothing and baby clothing; toys, games and playthings, namely baby toys, bath toys, plush toys, board games and party games; headwear, namely hats, caps, toques; cups, pens, wristbands; fridge magnets, key chains; embroidered t-shirts; reusable shopping bags (the Goods)

Provision of an indoor playground for children; providing recreational areas in the nature of play areas for toddlers; operation of restaurants and food concession stands; operation of souvenir shops; drop in child-minding daycare services; summer day camp services; planning and hosting private and semiprivate children’s birthday parties (the Services)

[2] Les constructions Gart Inc. (the Opponent) has opposed the application mainly on the basis that the Mark is confusing with its trademark SUPERKIDUP & Design (the Opponent’s Registered Trademark).

[3] For the reasons that follow, the application is refused in part.

File record

[4] The application for the Mark was filed on June 25, 2015 and was advertised for opposition purposes in the Trademarks Journal on September 6, 2017.

[5] On November 6, 2017, the Opponent filed a statement of opposition under section 38 of the Trademarks Act, RSC 1985, c T-13 (the Act). All references herein are to the Act as amended on June 17, 2019, 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).

[6] The grounds of opposition alleged that the application does not conform to sections 30(e), (g) and (i) of the Act, that the Mark is not registrable under section 12(1)(d) of the Act, that the Applicant is not the person entitled to registration of the Mark under section 16(3)(a) of the Act and that the Mark is not distinctive under section 2 of the Act. The sections 30(e) and (g) as well as the section 16(3)(a) grounds of opposition were subsequently withdrawn by the Opponent in its written argument, and their withdrawal was confirmed at the hearing.

[7] The Applicant filed and served a counter statement denying all of the allegations contained in the statement of opposition.

[8] Both parties submitted evidence, which is summarized below and further discussed, where appropriate, in the analysis of the grounds of opposition. Both parties filed written arguments and were represented at the hearing.

Parties’ evidence

[9] In support of its opposition, the Opponent filed a certified copy of of its relied upon registration and the declaration of Josée Aubin, a trademark analyst employed by CompuMark, dated May 9, 2018, along with Exhibit JA‑1 (the Aubin declaration). Ms. Aubin introduces into evidence the results of a Complete Canadian Dilution Search (Recherche de Dilution Complète au Canada) that she performed for domains, for trade names and on the Canadian Trademarks Register, for a combination of the terms “SUPER KID UP” or “SUPERKIDUP”, which the Opponent argues support its contention that its relied upon trademark is inherently distinctive.

[10] In support of her application, the Applicant filed her own affidavit, dated October 17, 2018, along with Exhibits A to G (the Bleach affidavit). The Bleach affidavit includes the following information:

· Ms. Bleach asserts that, since the filing of the application, she has sold the following goods “which bore the [Mark] on the attached product label”:

clothing, namely handcrafted casual clothing, children’s clothing and baby clothing; toys, games and playthings, namely baby toys, plush toys, board games and party games; headwear, namely hats, toques; wristbands; key chains; embroidered t-shirts; reusable shopping bags.

[para 4]

· Ms. Bleach lists the annual dollar value of all such goods sold in Canada in association with the Mark for each year between 2015 and 2018, totalling approximately $1150. Ms. Bleach asserts that the price for each item varies and provides examples of the cost for a selection of goods varying between $5 and 25 dollars. [paras 6 and 11]

· Ms. Bleach asserts that her goods are sold at a display table at craft shows in Ontario (particularly in the Greater Sudbury area), and that she has attended such craft shows for the past four years. Specifically, she asserts having attended at least five craft shows in 2015 as well as one craft show each year between 2016 and 2018. Goods bearing the Mark are also being sold through the Applicant’s Facebook page since 2015 and through her website at superkiduper.com since its launch on July 28, 2018. [paras 7 to 9]

· Ms. Bleach asserts that her goods are also promoted by her sister-in-law in Saskatchewan and that some of her sales have been in that province.

 

· Ms. Bleach also provides:

- Front and back photographs of a label displaying the Mark, which she asserts is affixed to all items that she creates and sells under the Mark [Exhibits A and B];

- A photograph of a display table at the College Notre Dame in Sudbury, Ontario, on April 29, 2016, showing the Mark on the display table sign alongside the exhibited items [Exhibit C];

- A print-out of the Applicant’s Facebook page, which I note includes posts referencing the website at superkiduper.com and/or showing some items (such as teething and plush toys) with a label bearing the Mark [Exhibit D];

- Excerpts dated October 16, 2018 from the Applicant’s website at superkiduper.com offering items such as children’s clothing, keychains, teething and plush toys for sale [Exhibit E];

- A blank sample invoice displaying the words “superKIDuper Designs” in its top left corner above the Applicant’s name and contact information [Exhibit F]; and

- A print-out of the Google search results from a search for the word SUPERKIDUPER made on October 16, 2018, notably showing the Applicant’s website and some images of her products [Exhibit G].

[11] Neither Ms. Aubin nor Ms. Bleach was cross-examined.

Parties’ respective burden or onus

[12] 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 Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD)]. If this burden is met, the Applicant then bears the legal onus of establishing, on a balance of probabilities, that no grounds of opposition prevent the registration of her Mark.

Grounds summarily rejected

Section 30(i) – Statement of entitlement

[13] This ground of opposition fails because mere knowledge of the existence of an allegedly confusing trademark does not support the allegation that the Applicant could not have been satisfied of her entitlement to use the Mark. Section 30(i) of the Act requires that an applicant include a statement in its application that it is satisfied that it is entitled to use its trademark. Where this statement has been provided, a section 30(i) ground should only succeed in exceptional cases, such as where bad faith or fraud is alleged. The application for the Mark contains the required statement and there is no evidence that this is an exceptional case.

Section 2 – Non-distinctiveness

[14] This ground of opposition fails because the pleading relies on the Opponent’s own trademark and yet there is no evidence that the Opponent’s Registered Trademark had acquired any reputation in Canada, let alone one that was sufficient to negate the Mark’s distinctiveness at the date of filing of the statement of opposition [see Bojangles’ International LLC v Bojangles Café Ltd, 2006 FC 657 at paras 25‑34, which sets out the Opponent’s evidential burden].

Remaining ground of opposition

[15] The remaining ground of opposition turns on the issue of confusion between the Mark and the Opponent’s Registered Trademark (shown below), registered under No. TMA958,733 in association with “Cleansing wipes. Babies’ diapers ; babies’ diaper-pants.”

Section 12(1)(d) – Confusion with the Opponent’s Registered Trademark

[16] An opponent meets its initial evidential burden with respect to a section 12(1)(d) ground of opposition if the registration relied upon is in good standing. In this regard, the Registrar has the discretion to check the register in order to confirm the existence of the registration relied upon by an opponent [Quaker Oats of Canada Ltd/La Compagnie Quaker Oats du Canada Ltée v Menu foods Ltd (1986), 11 CPR (3d) 410 (TMOB)]. Having exercised the Registrar’s discretion, I confirm that registration No. TMA958,733 is extant as of the date of this decision.

[17] The Applicant must now 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

[18] The test to determine the issue of confusion is set out in section 6(2) of the Act, where it is stipulated that the use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would likely lead to the inference that the goods and services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods and services are of the same general class or appear in the same class of the Nice Classification. Therefore, section 6(2) of the Act does not concern confusion of the trademarks themselves, but confusion of the goods or services from one source as being from another.

[19] In making such an assessment, the Registrar must have regard to all the relevant surrounding circumstances, including those listed in section 6(5) of the Act, namely: the inherent distinctiveness of the trademarks and the extent to which the trademarks have become known; the length of time the trademarks have been in use; the nature of the goods and services or business; the nature of the trade; and the degree of resemblance between the trademarks in appearance, or sound or in the ideas suggested by them. These factors are not exhaustive and different weight will be given to each one in a context-specific assessment [Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23; Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 at para 54]. I also refer to Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27 at para 49, where the Supreme Court of Canada indicated that the resemblance between the trademarks will often have the greatest effect on the confusion analysis.

Inherent distinctiveness

[20] In my view, the parties’ trademarks possess a similar degree of inherent distinctiveness. Both the Opponent’s trademark and the Applicant’s Mark are made up of coined words (namely, SUPERKIDUP and SUPERKIDUPER). In each case, however, the coined word is composed primarily of the common dictionary words “super” and “kid”, which are somewhat emphasized in the Opponent’s trademark due to the capitalization of the first letter in each of these words and the superscripted suffix. Both in English and in French, the word “super” is laudatory and the word “kid” is descriptive in the context of children’s goods and services (for example, as per the definitions of these terms set out in the Collins and Larousse online dictionaries). The stylization and design in the Opponent’s trademark to some extent contribute to its inherent distinctiveness as a whole, although really not in a significant way. Specifically, the star design features it contains can in my view impart somewhat of a laudatory connotation in relation to child-related goods and services.

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

Extent known and length of time in use

[22] The Applicant’s evidence of use of the Mark provided in the Bleach affidavit is nominal at best. The Opponent has not filed any evidence of use and, while its relied-upon registration includes a claim of use since at least as early as September 10, 2014, I can only infer de minimis use of its trademark from the certificate of registration adduced [Tokai of Canada v Kingsford Products Company, LLC, 2018 FC 951 at para 37; Entre Computer Centers Inc v Global Upholstery Co (1991), 40 CPR (3d) 427 (TMOB) at 430]. Such an inference, however, does not support the finding that the Opponent’s trademark was known to any significant extent or that it has been continuously used since the date claimed [Krauss‑Maffei Wegmann GmbH & Co KG v Rheinmetall Defence Electronics GmbH, 2017 TMOB 50 at para 20].

[23] Accordingly, these factors also do not favour either party.

Nature of the goods, services, businesses and trade

[24] The Applicant, in her written submissions, conceded that there is an area of potential overlap between the parties’ goods in respect of goods for babies where the Opponent sells diapers and the like and the Applicant makes and sells handcrafted clothing items [Applicant’s written argument at page 10].

[25] In my view, there is overlap between the parties goods to the extent that the Opponent’s Registered Trademark covers babies’ diapers and diaper-pants and the application for the Mark covers baby clothing items. While I do not consider the remaining Goods or any of the Services set out in the application to be similar or significantly related in nature to the Opponent’s registered goods, I note two things. First, there is at least a connection between the Opponent’s goods and the Applicant’s other clothing, some of her toys, including her baby toys, as well as her Services specifically meant for young children as these Goods and Services could arguably all be directed to the same consumers purchasing for babies or young children. Second, since the Mark itself contains the word “kid”, it arguably portrays all of the Goods and Services as being child-related.

[26] The Applicant, seeking to distinguish the nature of the parties’ channels of trade, essentially contends that the Opponent’s goods are not sold through the same outlets and would not appear side-by-side with the Applicant’s goods. Specifically, the Applicant submits that her goods are sold at craft shows in Ontario, particularly in the Greater Sudbury area, as well as on her Facebook page and online store, where babies’ diapers, babies’ diaper-pants, and cleansing wipes “are not commonly found for sale”.

[27] The nature of the Opponent’s business and trade is not in evidence. Be that as it may, the Applicant is applying for registered exclusive rights across Canada and neither statement of goods covered by the marks at issue contains a territorial limitation or a restriction with respect to any specific channel of trade. I am therefore unable to find that there would not be at least a potential for overlap in the parties’ channels of trade.

[28] Accordingly, these factors favour the Opponent.

Degree of resemblance

[29] To the extent that the Mark incorporates the dominant element of the Opponent’s trademark — that is, the word element — in its entirety, I find that there is a fair degree of resemblance between the parties’ trademarks in appearance and in sound, notwithstanding their respective additional elements.

[30] In terms of ideas suggested by the trademarks, the Applicant submitted that the ending “up” in the Opponent’s mark was probably chosen because of the nature of the Opponent’s goods, given that diaper-pants and the like are often referred to as “pull-ups”. The Applicant submitted that, on the other hand, the Mark’s ending “uper” is reminiscent of expressions such as “super-duper”, “super trooper” and the like. Nothing in the evidence supports the former allegation. I however partially agree with the Applicant with regard to the latter. I do find that there are differences in the ideas suggested by the parties’ trademarks for unilingual English-speaking or bilingual consumers as the Opponent’s trademark suggests a (super) child’s upward movement, while the Mark suggests an exclamation of elation or a laudatory adjective. That said, there is no evidence that unilingual French‑speaking consumers would be aware of expressions like “super-duper” or would view the Mark, as a whole, as anything other than a fanciful or made-up word. To put it another way, while I believe that unilingual French-speaking consumers would know the meaning of the words “super kid” or “superkid”, they would likely consider both SUPERKIDUP and SUPERKIDUPER to be coined words with no specific meaning.

[31] Accordingly, this factor favours the Opponent.

Surrounding circumstance – No evidence of actual confusion

[32] At the hearing, the Applicant submitted that the co-existence of the parties’ trademarks since the Applicant started using her Mark in 2015 without any evidence of actual confusion is a circumstance that further reduces the likelihood of confusion.

[33] As there is no evidence of use of the Opponent’s trademark and the Applicant’s evidence of use of her Mark is minimal at best, I find the lack of evidence of actual confusion to be of no significance in the instant case.

Conclusion on the likelihood of confusion

[34] As indicated above, the Applicant has the legal onus of establishing, on a balance of probabilities, that there is not a reasonable likelihood of confusion as to the source of the parties’ goods and services. This means that if a determinate conclusion cannot be reached after all the evidence is in, then the issue must be decided against the Applicant [John Labatt, supra].

[35] Having regard to all of the surrounding circumstances, I find that the probability of confusion between the marks at issue is evenly balanced with respect to the following Goods: “[c]lothing, namely handcrafted casual clothing, children’s clothing and baby clothing; ... baby toys, bath toys, plush toys ...; headwear, namely hats, caps, toques; embroidered t-shirts”. As indicated above, the parties’ trademarks bear in my view a fair degree of resemblance, especially from the perspective of the average unilingual French-speaking consumer, who would likely perceive them as quite similar fanciful or made-up words. I also cannot disregard the existence of an overlap or at least a connection between these Goods and the Opponent’s goods and the potential for overlap in the parties’ channels of trade. As the onus is on the Applicant to show, on a balance of probabilities, that there is no reasonable likelihood of confusion, I must find against the Applicant.

[36] That said, I am satisfied that, on a balance of probabilities, there is no reasonable likelihood of confusion with respect to “toys, games and playthings, namely board games and party games; cups, pens, wristbands; fridge magnets, key chains; reusable shopping bags” and the Services. In my view, despite the degree of resemblance between the marks, average English or French‑speaking consumers in Canada are not likely to believe that any of these remaining Goods or any of the Services set out in the application for the Mark are from the same source as, or are otherwise related to, any of the goods covered by the Opponent’s relied-upon registration. For example, I am not prepared to find that the average consumer would expect board games, operation of restaurants or summer day camp services to come from or to be approved, licensed, or sponsored by a cleansing wipes and diaper provider simply on the basis that all such goods or services may be child-related. The fact that the Applicant may cater to the same consumers as the Opponent does not necessarily mean that these consumers are likely to be confused as to the source of the parties’ respective goods and/or services.

[37] Accordingly, the section 12(1)(d) ground of opposition succeeds in part.

Disposition

[38] 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 in respect of the following goods:

Clothing, namely handcrafted casual clothing, children’s clothing and baby clothing; ... baby toys, bath toys, plush toys ...; headwear, namely hats, caps, toques; embroidered t-shirts”

and I reject the opposition against the application pursuant to section 38(12) of the Act with respect to the remaining goods and all of the services:

Toys, games and playthings, namely board games and party games; cups, pens, wristbands; fridge magnets, key chains; reusable shopping bags

Provision of an indoor playground for children; providing recreational areas in the nature of play areas for toddlers; operation of restaurants and food concession stands; operation of souvenir shops; drop in child-minding daycare services; summer day camp services; planning and hosting private and semiprivate children’s birthday parties

Iana Alexova

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

Hearing date September 2, 2021

Appearances

Isabelle Deshaies	For the Opponent
David M. Wray	For the Applicant

Agents of record

ID MARQUE / TRADEMARK	For the Opponent
R. WILLIAM WRAY & ASSOCIATES	For the Applicant