Citation: 2022 TMOB 197

Date of Decision: 2022-10-07

 

IN THE MATTER OF AN OPPOSITION

	Voit Corporation (a Texas Corporation)	Opponent
and
	World Pioneer Trading Ltd.	Applicant
	1,883,094 for VOITED & Design	Application

Introduction

[1] Voit Corporation (the Opponent) opposes registration of the trademark VOITED & Design, shown below (the Mark), which is the subject of application No. 1,883,094 (the Application), that was filed by World Pioneer Trading Ltd. (the Applicant).

 

[2] The Application was filed on February 14, 2018, on the basis of proposed use in association with goods which range from a variety of baggage/bags to camping linens and apparel (the Goods), and services related to the retail, wholesale and online sale of such goods (the Services). A complete listing of the Goods and Services is included under Schedule A to this decision.

[3] The Application was advertised in the Trademarks Journal of October 28, 2020. On December 29, 2020, the Opponent filed a statement of opposition against the Application pursuant to section 38 of the Trademarks Act, RSC 1985, c T-13 (the Act). I note that the Act was amended on June 17, 2019. As the Application in this case was advertised after June 17, 2019, the Act as amended applies (see section 69.1 of the Act).

[4] The Opponent alleges that (i) the Mark is not registrable pursuant to section 12(1)(d) of the Act; (ii) the Applicant is not the person entitled to registration of the Mark pursuant to section 16(1)(a) of the Act; (iii) the Mark is not distinctive pursuant to section 38(2)(d) of the Act; and (iv) the Application is not compliant with section 38(2)(e) of the Act. The first three grounds of opposition revolve around the likelihood of confusion between the Mark and the Opponent’s trademarks, VOIT & Design and VOIT (the Opponent’s Marks), particulars of which are set out in Schedule B to this decision.

[5] For the reasons that follow, I refuse the Application.

The Record

[6] As previously indicated, the Opponent filed its statement of opposition on December 29, 2020.

[7] The Applicant filed and served its counter statement on March 10, 2021, denying the grounds of opposition.

[8] The Opponent filed and served a statement on July 12, 2021, indicating that it did not wish to file evidence.

[9] In support of its Application, the Applicant filed the affidavit of Frank Voit, the President and CEO of the Applicant, sworn November 12, 2021.

[10] Only the Applicant filed written representations and neither party requested a hearing.

Summary of the Applicant’s Evidence

[11] Mr. Voit attests that he developed the brand VOITED, in part, because his last name is Voit.

[12] Mr. Voit states that the Applicant’s VOITED mark and the Opponent’s mark VOIT currently co-exist in the United States, Germany, and the European Union. He attaches as Exhibit A to his affidavit, copies of these trademark registrations and applications.

[13] Mr. Voit states that he has reviewed the Opponent’s VOIT branded products as they are sold in the United States, indicating that the Opponent does not appear to have a Canadian website. He states all of the Opponent’s products (in the United States) are kickball, team ball, and team sport oriented, which are mainly sold as sporting goods in brick and mortar stores.

[14] Further to the above, Mr. Voit attaches as Exhibit B to his affidavit, pages from the Opponent’s website downloaded on November 9, 2021, which he states provide a list of “all their [the Opponent’s] ambassadors”. Mr. Voit states that every ambassador is a soccer player, which according to Mr. Voit, demonstrates that the Opponent specifically markets towards soccer players and sports enthusiasts.

[15] In addition, Mr. Voit attaches as Exhibit C to his affidavit, pages from the Opponent’s marketing video found on their website downloaded on November 9, 2021, which indicates that “Voit is for those… who give everything on the field… who live sports with energy and passion.” According to Mr. Voit, the Opponent’s website indicates that the Opponent was built around creating a new type of rubber beachball, which expanded into creating basketballs, soccer balls, and other sports equipment.

[16] With respect to the Applicant, Mr. Voit attests that the Applicant’s VOITED branded products are focused on the camping and snow sports community and that the Applicant’s marketing is focused on nature and the outdoors. He states that the Applicant’s products are not sporting goods but are instead camping and nature oriented bags, apparel and camping supplies, which are sold in e-commerce, mostly through the Applicant’s own website.

[17] Mr. Voit attaches as Exhibit D to his affidavit, pages from the Applicant’s website downloaded November 9, 2021, which he attests shows that the Applicant’s brand ambassadors are all related to nature and the outdoors. According to Mr. Voit, the Applicant’s website demonstrates that the Applicant’s VOITED brand audience is hikers, campers, and backpackers.

[18] Lastly, Mr. Voit explains that the Applicant also does product collaborations with outdoor enthusiasts, artists, and groups that have similar sustainability and environmental focuses and messages to that of the Applicant. In support, he provides as Exhibits F, G, and H, printouts from the Applicant’s website detailing a few such projects. Mr. Voit states that these printouts demonstrate that all of these collaborations and ambassadors focus the Applicant’s trade channels through e-commerce and social media, with the majority of the VOITED brand collaborators and ambassadors advertising products through Instagram.

Analysis

Grounds Summarily Dismissed – sections 16(1)(a), 38(2)(d), and 38(2)(e) of the Act

[19] In its statement of opposition, the Opponent alleges that the Applicant is not the person entitled to registration of the Mark pursuant to section 16(3)(a) of the Act, since at the filing date of the Application in Canada, the Mark was confusing with the Opponent’s Marks which had been previously used or made known in Canada.

[20] In order to meet its initial burden in support of this non-entitlement ground, the Opponent must show that it had used or made known its one or more of it trademarks in Canada prior to February 14, 2018, the date of filing of the Application. Furthermore, the Opponent must establish non-abandonment of its trademark(s) as of October 28, 2020, the date of advertisement of the Application for the Mark.

[21] In this case, the Opponent has simply provided the particulars of the two trademark registrations on which it intends to rely and this is insufficient to establish prior use of the Opponent’s trademarks [see Rooxs, Inc v Edit-SRL (2002), 23 CPR (4th) 265 (TMOB)]. The Opponent has therefore not met its burden under this ground and accordingly, this ground is dismissed.

[22] The Opponent has also pleaded that the Mark is not distinctive pursuant to section 38(2)(d) of the Act, in that it is not adapted to distinguish and does not actually distinguish the Applicant’s Goods and Services from the goods of the Opponent, having regard to the prior and continuing use by the Opponent of the Opponent’s Marks.

[23] There is an initial burden on the Opponent to establish that as of the filing of the opposition, one or more of the Opponent’s Marks relied upon were known to a sufficient extent that could negate the distinctiveness of the applied-for Mark [Bojangles’ International LLC v Bojangles Café Ltd, 2006 FC 657, 48 CPR (4th) 427]. Once again, the Opponent has filed no evidence demonstrating the extent to which the Opponent’s Marks have become known in Canada. As the Opponent has failed to meet its evidential burden, this ground of opposition is summarily dismissed.

[24] Lastly, the Opponent has pleaded that contrary to section 38(2)(e), as of the filing date of the Application, the Applicant did not, by itself or through a licensee, or by itself and through a licensee, intend to use the Mark in Canada. However, no evidence or argument was filed in support of this ground of opposition; therefore, this ground of opposition is also summarily dismissed.

Section 12(1)(d) Ground of Opposition

[25] The Opponent pleads that the Applicant’s Mark is not registrable in that contrary to section 12(1)(d) of the Act, the Mark is confusing with the Opponent’s Marks [per Schedule B].

[26] An opponent’s initial onus is met with respect to a section 12(1)(d) ground of opposition if one or more of the registrations relied upon are in good standing; the opponent is not required to show that it has used its relied upon registered marks.

[27] The Registrar has the discretion to check the register in order to confirm the existence of any registrations relied upon by an opponent [see 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 the Opponent’s registrations relied upon under this ground of opposition are in good standing as of the date of this decision.

[28] Since the Opponent has satisfied its initial evidential burden for this ground of opposition, the issue becomes whether the Applicant has met its legal burden to establish, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and any of the Opponent’s Marks.

[29] For the reasons that follow, this ground of opposition is successful.

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

[31] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 6(5) of the Act, namely: (a) the inherent distinctiveness of the trademarks and the extent to which they have become known; (b) the length of time each has been in use; (c) the nature of the goods, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trademarks, including in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight [see Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22, 49 CPR (4th) 321; Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée et al, 2006 SCC 23, 49 CPR (4th) 401; and Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27, 92 CPR (4th) 361].

[32] In Masterpiece, the Supreme Court of Canada discussed the importance of the section 6(5)(e) factor in conducting an analysis of the likelihood of confusion between the parties’ marks in accordance with section 6 of the Act [see para 49]:

…the degree of resemblance, although the last factor listed in s.6(5), 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. The other factors become significant only once the marks are found to be identical or very similar… As a result, it has been suggested that a consideration of resemblance is where most confusion analyses should start…

[33] Under the circumstances of the present case, I consider it appropriate to analyze the degree of resemblance between the parties’ marks first.

[34] Furthermore, in considering the issue of confusion, I will primarily focus on the Opponent’s trademark registration No. TMA542,166 (VOIT & Design) as I consider this trademark to represent the Opponent’s best chance of success, not only in view of similar design components, but also due to the greater breadth of associated registered goods. If the Mark is not confusing with this trademark, it will not be confusing with the remaining trademark relied upon by the Opponent.

Section 6(5)(e) – the degree of resemblance

[35] When considering the degree of resemblance, the law is clear that the trademarks must be considered in their totality; it is not correct to lay them side by side and compare and observe similarities or differences among the elements or components of the trademarks. Furthermore, while the first portion of the trademark is usually the most important for the purpose of distinguishing [see Conde Nast Publications Inc v Union des Editions Modernes (1979), 46 CPR (2d), 183 (FCTD)], the Supreme Court of Canada in Masterpiece has advised that the preferable approach when comparing marks is to begin by determining whether there is an aspect of the trademark that is particularly striking or unique.

[36] The striking aspect of the Mark in my view is the word VOITED. I do however, find that the design element is also an integral component of the Mark.

[37] On the other hand, while the Opponent’s Mark incorporates a larger “V” and circle design, the word “Voit” also appears quite conspicuous and striking.

[38] With respect to this factor, the Applicant submits that the trademarks are different in that the Mark comprises two as opposed to one syllable, and incorporates very distinctive design elements.

[39] Although it is true that the Mark is a coined word that comprises two syllables, I am not persuaded, however, that the inclusion of the common suffix “ed” has much of an impact on the degree of resemblance between the parties’ marks. In my view, as a matter of first impression, when confronted by this word, consumers would think that “voited” is a coined “verb” given the addition of the “ed” – that is simply the past tense of the root “voit”. Moreover, despite the word VOIT being a surname (that of the CEO of the Applicant), there is no evidence to support that as a matter of first impression, an individual would think of or recognize VOIT as a surname rather than a coined word with no dictionary meaning.

[40] Furthermore, within both parties’ marks, the design component incorporates a letter “V” which transects a circle design. Although the design component of the Opponent’s Mark is larger, and the design in the Mark includes repeats or echoing of the letter V, the basic elements of the designs in the parties’ marks are the same – that is, a circle design similarly transected by a letter “V”.

[41] Consequently, I find there to be a high degree of similarity between the parties’ marks; not only due to the similarity of the word portion visually, when sounded (with exclusion of the common suffix “ed”), and in ideas suggested, but the overall similarity being further amplified by such a similar design component.

[42] Accordingly, this factor strongly favours the Opponent.

[43] Having found a high degree of similarity between the parties’ marks, I will now assess the remaining relevant surrounding circumstances to determine whether any of these other factors are significant enough to shift the balance of probabilities in favour of the Applicant [see Masterpiece, supra at para 49].

Section 6(5)(a) - the inherent distinctiveness of the trademarks and the extent to which they have become known

[44] Both parties’ trademarks have a similarly high degree of inherent distinctiveness in that they include words that are coined or could be perceived as coined, coupled with a similar design component (a circle transected by the letter V).

[45] In any event, the strength of a trademark may be increased by means of it becoming known in Canada through promotion or use.

[46] The Applicant submits that this factor favours the Applicant, as the evidence of the Applicant establishes that VOITED is a coined word, whereas the trademark VOIT is a surname. The Applicant submits that there is also no evidence that the Opponent's Mark is known in Canada at all.

[47] As previously expressed, despite the word VOIT being a surname (that of the CEO of the Applicant), there is no evidence to support that as a matter of first impression, an individual would respond to VOIT as a surname rather than as a coined word with no dictionary meaning. However, I do agree with the Applicant that there is no evidence that the Opponent’s Mark is known in Canada through use or otherwise. The mere existence of a registration can establish no more than de minimus use, which cannot give rise to an inference of significant and continuous use [see Entre Computer Centers, Inc v Global Upholstery Co (1991), 40 CPR (3d) 427 (TMOB)].

[48] However, there is also no evidence that the Applicant’s Mark is known in Canada. The Mark is based upon proposed use in Canada, and although Mr. Voit has provided website printouts pertaining to “VOITED brand” ambassadors and product collaboration projects, this is not evidence of use of the Mark in Canada. There is no evidence of sales of the Applicant’s VOITED products in Canada, nor that the website was targeted to or accessed by Canadians.

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

Section 6(5)(b) – the length of time of use

[50] As noted above, the Opponent has not provided any evidence of use of the Mark and the mere existence of a registration is insufficient to establish use [per Entre Computer Centers, supra].

[51] Also as noted above, the Applicant has not provided any evidence of use of the Mark in Canada.

[52] Thus, once again, this factor does not favour either party.

Sections 6(5)(c) and (d) – the nature of the goods and services and channels of trade

[53] When considering sections 6(5)(c) and (d) of the Act, it is the statements of goods and services as defined in the Application and in the Opponent’s registration that govern the assessment of the likelihood of confusion under section 12(1)(d) of the Act [see 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)].

[54] The Applicant submits that there is no overlap between the goods and services of the Applicant and those of the Opponent, that the parties’ goods are neither interchangeable nor complementary, and that the parties’ channels of trade are also diametrically opposed. In this regard, the Applicant points to Mr. Voit’s review of the Opponent’s products as all relating to kickball, team ball and team sports equipment, in contrast to the Applicant’s goods being bags, apparel and camping supplies. Further to this, the Applicant highlights that Mr. Voit has attested that the Opponent appears to sell its goods in brick and mortar stores, whereas the Applicant sells its goods online, on the Applicant’s own website. Lastly, the Applicant submits that Mr. Voit has described the differing marketing strategies of the parties, with the Opponent marketing its products solely to soccer players and sports enthusiasts.

[55] Contrary to the Applicant’s submissions however, I am of the view that there is overlap between the parties’ goods insofar as both include various bags and articles of clothing and apparel, and both operate in the sporting, leisure and recreation fields. Both parties’ goods (and the Applicant’s related services of selling such goods) are used for athletic and/or leisure indoor and/or outdoor activities, and I am of the view that it could be a natural extension for the Opponent to offer hiking and other such recreational products, as much as it would be for the Applicant to expand into sporting goods. Furthermore, there is no evidence of use of the Opponent’s Mark in Canada, thus, the claim made by Mr. Voit about the Opponent’s channels of trade in Canada is speculative, and in any event, the Opponent’s registration does not contain any limitations regarding channels of trade – nor has the Applicant made any such restriction in its Application. Thus, the parties’ respective goods could be offered through the same channels. I also note that Mr. Voit’s evidence shows that both parties similarly engage in the use of product ‘ambassors’ to market and promote their goods and businesses.

[56] The Applicant notes that no evidence has been produced by the Opponent to suggest that the Applicant's goods and services are similar to the Opponent's goods. However, it is the Applicant’s burden to show that its Mark is registrable.

[57] Having regard to the aforementioned, I find these factors favour the Opponent.

Surrounding Circumstance – No Evidence of Actual Confusion

[58] As an additional surrounding circumstance, the Applicant submits that there is no evidence of any actual confusion in the marketplace. In this regard, the Applicant has pointed out that at paragraph 3 of Mr. Voit’s affidavit, he notes that parties’ respective trademarks co-exist on the trademark registries in the United States, Germany, and the European Union.

[59] However, it has previously been held that co-existence on foreign trademark registers is to be accorded little weight [see Quantum Instruments, Inc v Elinca SA, 60 CPR (3d) 264 at 268-9 (TMOB)]. In this regard, there may be other factors that justify the co-existence of two marks on a register in a foreign jurisdiction that do not exist in Canada (e.g. differences in the law, a different state of the register, etc.).

[60] I therefore do not consider this to be a surrounding circumstance in support of the Applicant’s position.

Conclusion

[61] Having considered all of the surrounding circumstances, I conclude that the Applicant has not satisfied its legal burden to show that there is no likelihood of confusion between the Mark and the Opponent’s VOIT & Design trademark. I reach this conclusion in view of the high degree of resemblance between the parties’ trademarks and overlap of the parties’ goods (and related services of the Applicant for the sale of such goods).

[62] The section 12(1)(d) is ground of opposition is therefore successful. As such, I need not consider the likelihood of confusion between the Mark and the Opponent’s VOIT trademark (TMA408,977) also alleged in support of this ground of opposition.

Disposition

[63] In view of the foregoing, 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.

 

Kathryn Barnett

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

 

 

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE: No hearing held.

AGENTS OF RECORD

Smart & Biggar LLP	For the Opponent
Miller IP Law	For the Applicant

 

SCHEDULE A

Statement of Goods for application No. 1,883,094:

 

• 1) All purpose sports bags; all purpose athletic carrying bags; backpacks; book bags; duffel bags; gym bags; tote bags; knapsacks; luggage; beach bags; funny packs; waist packs; shopping bags of leather and vinyl; wallets; handbags; purses. (Nice class 18)

• 2) Sleeping bags, sleeping bag liners, blankets, sheets, linens and camping supplies, namely, travel blankets, travel sheets, comforters, comforter covers, pillow cases, and sham, all of the aforesaid goods for camping. (Nice class 24)

• 3) Apparel, namely, t-shirts, shirts, shorts, pants, sweatshirts, sweatpants, jackets, hats and shoes. (Nice class 25)

 

Statement of Services for application No. 1,883,094:

 

• 1) Retail, wholesale and online sales of housewares, bags, furniture, linens, camping supplies and products, and bags. (Nice class 35)

 

 

SCHEDULE B

Opponent’s relied upon trademarks:

Trademark	Registration No.	Goods/Services
	TMA542,166	Goods: (1) Clothing, namely T-shirts, jackets, socks, pants, sweat pants, shorts, golf and tennis shirts, and warm up suits; footwear, namely, shoes, sneakers, tennis shoes, golf shoes, running and walking shoes, basketball shoes, soccer shoes, baseball/softball shoes, football shoes, hiking shoes, sandals, and water shoes; and headgear, namely, hats, caps. (2) Exercise equipment, namely treadmills, step machines, bar bells, exercise benches, exercise bicycles, and hand weights. (3) Gymnastic and sporting articles, namely basketballs, volleyballs, soccer balls, playground balls, footballs, tennis rackets and balls, badminton racquets and shuttlecocks, squash racquets and balls, racquetball gloves, baseball batters gloves, baseballs, softballs, baseball bats, softball bats, swim fins, swim googles, swim masks, golf clubs, golf balls, golf bags, golf umbrellas, sports watches and sports glasses, in-line skates, in-line protective knee pads and gloves, sports bags and back packs. (4) Indoor and outdoor games, namely, volleyball sets, badminton sets, tetherball sets, rocket toss, beach toss shuttle flight sets, stick-um sets, ring toss, rack it back sets, boomerangs, fling rings, horseshoes, croquet sets, bocce ball sets, darts, dart boards, dart sets, table tennis, table soccer, air hockey.
VOIT	TMA408,977	Goods: (1) Athletic equipment, namely balls, bats, paddles, rackets, golf bags, swimming accessories namely snorkels, masks and fins and exercise equipment namely stationary bicycles, stair climbers, treadmills; athletic clothing namely sweatshirts, sweatpants and T-shirts and athletic shoes.