2011 TMOB 194 (October 18, 2011)
Overview
The Trademarks Opposition Board refused an application to register the trademark IRON CHEF in association with "bar-be-que (designed and built for kitchen); stainless steel backsplash for any kitchen" as the mark was confusing with the opponent's trademark IRON CHEF, which had been previously used in Canada in association with a television program featuring cooking competitions and kitchen related products, including knives, mugs and glasses, and related wares. This decision is noteworthy as the Opposition Board relied on the recent Supreme Court of Canada decision in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27, to find that, when considering confusion, the expense of the wares is not a relevant factor and should not limit trademark protection.
Abstract
The Trademarks Opposition Board (the "Opposition Board") held that the trademark IRON CHEF (the "mark") in association with "bar-be-que (designed and built for kitchen); stainless steel backsplash for any kitchen" was not registrable as it was confusing with the opponent's trademark IRON CHEF (the "opponent's mark"), which had been previously used in Canada in association with a television program featuring cooking competitions, kitchen related products, including knives, mugs and glasses, and related wares. In rendering its decision, the Opposition Board relied on the decision in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27, to find that, when considering confusion, the expense of the wares is not a relevant factor, and not a factor that should limit trademark protection.
Case summary
Facts. In June 2006, Ramesh Suri (the "applicant") filed Application Serial No. 1,303,714 to register the trademark IRON CHEF, based on proposed use in association with "bar-be-que (designed and built for kitchen); stainless steel backsplash for any kitchen," as amended (the wares).
The mark was opposed by Fuji Television Network, Inc. (the "opponent"), and the Statement of Opposition raised three grounds of opposition under the Trademarks Act (the "Act") as follows:
- section 30(b): the mark was not registrable as the applicant had not actually used the mark in Canada since June 1, 2006, as claimed in the application;
- section 16(1)(a): the applicant was not entitled to registration of the mark since, at the claimed date of first use, the mark was confusing with the opponent's trademark IRON CHEF, which had been previously used in Canada in association with, inter alia, a television program featuring cooking competitions and kitchen related products, and related wares; and
- section 38(2)(d): the mark was not registrable as it was not distinctive in that it was not adapted to distinguish the wares from those of the opponent.
As evidence, the applicant filed the affidavit of Ramesh Suri. Mr. Suri indicated that sales of products in association with the mark began in late 2005. Attached to the affidavit was a photograph of a barbecue with the mark stamped into the lid, pages of stickers bearing the mark, and photos of a kitchen displaying how stickers are attached to backsplashes. Invoices were also provided.
The opponent's affiant noted that the opponent produced a television program titled IRON CHEF, which has aired in Canada since 1999, and a new television program titled IRON CHEF AMERICA has been produced under licence from the opponent and has aired on the Food Network. The affiant stated that each television program prominently featured the IRON CHEF trademark. Attached to the affidavit was a bundle of reports from Nielsen Media Research stating the airtimes for IRON CHEF and IRON CHEF AMERICA. The affiant also stated that IRON CHEF kitchen and clothing related goods have been shipped to and sold in Canada.
Analysis. The Opposition Board noted that the applicant bore the legal onus of establishing compliance with the requirements of the Act. However, there was an initial evidential burden on the opponent respecting its allegations. The Opposition Board then dismissed the section 30(b) ground of opposition, holding that the opponent failed to meet its evidential burden. The Opposition Board noted that the opponent could rely on the applicant's evidence to meet the burden; however, the opponent's technical objections to invoices provided by the applicant were insufficient to render the applicant's evidence deficient.
A significant portion of the decision dealt with the non-entitlement ground under section 16(1)(a) of the Act regarding whether there was a reasonable likelihood of confusion with the opponent's mark, which had been previously used in Canada. This opposition ground was successful. The Opposition Board, in considering the section 6(5) factors, was not satisfied that the applicant had discharged its burden of showing, on a balance of probabilities, that there was no reasonable likelihood of confusion between the identical marks.
Of particular note was the Opposition Board's treatment of the nature of the parties' trade under section 6(5)(d). The applicant submitted that customers shopping for the wares would be "careful shoppers" who would take time to review the products in the marketplace prior to purchase, thus decreasing the likelihood of confusion. The Opposition Board relied on the decision in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27, to hold that the fact that wares were expensive was not a relevant factor to consider and was not something that should limit trademark protection. Rather, the test for confusion was one of first impression, and therefore any subsequent steps taken by sophisticated consumers in an attempt to remedy first instance confusion would be irrelevant.
The Opposition Board then went on to briefly reject the opponent's section 38(2)(d) ground, stating the opponent had not provided sufficient admissible evidence to support a finding that the opponent's mark had become sufficiently known in Canada to negate the distinctiveness of the mark.
Conclusion
In this application, the sole ground for rejection was based on the reasonable likelihood of confusion between the identical marks in contravention of section 16(1) of the Act. This decision reiterates the fact that the wares are expensive should not limit trademark protection. Rather, confusion remains an issue of first impression and any subsequent steps taken by consumers in an attempt to remedy first instance confusion are irrelevant.
Elizabeth E. Farries, Vancouver
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