2011 TMOB 18 (January 31, 2011)
Overview
In dismissing an opposition, the Trademarks Opposition Board held that the applied-for trademark GILLETTE VENUS was not confusing with the trademark VENUS & DESIGN, for which an application had been previously filed by the opponent in association with overlapping wares. Notably, the Opposition Board concluded that the applicant's extensive use and advertisement in Canada of its pre-existing family of GILLETTE trademarks made confusion with the opponent's mark unlikely.
Abstract
The Trademarks Opposition Board ("Opposition Board") held that the applied-for trademark GILLETTE VENUS in association with various skin care products was not confusing with a previously filed application for the trademark VENUS & DESIGN in association with overlapping wares. Despite the overlapping wares and presumed overlap in the channels of trade, the Opposition Board held that confusion between the two marks was unlikely in view of the applicant's family of trademarks that include the term GILLETTE. In addition, the Opposition Board commented that the ideas suggested by the two marks are different in that the opponent's mark suggests the planet Venus while the applied-for mark suggests that Venus is a product belonging to Gillette. The opponent's remaining grounds of opposition were rejected for lack of evidence.
Case summary
Facts. On October 17, 2005, The Gillette Company filed an application for the trademark GILLETTE VENUS based upon proposed use in Canada in association with various skin care products.
The opponent, Kelemata S.p.A., opposed registration of the trademark on a number of grounds, including that the applied-for trademark was confusing with the trademark VENUS & DESIGN, shown below, which was the subject of a previously filed application by the opponent in association with overlapping wares, and which the opponent alleged it had previously used and made known in Canada.
The opponent filed no evidence in respect of any of its grounds of opposition.
The applicant filed evidence demonstrating its extensive use in Canada of an alleged family of GILLETTE trademarks used in association with similar wares, and also state of the register evidence demonstrating other trademark registrations that include the term VENUS in association with similar wares.
Analysis. The main issue considered by the Opposition Board was whether the respective parties' trademarks were confusing as of the relevant date, namely, the date of the applicant's application (October 17, 2005).
In assessing the likelihood of confusion, the Opposition Board considered the factors set out in section 6(5) of the Trademarks Act. With respect to the inherent distinctiveness of the two marks, the Opposition Board held that both marks were inherently distinctive. On the issue of the extent to which the two marks had become known, the Opposition Board concluded that neither party had shown that the marks at issue had become known in Canada as of the relevant date.
With respect to the length of time each mark had been in use, while the opponent's previously filed application for VENUS & DESIGN was based on use in Canada since September 16, 2003, the opponent filed no evidence to support this claim and therefore this factor did not favour either party.
Regarding the nature of the wares and the nature of the trade, the Opposition Board noted that it is the statement of wares in the parties' applications that must be considered, and "[m]any of the Applicant's wares are either identical to or overlap with the Opponent's wares," and also "[t]he parties' channels of trade would therefore have presumably overlapped."
With respect to the degree of resemblance between the marks, the Opposition Board observed that while the marks share the common component VENUS, this component is the second part of the trademark applied for, and therefore not as relevant as the first portion, namely, GILLETTE. The Opposition Board also noted that the ideas suggested by the marks differed in that the opponent's mark suggested the planet Venus, while the applied-for mark suggested that Venus is a product belonging to Gillette.
In addition, as a surrounding circumstance, the Opposition Board agreed with the applicant's assertion that its extensive use and advertising in Canada of its pre-existing family of GILLETTE trademarks made confusion unlikely. In particular, the Opposition Board noted that when trademarks that have a common component or characteristic and are all registered in the name of one owner, this gives rise to a presumption that these marks form a family of marks used by that one owner. The Opposition Board was satisfied based on the evidence that the applicant did have a family of GILLETTE trademarks, which it had extensively used and advertised in Canada. Thus, consumers would be more likely to assume that a new mark (i.e. GILLETTE VENUS) with the same first word in association with similar wares belongs to the applicant rather than the opponent.
As to the remaining grounds of opposition, namely, that the applicant did not intend to use the trademark, could not have been satisfied that it was entitled to use the trademark, was not entitled to use its mark in view of the opponent's making known in Canada of its VENUS & DESIGN mark, and lack of distinctiveness, the Opposition Board rejected these grounds as the opponent had failed to file any evidence in support of them and thus failed to satisfy even its initial evidential burden.
Conclusion
This case is noteworthy because it suggests that if the applicant's applied-for trademark falls within the scope of a pre-existing family of trademarks owned by the applicant, this is a relevant surrounding circumstance in a confusion analysis that should be considered by the Opposition Board, and that may lessen the likelihood of confusion with an opponent's mark.
Timothy O. Stevenson, Ottawa
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