2011 TMOB 62 (April 19, 2011)
Overview
The Trademarks Opposition Board refused an application to register the trademark CLEARVISION in association with the wares "binders" on the basis that the term "binders" is not an ordinary commercial term and is therefore unacceptable. This decision is particularly noteworthy as it underscores the importance of adequately defining the associated wares and/or services in a trademark application and emphasizes that in an opposition proceeding, an allegation based on an inadequate statement of wares/services must be countered by the applicant; failure to do so, as shown in this decision, can result in the refusal of the application.
Abstract
The Trademarks Opposition Board (the "Opposition Board") held that the trademark CLEARVISION (the "Mark") in association with the wares "binders" was not registrable as the term "binders" was not an ordinary commercial term and was therefore not compliant with section 30(a) of the Trademarks Act (the "Act"). In rendering its decision, the Opposition Board relied heavily on the affidavit of a registered trademark agent that included references to the Canadian Intellectual Property Office's Wares and Services Manual, which indicated that there are different types of "binders," for example, chemical binders, machines that reap and tie grains, and various types of stationery binders. The Opposition Board held that the applicant, who purported to use the Mark in association with vinyl binders, had not identified a specific type of binder in its trademark application, and therefore was not compliant with the requirement under section 30(a) of the Act, which specifies that an application for the registration of a trademark shall contain "a statement in ordinary commercial terms of the specific wares and services in association with which the mark has been or is proposed to be used." In coming to this decision, the Opposition Board clearly noted that had the applicant amended its trademark application to more clearly specify its wares, the outcome of this proceeding would likely have favoured the applicant. The Opposition Board also addressed the issue of confusion between the applicant's Mark and the opponent's mark (which was also CLEARVISION) and held that the allegation of confusion had not been proven on a balance of probabilities.
Case summary
Facts. In June 2006, BGI Holdings Inc. (the "applicant") filed application serial no. 1,305,933 to register the trademark CLEARVISION, based on proposed use in Canada, in association with the wares "binders" (the "wares"). The applicant's Mark was used in association with vinyl binders according to corporate customer specifications.
The application was advertised in January 2007, and was opposed by Kost Klip Manufacturing Ltd. (the "opponent") in March 2007. The Statement of Opposition raised five grounds of opposition, including the following:
- The term 'binders" specifying the applicant's wares is not an ordinary commercial term and is therefore unacceptable pursuant to section 30(a) of the Act. With respect to this ground of opposition, the opponent cited the Trademarks Wares and Services Manual wherein the term "binders" is required to be more specifically defined.
- The Mark is not registrable in view of section 12(1)(d) of the Act because it is confusing with the opponent's registered mark CLEARVISION covering the wares' "point of sale merchandising aids namely, sign label holders and sign holders."
- The Mark is not registrable in view of section 16(3)(a) of the Act because at the date of filing the application, the applied-for Mark was confusing with the opponent's mark, which had been used and made known in Canada since at least as early as 2000.
Analysis. Section 30(a) of the Act states that
30. An applicant for the registration of a trademark shall file with the Registrar an application containing
(a) a statement in ordinary commercial terms of the specific wares or services in association with which the mark has been used or is proposed to be used;
The Opposition Board noted that caselaw has established that the onus or legal burden is on the applicant to show its compliance with section 30(a). However, the opponent has an evidential burden respecting its allegations. In cases of proposed use, the burden is lighter given that the facts are within the knowledge of the applicant. Further, the Opposition Board noted that the material time for considering the circumstances respecting the issue of non-compliance with the provisions of section 30(a) is the filing date of the application at issue. The evidence before the Opposition Board included provisions from the Canadian Intellectual Property Office's Wares and Services Manual, which indicated that there are different types of "binders," for example, chemical binders, machines that reap and tie grains, and various types of stationery binders. Further evidence introduced by the opponent indicated that third parties that had either applied for or successfully obtained registered Canadian trademarks, described their similar wares specifically as catalogue binders, data binders, ring binders or loose-leaf binders.
In the instant case, the Opposition Board held that although it is not bound by administrative procedures followed in the Canadian Intellectual Property Office, the opponent had met its evidentiary burden by putting into issue whether the term "binders" did, in fact, identify the applicant's wares in ordinary commercial terms. The applicant's evidence did not counter the opponent's allegation in any way. Accordingly, based on the usual civil balance of probabilities, the application was refused pursuant to section 30(a) of the Act on the basis that the wares were not described in ordinary commercial terms.
The Opposition Board also considered whether the CLEARVISION Mark for use in association with stationery binders was confusing with the Opponent's mark CLEARVISION for use in association with point of sale merchandising aids namely, sign label holders and sign holders. In considering these grounds of opposition, the Opposition Board stated that the test for confusion is one of first impression and imperfect recollection and is based on the factors for considering confusion as enumerated under section 6(5) of the Act.
In considering the section 6(5) factors, the Opposition Board held that the applied-for Mark CLEARVISION possesses a relatively low degree of distinctiveness because it is composed of two common words in everyday usage, which suggests that the applicant's binders present information in an easily visible form. Similarly, the Opposition Board characterized the opponent's CLEARVISION mark as possessing a relatively low degree of distinctiveness. The Opposition Board accepted the applicant's submissions that the nature of the parties' wares were fundamentally different. More specifically, the applicant's wares were characterized as binders used for providing customized and specialized services to corporate clients for business documentation and presentation; conversely, the opponent's wares were characterized as being point of purchase products used by retailers. In short, the Opposition Board was not persuaded by the opponent's suggestion that the parties were, in fact, direct competitors, and accordingly, the grounds of opposition based on confusion were rejected.
Conclusion
In sum, the sole ground for rejection was based on section 30(a) of the Act, thus highlighting the importance of describing an applicant's wares and services in ordinary commercial terms. Indeed, the importance of section 30(a) is underscored in the Opposition Board's own comments, which noted that "had the applicant amended its application to more clearly specify its wares, then the outcome of this proceeding would likely have favoured the applicant." From an opponent's perspective, the case demonstrates that a Wares and Services Manual excerpt can be useful evidence for challenging a mark based on section 30(a). After filing such evidence, it may be possible to shift the burden to the applicant to demonstrate compliance with section 30(a).
Jeffrey D. Morton, Vancouver
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