2011 TMOB 4 (January 17, 2011)
Overview
The Trademarks Opposition Board held that the applicant's previous registration for a similar trademark did not necessarily give the applicant the right to obtain the registration of the marks at issue.
Abstract
The Trademarks Opposition Board ("Opposition Board") found that the applicant was not the person entitled to registration of the marks BAM! BULLY! and BAM! BOOZLED! because at the filing date of the applications, the marks were confusing with the opponent's trademark BAM! Further, the Opposition Board held that the applied-for marks did not distinguish, nor were the marks capable of distinguishing, the applicant's wares from the wares and services associated with the opponent's BAM! trademark, which was and continued to be used and/or made known in Canada by the opponent.
The applicant admitted the likelihood of confusion with the opponent's trademark, but relied on its trademark BAM!, registered in 2002, to allege priority over the opponent's trademark. The applicant provided evidence that its trademark BAM! had been continuously used in Canada in association with the relevant wares and services since 2002, however provided no evidence of use of the applied-for trademarks.
The Opposition Board rejected the applicant's argument, holding that the fact that the applicant obtained the registration of a trademark prior to the relevant date (the filing date of the present applications) did not necessarily give it the right to obtain the registration of a similar trademark. The Opposition Board also held that any use by the applicant of a similar trademark to the applied-for marks was not a relevant factor in this case.
Case summary
Facts. Shady Glen Enterprises Limited filed an application to register the trademarks BAM! BULLY! and BAM! BOOZLED! (hereinafter collectively referred to as "the Marks"), based on proposed use in Canada in association with "[f]ood products namely vinegar; salad dressings namely marinades and dipping sauces."
The applications were advertised for opposition. Emeril's Food of Love Productions, LLC ("Emeril") filed a Statement of Opposition to each of the applications and the Statement of Opposition was amended to reflect the assignment from Emeril to MSLO Shared IP Sub LLC ("MSLO") in the rights of the trademarks mentioned in the Statement of Opposition.
The grounds of opposition were, among other things, that the applicant was not the person entitled to registration of the Marks pursuant to section 16(3)(a) of the Trademarks Act ("Act") because at the filing date of the applications, the Marks were confusing with the opponent's trademark BAM!, previously used and made known in Canada in association with "food, including but not limited to food seasoning; apparel; footwear; cookware, cooking utensils and accessories; printed matter; books; television shows; cooking demonstrations, wine and/or food tastings," and further that the Marks were not distinctive of the applicant's wares.
The applicant filed a counterstatement on February 12, 2007, in each of those files wherein it denied the grounds of opposition pleaded by the opponent. In response to the ground of opposition based on likelihood of confusion with the opponent's trademark BAM!, the applicant relied on its own registered trademark BAM! (TMA612,000), covering food products namely vinegar, salad dressings namely marinades and dipping sauces.
The applicant's evidence established that its trademark BAM! had been continuously used in Canada in association with vinegars since 2002. The applicant specifically argued:
While we agree that confusion with the Opponent's alleged trademark would exist, it is the Applicant who has established its priority over the Opponent's alleged trademark BAM!, by virtue of its registered trademark and prior use. Regardless of whether the determining date is the filing date or the date of first use, the Applicant's associated trademark registration for BAM! was filed on February 2001. The date predates any alleged "well-known" claimed or alleged date of first use of the Opponent's alleged trademark (para 26).
The opponent's evidence established that the trademark BAM! originated from an expression used by Chef Emeril Lagasse while appearing on television programs, and BAM! denoted the addition of ingredients to dishes. The opponent's evidences also included, among other things, articles published in Canadian newspapers referring to Emeril and the mark BAM!, various Emeril cookbooks distributed in Canada containing the expression BAM! in text or on a t-shirt or illustration, and samples of labels of assorted rubs and salad seasonings sold in Canada bearing the trademark BAM!
Analysis. The Opposition Board rejected the applicant's argument, holding that the fact that the applicant obtained the registration of a trademark prior to the relevant date (the filing date of the present applications) did not necessarily give it the right to obtain the registration of a similar trademark (citing Groupe Lavo Inc. v. Procter & Gamble Inc., (1990), 32 C.P.R. (3d) 533 (T.M.O.B)). The Opposition Board also noted that the applicant provided no evidence of use of the applied-for Marks, and any use of a similar trademark by the applicant was not a relevant factor in the case.
Regarding the ground of opposition based on section 16(3)(a) of the Act, the Opposition Board stated more specifically that the fact that the applicant had been using the trademark BAM! in Canada since 2002 was not a relevant factor to determine if the applicant was entitled to the registration of the Marks under section 16(3) of the Act. The Opposition Board concluded that this ground of opposition was maintained, having found that that the opponent had met its initial burden to prove that its trademark BAM! had been used in Canada prior to May 2, 2005, and was not abandoned as of the advertisement date of the Marks.
Regarding the distinctiveness of the applied-for marks, the Opposition Board found that the opponent had met its initial burden of proving that its trademark BAM! was sufficiently known in Canada prior to the filing date of its Statement of Opposition to negate any distinctiveness of the applied-for marks. Turning to the issue of the likelihood of confusion between the applied-for marks and the opponent's trademark, the Opposition Board noted that the applicant's argument again was based on its prior use of the trademark BAM!, and concluded that this ground of opposition was also maintained for the same reasons detailed under the ground of entitlement.
Conclusion
This case is noteworthy for the holding that the applicant's previous registration for a similar trademark did not necessarily give the applicant the right to obtain the registration of the marks at issue. This case also demonstrates the importance of monitoring the marketplace and challenging the use of any confusingly similar trademarks.
Daniel S. Faya, Toronto
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