2011 TMOB 42 (March 8, 2011)
Overview
The Trademarks Opposition Board held that the opponent was allowed to satisfy its initial evidential burden by relying upon the applicant's evidence where the relevant facts were more readily available to the applicant, and where such evidence was clearly inconsistent with the applicant's claim. In addition, the Opposition Board confirmed that to the extent that the facts pertaining to a ground of opposition are more readily available to the applicant, this evidential burden on the opponent is lower.
Abstract
The Trademarks Oppositions Board ("Opposition Board") found that the opponent had met its initial evidential burden with respect to the claim that the applicant had not used the applied-for trademark RAMTUFF before the filing date of the application. The Opposition Board held that the opponent's burden for this ground of opposition was lower to the extent that the relevant facts were more readily available to the applicant, and the opponent could rely upon the applicant's evidence provided that such evidence was clearly inconsistent with the applicant's claim. Further, the Opposition Board found that the trademark RAMTUFF was confusing with the opponent's marks RAM-X and RAMXCEL. When assessing the degree of resemblance in the confusion analysis, the Opposition Board held that the first component, namely "RAM," was the most relevant for the purposes of distinction, even more so in circumstances where the other components of the trademarks were not as inherently distinctive.
Case summary
Facts. In December 2006, the applicant, GSC Technologies Corp., filed an application to register the trademark RAMTUFF on the basis of use in Canada since at least as early as November 1, 2006, in association with "boats, pedal boats, canoes, kayaks; molded plastic hulls for boats, pedal boats, canoes and kayaks."
The opponent, Pélican International Inc., opposed the registration of the trademark RAMTUFF, including on the grounds that the applicant had not used the trademark before the filing date of the application based on section 30(b) of the Trademarks Act ("Act"), and on the basis that the applicant's trademark RAMTUFF was confusing with the opponent's registered trademarks RAM-X and RAMXCEL (collectively the "opponent's marks"), which had been used in Canada in association with, inter alia, pleasure crafts and the plastic components thereof.
The applicant submitted three representative invoices issued to Canadian retailers as evidence of use of the trademark RAMTUFF. However, these invoices referred only to model numbers, and no reference to the trademark appeared on the invoices. The applicant also provided total annual sales for the molded plastic hulls for boats, pedal boats, canoes and kayaks.
The opponent's evidence included various searches of the website through which the applicant marketed its sporting goods. Printouts of the website showed that the text "RAM TUFF® material…UV resistant" and a RAM TUFF & DESIGN logo appeared on pages where reference was made to various model numbers. Such text and logo did not appear on the products themselves, with the exception of some kayak models, which were not referenced in the invoices submitted by the applicant.
Analysis. With respect to the ground that the applicant had not used the trademark before the filing date of the application, the Opposition Board held that the opponent's evidential burden was lower where the relevant facts pertaining to this ground of opposition were more readily available to the applicant. Further, the Opposition Board noted that while the applicant was under no obligation to provide evidence of use of the mark since the date of first use claimed in the application, the applicant did elect to file evidence. As a result, the opponent could rely upon the applicant's evidence provided that such evidence was clearly inconsistent with the applicant's claim. In considering the evidence, the Opposition Board noted that the information on the printouts submitted by the opponent could be crossed-referenced with the model numbers listed on the invoices submitted by the applicant. The Opposition Board found that the applicant's evidence raised more questions than it provided evidence of use and held that the opponent had satisfied the light evidential burden upon it.
With respect to the ground that the applicant's mark was not registrable based on confusion with the opponent's marks, the Opposition Board assessed the factors set out in section 6(5) of the Act. The Board held that the wares and channels of trade overlapped or were at least connected. With respect to the degree of resemblance between the applicant's mark and the opponent's marks, the Opposition Board noted that the first portion of a trademark was the most relevant for the purposes of distinction, even more so in circumstances where the other components of the trademarks were not as inherently distinctive. As such, there was a relatively fair degree of resemblance between the trademark RAMTUFF and the opponent's marks RAM-X and RAMXCEL owing to their first dominant identical component 'RAM" and their less inherently distinctive second components, namely "TUFF," "–X," and "XCEL," which were suggestive of strength, size and excellence respectively.
Accordingly, the Opposition Board held that the applicant had not met its burden to show that it had used the applied-for trademark before the filing date of the application and that the applied-for trademark was not confusing with the opponent's trademarks. Thus, the application was refused.
Conclusion
This case is noteworthy for the holding that the opponent could rely upon the applicant's evidence to satisfy its initial evidential burden under section 30(b) provided that the relevant facts were more readily available to the applicant and such evidence was clearly inconsistent with the applicant's claim. This case also reiterates that when assessing the degree of resemblance in a confusion analysis, the first portion of a trademark is the most relevant, even more so when the other portions of the marks are not as inherently distinctive.
Jacky Wong, Ottawa
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