2011 TMOB 71 (April 20, 2011)
Overview
The Trademarks Opposition Board refused an application to register the trademark GLOBE CLAIRS Design in association with "bicycles," "baby trolleys" and related wares on the basis of confusion with the opponent's trade mark GLOBE, registered in association with "bicycles and structural parts therefor." This decision is noteworthy as the Opposition Board found that the coexistence of the parties' marks on foreign registers was not a relevant consideration, noting that no evidence had been adduced by the applicant that the marks coexisted in the marketplace in the foreign jurisdictions.
Abstract
The Trademarks Opposition Board (the "Opposition Board") held that the trademark GLOBE CLAIRS Design (the "Mark") in association with "bicycles," "baby trolleys" and related wares was not registrable as it was, inter alia, confusing with the opponent's trade mark GLOBE, registered in association with "bicycles and structural parts therefor." In rendering its decision, the Opposition Board found that the coexistence of the parties' marks on foreign registers was not relevant in considering confusion, noting that no evidence had been adduced by the applicant that the marks coexisted in the marketplace in the foreign jurisdictions.
Case summary
Facts. On January 31, 2007, Goodbaby Child Products Co., Ltd. (the "applicant") filed application serial no. 1,333,379 to register the trademark GLOBE CLAIRS Design, based on proposed use in association with, inter alia, "bicycles," "baby trolleys" and other similar wares (the "wares").
The application was advertised for opposition purposes on January 9, 2008.
The Mark was opposed by Specialized Bicycle Components, Inc. (the "opponent"), and the Statement of Opposition raised several grounds of opposition, including the following:
- Section 30(a): The wares described as "tires for vehicles; baby trolleys; benches; bottle racks; sideboards; costume stands; display stands; counters" do not constitute descriptions of the specific wares as they are customarily referred to in the trade;
- Section 12(1)(d): The Mark is confusing with the opponent's trademark GLOBE, registered on October 25, 1996, under No. TMA464,705 in association with "bicycles and structural parts therefor";
- Non-distinctiveness: The Mark is not distinctive in that it does not distinguish the applicant's wares from the wares of the opponent sold in association with the trademark GLOBE; and
- Section 16(3)(a): At the date of filing of the application, the Mark was confusing with the opponent's registered mark GLOBE, which had been previously used in Canada and continued to be so used.
The opponent evidenced that its mark GLOBE had been used for a considerable length of time and had become known in Canada in association with bicycles, including baby trolleys and athletic running carriages for children.
Analysis. While the majority of the Opposition Board's decision focused on the ground of opposition based on section 12(1)(d) of the Trademarks Act ("Act"), the Opposition Board also considered the opponent's other grounds of opposition. In this regard, the Opposition Board dismissed the opponent's section 30(a) ground of opposition as it concluded that the applicant's listing of wares complied with CIPO's Trademarks Wares and Services Manual and noted that the opponent itself used the term "baby trolleys" to describe some of the wares sold by its authorized retailers.
Regarding opposition based on section 12(1)(d), namely confusion, the Opposition Board considered all of the surrounding circumstances, including the factors listed at section 6(5) of the Act.
The Opposition Board determined that both parties' marks were inherently distinctive, but noted that there was no evidence that the applicant's Mark had been used or become known to any extent in Canada, whereas the opponent's mark had been used for a considerable length of time and become known in Canada in association with bicycles.
The Opposition Board also determined that there was clear overlap between a number of the applicant's wares and those of the opponent, and focused on the wares described as "baby trolleys" in the applicant's application. Although the wares associated with the opponent's registration did not included "baby trolleys," the opponent provided evidence that a number of its authorized retailers in Canada sell baby trolleys and athletic running carriages for children. The Opposition Board concluded that the applicant's wares could be sold in the same type of retail establishment as those of the opponent and that the wares of the applicant could consist of baby trolleys designed for sport or recreation, which could be perceived as a natural extension of the opponent's wares.
With respect to the similarity between the marks, the Opposition Board noted that the first portion of a mark is the most relevant for the purposes of distinction and concluded that there is nothing about the word CLAIRS that detracts from the significance of the word GLOBE in the first portion of the applicant's Mark. Noting that the opponent's GLOBE line of bicycles included different models, the Opposition Board concluded that consumers could believe that a GLOBE CLAIRS bicycle is a particular model of the opponent's bicycles.
With respect to the additional surrounding circumstances, the Opposition Board noted that the applicant had submitted evidence that the parties' marks were both registered on the trademarks registers of Germany, Spain and Japan. The Opposition Board found this evidence unpersuasive and relied on Quantum Instruments Inc. v. Elinca S.A., (1995), 60 C.P.R. (3d) 264 (TMOB) ("Quantum") as authority for the view that any decision must be based on Canadian standards having regard to the situation in Canada. Further, the Opposition Board noted that no evidence was provided that the marks actually coexisted in the marketplace in the foreign jurisdictions or Canada. Finally, it was noted that if regard were to be given to the state of the foreign registers, then equal regard would have to be given to the fact that the opponent had successfully opposed the applicant's European Community application for the mark for essentially identical wares.
Looking at all the factors, the Opposition Board concluded that the applicant failed to satisfy its burden that there was not a reasonable likelihood of confusion between the marks in respect only of the wares listed as "bicycles," "baby trolleys" and related wares, and the application was therefore refused in respect of these wares. With respect to the remainder of the wares, the opposition was rejected.
In light of its finding of confusion in respect of the particular wares, the Opposition Board equally held that the Mark could not serve to distinguish the applicant's wares from the wares of others in respect of the same wares. Further, for substantially the same reasons, the opponent succeeded in establishing that the Mark was confusing with the opponent's registered trademark GLOBE pursuant to section 16(3)(a).
Conclusion
This case is instructive insofar as it notes the irrelevance of the coexistence of marks on foreign registers to the confusion analysis, but puts future applicants on notice that evidence of the coexistence of marks in foreign marketplaces may still be relevant in this regard.
Jordan D. Scopa, Toronto
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