Date: 19971114
Docket: T-402-97
| IN THE MATTER OF Sections 38 and 56 of the Trade-marks Act, R.S.C. 1985, c. T-13; |
| AND IN THE MATTER OF an appeal from a decision of the Registrar of Trade-marks dated January 10, 1997, relating to Trade-mark Appln. No. 686,839 for the trade-mark FORMULA 7, filed by K-TEL International Ltd. |
BETWEEN:
K-TEL INTERNATIONAL LTD.
Appellant
(Applicant)
- AND -
INTERWOOD MARKETING LTD.
Respondent
(Opponent)
REASONS FOR ORDER
McKEOWN, J.
[1] The appellant appeals the decision of the Trade-marks Opposition Board dated January 10, 1997, whereby the appellant's application for registration of its trade-mark "FORMULA 7" under subsection 38(8) of the Trade-marks Act was refused.
[2] On July 31, 1991, the appellant filed an application for registration of the trade-mark "FORMULA 7", Application No. 686,839, for use in association with liquid cleansers and degreasers. This application was based on proposed use in Canada. On May 22, 1992, the appellant amended its statement of wares to household and/or industrial liquid cleaners and degreasers and the appellant amended its application by disclaiming the right to the word "formula" apart from the trade-mark "FORMULA 7" as a whole.
[3] The respondent had filed a statement of opposition seeking rejection of the appellant's application on the grounds that the alleged trade-mark was confusing with the trade-mark "DIDISEVEN" and "DIDISEVEN Design". The appellant raised arguments that the decision of the Registrar of Trade-marks (the Registrar) failed to give adequate weight to the evidence before it and, in particular, there was no evidence as to how "DIDISEVEN" was used; secondly, the Registrar put too much emphasis on the number "7"; thirdly, there was not enough emphasis on the first word of the applicant's trade-mark; and fourthly, the Registrar gave little weight to the state of the register evidence.
[4] On appeal, the appellant filed an affidavit establishing that there are at least 10 registered trade-marks that incorporate the numeral "7" and at least 13 registered trade-marks that incorporate a number including a "7" for use in association with related wares. The respondent's trade-marks are registered for use in association with "all-purpose stain removers for fabric, carpets, upholstery, plastic, vinyl, ceramics and metal; all purpose cleaning, bleaching, rust and spot removing agents"; "household cleaning compounds in powder, solid, liquid, and spray forms"; and "stain removers; all purpose cleaning, bleaching, rust and spot removing agents" respectively. The respondent filed no evidence of use of its marks. In particular, the new evidence of the applicant shows the presence in the market of "MULTI-7 Magic Clean's" - an all-purpose cleaning product manufactured by 133064 Canada Inc.
[5] The applicant also filed an affidavit setting out the history, development, use and success of "FORMULA 7". There were sales figures of $700,000 for the years 1991 - 1994, television and advertising costs of $85,000 for the same time period and an elaborate television and advertising campaign to create an association between the trade-mark "FORMULA 7" and the appellant's registered trade-mark "LUSTRE 7" for use in association with car wax.
[6] The Registrar held that:
| ... the applicant has not satisfied me that there is no reasonable likelihood of confusion and the ground of opposition based on section 12(1)(d) is successful. |
Accordingly, the Registrar refused the application.
ANALYSIS
[7] Although it is settled law that the Registrar's decision as to whether two marks are confusing is to be given great weight, where I am called upon to consider material evidence not presented before the Registrar, the appeal essentially functions as a trial de novo.
[8] The appellant produced evidence showing that "MULTI-7 Magic Clean's" was a household cleanser. In my view, there is evidence to show that "MULTI-7 Magic Clean's", "DIDISEVEN" and eight other trade-marks incorporating the numeral "7" were industrial and household cleaners.
[9] The test for determining whether two trade-marks are confusing is found in subsection 6(5) of the Trade-marks Act. The Registrar held that both parties' marks are inherently distinctive as required by paragraph 6(5)(a). The Registrar also found that the wares and nature of the trade are similar as required in paragraphs 6(5)(c) and (d). The Registrar found that the length of time the marks have been in use was a factor that favoured neither party. However, there was no evidence before the Registrar concerning the use of the respondent's marks. The Federal Court of Appeal in Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at 424 held that there was evidence of the appellant using the trade-mark and no evidence with respect to the opposition's trade-mark. These were circumstances that had to be taken into consideration on the issue of confusion. With respect to paragraph 6(5)(e) and the degree of resemblance in sound, appearance and ideas suggested, the Registrar, in the case at bar, held:
| With regard to the degree of resemblance between the marks the only similarity is in the sound of the marks as both end with "seven". However, given the fact that both marks are quite short, the latter element of each mark assumes more significance than it might if the marks consisted of three or four words. There is no visual similarity between the marks but the use of the number in the marks means that each suggests the idea that the product is a strong chemical compound. |
[10] The Registrar dissected the mark where she should not have done so. She put more emphasis on the second half of the mark instead of the first half. Again, I refer to Park Avenue Furniture, supra, where the two marks in question were "POSTURE-BEAUTY" and "BABYBEAUTY". Desjardins, J.A. stated at 425:
| In stating that "the confusion is not between the word "posture" and "baby" but between "beauty" and "beauty", the trial judge segmented the trade mark. He, in effect, sought to give protection to the respondent for the word "beauty". |
| I agree with the appellant that marks are to be considered in their entirety ... |
| [footnote omitted] |
She then stated at 427:
| In the case at bar, what the trial judge had to decide was the likelihood of confusion between the marks POSTURE-BEAUTY and BABYBEAUTY taken in their entirety. He erred in dissecting the trade mark and in giving strong trade protection to the word "beauty". |
[11] Likewise, in the case here, the Registrar erred in giving strong protection to the number "7". Although the marks are not to be dissected when determining matters of confusion, it has been held that the first portion of a trade-mark is the most relevant for purposes of distinction. See Pernod Ricard v. Molson Breweries (1992), 44 C.P.R. (3d) 359 at 370 (F.C.T.D.).
[12] As part of the surrounding circumstances, the Court must consider the state of the trade-marks register and other evidence to determine whether there has been general adoption in the trade of a particular word, i.e. in this case, the word "SEVEN" or numeral "7". Again in Park Avenue Furniture Corp., supra, Desjardins, J.A. stated at 427:
| On an application to register, the presence of marks on the register, other than the one with which the comparison is being made, is a relevant circumstance to be considered by the Registrar ... [footnote omitted] |
[13] In my view the facts in Park Avenue Furniture Corp., supra, are very similar to those in the application before me and lead to the same result. As stated earlier, in the case at bar, there are at least 10 registered trade-marks that incorporate the numeral "7" and at least 13 registered trade-marks that incorporate that number including the "7" for use in association with cleansers. When the two trade-marks "DIDISEVEN" and "FORMULA 7" are looked at in their totality, in my opinion, it is clear beyond dispute that the respondent's trade-mark was not and is not confusing with the appellant's registered trade-mark. Although the marks may be weak as they incorporate the number "7", which is commonly used in household and industrial cleansers, the appellant has discharged the onus of showing there is no likelihood of confusion between the appellant's trade-mark "FORMULA 7" and the respondent's trade-mark "DIDISEVEN" and "DIDISEVEN Design" notwithstanding that they are industrial and household cleansers which are sold in the same trade. To allow the opposition would, in my view, make the respondent virtually the possessor of an exclusive property right in relation to the number "7" in respect of such products. See Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.) at 360.
[14] I adopt the prudent and well-recognized principle that where two trade-marks contain a common element that is also contained in a number of other marks in use in the same market, such a common occurrence in a market tends to cause purchasers to pay more attention to the other non-common features with respect to the marks and to distinguish them by those other features. I note that the appellant is already the owner of a trade-mark registration which incorporates the number "7", namely "LUSTRE 7", registered for use in association with car wax. I must also consider that there are related third party products on the market under trade-marks which include the number "7". As stated above, the appellant has discharged the onus on it of showing that there would be no likelihood of confusion between the appellant's trade-mark "FORMULA 7" and the respondent's trade-mark "DIDISEVEN". The appeal from the decision of the Registrar is allowed. The decision of the Registrar dated January 10, 1997 is set aside and the matter is referred back to the Registrar on the basis that Application No. 686,839 filed by the appellant for registration of the trade-mark "FORMULA 7" be granted. In view of the respondent not attending the hearing nor filing any opposing material, no costs are awarded.
___________________________________
JUDGE
OTTAWA, ONTARIO
November 14, 1997