Decisions of the Registrar of Trade-marks in Opposition and Section 45 Proceedings

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Section 45

Georgio Stamatis Maillis o/a Bellagio Limousines v Mirage Resorts, Incorporated

Registrations for the trade-mark BELLAGIO partly expunged under section 45. Registration No. TMA355,865 covered (1) promotional and guest relations services namely hotel and casino reservation and booking services; (2) casinos and live entertainment services; and (3) hotels, beauty salons, and health spas. Registration No. TMA355,865 covered ladies' clothing and sportswear. The registrant is a Nevada corporation that owns the intellectual property rights associated with the Bellagio hotel and casino property located in Las Vegas, Nevada (the Bellagio Property). The relevant portions of the registrant's evidence were to the effect that substantial numbers of Canadians visit the Bellagio Property each year, and did so in large numbers during the relevant period. Furthermore, Canadians were able to make reservations at the Bellagio Property via the Bellagio Website or via the registrant's toll free Customer Care Center numbers. The Registrar found that the registrant appeared to be conflating the promotion of its hotel, casino, spa and other entertainment services with actual performance of such services. While promotion of the Bellagio Property may occur in Canada, it is not use of the mark in Canada with respect to the services unless the registrant performs or is prepared to perform the services in Canada. In this case, it was clear that the hotel and entertainment services of the Bellagio Property were performed in Las Vegas, not in Canada. The registrant only demonstrated use of the mark in association with the services (1). Registration No. TMA355,865 accordingly amended. With respect to the wares, the registrant's evidence was to the effect that the Bellagio Property features several gift shops which offer for sale and sell to visitors (including Canadian visitors) a variety of apparel for men and women, all bearing the BELLAGIO trade-mark. However, it is well established that a sale to a Canadian in the United States does not amount to use of a trade-mark in the normal course of trade in Canada. Furthermore, the purchase of wares by a consumer outside of Canada and brought into Canada for personal consumption is not use in Canada of the trade-mark in association with such wares. Registration No. TMA355,865 accordingly expunged.

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Riches, McKenzie & Herbert LLP v Cleaner's Supply, Inc

Registration for the trade-mark CLEANER'S SUPPLY partly expunged under section 45. The mark appears in association with the registered wares in catalogues that are used to order the wares and on the registrant's website. However, the affiant did not specifically state that there had been sales of each of the registered wares during the relevant time period; instead the affiant stated that the mark had been used during the relevant time period. Five invoices were provided from the relevant time period but only one of the registered wares was identified in the invoices. Offering the wares for sale is not the same as selling the wares and does not qualify as use in accordance with section 4. The registration was therefore restricted to the wares covered by the invoices.

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Opposition

Certiwood Technical Centre v Cedar Shake & Shingle Bureau

Opposition by Certiwood Technical Centre to an application to register the trade-mark CERTI-WOOD based on proposed use in association with, among other wares and services, wood shingles and shakes, and roofing services, roofing consultation, roofing contracting, roofing repair, educational services and association services promoting the interests of wood shake and shingle producers, installation contractors, roof maintenance technicians, wholesalers, distributors and brokers. Opposition rejected. The sections 30(i) and 12(1)(b) grounds of opposition were dismissed for the opponent having failed to meet its initial evidentiary burden in respect thereof. The section 16(3) and non-distinctiveness grounds of opposition were also dismissed despite the opponent having met its initial burden in respect thereof. Although the Registrar found that it was clear from the analysis of the section 6(5)(a) to (e) factors that there was a likelihood of confusion when taking into consideration the applicant's CERTI-WOOD mark per se and the opponent's trade-mark CERTIWOOD that is used to promote services directed to wood products and engineered wood products, the Registrar found that the applicant had advanced an additional surrounding circumstance that lead him to a different determination. More particularly, the Registrar found that the applicant had established the adoption and use of a family of CERTI trade-marks and that consequently the relevant consumer would be more likely to form the impression that the CERTI-WOOD mark, having the same prefix and being used for the same services, would be that of the applicant and not the opponent. Further, since these consumers would be aware of the CERTI marks in association with cedar shakes and shingles and their certification, the effect of the overlap in the nature of the trade on the likelihood of confusion (between the applicant's mark CERTI-WOOD and the opponent's mark) was minimized.

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Rothmans, Benson & Hedges, Inc v Imperial Tobacco Products Limited

Opposition by Rothmans, Benson & Hedges to applications to register Orange Package Design trade-marks based on use in association with cigarettes. Oppositions dismissed. The Registrar held that the drawings complied with section 30(h) even though there was no disclaimer with respect to the dotted outline of the packaging. The mark is not a distinguishing guise. The distinctiveness ground of opposition failed because the opponent did not meet its initial burden. The opponent evidenced minimal sales of one brand of cigarettes in an arguably orange package and some sales of other tobacco products in orange packaging; this is not sufficient to show that orange packages for tobacco products were common to the tobacco trade.

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