2010 TMOB 128 (August 17, 2010)
Overview
The Trademarks Opposition Board dismissed an opposition by an international advertising and marketing group, finding that the evidence — and in particular the appearance of the mark in articles, as opposed to advertising per se — did not demonstrate that the opponent’s mark TEQUILA was made known in Canada or was known sufficiently to negate the distinctiveness of the applicant’s mark.
Abstract
In an opposition to the registration of the mark TEQUILA for use in association with advertising, marketing and public relations agency services, the Trademarks Opposition Board ("Opposition Board") rejected all grounds of opposition pleaded by an international network of advertising and marketing agencies similarly using the mark TEQUILA. Although the opponent was found to clearly conduct substantial business around the world under the mark, there was insufficient evidence of specific advertising in Canada prior to the applicant’s date of first use, as well as insufficient evidence, in any form, that the opponent’s use of the mark rendered the applicant's mark non-distinctive in Canada as of the date of opposition.
Case summary
Facts. In April 2003, the applicant, Tequila Communications & Marketing Inc., filed an application to register the trademark TEQUILA on the basis of use in Canada since September 1993.
The opponent, Group TBWA France SA, opposed the registration of the trademark, including on the grounds that the opponent had made its trademark TEQUILA known in Canada prior to the applicant's claimed date of first use, and that the mark was not distinctive as of the date of opposition, as a result of the opponent’s prior use of the mark worldwide.
The applicant submitted evidence demonstrating its use in Canada of the trademark TEQUILA dating back to September 1993.
The opponent's evidence established that the opponent was part of an international network of related advertising and marketing agencies with some degree of common ownership. The evidence also showed that a predecessor in title began using the mark TEQUILA in France in 1985, and that the mark was subsequently used in other countries to refer to the marketing agencies in the international network. The advertising agencies, on the other hand, were branded as TBWA.
Additional evidence from the opponent constituted references to the TEQUILA marketing agencies in news articles and editorials worldwide. Promotional material depicting the TEQUILA mark and given to clients and prospective clients was also introduced. A bibliometric analysis comparing the relative international recognition of the applicant and the opponent was carried out and submitted into evidence.
Notably, a relatively small amount of evidence specific to Canada was available. This evidence consisted of two French magazines containing editorials and articles referencing the trademark with no proven Canadian subscribers, a prior business relationship between the opponent's above-noted predecessor in title and a Canadian advertising agency, the existence of high-profile global clients (with Canadian operations) of the international TEQUILA marketing agencies, claims that opportunities are available to clients of the Canadian TBWA advertising agencies to work with the international TEQUILA marketing agencies, and Canadian visitors to tequila.com.
Analysis. The Opposition Board concluded that the opponent had not met its burden of establishing that it had made its mark known in Canada as of September 1993, the applicant’s date of first use. The Opposition Board noted that under section 5 of the Trademarks Act ("Act"), services must be made known by being advertised in association with the mark in any printed publication circulated in Canada or in radio broadcasts ordinarily received in Canada. In considering the evidence submitted by the opponent, the Opposition Board noted that the submitted printed publications were insufficient for various reasons, including that the existence or extent of Canadian circulation was not proven, the references to the TEQUILA mark in articles did not constitute advertisements, and the publications did not predate September 1993.
Similarly, the Opposition Board also concluded that, as of 2004 (the opposition filing date), the opponent had not demonstrated that its mark had become sufficiently known to negate the distinctiveness of the applicant's mark. In considering this ground, the Opposition Board noted that all relevant evidence that tends to establish non-distinctiveness could be considered, and consideration was not limited to the factors enumerated in section 5 of the Act. The evidence was nevertheless found to be inadequate. Specifically, although some TEQUILA agencies had been recognized internationally, there was no evidence that such notoriety existed in Canada. The Opposition Board was also not convinced that TEQUILA would be recognized as a trademark rather than a trade name, and data pertaining to Canadian subscribers or viewers of publications and websites was inadequate.
Finally, it was held that there was no evidence that the opponent's mark was used under a license with the control required under section 50 of the Act by the major agencies in the network, and the Opposition Board therefore noted that it was arguable as to whether the use and advertising would accrue to the benefit of the opponent.
Accordingly, as the opponent did not successfully make out any ground of opposition, the Opposition Board rejected the opposition.
Conclusion
This case is a clear reminder that evidence tied specifically to Canada is required for an opponent to be successful in challenging a mark on the basis of a mark previously made known in Canada. In particular, the opponent must clearly show that the mark is made known in Canada through means such as advertisements in printed publications with evidence of substantial circulation in Canada or evidence of radio broadcasts received in Canada. The case also demonstrates the importance of establishing that a mark being used under license is used with the requisite control as required by the Act.
Keith K. Chung, Toronto