A recent decision in a trade mark opposition raises the issue of whether the trade mark WRANGLER used in association with clothing, footwear and accessories was sufficiently famous to preclude the applicant from obtaining the trade mark WRANGLER in association with brewed alcoholic beverages.
Famous Trade Marks
The Supreme Court of Canada recently considered the effect of fame in a trade mark opposition. The Court said that where a trade mark has become famous by virtue of the goodwill associated with it, such fame may be capable of carrying the protection available to the mark across product lines while lesser marks would be limited by the wares or services for which they are registered.
Fame is a “surrounding circumstance” of importance and differences in the wares and services will not always be the dominant consideration. A difference in the wares or services or the fame of the mark do not supersede or “trump” all other statutory factors. Each situation must be judged in its full factual context.
Not all famous marks will be able to make a jump across product lines and the difference between the respective wares and services will continue to be a significant obstacle to over come. As observed by the Court, ‘luxury champagne and mid-priced women’s wear are as different as chalk and cheese'. The fame of a mark may be quite specific because of a very specific association with a product. But a famous mark which is widely used may be able to transcend product line differences.
In this context a mistaken inference can only be drawn if a link or association is likely to arise in the consumer’s mind between the source of the famous product and the source of the less well known product. If there is no likelihood of a link, there can be no likelihood of a mistaken inference, and therefore no confusion within the meaning of the Trade-marks Act (the "Act").
The Wrangler Facts
The applicant applied to register the trade mark WRANGLER based on proposed use in association with brewed alcoholic beverages. The opponent alleged the mark was not registrable on the basis, among others, that it was confusing with the opponent’s family of famous WRANGLER trade marks. The opponent filed evidence of over 40 WRANGLER marks used extensively in Canada for many years, primarily in association with clothing.
The Statutory Factors
In considering the grounds of opposition based on confusion, the Hearing Officer observed that consideration must be given to all of the surrounding circumstances, including those listed in subsection 6(5) of the Act, including:
- the inherent distinctiveness of the trade marks and the extent to which they have become known;
- the length of time the trade marks have been in use;
- the nature of the wares and services or business;
- the nature of the trade; and
- the nature of the degree of resemblance between the trade marks in appearance or sound or in the idea suggested by them.
The Hearing Officer said, the question to be asked is whether the evidence presented demonstrated a mental association made by the consumer between the opponent’s well known trade marks and the applicant’s wares that is likely to confuse a consumer as to the source of the wares.
The Lack of Evidence
The Hearing Officer found that although the opponent’s trade marks had become well known in Canada, the fame was tied to clothing, footwear and accessories. Whether the aura of the opponent’s marks extends to the facts of a particular case is not a matter of assertion, but of evidence. The opponent did not file any evidence, such as survey evidence or other studies, in support of the contention that a mental association would be made by consumers, between the opponent’s well known mark and the applicant’s wares. Fame in itself is not sufficient to conclude that there was a reasonable likelihood of confusion in this case. The applicant is not required to show that there is no possibility that confusion may arise but that there is no reasonable likelihood that confusion will occur. As a result, the opposition was dismissed.
This decision is consistent with the decision of the Supreme Court of Canada and also the Trade-marks Opposition Board’s recent tendency to insist that detailed evidence be filed to support any decision that it is asked to make.