Clarco Ltd. v. Sassy Inc.
T-2892-92
Denault J.
4/2/94
14 pp.
Application under Trade-marks Act, s. 56 appealing decision of Trade-marks Opposition Board refusing appellant's application to register trade mark "Sass" in relation to young women's magazine in 1987 -- Application refused on basis appellant did not meet onus of showing mark "Sass" distinctive of its magazine within meaning of Act, s. 38(2)(d) -- Board also decided, with respect to ground of opposition pursuant to Act, ss. 38(2)(c) and 16(3)(a), not satisfied opponent or predecessor in title used or made known trade mark "Sassy", as required by Act, s. 17(1) -- High degree of resemblance between two marks -- Legal burden remains upon appellant to show confusion does not exist and trade mark distinctive -- Whether respondent, or variously named predecessors have standing to oppose registration of trade mark "Sass" by appellant -- Act, s. 38 starting point for determination of whether Sassy may continue to oppose registration -- S. 38 providing no limitation opponent must be person who would be adversely affected by outcome of proceedings or holder of similar mark -- As Sassy or variously named predecessors "persons", specific requirements of s. 38(1) met -- Validity of substitutions of various subsequent "persons" for original opponent -- Whether substitution made on basis of alleged assignment valid or whether would lead to champerty and maintenance -- Assignment valid in view of sufficient pre-existenting commercial interest in trade mark -- Respondent had standing to oppose to registration of trade mark "Sass" and sufficient standing to continue opposition before Court -- As to distinctiveness, issue whether at material date proposed trade mark "Sass" adapted to distinguish magazines of appellant from magazine Sassy -- Relevant date for determining registrability and distinctiveness date of Opposition Board's decision -- Appellant did not prove mark distinctive both at time of filing opposition and at date of Board's decision -- Respondent failed to meet burden, under Act, ss. 16(3)(a) and 17(1), of showing predecessors in title previously used or made known confusing trade mark and mark not abandoned -- Appeal dismissed -- Trade-marks Act, R.S.C., 1985, c. T-13, ss. 16(3)(a), 17(1), 38(1) (as am. by S.C. 1992, c. 1, s. 134), (2)(b),(c),(d).