IMPULSE decision highlights importance of records retention

The Canadian Trademarks Opposition Board has upheld oppositions against the registration of two trademarks containing or consisting of the term 'impulse' (February 23 2009).

On February 12 2003 Deejay Jewellery Inc/Bijouterie Deejay Inc filed applications for the registration of the figurative trademark IMPULSE & CO (Application 1167752) and the word mark IMPULSE (Application 1167753), claiming use in Canada since June 1993 in association with, among other things, fashion jewellery.
A year later, Stravina Operating Company LLC and Impulse! ULC opposed the applications, disputing Deejay’s alleged use claim and raising confusion as a ground of opposition. Stravina and Impulse! set forth evidence of their own use of the trade name Impulse! in association with the business of manufacturing, distributing and selling jewellery and other items in Canada since 1995.
Under scrutiny, Deejay's evidence of use fell short of supporting its claimed date of use. Deejay's vague assertion that it had “coined” the term 'impulse' in 1993 was deemed to be insufficient. Moreover, the absence of sales figures to support Deejay's claimed date of first use did not help Deejay's applications. Deejay explained that it was not the business of the company to retain “the bulk of its invoices, purchase orders or advertising materials for more than six years from the date upon which they were issued or created”. However, the Trademarks Opposition Board stated that this did not explain why Deejay could not provide sales figures.
In light of this failure, the board considered that Deejay's filing date (February 12 2003) was the material date for assessing confusion. In an unusual 'loose tongues sink ships' scenario, the board had before it Deejay's admission in its counterstatement that the “opponents’ marks are confusing with [its] marks”. Unsurprisingly, the board reached the same conclusion, taking into consideration the factors set out in the Trademarks Act for assessing confusion. 
Stravina and Impulse! also alleged that Deejay's applications should fail under Section 30(i) of the act on the grounds that Deejay could not have been satisfied that it was entitled to use its marks in Canada. The board confirmed that exceptional circumstances must exist for an opponent to prevail on this ground (eg, proven bad faith on the part of the applicant).

Toni Polson Ashton, Sim & McBurney, Toronto

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