T-976-91
Miss Universe, Inc. (Opponent/Appellant)
v.
Dale Bohna (Applicant/Respondent)
INDEXED AS.' MISS UNIVERS4 INC V. ROIINA (T.D.)
Trial Division, Strayer J.—Ottawa, June 23 and July
3, 1992.
Trade marks — Registration — Appeal from Registrar's
rejection of opposition to registration of trade mark "Miss
Nude Universe" — Opponent owning trade mark "Miss Uni
verse" for use in association with various wares — Trade
marks Opposition Board refused application in respect of
wares (women's clothing), but rejected opposition in respect of
services (operation of beauty pageant) — Finding likelihood of
confusion as to wares but not as to services — Not dealing with
opposition based on s. 38(2)(a) and (c) — Found opposition
based on s. 38(2)(d) (applicant's trade mark not distinctive)
not complying with s. 38(3)(a) (statement of opposition to set
out grounds of opposition in sufficient detail to enable appli
cant to reply thereto) because opponent not identifying own
wares and services — Holding trade mark incorporating word
"nude" not prohibited by s. 9(1)(j) (trade mark consisting of
word with immoral connotations) — Appeal dismissed —
Opposition should not be rejected on technicalities if no
prejudice caused to applicant — Applicant well aware of
nature of opponent's services — No likelihood of confusion
between trade marks in relation to services — "Miss Nude
Universe" pageants to be held in public drinking establish
ments — Candidates "professional dancers who entertain in
the nude" — Pageants unlikely to become known outside
immediate area of drinking establishments nor patronized by
anyone other than those devoted to "adult entertainment"
1988 "Miss Universe" pageant watched on television by 600
million viewers — Host sites pay up to $750,000 to obtain pag
eant and benefit from publicity — Sponsor paid $2,250,000 for
broadcasting rights — Strict conditions for contestants and
winners — Only most unthinking would assume opponent
licensed Miss Nude Universe pageants — Word "Nude" of
arresting significance conveying to all but most indifferent
reader profound difference between contests — Applicant's
trade mark distinctive — "Nude" acceptable adjective — Pub
lic would not view it as taking on "scandalous, obscene or
immoral" character.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6(5), 9(1)(j),
38(2)(a),(c),(d),(3)(a),(4).
CASES JUDICIALLY CONSIDERED
REFERRED TO:
Seagram (Joseph E.) & Sons Ltd. v. Seagram Real Estate
Ltd. (1984), 3 C.P.R. (3d) 517 (T.M. Opp. Bd.); Confrérie
des Chevaliers du Tastevin v. Dumont Vins & Spiritueux
Inc. (1991), 35 C.P.R. (3d) 189 (T.M. Opp. Bd.); Stan
dard Continental Real Estate Inc. v. First Continental
Realty Inc. (1991), 38 C.P.R. (3d) 277 (T.M. Opp. Bd.);
Sun Squeeze Juices Inc. v. Shenkman (1990), 34 C.P.R.
(3d) 467 (T.M. Opp. Bd.).
APPEAL from decision of Registrar of Trade
marks rejecting opposition to registration of the trade
mark "Miss Nude Universe" (Miss Universe, Inc. v.
Bohne [sic] (1991), 36 C.P.R. (3d) 76 (T.M. Opp.
Bd.)). Appeal dismissed.
COUNSEL:
Adele J. Finlayson and Fiona K. Orr for
opponent/appellant.
Garl W. Saltman for applicant/respondent.
SOLICITORS:
Shapiro, Cohen, Andrews, Finlayson, _Ottawa,
for opponent/appellant.
Garl W. Saltman, Calgary, for appli-
cant/respondent.
The following are the reasons for judgment ren
dered in English by
STRAYER J.:
Relief Requested
The opponent/appellant (hereinafter "opponent")
appeals from a decision of the Registrar of Trade
marks of March 8, 1991 [(1991), 36 C.P.R. (3d) 76
(T.M. Opp. Bd.)] in which the Registrar rejected the
opponent's opposition to the registration of the trade
mark "Miss Nude Universe" of the applicant
/respondent (hereinafter "applicant"). The opponent
further requests that the Registrar be directed to
refuse to allow application no. 545,313 for the said
trade-mark to go to allowance.
Facts
The applicant, a Calgary businessman, filed his
application to register the trade-mark "Miss Nude
Universe" on July 2, 1985, to be used in connection
with wares described as "ladies' and girls' clothing
namely: T-shirts, blouses, slacks"; and with respect to
services described as "entertainment namely: those
services associated with the operation of a beauty
pageant". The opponent filed a statement of opposi
tion on October 7, 1987. It is unnecessary to go into
all the details of the statement of opposition: suffice it
to say that the opponent alleged confusion with the
opponent's trade-marks "Miss Universe" number
154,443 and number 264,305, both being previously
registered relating to various wares. The statement of
opposition also alleged confusion with another Miss
Universe trade-mark applied for as number 545,966.
It appears that this application was for a trade-mark
related to services such as beauty pageants but it was
not filed until July 11, 1985 after the filing of the
applicant's application for trade-mark "Miss Nude
Universe". The statement of opposition also alleged
in broad terms that the trade-mark "Miss Nude Uni
verse" would be confusing with the trade-mark "Miss
Universe" and the trade-name "Miss Universe, Inc."
which had been used in Canada by the opponent prior
to the filing of the applicant's application.
The statement of opposition also alleged that the
trade-mark "Miss Nude Universe" is not distinctive
of the wares of the applicant. Further it stated that
registration of the trade-mark "Miss Nude Universe"
is prohibited by paragraph 9(1)(j) of the Trade-marks
Act [R.S.C., 1985, c. T-13] as being a "scandalous,
obscene or immoral word or device".
The member of the Trade-marks Opposition Board
(hereinafter "member") refused the application in
respect of the wares but rejected the opposition in
respect of the services. Concerning the allegation of
confusion with the opponent's registered trade
marks, which were confined to wares, the member
found a high degree of resemblance between the
trade-marks, but in particular referred to the similar
ity of the wares and the probable overlap in the chan
nels of trade in finding that there was a likelihood of
confusion. She could not find any likelihood of con
fusion between the applicant's services, namely the
Miss Nude Universe beauty contest, and the oppo
nent's wares. Having found possible confusion
between the applicant's trade-mark and the oppo
nent's registered trade-marks in respect of the wares
of each, the member thought it was unnecessary to
deal with the opposition based on paragraphs
38(2)(a) and (c) of the Trade-marks Act with respect
to confusion in relation to a previously used trade
mark or trade-name of the opponent. With respect to
the ground of opposition based on paragraph
38(2)(d), that the applicant's trade-mark is not dis
tinctive, the member noted that the opponent alleged
that the applicant's trade-mark does not actually dis
tinguish the applicant's wares in association with
which it is intended to be used from the wares and
services of the opponent, but did not identify its own
wares and services. She found that this ground of
opposition did not comply with the provisions of par
agraph 38(3)(a) of the Act which requires that:
38....
(3) A statement of opposition shall set out
(a) the grounds of opposition in sufficient detail to enable
the applicant to reply thereto ....
She considered that it was not reasonable to expect
the applicant to infer what were the opponent's ser
vices and since the opponent had not amended its
statement of opposition she held that this ground of
opposition could not succeed. With respect to the
ground of opposition based on paragraph 9(1)(j), that
the trade-mark "Miss Nude Universe" consists "of a
word with immoral connotations" she held that in the
absence of evidence to the contrary she could not
conclude that a trade-mark incorporating the word
"nude" is a mark prohibited by paragraph 9(1)(j) of
the Act.
The opponent appeals that decision.
Issues
The essential issues for me to decide are:
(1) Did the member err in refusing, on the grounds of
paragraph 38(3)(a) of the Trade-marks Act, to con
sider whether the applicant's trade-mark used in asso
ciation with its wares or services would be confusing
with the opponent's services?; and
(2) If so, is there a likelihood of confusion?; and
(3) Is registration of the applicant's trade-mark pro
hibited by paragraph 9(1)(j)?
Conclusions
I am satisfied that the member erred in refusing to
consider the question of confusion with the oppo
nent's services on the grounds that the opponent had
not identified any services in its statement of opposi
tion contrary to paragraph 38(3)(a). It should first be
noted that the applicant did not raise this objection in
its counter-statement nor, apparently, at the hearing
before the member. Nor did the Registrar think it
necessary to reject the statement of opposition pursu
ant to subsection 38(4) prior to the hearing. Further,
there is substantial jurisprudence in the Trade-mark
Office to the effect that an opposition should not be
rejected on technicalities if no prejudice has been
caused to the applicant.' Instead, it is apparent from
the applicant's response to the opposition and from
material filed on appeal that the applicant was quite
well aware of the nature of the services of the oppo
nent. Nor did counsel for the applicant urge this defi
ciency before me as a ground for rejecting the oppo
sition. I therefore consider, being free to take into
account all evidence before the member and now
before the Court, that I should address the question of
possible confusion as between the two trade-marks
"Miss Universe" and "Miss Nude Universe" in rela
tion to the services of the two parties. In doing so, I
have the advantage of more evidence than did the
member. The applicant filed no evidence before the
member but has now filed two affidavits describing
its services and the nature of its business. The oppo
nent has also filed extensive evidence concerning the
nature of its services.
Having regard to all the surrounding circumstances
including the indicia of confusion described in sub
section 6(5) of the Act, I have come to the conclusion
that there is no serious likelihood of confusion as
between the two trade-marks in association with the
services of the applicant, on the one hand, and the
services of the opponent, on the other. With respect to
the criteria in paragraphs 6(5)(a) and (b) of the Act,
there was certainly reason to find that the trade-mark
"Miss Universe" has acquired a considerable distinc
tiveness and it has been in use for over thirty years
compared to the very little use to date of the appli
cant's trade-mark. However, with respect to
paragraphs 6(5)(c) and (d) concerning the nature of
the services and of the trade in which the two are
engaged, the evidence is clear that there is a vast dif
ference between the applicant's services and those of
the opponent. With respect to the existing or antici-
1 See e. g. Seagram (Joseph E.) & Sons Ltd. v. Seagram
Real Estate Ltd. (1984), 3 C.P.R. (3d) 517 (T.M. Opp. Bd.);
Confrérie des Chevaliers du Tastevin v. Dumont Vins & Spiri-
tueux Inc. (1991), 35 C.P.R. (3d) 189 (T.M. Opp. Bd.); Stan
dard Continental Real Estate Inc. v. First Continental Realty
Inc. (1991), 38 C.P.R. (3d) 277 (T.M. Opp. Bd.); Sun Squeeze
Juices Inc. v. Shen/man (1990), 34 C.P.R. (3d) 467 (T.M. Opp.
Bd.).
pated services to be provided in connection with the
trade-mark "Miss Nude Universe", the evidence is
that there are or will be pageants held in various pub
lic drinking establishments to choose candidates for
Miss Nude Universe, the final choice for 1992 to take
place at an Edmonton hotel in November. The evi
dence is uncontested that the candidates are and will
be "professional dancers who entertain in the nude".
It is the intention of the applicant to license Miss
Nude Universe preliminary contests to hotels in
major cities across Canada and the United States that
offer exotic dancing. There was no suggestion that
these pageants are likely to become known outside of
the immediate area of the drinking establishments nor
patronized by anyone other than those devoted to
"adult entertainment".
On the other hand the evidence is that the principal
"services" offered by the opponent is an annual Miss
Universe pageant held in various places around the
world. The evidence pertaining to the pageant as of
about 1988 indicates that it is normally watched by
some 600 million viewers on television in many
countries occupying two hours of prime time. "Host
sites", vie for the presence of the pageant and pay up
to $750,000 U.S. to obtain it. In return the host site
gets substantial advantages in publicity. As of that
time, Procter & Gamble was paying $2,250,000 for
rights to broadcast the pageant, presumably for pub
licity purposes, and various corporations provided
prizes and goods for the contestants. The conditions
which Miss Universe contestants must meet seem
somewhat more stringent than those for Miss Nude
Universe: Miss Universe contestants must be
between the ages of 17 and 25, never married, and
never pregnant. During the pageant there is a detailed
system of chaperones and strict control on the candi
dates' costumes and comportment. The winner is
expected to live during the year of her "reign" with
certain decorum and her activities are carefully
arranged by the opponent. She spends at least part of
her time promoting the products of various sponsors
of the contest. These facts, while not all necessarily
known to the public, underline the vast difference in
ambiance between the annual Miss Universe pag-
eants and the numerous Miss Nude Universe contests
in bars and taverns.
While Miss Nude Universe appears for our pur
poses to be essentially a Canadian enterprise, that of
the opponent is U.S. based. There was no clear evi
dence that the Miss Universe pageant had ever been
held in Canada although there has apparently been
one Miss Canada chosen as Miss Universe. There is
considerable evidence of coverage in publications
circulating in Canada of the pageant and of the vari
ous contestants and winners over the years. There is
also some evidence of substantial numbers of Canadi-
ans watching the pageant on U.S. networks with one
Canadian station also carrying it.
All things considered, I believe that the applicant
has sufficiently met the onus on it of showing that
there is no probability of confusion between the ser
vices of the opponent and those of the applicant. Nor
are there any special circumstances to suggest that
any but the most unthinking would assume that Miss
Universe Inc. had licensed the sort of performances
in bars and taverns which may come to be described
as Miss Nude Universe pageants. Therefore the
nature of the services and the trade in question are of
such strong difference as to overcome other possible
causes for confusion.
Further, while the two trade-marks have two words
in common, my first impression when looking at the
two is that the word "Nude" in the middle of the
applicant's trade-mark is of an arresting significance
which would convey to all but the most indifferent
reader a profound difference between the two con
tests. Therefore the applicant's trade-mark is distinc
tive.
While it was not clear to me whether the opponent
in its appeal is also still asserting possible confusion
between the applicant's wares and the opponent's
services, for the reasons I have given I would find, a
fortiori, no likelihood of such confusion.
With respect to the ground of opposition that "Miss
Nude Universe" contains a word with immoral con
notations, there is no sufficient evidence to support
such a finding. By itself the word "nude" is a per
fectly acceptable adjective and I am not satisfied that
the public at large would view it in this context as
taking on a "scandalous, obscene, or immoral" char
acter. In this I respectfully agree with the member.
In the result the appeal is therefore dismissed, with
costs to be paid by the opponent/appellant.
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