LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 189
Date of Decision: 2010-11-09
IN THE MATTER OF AN OPPOSITION by “K” Line America, Inc. to application No. 1,313,161 for the trade-mark Total Logistics Group of Companies in the name of Total Logistics Control Inc.
[1] On August 10, 2006, Total Logistics Control Inc. (the Applicant) filed an application to register the trade-mark Total Logistics Group of Companies (the Mark). The application is based upon use of the Mark in Canada since at least as early as January 2003 in association with the following services:
1) freight transportation services, namely, air, rail, truck, water;
2) freight distribution services;
3) freight warehousing services.
[2] The Applicant has disclaimed the right to the exclusive use of the word LOGISTICS apart from the Mark.
[3] The application was advertised for opposition purposes in the Trade-marks Journal of August 8, 2007.
[4] On October 2, 2007, “K” Line America, Inc. (the Opponent) filed a statement of opposition, which pleaded the following grounds of opposition pursuant to the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act):
1) s. 30(b) – the application does not conform to the requirements of s. 30(b) in that the Mark had not been used in Canada since at least as early as January 2003 in association with freight transportation services namely, air, rail, truck, water; freight distribution services; freight warehousing services, as alleged;
2) s. 12(1)(b) – the Mark is not registrable in that it is either clearly descriptive or deceptively misdescriptive in the English language of the character or quality of freight transportation, distribution and warehousing services which are performed by a group of companies who provide complete logistics relating to same;
3) s. 2 – the Mark neither distinguishes nor is adapted so to distinguish the Applicant’s freight transportation, distribution and warehousing services from the total logistics services performed by one or more groups of companies unrelated to the Applicant in their respective capacities as either carrier-related logistics providers which includes the Opponent herein, or as third-party logistics providers.
[5] The Applicant filed and served a counter statement in which it denied the Opponent’s allegations.
[6] In support of its opposition, the Opponent filed an affidavit of Michael T. Brown, a law student. In support of its application, the Applicant filed an affidavit of Ches Nadeau, its President and founder. No cross-examinations were conducted.
[7] Only the Opponent filed a written argument. An oral hearing was not requested.
Onus
[8] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist [see John Labatt Limited v. The Molson Companies Limited (1990), 30 C.P.R. (3d) 293 (F.C.T.D.) at 298].
Section 12(1)(b) Ground of Opposition
[9] The issue as to whether the Mark is clearly descriptive must be considered from the point of view of the average purchaser of the associated services. Furthermore, the Mark must not be dissected into its component elements and carefully analyzed but must be considered in its entirety as a matter of immediate impression [see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks, 40 C.P.R. (2d) 25 at 27-8 (F.C.T.D.); Atlantic Promotions Inc. v. Registrar of Trade Marks, 2 C.P.R. (3d) 183 at 186 (F.C.T.D.)]. Character means a feature, trait or characteristic of the product and “clearly” means “easy to understand, self-evident or plain” [see Drackett Co. of Canada Ltd. v. American Home Products Corp. (1968), 55 C.P.R. 29 at 34 (Ex. Ct.)].
[10] The material date for assessing descriptiveness is the date of filing of the application [see Shell Canada Limited v. P.T. Sari Incofood Corporation (2005), 41 C.P.R. (4th) 250 (F.C.)].
[11] The Opponent has introduced substantial evidence of third parties using the phrase “total logistics” in the Applicant’s field. However, that evidence all postdates the material date.
[12] The Opponent also relies on the fact that the Applicant’s President states that the Mark “is used to describe the Applicant and its sister companies”. However, that statement on its own may not meet the Opponent’s initial onus since the Applicant’s President did not say that the Mark clearly describes the Applicant and its sister companies.
[13] Nevertheless, the Opponent’s initial burden with respect to this ground may be met simply by reference to the ordinary dictionary meaning of the words in the Mark [see Flowers Canada/Fleurs Canada Inc. v. Maple Ridge Florist Ltd. (1998), 86 C.P.R. (3d) 110 (T.M.O.B.)]. It does not matter that the Opponent has not filed any evidence of dictionary meanings since judicial notice may be taken of dictionary meanings [see Insurance Co. of Prince Edward Island v. Prince Edward Island Mutual Insurance Co. (1999), 2 C.P.R. (4th) 103 (T.M.O.B.); Envirodrive Inc. v. 836442 Canada Inc. 2005 CarswellAlta 1605]. In this regard, I have noted that The Oxford Dictionary of English (2nd edition revised) defines “logistics” as “the detailed organization and implementation of a complex operation…”
[14] Based on the ordinary meanings of the words that make up the Mark, I am satisfied that the ordinary consumer of the Applicant’s services would immediately understand, upon seeing the Mark, that the freight services will be performed by a group of companies that will provide everything that is needed in the way of logistics for the movement/storage of freight. In other words, the Mark is clearly descriptive of the character and quality of the applied-for services. As stated by the Opponent in its written argument, the Mark clearly describes “the character or quality of freight transportation, distribution and warehousing services which are performed by a group of companies who provide complete (total) logistics relating to same.”
[15] The Opponent has satisfied its initial burden but the Applicant has not presented any evidence or argument to establish that the Mark does not offend s. 12(1)(b). The Applicant has accordingly not met its legal burden and the s. 12(1)(b) ground of opposition succeeds.
[16] As an aside, I note that the clearly descriptive nature of the words “total logistics” is further born out by the various generic uses of that term located by Mr. Brown, albeit after the material date.
Section 30(b) Ground of Opposition
An opponent’s evidential burden respecting the issue of non-conformance with s. 30(b) of the Act is light [see Tune Masters v. Mr. P's Mastertune Ignition Services Ltd. (1986), 10 C.P.R. (3d) 84 at 89 (T.M.O.B.)]. Its evidential burden can be met by reference to the applicant's own evidence, provided that the applicant’s evidence is ‘clearly’ inconsistent with the claims set forth in its application [see Labatt Brewing Co. v. Molson Breweries, a Partnership (1996), 68 C.P.R. (3d) 216 at 230 (F.C.T.D.); Williams Telecommunications Corp. v. William Tel Ltd.(1999), 4 C.P.R. (4th) 107 (T.M.O.B.)].
[18] The Opponent has submitted:
The Applicant’s own evidence indicates that the Applicant, Total Logistics Control Inc., was created as a result of an amalgamation of two companies... The date of the amalgamation is January 1, 2004 (see Exhibit “A” to the affidavit of Mr. Ches Nadeau). Since the Applicant did not legally exist as a corporation until January 1, 2004, it is impossible for the Applicant to have used the mark since at least as early as January 2003, as alleged.
The Applicant does not list any predecessors-in-title in the application particulars and therefore it cannot rely on any use, if applicable, by either of the predecessor companies...
[19] However, an amalgamation is treated like a name change, rather than as an assignment, with the result that it is not necessary to include amalgamating companies as predecessors. As stated by Board Member Martin in Molson Breweries, a Partnership v. John Labatt Ltd. (1994), 56 C.P.R. (3d) 107 (T.M.O.B.) at page 113:
…an amalgamation does not constitute a transfer or an assignment of trade mark rights; such rights simply continue as the property of the amalgamating corporations in the amalgamated corporation. There is no specific transfer of rights from one separate entity to another.
…
Since an amalgamating corporation and an amalgamated corporation are not separate entities, it follows that an amalgamating corporation is not a predecessor in title for the purposes of s. 30(b) of the Act and does not need to be named in a trade mark application where the amalgamated corporation is claiming use through the amalgamating corporation. It would seem that the amalgamation situation is more analagous [sic] to a corporate change of name than a transfer or an assignment where the transferor or assignor is a separate entity and must be named as a predecessor in title.
[20] Therefore the Applicant’s evidence is not clearly inconsistent with the use claim in the application and the s. 30(b) ground is dismissed.
Section 2 Ground of Opposition
[21] The material date for assessing distinctiveness is the date of filing of the opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.)].
[22] To the extent that this ground is based on the use of “total logistics” and similar words by others, it is dismissed since there is no evidence of such use prior to October 2, 2007. To the extent that it is based on the Mark being clearly descriptive, it succeeds for reasons similar to those set out under my discussion of the s. 12(1)(b) ground.
Disposition
[23] Pursuant to the authority delegated to me under s. 63(3) of the Act, I refuse the application pursuant to s. 38(8) of the Act.
______________________________
Jill W. Bradbury
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office