IN THE MATTER OF AN OPPOSITION by Marg Hughes to Application No. 881260 for the Trade-mark GAPFINDER filed by Blanchard Training & Development Inc.
On June 6, 1998, Blanchard Training & Development Inc., (the “Applicant”) filed an application to register the trade-mark GAPFINDER (the “Mark”), based on proposed use in association with printed materials, namely, performance assessment survey forms (the “Wares”). The application was subsequently advertised in the Trade-marks Journal on December 1, 1999, for opposition purposes.
Marg Hughes (the “Opponent”) filed on January 20, 2000, a statement of opposition. The grounds of opposition can be summarized as follow:
1. The application does not comply to the requirements of Section 30 of the Trade-marks Act (the “Act”), in that the Applicant could not have stated that it was satisfied that it was entitled to use the Mark in Canada, in association with the Wares since, at the date of filing of the application, the applicant was or should have been aware of the prior use and registration of the trade-mark GAAP owned by the Opponent, and of the prior use by the Opponent and/or its licensee Gaap Inc. of the said trade-mark in association with the services described as: executive search and management recruitment and consultation, consultation in the field of personal assessment ( the “Opponent’s services”);
2. The Mark is not registrable having regard to the provisions of Section 12(1)(d) of the Act as the Mark is confusing with the Opponent’s trade-mark GAAP, registered under No. TMA 488307 for use in association with the Opponent’s services;
3. The Applicant is not the person entitled to registration, having regard to the provisions of Section 16(3)(a) of the Act, on the ground that the Mark, as of the date of filing of the Application, was confusing with the trade-mark GAAP previously used in Canada by the Opponent and its licensee GAAP Inc. in association with the Opponent’s services; the Opponent’s trade-mark GAAP having been so used in Canada since 1975 in association with the Opponent’s services;
4. The Mark is not distinctive, within the meaning of Section 2 of the Act, as the Mark does not actually distinguish the Wares, nor is it adapted to so distinguish them from the wares and services of others, including the wares and services of the Opponent, offered in association with the trade-mark GAAP.
On March 2, 2000, the Applicant filed a counter statement denying each and every ground of opposition. The Applicant subsequently filed, on July 5, 2000, a voluntary amendment to its application disclaiming the right to the exclusive use of the word GAP apart from the Mark as a whole. The Registrar accepted such amendment.
The Opponent’s evidence consists of the affidavit of Mr. Emerson Hughes together with Exhibits EH-1 to EH-9 inclusive. The Applicant chose not to file any evidence. Both parties filed written arguments and made representations at an oral hearing.
The Opponent’s evidence
Mr. Emerson Hughes is the director and major shareholder of GAAP Inc and has been associated with its predecessor in title GAAP Financial Executives Employment Consultants Ltd. for more than 25 years. There is no information as to how GAAP Inc became the successor in title of such entity. It should be noted that Mr. Hughes’ evidence is uncontradicted and he was not cross-examined. There may be however issues of sufficiency of the evidence that will be discussed hereinafter.
GAAP Inc is the licensee of the Opponent, owner of the trade-mark GAAP, registered under number 488307, dated January 27, 1998, a copy of such certificate of registration was filed as Exhibit EH-1 to his affidavit. The Opponent is the deponent’s wife and Mr. Emerson claims that she is involved in the business of GAAP Inc, a corporate entity involved in executive search and management recruitment and consultation services rendered in association with the trade-mark GAAP. He alleges that the Opponent, directly and through him, controls the quality of the services offered by GAAP Inc in association with GAAP.
Mr. Emerson described the services offered by GAAP Inc as “ executive search and human resources management consulting and also offers consultation in the field of personnel assessment”. He alleges that the trade-mark GAAP is used and displayed in the performance of such services by GAAP Inc and has been so used and displayed since as early as 1975. To substantiate such allegation Mr. Emerson has filed a corporate brochure and a document holder on which appears the trade-mark GAAP. Unfortunately we do not have any information as to when these documents were used, by which legal entity, their means of distribution, where were they distributed and how many copies were so distributed.
He filed as Exhibit EH-4 two extracts of telephone listings on which appears the trade-mark GAAP but we do not have the publication year of these listings nor the city or area where these telephone listings were distributed. Business cards and letterhead were also filed but with no indication as to when those documents were first used and by which legal entity.
Mr. Emerson filed as Exhibit EH-7 a copy of a print-out of GAAP Inc website located at www. Gaapresearch.com. No information was provided as to when GAAP Inc started to operate a website that contains such page and how many people visited such website.
Letters from GAAP Inc’s customers were filed as Exhibit EH-8. Most of them are addressed to “GAAP”. The earliest letter is dated October 9, 1990. Finally he filed as Exhibit EH-9 cheques stubs, most of them containing a reference to GAAP. The oldest cheque is dated May 8, 1996 in payment of four (4) invoices totalling over $97,000. The invoices were not filed in the record.
Mr. Emerson alleges that GAAP Inc has generated billings, between 1993 and 2000, of more than 5 million dollars. He concludes his affidavit by stating that it is obvious to him that the Mark, if used in association with the Wares, is likely to be confused with the trade-mark GAAP when used in association with the Opponent’s services. I shall disregard such self-serving statement, as it is the Registrar’s duty to determine, from the evidence filed in the record, if there exists a likelihood of confusion between the marks in issue.
The legal issues
The material time for considering the issues of non-compliance with Section 30 of the Act is the filing date of the application (June 12, 1998) [See Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R. (3d) 469, at p. 475] as well as non-entitlement to the registration of the Mark based on Section 16(3) of the Act [Section 16 of the Act]. The material date for assessing the issue of distinctiveness is generally accepted to be the date of filing of the opposition (January 20, 2000) [see Andres Wines Ltd. and E&J Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at 424 (F.C.A)]. Finally the relevant date with respect to Section 12(1)(d) ground of opposition is the date of my decision. [See Park Avenue Furniture Corp., op. cit].
The legal burden is upon the Applicant to show that its application complies with the provisions of Section 30 of the Act, but there is however an initial evidential onus on the Opponent to establish the facts relied upon by it in support of its grounds of opposition. Once this initial onus is satisfied, the Applicant has the burden to prove that the particular grounds of opposition should not prevent registration of the Mark. [See Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., (1985) 3 C.P.R. (3d) 325, at pp. 329-330; and John Labatt Ltd. v. Molson Companies Ltd., (1990) 30 C.P.R. (3d) 293].
The Opponent has not provided any evidence to support its first ground of opposition. Therefore, such ground of opposition is dismissed.
The remaining grounds of opposition will be decided on the issue of the likelihood of confusion between the Mark and the Opponent’s trade-mark GAAP. Subsections 6(1) to 6(4) of the Act set out the test to determine if a mark is likely to cause confusion with another trade-mark or trade name. Such Subsections read as follow:
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6. (1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section. (2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. |
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(3) The use of a trade-mark causes confusion with a trade-name if the use of both the trade-mark and trade-name in the same area would Idem be likely to lead to the inference that the wares or services associated with the trade-mark and those associated with the business carried on under the trade-name are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. |
(4) The use of a trade-name causes confusion with a trade-mark if the use of both the trade-name and trade-mark in the same area would be likely to lead to the inference that the wares or services associated with the business carried on under the trade-name and those associated with the trade-mark are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
In order to determine whether the parties’ trade-marks or trade names are confusing, Subsection 6(5) of the Act directs that the Registrar is to have regard to all of the surrounding circumstances, including: i) The inherent distinctiveness of the trade-marks or trade names and the extent to which they have become known; ii) the length of time the trade-marks or trade names have been in use; iii) the nature of the wares, services, or business; iv) the nature of the trade; and v) the degree of resemblance between the trade-marks or trade names in appearance or sound or in the ideas suggested by them.
Mr. Justice Décary of the Federal Court of Appeal in Miss Universe Inc. v. Bohna [1995] 1 C.F. 614 stated:
“To decide whether the use of a trade-mark or of a trade-name causes confusion with another trade-mark or another trade-name, the Court must ask itself whether, as a matter of first impression on the minds of an ordinary person having a vague recollection of that other mark or name5*ftnote5 See Coca-Cola Co. v. Pepsi-Cola Co. (1942), 2 D.L.R. 657 (P.C.), at p. 661, Lord Russell of Killowen, the use of both marks or names in the same area in the same manner is likely to lead to the inference that the services associated with those marks or names are performed by the same person, whether or not the services are of the same general class.6*ftnote6 See s. 6(2),(3) and (4) of the Act; Rowntree Company Limited v. Paulin Chambers Company Limited et al., [1968] S.C.R. 134; Oshawa Holdings Ltd. v. Fjord Pacific Marine Industries Ltd. (1981), 55 C.P.R. (2d) 39 (F.C.A.); Mr. Submarine Ltd. v. Amandista Investments Ltd., [1988] 3 F.C. 91 (C.A.), at p. 99, Thurlow C.J.; and Canadian Schenley Distilleries Ltd. v. Canada's Manitoba Distillery Ltd. (1975), 25 C.P.R. (2d) 1 (F.C.T.D.), at p. 12, Cattanach J.
(…)
The onus is always upon an applicant for the registration of a trade-mark to establish that, on the balance of probabilities, there is no likelihood of confusion with a previously used and registered trade-mark.7*ftnote7 See Sunshine Biscuits, Inc. v. Corporate Foods Ltd. (1982), 61 C.P.R. (2d) 53 (F.C.T.D.), at p. 57, Cattanach J. and Molnlycke Aktiebolag v. Kimberly-Clark of Canada Ltd. (1982), 61 C.P.R. (2d) 42 (F.C.T.D.), at p. 46, Cattanach J.”
Mr. Justice Décary also stated in the case of Christian Dior, S.A. v. Dion Neckwear Ltd, [2002] 3 C.F.405:
«…the Court is to put itself in the position of an average person who is familiar with the earlier mark but has an imperfect recollection of it; the question is whether the ordinary consumer will, on seeing the later mark, infer as a matter of first impression that the wares with which the second mark is used are in some way associated with the wares of the earlier…
The Registrar must therefore be reasonably satisfied that, on a balance of probabilities, the registration is unlikely to create confusion; he need not be satisfied beyond doubt that confusion is unlikely. Should the "beyond doubt" standard be applied, applicants would, in most cases, face an unsurmountable burden because certainty in matters of likelihood of confusion is a rare commodity. At best, it is only where the probabilities are equal that a form of doubt may be said to arise, which is to be resolved in favour of the opponent. But the concept of doubt is a treacherous and confusing one in civil proceedings and a registrar should avoid resorting to it.»
The difference in the relevant dates of the remaining grounds of opposition will not have an impact on the outcome of my analysis of the surrounding circumstances to determine if there exists, on a balance of probabilities, any likelihood of confusion between the Mark and the Opponent’s trade-mark GAAP.
I shall therefore apply the abovementioned principles to the evidence filed in the record in order to determine if the Applicant has discharged its burden to prove that the Mark, when used in association with Wares, is not likely to cause confusion with the Opponent’s trade-mark GAAP.
i) The inherent distinctiveness of the trade-marks or trade names and the extent to which they have become known;
The Opponent is arguing that its trade-mark GAAP is inherently distinctive and has become known in Canada because of its use. Not surprisingly, the Applicant is arguing that the Opponent’s trade-mark is of extremely low inherent distinctiveness since GAAP is a well-known acronym for “ Generally Accepted Accounting Principles”. The Opponent has referred to extracts of various dictionaries and the Applicant has not objected to the filing of such extracts. I shall therefore accept such evidence in the record. In any event, I could have referred myself to dictionaries. [See Molson Breweries, a partnership v. John Labatt Ltd, 3 C.P.R.(4th) 543 and Insurance Co. of Prince Edward Island v. Prince Edward Island Insurance Co. (1999) 2 C.P.R.(4th) 103]. There is however no evidence in the record that an average consumer would recognize such acronym that may be well known to accountants. [See ITV Technologies, Inc v. WIC Television Ltd (2004) 29 C.P.R. (4th) 182] All that I can conclude at this stage is that GAAP is an acronym that has found its way in some English dictionaries. Despite such fact, the trade-mark GAAP does have some degree of inherent distinctiveness when used in association with the services described as: executive search and management recruitment and consultation, consultation in the field of personal assessment. The description of the Opponent’s services does not lead me to conclude that they are related to accounting services.
The Applicant’s trade-mark GAPFINDER is a coined word composed of the English words “gap” and “finder”. The Mark has some degree of inherent distinctiveness when used in association with performance assessment survey forms.
I therefore conclude that this factor does not favour either parties.
With respect to the extent to which the trade-marks in issue have become known, there is no evidence of use of the Mark by the Applicant filed in the Record. The Applicant argued that the Opponent has adduced no clear evidence demonstrating use of its trade-mark GAAP in Canada. The Applicant based its conclusion on the following facts:
a) To the extent that there is any evidence of use of the mark GAAP, such use was made by a different legal entity than the Opponent, the registered owner of the trade-mark GAAP;
b) The Opponent failed to disclose how it controls the quality of the services provided by GAAP Inc in association with the trade-mark GAAP;
c) The mere facts that the Opponent is the wife of the deponent and that she is involved in the business of GAAP Inc, without detailing such involvement are insufficient to meet the requirements of Section 50 of the Act to enable the Opponent to benefit from the provisions of such section and be deemed to have use the mark GAAP.
The Opponent is arguing that since the Opponent is involved in the company that uses the mark GAAP and there exists a husband and wife relationship between the owner of such mark and the major shareholder of the company that uses it, the criteria set forth at Section 50 of the Act are met. To support such contention, the Opponent refers to the case of Smart & Biggar v. Powers (2001) 16 C.P.R. (4th) 276.
This citation is easily distinguishable. The affiant was the owner of the mark in issue and president and sole shareholder and only employee of the company. Under these circumstances the Trade-marks Senior Hearing Officer had no difficulty in concluding that the company’s use of the mark was made under oral license or under an arrangement that was tantamount to an oral license and that the mark remained under direct control of the owner of the mark. The business cards filed as Exhibit EH-5 (none include the Opponent or Mr. Emerson) reveal that there is more than one employee providing the services offered by the Opponent. There is no explanation as to the scope of involvement of the Opponent in GAAP Inc. to enable me to infer that there are some controlled activities exercised by the Opponent in the performance of the services in association with the trade-mark GAAP. Therefore, I cannot conclude that the evidence of use of the mark GAAP by GAAP Inc, filed in the record by Mr. Emerson, should be considered as deemed use of such mark by the Opponent in virtue of the provisions of Section 50 of the Act.
As such this factor does not favour either parties.
ii) The length of time the trade-marks or trade names have been in use
I already determined that the Opponent has not provided proper evidence establishing use of the trade-mark GAAP that would be deemed use by the owner of the mark under the provisions of Section 50 of the Act. The Applicant has not provided any evidence of use of the Mark. Therefore, such factor does not favour any of the parties.
iii) The nature of the wares, services, or business; and
iv) The nature of the trade
I agree with the Opponent’s position that I cannot limit my analysis of such factors to the present use of the trade-mark GAAP. I must take into consideration the description of the Wares in the Applicant’s application versus the description of the Opponent’s services described in the certificate of registration TMA 488307 and determine if there is an overlap in the nature of the wares and services. [See Multiplicant Inc. v. Petit Bateau Valton S.A. (1994) 55 C.P.R. (3d) 372 and William H. Kaufman Inc v. North American Design Workshop Inc, (1995) 61 C.P.R. (3d) 259] A broad and yet reasonable interpretation of the description of the Wares can lead to the conclusion that there exists a possibility that the Applicant’s survey forms could be used in the assessment of personnel. Finally the Applicant did not restrict its application to any specific channels of trade. It is the Applicant’s statement of wares/services and the Opponent’s statement of wares/services in its registration that govern the present analysis. [See Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 at 10‑11 (F.C.A.); Henkel Kommadnitgellschaft v. Super Dragon (1986), 12 C.P.R. (3d) 110 at 112 (F.C.A.); Miss Universe Inc. v. Dale Bohna (1994), 58 C.P.R. (3d) 381 at 390‑392 (F.C.A.)]. Finally the Applicant has not adduced any evidence to demonstrate that the Wares would be sold through different channels of trade.
I conclude that there would exist an overlap in the nature of Wares and the Opponent’s services described in registration TMA 488307. There would also be an overlap in the parties’ respective trades. Therefore these surrounding circumstances favour the Opponent.
v) The degree of resemblance between the marks in issue
The marks must be viewed in their totalities. It is not a proper approach to dissect the trade-marks into their respective components and thereafter analyze their similarities to conclude that, as a whole, the trade-marks are confusing. [See Sealy Sleep Products Ltd. v. Simpson Sears Ltd. (1960), 33 C.P.R. 129]
In Pernod Ricard v.Molson Breweries (1992), 44 C.P.R. (3d) 359, Mr. Justice Denault of the Federal Court stated:
“Although the marks are not to be dissected when determining matters of confusion, it has been held that the first portion of a trade mark is the most relevant for purposes of distinction: Molson Companies Ltd. v. John Labatt Ltd. (1990), 28 C.P.R. (3d) 457 at p. 461, 32 F.T.R. 152, 19 A.C.W.S. (3d) 1369 (F.C.T.D.); Conde Nast Publications Inc. v. Union Des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.) at p. 188. I believe the following words of President Thorson in the case of British Drug Houses Ltd. v. Battle Pharmaceuticals (1944), 4 C.P.R. 48 at pp. 57-8, [1944] 4 D.L.R. 577, [1944] Ex. C.R. 239 (Ex. Ct.), to be particularly useful in explaining why attention should be drawn to the first portion of the appellant's mark in this case:
... the Court should rather seek to put itself in the position of a person who has only a general and not a precise recollection of the earlier mark and then sees the later mark by itself; if such a person would be likely to think that the goods on which the later mark appears are put out by the same people as the goods sold under the mark of which he has only such a recollection, the Court may properly conclude that the marks are similar.
In my view, the average consumer of ordinary intelligence, experiencing imperfect recollection, might not be particularly alerted to the distinction between the respondent's mark and the first word of the appellant's mark. Consequently, I feel that there is a potential for consumers believing that the respondent has launched a new product to which it has added the identifier "red" for the purpose of distinguishing it from its other products.”
In the present case the Applicant has taken the Opponent’s trade-mark as the first syllable of the Mark and add the word “FINDER”. The Applicant argues in its written submissions that the public would pronounce differently the words GAAP and GAP. I don’t have any evidence in the record to support such position. In the absence of such evidence I shall presume that they would be pronounce the same way by the average consumer.
The Applicant has tried to introduce state of the Register evidence in its written submissions by listing a number of registrations (4) and applications (3) that contain the word GAP as an element of those trade-marks. I shall disregard such “evidence” as having not been properly introduced. In any event I note that only three (3) marks would be relevant which is far from being a sufficient number to even consider that GAP is a common element of trade-marks used in the trade. [See Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432 (T.M.O.B.), Welch Foods Inc. v. Del Monte Corp. (1992), 44 C.P.R. (3d) 205 (F.C.T.D.) and Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.)]
As in the case of Pernod Ricard op. cit., I believe that a consumer who is aware of the Opponent’s trade-mark GAAP used in association with the Opponent’s services could reasonably believe that the Wares sold in association with the trade-mark GAPFINDER is a new product put on the market by the Opponent and it has used the word “FINDER” to distinguish such product from its existing services of consultation in the field of personnel assessment.
My analysis of the surrounding circumstances leads me to conclude that the Applicant has not discharged its burden to prove, on a balance of probabilities, that the Mark is not likely to cause confusion with the Opponent’s registered trade-mark GAAP. I therefore maintain the second ground of opposition described above.
Even though my conclusion on the second ground of opposition is sufficient to dispose of the matter I would like to make the following comments on the third and fourth ground of opposition. The Opponent has adduced no valid evidence of use in Canada of the trade-mark GAAP prior to the date of filing of the present opposition (being the latest relevant date with respect to these two grounds of opposition) for the reasons outlined above, and as such I would dismiss these grounds of opposition.
Accordingly, having been delegated authority by the Registrar of Trade-marks by virtue of Section 63(3) of the Act, I refuse the Applicant’s amended application to register the Mark pursuant to Subsection 38(8) of the Act.
DATED, IN MONTREAL, QUEBEC, THIS 29th DAY OF MARCH 2004.
Jean Carrière
Trade-marks Opposition Board