LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2016 TMOB 65
Date of Decision: 2016-04-26
IN THE MATTER OF AN OPPOSITION
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iRemit Incorporated |
Opponent |
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and |
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ABS-CBN Global Remittance Inc. |
Applicant |
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1545999 for MYREMIT
A KAPAMILYA SERVICE OF TFC |
Application |
Overview
[1] iRemit Incorporated opposes registration of the trade-mark MYREMIT A KAPAMILYA SERVICE OF TFC (the Mark) that is the subject of application No. 1545999 filed by ABS-CBN Global Remittance Inc.
[2] Filed on September 30, 2011, the application is based on proposed use of the Mark in Canada in association with money remittance and bill pay services. The Applicant claims a priority filing date of April 7, 2011, based on U.S. trade-mark application No. 85/289,401 used in association with the same services.
[3] The Opponent alleges that: (i) the application does not conform to the requirements of section 30(a) of the Trade-marks Act, RSC 1985, c T-13 (the Act); (ii) the Mark is not registrable under sections 12(1)(b), 12(1)(c) and 12(1)(d) of the Act; (iii) the Applicant is not the person entitled to the Mark under sections 16(3)(a),16(3)(b) and 16(3)(c) of the Act; and (iv) the Mark is not distinctive under section 2 of the Act. The determinative issue in this proceeding is whether there is a reasonable likelihood of confusion between the Mark and at least one or more of the Opponent’s registered and/or previously used iRemit trade-marks or trade-names including IREMIT, IREMIT GLOBAL REMITTANCE and IREMIT GLOBAL REMITTANCE & Design, registration No. TMA772,071 for financial services including money transfer services and remittance services.
[4] For the reasons that follow, I reject the opposition.
File Record
[5] The Mark was advertised in the Trade-marks Journal on September 12, 2012. The Opponent filed a statement of opposition on February 11, 2013. The Applicant filed and served its counter statement on May 14, 2013, denying all of the grounds of opposition.
[6] In support of its opposition, the Opponent filed the affidavit of Belinda Lim-Herrara, Managing Director for International Remittance (Canada) Ltd., the Canadian entity carrying on business in Canada on behalf of the Opponent. Ms. Lim-Herrara was cross-examined and the cross-examination transcript and exhibits form part of the record. The Applicant`s evidence comprises the affidavits of Raymond Abog, Business Unit Head with ABS-CBN Canada Remittance, Inc., a wholly owned subsidiary of ABS-CBN Global, Ltd., Ginger Dorval, registered trade-mark agent with the Applicant’s agent, Mike Medeiros, Power Searcher for Thomson & Thomson Inc., doing business as Thomson CompuMark and Caroline d’Amours, Trade-mark Research Analyst with Thomson CompuMark. None of the Applicant’s affiants were cross-examined.
[7] Both parties submitted written arguments and both were represented at an oral hearing.
Material Dates and 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. There is however an initial 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 Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) at 298; and Dion Neckwear Ltd v Christian Dior, SA (2002), 20 CPR (4th) 155 (FCA)].
[9] The material dates that apply to the grounds of opposition are as follows:
• Section 38(2)(a)/Section 30 - the filing date of the application [see Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB) at 475];
• Section 38(2)(a)/Section 12(1)(b) - the filing date of the application [see Fiesta Barbeques Ltd v General Housewares Corp (2003), 28 CPR (4th) 60 (FCTD)];
• Section 38(2)(b)/Section 12(1)(c) and Section 12(1)(d) - the date of my decision [see Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trade Marks (1991), 37 CPR (3d) 413 (FCA)];
• Section 38(2)(c)/Section 16(3)(a)(b) and (c) – the priority filing date; and
• Section 38(2)(d)/non-distinctiveness - the filing date of the opposition [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC)].
Grounds of Opposition Summarily Dismissed
[10] The Opponent has pleaded eight grounds of opposition and has not met its initial burden with respect to the following four grounds:
• section 30(a): there is no evidence that the application does not contain a statement in ordinary commercial terms of the specific services in association with which the Mark is proposed to be used;
• section 12(1)(b): there is no evidence that the Mark is either clearly descriptive or deceptively misdescriptive in English or French of the character or quality of the services in association with which the trade-mark is proposed to be used;
• section 12(1)(c): there is no evidence that the Mark is the name in any language of the services in connection with which it is proposed to be used; and
• section 16(3)(b): the Opponent’s application for the mark IREMIT GLOBAL REMITTANCE & Design was not pending as of the date of advertisement of the Mark in accordance with section 16(4) of the Act.
[11] Accordingly, the four aforementioned grounds of opposition are dismissed.
Determinative Ground of Opposition
[12] As the parties have both pointed out, all the remaining issues in this case turn on whether there is a likelihood of confusion between the Mark and the Opponent’s trade-marks.
[13] I will begin by assessing the Opponent’s section 12(1)(d) ground of opposition.
Section 12(1)(d) – Non-registrability
[14] The Opponent has pleaded that the Mark is not registrable under section 12(1)(d) of the Act because it is confusing with the Opponent’s trade-mark IREMIT GLOBAL REMITTANCE & Design (shown below), which is the subject of registration No. TMA772,071.
[15] I have exercised my discretion to check the register to confirm that this registration is extant [Quaker Oats Co of Canada v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)]. The Opponent has therefore met its initial burden with respect to this ground. As the Opponent’s evidential burden has been satisfied, the Applicant must establish on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and the Opponent’s trade-mark IREMIT GLOBAL REMITTANCE & Design.
Test for confusion
[16] Trade-marks are confusing when there is a reasonable likelihood of confusion within the meaning of section 6(2) of the Act. Section 6(2) does not concern the confusion of the marks themselves, but confusion of goods or services from one source as being from another source. In the instant case, the question posed by section 6(2) is whether purchasers of the Applicant’s money remittance and bill pay services sold under the mark MYREMIT A KAPAMILYA SERVICE OF TFC would believe that those services were provided or authorized or licensed by the Opponent who offers its money transfer and remittance services under the mark IREMIT GLOBAL REMITTANCE & Design. The legal onus is on the Applicant to show, on the usual civil balance of probabilities standard, that there would be no reasonable likelihood of confusion.
[17] In determining this issue I must take into consideration all the relevant surrounding circumstances, including those listed in section 6(5): the inherent distinctiveness of the trade-marks and the extent to which they have become known; the length of time the trade-marks have been in use; the nature of the goods and services or business; the nature of the trade; and the degree of resemblance between the trade-marks in appearance, or sound or in the ideas suggested by them. In Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, [2006] 1 SCR 824 at para 20, the Supreme Court of Canada set out how the test is to be applied:
The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the [mark] at a time when he or she has no more than an imperfect recollection of the [prior] trade-marks and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks.
[18] The criteria in section 6(5) are not exhaustive and different weight will be given to each one in a context specific assessment [Mattel, Inc v 3894207 Canada Inc, [2006] 1 SCR 772 (SCC) at para 54]. I also refer to Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC) at para 49, where the Supreme Court of Canada states that section 6(5)(e), the resemblance between the marks, will often have the greatest effect on the confusion analysis.
Section 6(5)(a) – the inherent distinctiveness of the trade-marks
[19] Neither party’s trade-mark is inherently strong. The Opponent’s trade-mark IREMIT GLOBAL REMITTANCE & Design is suggestive of the Opponent’s services, that is, money transfer and remittance services. While the Opponent’s mark includes a design element, I do not consider that the design adds much distinctiveness to the Opponent’s mark. While the Mark is also suggestive of the Applicant’s money remittance and bill pay services, I consider it to be inherently stronger than the Opponent’s mark because the average English or French speaking consumer would not understand the meaning of the word KAPAMILYA or what the acronym TFC stands for.
[20] The distinctiveness of a trade-mark may be further increased through promotion or use.
[21] According to Ms. Lim Herrara, the Opponent has used its registered mark in Canada in association with financial services namely money transfer services and remittance services and courier forwarding services for the delivery of money and financial instruments since 2001, and with debit card loading/reloading services since 2005 (paras. 4 and 5). The only exhibit corroborating this assertion is an October 9, 2013, printout of the Opponent’s website which describes the services provided by the Opponent under its trade-mark worldwide and in Canada. In the absence of evidence regarding the number of Canadians who may have viewed this website, and/or sales or advertising figures for services offered in association with the Opponent’s trade-mark, I find the Opponent’s evidence insufficient to show to what extent the Opponent’s mark has become known in Canada.
[22] The Applicant, on the other hand, has been providing remittance services under the Mark both online and at its bricks and mortar service centres in Canada since at least as early as February, 2012 (Abog, para 19). Mr. Abog explains in his affidavit that ABS-CBN Corporation (ABS-CBN), founded in 1946, is the Philippines’ largest and leading information and entertainment multimedia conglomerate, involved primarily in television and radio broadcasting (and related businesses) as well as in the production of television and radio programming for domestic and international audiences (para. 3). ABS-CBN incorporated the Applicant primarily to address the needs of overseas Filipinos by bringing to them a vast array of tailor made products and services. The Applicant manages businesses that cater to Filipinos in over 60 countries, including in North America. Through its subsidiaries and affiliates in various countries, the Applicant distributes TFC and other channels with Filipino oriented content. ABS Canada Remittance (ABS Canada) is one such affiliate of the Applicant that distributes TFC specifically in Canada through carriage partners (para. 4). Both the Applicant and ABS Canada are wholly owned subsidiaries of ABS-CBN Corporation (para. 9).
[23] ABS Canada was established in June 2011 with the goal of remitting or transmitting funds from Filipino expatriates to recipients in the Philippines. In December 2011 ABS Canada launched the tfcmyremit.com website which prominently displays the Mark as a medium to promote and facilitate remittance services. In 2012, ABS Canada conducted over 1,300 remittance transactions in association with this service for members of the Canadian Filipino community [Abog, para. 20]. The number of remittance transactions increased to over 75,000 in 2013 and to over 140,000 by August of 2014. The Mark has also appeared on the tfcmyremit.com website which received 271,338 views enabling over 47,000 sessions by over 31,000 users in 2012 [Abog, para. 19]. In 2013, use of the tfcmyremit.com website received 555,951 views and enabled over 93,000 sessions by over 45,000 users. Attached as Exhibit J to Mr. Abog’s affidavit is a printout of the landing page for www.tfcmyremit.com Google Analytics reports showing views and use of this website for the years 2012 and 2013, and screen captures of archived pages of the website showing consistent prominent placement of the Mark on the website over at least the two years preceding the date of Mr. Abog’s affidavit. From the Applicant’s evidence, I am satisfied that the Applicant’s Mark has become known to a number of Canadians.
[24] In view of the above, this factor overall favours the Applicant.
Section 6(5)(b) – the length of time each has been in use
[25] According to Ms. Lim-Herrara, the Opponent has been using its trade-mark in association with at least some of its services since at least as early as 2001. This pre-dates the Applicant’s 2012 date of first use which has been provided in Mr. Abog’s affidavit.
Sections 6(5)(c) and (d) – the nature of wares, services or business and trade
[26] This factor favours the Opponent as both the services and the parties’ channels of trade overlap. Both parties provide their remittance services to members of the Canadian Filipino community.
Section 6(5)(e) – the degree of resemblance between the trade-marks
[27] While it has been held that the first portion of a trade-mark is usually considered more important for assessing the likelihood of confusion [Conde Nast Publications Inc v Union des Editions Modernes (1979), 46 CPR (2d) 183 at 188 (FCTD)], the law is clear that when assessing confusion marks must be considered in their entirety, i.e. MYREMIT A KAPAMILYA SERVICE OF TFC vs. IREMIT GLOBAL REMITTANCE & Design [British Drug Houses Ltd v Battle Pharmaceuticals, [1944] Ex CR 239, at 251, affirmed [1946] SCR 50 and United States Polo Assn v Polo Ralph Lauren Corp (2000), 9 CPR (4th) 51 at para 18, aff’d [2000] FCJ No 1472 (CA)].
[28] The parties’ marks resemble each other to some degree visually and aurally as the first component of the Mark MYREMIT sounds and looks similar to the first component of the Opponent’s mark IREMIT. The ideas suggested by the marks, however, are different. In this regard, as will be discussed further below, the Applicant submits that members of the Filipino community in Canada are aware that TFC is an abbreviation for THE FILIPINO CHANNEL and the word KAPAMILYA is a Filipino tagalog word used to reference a member of a family [Abog, paras. 8 and 9]. The idea suggested by the Applicant’s Mark, at least to members of the Filipino community (who would the primary users of both parties’ services), is a remittance service provided by “family members” of The Filipino Channel. The idea suggested to the average Canadian would simply be some type of remittance service.
[29] The idea suggested by the Opponent’s mark is not as specific, at least not to members of the Filipino community. In this regard, use of the prefix “I” attached to the verb “remit” describes one’s act of remitting, e.g. I remit money to my family in the Philippines. The other words in the Opponent`s mark, GLOBAL and REMITTANCE, describe the Opponent’s services. The Opponent’s mark therefore suggests remittance services provided globally.
Further Surrounding Circumstances
Applicant’s Family of Trade-marks
[30] As a further surrounding circumstance the Applicant submits that the Mark is part of a family of marks owned by the ABS-CBN Family of companies collectively referred to as the “ABS Mark Family” which includes the following marks:
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Trade-mark |
Registration/Application No. |
Goods/Services |
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TFC Formative Marks |
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TFC |
TMA706,915 |
(1) Television broadcasting
services; television broadcasting services via cable and satellite;
Production and programming of television shows; entertainment in the nature
of on-going programs in the fields of films, lifestyle, live action,
entertainment, pop culture, news and entertainment news, Asian culture,
romance, relationships, music, dance, business, home and personal makeovers,
youth issues, game shows, sports, Christian topics, contests, and variety
distributed over television, satellite, and via a global computer network;
providing online information in the fields of films, lifestyle, live action,
entertainment, pop culture, news and entertainment news, Asian culture,
romance, relationships, music, dance, business, home and personal makeovers,
youth issues, game shows, sports, Christian topics, contests, and variety via
a global computer network. |
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TFC ON DEMAND |
TMA717,951 |
1) Television broadcasting;
broadcasting services, namely, radio and Internet broadcasting services;
provision of telecommunication access to video and audio content provided via
a video-on-demand service via the Internet and wireless devices; streaming of
audio and video material on the Internet and over wireless devices; internet
protocol television (IPTV) services; mobile media and entertainment services
in the nature of electronic transmission of entertainment media content,
namely, downloading services of video and audio content onto digital audio
and video players; entertainment services, namely, providing a television program
in the fields of films, lifestyle, live action, entertainment, pop culture,
news and entertainment news, Asian culture, romance, relationships, music,
dance, business, home and personal makeovers, youth issues, game shows,
sports, Christian topics, contests and variety distributed over television,
satellite and/or via a global computer network. |
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TFCKO |
TMA717,567 |
1) Television broadcasting;
broadcasting services, namely, radio and Internet broadcasting services;
provision of telecommunication access to video and audio content provided via
a video-on-demand service via the Internet and wireless devices; streaming of
audio and video material on the Internet and over wireless devices; internet
protocol television (IPTV) services; mobile media and entertainment services
in the nature of electronic transmission of entertainment media content,
namely, downloading services of video and audio content onto digital audio
and video players; entertainment services, namely, providing a television
program in the fields of films, lifestyle, live action, entertainment, pop
culture, news and entertainment news, Asian culture, romance, relationships,
music, dance, business, home and personal makeovers, youth issues, game
shows, sports, Christian topics, contests and variety distributed over
television, satellite and/or via a global computer network. |
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TFC THE FILIPINO CHANNEL |
TMA738,948 |
(1) Television broadcasting;
television broadcasting via cable, satellite and the Internet; provision of
telecommunication access to video and audio content provided via a
video-on-demand service via the Internet and wireless devices; streaming of
audio and video material on the Internet and over wireless devices; internet
protocol television (IPTV) services; mobile media and entertainment services
in the nature of electronic transmission of entertainment media content,
namely, downloading services of video and audio content onto digital audio
and video players; entertainment services, namely, providing a television
program in the fields of films, lifestyle, live action, entertainment, pop
culture, news and entertainment news, Asian culture, romance, relationships,
music, dance, business, home and personal makeovers, youth issues, game
shows, sports, Christian topics, contests and variety distributed over
television, satellite and/or via a global computer network. |
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TFC MYREMIT |
TMA886,983 |
(1) Money remittance and bill pay services |
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REMIT Formative Marks |
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ABS-CBN EASYREMIT & Design |
TMA752,809 |
(1) Money remittance services, namely peer-to-peer (P2P), door-to-door and bank-to-bank money remittance services and cash delivery services both locally and internationally |
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ABS-CBN EASYREMIT |
TMA738,336 |
(1) Money remittance services,
namely peer-to-peer (P2P), door-to-door and bank-to-bank money remittance
services and cash delivery services both locally and internationally |
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KAPAMILYA Formative Marks |
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K KAPAMILYA CHANNEL & Design |
TMA743,233 |
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[31] The Applicant further submits that, by virtue of incorporating the MYREMIT, KAPAMILYA and TFC components which have each already become well known in the Canadian Filipino community, the Mark possesses an immediate acquired distinctiveness. It is the Applicant’s position that its ownership and use of such a family of marks is a significant factor that assists the Applicant’s Mark in being distinguished from the Opponent’s mark.
[32] Commenting first on the Applicant’s ownership of registrations for its various trade-marks, it is trite law that section 19 of the Act does not give the owner of a registration the automatic right to obtain any further registrations no matter how closely they may be related to the original registration [Coronet-Werke Heinrich Schlerf GmbH v Produits Menagers Coronet Inc, 4 CPR (3d) 108 (TMOB); Groupe Lavo Inc v Proctor & Gamble Inc, 32 CPR (3d) 533 (TMOB)].
[33] Secondly, there can be no presumption of the existence of a family of marks in opposition proceedings. A party seeking to establish a family of marks must establish that it is using more than one or two trade-marks within the alleged family [Techniquip Ltd v Canadian Olympic Assn (1998), 145 FTR 59 (FCTD), aff’d 250 NR 302 (FCA); Now Communications Inc v CHUM Ltd (2003), 32 CPR (4th) 168 (TMOB)].
[34] In the present case, I am prepared to infer from the Applicant's evidence of sales and advertising that the Applicant's family of TFC, KAPAMILYA and EASYREMIT marks have been used and acquired some reputation as of today`s date. In this regard, I refer to the following evidence from the Abog affidavit:
• in 2003, ABS-CBN began using “kapamilya” as a brand name (para. 8);
• KAPAMILYA is a Filipino Tagalog word used to reference a member of a family (para 8; Lim-Herrara cross., p. 17);
• since at least as early as 2007, the Applicant has been using and filed applications for a family of TFC, REMIT and KAPAMILYA marks, which included K KAPAMILYA CHANNEL & Design; TFC, TFC ON DEMAND, TFCKO, ABS-CBN EASYREMIT & Design, ABS-CDB EASYREMIT and TFC THE FILIPINO CHANNEL;
• in 2011 the Applicant was using and filed applications for two more marks comprised of its previously registered and used marks TFC, REMIT and KAPAMILYA, being TFC MYREMIT and MYREMIT A KAPAMILYA SERVICE OF TCC;
• ABS-CBN is comprised of a well-established information and entertainment multimedia conglomerate with the largest audience share of the Philippines’ top networks, serves the worldwide Filipino community and is one of the most admired companies in the Philippines (paras. 4-6);
• ABS-CBN and TFC are well-known to those living in the Philippine diaspora, with multi-million viewers in 40 countries worldwide (paras 6 and 9);
• Of the more than 619,000 Filipinos living in Canada (as of 2011), 89% have a strong sense of belonging to the Filipino community, and 30% regularly use ABS-CBN Canada`s media products and services and consequently are exposed to the Applicant`s ABS-CBN Family of trade-marks (paras. 7, 10 and 11);
• ABS-CBN has been delivering Filipino remittance services in and from over 20 countries throughout the world, with more than 10,000 bricks-and-mortar cash pick-up outlets worldwide (para. 14), and offers online remittance services through its website www.tfcmyremit.com (paras. 14-16);
• Between 2012 and 2013, the number of annual remittance transactions through the Applicant`s website doubled, and the number of users of its site increased by 50%; between 2012 and 2014, the number of remittance transactions conducted within the Canadian-Filipino community in association with the Mark increased by over 10,000% (paras. 19-20); and
• Since 2007, the ABS-CBN Family has engaged in extensive worldwide marketing and advertising of the family of TFC-, KAPAMILYA- and MYREMIT-formative marks, including the MYREMIT A KAPAMILYA SERVICE OF TFC mark, in association with its remittance services, investing over 8.5 million in advertising between 2012 and 2013 alone (paras 23-24).
[35] In view of the above, I am satisfied that there is some support for the Applicant's submission that the average consumer of remittance services might recognize the Mark as an addition to the Applicant's family of marks, at least as of the later material date. I therefore accept that a reputation established for the more distinctive components of the Mark is of assistance in distinguishing the source of the services associated with the Mark, especially in a case such as this where one is dealing with otherwise inherently weak marks.
Instances of Actual Confusion
[36] It is of course not necessary for the Opponent to evidence confusion in order for me to find that there is a likelihood of confusion but an adverse inference concerning the likelihood of confusion may be drawn when concurrent use on the evidence is extensive and no evidence of confusion has been given by the Opponent [Christian Dior SA v Dion Neckwear Ltd (2002), 20 CPR (4th) 155 (FCA) at para. 19].
[37] The Opponent alleges that there have been instances of confusion between the marks. In particular, Ms. Lim-Herrara attests at paragraph 12 of her affidavit:
I am personally aware of instances at trade shows in Canada in both 2012 and 2013 when individuals came to our booth and stated that they were confused and had thought that the booth of the Applicant was in fact our booth, only realizing their confusion once they saw our booth and realized that there were two confusingly similar business names being used.
[38] The Applicant challenged the reliability of Ms. Lim-Herrara`s evidence on cross-examination. In this regard, Ms. Lim-Herrara admitted on cross-examination that while her affidavit contained a statement to the effect that she was aware of instances of actual confusion in each of 2012 and 2013, she was unable to recall any details of these instances (Lim-Herrara cross-ex., p. 20, ii. 4-14). For example, she could not remember any details regarding the trade-show events about which she wrote in her affidavit.
[39] The Applicant submits that its evidence that the marks have successfully co-existed with no instances of actual confusion was not challenged on cross-examination and should be preferred. In this regard, Mr. Abog’s unchallenged evidence on this issue is as follows:
[26] Since June 2011, when ABS Canada Remittance was established and it began to provide its remittance services in association with the MYREMIT A KAPAMILYA SERVICE OF TFC trade-mark, I am advised by Catherine Nicdao, and Regina Junio that no instances of confusion among consumers have been brought to their attention as between ABS Canada Remittance’s service and the services of the Opponent.
[27] On more than one occasion, the Applicant and the Opponent have attended Canadian trade shows, and even consensually situated their booths adjacent to each other, and in no instances have I or my colleagues experienced any expression of confusion from attendants as between the parties. On more than one occasion, the Opponent has co-sponsored trade shows with our company. Attached as Exhibit O to my affidavit are promotional materials for two such trade shows – Pakushan Village and Be Careful with My Heart – evidencing sponsorship by ABS-CBN by bearing the trade-marks TFC and MYREMIT A KAPAMILYA SERVICE OF TFC. Also attached as Exhibit O are the Opponent’s cheque to ABS-CBN, related invoice and sponsorship agreement for the Be Careful with My Heart tradeshow. Attached at this Exhibit F are photographs, taken by me, of the Applicant’s and Opponent’s booths, situated adjacent to each other at these trade shows.
[40] In the present case, while the Applicant has shown considerable use of its Mark in the marketplace for over 4 years, the evidence is not sufficient to show the extent the Opponent’s mark has been used in Canada. Further, I do not find that I can accord significant weight to the Applicant’s or the Opponent’s evidence on this issue since it is not clear that the individual affiants understood what the word “confusion” means under trade-mark law. I therefore do not find that this factor favours either party.
State of the Register and State of the Marketplace Evidence
[41] The Applicant has introduced evidence of the state of both the Canadian trade-marks register and the marketplace with respect to the word or prefix REMIT. I will only comment on that evidence which I consider to be the most relevant to the present case.
[42] Ms. Dorval’s affidavit references various third party use, other than that of the Opponent, of about 17 trade-names/business names containing REMIT as a component and used in association with financial services including remittance services.
[43] Mr. Medeiros’ affidavit provides evidence of about 8 registered third party trade-marks that use the component REMIT as their trade-mark in association with “financial related goods and services”. Ms. D’Amours’ Corporate and Trade-name search of official business name registers and Canadian common law sources revealed over 100 trade names or business names that use the term REMIT or the suffix –REMIT. While these searches may not have revealed the nature of such businesses, it can be surmised from many of the trade-names that they either comprise or are related to financial services.
[44] State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace, and inferences about the state of the marketplace can only be drawn where large numbers of relevant registrations are located [see Ports International Ltd v Dunlop Ltd (1992), 41 CPR (3d) 432 (TMOB); Welch Foods Inc v Del Monte Corp (1992), 44 CPR (3d) 205 (FCTD); Maximum Nutrition Ltd v Kellogg Salada Canada Inc (1992), 43 CPR (3d) 349 (FCA)].
[45] In this case, notwithstanding the small number of relevant registrations, I am prepared to infer from the Applicant’s evidence as a whole that third parties are active under trade-names that incorporate the word REMIT in the general field that the parties operate within. This suggests that consumers who are somewhat accustomed to seeing REMIT formative marks in the related trades are used to distinguishing such marks based on their other components.
conclusion
[46] As indicated above, the test for confusion is whether someone who has an imperfect recollection of the Opponent’s IREMIT GLOBAL REMITTANCE & Design trade-mark might conclude upon seeing the Applicant’s MYREMIT A KAPAMILYA SERVICE OF TFC Mark as a matter of first impression that the source of the Opponent’s services and that of the Applicant are either the same or somehow related.
[47] Having carefully considered all the surrounding circumstances, I find that the Applicant has met its legal burden to show that there was no reasonable likelihood of confusion between the Mark and the Opponent’s mark as of today’s date. I reach this conclusion in view of the following: the differences between the parties’ marks, the fact that the Opponent’s IREMIT GLOBAL REMITTANCE & Design is a relatively weak mark and the evidence is insufficient to afford it a greater scope of protection, the existence of the family of trade-marks owned by the ABS-CBN Family of companies, and the Applicant’s evidence that trade-marks incorporating the component REMIT are common in the financial services industry, which tips the balance of probabilities in the Applicant’s favour. As noted in Kellogg Salada Canada Inc v Maximum Nutrition Ltd (1992), 43 CPR (3d) 349 (FCA), where the Opponent has a weak mark small differences should be sufficient to avoid the likelihood of confusion. This ground of opposition is therefore unsuccessful.
Non-entitlement – Sections 16(3)(a) and 16(3)(c)
[48] The Opponent pleads that the Applicant is not the person entitled to registration of the Mark under section 16(3)(a) of the Act because at the priority filing date the application the Mark was confusing with one or more trade-marks that had been previously used in Canada or made known in Canada by the Opponent namely: a) IREMIT; b) IREMIT GLOBAL REMITTANCE; and c) IREMIT GLOBAL REMITTANCE & Design. Under section 16(3)(c) the Opponent pleads that at the priority filing date the Mark was confusing with or more of the Opponent’s trade-names that had been previously used in Canada by the Opponent namely IREMIT and IREMIT GLOBAL REMITTANCE.
[49] Under section 16(3)(a) of the Act the Opponent has an initial evidential burden of proving that at least one of its trade-marks was used or made known in Canada prior to the priority filing date and had not been abandoned at the date of advertisement of the application for the Mark [section 16(5) of the Act].
[50] Section 16(3)(c) of the Act is restricted to use of a trade-name. In view that a valid ground of opposition cannot rely on the making known of a trade-name [Habib Bank Ltd v Habib Bank AG Zurich; 2011 CarswellNat 4526 (TMOB) at para 21], to meet its burden under this ground the Opponent must show that it had used at least one of its trade-names in Canada prior to April 17, 2011 and had not abandoned such use as of September 12, 2012. In determining whether there has been use of a trade-name the principles of sections 2 and 4 of the Act apply [Novopharm Ltd v Genderm Canada Inc (1998), 85 CPR (3d) 247 (TMOB) at 257].
[51] While Ms. Lim-Herrara claims to have used the Opponent’s trade-marks since prior to the Applicant’s priority filing date, she has not filed any evidence to corroborate this assertion. In this regard and as previously noted, the printout of the Opponent’s website as seen on April 23, 2006, simply shows addresses and contact information for iRemit Canada and International Remittance (Canada) Ltd. It does not describe the services the Opponent is providing in any way. Without seeing the manner in which the marks relied by the Opponent were used, I cannot reach a conclusion that use or making known of any of the Opponent’s trade-marks occurred prior to the relevant date.
[52] Attached as Exhibit C to the Opponent’s affidavit is a copy of a WHOIS search showing that the Opponent has been the registrant of the domain name myiremit.com since 2002. As noted by the Applicant’s agent, the Opponent is restricted to what it has pleaded in its statement of opposition and in this case, the Opponent has pleaded non-entitlement as a result of its own use of its IREMIT, IREMIT GLOBAL REMITTANCE trade-names and IREMIT, IREMIT GLOBAL REMITTANCE and IREMIT GLOBAL REMITTANCE & Design trade-marks. In my view, this language makes it clear which trade-marks and trade-names the Opponent was relying on. If the Opponent wished to rely on the MYIREMIT trade-mark or trade-name it should have clearly set this out in its pleading.
[53] While it is true that the sufficiency of pleadings should be assessed having reference to the evidence of record [see Novopharm Ltd v Astra AB (2002), 21 CPR (4th) 289 (FCA)], in the present case, it is not, in my view, reasonable to expect that the Applicant would have assumed from the evidence of record that the Opponent intended to rely upon anything other than those trade-marks and trade-names set out in its statement of opposition.
[54] Since the Opponent has not discharged its initial burden to show use or making known of the trade-marks or trade-name upon which it relies in support of these grounds, it is unnecessary for me to discuss the Applicant’s evidence with a view to assessing whether or not there is a likelihood of confusion between the Applicant’s Mark and the Opponent’s trade-marks and/or trade-names.
[55] In view of the foregoing, the section 16(3)(a) and (c) grounds are dismissed.
Non-distinctiveness – Section 2
[56] The Opponent has pleaded that the Mark is not distinctive in that it cannot distinguish and is not adapted to distinguish the Applicant’s services from the services of the Opponent associated with its trade-marks and trade-names.
[57] In order to meet its initial evidentiary burden in respect of this ground, the Opponent must establish that at least one of its trade-marks or trade-names had become known sufficiently in Canada as of February 11, 2013, to negate the distinctiveness of the Mark [see Motel 6, Inc v No 6 Motel Ltd (1981), 56 CPR (2d) 44 (FCTD); Bojangles’ International, LLC and Bojangles Restaurants, Inc v Bojangles Café Ltd (2006), 48 CPR (4th) 427 (FC)].
[58] As previously discussed, the Opponent has not provided sufficient evidence to establish that its trade-marks or trade-names were used prior to the Applicant’s filing date. Even if I could infer from the evidence as a whole that the Opponent’s registered trade-mark had become known to some extent in Canada by February 11, 2013, this would not have been sufficient for the Opponent to have met its burden under this ground. Accordingly, this ground of opposition is also dismissed.
Disposition
[59] In view of the above and pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(8) of the Act.
______________________________
Cindy R. Folz
Acting Chairperson
Trade-marks Opposition Board
Canadian Intellectual Property Office
Hearing Date: 2016-03-09
Appearances
James T. Swanson For the Opponent
Essien Udokang For the Applicant
Agents of Record
Burnet, Duckworth & Palmer LLP For the Opponent
Baker & McKenzie LLP For
the Applicant