LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2012 TMOB 187
Date of Decision: 2012-10-09
IN THE MATTER OF AN OPPOSITION by Safety Spill Systems Inc. to application No. 1,406,760 for the trade-mark SAFETY SPILL SYSTEMS (SSS) filed by Quinn Holtby.
File Record
[1] On August 8, 2008, Quinn Holtby (the Applicant) filed an application to register the trade-mark SAFETY SPILL SYSTEMS (SSS) (the Mark) for:
Drilling rig safety equipment, namely, matting, hand guards, splash guards, Kelly bushing guards, safety clothes, splash pans and containing trays that attach to a rig floor (the Wares); and oil rig and oil field construction services (the Services).
[2] The application was filed on the basis of proposed use in Canada. It was advertised for opposition purposes in the Trade-marks Journal of September 9, 2009.
[3] On October 30, 2009 Safety Spill Systems Inc. (the Opponent) filed a statement of opposition which was forwarded by the Registrar to the Applicant on November 12, 2009. The grounds of opposition can be summarized as follow:
1. The Application does not satisfy the requirements of section 30 of the Trade-marks Act RSC 1985, c T-13, (the Act) in that contrary to section 30(i) the Applicant could not have been and cannot be satisfied that he was entitled to use the Mark in Canada in association with the Wares and Services because at the filing date of the application the Applicant knew that the Opponent had used or made known and was continuing and intended to continue to use or make known the Opponent’s Trade-mark and Trade-name (as hereinafter defined) in Canada in association with the same or similar wares or services described in the application such that the Mark was confusing with the Opponent’s Trade-mark and Trade-name. The application was filed with the intent of obtaining the registration for the Mark for the purpose of causing or creating confusion between the Mark and the Opponent’s Trade-mark and Trade-name;
2. The Applicant does not, and did not at the time of filing of the application, have a bona fide intention to use the Mark in Canada in association with the Wares and Services;
3. The Applicant is not the person entitled to the registration of the Mark pursuant to section 16(3)(a) and (c) of the Act in that at the filing date of the application the Mark was confusing with the Opponent’s trade-mark and trade-name SAFETY SPILL SYSTEMS and SAFETY SPILL SYSTEMS INC. (The Opponent’s Trade-mark and Trade-name) that had been previously used in Canada or made known in Canada by the Opponent;
4. Pursuant to section 38(2)(d) of the Act, the Mark is not distinctive within the meaning of section 2 in that it does not actually distinguish the wares or services of the Applicant from the wares or services of others, namely the wares and services of the Opponent nor is it adapted to distinguish them.
[4] In its counter statement filed on December 29, 2009 the Applicant denied all grounds of opposition.
[5] The Opponent filed as its evidence the affidavit of Gregory Meimaroglou while the Applicant filed the affidavit of Quinn Holtby. The Opponent filed as additional evidence a second affidavit of Gregory Meimaroglou. Mr. Meimaroglou was cross-examined on his first affidavit.
[6] Both parties filed a written argument and were represented at a hearing.
Legal Onus and Burden of Proof
[7] The legal onus is upon the Applicant to show that the application complies with the provisions of the Act, but there is however 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. Once this initial burden is met, the Applicant has to prove, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark [see Joseph E Seagram & Sons Ltd et al v Seagram Real Estate Ltd (1984), 3 CPR (3d) 325 (TMOB); John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) and Wrangler Apparel Corp v The Timberland Company [2005] FC 722].
Section 30(e) Ground of Opposition
[8] Regarding the second ground of opposition the relevant date is the filing date of the application [see Dic Dac Holdings (Canada) Ltd v Yao Tsai Co (1999), 1 CPR (4th) 263]. The Opponent has the initial evidential burden to prove its allegation that the Applicant, at the filing date of the application, did not have a bona fide intention to use the Mark in Canada. None of the Opponent’s evidence deals with this issue. As such the second ground of opposition is dismissed because the Opponent failed to meet its initial burden of proof.
Entitlement Ground of Opposition under Section 16(3) of the Act
[9] In order to meet its initial burden of proof, the Opponent must establish that it had used or made known its trade-mark SAFETY SPILL SYSTEMS and/or used its trade-name Safety Spill Systems Inc. prior to August 8, 2008 and that it had not abandoned such use on September 9, 2009 [see section 16(5) of the Act].
[10] Mr. Meimaroglou has been employed by the Opponent and was responsible for intellectual property protection. The Opponent is in the business of providing safety and spill containment products in the oilfield services industry. Its clients would be those described as part of the upstream oilfield sector. They would service rig and drilling rig contractors.
[11] Mr. Meimaroglou alleges that the Opponent began using the trade-mark SAFETY SPILL SYSTEMS on or about January 1, 2007. “Use” is a legal term defined in Section 4 of the Act. There must be factual evidence that leads to that conclusion.
[12] Mr. Meimaroglou filed as exhibits A-1 and A-2 both sides of a brochure that was distributed starting on or about January 1, 2007. It shows pictures of parts and their part numbers. He filed 2 invoices as exhibits A-3 and A-4 issued to customers of the Opponent for the sale of two of those components illustrated on the brochure, exhibits A-1 and A-2.
[13] Mr. Meimaroglou also filed a copy of the Certificate of Incorporation for the Opponent dated March 6, 2006.
[14] During his cross-examination Mr. Meimaroglou admitted that: there is no information on the brochure (exhibit A-1 and A-2) about any of the Wares or Services; there is nothing in the description of the components on the invoices filed (exhibits A-3 and A-4) referring to the trade-mark SAFETY SPILL SYSTEMS. The first invoice is dated October 24, 2006 and it refers to the sale of one flow line illustrated on exhibit A-1 at a selling price of $55 while the second invoice is dated November 9, 2009, which is outside the relevant period.
[15] In his supplemental affidavit Mr. Meimaroglou filed as exhibit A-6 a 14 page brochure and he does make reference to the pages where “Safety Spill Systems” is mentioned. He states that such brochure would have been first printed in November 2008, which is after the relevant date.
[16] Mr. Meimaroglou has not provided any global or annual sales figures of the Opponent of any wares or services in association with the trade-mark SAFETY SPILL SYSTEMS or trade-name Safety Spill Systems Inc.. We have no information on the extent of the use of the brochure exhibits A-1 and A-2 prior to the relevant date, namely how many were distributed, to whom, and in which region of Canada. Neither the brochure attached as exhibits A-1 and A-2, nor the invoice attached as exhibit A-3 make reference to the trade-mark SAFETY SPILL SYSTEMS. There is reference to the corporate name Safety Spill Systems Inc..
[17] As for the Opponent’s certificate of incorporation, the filing of a copy of such document does not constitute proper evidence of use of a trade-name [see Geotech Ltd v TTI Geotechnical Resources Ltd (1985), 7 CPR (3d) 200 (TMOB) and Pharmx Rexall Drug Stores Inc v Vitabrin Investments Inc (1995), 62 CPR (3d) 108 (TMOB)].
[18] There is no definition in the Act as to what constitute use of a trade-name. Even if I were to consider the single invoice filed as Exhibit A-3 as evidence of use of the trade-name Safety Spill Systems Inc., being the only evidence in the record dated prior to the relevant date, this is far from establishing continuous use of a trade-name as of the relevant date and non abandonment of such use at the advertisement date of this application [see Korkay System Canada Ltd v Canada Packers Inc (1989), 22 CPR (3d) 417 (TMOB)].
[19] In the absence of annual sales figures of the Opponent and sufficient documentary evidence establishing use in Canada of the Opponent’s trade-name Safety Spill Systems Inc. or trade-mark SAFETY SPILL SYSTEMS prior to the relevant date, I have no alternative but to conclude that the Opponent has failed to meet its initial evidential burden.
[20] Consequently the third ground of opposition is dismissed.
Distinctiveness Ground of Opposition
[21] The Opponent has the initial evidential burden to prove that its trade-mark and/or trade-name SAFETY SPILL SYSTEMS had become sufficiently known in Canada at the filing date of the statement of opposition (October 30, 2009) to negate any distinctiveness of the Mark [Motel 6, Inc v No 6 Motel Ltd (1981), 56 CPR (2d) 44 at 58 (FCTD)]. Once this burden is met, the Applicant has a legal onus to show, on a balance of probabilities, that the Mark was not likely creating confusion with the Opponent’s Trade-mark and/or Trade-name such that it was adapted at the relevant date to distinguish or actually distinguished throughout Canada the Wares and Services from the Opponent’s wares and services [see Muffin Houses Incorporated v The Muffin House Bakery Ltd (1985), 4 CPR (3d) 272 (TMOB)].
[22] The only additional evidence that perhaps could be taken into consideration under this ground of opposition is another brochure filed by Mr. Meimaroglou as exhibit A-6 to his additional affidavit. I used the word “perhaps” because Mr. Meimaroglou alleges in his supplemental affidavit that it was first printed in November 2008. Assuming that the brochure printed in November 2008 was identical to the one attached to his affidavit as exhibit A-6, we have no information as to the extent of its use in the marketplace, namely how many were distributed, to whom and in what regions of Canada.
[23] The evidence filed by the Opponent is not sufficient to establish that its trade-mark SAFETY SPILL SYSTEMS and/or trade-name Safety Spill Systems Inc. was known to some extent in Canada prior to October 30, 2009 so as to negate the distinctiveness of the Mark. Consequently the fourth ground of opposition is dismissed.
Section 30(i) Ground of Opposition
[24] Section 30(i) of the Act only requires the Applicant to declare itself satisfied that it is entitled to the registration of the Mark. Such a statement is included in the application. The allegation that the Applicant could not have been satisfied that it was entitled to use the Mark in Canada in light of the Opponent’s prior use in Canada of its trade-mark and/or trade-name cannot form the basis of a ground of opposition under section 30(i) of the Act. One may rely on section 30(i) in specific cases such as where fraud by the Applicant is alleged [see Sapodilla Co Ltd v Bristol Myers Co (1974), 15 CPR (2d) 152 (TMOB)]. In the present case, there is an allegation in the statement of opposition that the Applicant filed this application with an intent to create confusion with the Opponent’s Trade-mark and/or Trade-name.
[25] At the hearing the Opponent argued that the evidence in the record shows that the Applicant was aware of the Opponent’s existence at the filing date of the application in view of existing litigation between the parties. To support its contention, the Opponent relies on a copy of a letter dated April 9, 2010 from a law firm representing Katch Kan Limited relating to litigation between the latter and a Tracy Mcintosh, two different parties than those involved in this opposition. The said letter relates to the filing of an affidavit. There is no reference in this letter to the identity of the deponent.
[26] The relevant date for this ground of opposition is the filing date of the application. As mentioned previously, Mr. Meimaroglou does state in his supplemental affidavit that a similar brochure to the one attached to his supplemental affidavit was printed in November 2008, which is after the relevant date. If I were to accept as evidence under this ground of opposition the letter dated April 9, 2010, all that it would establish is that the brochure was obtained by the Applicant subsequent to November 2008 and prior to April 9, 2010. There is no evidence as to how and when the Applicant would have obtained a copy of the brochure exhibit A-6.Therefore there is no evidence in the record that the Applicant was well aware of the Opponent’s existence on August 8, 2008 and more importantly of its use of the trade-mark SAFETY SPILL SYSTEMS and/or trade-name Safety Spill Systems Inc. in Canada prior to the filing date of the application.
[27] It might very well be that the parties are carrying on business in the same geographical area, in a very narrow field of expertise, and may have the same client base. Although Mr. Meimaroglou argued those facts at the hearing, there is no evidence in the record to support such contention. Any conclusion that the Applicant was in bad faith when it filed its application would have to be based on assumptions, speculations and presumptions.
[28] The Opponent has failed again to meet its initial evidential burden under this ground of opposition. Consequently the first ground of opposition is also dismissed.
Disposition
[29] 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.
______________________________
Jean Carrière
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office