Trademark Opposition Board Decisions

LE REGISTRAIRE DES MARQUES DE COMMERCE

THE REGISTRAR OF TRADE-MARKS

 

Citation: 2012 TMOB 218

Date of Decision: 2012-11-26

IN THE MATTER OF AN OPPOSITION by Ontario Teachers’ Pension Plan Board to application No. 1,281,787 for the trade-mark TEACHER MAGAZINE in the name of Editorial Projects In Education, Inc.

File Record

 

[1]        On December 2, 2005, Editorial Projects In Education, Inc. (the Applicant) filed an application to register the trade-mark TEACHER MAGAZINE (the Mark) in association with periodicals in the field of education (the Wares).  The application was based on the Applicant’s use in Canada since December 1, 2004, subsequently amended to 1995, and its use and registration abroad in the United States.  In response to the Registrar’s objection that the Mark is considered to be clearly descriptive or deceptively misdescriptive, the Applicant entered a claim pursuant to section 14(1) of the Trade‑marks Act, RSC 1985, c T‑13 (the Act) that the Mark was not without distinctive character.  In support of this claim, the Applicant filed a certified copy of United States registration no. 2,894,735 for TEACHER MAGAZINE and the affidavit of Michele Givens.

 

[2]        The subject application was advertised for opposition purposes in the Trade‑marks Journal of September 23, 2009 and was opposed by Ontario Teachers’ Pension Plan Board (the Opponent) on February 23, 2010. The Applicant filed and served a counter statement.  The statement of opposition as filed was subsequently amended.

 

[3]        The Opponent filed the affidavit of Elenita Anastascio attaching particulars of two of the Opponent’s applications for TEACHERS’ as its evidence pursuant to section 41 of the Trade-marks Regulations, SOR/96-195 (the Regulations).  The Opponent requested and was granted leave pursuant to section 44 of the Regulations to file a certified copy of United States Registration No. 2,894,735 for TEACHER MAGAZINE and a certified copy of extracts from the subject file history.   The Applicant did not file any evidence.  The Opponent filed a written argument and attended an oral hearing held on November 13, 2012.

 

Grounds of Opposition

[4]        The grounds of opposition, as amended, are summarized below:

 

a)      contrary to sections 30(b) and 30(d) of the Act, the Applicant has not used the Mark on the Wares as of the date of first use alleged in Canada and has not used the Mark in the United States as at the date of registration in the United States;

 

b)      contrary to section 30(i) of the Act, the Applicant could not have been satisfied of its entitlement to use the Mark in association with the Wares as the Applicant was aware of the Opponent’s trade-mark and trade-name rights in Canada;

 

c)      contrary to sections 12(1)(b) and 14 of the Act, the Mark is not registrable because it is, when depicted, written and sounded, clearly descriptive in the English language and because it registrability cannot be recognized pursuant to section 14 because the Applicant has not caused the Mark to be registered in its country of origin;

 

d)     contrary to sections 16(1)(a) and 16(1)(c) of the Act, the Applicant is not the person entitled to registration of the Mark because it was confusing with the Opponent’s and its predecessor’s trade-mark TEACHERS’ and trade-name previously used in Canada; and

 

e)      contrary to section 2 of the Act, the Mark is not distinctive of the Applicant.

 

Onus and Material Dates

[5]        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 [John Labatt Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298].

[6]        The material dates with respect to the grounds of opposition are as follows:

 

 

 

 

 

Grounds of Opposition which can be Summarily Dismissed

[7]        There is no evidence that supports the ground of opposition based on sections 30(b) and 30(d) of the Act. Consequently, this ground is rejected on the basis that the Opponent has not satisfied its initial burden.

 

[8]        The section 30(i) ground alleges that the Applicant could not have been satisfied that it was entitled to use the Mark in Canada. Where an applicant has provided the statement required by section 30(i), this ground should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant [Sapodilla Co v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155]. As the application includes the required statement and there is no allegation or evidence of bad faith or other exceptional circumstances, the s. 30(i) ground is rejected.

 

[9]        The sections 16(1)(a), 16(1)(c) and 2 grounds are rejected because the Opponent has not met its initial burden. The Opponent has not evidenced that its TEACHERS’ trade-mark or its trade-names were used or known in Canada as of the applicable material dates. Although the Opponent's application No. 1,455,494 for TEACHERS’, particulars of which are attached to the affidavit of Elenita Anastacio, refer to use, that is not sufficient to meet the initial onus on the Opponent under these grounds of opposition [Entre Computer Centers Inc v Global Upholstery Co (1992), 40 CPR (3d) 427 (TMOB)]. 

 

Ground of Opposition Based on Sections 12(1)(b) and 14

 

[10]      The ground of opposition based on section 12(1)(b) and 14(1) is set out below:

Under s. 38(2)(b) and 12(1)(b) and 14, the [Mark] is not registrable because it is, when depicted, written and sounded, clearly descriptive in the English language of the character or quality of the wares which it was used and because its registrability cannot be recognized pursuant to Section 14 because the Applicant has not duly caused the Opposed Mark to be registered in its country of origin.

 

 [11]     In Provenzano v Registrar of Trade Marks (1977), 37 CPR (2d) 189 (FCTD) at 189, Addy J. said, "... for a word to be clearly descriptive, it must be material to the composition of the goods or product".  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 [Wool Bureau of Canada Ltd v Registrar of Trade Marks, (1978), 40 CPR (2d) 25 (FCTD) at 27-8].  Finally, the decision as to whether a trade-mark is clearly descriptive is to have regard to the wares or services in question [Neptune SA v Canada (A-G) 2003 FCT 715 (FCTD)].

 

[12]      In the absence of evidence or submissions from the Applicant, the certified copy of the file extract is sufficient to meet the Opponent’s burden since it shows that a section 12(1)(b) objection was raised to which the Applicant responded by amending its application to the claim the benefit of section 14.   Furthermore, it is evident that the Mark is clearly descriptive of “periodicals in the field of education” in that the periodicals are directed at teachers [see, for example, Ontario Teachers’ Pension Plan Board v Canada (Attorney General) (2011), 89 CPR (4th) 301 (FCTD)].  My finding on clearly descriptiveness is the same whether assessed at the filing date of the application or the date of my decision.

                       

[13]      A mark that is not registrable under section 12(1)(b) may nevertheless be registrable pursuant to section 14(1), which reads as follows:

Notwithstanding section 12, a trade-mark that the applicant or the applicant's predecessor in title has caused to be duly registered in or for the country of origin of the applicant is registrable if, in Canada,   (a) it is not confusing with a registered trade-mark;   (b) it is not without distinctive character, having regard to all the circumstances of the case including the length of time during which it has been used in any country;   (c) it is not contrary to morality or public order or of such a nature as to deceive the public; or   (d) it is not a trade-mark of which the adoption is prohibited by section 9 or 10.

[14]      In order to claim the benefit of section 14(1), the Applicant must have a registration for its Mark in its country of origin.  The application identifies this registration as United States registration No. 2,894,735.  In WR Grace, supra, the Federal Court of Appeal held that the foreign registration must exist at the date of registration of the Canadian application in order for the section 14(1) claim to be valid. 

 

[15]      The evidence of the Opponent filed pursuant to section 44 of the Regulations includes a certified copy of United States registration No 2,894,735 which shows that this registration has been cancelled.  I note that if this certified copy had been filed pursuant to sections 41 or 43 of the Regulations, I would not be able to have regard to it since these sections require that evidence be filed by way of affidavit or statutory declaration or be a certified copy of a document in the custody of the Registrar.  However, as leave was granted pursuant to section 44 to file the certified copy, nor was any objection received from the Applicant to the form of the evidence, I will have regard to it.   As the registration forming the basis of the section 14(1) claim has been cancelled, the Applicant cannot rely on section 14(1) and this ground of opposition is successful.

 

Disposition

 

[16]      Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(8) of the Act.

 

 

 

 

___________________

Natalie de Paulsen

Member

Trade-marks Opposition Board