LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 224
Date of Decision: 2010-12-23
IN THE MATTER OF AN OPPOSITION by Canadian Council of Professional Engineers to application No. 1,220,370 for the trade-mark KELLY ENGINEERING RESOURCES in the name of Kelly Properties, Inc.
[1] On June 15, 2004 Kelly Properties, Inc., (the Applicant) filed an application to register the trade-mark KELLY ENGINEERING RESOURCES (the Mark) based on use of the Mark in Canada since April 1999, as well as on use and registration in the United States of America.
[2] The application is in association with the following services:
Personnel employment services, namely, providing temporary, temporary to full-time, and full-time employees having specialized technical skills, education and/or training.
[3] The application was advertised in the Trade-marks Journal of December 29, 2004. The Canadian Council of Professional Engineers (the Opponent) filed a Statement of Opposition on February 22, 2005, which was amended December 21, 2007 to include a ground of opposition under s. 30(b) contesting the Applicant’s claimed date of first use in Canada (April 1999). The Applicant filed a counter statement on April 6, 2005 and an amended counter statement on January 16, 2009. The application was amended on December 6, 2005 to include a claim based on s.14 of the Trade -marks Act R.S.C. 1985, c. T-13 (the Act).
[4] The Opponent filed the affidavits of Deborah A. Eatherley (Nos. 1 and 2) and John Kizas; the Applicant filed the affidavits of Julianne Norris, Lisa Saltzman, Jane Griffith, Karin French (Nos. 1 and 2) and John W. Lichtenberg. The Opponent filed the affidavit of Leslie J. Kirk in reply; leave was also granted with respect to the part of this affidavit that related to new evidence, pursuant to Rule 44 of the Trade-marks Regulations. Ms. French, Mr. Lichtenberg and Ms. Griffith were cross-examined. Any relevant portions of the cross-examinations are included in the summary of the evidence as set out below.
[5] The grounds of Opposition may be summarized as follows:
• Noncompliance with s. 30(i)
• Not registrable under s.12(1)(b) as the trade-mark is clearly descriptive or deceptively misdescriptive;
• Not registrable pursuant to s.14 as the trade-mark is without distinctive character; is contrary to public order and is of such a nature as to deceive the public;
• The trade-mark is not registrable and prohibited by s. 12(1)(e) and s. 10
• The trade-mark is not distinctive; and
• Non-compliance with 30(b) as the applied for Mark was not used in Canada in association with the listed services as of the claimed date of first use.
[6] In its counter statement the Applicant denied all of the allegations. With respect to the ground of non-distinctiveness, the Applicant stated that in addition to being distinctive as a whole, the trade-mark contains the word “Kelly” which has been continually and extensively used and made known in Canada by the Applicant such that the word “Kelly” has become very distinctive of the services and the business of the Applicant.
[7] Both parties filed written arguments and were represesented at the oral hearing.
Onus
[8] There is an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it can 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]. Once the initial burden is met by the Opponent, the burden shifts to the Applicant who must prove on a balance of probabilities that the particular ground of opposition should not prevent registration of its mark [see Joseph E. Seagram & Sons Ltd. v. Seagram Real Estate Ltd. (1984), 3 C.P.R. (3d) 325 (T.M.O.B.)][Seagram].
[9] The material dates in this opposition can be summarized as follows:
(a) With respect to compliance with s.12(1)(b) and 30(i), the date of filing of the application, namely June 15, 2004. [Ralston Purina Co. v. Burgham Sales Ltd. (2001), 17 C.P.R. (4th) 143 (T.M.O.B.) at 148; Fiesta Barbeques Limited v. General Housewares Corporation (2003), 28 C.P.R. (4th) 60 (F.C.T.D.)
(b) With respect to compliance with s. 12(1)(e) as well as the issue of availability of s. 14 of the Act, the date of the decision [Canadian Council of Professional Engineers v. Oyj (2008), 68 C.P.R. (4th) 228 (T.M.O.B.)].
(c) With respect to the ground of non-distinctiveness, the date of filing of the statement of opposition, namely March 10, 2005 [American Assn. of Retired Persons v. Canadian Association of Retired Persons/Assoc. Canadienne des Individus Retraites (1998) 84 C.P.R. (3d) 198 (F.C.T.D.) at 207-208].
(d) With respect to compliance with s. 30(b), the date of first use claimed in the Application, namely April 1999 [Seagram supra].
Opponent’s Evidence
Affidavit (No.1) of Deborah Eatherley
[10] Ms. Eatherley is a Law Clerk with the solicitors for the Opponent. Her affidavit is directed at establishing occurrences of the surname Kelly in Canada. The Canada411 on-line directory showed 271 listings in Toronto and 141 in Vancouver. Bell Telephone Directory Services for Toronto in 1998/1999 and 2002/2003 and Vancouver 1997 and 2002/2003 both show over a page of Kelly listings.
[11] The affiant also provides evidence of engineers with the surname Kelly in Canada, such as Kelly Engineering & Consulting in New Brunswick and Ian D. Kelly, Engineer in Manitoba. She provides evidence of 118 professional engineers across Canada with the surname Kelly; it appears from her on-line search that in 2000 there were 143 licensed engineers across Canada with the surname Kelly.
Affidavit (No.2) of Deborah Eatherley
[12] This affidavit provides definitions from various Technical Dictionaries and Engineering books, directed towards indicating that engineering services include management of human resources, employees or projects, distributing labour resources and/or installation of integrated systems of people (Exhibits 1 and 2). These types of activities are referred to as management engineering and industrial engineering.
[13] Ms. Eatherley states that services offered by engineers in this area include: “human resource management” being “the selection, training, and supervision of the personal needed to complete the project work within schedule” and ensuring work performance by people involved in engineering projects. She provides excerpts from engineering books including a paragraph on “Human Resource Management” (Exhibit 4), and a book titled Management for Engineers (Exhibit 6).
[14] Also provided are course offerings at various engineering schools that appear to relate to Engineering Management, obtained from the Internet. Attached is evidence of course offerings at engineering schools at Ryerson University in 2004 and Engineering Management Option (Exhibit 10B); Engineering Management and Entrepreneurship Option at the University of Ottawa in 2003-2005 and October 2002 (Exhibit 13A). As well, copies are attached from websites of various Engineering Management societies in Canada and internationally.
[15] The Applicant objected to much of this evidence as being inadmissible hearsay, relying on the decisions in Envirodrive Inc. v. 836442 Alberta Inc. [2005] ABQB 446, at paras 53-55 and Jurak Holdings Ltd. v. Matol Biotech Laboratories Ltd. (2006), 50 C.P.R. (4th) 337 (T.M.O.B.). I am of the view, however, given the obvious purpose of University websites, that they should be considered authoritative sources of information with respect to their course listings. Accordingly, I am willing to give this evidence some weight in these proceedings. In any event, as will become evident, this evidence is not determinative in this proceeding.
Affidavit of John Kizas
[16] Mr. Kizas is the Manager, Strategic Development of the Opponent the Canadian Council of Professional Engineers; he is also a professional engineer (P.Eng.).
[17] Mr. Kizas provides evidence that the term “engineering” is regulated in Canada by the various provincial and territorial Engineering Acts. Only individuals and companies licensed or authorized to practice engineering in Canada, may use the term “engineering”. He offers the observation that it is common for engineering firms to carry on business under trade-marks which are a combination of a family name and the word “engineering.” He states that other statutes also restrict use of the term “engineering” such as provincial and territorial Business Names Registration Acts, and Business Corporations Acts and Regulations; extracts of relevant legislation are attached as Exhibits 2 to 14, 27, 29, and 24, and Exhibits 19(a) to (j).
[18] In this regard, I observe that generally the relevant sections of the Engineering Acts state that no person shall engage in the practice of professional engineering or use a term which would lead (either expressly or by implication) the public to believe that the services being offered are within the practice of professional engineering. None of the provisions appear to prohibit the use of the word “engineering” in a trade-mark where the trade-mark does not lead a consumer to believe that the associated services are engineering services or performed by a professional engineer. With respect to the legislation governing corporate and business names, I note that the relevant provisions do not govern use of terms as trade-marks.
[19] There is no argument concerning the fact that the Applicant, Kelly Properties Inc, is not and was not registered to engage in the practice of engineering in any province or territory of Canada.
Applicant’s Evidence
Affidavit of John W. Lichentberg
[20] Mr. Lichtenberg is the Vice President of Marketing Management of Kelly Services, Inc. (Kelly Services) and has held this position since 2002. He has been employed in the marketing department of Kelly Services since October, 1995.
[21] The affiant provides a history of Kelly Services, stating that it was established in United States in 1946 as a provider of temporary services. Over 60 years it has grown to operate in 30 countries employing more than 700,000 employees annually; areas of employment include office services, accounting, engineering, information technology, law, science, marketing, industry, education, health care and home care.
[22] Kelly Services has created service lines that specialize in these employment areas and that operate under various trade-marks around the world, such as:
KELLY MARKETING SERVICES
KELLY LIGHT INDUSTRIAL SERVICES
KELLY ELECTRONIC ASSEMBLY SERVICES
KELLY EDUCATIONAL SERVICES
KELLY DIRECT
KELLYSELECT
KELLY SCIENTIFIC RESOURCES
KELLY HEALTHCARE RESOURCES
KELLY HOME CARE SERVICES
KELLY ENGINEERING RESOURCES
KELLY IT RESOURCESKELLY LAW REGISTRY
KELLY FINANCIAL RESOURCES
KELLY MANAGEMENT SERVICES
KELLY STAFF LEASING
KELLY HR CONSULTING
KELLY VENDOR MANAGEMENT SOLUTIONS
KELLY AUTOMOTIVE SERVCES GROUP
KELLY OFFICE SERVICES
[23] KELLY ENGINEERING RESOURCES is a registered trade-mark in the United States, Australia, New Zealand, and United Kingdom.
[24] The Applicant is a wholly owned subsidiary of Kelly Services and owns the Mark in Canada, the United States and elsewhere. The Applicant licenses the use of the Mark to Kelly Services, Inc., who in turn sub-licenses the Mark to its subsidiaries including Kelly Services (Canada) Ltd. in Canada. Collectively these corporations are referred to herein as “Kelly” save where it is necessary to refer specifically to one corporation.
[25] The affiant states that Kelly Properties, Inc. and Kelly Services exercise direct and indirect control over the character and the quality of the services offered in association with the Mark. In the answers to undertakings, Mr. Lichtenberg explains that although the written Licence Agreement produced on cross-examination has not been updated to include specific reference to the Mark, as a matter of practice the Agreement is intended to include all of the Applicant’s trade-marks. He states that said Licence Agreement would govern use of the Mark.
[26] As noted above the affiant explains that due to the size and specialized nature of the staffing needs of customers, Kelly has created divisions and service lines directed towards specific employment areas. For example the KELLY ENGINEERING RESOURCES division offers personnel employment services and specializes in providing companies around the world with qualified engineers, designers, drafter and technicians. Another example is the KELLY HEALTHCARE RESOURCES division that focuses on recruiting and placing individuals with healthcare expertise.
[27] One way that Kelly services are provided is through job search services offered to potential employees on-line through Kelly’s web-sites including www.kellyengineering.com and a toll free number 1-888-GO-KELLY. I note that the copy provided of the home page of the www.kellyengineering.com website clearly displays the Mark and the following information:
KELLY ENGINEERING RESOURCES specializes in providing companies around the world with qualified engineers, designers, drafters and technicians. We are part of Kelly Services a US-based Fortune 500 company. With our global network of branch locations, we are uniquely positioned to provide our customers with international staffing support and our employees with diverse assignments around the world.
[28] The Mark is also prominently displayed on brochures distributed to potential corporate customers to advertise its employment services. The cover from a sample brochure is attached as Exhibit JWL 5. I note that the Mark is prominently displayed and that the brochure is also marked with the information © 2002 Kelly Services, Inc. No evidence has been provided that would lead to the inference that these had been distributed in Canada at any time.
[29] Similar promotional material used for advertising at Universities is attached as Exhibit JWL 6; again this displays the Mark prominently and the information in small print - © 2002 Kelly Services, Inc. Similarly, no evidence has been provided that would lead to the inference that these had been distributed in Canada at any time.
[30] Mr. Lichentberg provided excerpts from four magazines stated to have been published in April 1999 and circulated in Canada. The magazines appear to be U.S. based; each Exhibit comprises a copy of a front page and an excerpted page displaying an advertisement with the Mark.
[31] During cross-examination Mr. Lichtenberg was asked to produce evidence that Kelly Canada had actually provided the services listed in the Application as of April 1999. The affiant was also asked to advise when Kelly first solicited resumes for Canadian companies under the Mark. Subsequently the affiant was also asked to advise that the Mark was actually being used in Canada as of April 1999 and June 15, 2004. The affiant refused to provide answers to these questions on the ground that they were irrelevant as (at that time) the statement of opposition did not include a s. 30(b) ground of opposition.
[32] The affiant also sets out that KELLY ENGINEERING RESOURCES has been advertised more recently in publications circulated in Canada, and provides examples from 2004 (6 issues of Chemical Processing and 6 issues of IEE Communications - published in March, April, June, August, October and December of 2004). The affiant states he has been informed by their advertising agency that the approximate Canadian circulation of Chemical Processing in 2004 was about 670; and the approximate circulation of IEE Communications in 2004 was 1800. Although the Opponent objected to this information as hearsay, I am willing to give it some weight since it is reasonable to assume that such information would be acquired from the respective advertising agency in the normal course of business and that doing so would be within the purview of the affiant’s position as Vice President of Marketing Management.
[33] The affiant also provides examples of sponsorship of scholarships, community activities and press releases. The Mark also appears on third party websites that advertise job openings to potential candidates; such as www.careerbuilder.com, www.hotjobs.yahoo.com, and www.mycareer.com. Screen prints from these websites are provided as Exhibit JWL 11; I note that in this case most locations indicated for the jobs are in the United States. There are some references to jobs in Puerto Rico; this exhibit does not evidence the advertising of any positions in Canada.
[34] A sample direct mailing pamphlet displaying the Mark is provided as Exhibit JWL 12, there is no evidence that this was distributed in Canada. Again I note the information at the bottom of the back page © 2002 Kelly Services, Inc. Third party articles in which KELLY ENGINEERING RESOURCES is referenced are provided as Exhibit JWL 13. These appear to be electronic articles published on the Internet, the source of the articles is not provided, nor is any information regarding access to these articles by Canadians.
[35] Mr. Lichtenberg provides that Kelly has spent a significant amount of the advertising and promotion of the Mark worldwide. He states that the total budget for marketing in 2006 is expected to exceed 5 million (US); at least 3.5% of this amount is spent on the promotion of the Mark.
[36] Sales of services in association with the Mark have grown in the United States, and elsewhere. Mr. Lichtenberg asserts that the Mark has been used in association with the services in at least the following countries: Canada, The United States, United Kingdom, Australia, New Zealand, Germany, Puerto Rico, Russia and Singapore. He explains that on any given day, over 4,000 people would be employed by the KELLY ENGINEERING RESOURCES division. Worldwide annual sales revenue was in excess of 4.0 billion for each year 2000-2005, with an estimated 3.5 to 4.5% attributable to revenue associated with the Mark.
[37] I have reviewed the annual reports (1998-2004) attached to Mr. Lichtenberg’s affidavit; I note that these appear to be combined financial statements and information for the shareholders for all of the Kelly businesses, the figures revealing substantial revenues as indicated above. No specific reference to the services provided under the Mark is provided. I note that according to these documents, an office in Toronto was opened in 1998.
[38] During the cross examination process, Mr. Lichtenberg was asked to provide a list of Ontario business name registrations for various service lines offered by Kelly. Exhibit 1 to the affiant’s cross examination is an Ontario Ministry of Consumer and Business Services list of current business names of Kelly Services (Canada), Ltd. as follows: KELLY FINANCIAL RESOURCES, KELLY HEALTH CARE RESOURCES, KELLY PERMANENT RECRUITMENT, KELLY SCIENTIFIC RESOURCES, and KELLY SERVICES (all registered in 2004); and KELLY RECRUITMENT CONSULTANTS (registered in 1996).
Affidavits (No.1 & 2) of Karin French
[39] Ms. French is the Vice President and General Manager for Kelly Services (Canada) Ltd. (Kelly Canada), and has held this position since at least 2003. Kelly Canada is a wholly owned subsidiary of Kelly Services, Inc. The Canadian headquarters for Kelly Canada is in Toronto. As set out in Mr. Lichtenberg’s affidavit, the Applicant licenses the use of the Kelly trade-marks to Kelly Services, Inc. who then sub-licenses the use of the marks to Kelly Canada.
[40] Where Mr. Lichtenberg’s evidence was directed towards establishing the international scope of the Kelly companies, Ms. French’s affidavit is directed more towards the events in Canada.
[41] Ms. French also provides that both Kelly Properties, Inc. and Kelly Services, Inc. continue to exercise direct or indirect control over the character and quality of the services which Kelly Canada provides in association with the Kelly trade-marks. Again in this regard, the Opponent points out that the License Agreements provided in the Answers to Undertakings, following the cross-examination of Ms. French, do not appear to include the subject Mark. I note Mr. Lichtenberg’s response in undertakings to his cross-examination (Para. [24] above), and I would observe that there is no requirement for an agreement to be in writing; the statement of the existence of a license agreement and the requisite direct and/or indirect control satisfies the provisions of s. 50(1) of the Act.
[42] Ms. French states that “KELLY brand employment services” have been offered since at least as early as 1968 in Canada in association with one or more of the KELLY trade-marks. The affiant indicates that by the 1990s Kelly had evolved from being merely a - “United States focused company concentrating primarily on traditional office services into a global staffing leader with a breadth of specialty business.” She states that her company now recruits and places professional and technical employees in the fields of finance and accounting, engineering, information technology, law, science, and health care. Today, Kelly provides employment services to individuals and corporations in 30 countries, including Canada. Employment is provided to more than 700,000 employees annually, with skills including office services, accounting, engineering, information technology, law, science marketing light industrial, and health care. Kelly is the world’s largest staffing provider and it ranks among the leaders in IT, engineering and financial staffing.
[43] The Applicant is the owner of 16 trade-mark registrations in Canada for employment services. I note that one registration consists of the word KELLY alone filed on the basis of use in Canada since at least as early as June 10, 1968 on “furnishing temporary and permanent employment services”. The other 15 registrations all include KELLY as the first portion of the mark, the remaining portion of the mark arguably having some suggestive reference to the nature of the specialized employment services. Certified copies of 10 of these trade-marks including the registration for KELLY alone are attached to the affidavit of Julianne Norris discussed below.
[44] Ms. French provides that Kelly Canada offers its job search services on-line, over the telephone and in person at branch locations. Examples of advertising of positions in association with KELLY (usually as KELLY Services) and/or KELLY ENGINEERING RESOURCES trade-marks in Canada, including advertisements on websites www.kellyservices.com and www.kellyengineering.com are provided. Exhibit KF 1 is a sample of a job search on www.kellyservices.com, which lists an engineering job in association with the subject Mark. This search appears to have been specific to Canadians; I note the drop down menu for choosing the province to conduct the search. Screen captures are attached as Exhibits KF 1 and KF 2, and clearly provide job listings in Canada in association with KELLY services. In addition, the Mark is clearly displayed next to at least one of those job listings. It is unclear what the date of those job listings is, although details of one job appear to have been posted in 2006 for a location in Ontario. Exhibits KF 3 and KF 4 are examples of screen captures of relevant web pages illustrating the Mark; no dates are provided with respect to this particular evidence.
[45] Ms French also provides that the Mark has been used in advertising in Automotive Engineering International, Computer-Aided Engineering, Electronic Design, Hydrocarbon Processing, Chemical Processing and IEE Communications. (Exhibit KF 6). These appear to be the same ads attached to the Lichtenberg affidavit stated to have published in periodicals in April 1999 and circulated in Canada. The affiant also refers to advertisements of the Mark in magazines in 2004 for which Canadian circulation figures are provided, as discussed in Mr. Lichtenberg’s affidavit above.
[46] Ms. French’s affidavit No. 2 was provided in response to the addition of the s. 30(b) ground of opposition. The affiant reiterates that ads offering the services in association with the Mark appeared in periodicals stated to have circulated in Canada in April 1999. She also provides that the services were available to users in Canada through www.kellyengineering.com since at least as early as 1999. Ms. French states that data regarding the number of hits from users in Canada is unavailable before 2003; the number of hits from users in Canada for the year 2003 was 110,497, for 2004 was 92,955 and for the years 2005 to 2008 the number of hits was in excess of 60,000 hits per year.
[47] In affidavit No.1 Ms. French also provides that Kelly regularly attends trade-shows and conferences in Canada to market its services. She states that to date in the current year (2006) Kelly has attended at least 50 trade shows across Canada. At all of the trade-shows at least one of the Kelly trade-marks was displayed prominently. The affiant lists a few Canadian trade-shows as examples: I note that three took place in 2006 and one in 2004.
[48] Kelly advertises the Kelly trade-marks on buses, bus shelters, subway stations and billboards across Canada. Attached is a photo of a banner announcing KELLY SERVICES “now hiring’ on a building in St. Catharines, Ontario, and copies of advertisements from a transit ad campaign in Toronto in the Spring/Summer of 2005 and in Calgary in February/March 2006.
[49] Brochures and information sheets are distributed and sent by direct mailings to employers and potential employees, which feature the KELLY trade-marks (Exhibits KF9 and KF 10). The affiant provides that in the previous year (2005) at least 50 corporations were sent direct mailings discussing the Kelly services and featuring at least one of the KELLY trade-marks. Exhibit KF-9 is a copy of the cover of a sample of one such brochure.
[50] Ms. French states that since 1999 Kelly has generated significant revenue from sales of services associated with its family of trade-marks in Canada; she provides that Kelly does not tabulate the revenue of its Canadian operations by brand or type of job. The affiant estimates that Kelly has spent approximately $1.2 million on advertising and marketing of its family of trade-marks in Canada since 1999.
[51] Kelly also distributes brochures and information sheets featuring its trade-marks; some are produced in the U.S. and made available to Kelly Services (Canada) Ltd. Two such brochures featuring the Mark are attached as Exhibit KF-10, however, I note that no details are provided as to any dates or amounts actually distributed in Canada. I also note that the brochure bears a copyright date of 2006.
Affidavit of Julianne Norris
[52] Ms. Norris is a legal assistant who obtained certified copies of the Canadian trade-mark registrations for the trade-marks: KELLY GIRL (registered in 1965), KELLY (registered in 1990), KELLY RECRUITMENT CONSULTANTS (registered in 1995), KELLY SCIENTIFIC RESOURCES (registered in 1999), KELLY SCIENTIFIQUE (registered October 2001), KELLY LAW REGISTRY (registered in 1993), KELLY FINANCIAL RESOURCES (registered in June 2003), KELLY IT RESOURCES (registered in October 2003), KELLY EDUCATIONAL STAFFING (registered in 2006), and KELLY AUTOMOTIVE SERVICES GROUP (registered in 2005). These registrations are all for personnel employment services, in some instances the services are more specifically described to target a specific employment sector.
Affidavit of Lisa Saltzman
[53] Ms. Saltzman identifies herself as the director of the trade-mark searching department of OnScope, a company specializing in corporate name searching, trade-mark searching as well as common law and dictionary definition searching, all for the purpose of aiding clients in determining the registrability of their trade-marks.
[54] Ms. Saltzman was asked to investigate (using OnScope resources), the extent to which KELLY is a given name, a surname, a geographic location, a word in the dictionary or otherwise.
[55] Ms. Saltzman identified several different definitions of “kelly”, some place name significance of “Kelly” and first name significance of “Kelly”. It appears that “kelly” has a technical definition in the mining industry, referring to a pipe involved in the turning of a drill; its also appears that “Kelly” has significance as a place name in Canada, more specifically there are 124 places including the name Kelly in Canada, including Kelly Quebec, Kelly Ontario, Kelly Bay, Manitoba, Kelly Brook, New Brunswick, Kelly Creek, British Columbia; Kelly Head, Newfoundland; Kelly Island, Saskatchewan; Kelly Lake, Alberta; Kelly Point, Nova Scotia; and Lac Kelly, Quebec.
[56] Ms. Saltzman also provides evidence of “Kelly” as a first name, with an extensive list of well known people and fictional characters with the first name “Kelly”.
Affidavit of Jane Griffith
[57] Ms. Griffith is the Senior Research Consultant at Bedford Consulting Group Inc., in Toronto. She was asked to research the meaning of “Kelly” with an emphasis on how the word might be understood by Canadians. Her evidence is similar to that of Ms. Saltzman, identifying technical definitions of “kelly”, and some place name and first name significance.
Rule 43/44 Evidence of the Opponent
Affidavit of Leslie Kirk
[58] Ms. Kirk identifies herself as a law student, and attaches to her affidavit copies of archived versions of the www.kellyengineering.com website obtained from the WayBackMachine, available at www.archive.org, from May 29, 2002 through to April 28, 2007. Each of these features the Mark prominently (Exhibits 7 to 32). She describes how she used the WayBackMachine to access archived pages, and provides printouts tabulated with a brief description.
[59] A review of these printouts reveals that Canada does not appear in the drop down menu of countries listed as options from which a user can choose. I note however that the information about services that appears on the pages, as reproduced above in paragraph [26] indicates that Kelly provides services worldwide.
[60] I note that evidence produced by WayBackMachine indicating the state of websites in the past has been found to be generally reliable [see Candrug Health Solutions Inc. v. Thorkelson (2007), 60 C.P.R. (4th) 35 (F.C.); reversed on other grounds 2008 F.C.A. 100, (Candrug); and ITV Technologies, Inc. v. WIC Television Ltd. (2003), 29 C.P.R. (4th) 182 at 192 (F.C.T.D.), affirmed (2005), 38 C.P.R. (4th) 481 (F.C.A.)]. During Mr. Lichtenberg’s cross-examination he was presented with these screen prints, and subsequently confirmed in his answers to undertakings that there was nothing to indicate that these were not screen prints from the website.
[61] Ms. Kirk also attaches the Toronto Yellow Page directory listings for the category “employment” from the years 1998/1999 through to 2007/2008; the listings for each of these years includes at least one reference to KELLY services, as well as additional references to other Kelly trade-marks in some cases. Each listing is accompanied by a large graphic advertisement that clearly displays the KELLY trade-mark in association with employment services and specifies a list of employment sectors it services; in many cases the list includes engineers. The Mark does not appear on any of these pages.
Analysis of Grounds of Opposition
Section 38(2)(a)/Section 30(i)
[62] This ground of opposition is dismissed as the Opponent has not alleged any facts in support of its allegation that the applicant cannot be satisfied that it is entitled to use the Mark. I agree with the Applicant’s argument that the decision in Lubrication Engineers, Inc. v. Canadian Council of Professional Engineers (1992), 41 C.P.R. (3d) 243 at 244 (F.C .A.) means that allegations of non-compliance with provincial statues cannot be grounds under s. 30(i). In any event, I agree with the Applicant that the Opponent has not lead any evidence to suggest that the Applicant is holding itself out as engaging in the practice of engineering. In addition, I note that this ground has been dismissed in a previous decision involving the same parties and the same trade-mark [see Canadian Council of Professional Engineers v. Kelly Properties, Inc. (2004) 37 C.P.R. (4th) 537 at 544 (T.M.O.B.) (CCPE v Kelly); see also Canadian Council of Professional Engineers v. Management Engineers GmbH (2004), 37 C.P.R. (4th) 277 (T.M.O.B.)][Management].
[63] Where an applicant has provided the statement required by s. 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. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.) at 155]. As the Opponent has not evidenced any bad faith on behalf of the Applicant, this ground is dismissed.
Section 38(2)(a)/Section 30(b)
[64] The initial burden on the opponent is light respecting the issue of non-conformance with s. 30(b) of the Act, as the facts regarding the applicant’s first use are particularly within the knowledge of the applicant [Tune Masters v. Mr. P’s Mastertune Ignition Services Ltd. (1986), 10 C.P.R. (3d) 84 (T.M.H.O.) at 89]. This burden may be met by reference not only to the opponent’s evidence, but also to the applicant’s evidence [Labatt Brewing Co. v. Molson Breweries, a Partnership (1996), 68 C.P.R. (3d) 216 (F.C.T.D.) at 230].
[65] Where an opponent relies on an applicant’s evidence to meet its evidential burden in relation to his ground, the opponent must show that the applicant’s evidence is “clearly” inconsistent with the applicant’s claims as set forth in its application (see Ivey Lea Shirt Co. v. 1227624 Ontario Ltd. (1999), 2 C.P.R. (4th) 562 (T.M.O.B.) at 565-566, affirmed 11 C.P.R. (4th) 489 (F.C.T.D.)).
[66] To meet the requirements of s. 30(b), there must have been continuous use by the Applicant of its Mark in association with its services from its claimed date of first use, April 1999 to the filing date of the present application.
[67] In response to this added ground of opposition, the Applicant did provide the second affidavit of Ms. French which addresses the claimed date of first use. Although she states that she was unable to confirm hits from Canadian users for the period 1999-2003, she provides that the www.kellyengineering.com website has featured the Mark since at least as early as 1999. Ms. French reiterates that the four periodicals containing advertisements for the services in association with the Mark were circulated in Canada in April 1999.
[68] Although the Opponent made much of the fact that Canada did not appear on the drop down list of country options on www.kellyengineering.com, I do not find that this absence is “clearly inconsistent” with the Applicant’s claimed date of first use, since the use relied on is through print media (both in April 1999 and before and after June 15, 2004). In any event, I am not convinced that the absence of Canada in a drop down list is categorical evidence that the services were not available to users in Canada. There is nothing that is “clearly inconsistent” with the evidence (given the print ads, the statements of Ms. French, and existence of the office in Toronto) that the Applicant was in a position to offer its services in association with the Mark as at April 1999 and that it continues to do so.
[69] Accordingly, I am of the view that this ground of opposition must fail.
Section 38(2)(b)/Section 12(1)(b)
[70] The Opponent has pleaded that the Mark is clearly descriptive or deceptively misdescriptive of engineering services, including services offered by an engineer with the last name Kelly. As set out above, the material date is the date of filing of the application, namely June 15, 2004.
[71] The issue as to whether the Mark is clearly descriptive or deceptively misdescriptive must be considered from the point of view of the average purchaser of the associated wares. 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 C.P.R. (2d) 25 at 27-8 (F.C.T.D.); Atlantic Promotions Inc. v. Registrar of Trade Marks, (1984) 2 C.P.R. (3d) 183 at 186 (F.C.T.D.); Molson Cos. Ltd. v. Carling Breweries of Canada Ltd. (1981), 55 C.P.R. (2d) ( F.C.T.D.)]. Character means a feature, trait or characteristic of the product and “clearly” means “easy to understand, self-evident or plain” [Drackett Co. of Canada Ltd. v. American Home Products Corp. (1968), 55 C.P.R. 29 at 34 (Ex. Ct.)].
[72] The Opponent’s initial onus has been met in view of the ordinary meaning of the words “Kelly”, “Engineering” and “Resources”. However, as stated in CCPE v Kelly supra, 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 in association with the applied-for services.
[73] On balance, I am of the view that although perhaps not possessing a high degree of inherent distinctiveness, the Mark does not contravene s. 12(1)(b) of the Act. Even if the consumer of employment services would think that the business was owned by someone whose last name is Kelly, this does not necessarily render the Mark clearly descriptive of “personnel employment services, namely, providing temporary, temporary to full-time, and full-time employees having specialized technical skills, education and/or training”. As stated by Member Bradbury in CCPE v Kelly supra at page 545:
I consider it self-evident that the mark, being a combination of a name and descriptive words, is in its entirety not clearly descriptive of the character or quality of the services (see Breck’s Sporting Goods Co. v. Douglas Slater, supra; Molson Companies v. John Labatt Ltd, supra). Nor is the mark as a whole clearly descriptive of the conditions of or the persons employed in the production of the services.
…
…[I]t seems unlikely to me that members of the public would assume that the present applicant is a qualified engineer or is offering “engineering” services of any sort just because it uses KELLY ENGINEERING RESOURCES as a trade-mark for “personnel employment services”. I believe that the average Canadian would understand this mark in the context of the proffered services to mean that the applicant assists in finding employment for “engineers” and would not assume that the applicant is itself an “engineer” or that personnel employment services” are a type of “engineering” service. Both engineering services and personnel employment services are the sort of services that purchasers exercise care when purchasing. I find it difficult to believe that the average consumer would be deceived in any way. Moreover, I reach this conclusion understanding full well the opponent’s position that there are some engineers whose expertise includes the efficient use of human resources.
Overall, I have difficulty with the opponent’s view that the combination of any word with the word “engineer” or “engineering” will cause the public to conclude that a professional engineer is involved. I view that as a simplification, the logic of which is highly dependent on the nature of the associated wares or services.
[74] I agree that the Mark does not clearly describe or deceptively misdescribe that the Applicant is an engineering firm or that it is offering “engineering” services. Rather the Mark merely suggests that Kelly provides resources either for those looking for jobs in an area of engineering, or for engineering firms looking for personnel, (who may be, but are not necessarily, engineers).
[75] The Federal Court and the Registrar have had other occasions to consider whether a trade-mark comprised of a surname, followed by the term “engineers’ or “engineering”, offends the provisions of section 12(1)(b) of the Act. In Canadian Council of Professional Engineers v. Krebs Engineers (1996), 69 C.P.R. (3d) 267 (T.M.O.B.)[Krebs], the Registrar found that KREBS ENGINEERS & Design, for use in association with “industrial processing equipment namely, liquid cyclones”, was clearly descriptive or deceptively misdescriptive of the persons employed in the production of the wares. It was held that the everyday user of the applicant’s wares would assume, upon seeing or hearing the applicant’s mark, that the applicant employs engineers who are involved in the design, production and sale of the applied for wares. The portion KREBS is a surname and, as noted, the trade-mark as a whole would be viewed as the name of an engineering firm. On this basis it was found that the mark was either clearly descriptive or deceptively misdescriptive of the persons employed in the production of the applied for wares.
[76] The present case can be distinguished from Krebs supra in that the subject Mark relates to services and not wares, and further in that the subject services are not considered specific to engineers. The objected to portion of the Mark does not describe the persons producing or providing the services. Just because engineers may be engaged in human resource management from a production efficiency perspective, does not convince me that personnel employment services per se are a specialized field of engineering.
[77] I also consider this case distinguishable from the decision of the Registrar in Management supra as the offending trade-mark in that case, ME MANAGEMENT ENGINEERS & Design, contained the word ENGINEERS, rather than “engineering”. Therefore it was more likely in that case that a consumer of business consultation and related services would assume that said services were provided by engineers.
[78] In Canadian Council of Professional Engineers v. John Brooks Co. (2004), 25 C.P.R. (4th) 507 (F.C.T.D.) [Brooks], the Court considered that the trade-mark BROOKS BROOKS SPRAY ENGINEERING, offended the provisions of s.12(1)(b) in association with the services of “operation of a business, namely distributing spray nozzles and manifolds for high and low pressure cooling, cleaning, condition and processing, gauges, hoses, connectors and couplings, filters and strainers, lubricators and flow regulators, and assembling and distributing fluid handling systems composed of the aforementioned components.” The Court reasoned at p.513:
“…the proposed trade-mark BROOKS BROOKS SPRAY ENGINEERING” is deceptively misdescriptive of JBCL’S services and the persons providing them. However the evidence does not show that the proposed trade-mark is clearly descriptive since JBCL employees relatively few engineers”.
…While “spray engineering” may not be a recognized field of specialty in the engineering profession, those words connote a range of sophisticated technical services related to fluid handling and distribution and, therefore, a connection with the kinds of services one might expect professional engineers to provide.
In my view, the very fact that the term “engineering” is closely regulated has implications here. Most people would assume that businesses using that word in their name offer engineering services and employ professional engineers, unless the context clearly indicated otherwise”(emphasis mine).
[79] In my view, based on the evidence at hand in this case, it seems self-evident that the context of personnel employment services would be one of the exceptions alluded to in the Brooks decision since personnel employment services are not the type of technical services that one would expect engineers to provide. On the contrary, as noted above, I find it reasonable to conclude that most people would immediately understand that the services assist people to find employment in the engineering field or assist engineering firms in locating qualified employees, such persons may or may not be engineers.
[80] In a subsequent decision involving the same Opponent, Canadian Council of Professional Engineers v. Rothenbuhler Engineering Company (2005) 50 C.P.R. (4th) 115 (T.M.O.B.) [Rothenbuhler] it was argued by the applicant, with respect to the trade-mark ROTHENBUHLER ENGINEERING, that the situation was distinguishable from Krebs, in that the component ROTHENBUHLER was neither primarily nor merely a surname, and further that “engineering” was different from the term “engineers” in that it had “a much broader significance than merely skills of professional engineers”. The Registrar found that the trade-mark offended s. 12(1)(b) on the basis that, in context, ROTHENBUHLER would be perceived as a name, such that a purchaser when purchasing the sophisticated electronic wares or services sold under that trade-mark would assume that the wares and services emanate from an engineering firm where qualified engineers are employed in the production of the wares and services. Consideration was also given to the fact that “engineering” was a significant part of that trade-mark.
[81] In my view, this principle does not apply in this case. The subject Mark relates to services (not wares) that the public would not expect to be provided by engineers. Further, I do not find that ENGINEERING is the significant part of the Mark; in the context of KELLY ENGINEERING RESOURCES, RESOURCES is equally as significant as the word ENGINEERING. Consequently, given that the nature of the services does not relate to the kind of technical endeavor that one would expect of engineers or an engineering firm, and having regard to the principles referred to in CCPE v Kelly supra relying on the reasoning set out in the Molson Companies Ltd. v. John Labatt Ltd. (1981), 58 C.P.R. (2d) 157[LABATT EXTRA], (where the surname LABATT in conjunction with the descriptive term EXTRA was found not to offend s. 12(1)(b)), I find that on balance the Mark does not offend the provisions of s. 12(1)(b). This ground of opposition fails.
[82] As a result it is unnecessary to consider whether the Mark is registrable under s.14 of the Act.
Section 38(2)(b)/Section 12(12)(e)/ Section 10 Ground of Opposition
[83] The Opponent alleged that the Mark is not registrable as the word “engineering” has become recognized in Canada as designating the kind, quality or value of wares and services provided by licensed engineers; since the public would think that the Applicant is licensed in or throughout Canada to engage in the practice of engineering, the use of the Mark would likely be misleading.
[84] Section 10 provides:
Where any mark has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services, no person shall adopt it as a trade-mark in association with such wares or services or others of the same general class or use it in a way likely to mislead, nor shall any person so adopt or so use any marks so nearly resembling that mark as to be likely to be mistaken therefore.
[85] The Opponent alleges that “engineering” has become recognized in Canada as designating services provided by licensed engineers. However, in this case, the Applicant is using “engineering” in association with personnel employment services, thus it has not been adopted in association with services in same general class as those provided by licensed engineers. Furthermore, and based on the reasoning set out in the discussion of registrability under s.12(1)(b) the use of “engineering” together with “resources” in the context of employment services is not likely to be misleading. Although the Opponent has provided references to the fact that the responsibilities of some engineers can include human resource management in the area of production efficiency, there is no evidence to demonstrate that “engineering” has become recognized in Canada as designating a kind, quality or value of “personnel employment services”. Accordingly this ground of opposition fails.
Section 38(2)(d)/s. 2 Non-Distinctiveness Ground of Opposition
[86] The material date with respect to non-distinctiveness is the date of filing of the opposition, in this case, February 22, 2005 [Andres Wines Ltd, v. E & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 (F.C.A.); Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.)].
[87] The Opponent alleges that the Mark is not distinctive as defined in s. 2, in that it fails to distinguish the Applicant’s services from the services of others, including other engineers in general and other engineers with the surname “KELLY” in particular; and other entities which are licensed to practice engineering in Canada.
[88] Typically, under this ground of opposition an opponent has the evidentiary burden of demonstrating sufficient use by it or a third party to negate distinctiveness of the Applicant’s mark. In this case, however, the claim of non-distinctiveness appears to be founded on the rationale that the Mark has no distinctiveness and is not capable of functioning as a trade-mark since it is allegedly incapable of distinguishing the services provided in association with the name KELLY from the same services of others who “might” have the same name.
[89] The Opponent has filed evidence that “Kelly” is primarily understood as a surname; the Applicant has filed evidence that Kelly is equally a first name and has significance as a technical dictionary word and as the name of (or part of the name of) various places in Canada.
[90] More importantly however, the Applicant has filed evidence of the promotion and sales of services in Canada (and internationally) in association with the word KELLY. The evidence establishes that KELLY personnel employment services are advertised in Canada on-line through various websites, at trade shows, outdoor advertising, and direct mailings distributed to employers and employees, and sponsorship of community events. Although some of these events did not take place until after the material date, the Opponent itself has provided excellent evidence of advertisements in the Toronto Yellow Pages from 1999 to 2005 that clearly display the trade-mark KELLY (as KELLY Services) in association with personnel employment services.
[91] The evidence also demonstrates that in Canada, significant revenue has been spent on advertising and marketing of KELLY services. Further, I consider the fact that the www.kellyengineering.com website received significant hits from users in Canada before the material date (over 110,497 hits in 2003, over 92,955 hits in 2004) to be persuasive. There is also evidence of some use of the subject Mark before the material date. Circulation figures are in evidence for magazines displaying the Mark that were circulated in Canada on 6 different dates in 2004.
[92] I have also taken into consideration the fact that Kelly has a history of recruiting and placing professional and technical employees in a variety of fields such as finance and accounting, information technology, law, science, and health care. The Annual Reports dating from 1999 to 2004 provided by Mr. Lichtenberg indicate that Kelly is indeed a large international staffing provider. The evidence establishes that KELLY was first used in association with employment services in 1946 and the Applicant and its affiliates now operate in 30 countries and employ more than 700, 000 people annually.
[93] The Opponent relies on the decision in LABATT EXTRA supra, for the proposition that a trade-mark that consists of a surname and a descriptive term is, as a whole, not adapted to distinguish the services of the applicant from the like services of others bearing the same surname. This principle was relied on in CCPE v Kelly supra, where the it was found at page 548:
…the MARK being a combination of a name and a non-descriptive term, is not inherently adapted to distinguish the services of the Applicant from the similar services of others who also bear the name “Kelly”. In addition, the applicant’s evidence does not enable me to conclude that its mark has acquired distinctiveness in Canada (see also Brecks Sporting Goods Co. v. Douglas Slater, supra). Accordingly this ground of oppositions succeeds.
[94] I do not disagree with this principle; however, in the present case ample evidence has been provided of the use of “KELLY” in association with employment services in Canada and worldwide. KELLY is the first portion of all of the Kelly trade-marks and a registered trade-mark in itself, and I am of the view that it has acquired some distinctiveness by virtue of the use (mainly as KELLY Services) demonstrated in the evidence. In other words, to the consumer of employment services, the primary significance of the portion KELLY in the subject Mark is not as a surname but as an indication of KELLY brand services provided by the Applicant and its licensed affiliates. On balance, I find the portion “KELLY” has acquired distinctiveness such that the Mark as a whole can function to distinguish the services of the Applicant from similar services of others. Accordingly, this ground of opposition fails.
Disposition
[95] In view of the foregoing, pursuant to the authority delegated to me under s. 63(3) of the Act, I reject the opposition pursuant to s. 38(8) of the Act.
______________________________
P. Heidi Sprung
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office