LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 206
Date of Decision: 2010-11-30
IN THE MATTER OF AN OPPOSITION by Asset, Inc. to application No. 1,226,130 for the trade-mark REPO.COM & Design in the name of Dot Net Support Inc.
[1] On August 5, 2004, Dot Net Support Inc. (the Applicant), filed an application for the trade-mark REPO.COM & Design (the Mark), shown below, based upon use of the Mark in Canada by the Applicant or its predecessor-in-title Marvin Boman, d.b.a. DOT NET SUPPORT since September 30, 2003.
[2] The Applicant disclaimed the exclusive right to the word REPO apart from the trade-mark as a whole. The statement of services currently reads:
“Operation of a retail dealership for repossessed property, namely trucks, cars, vans, minivans, sport utility vehicles, boats, recreational vehicles, snowmobiles, motorcycles, aircraft, and real estate.”
[3] The application was advertised for opposition purposes in the Trade-marks Journal of May 31, 2006.
[4] On June 27, 2006, Asset, Inc. (the Opponent) filed a statement of opposition against the application. The grounds of opposition are that the Applicant’s application does not conform to the requirements of s. 30(b) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act) in that the Applicant has not used the Mark with the applied for services since September 30, 2003, the Mark is not registrable pursuant to s. 12(1)(d), the Applicant is not the person entitled to registration of the Mark pursuant to s. 16(1)(a), and the Mark is not distinctive. The final three grounds are based on confusion with the Opponent’s use and registration of the following marks: REPOMAN (registration No. 569,549); 100% PURE REPO (registration No. 580,006); REPOHIGHWAY.COM (registration No. 568,326) and REPO DEPO (registration No. 458,282).
[5] The Applicant filed and served a counter statement, in which it denied the Opponent’s allegations.
[6] The Opponent’s evidence consists of the affidavit of Kim Parrot, and the affidavit of John Regan. The Applicant’s evidence consists of the affidavit of Marvin Boman. Both Mr. Regan and Mr. Boman were cross-examined and their cross-examination transcripts form part of the record.
[7] Both the Applicant and the Opponent filed a written argument. The Opponent requested an oral hearing but later withdrew its request to be heard.
Onus and Material Dates
[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 C.P.R. (3d) 293 (F.C.T.D.) at 298; Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.).]
[9] The material dates that apply to the grounds of opposition are as follows:
• s. 30 - the filing date of the application [see Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 (T.M.O.B.) at 475];
• s. 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 C.P.R. (3d) 413 (F.C.A.)];
• s. 16(1) - the Applicant’s date of first use [see s. 16(1)];
• non-distinctiveness - the filing date of the opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.)].
Section 30(b) Ground
[10] The Opponent has pleaded that the application does not comply with s. 30(b) of the Act because the Applicant has not used the trade-mark in association with the applied for services since the alleged date of first use of September 30, 2003.
[11] The initial burden on the Opponent is lighter respecting the issue of non-conformance with s. 30(b), because the facts regarding the Applicant's first use are particularly within the knowledge of the Applicant [see 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 [see Labatt Brewing Co. v. Molson Breweries, a Partnership (1996), 68 C.P.R. (3d) 216 at 230 (F.C.T.D)]. However, while the Opponent may rely upon the Applicant's evidence to meet its evidential burden in relation to this ground, the Opponent must show that the Applicant's evidence is "clearly" inconsistent with the Applicant's claims as set forth in its application. Finally, s. 30(b) requires that there be continuous use of the applied for trade-mark in the normal course of trade since the date claimed [see Labatt Brewing Co. v. Benson & Hedges (Canada) Ltd. (1996), 67 C.P.R. (3d) 258 (F.C.T.D.) at 262].
[12] The Opponent relies on the Applicant's evidence to satisfy its initial burden. I will discuss below those parts of the evidence that I consider to be the most relevant to the issue of whether the Applicant has used the Mark since the date claimed.
[13] As I understand the evidence, a company by the name of Week-end Holdings Limited runs a repossessed goods sales lot at 6139 Trapp Ave., Burnaby, B.C. The Applicant, or its predecessor-in-title Mr. Boman, however, have displayed the Mark on signage and on brochures at this sales lot since the Applicant’s alleged date of first use, i.e. September 30, 2003, although I note that the Applicant did not include photographs of the signage or samples of brochures to corroborate this assertion. Mr. Boman, who is President of the Applicant, does not lease space from Week-end Holdings Limited, nor is one of their employees. Instead, he describes himself as Acting Sales Manager, i.e. someone who manages the selling process (see Boman cross-examination, Qs. 324-340). He explains that he controls the advertising, website and paperwork required to sell the repossessed property listed on the REPO.COM website. Week-end Holdings pays the Applicant to advertise repossessed goods on the REPO.COM website. Purchasers see the goods on-line and attend at the repossessed goods sales lot to sign the contract and purchase the goods (Boman cross-examination, Q. 341).
[14] The Opponent submits that the Applicant has not shown use of the Mark in association with the applied for services since the claimed date of first use for the following reasons:
• the Applicant has not shown use of the mark in association with “operation of a retail dealership for repossessed property”; all the Applicant has shown is the appearance of its Mark on its website and the Buy/Sell.com website;
• Mr. Boman admitted on cross-examination that the website REPO.COM did not go live until November of 2003 and did not list products to be sold until after such date (Boman cross-examination, Qs. 257-264);
• Mr. Boman states that the business had a physical presence at a repossessed sales lot but neither Mr. Boman nor the Applicant lease space on this lot; Mr. Boman admits that what he means by having a physical presence is that he is acting sales manager at this location;
• Mr. Boman admits that you have to be a dealer to sell repossessed vehicles or operating under a dealer license; he also admits that the Applicant is not a dealer and is not operating under a dealer license.
[15] The relevant excerpt from the testimony of Mr. Boman is as follows:
Q. 360 Week-end Holdings doesn’t own Dot Net Support Inc.
A. Correct.
Q. 361 Okay. Is Dot Net Support Inc. a dealer or…?
A. No.
Q. 362 No. Do you have to be a dealer to sell repossessed vehicles?
A. You have to be a dealer to sell repossessed vehicles or operating under a dealer license.
Q. 363 I see. Does Dot Net Support Inc. operate under a dealer license?
A. No.
Q. 364 Okay.
A. Dot Net Support is not engaging into contracts for – between purchasers of items that are listed on repo.com.
Q. 365 Okay.
A. I, Marvin Boman, could do that under the capacity of Weekend Holdings and the license that I hold there.
Q. 366 So you have a license with Weekend Holdings?
A. Correct.
Q. 367 Personally.
A. Yes.
[16] In my view, Mr. Boman’s testimony raises serious doubts that the Applicant or its predecessor-in-title has been authorized to perform the services of “operation of a dealership for repossessed vehicles” since the claimed date of first use. Mr. Boman has not explained what he means by “under the capacity of Weekend Holdings” or what a “personal license” is. Instead, Mr. Boman admits that the Applicant is not a dealer and is not operating under a dealer license. Even if the Applicant and its predecessor-in-title Mr. Boman were authorized to perform such services, it is not clear from the evidence furnished that use of the Mark in association with the services has enured to the benefit of the Applicant continuously since the claimed date of first use. In this regard, even if Mr. Boman under his personal capacity was able to carry out the applied for services, he could only have done so until the date the Applicant incorporated, i.e. December 5, 2003. Further, in view that the Applicant’s website did not go live until November, 2003, I would have expected Mr. Boman to have provided photographs of sales lot signage, invoices, advertising or copies of the Applicant’s brochure to show use of the REPO.COM and Design Mark in association with the Applicant’s retail dealership for repossessed property as of the September 30, 2003, claimed date of first use.
[17] Having carefully considered the matter, I find that the Opponent has met its light evidential burden with respect to its allegation that the Applicant has not used the Mark in association with the applied for services since the alleged date of first use. As the Applicant has not met its legal burden to show continuous use of the Mark since the date claimed, the s. 30(b) ground succeeds on this basis.
Section 12(1)(d) ground
[18] The s. 12(1)(d) ground of opposition turns on the issue of the likelihood of confusion between the Mark and each of the Opponent’s trade-marks.
[19] I note that the Opponent’s initial burden with respect to the s. 12(1)(d) ground has been satisfied because all if its registrations are in good standing.
[20] I note that most of the Opponent’s evidence relates to its REPO DEPO mark, registration No. TMA458,282. As a result, I consider the Opponent’s s. 12(1)(d) case to be strongest with respect to its REPO DEPO mark and I will thus focus my discussion thereon unless otherwise indicated.
test for confusion
[21] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in s. 6(5) of the Act, namely: a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; b) the length of time each has been in use; c) the nature of the wares, services or business; d) the nature of the trade; and e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight.
[22] The Supreme Court of Canada has discussed the appropriate process for assessing all the surrounding circumstances to be considered in determining whether two trade-marks are confusing in its decisions in Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 and Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée et al. (2006), 49 C.P.R. (4th) 401. It is with these general principles in mind that I shall now assess all of the surrounding circumstances.
s. 6(5)(a) - inherent distinctiveness of the trade-marks and the extent to which each trade-mark has become known
[23] None of the marks at issue possess a great degree of inherent distinctiveness because they are each suggestive, if not descriptive, of the parties’ repossession services. In this regard, the Applicant provided the following definition of the word REPO from the American Heritage Dictionary of the English Language: “repossession of merchandise or property from a buyer who has defaulted on payment.” I still consider the Mark to be slightly more inherently distinctive than the Opponent’s trade-mark, however, because of its design component.
[24] As the strength of a trade-mark may be increased by means of it becoming known through promotion or use, I will now turn to the extent to which the trade-marks have become known in Canada. The evidence of the Opponent’s affiant, Mr. Regan, Chairman of the Opponent, provides the following information:
• the Opponent is an international company with its headquarters in Toronto and associated offices in London England, Melbourne Australia, Chicago USA and Santiago Chile. It provides for the repossession and sale of distressed moveable property and real property nationwide subject to a security interest and it supplies various collection processing technology and infrastructure services to all of Canada’s ten largest banks and financial institutions (and over 200 international ones);
• the services registered under the REPO DEPO mark are as follows: Paralegal lien work on behalf of secured creditors, financial institutions, lawyers, trustees in bankruptcy and property storers and repairers; contracting of legal and bailiff services; property recovery services; insurance settlement services; liquidation of security interests in property; storage and transportation services; appraisal and evaluation services; and documentation agent services;
• the Opponent has used REPO DEPO trade-mark in association with its registered services in Canada for more than 32 years;
• the Opponent markets, sells and performs its REPO DEPO Services in Canada in association with the REPO DEPO mark to Canadian public who wish to buy real or moveable property which is the subject of a security interest in favour of a financial institution or other such secured lender;
• the Opponent’s use of the REPO DEPO mark in association with the REPO DEPO Services has included display of the mark prominently on the Internet, building signage in Canada (since about 1978) as well as in Canadian circulated newspaper and magazine ads and telephone directory listings;
• since the Opponent first adopted REPO DEPO in about 1978, sales in association with the mark have exceeded in excess of 1,000,000,000; the Opponent’s gross sales for its REPO DEPO Services have ranged from approx. 8.5 million in 1996 to 260 million in 2007 (projected);
• the Opponent has extensively promoted the REPO DEPO Services in Canada for more than 20 years; Mr. Regan estimates that annual advertising and promotional expenses for REPO DEPO services in Canada have been between $900,000 in 1996 to $8,000,000 in 2007 (projected); attached as Exhibits D and E to his affidavit are representative photocopies of various poster, magazine, newspaper advertisements, print media and corporate materials promoting the Opponent’s services in association with the REPO DEPO trade-mark;
• the Opponent has operated the www.repodepo.ca website since at least as early 1997 in association with its wares and services; according to company records, Mr. Regan estimates that since the launch of the website in 1997, 130 million users have visited the site (although he does not indicate if these users were Canadian).
[25] Based on the Opponent’s evidence, I am satisfied that its REPO DEPO mark has become known to a considerable extent in Canada. The Applicant, on the other hand, has not provided sufficient evidence to show that the Mark has become known in association with the Applicant’s applied for services to any significant extent in Canada. This factor therefore favours the Opponent.
s. 6(5)(b) - the length of time each trade-mark has been in use
[26] The length of time that each mark has been in use favours the Opponent.
s. 6(5)(c) and (d) - the nature of the wares, services or business; the nature of the trade
[27] When considering the wares, services and trades of the parties, it is the statement of wares or services in the parties' trade-mark application and registration that govern in respect of the issue of confusion arising under s. 12(1)(d) [see Henkel Kommanditgesellschaft auf Aktien v. Super Dragon Import Export Inc. (1986), 12 C.P.R. (3d) 110 (F.C.A.); Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.); Miss Universe Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.)].
[28] The applied for services are comprised of the following: “Operation of a retail dealership for repossessed property, namely trucks, cars, vans, minivans, sport utility vehicles, boats, recreational vehicles, snowmobiles, motorcycles, aircraft and real estate”. The Opponent’s REPO DEPO mark is registered in association with, inter alia, property recovery services and liquidation of security interests in property.
[29] To the extent that both parties’ services relate to the sale of repossessed goods, there is an overlap in the nature of the parties’ services. Their respective channels of trade would therefore presumably overlap.
s. 6(5)(e) - the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
[30] Although the first component of a mark is often considered more important for the purpose of distinction, when a word is a common, descriptive or suggestive word, the significance of the first component decreases [see Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.); Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.); Phantom Industries Inc. v. Sara Lee Corp. (2000), 8 C.P.R. (4th) 109 (T.M.O.B.)]. In the present case, there is some degree of resemblance between the marks because both begin with the word REPO. However, as previously noted, the word REPO is descriptive of the parties’ services. It follows that consumers would not likely rely on this word to distinguish one source from another. Further, while both marks may begin with the word REPO, the Applicant has added “.COM” and a distinctive arrow design that serve to distinguish its Mark from the Opponent’s. I also consider the ideas suggested by both marks to be different in that the idea suggested by the Mark is a website where one can find repossessed goods whereas the idea suggested by the REPO DEPO mark is a physical location.
Surrounding Circumstances
State of the Register and State of the Marketplace
[31] Mr. Boman states in his affidavit that a registrability/availability search for the word REPO in Canada was conducted in September, 2003, by the firm Gowling Lafleur Henderson at the request of the Applicant. The data from this search came from the Canadian Trade-marks Database, the NUANS corporate and business name database, The 16 Million Businesses Phonebook, CANADAPHONE, Canada Business Pages and other common law references, and was attached as Exhibit C to Mr. Boman’s affidavit. As Exhibit D he attaches a trade-mark research report conducted by Thomson and Thomson of the USPTO Trade-mark Database, various state trade-mark databases, Business Name databases, and Domain Name databases. He attaches as Exhibit E results of a Google Internet search showing the word REPO in various domain names and articles.
[32] The Opponent raised the following objections regarding the above evidence:
• the search of the trade-marks register only revealed 4 third party marks with the component REPO, none of which relate to the businesses similar to those of the Applicant or the Opponent;
• the Applicant has not provided the parameters or the conclusions of the search done by Gowlings;
• the search conducted by Thompson and Thompson was a U.S. search and only refers to two Canadian domain names, one of which is the Applicant’s domain name;
• there is no evidence that any of the companies identified in Exhibit E had a location in Canada;
• there is no evidence of use of DEPO marks by third parties in the Canadian marketplace.
[33] State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace [Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432 (T.M.O.B.); Welch Foods Inc. v. Del Monte Corp. (1992), 44 C.P.R. (3d) 205 (F.C.T.D.)]. Also of note is the decision in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.), which is support for the proposition that inferences about the state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located. I agree with the Opponent that the state of the register evidence here, on its own, is insufficient to make any inferences about the state of the marketplace.
[34] With respect to the Applicant’s state of the marketplace evidence, I agree with the Opponent that the Applicant’s evidence is limited to the extent that it provides evidence showing the generic use of the term REPO in Canada or on Canadian websites. Further, the state of the marketplace evidence provided by the Applicant does not demonstrate that any business is actually operating in Canada in association with a name incorporating the term REPO.
[35] However, the Applicant’s evidence does demonstrate that there are at least four listings for such companies in Canada, numerous websites for repossession services that appear to have contained the term REPO in their domain names for many years and that the term REPO has been used for many years in a generic sense in various on-line articles about the repossession industry. Therefore, notwithstanding the Opponent’s comment that there are no examples of businesses in Canada operating under marks that contain the word REPO, I consider the large volume of generic uses of REPO that the Applicant has produced to be a relevant surrounding circumstance in the present opposition.
conclusion re: the likelihood of confusion
[36] 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 REPO.COM Design on the Applicant’s retail dealership for repossessed property at a time when he or she has no more than an imperfect recollection of the Opponent’s REPO DEPO trade-mark, and does not pause to give the matter any detailed consideration or scrutiny [see Veuve Clicquot].
[37] In view of my findings above, and having considered all of the relevant circumstances, I conclude that there would be no reasonable likelihood of confusion between the Mark and the Opponent’s REPO DEPO trade-mark as of the date of my decision In my view, since REPO is a term common to the repossessed goods industry, consumers are not likely to rely on this word to distinguish one source from another. Therefore, given the descriptive nature of the word REPO, I do not believe that the average consumer of repossession services will likely confuse the Applicant’s REPO.COM and Design trade-mark with the Opponent’s REPO DEPO mark. The following words of Mr. Justice Cattanach in Questor Commercial v. Discover Services Ltd. (1979), 46 C.P.R. (2d) 58 (F.C.T.D.) at p. 62, apply well to the case at hand:
“For the appellant’s mark to be confusing with the respondent’s the respondent cannot rely on the common feature to both it and the appellant and to other traders but must rely on something peculiar to the respondent which the appellant has adopted. This has not been done by the appellant from which if follows that the appellant’s trade-mark is not confusing with the opponent’s registered mark.”
[38] The s. 12(1)(d) ground of opposition therefore fails with respect to the Opponent’s REPO DEPO mark.
[39] With respect to the Opponent’s REPOMAN, 100% PURE REPO and REPOHIGHWAY.COM trade-marks, my findings above are, for the most part, also applicable to these marks. The differences that should be noted are as follows.
[40] With respect to the Opponent’s 100% PURE REPO mark, the Opponent has not shown that this mark has become well known in Canada. The degree of resemblance between this mark and the Mark is also different. In this regard, I consider the degree of resemblance between the REPOMAN and 100% PURE REPO marks to be less than between the Opponent’s REPO DEPO mark and the Applicant’s Mark.
[41] The Opponent has also not shown that its REPOHIGHWAY.COM mark has become well known in Canada. I do, however, consider there to be a higher degree of resemblance between the Opponent’s REPOHIGHWAY.COM mark and the Applicant’s Mark in sound and appearance because both marks share the components REPO and .COM. The ideas suggested by these marks are different, however, as REPOHIGHWAY.COM suggests a route to repossession whereas the Applicant’s Mark suggests a website for repossessed goods. In any case, my conclusion that a consumer who sees the Applicant’s Mark in association with the applied for services at a time when he or she has no more than an imperfect recollection of the Opponent’s REPOHIGHWAY.COM mark would not as a matter of first impression be likely to believe that the services associated with Opponent’s mark and the Applicant’s Mark were manufactured, sold or performed by the same person.
Remaining Grounds of Opposition
[42] The material dates for assessing the likelihood of confusion in respect of the non-entitlement and non-distinctiveness grounds are, respectively, the Applicant’s date of first use and the date of opposition. The evidential burden on the Opponent under the s. 16 ground is to show use or making known of its mark prior to the Applicant’s date of first use and that its mark has not been abandoned as at the date of advertisement of the application, namely, May 31, 2006 [s. 16(5)]. The Opponent’s burden under the distinctiveness ground is to show that its mark had become known sufficiently as of the filing of the statement of opposition to negate the distinctiveness of the Mark.
[43] The Opponent has met its burden under both grounds with respect to its REPO DEPO mark. As I do not consider the differences in material dates to have any significant impact on the determination of the issue of confusion between the Opponent’s REPO DEPO mark and the Mark, my finding above that the trade-marks are not likely to be confused applies equally to these grounds of opposition which also fail.
[44] The Opponent has also met its evidential burden with respect to its s. 16(1)(a) and s. 38(2)(d) grounds with respect to its 100% PURE REPO and REPOHIGHWAY.COM marks. Most of my findings above with respect to these marks under the s. 12(1)(d) ground are also applicable to these grounds of opposition. Thus, my finding above that these trade-marks are not likely to be confused with the Mark equally applies to these grounds of opposition which also fail.
[45] With respect to the Opponent’s REPOMAN mark, however, I am not satisfied that the Opponent discharged its burden regarding this mark under either of the remaining grounds of opposition. In this regard, I am not satisfied that the Opponent has shown use or making known of its REPOMAN mark prior to the Applicant’s date of first use and that the mark had not been abandoned at the date of advertisement of the application, namely, May 31, 2006 [s. 16(5) of the Act]. Further, I am not satisfied that the Opponent has shown that, as of the filing of the statement of opposition, the Opponent’s REPOMAN Mark had become known sufficiently to negate the distinctiveness of the Mark. I dismiss the s. 16(1)(a) and s. 38(2)(d) grounds based on this mark accordingly.
Disposition
[46] In view of the above, and pursuant to the authority delegated to me under s. 63(3) of the Act, I refuse the application pursuant to s. 38(8) of the Act.
______________________________
Cindy R. Folz
Member,
Trade-marks Opposition Board
Canadian Intellectual Property Office