IN THE MATTER OF AN OPPOSITION by The Heritage Canada Foundation - La Fondation Canadienne pour la protection du Patrimoine to application No. 684,974 for the trade-mark THE NEBS MAIN STREET COLLECTION & Design filed by New England Business Service, Inc.
On June 28, 1991, the applicant, New England Business Service, Inc., filed an application to register the trade-mark THE NEBS MAIN STREET COLLECTION & Design (shown below)
based on proposed use in Canada in association with “greeting cards, calendar cards, writing paper, note paper and envelopes”.
The application was advertised for opposition purposes in the Trade-Marks Journal of December 16, 1992, and the opponent, The Heritage Canada Foundation - La Fondation Canadienne pour la protection du Patrimoine, filed a statement of opposition on July 26, 1993.
The first ground of opposition is that the applied for trade-mark is not registrable pursuant to Sections 9(1)(n)(iii) and 12(1)(e) of the Trade-Marks Act, R.S.C. 1985 c.T-13 (hereinafter “the Act”) because it consists of, or so nearly resembles as to be likely to be mistaken for, the official marks of the opponent (shown below) for which the Registrar gave public notice of their adoption and use on July 2, 1986.
As its second ground of opposition, the opponent maintains that the applicant is not the person entitled to registration of the mark pursuant to s.16(3)(a) of the Act because at the date of filing, the trade-mark was confusing with the opponent’s mark MAIN STREET which had been previously used and made known in Canada. The opponent alleges as its third ground of opposition that the trade-mark is not distinctive pursuant to s.38(2)(d) and s.2 of the Act as it does not distinguish the wares proposed to be used by the applicant from those of the opponent.
The applicant filed and served a counterstatement on September 1, 1993, in which it denied the allegations asserted by the opponent in its statement of opposition. As its evidence, the opponent filed the affidavit of Douglas Franklin, Director of Government & Public Relations of The Heritage Canada Foundation - La Fondation Canadienne pour la protection du Patrimoine (hereinafter “Heritage Canada”). Mr. Franklin was cross-examined on his affidavit and the transcript of that cross-examination, along with his responses to undertakings form part of the record of this opposition. The affidavits of Paul Herbert, partner in the law firm representing the applicant, and Susan Nawrocki, Vice-President of Marketing and Sales for NEBS Business Forms Limited, were submitted as the applicant’s evidence. Both the opponent and the applicant filed written arguments and only the applicant was represented at an oral hearing.
Regarding the first ground of opposition, the material time for considering the circumstances respecting the first ground of opposition would appear to be the date of my decision: see the decisions of the Federal Court of Appeal in Allied Corporation v. Canadian Olympic Association (1989), 28 C.P.R.(3d) 161 (F.C.A.); affg. (1987), 16 C.P.R.(3d) 80 (F.C.T.D.); revg. (1985), 6 C.P.R.(3d) 500 (T.M.O.B.) (hereinafter “Allied”) and Olympus Optical Company Limited v. Canadian Olympic Association (1991), 38 C.P.R.(3d) 1 (F.C.A.); affg. (1990), 31 C.P.R.(3d) 479; revg. (1987), 16 C.P.R.(3d) 455 (T.M.O.B.). The applicant raised the following three issues regarding this ground of opposition: 1) whether the opponent is a public authority; 2) whether the opponent has used or adopted the MAIN STREET CANADA & Design mark as an official mark; and 3) whether the applicant’s mark consists of, or so nearly resembles as to be mistaken for, the official marks of the opponent.
With respect to the first issue, Justice MacGuigan stated in Allied at page 166 that it is not necessary to go behind the public notice in the absence of any evidence by the opposing party to suggest that the mark was not used. Further, in Big Sisters Association of Ontario and Big Sisters of Canada v. Big Brothers of Canada (Court No. T-29-94; May 20, 1997; at p.45-46) (hereinafter Big Sisters), Justice Gibson, in obiter, suggested that where it is not clear on the evidence before the Court that one of the parties is or ever was a public authority, the Court may have jurisdiction to evaluate whether or not this is the case. As counsel for the applicant pointed out at the oral hearing, it has also been suggested that where an opposing party can cast doubt on any material aspect of a publication (e.g. public authority status) then the party relying on the official mark must evidence that aspect of the publication which appears to be deficient (see Canadian Council of Professional Engineers v. Krebs Engineers (1996), 69 C.P.R. (3d) 267 at 272 (T.M.O.B.)).
In determining whether or not a party should be considered a public authority, counsel for the applicant submitted that consideration should be given to each of the following three criteria: 1) whether the body is under a duty to the public, 2) whether the body is subject to a significant degree of governmental control; and 3) whether the body must be required to dedicate any profit earned for the benefit of the public and not for private benefit. Although this three part test has not been specifically endorsed by the courts, the courts appear nonetheless to have applied these criteria (Big Sisters, supra, and Registrar of Trade-marks v. Canadian Olympic Association (1982), 67 C.P.R. (2d) 59 (F.C.A.) (hereinafter COA)).
It is the applicant’s submission that this test is a conjunctive test i.e. all three criteria must be met for a party to be considered a public authority for the purposes of s.9. Although the Federal Court Trial Division has applied this test as a conjunctive test (Big Sisters, supra, at p.44), I have doubts about whether the Court of Appeal in COA, supra, was of the opinion that each of the three criteria had to be met in order for a party to be considered a public authority for the purposes of s.9. In my view, the FCA referred approvingly (COA at p. 67-68) to the fact that Parker J. in Littlewood v. George Wimpey & Co., Ltd. [1953] 1 All E.R. 583 (Q.B.), did not attempt to define the term “public authority” but rather recognized that its meaning may vary according to the statutory context. Further, the court was not persuaded that in the context of the Act it is necessary for a body to have duties or obligations to the public in order to be considered a public authority. At p.68-69, Justice Urie stated the following:
The court was satisfied that there was a sufficient degree of control exercised by government over the activities of the Canadian Olympic Association to establish its public character as a public authority.
At the oral hearing, the applicant’s agent submitted that although the opponent did operate for the benefit of the public, it was not under a duty to do so. The agent for the applicant also submitted that the opponent cannot be considered a “public authority” within the meaning of s.9(1)(n)(iii) of the Act because there is no degree of control exercised by any government over the opponent. It bases this submission on the fact that the opponent is a private corporation incorporated under the laws of Canada and that it promotes itself as being “independent of government” (Franklin affidavit para. 20 & Exhibit 18 to the Franklin affidavit). With respect to the third criteria, counsel for the applicant stated that it was unclear from the evidence whether the opponent must be required to dedicate any profit earned for the benefit of the public and not for private benefit.
In its written submissions, the opponent’s agent contends that the opponent is a public authority within the meaning of Section 9. The opponent has failed to show, however, how the evidence demonstrates this alleged fact. The only submissions made by the opponent in this regard were that large grants of public money have been given to the opponent to support its activities and that the services provided by the opponent are generally for the public benefit.
In my view, the applicant has been successful in casting doubt that the opponent is a public authority for the purposes of s.9 of the Act. Although I am satisfied that the evidence shows that the opponent functions to perform for the benefit of the public and not for private profit (see Exhibit 18 to the Franklin affidavit), I agree with the applicant that there was no duty owed to the public. Further, I am not satisfied that the evidence demonstrates that there was a sufficient degree of control exercised by the government over the activities of the opponent to establish its public character as a “public authority”. The fact that the opponent receives grants of public money is not by itself indicative that there is any control exercised by the government over the opponent. In addition, the opponent has also failed to support with evidence its assertion that there is a “close connection” between the government and the opponent. In view of the above, I agree with the applicant that the opponent cannot rely on its Section 9 ground of opposition and I therefore find this ground of opposition unsuccessful. Although I do not need to decide the remaining issues under Section 9, I wish to note them because I regard them as issues of some importance.
With respect to the second issue raised under the s.9 ground of opposition, the opponent is not required to evidence use and adoption of each official mark relied on, at least not in the absence of evidence suggesting that the mark was not used (Allied, supra). In the present case,
the applicant submits that the opponent’s evidence does not show use or adoption of the MAIN STREET CANADA mark as a design mark prior to the publication date of the official mark (July 2, 1986). It submits that the MAIN STREET CANADA mark is not a “word mark” because it appeared in the Trade-Marks Journal in different font than other word marks (Herbert affidavit). It further argues that since the opponent has not evidenced use of the mark as a design mark, it is not entitled to rely on this official mark to oppose the applicant’s mark.
I agree with the applicant that the opponent’s MAIN STREET CANADA mark does not appear in the opponent’s evidence in the same typeface or font for which public notice was given of it (see Mr. Franklin’s responses to undertakings). Instead, in the evidence submitted as “Technote #2" to the response to undertakings, the opponent’s mark appears as MAIN STREET CANADA in the same font as the rest of the wording in the technote. In my view, the deviation between the mark MAIN STREET CANADA as published and the mark MAIN STREET CANADA as used is a minor one, as the opponent’s mark still appears in its entirety, albeit in a different size font. Consequently, I find that the opponent would have been permitted to rely on this mark to oppose the applicant’s mark.
Regarding the third issue raised under the s.9 ground, the test to be applied is whether or not the applicant’s mark consists of, or so nearly resembles as to be likely to be mistaken for, the official mark. In other words, is the applicant’s mark identical to, or almost the same as, any of the opponent’s official marks? (Big Sisters, supra, at 47; and Canadian Olympic Association v. Flame Pizza Ltd. (Application No. 680,569; June 20, 1997) (T.M.O.B.) (hereinafter Flame Pizza)). In Flame Pizza, Board Member Martin stated the following at page 4 of his decision:
“At page 49 of [Big Sisters], Mr. Justice Gibson confirmed that in assessing the resemblance between the marks at issue, regard may be had to the factors set out in Section 6(5)(e) of the Act. Further, at page 48, Mr. Justice Gibson indicated that the test was to be applied as a matter of first impression and imperfect recollection and he concurred with the following test set out by Mr. Justice Rothstein at page 19 of the decision in Canadian Olympic Association v. Health Care Employees Union of Alberta (1992), 45 C.P.R. (3d) 12 (F.C.T.D.):
“The question must be determined in the context of whether a person who, on a first impression, knowing one mark only and having an imperfect recollection of it, would likely be deceived or confused.”
This would appear to be a broader test than the test of straight comparison previously applied in numerous opposition decisions although the result in the Big Sisters case might suggest otherwise.”
The applicant’s agent argued that in addition to considering the mere resemblance of the marks, one should consider the differences in the natures of the respective wares and services of the parties. Having regard to Justice Gibson’s decision in Big Sisters, I am of the view that the test under s.9(1)(n)(iii) and s.12(1)(e) is restricted to resemblance between the prohibited mark and the adopted mark. In the present case, the applicant’s mark is not identical to the opponent’s marks. However, I do consider the applicant’s mark to be almost the same as, or substantially similar to, the opponent’s mark MAIN STREET CANADA because of the dominance of the words MAIN STREET in both parties’ marks. Consequently, I would be satisfied that the applicant’s trade-mark so nearly resembles as to be likely to be mistaken for the opponent’s MAIN STREET CANADA official mark.
As for the second ground of opposition (s.16(3)(a)), there is an evidential burden on the opponent to evidence use or making known of the trade-mark MAIN STREET in Canada prior to the applicant’s filing date (i.e. June 28, 1991). I am satisfied that Mr. Franklin’s affidavit evidences use of the opponent’s MAIN STREET trade-mark prior to the applicant’s filing date. This ground of opposition therefore remains to be decided on the issue of confusion between the applicant’s proposed mark and the opponent’s previously used trade-mark. In applying the test for confusion set forth in Sections 6(2) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set forth in Section 6(5) of the Act. The onus or legal burden is on the applicant to show no reasonable likelihood of confusion between its proposed mark and the opponent’s previously used trade-mark.
As for Section 6(5)(a) of the Act, I consider that the applicant’s mark THE NEBS MAIN STREET COLLECTION & Design as applied to “greeting cards, calendar cards, writing paper, note paper and envelopes” is inherently distinctive as it is not suggestive of the applicant’s wares.
The applicant’s mark had not become known as of the relevant date.
The opponent’s mark, on the other hand, does not possess a high degree of inherent distinctiveness. The opponent uses its MAIN STREET mark in association with, inter alia, a program of urban commercial renovation and revitalisation (Exhibits 4,5,6,7, and 20 of the Franklin affidavit). As the applicant pointed out, one of the definitions of the term MAIN STREET as found in Webster’s Ninth New Collegiate Dictionary is “the principal street of a small town”. Further, the opponent’s evidence shows use of the words MAIN STREET in association with a major street in the downtown area. For example, the pamphlet attached as Exhibit 4 of the Franklin affidavit states the following:
“...Main Street has always been the physical, commercial and social heart of their towns. Yet, many of these communities are in trouble. Because these communities are small, they often lack the resources to independently rehabilitate deteriorating downtown business districts...
...The Heritage Canada Foundation’s Main Street downtown revitalization programme has reversed this trend. Since 1980, the main streets of seven communities across Canada have once again become attractive places for shopping, banking, dining and enjoying cultural activities. The expertise in downtown revitalization developed during the demonstration phase of the Main Street Programme is now available to assist 70 more Canadian communities.”
In addition, Exhibit 27 to the Franklin affidavit refers to “MAIN STREET” as a place or location, as well as the name of a program or project. In view of the above, I consider the opponent’s mark to be suggestive of its services. I am satisfied, however, that the Franklin affidavit shows that the opponent’s mark had become made known to some extent in Canada as of the applicant’s date of filing.
The length of time the marks have been in use favours the opponent as the opponent has used its trade-mark since 1979, while the applicant had not used its mark prior to the relevant date.
With respect to Sections 6(5)(c) and 6(5)(d) of the Act, the agent for the opponent broadly describes the nature of the opponent’s services in its written submissions as “managing projects for the designing and promoting of business enterprises, and giving advice and training in commercial and community development”. The applicant’s wares, on the other hand, include greeting cards, calendar cards, writing paper, note paper and envelopes. I agree with the applicant that the opponent’s services are different from the applicant’s wares. I also agree with the applicant that the channels of trades of the parties would not overlap.
As for Section 6(5)(e) of the Act, I find that there is some degree of visual and phonetic resemblance between the marks at issue because the words MAIN STREET are dominant components of both marks. However, the several design features of the applicant’s mark, including the design of several buildings, the ribbon like border around the design, as well as the additional words THE, NEBS and COLLECTION assist in distinguishing the applicant’s mark from the opponent’s mark. Further, as stated above, the applicant’s mark does not suggest any particular idea when used in association with the applicant’s wares whereas the opponent’s mark is suggestive of the opponent’s services.
As a further surrounding circumstance, the opponent submitted that although it has not used MAIN STREET in association with stationery, it has nonetheless engaged in the retail sale of small gift items, including stationery (Franklin affidavit, para. 30 and Exhibit 29). It further submits that the opponent’s MAIN STREET activities have pervaded such a wide range of commercial and community interests that one may reasonably infer that people who buy greeting cards are among those who have become aware of the MAIN STREET services and have participated in one way or another.
In my view, the ancillary commercial activities of the opponent are of very limited relevance in the determination of the likelihood of confusion between the applicant’s and the opponent’s marks. The opponent’s sales of gift items, including greeting cards, were not made in association with the trade-mark MAIN STREET. Further, although the opponent’s MAIN STREET mark may have become known to some extent in Canada, I am not satisfied that it is so well known that the average consumer of greeting cards would likely infer that the wares are somehow associated with the opponent.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my conclusions above, and particularly in view of the inherent distinctiveness of the applicant’s mark and the differences between the wares and services and trades of the parties, I find that the applicant has satisfied the onus on it to show that its mark is not confusing with the opponent’s mark. Thus, this ground of opposition is also unsuccessful.
The final ground of opposition under s.38(2)(d) and s.2 also turns on the determination of the issue of the likelihood of confusion between the applicant’s THE NEBS MAIN STREET COLLECTION & Design mark and the opponent’s MAIN STREET mark. The material date for assessing the likelihood of confusion in respect of this ground is the date of opposition, i.e. July 26, 1993. In my view, the difference in the material dates does not have any significant impact on the determination of the issue of confusion between the trade-marks of the parties. Thus, my finding above that the trade-marks at issue are not confusing likewise applies to this ground of opposition which I therefore reject.
Accordingly, and with the authority delegated to me under s.63(3) of the Act, I reject the opponent’s opposition pursuant to s.38(8) of the Act.
DATED AT HULL, QUEBEC, THIS 3rd DAY OF JULY 1997.
C. R. Vandenakker
Hearing Officer
Trade-Marks Opposition Board