IN THE MATTER OF AN OPPOSITION
by MB Research and Development Ltd. to
application No. 682,683 for the trade-mark MB
RESEARCH filed by MacMillan Bloedel Limited
On May 30, 1991, the applicant, MacMillan Bloedel Limited, filed an application to register the trade-mark MB RESEARCH based on use in Canada since 1968 with the following services:
testing and research and development services for the forest industries including logging, lumber, pulp and paper, and wood composites industries.
The application was amended to include a disclaimer to the word RESEARCH and was subsequently advertised for opposition purposes on September 2, 1992.
The opponent, MB Research and Development Ltd., filed a statement of opposition on December 21, 1992, a copy of which was forwarded to the applicant on January 12, 1993. The first ground of opposition is that the applicant’s application does not comply with the provisions of Section 30(b) of the Trade-marks Act because the applicant did not use its trade-mark since 1968 as claimed. The second ground is that the applicant is not the person entitled to registration pursuant to Section 16 because, as of whatever priority date the applicant is entitled to, the applied for trade-mark was confusing with the trade-mark MB RESEARCH and the trade-names MB Research and MB Research and Development Ltd. previously used in Canada by the opponent in association with “analytical and testing laboratory services in microbiology and chemistry.” The third ground is that the applied for mark is not distinctive in view of the foregoing.
The applicant filed and served a counter statement. As its evidence, the opponent filed an affidavit of its President, Wendy Riggs. As its evidence, the applicant filed an affidavit of its Manager of Patents & Licencing, Cecil A. Rowley. As evidence in reply, the opponent filed two additional affidavits of Ms. Riggs. Both parties filed a written argument and no oral hearing was conducted.
As for the opponent's first ground of opposition, the onus or legal burden is on the applicant to show its compliance with the provisions of Section 30(b) of the Act: see the opposition decision in Joseph Seagram & Sons v. Seagram Real Estate (1984), 3 C.P.R.(3d) 325 at 329-330 and the decision in John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R.(3d) 293 (F.C.T.D.). There is, however, an evidential burden on the opponent respecting its allegations of fact in support of that ground. That burden is lighter respecting the issue of non-compliance with Section 30(b) of the Act: see the opposition decision in Tune Masters v. Mr. P's Mastertune (1986), 10 C.P.R.(3d) 84 at 89. Furthermore, Section 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 Company Limited v. Benson & Hedges (Canada) Limited and Molson Breweries, a Partnership (1996), 67 C.P.R.(3d) 258 at 262 (F.C.T.D.). Finally, the opponent’s evidential burden can be met by reference to the applicant’s own evidence: see Labatt Brewing Company Limited v. Molson Breweries, a Partnership (1996), 68 C.P.R.(3d) 216 at 230 (F.C.T.D.).
In support of this ground, the opponent relied on the first Riggs affidavit and Ms. Riggs’ investigations respecting the applicant’s trade-mark MB RESEARCH. Ms. Riggs states that a search of the records of the B.C. Telephone Company revealed that there was no telephone listing for MB Research from 1968 to 1988. However, as submitted by the applicant, the absence of a telephone listing for a trade-mark is usually irrelevant respecting the issue of whether or not a mark is in use.
Ms. Riggs also states in her affidavit that an investigation was made respecting a company incorporated in British Columbia on February 19, 1968 under the name MacMillan Bloedel Research Limited. That company was apparently amalgamated into another company on March 31, 1980 and that other company was struck from the register on January 26, 1987. Again, those facts are irrelevant since use of the applied for mark has been claimed by the applicant, MacMillan Bloedel Limited, a company which apparently is in good standing.
Although the opponent’s evidence is insufficient to meet its evidential burden respecting the first ground, the applicant’s own evidence does serve that purpose. From a review of Mr. Rowley’s affidavit, it appears that the applicant has never used MB RESEARCH as a trade-mark but only as an abbreviation for its MacMillan Bloedel Ltd. Research Centre or for its research team. Mr. Rowley was unable to provide any evidence of testing, research or development services having been provided to others by the applicant. In fact, as stated by Mr. Rowley in paragraph 10 of his affidavit, the primary function of the applicant’s MB Research division is to develop information for use within MacMillan Bloedel Limited. Mr. Rowley describes a number of attachments to his affidavit as evidence of advertising of his company’s mark. However, a review of those attachments reveals that they are all newspaper or periodical articles that use the phrase MB Research as a shorthand version of the applicant’s research division or center.
In view of the above, I find that the opponent has met its evidential burden respecting the first ground of opposition by reference to the Rowley affidavit alone. It was therefore incumbent on the applicant to evidence its date of first use and continuous use of its mark since that date. Since the applicant has failed to do so, I find that the first ground of opposition is successful.
As for the second ground of opposition, since the applicant has failed to support its claimed date of first use or any subsequent date of first use, it was only incumbent on the opponent to evidence use of its trade-mark or trade-names prior to the applicant’s filing date which is May 30, 1991. The first Riggs affidavit evidences use of the trade-name MB Research and Development Ltd. since at least as early as January of 1985 and use of the trade-mark and trade-name MB RESEARCH since at least as early as July of 1988. Thus, the second ground of opposition remains to be decided on the issue of confusion. Since the most relevant of the marks and names relied on by the opponent is MB RESEARCH, a consideration of the issue of confusion between that mark and the applicant’s mark will effectively decided the outcome of the second ground.
The material time for considering the circumstances respecting the issue of confusion is the applicant’s filing date. Furthermore, the onus or legal burden is on the applicant to show no reasonable likelihood of confusion. Finally, in applying the test for confusion set forth in Section 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).
The marks of both parties are inherently distinctive. However, neither mark is inherently strong since each is comprised of two initials and the non-distinctive term RESEARCH. The applicant has failed to evidence any reputation for MB RESEARCH as a trade-mark. The opponent’s mark has acquired a limited reputation within British Columbia.
The length of time the marks have been in use favors the opponent. The services of the parties are not the same but they are similar in that they both cover laboratory testing services. Thus, the trades of the parties could overlap and, in fact, the applicant has used the services of the opponent.
As for Section 6(5)(e) of the Act, the marks at issue are identical in all respects.
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 resemblance between the services, trades and marks of the parties, I find that the applicant has failed to satisfy the onus on it to show that its mark is not confusing with the opponent’s mark. The second ground is therefore also successful.
As for the third ground of opposition, it essentially turns on the issue of confusion between the applicant’s mark and the opponent’s trade-mark and trade-names although the material time is as of the filing of the opposition. As of that later date, the opponent had established at least a minor reputation for its trade-mark and trade-names in British Columbia within the commercial sector interested in using such services. Thus, I find that the applicant has failed to show that its trade-mark is adapted to distinguish or actually distinguishes its services from those of the opponent throughout Canada. The third ground is therefore also successful.
In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I refuse the applicant’s application.
DATED AT HULL, QUEBEC, THIS 23rd DAY OF JANUARY, 1997.
David J. Martin,
Member,
Trade Marks Opposition Board.