PROCEEDINGS UNDER SECTION 45 OF THE
TRADE-MARKS ACT: MCI — MANAGEMENT ET CONSEIL EN INFORMATIQUE and MCI and design
REGISTRATION NOS. TMA 393,703 and TMA 386,593
On October 3, 1996, at the request of Gowling, Strathy & Henderson, the Registrar sent notices prescribed by section 45 to Michel Teman, who was the registered owner of the registered trade-marks in question. Although of no importance in the present proceedings, EMC (Benelux) B.V. was recorded as the new owner of the trade-marks on November 2, 1998.
The trade-mark MCI — MANAGEMENT ET CONSEIL EN INFORMATIQUE is registered for use in association with the following services: computer services, in particular the secondment of specialized personnel in the computer field.
The trade-mark MCI and design (reproduced below) is registered for use in association with: computer services, in particular the recruitment and secondment of specialized personnel in the computer field.
In reply to the notices from the Registrar, affidavits from Michel Teman, Eric Boutié and Claire Sénécal were provided. Each party filed written arguments. The holding of a hearing was not requested in this case.
With regard to the evidence presented, the requesting party claims that the evidence does not establish the use of the trade-marks in Canada in association with services during the relevant three-year period. It adds that the evidence fails to show use in the performance of the services. It argues that the advertising of the registered trade-marks does not constitute use in Canada — within the meaning of subsection 4(2) — if no service is in fact performed in Canada.
Having considered the evidence, I cannot agree with the requesting party that use in Canada within the meaning of subsection 4(2) was not established.
To simplify matters, I will use the words “trade-mark” where reference is made to trade-marks.
In his affidavit, Mr. Teman explains that each company, i.e., MCI S.A., MCI Inc. and MCI Canada, is licensed to use the trade-mark and the registrant controls the characteristics and quality of the services offered by these companies. He explains that the companies are sometimes called “le Groupe MCI”.
In paragraphs 7 and 8 of his affidavit, he describes the services offered by the companies:
[translation]
7. Established in 1988, le Groupe MCI offers highly specialized computer services to its clients throughout the world, more particularly in the following sectors: industry and distribution; banking and insurance; telecommunications; management of services and energy; defence; space; and transportation.
8. More specifically, our clients entrust to us computer projects, in particular in the field of technical assistance, systems integration, information management and consulting, and to implement these projects, le Groupe MCI recruits highly specialized computer personnel who are seconded to its clients as part of these projects.
Paragraph 9 reads as follows:
[translation]
9. As of January 1, 1996, le Groupe MCI employed more than 250 hand-picked personnel, including developers and design engineers, systems analysts, consultants and technical experts and projects heads, the majority of whom were seconded to the clients of le Groupe MCI to work on projects.
Mr. Teman states in paragraph 11 that, the trade-mark was used in Canada during the three-year period by the registrant and by its predecessor in title, as well as by its licensees, and he goes on to provide the details concerning such use.
He explains that in order to meets its clients’ needs, le Groupe MCI must recruit “highly specialized computer personnel routinely”. He states that in Canada, the trade-mark is displayed in plain view during the recruitment process, which begins with “the placing of recruitment ads in prestigious Canadian dailies including La Presse and Le Soleil”. Exhibit Mt‑5 consists of examples of this type of ad provided by Mr. Teman.
He states that in reply to these ads, candidates send their curriculum vitae to the Montreal, address, where the interviews are also held. He states in paragraph 15 that MCI S.A. also places ads in France, “for positions both in France and abroad, including Canada”. He adds that once hired, the new employees are seconded to clients of le Groupe MCI.
He goes on to state that “ while implementing projects during their secondment to the clients of le Groupe MCI, employees must complete time and mileage expense sheets in order to permit calculation of their pay and expense accounts and faciliate the billing of their services to the clients of le Groupe MCI”. He provided a copy of a “time and mileage expense sheet”, a specimen of an invoice, and specimens of business cards, letterheads and envelopes that are used regularly by the licensees in their communications with their clients.
He explains in paragraph 18 that le Groupe MCI “had consolidated earnings in excess of the following figures in recent years, more than 90% of which derive directly from computer services activities, more specifically the recruitment and secondent of specialized personnel … more than 5% of these earnings coming from Canada”.
The figures are as follows:
1991 49 000 000 F
1992 65 000 000 F
1993 83 000 000 F
1994 103 000 000 F
1995 130 000 000 F
1996 160 000 000 F
He states in paragraph 19 that the earnings of MCI Inc. (a Canadian company) from activities involving “recruitment and secondment of highly specialized personnel” totalled $2,207,666.09 for the period between March and December 1996. He adds that le Groupe MCI spent significant amounts to advertise the services in Canada and abroad and in promotional material.
In his affidavit, Mr. Boutié confirms that since November 1994, his company “has developed, structured, laid out and placed at least 25 ads to recruit highly specialized personnel in various prestigious dailies, including La Presse and Le Soleil”.
Mr. Boutié then provides four examples of ads placed in the “Carrières et Professions” section of “La Presse”, three of which were placed on behalf of MCI Inc. (the Canadian company) and one on behalf of Le Groupe MCI, all four indicating the Montreal address.
In her affidavit, Claire Sénécal states that she is the “Head of Administration” of MCI Inc. She states that, as part of her duties, she receives “the curricula vitae of candidates for the positions offered by MCI Inc. as part of its activities involving the recruitment and secondment of highly specialized personnel, particularly in the computer field”. Mrs. Sénécal states that during the six months ending September 30, 1996, she received 230 curricula vitae in reply to the ads placed by MCI Inc. in a number of Canadian newspapers. She states that of the 230 persons who applied, 14 were hired by MCI Inc. for secondment purposes. She explains that, as part of her duties, she “prepares the pay of all the employees of MCI Inc., including the 32 highly specialized employees now on secondment from MCI, the same number of employees as was on secondment on October 2, 1996, the date of the notice issued by the Registrar”.
The requesting party argues that no evidence was presented to explain in ordinary business language the nature of the registrant’s business , nor was any evidence presented to indicate that services were performed in Canada. It argues that even though it is clear that certain ads were placed in Canada, the question nevertheless remains as to who are the registrant’s clients and whether they are in Canada, matters which are by no means clear. The requesting party further argues that most of the evidence seems to concern the recruitment of Canadians for positions outside Canada (essentially in France). Le Groupe MCI therefore seems to be providing services to these non-Canadian companies, if it is actually providing services.
I cannot accept the requesting party’s argument. In my opinion, the affidavits provided contain sufficient facts to enable me to conclude that the trade-marks were used in Canada in association with the services registered.
The evidence establishes that MCI Inc. (of Montreal) placed ads in order to recruit specialized employees during the relevant period with a view to seconding them to the computer sector (Sénécal affidavit, paragraph 8). The Sénécal affidavit also clearly indicates that at the date of the notice MCI Inc. had 32 specialists on secondment.
In addition, the Teman affidavit clearly indicates that 90% of the “earnings” of Le Groupe MCI “derive directly from its computer services activities, more specifically the recruitment and secondment of specialized personnel to work on projects for its clients”, Mr. Teman explaining that 5% of these earnings “come from” Canada.
In fact, he makes clear in paragraph 19 that between March and December 1996, the gross revenues of MCI Inc, whose activites are limited to “the recruitment and secondment of highly specialized personnel”, totalled $2,207,666.09.
It is clear from the evidence presented that MCI Inc., a licensee of the registrant, operates a business in Canada that recruits in Canada specialists in the computer field for secondment purposes and that it in fact recruited and seconded such specialists for the benefit of clients during the relevant period.
In my opinion, an analogy can be drawn between the registrant’s business and a “temporary employment agency”. Both recruit “employees” and second them to their clients. In the instant case, the evidence reveals that the trade-mark is used during the performance of the services, since the trade-mark appears in the ads to recruit specialists for secondment purposes, which services are performed in Canada.
I conclude that le Groupe MCI performs recruitment services in Canada for its clients, when it places advertisements in Canada, interviews and recruits candidates in Canada, and then seconds them to the clients. I further conclude that le Groupe MCI also offers its services to individuals in Canada, since it offers recruitment and secondment opportunities to individuals in Canada. Whether the registrant’s clients who require specialized personnel are in Canada or not is of no importance. What is important is that le Groupe MCI operates a business in Canada, that it recruits personnel in Canada for the purpose of seconding them to clients and that it offers recruitment opportunities and secondment services to individuals in Canada.
Accordingly, I conclude that the use of the trade-mark in Canada in association with the services has been established, in accordance with the requirements of subsection 4(2) and section 45 of the Act.
The applicant raised an argument concerning the trade-mark registered under registration No. 386,593, alleging that the trade-mark being used differs significantly from the trade-mark registered. I agree that the evidence shows several variations of the trade-mark as registered. However, the question is whether the variations are substantial. Relying on Promafil Canada Ltée v. Munsingwear Inc., 44 C.P.R. (3d) 59, and Alibi Roadhouse Inc. v. Grandma Lee’s International Holdings Ltd., 76 C.P.R. (3d) 326, and applying principle No. 2 in Nightingale Interloc Ltd. v. Prodesign Ltd., 2 C.P.R. (3d) 535, I conclude that this is a borderline case. Accordingly, given the intent and purpose of Section 45, I have decided to maintain the registration of trade-mark No. 386,593 because I believe that the difference is not so significant as to warrant expungement. The trade-mark as used retains its particular character and in my view is recognizable.
Accordingly, having regard to the evidence presented, I conclude that the trade-marks registered under Nos. TMA 393,703 and TMA 386,593 will be maintained, in accordance with the provisions of subsection 45(5) of the Trade-marks Act.
ISSUED AT HULL, QUEBEC, THIS 28th DAY OF May, 1999.
D. Savard
Senior Hearing Officer
Section 45