IN THE MATTER OF AN OPPOSITION by
Hypro Corp. to application No. 659,864 for the
trade-mark HYPRO filed by Hypro AB
On June 12, 1990, Hypro AB (a company based in Sweden) filed an application to register the mark HYPRO for
"forestry machines, especially delimbing machines and machines
for cross-cut sawing"
based on use and registration of the mark in Sweden and also based on proposed use in Canada (the application was subsequently amended to omit registration in Sweden as a basis for registration in Canada). The application was advertised for opposition purposes in the Trade-marks Journal issue dated January 23, 1991. The opponent, Hypro Corp., filed a statement of opposition on May 22, 1991, a copy of which was forwarded to the applicant on June 18, 1991. The applicant responded by filing and serving a counter statement.
The first ground of opposition is that the applied for mark HYPRO is not registrable pursuant to Section 12(1)(d) of the Trade-marks Act because it is confusing with the opponent's registered mark HYPRO, regn. No. 101,638, covering the wares "fluid pumps." The second and third grounds of opposition are reproduced below:
The applicant objects that the second ground of opposition is improper because the opponent does not plead use of its mark HYPRO prior to the applicant's filing date or at any time. However, the opponent does pleads use of its mark HYPRO in Canada since 1949 in the first paragraph of the statement of opposition and that, in my view, is sufficient support for the second ground of opposition.
The opponent's evidence consists of the affidavits of Ronald E. Neitzel, Vice-President, Sales, of the opponent company; Ralph Walker, an employee of the opponent's Canadian distributor; and M. Wayne de Rinzy, a trade-mark searcher. The applicant's evidence consists of the affidavits of Tommy Karlsson, President of the applicant company; and Linda Susan Burden, a trade-mark searcher. Both parties filed written arguments, however, only the opponent was represented at the oral hearing.
The determinative issue in this proceeding is whether the applied for mark HYPRO for forestry machines is confusing with the opponent's mark HYPRO for fluid pumps. The relevant material dates at which to assess the issue of confusion is the date of my decision with respect to the first ground of opposition pursuant to Section 12(1)(d); the date of filing the application namely, June 12, 1990, with respect to the second ground of opposition pursuant to Section 16(3)(a); and the date that the statement of opposition was filed namely, May 22, 1991 with respect to the third ground of opposition alleging non-distinctiveness of the applied for mark. In the circumstances of this case, nothing turns on which material date is chosen for assessing the issue of confusion.
The legal burden is on the applicant to show that there would be no reasonable likelihood of confusion, within the meaning of Section 6(2), between its mark HYPRO as applied to forestry machines and the opponent's mark HYPRO as applied to fluid pumps. In determining whether there would be a reasonable likelihood of confusion, I am to have regard to all the surrounding circumstances, including those enumerated in Section 6(5), reproduced, in part, below:
6(5) In determining whether trade-marks . . . are confusing, the . . . Registrar . . . shall have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trade-marks . . . and the extent to which they have become known;
(b) the length of time the trade-marks . . . have 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.
The presence of a legal burden on the applicant means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant: see John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R.(3d) 293 at 297-298 (F.C.T.D.)
With respect to Section 6(5)(a), the mark HYPRO is a coined word possessing a fair degree of inherent distinctiveness although the mark may possibly suggest "high" quality products intended for "professional" or industrial purposes rather than for ordinary domestic use. The opponent's sales of fluid pumps and accessories in Canada under its mark HYPRO averaged about $1.5 million US per year over the period 1981-1990 inclusive. Advertising in Canada under its mark amounted to about $100,000 US over the period 1984-1990. Based on the above, I am able to infer a reputation for the opponent's mark in Canada. There is no evidence that the applicant's mark HYPRO has been used in Canada or that it has acquired any reputation in Canada.
With respect to Section 6(5)(b), the length of time that the marks have been used in Canada favours the opponent as it has been using its mark HYPRO in Canada since at least 1950.
With respect to Sections 6(5)(c) and (d), the nature of the parties' wares are different. However, according to unchallenged and uncontradicted evidence of Messrs. Neitzel and Walker, there is some overlap in the parties' channels of trade. In this regard, the opponent's evidence is that its pumps sold under the mark HYPRO are mostly employed as components in spraying machines having a variety of agricultural and horticultural applications such as "the spraying of trees to stimulate growth, the pressure washing of forestry machines and the spraying of forest nurseries with pesticides, herbicides, insecticides and fungicides." Further, according to the opponent, the mark HYPRO shown on its pumps is "highly visible at all times even when it is embodied in the component parts of spraying machines. . . ": see paragraphs 9 and 11 of Mr. Walker's affidavit. With respect to Section 6(5)(e), the applied for mark is of course identical to the opponent's mark in all respects.
The applicant has submitted that the significance of the identity between the parties' marks is mitigated by the state of the register evidence introduced by means of the Burden affidavit. State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace: see Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R.(3d) 432 (TMOB) and Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R.(3d) 205 (F.C.T.D.). See also 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 marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located. The Burden affidavit evidences 11 registrations for HYPRO, or its phonetic equivalents such as HY-PRO or HI-PRO, covering a variety of products, and standing in the names of eight different owners. Three of the marks are for products (namely, insecticides, forage seed, packaged fresh fruits) that may possibly be associated with the forestry, agricultural or horticultural industries. In this case, the state of the register evidence is insufficient to limit the scope of protection to be accorded to the opponent's mark HYPRO. As a further surrounding circumstance, the applicant points out that its wares are highly specialized pieces of equipment costing about $45,000 per unit. Thus, it is not the type of merchandise purchased on impulse by the general public but rather of interest to a sophisticated and narrow class of customers namely, forest contractors. On the other hand, the opponent has made out a case that its pumps sold under the mark HYPRO might also be known to forest contractors.
In view of the above, and keeping in mind that the test for confusion is one of first impression and imperfect recollection, I am in a state of doubt whether the applied for mark is confusing with the opponent's mark. It follows that the applicant has not met the
legal onus on it to show that its mark is not confusing with the opponent's mark.
In view of the above, the applicant's application is refused.
DATED AT HULL, QUEBEC, THIS 22 DAY OF November , 1995.
Myer Herzig,
Member,
Trade-marks Opposition Board