TRADUCTION/TRANSLATION

 

 

IN THE MATTER OF AN OPPOSITION by CPSA Sales Institute to registration application No. 1029214 for the trade mark PVA belonging to Groupe Conseil Parisella, Vincelli Associés Inc.

 

 

I Pleadings

 

 

On September 16, 1999 Groupe Conseil Parisella, Vincelli Associés Inc (the applicant) filed an application to register the trade mark PVA (the Mark) based on use since September 1996 in association with the following services:

 

[TRANSLATION]

 

management consulting services and management training services by means of consultations and courses . . . (the Services)

 

It was published in the Trade Marks Journal on December 13, 2000.

 

 

On January 29, 2001 CPSA Sales Institute (the “opponent”) filed a statement of opposition, in which the grounds of the opposition may be summarized as follows:

(1)   the registration application is not consistent with the requirements of section 30(b) of the Trade-marks Act (the Act), in that the Mark is not a trade mark within the meaning of section 2 of the Act since it is not and never has been used by the applicant to distinguish the Services from the services of third parties;

(2)   the application is not consistent with the requirements of section 30(b) of the Act in that, even if the Mark is a trade mark within the meaning of section 2 of the Act, it has not been used by the applicant in Canada since the date alleged in the registration application, namely September 1996;

(3)   the Mark is not distinctive pursuant to the provisions of sections 2 and 38(2)(d) of the Act, since it does not distinguish the Services from identical or similar services of third parties, including those of the opponent, in association with the certification mark PVA, and is not capable of doing so.

 

On May 7, 2001 the applicant filed a counter-statement of opposition, essentially denying all the grounds of opposition mentioned above in the opponent’s statement of opposition. It further added that the opponent had filed a registration application having No. 871365 for the certification mark PVA; and that the applicant had filed a statement of opposition, alleging inter alia that it created confusion with the registered mark of the applicant PVA and design, registration certificate TMA508335; that the opponent was not the person entitled to register this trade mark, since it created confusion with the trade marks PVA and PVA and design and with the trade name PVA of the applicant, which were in prior use by the applicant in Canada.

 

The instant application for registration was amended to rely on the prior use of the Mark by the applicant’s predecessor in title, namely Parisella Vincelli Associates Consulting Group Inc. The opponent amended its statement of opposition to add to the second ground of opposition that at the time the original application for registration was filed the applicant did not name the predecessor in title that allegedly used the mark. The applicant responded by amending its counter-statement of opposition, alleging that it did not have any duty to indicate the name of its predecessor in title in its original application for registration, since the latter had merged with another entity to form the applicant and so within the meaning of the case law was not a predecessor in title. Accordingly, if the applicant’s position were accepted, its amendment would have been pointless.

 

The opponent filed the affidavit of Terrence J. Ruffell and a certified copy of an affidavit by Normand Parisella, filed by the applicant in connection with its objection in application number 871365.

 

The applicant produced in the record the sworn statements of Normand Parisella and Marie Robin and a certified copy of the written plea and statement of opposition filed by the applicant in application number 871365. It will become apparent, from the way I dispose of the various grounds of objection, that I will not have to rule on the relevance of the filing of the documents relating to application for registration number 871365.

 

The parties filed a written argumentation. The applicant filed a supplementary written plea to submit certain arguments arising from the Registrar’s decision in application number 871365, in which the application to register the opponent’s certification mark PVA was dismissed. There was no hearing in the instant case.

 

II Opponent’s evidence

 

Mr. Ruffel has been an officer and director of the opponent and president of the Canadian Professional Sales Association (the Association). The Association had thirty thousand members. The Association’s objectives were to enable its members to succeed in business and add to their knowledge in the sales field through seminars and workshops. In 1994, the Association thought it advisable to create the opponent so as to certify persons meeting the criteria defined by the opponent and listed at paragraph 4 of its affidavit. After completing the opponent’s certification program, a candidate who succeeded in the program was given the designation “CSP-Certified Sales Professional” or “PVA-Professionnel de la Vente Agrée”. On February 23, 1998 the opponent granted the first PVA designation. This designation appears on business cards and stationery used by persons who have obtained their PVA designation. The Association promotes the opponent’s certification program in its internal publications and advertising pamphlets, so that this program is known nationwide. An extract from the May 2000 issue of the magazine “Contact”, produced by the Association, and copies of advertising pamphlets used to promote the opponent’s certification program were filed as Exhibit C to its affidavit. However, there was no information on the number of copies of the magazine published, the region(s) where it was distributed or the distribution period.

 

The Association spends $65,000 annually to promote certification programs. The deponent alleged that neither the Association nor the opponent uses the PVA designation. This designation had allegedly been granted to only ten people as of June 7, 2001, the date the affidavit was signed.

 

He alleged that the first person to receive the PVA certification was Gail Hekkema. Her business card, filed as Exhibit B, has the notation “CSP”, for “Certified Sales Professional”, not the certification “PVA” (“Professionnel de la Vente Agrée”).

 

At paragraph 14 of his affidavit, he mentioned that he had no knowledge of use of the mark by the applicant.

 

A certified copy of Mr. Parisella’s sworn statement, filed in the matter of the opponent’s application number 871365, was also part of the opponent’s evidence. There is no need to rule on the admissibility of that evidence, which is an affidavit by a representative of the opposing party filed in another case, as the opponent makes no reference to it in its written argumentation. In any case, that affidavit contained essentially the same allegations as those contained in the one filed in the instant case.

 

III Applicant’s evidence

 

Ms. Robin has been a secretary employed by the firm of agents representing the applicant. She filed computerized statements from the STRATEGIS database regarding the merger that produced the applicant on September 1, 1997. The merged companies were Parisella, Vincelli Associates Consulting Group Inc., which was founded on May 7, 1996, and Groupe conseil Parisella, Vincelli et Mousseau Inc., founded on August 27, 1986.

 

Mr. Parisella has been president of the applicant. He explained that the applicant was the result of a merger in September 1997 between Parisella, Vincelli Associates Consulting Group Inc. and Le Groupe conseil Parisella Vincelli & Mousseau Inc. He mentioned that the applicant has used the trade mark PVA & Design, certificate of registration TMA508335, Exhibit P-2 in his affidavit, since September 1997 to perform and advertise the Services. As Exhibits P-2 to P-12 inclusive, he filed documents showing the Mark and the trade marks PVA and Design and PVA Canada to establish use of these marks by the applicant or its predecessor in title in association with the Services since September 1996. In its written argumentation, the opponent argued that these exhibits do not constitute proof of use of the mark. I will deal with this matter and the grounds put forward by the opponent below.

 

A list of the Canadian cities in which the applicant or its predecessor in title provided Services in association with the Mark was filed as Exhibit P-14.

 

On September 10, 1999 the applicant sent a letter of notification to the opponent (not filed in the record) requiring it to cease using the trade mark PVA. By a letter dated September 29, 1999, Exhibit P-15, the opponent answered the said notification, denying that its use of the PVA designation was a breach of the rights conferred on the applicant by certificate of registration  number 508335 for the trade mark PVA and Design.

 

On August 5, 2003 the applicant requested leave to file as further evidence pursuant to Rule 44(1) of the Trade-marks Regulations a certified copy of the Registrar’s decision in application number 871365 for the certification mark PVA. This leave was denied. However, the parties obtained leave to file supplementary written argumentation subsequent to the decision in application number 871365. Only the applicant exercised this right.

 

Essentially, the applicant argued in this supplementary pleading that the principle of “issue estoppel” should apply in the instant case. I do not think that the points of law raised in the objection to the application to register the certification mark PVA are the same as those that will be discussed below, and consequently I cannot dismiss the objection solely on this ground.

 

IV Analysis of grounds of objection

 

The opponent argued that the Mark is not a trade mark within the meaning of the Act, and so the application is not consistent with the requirements of section 30 of the Act.

 

The relevant date for analysing the various grounds of opposition varies depending on the ground of opposition raised. Thus, when the ground of opposition is based on section 30 of the Act, the relevant date is that on which the application was filed (September 16, 1999) [see Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469].

 

In opposition proceedings, the opponent must submit sufficient evidence on the grounds of opposition that it raises for it to be apparent that there are facts that can support those grounds of opposition. If the opponent meets this burden, the applicant must convince the Registrar on a balance of probabilities that the grounds of opposition should not prevent the registration of the mark [see Sunshine Biscuits Inc. v. Corporate Foods Ltd. (1982), 61 C.P.R. (2d) 53, Joseph Seagram & Sons Ltd. v. Seagram Real Estate Ltd. (1984), 3 C.P.R. (3d) 325, and John Labatt Ltd. v. Molson Companies Limited (1990), 30 C.P.R. (3d) 293].

 

It should be noted that the opponent’s burden of proof is minimal when the ground of opposition is based on section 30 of the Act [see Tune Masters v. Mr. P’s Mastertune Ignition Services Ltd. (1986), 10 C.P.R. (3d) 84]. Further, it is entitled to refer to the evidence entered in the record by the applicant [see Hearst Communications Inc. v. Nesbitt Burns Corp. (2000), 7 C.P.R. (4th) 161 (T.M.O.B), Labatt Brewing Co. v. Molson Breweries, a Partnership (1996), 68 C.P.R. (3d) 216 (F.C.T.D.), and Williams Telecommunications Corp. v. William Tell Ltd. (1999), 4 C.P.R. (4th) 107 (T.M.O.B)]. However, this evidence by the applicant must be unambiguous, or at least raise a serious question as to non-compliance with the requirements of section 30 of the Act [see Hearst Communications Inc., supra].

 

The opponent alleged that the evidence entered in the record by the applicant showed that the mark was not used as a trade mark within the meaning of the Act and, in any case, the applicant’s evidence showed that the mark was not used in association with the Services as of September 1996.

 

I cannot accept the opponent’s arguments. It maintained that the Mark was used as an acronym. There is nothing to prevent the registration of an acronym as a trade mark, so long as it is used to identify services and distinguish them from the services of third parties. The documentary evidence in the record, described above, indicates such use of the mark.

 

The opponent alleged that what we find in the various exhibits is the drawing illustrated below:

 

 

 

 

 

 

 

 

 

The opponent argued that the use of this drawing does not constitute use of the mark. It is clear that the dominant portion of this drawing is the letters PVA, on account of their size and the black background against which they appear. The other verbal indications are purely descriptive. Accordingly, I consider that use of this mark constitutes use of the Mark within the meaning of section 2 of the Act [see Road Runner Trailers Mfg. Ltd. v. Road Runner Trailer Co. Ltd. (1984), 16 C.P.R. (3d) 443; Promafil Canada Ltd. v. Munsingwear Inc. (1992), 44 C.P.R. (3d) 59, and Alibi Roadhouse Inc. v. Grandma Lee’s International Holdings Ltd. (1997), 76 C.P.R. (3d) 327]. We find the Mark in pamphlet P-3. It also appears on the applicant’s invoices, Exhibit P-4, followed by a project number. The addition of this number does not constitute use of a distinct trade mark in itself.

 

The opponent argued that the only evidence filed by the applicant to support the date of the first use of the Mark in association with the Services is an invoice dated September 5, 1996, which is part of Exhibit P-3. On that invoice we find the drawing illustrated above, and the notation PVA4 as identification of the project. My conclusion on the use of this drawing by the applicant, already indicated above, applies to this new argument by the opponent.

 

In the event that I am wrong in concluding that use of the drawing constitutes use of the Mark, I cannot conclude that the applicant’s evidence raised serious questions as to use of the Mark on the date of first use alleged in the application. Merely alleging absence of knowledge of the use of the Mark by Mr. Ruffell, without further particulars, clearly cannot suffice to discharge the opponent’s burden of proof and require the applicant to establish use of the Mark on the date of first use alleged in the registration application. Mr. Ruffell did not allege that he did any research to determine whether the Mark was in use in Canada in association with the Services.

 

Finally, the opponent argued that the applicant had failed to identify its predecessor in title in its initial registration application, and that this failure was fatal. Although this ground of opposition was not pleaded in the opponent’s written argument, and without making any ruling on the applicant’s duty to disclose the identity of its predecessor in title in its initial application, I concur with the following comments by my colleague David J. Martin in Molson Breweries, A partnership v. Labatt Brewing Co. Ltd. (1994), 56 C.P.R. (3d) 107:

 

At the oral hearing, the opponent's agent contended that it was incumbent on the applicant to claim use of its trade mark by Labatt Breweries of Newfoundland Limited as a predecessor in title as required by s. 30(b) of the Act. The applicant's agent contended that the original applicant was under no obligation to name Labatt Breweries of Newfoundland Limited as a predecessor in title since it was one of the amalgamating companies which gave rise to the original applicant and amalgamating companies are not predecessors in title.

The issue thus becomes whether or not an amalgamating corporation under the Canada Business Corporations Act, R.S.C. 1985, c. C-44, is a predecessor in title for the purposes of s. 30(b) of the Trade-marks Act respecting trade mark rights that flow to the amalgamated corporation. Section 181 of the Canada Business Corporations Act provides that amalgamating corporations continue as one corporation. The applicant's agent relied on the decision in R. v. Black & Decker Mfg. Co. Ltd. (1974), 13 C.P.R. (2d) 97, 43 D.L.R. (3d) 393, 15 C.C.C. (2d) 193, [1975] 1 S.C.R. 411, which dealt with the amalgamation provisions in the Canada Corporations Act which are very similar to the amalgamation provisions in the successor statute, the Canada Business Corporations Act. In Black and Decker, the Supreme Court of Canada held that an amalgamation under such provisions does not create a new corporation and it does not extinguish any of the amalgamating corporations; amalgamating corporations continue in the amalgamated corporation. Section 186(b) of the Canada Business Corporations Act specifically provides that the property of each amalgamating corporation continues to be the property of the amalgamated corporation and this would include any trade mark rights: see the opposition decision  in Nabisco Brands Ltd. v. Perfection Foods Ltd. (1985), 7 C.P.R. (3d) 468 (Opp. Bd.-T.M.) at p. 472; affirmed 12 C.P.R. (3d) 456 (F.C.T.D.).

Thus, an amalgamation does not constitute a transfer or an assignment of trade mark rights; such rights simply continue as the property of the amalgamating corporations in the amalgamated corporation. There is no specific transfer of rights from one separate entity to another. An amalgamation is, as Mr. Justice Dickson characterized it in the Black and Decker case, like a river formed by the confluence of two streams.

In my view, the words "predecessor in title" appearing in s. 30(b) of the Trade-marks Act do not encompass an amalgamating corporation under the Canada Business Corporations Act . . .

Since an amalgamating corporation and an amalgamated corporation are not separate entities, it follows that an amalgamating corporation is not a predecessor in title for the purposes of s. 30(b) of the Act and does not need to be named in a trade mark application where the amalgamated corporation is claiming use through the amalgamating corporation.

 

For these reasons, therefore, I dismiss the first two grounds of opposition.

 

The opponent alleged that the mark lacked distinctiveness as it could not distinguish the applicant’s Services from the opponent’s services in association with the certification mark PVA. There is no evidence that the opponent holds a certificate of registration for the certification mark PVA. There is no concept of a certification mark at common law. For the opponent to claim rights pursuant to use of a certification mark, the latter must be the subject of a registration [see Association des Assureurs-vie du Canada v. Association provinciale des Assureurs-vie du Québec, [1989] 1 F.C. 570, at 594].

 

Even if such rights existed in the opponent’s favour, the evidence was that only ten persons were able to make use of this certification mark. Only two business cards were entered in the record with the designation PVA. The extract from the magazine “Contact” is not very conclusive, as we have no information on the scope of its circulation and the regions where it was distributed. This evidence is clearly insufficient to support a conclusion that the Mark is devoid of distinctiveness on account of use of the designation PVA by the opponent or third parties. The applicant accordingly discharged its burden of showing that the Mark was distinctive and able to distinguish the Services from those of third parties. I therefore dismiss the final ground of opposition.

 

V Conclusion

 

Pursuant to the powers delegated to me by the Registrar of Trade-Marks in accordance with the provisions of section 63(3) of the Act, I reject the opponent’s objection, in accordance with the provisions of section 38(8) of the Act.

 

 

DATED AT BOUCHERVILLE, QUEBEC, JUNE 13, 2005.

 

 

Jean Carrière

Member of Oppositions Board