IN THE MATTER OF AN OPPOSITION
by Canada Post Corporation to application
No. 696,525 for the trade-mark MAIL MISER
filed by Comdata Services Ltd.
On January 7, 1992, the applicant, Comdata Services Ltd., filed an application to register the trade-mark MAIL MISER for "computer software for address validation and correction of mailing databases" based on proposed use in Canada. The application was amended to include a disclaimer to the word MAIL and was subsequently advertised for opposition purposes on October 21, 1992.
The opponent, Canada Post Corporation, filed a statement of opposition on November 16, 1992, a copy of which was forwarded to the applicant on December 8, 1992. The first ground of opposition is that the applied for trade-mark is not registrable in view of the provisions of Section 12(1)(b) of the Trade-marks Act. In this regard, the opponent has alleged that the applicant's mark is deceptively misdescriptive of the character or quality of the applied for wares and of the persons employed in their production because the use of the term MAIL implies that the wares are provided by the opponent and its employees.
The second ground of opposition is that the application does not comply with the provisions of Section 30(i) of the Act. In support of this ground, the opponent has alleged that the applicant could not have been satisfied that it was entitled to use its mark in Canada because the mark suggests that the wares have been authorized or approved by the opponent and because use of the mark is contrary to Section 58 of the Canada Post Corporation Act.
The third ground is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Act because it is confusing with the following registered trade-marks of the opponent:
Trade-mark Reg. No. Wares/Services
TELEPOST 201,399 telecommunication services
PRIORITY POST 304,574 rapid postal services
POST PRIORITAIRE 304,575 rapid postal services
MAIL POSTE & Design 361,467 (1) postal services (2) credit card services
and a long list of wares including computer software
POSTE MAIL & Design 361,468 [same as above]
MEDIAPOSTE + 385,305 electronic message transmission services
MEDIA-POSTE-PLUS 385,306 [same as above]
ADMAIL PLUS 387,893 [same as above]
ADMAIL + 388,438 [same as above]
The fourth ground is that the applicant is not the person entitled to registration pursuant to Section 16(3) of the Act because, as of the applicant's filing date, the applied for trade-mark was confusing with a series of trade-marks and trade-names previously used in Canada by the opponent and its predecessor in title. Those marks and names include ADMAIL, ELECTRONIC MAIL and MAILTRAC.
The fifth ground of opposition is that the applied for trade-mark is not registrable pursuant to the provisions of Sections 9(1)(n)(iii) and 12(1)(e) of the Act in view of a number of official marks of the opponent. Those marks include ADMAIL, ELECTRONIC MAIL, MAILTRAC and SUPERMAILBOX. The sixth ground is that the applied for trade-mark is not registrable pursuant to Sections 9(1)(d) and 12(1)(e) of the Act because it is likely to lead to the belief that the wares in association with which it is used have received or are produced, sold or performed under governmental patronage, approval or authority.
The seventh ground of opposition reads as follows:
The trade-mark is not distinctive in that it is not adapted to distinguish the wares in association with which it is proposed to be used from the services and wares provided by the opponent and its predecessor; on the contrary, it is calculated to give rise to confusion, and to enable the applicant to benefit from and trade off the goodwill of the opponent in its corporate name, trade- marks, official marks and trade-names as referred to above, and in the terms "mail" and“mail box” as used in association with its services.
The applicant filed and served a counter statement. The opponent’s evidence consists of affidavits from each of the following individuals:
Douglas Johnston Paul Oldale
Julie T. Aung Allan Billingsley
Ian Hammocks Loretta Bozovich
Robert Devlin Bryan Kalef
Bruce Moreland Dan Campbell
Eileen McCaffrey J.E. Leptick
Gay Owens Mark Rees
As its evidence, the applicant filed the affidavit of J. Peter Bryce. Mr. Bryce was cross-examined on his affidavit and the transcript of that cross-examination forms part of the record of this proceeding. Both parties filed a written argument and an oral hearing was conducted at which both parties were represented.
At the oral hearing, the opponent’s agent indicated that the opponent was dropping its first and fifth grounds of opposition. I therefore consider those grounds to have been withdrawn.
As a preliminary matter, the opponent objected to the admission of Exhibit 1 introduced by the applicant’s agent during the re-examination of Mr. Bryce on his affidavit, the exhibit in question apparently being a printout of a computerized search of the trade-marks register. The opponent submitted that the exhibit did not qualify as proper re-examination. I agree. In any event, at the oral hearing, the applicant’s agent conceded that the exhibit is inadmissible and I have therefore not considered it as part of the evidence of record.
Central to most of the opponent's grounds is its contention that the word "mail" is generally understood to refer to the services of the opponent and that consequently the applicant's trade-mark MAIL MISER would lead the public to believe that the associated wares are provided by the opponent. The dictionary and encyclopedia entries evidenced by the Aung affidavit support the opponent's contention that "mail" is typically understood to mean something that is handled by a government postal system. The Canada Post Corporation Act gives the opponent exclusive rights in this area and, considering the volume of business conducted by the opponent, it is likely that most Canadians associate the word "mail" with the opponent when it is used to describe ordinary postal services - i.e. - the receipt and delivery of letters. In this regard, reference may also be made to the decision in Société Canadienne des Postes v. Postpar Inc. (1989), 20 C.I.P.R. 180, [1988] R.J.Q. 2740.
Although the opponent's evidence supports the contention that the word "mail" when used in everyday conversation respecting ordinary postal services is often associated with the opponent, it does not necessarily follow that when the word "mail" is used for other wares and services it is associated with the opponent. For example, the term "e-mail" is defined in The Oxford English Dictionary (1989 edition) as an abbreviation for electronic mail, a service which is provided by many traders. Furthermore, the Bryce affidavit evidences dictionary definitions for “electronic mail” and “voice mail” and commercial uses of those terms. Exhibits D and F to the Bryce affidavit evidence a number of references to “mail” trade-marks in the computer field such as TEAMLINKS MAIL, MAILWORKS FOR WINDOWS, MAILBUS, VAXMAIL and MICROSOFT MAIL. Finally, the opponent's registrations Nos. 361,467 and 361,468 both include a disclaimer to the word MAIL in respect of postal services.
A review of the remainder of the opponent's evidence reveals that the applicant and the opponent are, to some extent, potential competitors. The Johnston and Campbell affidavits establish that the opponent deals in electronic messaging services and customized mass mailings. The Bryce affidavit establishes that the applicant’s MAIL MISER product comprises mail address validation and address correction computer software that allows users to take advantage of volume discounts provided by the opponent. In fact, the opponent has included the applicant’s MAIL MISER product on its list of recognized software for preparing mailing lists and the applicant and the opponent have entered into a series of agreements respecting that recognition.
Article 3.01 of the April 1992 agreement between the parties (Exhibit B to the Bryce cross-examination) allows the applicant to make the following representation to its customers:
MAIL MISER Version 1.03 is on the list of software recognized by Canada Post Corporation until April 27, 1993. Use of RECOGNIZED SOFTWARE in preparing mailing lists MAY assist the user to meet some of the requirements for incentive mailing rates. For more information on incentive mailing rates and Canada Post Corporation’s list of RECOGNIZED SOFTWARE, interested parties should contact:
DIRECTOR MARKETING
INFORMATION TRANSFER PRODUCTS
STATION 852
CANADA POST CORPORATION
720 HERON RD
OTTAWA ON K1A 0B1
Article 1.05 of that same agreement is entitled “Trademarks” and reads as follows:
The fact that the CORPORATION has entered into this RECOGNITION AGREEMENT with the COMPANY with respect to the SOFTWARE shall not be deemed to be an admission on the part of the CORPORATION respecting the validity or the registerability [sic], as a trademark, of the name given to the SOFTWARE by the COMPANY.
The applicant emphasizes its relationship with the opponent in its advertising. For example, the brochure appended as Exhibit A to the Bryce affidavit is headed “MAIL MISER - CANADA POST RECOGNIZED ADDRESS CORRECTION.” The last page of that brochure includes the notice set forth in paragraph 3.01 of the agreement between the parties with the heading “Recognized by Canada Post.”
In reviewing the evidence in the present case, I have also been guided by the decision of Mr. Justice Muldoon in Canada Post Corp. v. Registrar of Trade Marks (1991), 40 C.P.R.(3d) 221 (F.C.T.D.) and his following comments regarding the Postpar decision (at page 239):
The incidents of Parliament's special regard for, and statutory protection of Can. Post abound in the C.P.C.A. [the Canada Post Corporation Act] and are especially noticeable in the above-recited passages. The definitions, especially those of "mail", "mailable matter" and "transmit by post", virtually equate Can. Post with the notions of "mail or mailing" and "post or posting" of "any message, information, funds or goods which may be transmitted by post."
Mr. Justice Muldoon went on to discuss the provisions of the Canada Post Corporation Act at length and stated as follows at page 240 of the decision:
In light of Can. Post's extraordinary special status conferred by Parliament, the corporation cannot lawfully be prevented, on the TMOB's discretion under the rules, from evincing all of its enormous statutory importance in specific regard to Can. Post's marks and words of corporate identity, by refusing the amendments to its statement of opposition just as if Can. Post were an ordinary individual or corporation. Put another way, the law exacts that Can. Post be enabled to evince its special status regarding its corporate identity in order that the TMOB have fully for consideration Can. Post's exertion of its monopoly, status and identity in opposition to anyone and everyone who or which would seek to become the registered holder of trade marks similar to, or even suggesting those of Can. Post, for such marks fall under the ban of outlawry imposed by the specific and general provisions of the C.P.C.A.
In passing, I wish to note that while it is undoubtedly true that Canada Post Corporation has a special status by virtue of its enabling statute and that it can use the provisions of that statute in support of one or more grounds of opposition, Canada Post Corporation nevertheless should receive the same treatment as others respecting interlocutory requests in opposition proceedings. If Mr. Justice Muldoon is saying otherwise, I disagree.
As for the second ground of opposition, the applicant has formally complied with the provisions of Section 30(i) of the Act by including the required statement in its application. The issue then becomes whether or not the applicant has substantively complied with that subsection - i.e. - was the statement true when the application was filed? The opponent contends that the statement could not have been true because the applicant's use of its mark was contrary to the provisions of Section 58 of the Canada Post Corporation Act.
I had occasion to consider this issue in Canada Post Corp. v. 736217 Ontario Ltd. (1993), 51 C.P.R.(3d) 112 at 120 as follows:
I disagree with the opponent's contention. Section 58 of the Canada Post Corporation Act deals with certain offences that arise from the unauthorized use of words or marks suggesting a connection with the opponent. Section 60 of that Act indicates that the offences under Section 58 are criminal in nature and provides for a range of penalties. Thus, it was incumbent on the opponent to evidence that the applicant had been convicted of one or more of the offences spelled out in Section 58 by a court of competent jurisdiction or at least that there is a 'prima facie' case. It is beyond the jurisdiction of the Trade Marks Opposition Board to make such findings although my informal reaction based on the evidence of record is that the applicant did not contravene Section 58. In any event, the opponent has failed to meet the evidential burden on it and consequently the second ground is also unsuccessful. The present case can be contrasted with the situations in E. Remy Martin & Co. S.A. v. Magnet Trading Corp. (HK) Ltd. (1988), 23 C.P.R.(3d) 242 (T.M.O.B.) and Co-operative Union of Canada v. Tele-Direct (Publications) Inc. (1991), 38 C.P.R.(3d) 263 (T.M.O.B.) where the opponent in each case had made out a 'prima facie' case that the applicant's use of its mark was in violation of a federal statute.
My statement that the Opposition Board cannot make such findings was intended to apply to criminal findings only. I did not intend it to apply to a finding of whether or not an opponent had made out a ‘prima facie’ case that there had been a contravention of Section 58 of the Canada Post Corporation Act. A finding of the latter type can be made by the Board and, as noted, has been made in at least two previous opposition cases.
In a previous case, it was submitted that the ‘prima facie’ test set out in the Remy Martin case was based on the then applicable test for granting an interlocutory injunction and that the test in such cases is now whether or not there is a serious issue to be tried: see Turbo Resources v. Petro Canada Inc. (1989), 24 C.P.R.(3d) 1 (F.C.A.). Although it is true that in setting out the ‘prima facie’ test in the Remy Martin case I made reference to a Federal Court case dealing with an application for an interlocutory injunction, that reference was illustrative only. The basis for the ‘prima facie’ test is the usual evidential burden on an opponent respecting a Section 30 ground (or any ground, for that matter) in an opposition proceeding. Although the onus or legal burden is on the applicant to show its compliance with the provisions of Section 30 of the Act, there is an evidential burden on the opponent to prove the allegations of fact made in support of its ground of opposition: 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.). In other words, in the present case, the opponent must make out a ‘prima facie’ case that the applicant has not complied with the provisions of Section 30(i) of the Act.
In the present case, it was incumbent on the opponent to adduce sufficient evidence from which it could reasonably be concluded that the applicant’s proposed use of its mark MAIL MISER would be in contravention of Section 58 of the Canada Post Corporation Act. Having reviewed the opponent’s evidence (most of which is not on point), it is not readily apparent to me that the applicant’s mark would suggest any connection with the opponent. The mere fact that the applicant’s mark includes the word “mail” does not mean that the use of that mark would contravene Section 58 of the Canada Post Corporation Act. Thus, the second ground of opposition is unsuccessful.
As for the third ground of opposition, the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark pursuant to Section 12(1)(d) of the Trade-marks Act is the date of my decision: see the decision in Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R.(3d) 538 at 541-542 (T.M.O.B.). The onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Furthermore, 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) of the Act. Finally, as submitted by the opponent’s agent at the oral hearing, the most relevant of the opponent’s registered marks is MAIL POSTE & Design (registration No. 361,467) and thus a consideration of the issue of confusion between that mark and the applicant’s mark will effectively decide the outcome of the third ground.
As for Section 6(5)(a) of the Act, the opponent’s registered mark is inherently weak since it is dominated by the words “mail” and “poste” which are descriptive of the opponent’s services and which have been disclaimed in the opponent’s registration. The opponent’s registered mark appears on a number of publications appearing in the evidence (see, for example, Rees Exhibit 3, McCaffrey Exhibits 7-10, Campbell Exhibits 5 and 9-11 and Leptick Exhibits 1 and 3) although none of the affiants evidenced the circulation of any of these items. However, given the variety of publications on which the mark appears and the fact that it appears on the opponent’s fleet of trucks (see paragraph 3 of Campbell), I am prepared to conclude that the opponent’s mark has become known to some extent in Canada.
The applicant’s mark MAIL MISER is suggestive of its applied for wares and is therefore inherently weak. The Bryce affidavit evidences some minor sales of the applicant’s MAIL MISER product in 1992 and 1993. Thus, I am able to conclude that the applicant’s mark has achieved a limited reputation.
The length of time the marks have been in use is not a material circumstance in the present case. The opponent’s registered services are “postal services” which presumably cover the services performed by the opponent through its postal outlets. The opponent’s registered wares include “computer software.” The applicant’s wares comprise computer software for address validation and correction of mailing data bases. Thus, the wares of the applicant fall within the scope of the opponent’s wares. It therefore follows that the trades of the parties could also overlap. The applicant’s agent submitted that the opponent is not engaged in the production or sale of the type of software sold by the applicant. However, the opponent’s statement of wares is not restricted to any particular types of computer software and it is the statement of wares that governs: see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R.(3d) 3 at 10-11 (F.C.A.), Henkel Kommanditgesellschaft v. Super Dragon (1986), 12 C.P.R.(3d) 110 at 112 (F.C.A.) and Miss Universe, Inc. v. Dale Bohna (1994), 58 C.P.R.(3d) 381 at 390-392 (F.C.A.).
The applicant submitted that the applicant’s customers are large sophisticated companies that would be less likely to mistake the source of the applicant’s wares. However, as noted by the opponent’s agent, the computer software described in the applicant’s statement of wares is not, of necessity, restricted to large sophisticated companies.
As for Section 6(5)(e) of the Act, there is some resemblance between the marks in all respects since both include the word “mail.” However, the marks do differ since the opponent’s mark consists of the word “mail” and the French version of that word, namely the word “poste”, both of which refer only to postal services. The applicant’s mark, on the other hand, consists of the phrase “mail miser” which suggests some product or service to be used in conjunction with one’s mail.
The applicant also relied on the evidence of third party uses of “mail” trade-marks primarily in the computer industry (see the Bryce affidavit). However, Mr. Bryce did not evidence the extent to which those marks have become known in Canada. It is therefore not possible to conclude that trade-marks incorporating the word “mail” are in common use in the computer software field.
As an additional surrounding circumstance, I have considered Mr. Bryce’s observation that, in his experience, none of his company’s customers has assumed any connection between the applicant and the opponent as a consequence of the applicant’s activities in association with its trade-mark MAIL MISER. Given the limited use shown to date of the applicant’s trade-mark, Mr. Bryce’s observation is not surprising.
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 wares, trades and marks of the parties, I find that the applicant has not satisfied the onus on it to show that its mark is not confusing with the opponent’s registered mark. The third ground is therefore successful.
As for the fourth ground of opposition, the opponent has relied on prior use of a number of its trade-marks and trade-names. However, it has failed to evidence use of many of those marks and names prior to the applicant's filing date. The marks and names for which use has been shown (e.g. - INTELPOST and Canada Post) are very different from the applicant's mark such that I find that there would be no confusion. At the oral hearing, the opponent’s agent indicated that it was only relying on prior use of its marks ADMAIL and MAILTRAC respecting the fourth ground. It is not clear that the opponent has evidenced use of those two marks prior to the applicant’s filing date. Even if it has, however, given the limited reputation shown for those two marks and the differences between the wares and services associated with those marks and the wares listed in the present application, I find that the applicant’s trade-mark is not confusing with either of those two marks. Thus, I find that the fourth ground is unsuccessful.
The sixth ground of opposition is based on the provisions of Sections 9(1)(d) and 12(1)(e) of the Act. The opponent contends that the applicant's trade-mark is likely to lead to the belief that the applicant's wares have received or are produced, sold or performed under governmental patronage, approval or authority. The material time respecting the sixth ground would appear to be the date of my decision. The onus is on the applicant to show its compliance with Section 9(1)(d) but there is an evidential burden on the opponent.
I find that the opponent has satisfied its evidential burden. The opponent has shown that it is a Crown corporation and that consumers often associate the ordinary word "mail" with the opponent in the context of ordinary postal services. Furthermore, it has shown that the applicant’s wares are specifically approved of by the opponent and that the applicant alerts its customers to that approval in its advertisements. Thus, it would seem likely that purchasers of the applicant’s wares would assume that the wares are produced or sold under governmental authority. The applicant has failed to evidence the contrary and thus the sixth ground is successful.
As for the final ground of opposition, the material time for considering the circumstances respecting the issue of distinctiveness is as of the filing of the opposition. The onus or legal burden is on the applicant to show that its applied for trade-mark actually distinguishes or is adapted to distinguish its wares from those of others throughout Canada. There is, however, an evidential burden on the opponent to prove its supporting allegations of fact.
Again, I find that the opponent has satisfied its evidential burden by establishing a significant association in the public's mind between the ordinary word "mail" and the opponent. However, as also noted, that association is in respect of ordinary postal services only, namely the receipt and delivery of letters and packages. I have also considered that the opponent apparently enjoys a wider ambit of protection for its marks in view of Mr. Justice Muldoon's interpretation of the provisions of the Canada Post Corporation Act in the Canada Post Corp. decision discussed above. Furthermore, there is evidence of advertising of the opponent’s mark SUPERMAILBOX, use and advertising of its mark VOLUME ELECTRONIC MAIL and public recognition for its mark MAIL POSTE & Design although there is little or no evidence of any reputation for its other marks which include the word "mail." Finally, as previously noted, the evidence shows that it is likely that consumers would assume that the applicant’s MAIL MISER product is somehow sponsored or approved by the opponent.
The applicant, in my view, has not satisfied the legal burden on it. The applicant has submitted that the opponent is not engaged in the production and sale of computer software and that the public would therefore not make that an association between the applicant's mark and the opponent in the context of computer software for address validation and correction of mailing databases. However, as discussed, the evidence suggests otherwise. Furthermore, the opponent has evidenced some activity in the field of computer software (see the Hammocks affidavit), although it is not directly related to that of the applicant Thus, I find that the
applicant has not satisfied the onus on it to show that its mark is capable of distinguishing its wares from those of the opponent. The seventh ground of opposition 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 MAY, 1996.
David J. Martin,
Member,
Trade Marks Opposition Board.