IN THE MATTER OF AN OPPOSITION
by Canada Post Corporation to application
No. 762,346 for the trade-mark COMPUMAIL
filed by IBAX Inc.
On August 24, 1994, the applicant, IBAX Inc., filed an application to register the trade-mark COMPUMAIL based on proposed use in Canada. The application was advertised for opposition purposes on March 20, 1996. The application as advertised covered the following wares:
computer software; software designed to assist people who targets [sic] and delivers [sic] addressed and unaddressed mail to specific homes and/or geographical locations.
The opponent, Canada Post Corporation, filed a statement of opposition on May 14, 1996, a copy of which was forwarded to the applicant on June 7, 1996. Leave was subsequently granted on three occasions to file a revised statement of opposition.
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 clearly descriptive of the character or quality of the applied for wares because “....it is clearly descriptive of a computer application for use in association with mail.”
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 Sections 58 and 61 of the Canada Post Corporation Act.
The third ground of opposition is that the applicant’s application does not conform to the requirements of Sections 30(b) and 30(e) of the Act because the applicant used its trade-mark prior to the filing date of its proposed use application. The fourth ground is that the applicant’s application does not conform to the requirements of Section 30(a) of the Act because the description “computer software” is not in ordinary commercial terms.
The fifth 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 fifteen registered trade-marks of the opponent including the marks MAIL POSTE & Design and POSTE MAIL & Design registered under Nos. 361,467 and 361,468, respectively, as well as the trade-marks ADMAIL PLUS, LETTERMAIL PLUS, FAXMAIL and LASERMAIL.
The sixth 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 ADMAIL, MAILTRAC and SUPERMAILBOX. The seventh 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 proposed to be used have received or are produced, sold or performed under governmental patronage, approval or authority.
The eighth ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(3)(a) of the Act because, as of the applicant's filing date, the applied for trade-mark was confusing with a series of trade-marks, trade-names and official marks previously used in Canada by the opponent and its predecessor in title. Those marks and names include ADMAIL, LETTERMAIL, FAXMAIL, SUPERMAILBOX and MAILTRAC. The ninth ground is that the applicant is not the person entitled to registration pursuant to Section 16(3)(b) of the Act because, as of the applicant’s filing date, the applied for trade-mark was confusing with the opponent’s trade-mark REMITMAIL for which an application had previously been filed under serial No. 715,477.
The tenth ground of opposition reads as follows:
The proposed trade-mark, contrary to paragraph 38(2)(d) of the Act, is not distinctive in that it is not adapted to distinguish and does not actually distinguish the wares in association with which it is used or proposed to be used from the wares and services 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 term MAIL as used in association with its wares.
The applicant filed and served a counter statement. As its evidence, the opponent submitted eighteen affidavits from the following individuals:
Tyler Alton Andre Belanger
Donald Clysdale (2) P. Claire Gordon
Nelson Groening Gregory Hannah
Douglas Johnston Gilles Manor
Herbert McPhail Bruce Moreland
Paul Oldale (3) Douglas Schmunk
Len Sheedy Timothy Skelly
Juergen Weltner
As its evidence, the applicant submitted the affidavits of Sherry Rivest and Allan Komenda. Both parties filed a written argument and an oral hearing was conducted at which both parties were represented.
As a preliminary matter, it should be noted that, in its written argument, the opponent withdrew its sixth ground of opposition.
As a further preliminary matter, the opponent contended that the applicant’s initial failure to timely file its evidence means that the present application was automatically deemed to have been abandoned by virtue of the provisions of Section 38(7.2) of the Act and Rule 42(2) of the Trade-marks Regulations. However, the applicant was granted a retroactive extension of time to submit its evidence pursuant to Section 47(2) of the Act and subsequently filed the Rivest and Komenda affidavits. The opponent contends that the Opposition Board was without jurisdiction to grant such an extension. The Chairman of the Opposition Board already dealt with the opponent’s objection in his ruling of February 16, 1998. On the issue of the Registrar’s jurisdiction in such circumstances, see the unreported opposition decision
in Bensusan Restaurant Corporation v. The Blue Note Restaurant Inc. (S.N. 803,196; December 4, 2000).
Dealing first with the third ground of opposition, the material time for assessing the applicant's conformance with the requirements of Sections 30(b) and 30(e) of the Act is the filing date of its application. Furthermore, the onus or legal burden is on the applicant to show its conformance with those two subsections: see the opposition decisions in Joseph Seagram & Sons v. Seagram Real Estate (1984), 3 C.P.R.(3d) 325 at 329-330 and Canadian National Railway Co. v. Schwauss (1991), 35 C.P.R.(3d) 90 at 94 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-conformance with Sections 30(b) and 30(e) of the Act: see page 95 of the Schwauss decision and the opposition decision in Green Spot Co. v. J.B. Food Industries (1986), 13 C.P.R.(3d) 206 at 210-211. Finally, there is a series of opposition decisions supporting the proposition that a proposed use application will be refused where the evidence points to use of the applied for mark by the applicant prior to the filing date: see Tone‑Craft Paints Ltd. v. Du‑Chem Paint Co. Ltd. (1969), 62 C.P.R. 283, Airwick Industries Inc. v. Metzner (1982), 74 C.P.R. (2d) 55, Societe Nationale Elf Acquitaine v. Spex Design Inc. (1988), 22 C.P.R. (3d) 189 and Frisco-Findus S.A. v. Diners Delite Foods Limited (1989), 26 C.P.R.(3d) 556.
In the present case, the President of the applicant, Mr. Komenda, states in his affidavit dated December 4, 1997 that the applicant’s COMPUMAIL software has been commercially available for leasing to the public for approximately five years. This suggests that the mark was first in use in December of 1992 which is well over a year and a half prior to the applicant’s filing date. Ms. Rivest makes a similar statement in her affidavit and the applicant’s brochure (appended as Exhibit 1 to her affidavit) suggests that at least one customer has been using the applicant’s COMPUMAIL software since prior to October of 1993.
In view of the above, I find that the opponent has met its evidential burden to show that the applicant had used its trade-mark prior to the filing date of the proposed use application. It was therefore incumbent on the applicant to submit evidence to show otherwise and establish the ‘bona fides’ of its proposed use claim. Since the applicant failed to file such evidence, I find that the third ground of opposition is successful.
As for the fourth ground of opposition based on Section 30(a) of the Act, the former Registrar of Trade-marks stated in Dubiner and National Yo-Yo and Bo-Lo Ltd. v. Heede Int'l Ltd. (1975), 23 C.P.R. (2d) 128 that an applicant in its application “must clearly set forth wares or services as they are customarily referred to in the trade (emphasis added).” In this regard, reference may also be made to the opposition decision in Pro Image Sportswear, Inc. v. Pro Image, Inc. (1992), 42 C.P.R.(3d) 566 at 573. In the present case, the opponent contends that the wares described as “computer software” are too broad and unspecific and therefore not in ordinary commercial terms. I agree. In order for that description to be meaningful, it would be necessary to provide more specifics such as the type of software or the purpose for which is has been designed. Thus, the fourth ground is successful insofar as it applies to the wares “computer software.” The opponent did not challenge the remaining wares pursuant to Section 30(a).
Central to most of the opponent’s remaining 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 COMPUMAIL would lead the public to believe that the associated wares are manufactured, sold or licensed by the opponent. The dictionary and encyclopedia entries evidenced by the Gordon 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 within certain parameters and, considering the volume of business conducted by the opponent, it is likely that most Canadians associate the ordinary word “mail” with the opponent. 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. On the other hand, the word “mail” is also used
by ordinary Canadians to refer to delivered materials not handled by the opponent such as home-delivered flyers and inter-office paper communications.
A review of the opponent's evidence reveals that the applicant and the opponent are potential competitors. The opponent’s evidence establishes that, for a number of years, it has offered and performed special services for large volume users including personalized form letters. It has also provided a computer based messaging service. More recently, the opponent has provided targeted, high volume mail services under the trade-marks ELECTRONIC ADMAIL and ELECTRONIC LETTERMAIL that are very similar to the services performed by the applicant’s software (see the Hannah and Johnston affidavits). The Sheedy affidavit establishes that the opponent provides point of sale hardware and software to its own outlets and to its various dealers. Also of note is the opponent’s Software Evaluation and Recognition Program which indicates to large volume mailers which third party software programs meet the opponent’s standards.
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.) which involved an application for judicial review of an interlocutory ruling from an opposition proceeding. The following comments by Muldoon, J. regarding the Postpar decision appear at page 239 of his decision:
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 first ground of opposition, the material time for considering the circumstances respecting the issue arising pursuant to Section 12(1)(b) of the Act is the date of my decision: see the decision in Lubrication Engineers, Inc. v. The Canadian Council of Professional Engineers (1992), 41 C.P.R.(3d) 243 (F.C.A.). The issue is to be determined from the point of view of an everyday user of the wares. Furthermore, the trade-mark in question must not be carefully analyzed and dissected into its component parts but rather must be considered in its entirety and as a matter of first impression: see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R.(2d) 25 at 27-28 and Atlantic Promotions Inc. v. Registrar of Trade Marks (1984), 2 C.P.R.(3d)
The applicant's trade-mark COMPUMAIL used in association with the applicant’s wares suggests that the applicant’s software allows users to computerize their mailing operations. However, it does not clearly describe the function of the applicant’s software - i.e. - to assist in targeted mailings. Thus, the first ground of opposition is unsuccessful.
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 Sections 58 and 61 of the Canada Post Corporation 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 use of its mark COMPUMAIL would be in contravention of Section 58 of the Canada Post Corporation Act. Having reviewed the opponent’s evidence, I consider that it has met its evidential burden respecting this ground. Given that the parties provide similar wares and services under similar marks, I find that the opponent has satisfied its evidential burden to show that the applicant’s use of its mark would contravene Section 58 of the Canada Post Corporation Act. Since the applicant failed to file evidence to show otherwise, the second ground is successful.
As for the fifth ground of opposition, the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark 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. The opponent’s first two registered trade-marks relied on are MAIL POSTE & Design and POSTE MAIL & Design.
The opponent’s two trade-marks are inherently distinctive: see Canada Post Corp. v. Welcome Wagon Ltd. (1997), 74 C.P.R.(3d) 343 at 347 (F.C.T.D.). Based on the widespread use of those marks evidenced by the opponent, I am able to conclude that both marks have become well known throughout Canada. As discussed, the applicant's mark is suggestive of its applied for wares and is therefore inherently weak. There is minimal evidence of any acquired reputation for the applicant's mark.
The length of time the marks have been in use favors the opponent. The opponent's registered services are “postal services” which covers those services performed by the opponent through its postal outlets. Presumably, it also covers the opponent’s volume mailing services and customized mailing services. Thus, there is an overlap between the services of the opponent and the applicant’s wares. It therefore also follows that there would be an overlap in the natures of the trades of the parties.
As for Section 6(5)(e) of the Act, there is a fair degree of resemblance between the marks in all respects since all three marks include the word “mail.” As noted, the applicant’s mark suggests computer-assisted mailing which is one of the services performed by the opponent. The idea suggested by the opponent’s marks is the Canadian postal service performed by the opponent. Thus, there is some resemblance in the ideas suggested by the marks at issue.
As an additional surrounding circumstance, I have considered the opponent’s family or series of marks. The opponent has evidenced use of a number of trade-marks incorporating the word “mail” including ADMAIL, LETTERMAIL, LASERMAIL and FAXMAIL which are used for services similar to those performed by the applicant’s software. This increases the likelihood that consumers would associate the applicant’s trade-mark COMPUMAIL with the opponent.
The applicant sought to rely on state of the register evidence regarding third party trade-marks incorporating the word MAIL as shown in Exhibit 2 to the Komenda affidavit. State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace: see the opposition decision in Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R.(3d) 432 and the decision in Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R.(3d) 205 (F.C.T.D.). Also of note is the decision in 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 state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located.
Exhibit 2 to the Komenda affidavit cannot be relied on in this opposition. Mr. Komenda simply states that he was provided with a list of marks with no indication as to how the list was obtained, who compiled the list, when any search was conducted or what records were searched. Furthermore, the list does not provide complete particulars of the trade-mark applications and registrations located. The search results provided by Mr. Komenda comprise hearsay evidence and are inadmissible. It cannot be said that such hearsay evidence was necessary or reliable: see Labatt Brewing Company Limited v. Molson Breweries, A Partnership (1996), 68 C.P.R.(3d) 216 (F.C.T.D.).
The applicant also sought to rely on a list of what are apparently business names including the word MAIL which Mr. Komenda says he extracted from a CD bearing the name SelectPhone. However, Mr. Komenda did not indicate the source of the information on the CD nor did he attest to its reliability. Furthermore, the various entries included in Exhibit 3 to his affidavit give no indication as to whether the businesses are active or whether they are engaged in the same type of businesses as the applicant and the opponent. Thus, the CD search can be given little weight in this proceeding.
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, services, trades and marks of the parties, I find that the applicant’s mark is confusing with the opponent’s two registered marks. The fifth ground is therefore successful insofar as it is based on the registered trade-marks MAIL POSTE & Design and POSTE MAIL & Design and it is unnecessary to consider the opponent’s other registered marks relied on in the statement of opposition.
The seventh 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 this 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 by establishing that it is a Crown corporation, that consumers often associate the ordinary word “mail” with the opponent and that consumers are aware that one of the opponent’s functions is the provision of volume mail services and customized mailing services. Furthermore, some consumers are aware that the opponent evaluates and authorizes third party mailing software under its Software Evaluation and Recognition Program. Thus, the adoption of the words “compu” and “mail” together as the trade-mark COMPUMAIL would likely lead to the belief that the applicant’s wares are produced, sold or performed under governmental patronage, approval or authority. Since the applicant failed to file evidence on point, the seventh 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 and by establishing that the public is aware that the opponent performs volume mail services and customized mailing services. 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. There is also evidence of an acquired reputation for some of the opponent’s marks which include the word “mail” such as SUPERMAILBOX, MAIL POSTE & Design, POSTE MAIL & Design, ADMAIL, LETTERMAIL, LASERMAIL and FAXMAIL. Since the applicant has failed to evidence any reputation of note for its trade-mark or for any relevant third party marks or names, the tenth ground of opposition is successful. It is therefore unnecessary to consider the opponent’s eighth and ninth grounds.
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 20th DAY OF FEBRUARY, 2001.
David J. Martin,
Member,
Trade Marks Opposition Board.