IN THE MATTER OF AN OPPOSITION
by Interactive Media Group (Canada) Limited
to application No. 719,816 for the trade-mark
TELE-SINGLES filed by Dial & Dictate Limited
On December 31, 1992, the applicant, Dial & Dictate Limited, filed an application to register the trade-mark TELE-SINGLES for the services of “providing telephone voice mail personals” based on use in Canada since November of 1991. The application was advertised for opposition purposes on June 23, 1993.
The opponent, Interactive Media Group (Canada) Limited, filed a statement of opposition on August 23, 1993, a copy of which was forwarded to the applicant on October 1, 1993. The first ground of opposition is that the applicant’s application does not comply with the provisions of Section 30(b) of the Trade-marks Act because the applicant did not use its trade-mark since November of 1991 as claimed. The second ground is that the applicant’s application does not comply with the provisions of Section 30(i) of the Act because the applicant was aware of the opponent’s prior use and registration of its trade-marks TELECLASSIFIEDS and TELEPERSONALS.
The third ground of opposition 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 opponent’s trade-marks TELEPERSONALS and TELECLASSIFIEDS registered under Nos. 399,968 and 399,967 respectively, both for services described as “providing of telephone voice mail personals.” The fourth ground is that the applicant is not the person entitled to registration pursuant to Section 16(1)(a) of the Act because, as of the applicant’s claimed date of first use, the applied for trade-mark was confusing with the trade-marks TELEPERSONALS and TELECLASSIFIEDS previously used and made known in Canada by the opponent. The fifth ground is that the applicant’s trade-mark is not distinctive because it is confusing with the opponent’s two trade-marks.
The applicant filed and served a counter statement. As its evidence, the opponent filed an affidavit of its President, David Chamandy. As its evidence, the applicant filed the affidavits of Denis Huggins, L. Jane Sarjeant, Angela Kim and Marie Lucie Jacque-Lyse Lussier. As evidence in reply, the opponent filed an affidavit of Sandra Rawson. Both parties filed a written argument but no oral hearing was conducted.
As for the first ground of opposition, there was an evidential burden on the opponent to prove the allegation that the applicant had not used its trade-mark since the date of first use claimed. The opponent did not file any evidence on point. Furthermore, the applicant’s evidence is consistent with its claim to have used its mark since November of 1991. The first ground is therefore unsuccessful.
The applicant has conceded that it was aware of the opponent’s business when it chose its trade-mark TELE-SINGLES. Thus, the second ground turns on the issue of confusion between the marks of the parties and is therefore contingent on the success or failure of the remaining grounds.
As for the third 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. Finally, the more relevant of the opponent’s two marks is the trade-mark TELEPERSONALS 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, both TELE-SINGLES and TELEPERSONALS are coined words and are therefore inherently distinctive. However, neither mark is inherently strong since each suggests a dating service operated by telephone. In his affidavit, Mr. Huggins identifies himself as a director of the applicant and states that the applicant operates a national telephone dating system in association with its trade-mark TELE-SINGLES. According to Mr. Huggins, the applicant’s revenues have totalled in excess of $900,000 and promotional expenditures have exceeded $300,000. The applicant has advertised in newspapers in Ontario, Alberta and Manitoba and on television stations in southern Ontario. Based on Mr. Huggins affidavit, I am able to conclude that the applicant’s mark TELE-SINGLES has become known to a limited extent in southern Ontario and to a lesser extent in Alberta and Manitoba.
Mr. Chamandy, in his affidavit, states that the opponent has operated a voice mail personal ad service in association with the trade-mark TELEPERSONALS from 1987 on, that revenues have been in excess of $17 million and that advertising expenditures have been in excess of $2 million. Although Mr. Chamandy describes his company’s service as nationwide, the representative ads appended as exhibits to his affidavit suggest that the service may only have been advertised through Toronto newspapers. Thus, I can conclude that the opponent’s trade-mark has become known to some extent in southern Ontario.
The length of time the marks have been in use favors the opponent. The services of the parties are essentially identical, both parties operating a voice mail personal ad system whereby subscribers can record a personal ad and access responses to that ad through a voice mailbox. The trades of the parties are the same and, in fact, both parties have advertised their services through the same Toronto newspapers.
As for Section 6(5)(e) of the Act, the trade-marks at issue bear a fair degree of visual and phonetic resemblance due to the common use of the prefix TELE. The marks bear an even greater degree of resemblance in the ideas suggested since they both suggest a dating system operated by telephone.
It is the applicant’s contention that the prefix TELE is common in the trade and that therefore the differences between the marks at issue are sufficient to avoid confusion occurring. The Sarjeant affidavit introduces into evidence the results of various computerized searches of the trade-marks register conducted with a view to locating third party TELE-prefixed marks in the same area as the applicant and the opponent. Those search results show that the prefix TELE is a common component of trade-marks in general. However, on my review of those results, the only relevant registration located by Ms. Sarjeant is No. 419,793 for the trade-mark TELE RENDEZ-VOUS for the services of “providing telephone voice mail personals.” The mere existence of a single registration does not allow me to conclude that there has been common adoption of such marks in the trade.
In his affidavit, Mr. Huggins states that he is familiar with a number of various third party telephone services operating under TELE-prefixed trade-marks. However, at least one of those marks (TELEDIRECT) is used for a different type of telephone service than those offered by the applicant and the opponent. Furthermore, in her affidavit, Ms. Rawson indicates that she investigated most of the remaining businesses identified by Mr. Huggins and found that there were either no telephone listings for those businesses or the number was not in service. In fact, the only business identified by Mr. Huggins that Ms. Rawson did not investigate was an enterprise called TELEMATCH.
In her affidavit, Ms. Kim states that she investigated various Canadian telephone directories and located entries for TELE-prefixed trade-marks for services similar to those of the parties in this opposition. Most of those listings were for the mark TELEPERSONALS which were presumably placed by the opponent. She did, however, locate a listing for TEL-A-DATE in Windsor and listings for TELE-RENCONTRES, LIGNE TELEMATCH and TELE-PLAISIR in Montreal. Furthermore, Ms. Lussier, in her affidavit, states that she called three Montreal businesses operating under the trade-marks TELE-RENDEZ-VOUS, TELE-CONTACT and TELEMATCH LINE. In each case, she received a recorded message which indicated to her that the business offered a telephone dating service.
In summary, the opponent has evidenced that there are at least some businesses operating in the telephone dating services field, most of them being in Montreal. However, in the absence of additional evidence, it is difficult to determine the extent to which these third party enterprises have become known to consumers. Given the numbers located, however, I am able to conclude that at least some consumers have become aware of third party TELE-prefixed marks in the telephone dating services field.
The applicant also contended that the absence of evidence of actual confusion between the marks at issue indicates that confusion is not likely. However, although both marks have been used and advertised in the Toronto area, there has not been extensive use of the applicant’s mark. Thus, the opportunities for actual confusion to have occurred have been limited. Furthermore, the nature of the services provided by the parties suggests that even if a consumer had mistaken the applicant’s telephone dating service for the opponent’s, he wouldn’t necessarily even be aware that he was dealing with a different entity unless he was given inferior service.
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 identity between the services and trades of parties, the degree of resemblance between the marks at issue and the extent to which the opponent’s mark has become known, and notwithstanding the limited use of TELE-prefixed marks by others, I find that the applicant has failed to satisfy the onus on it to show that its mark is not confusing with the opponent’s registered mark TELEPERSONALS. The third ground is therefore successful.
As for the fourth ground of opposition, the opponent has failed to evidence prior making known of its marks. However, insofar as the opponent has relied on prior use of its marks and, in particular, its trade-mark TELEPERSONALS, the opponent’s case is even stronger than it is under its first ground since, as of the applicant’s claimed date of first use, there was no evidence of third party uses of TELE-prefixed marks for the same services. Thus, the fourth ground is successful insofar as the opponent has relied on prior use of its trade-mark TELEPERSONALS.
As for the fifth ground of opposition, the material time for considering the issue of distinctiveness is as of the filing of the opposition. In view of my conclusions above, I find that the applicant has also failed to satisfy the onus on it to show that its mark distinguishes its services from the opponent’s services offered under the trade-mark TELEPERSONALS. Thus, the fifth ground is 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 16th DAY OF OCTOBER, 1996.
David J. Martin,
Member,
Trade Marks Opposition Board.