LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 156
Date of Decision: 2010-09-21
IN THE MATTER OF AN OPPOSITION by Quantum Electronics Inc. to Application No. 1,259,639 for the trade-mark MODEL 919 filed by Dimo’s Tool & Die Ltd.
[1] On May 20, 2005, Dimo’s Tool & Die Ltd. (the Applicant) filed an application to register the trade-mark MODEL 919 (the Mark) based upon use of the Mark in Canada, by the Applicant and the Applicant’s predecessor-in-title, Halross Instruments Corporation (1976) Limited, since at least 1952 in association with the following wares: “moisture meters, namely meters to determine moisture content of grain or the like” (the Wares).
[2] On December 14, 2005, the Applicant placed a letter on file to give notice of additional predecessors-in-title. More particularly, the Applicant advised the Registrar that the following predecessors-in-title should be included in the instant trade-mark application in addition to Halross Instruments Corporation (1976) Limited, namely: Halross Instruments Corporation Limited; CAE Inc. (formerly Canadian Aviation Electronics Ltd. and formerly CAE Industries), Nuclear Entreprises Ltd.; Conuclear Medical Limited (formerly Conuclear Ltd.); and William McRae. While such amendment was made by letter and changes the use claim in respect of the period of use by the Applicant’s predecessors-in-title, I am of the opinion that it is not contrary to the provisions of Rules 31 and 32 of the Trade-marks Regulations, SOR/96-195 (the Regulations) [see Empire Comfort Systems, Inc. v. Onward Multi-Corp. Inc. 2010 TMOB 30].
[3] The application was advertised for opposition purposes in the Trade-marks Journal of April 12, 2006.
[4] On October 3, 2006, Quantum Electronics Inc. (the Opponent) filed a statement of opposition against this application. The grounds of opposition are set out as follows:
1. The application does not conform to the requirements of s. 30(a) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act) in that “the application does not contain a statement in ordinary commercial terms of the specific wares in association with which the [M]ark is proposed to be used”;
2. The application does not conform to the requirements of s. 30(i) of the Act in that “the Applicant could not have been satisfied that it was entitled to the use and registration of the [Mark] in Canada, in view of the Opponent’s prior application for the trade-mark QUANTUM 919 DIGITAL in association with ‘moisture meters and circuit boards for use in the agricultural sector’”;
3. The application does not conform to the requirements of s. 30(b) of the Act in that “the application does not set out the true date from which the Applicant has used the [Mark] in association with the general class of wares described in the application”;
4. The Applicant is not the person entitled to registration of the Mark in view of the provisions of s. 16(1)(b) “because at the date of filing of the application, it was confusing with the trade-mark QUANTUM 919 DIGITAL in respect of which an application for registration had been previously filed in Canada”, namely application No. 1,243,712 for the wares “moisture meters and circuit boards for use in the agricultural sector”; and
5. The Mark is not distinctive within the meaning of s. 2 of the Act in that it does not distinguish and is not adapted to distinguish the Applicant’s Wares from the wares or services of others. “More particularly, 919 is a generic term for grain moisture testers”.
[5] The Applicant filed and served a counter statement in which it denies the Opponent’s allegations.
[6] In support of its opposition, the Opponent filed the affidavit of William Fraser, President of the Opponent, sworn October 9, 2007. The Applicant obtained an order for the cross-examination of Mr. Fraser but elected not to proceed with the cross-examination. The Applicant also elected not to file any evidence.
[7] Only the Applicant filed a written argument. Both parties were represented at an oral hearing. In this regard, the Opponent indicated at the oral hearing that it had filed a written argument with the Registrar on July 29, 2009. However, upon review of the file, it appears that no such written argument was ever received by the Registrar. To the contrary, the Office letter dated August 4, 2009 addressed to the Opponent by which the Registrar forwarded to the Opponent a copy of the written argument filed by the Applicant expressly indicated that it was noted that the Opponent had not filed a written argument. Upon review of its file at the oral hearing, the Opponent indicated that it had not received such Office letter. In any event, the Opponent agreed to proceed with the oral hearing and to make its representations orally.
Onus
[8] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist [see John Labatt Ltd v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D.); Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.)].
Review of the Opponent’s evidence
[9] Mr. Fraser states in paragraph 3 of his affidavit that he purchased the Opponent, a business in Brandon, Manitoba, in 1990. He states that among the products “we service are Model 919’s” and that “since that time, [he has] serviced and repaired many Model 919’s, and [is] very familiar with them. These are referred to interchangeably as a Model 919 or simply a 919”.
[10] More particularly, Mr. Fraser states in paragraph 4 of his affidavit that “919 refers to a particular type and design of moisture meter that has been used since 1952. It is used to measure the moisture content of a representative sample of grain, usually when it is being sold. This is one of the factors affecting the price that is paid to the producer for the grain. This design has a small cylinder to measure the grain sample, and a calibration dial on the face”. Mr. Fraser then attaches as Exhibit A to his affidavit, photographs showing “the design similarity between several different brands of 919’s”.
[11] As stressed by the Applicant, Exhibit A is unclear. It consists of a page on which are merely reproduced five blurred and illegible photographs of moisture meters with the following information typed in below each photograph, namely “Dickey John 919S”, “Motomco 919”, “Labtronics 919”, “Motomco Model 919 converted to a digital display” and “Labtronics Model 919 converted to a digital display”.
[12] Mr. Fraser further states in paragraph 5 of his affidavit that “[a]lthough there are several types of testers in use, one of the most common is called an ‘elevator type’ or ‘Model 919’ or simply ‘919’. These testers have been manufactured by several companies including Labtronics, Halross, Motomco, Canadian Aviation Electronics, Nuclear Entreprises and Dickey Jones. These companies have all sold Model 919 as a type of tester and not as a brand. The farmer [sic] may not know which company made the tester but they recognize it as a ‘Model 919’”. In support of these statements, Mr. Fraser attaches to his affidavit, pictures which he took of the faces of a “Motomco Model 919” (Exhibit B), a “Labtronics Model 919” (Exhibit C) and a “Nuclear Entreprises Model 919” (Exhibit D), as well as a picture which he downloaded from the Internet of a “Halross Model 919” (Exhibit E). Mr. Fraser adds in this regard in paragraph 9 of his affidavit that “[f]rom [his] own experience, [he] know[s] this to be an accurate rending of the Halross Model 919”. These pictures show the following information:
• Exhibit B
MOTOMCO MOISTURE METER
MODEL NO. 919 SERIAL NO. E.
PATENTED 1955 CANADA U.S.A. PATENT 2693575
• Exhibit C
MOISTURE METER
MODEL 919 SERIAL NO.
PATENTED 1955 CANADA U.S. PAT. 2693575
LT
LABTRONICS
WINNIPEG CANADA
MADE IN CANADA
• Exhibit D
MOISTURE METER
MODEL NO. 919 SERIAL NO. 9140N
PATENTED 1955 CANADA U.S. PAT. 2693575
NUCLEAR ENTREPRISES LTD.
WINNIPEG CANADA MADE IN CANADA
• Exhibit E
MOISTURE METER
[the picture is unclear. It seems to indicate “MODEL NO. 919” followed by “SERIAL NO.”
It is also not possible to ascertain with certainty the name of the manufacturer which seems to be “Halross Instruments”]
Mr. Fraser then concludes this portion of his affidavit by stating “[a]s is clear from these Exhibits, Model 919 is used as a generic term for a type and design of moisture meter for testing grain”.
[13] The Applicant has objected to this latter statement of Mr. Fraser on the basis that it is a statement of opinion and is therefore inadmissible. The Applicant has also objected to the statement of Mr. Fraser reproduced above according to whom “[t]he farmer [sic] may not know which company made the tester but they recognize it as a ‘Model 919’” on the same basis. I agree with the Applicant that these two statements of Mr. Fraser constitute inadmissible opinion evidence [see Vocm Radio Newfoundland v. Chum Limited (1991), 35 C.P.R. (3d) 514].
[14] Mr. Fraser continues his affidavit by attaching as Exhibit F, a page which he downloaded from the Internet site of the Canadian Grain Commission (CGC), a federal agency, on 10/7/2007. This page states that “[t]he CGC uses the Model 919/3.5" moisture meter for official testing of grain samples. The CGC operates over 100 of these meters across Canada”. Mr. Fraser comments the page as follows “[t]here is no particular brand mentioned other than the type of grain tester, which is a Model 919. The tester can be of any brand, but they are referring to a type of tester. The tester pictured is a CAE Model 919”.
[15] As stressed by the Applicant, Exhibit F is also unclear. While Mr. Fraser states that the moisture meter pictured therein is a “CAE Model 919”, the photograph reproduced is, again, blurred and illegible.
[16] Mr. Fraser concludes his affidavit by stating that “[i]n 2002, [he] had a conversation with Dwight McCrae, the owner of Labtronics, the manufacturer of the Labtronics Model 919. [They] discussed the possibility of altering the Model 919 to feature a digital readout. Dwight asked [him] to look into it further, and sent [him] several meters to work with. After 9 months, Dwight was satisfied with the tests. [Mr. Fraser] wanted to call [his] product the 919 Digital, and [he] asked Dwight if he would mind. [Dwight] said he didn’t, and noted that ‘everyone is using the term’”. The Applicant has objected to these statements of Mr. Fraser as being inadmissible hearsay. I agree with the Applicant insofar as Mr. Fraser is reporting statements of Mr. McCrae, the truth of which cannot be tested through the cross-examination of Mr. McCrae [see Labatt Brewing Co. v. Molson Breweries, A Partnership, (1996) 68 C.P.R. (3d) 216 (F.C.T.D.)].
Grounds of opposition
[17] I will now analyze the grounds of opposition in regard to the evidence filed in the record, without necessarily respecting the order in which they were raised in the statement of opposition.
Section 30 grounds of opposition
[18] The Opponent has pleaded three grounds of opposition based on s. 30 of the Act. The material date that applies to all four grounds is the date the application was filed. All of these grounds are dismissed for the following reasons:
• s. 30(a): the Opponent has failed to meet its initial onus of proof with respect to this ground of opposition The statement of opposition simply sets out that “the application does not contain a statement in ordinary commercial terms of the specific wares in association with which the [M]ark is proposed to be used”. The Opponent submitted at the oral hearing that the use of the words “or the like” in the statement of wares that reads “moisture meters, namely meters to determine moisture content of grain or the like” is not sufficiently specific as it offers a limitless opportunity and could include in addition to grain, seeds, rice, cereals, beans, berries and any variation of a growing organism. There is no evidence from which it could be reasonably concluded that the facts alleged to support that issue exist. Furthermore, I am of the view that the nature of the Wares has been specifically defined as being “moisture meters, namely meters to determine moisture content of grain” and the indefinite term “or the like” merely indicates other similar uses which is not essential to determining the specific nature of the Wares [see Canadian Intellectual Property Office (CIPO) Wares and Services Manual, s. 2.2 Indefinite Terms];
• s. 30(b): the Opponent has failed to meet its initial onus of proof with respect to this ground of opposition. There is no evidence to support its contention that the Mark has not been used by the Applicant and its predecessors-in-title since at least as early as the date claimed in the application in connection with the Wares; and
• s. 30(i): this ground, as pleaded, does not raise a proper ground of opposition. The mere fact that the Applicant may have been aware of the existence of the Opponent’s prior application for the trade-mark QUANTUM 919 DIGITAL does not preclude it from making the statement in its application required by s. 30(i) of the Act. Even if the ground had been properly pleaded, where an Applicant has provided the statement required by s. 30(i), a s. 30(i) ground should only succeed in exceptional circumstances such as where there is evidence of bad faith on the part of the Applicant [Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.)]. There is no such evidence in the present case.
Section 16(1)(b) ground of opposition
[19] As indicated above, the Opponent has pleaded that the Applicant is not the person entitled to registration of the Mark in view of the provisions of s. 16(1)(b) “because at the date of filing of the application, it was confusing with the trade-mark QUANTUM 919 DIGITAL in respect of which an application for registration had been previously filed in Canada [namely application No. 1,243,712]”. Such ground is not properly pleaded.
[20] Section 16(1)(b) expressly provides that the material date that applies to this ground of opposition is the date of first use or making known of the applied for mark, whereas the Opponent relies on the date of filing of the applied for mark. Notwithstanding this error in the Opponent’s pleading and the fact that the Opponent did not evidence its application No. 1,243,712, I have exercised the Registrar’s discretion to check CIPO’s records to determine if the application being relied upon by the Opponent was on the register at the claimed date of first use of the Mark that is the subject of the instant proceeding and still pending at its advertisement date [see Royal Appliance Mfg. Co. v. Iona Appliances Inc. (1990), 32 C.P.R. (3d) 525 (T.M.O.B.)]. As application No. 1,243,712 was filed on January 17, 2005, that is well after the Applicant’s claimed date of first use of 1952, it cannot support a ground of opposition pursuant to the provisions of s. 16(1)(b) of the Act. Accordingly, the s. 16(1)(b) ground of opposition is dismissed.
[21] At the oral hearing, the Opponent attempted to rely on the fact that application No. 1,243,712 had matured to registration on October 19, 2009. However, as the Opponent did not amend its pleading so as to add a ground of opposition based on s. 12(1)(d) of the Act, it cannot be taken into consideration.
Non-distinctiveness ground of opposition
[22] The Opponent has pleaded that “[t]he [Mark] is not distinctive of the Applicant in view of the provisions of [s.] 2 of the [Act] in that the [Mark] does not actually distinguish the [Wares] from the wares or services of others, nor is it adapted so to distinguish them. More particularly, MODEL 919 is a generic term for grain moisture testers.”
[23] The legal onus is on the Applicant to show that its Mark is adapted to distinguish or actually distinguishes its Wares from those of others throughout Canada [see Muffin Houses Inc. v. The Muffin House Bakery Ltd. (1985), 4 C.P.R. (3d) 272 (T.M.O.B.)]. However, as indicated above, there is an initial evidential burden on the Opponent to establish the facts relied upon in support of the ground of non-distinctiveness. In deciding this issue, I am guided by the comments of Mr. Justice Addy, in Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R.(2d) 44 at 58 (F.C.T.D.):
On the issue of lack of distinctiveness of a mark, although it must be shown that the rival or opposing mark must be known to some extent at least, it is not necessary to show that it is well known […]. It is sufficient to establish that the other mark has become known sufficiently to negate the distinctiveness of the mark under attack.
[24] Generally, the material date for assessing distinctiveness is the date of filing of the opposition, in this case October 3, 2006 [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D)].
[25] In Clarco Communications Ltd. v. Sassy Publishers Inc. (1994), 54 C.P.R. (3d) 418 (F.C.T.D.), Mr. Justice Denault stated at 428:
While distinctiveness is quite often determined as part of an evaluation of whether the proposed trade mark is confusing with another trade mark within the meaning of s. 6 of the Act, it is possible to refuse an application for registration on the basis of non-distinctiveness independent of the issue of confusion, provided the ground is raised in opposition. The quality of distinctiveness is a fundamental and essential requirement of a trade mark and the ground of lack of distinctiveness may be raised in opposition by any person and may be based on a failure to distinguish or to adapt to distinguish the proposed trade mark from the wares of any others.
[26] As per my review of the evidence above, the Opponent submits that the Mark is a generic term for grain moisture testers as it has been commonly adopted by third parties to refer to a particular type and design of moisture meter. This brings me to further address the Opponent’s evidence on this point in light of the submissions made by the Applicant in its written argument and at the oral hearing.
[27] The Opponent’s evidence is in many respects unclear. Mr. Fraser’s affidavit merely introduces into evidence pictures of a few moisture meters arguably manufactured by third parties. Except for the excerpt from the Internet site of the CGC, which postdates the material date, no timeline is provided. It is not possible to ascertain from the evidence as a whole when these pictures were taken or downloaded, when the moisture meters depicted therein were sold in Canada or whether they were in use in Canada as of the filing date of the opposition. All that can be inferred from Mr. Fraser’s affidavit is that he would have done some repairs or testing on some of these testers between the years 1990, when he purchased the Opponent, and 2007, when he swore his affidavit.
[28] While the Applicant elected not to proceed with the cross-examination of Mr. Fraser on his affidavit so that his testimony is unchallenged, this does not cure the lacunas discussed above. That being so, I must conclude that the Opponent has failed to discharge the initial evidential burden on it to show generic use of the Mark as of the material date. Accordingly, the non-distinctiveness ground of opposition is dismissed.
[29] In closing, I note that the moisture meters pictured in many of the exhibits discussed above appear to share the same Canadian and American patents and have many significant design features in common. As such, it is unclear whether they ultimately belong in fact to the Applicant, as a result of changes of title (assignments) or amalgamations made over the years since the issuance of the Canadian patent in 1955. The pictures of the alleged “Labtronics Model 919”, “Nuclear Entreprises Model 919”, “Halross Model 919” and “CAE Model 919” moisture meters filed as Exhibits C to F respectively, tend to support such scenario as they may likely have been manufactured by the Applicant’s predecessors-in-title, Halross Instruments Corporation (1976) Limited, Halross Instruments Corporation Limited, CAE Inc. (formerly Canadian Aviation Electronics Ltd. and formerly CAE Industries) and Nuclear Entreprises Ltd.
Disposition
[30] In view of the foregoing and pursuant to the authority delegated to me under s. 63(3) of the Act, I reject the opposition pursuant to s. 38(8) of the Act.
______________________________
Annie Robitaille
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office