IN THE MATTER OF AN OPPOSITION by Koch (Cyprus) Limited to Application No. 1201893 for the trade-mark PETROMESH DEMISTER filed by Petromesh Inc.___________
I The Proceedings
[1] On December 18, 2003 Petromesh Inc. (the “Applicant”) filed an application to register the trade-mark PETROMESH DEMISTER (the “Mark”) based on proposed use in Canada in association with:
Knitted mesh filter that removes liquid mist from various gas process (the “Wares”)
[2] The Applicant disclaimed the right to the exclusive use of the word “demister” apart from the trade-mark as a whole.
[3] The application was advertised on August 25, 2004 in the Trade-marks Journal for opposition purposes. Koch (Cyprus) Limited (the “Opponent”) filed a statement of opposition on January 25, 2005 that was forwarded by the Registrar on February 17, 2005 to the Applicant.
[4] The Applicant filed on March 10, 2005 a counter statement denying essentially all grounds of opposition pleaded.
[5] The Opponent filed the affidavits of Paul S. Fabian, Dan Levine and Richard Robertson as well as a certified copy of registration TMA252015 for the trade-mark DEMISTER while the Applicant filed the affidavits of Patrick Tetlock and Rod Bratton. The Opponent filed as reply evidence a second affidavit of Paul S. Fabian.
[6] Only the Applicant filed written arguments and only the Opponent was represented at the oral hearing.
II The Grounds of Opposition
[7] The statement of opposition contains the following grounds of opposition:
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 Mark is proposed to be used. The statement of wares is unclear and ambiguous and does not correctly describe the wares in association with which the Mark 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 use the Mark in Canada in association with the Wares given the facts set out herein;
3. The Mark is not registrable in view of s. 12(1)(d) of the Act because it is confusing with the Opponent’s registered trade-mark DEMISTER, certificate of registration TMA252015;
4. The Applicant is not entitled to registration of the Mark in view of s. 16(3)(a) of the Act because at the date of filing of the application the Mark was confusing with the Opponent’s trade-mark DEMISTER that had been previously used by the Opponent;
5. The Applicant’s Mark is not distinctive and does not actually distinguish nor is adapted to distinguish the Wares from the wares of the Opponent in light of, amongst other things, the Opponent’s trade-mark previously used in Canada.
[8] At the oral hearing the Opponent informed the Registrar that it was withdrawing the first ground of opposition.
III General Principles Applicable to all Grounds of Opposition
[9] The Applicant has the legal onus to show that its application complies with the provisions of the Act, but there is however 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. Once this initial burden is met, the Applicant still has to prove, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark [see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330; John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R. (3d) 293 and Wrangler Apparel Corp. v. The Timberland Company, [2005] F.C. 722].
IV The Relevant Dates
[10] All grounds of opposition are based on the allegation that the Mark is confusing with the Opponent’s trade-mark DEMISTER. The difference in the material dates makes some of the evidence filed inadmissible as it relates to facts subsequent to the relevant date associated to a particular ground of opposition. Those relevant dates are:
➢ The registrability of the Mark under s. 12(1)(d) of the Act: The date of the Registrar’s decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at 424 (F.C.A)];
➢ Entitlement to the registration of the Mark, where the application is based on proposed use: The filing date of the application (December 18, 2003) [see s. 16(3) of the Act];
➢ Compliance to the requirements of s. 30(i) of the Act: The filing date of the application (December 18, 2003) [see John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R. (3d) 293 and Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R. (3d) 469];
➢ Distinctiveness of the Mark: The filing date of the statement of opposition (January 25, 2005) is generally accepted to be the relevant date [see Andres Wines Ltd. and E & J Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.) and Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)].
V Registrablility of the Mark
[11] The Opponent is alleging that the Mark is not registrable pursuant to s. 12(1)(d) of the Act as it is confusing with its registered trade-mark DEMISTER. The Opponent filed a certified copy of registrationTMA252015. Therefore it met its initial onus with respect to this particular ground of opposition.
[12] I have to determine, on a balance of probabilities, if the Mark is likely to cause confusion with the Opponent’s trade-mark DEMISTER. The test to determine this issue is set out in s. 6(2) of the Act and I must take into consideration all the relevant surrounding circumstances, including those listed in s. 6(5): the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; the length of time the trade-marks or trade-names have been in use; the nature of the wares, services, or business; the nature of the trade; and the degree of resemblance between the trade-marks or trade-names in appearance, or sound or in the ideas suggested by them. Those criteria are not exhaustive and it is not necessary to give each one of them equal weight [see Clorox Co. v. Sears Canada Inc. (1992), 41 C.P.R. (3d) 483 (F.C.T.D.) and Gainers Inc. v. Marchildon (1996), 66 C.P.R. (3d) 308 (F.C.T.D.)]. I also refer to the decisions of the Supreme Court of Canada in Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 and Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée et al. (2006), 49 C.P.R. (4th) 401 where Mr. Justice Binnie commented on the assessment of the criteria enumerated under s. 6(5) of the Act to determine if there is a likelihood of confusion between two trade-marks.
[13] The Mark is composed of at least one coined word: “petromesh”. That word is inherently distinctive even though it appears to be the combination of two English words : “petroleum” and “mesh”. I shall discuss later on the issue raised by the Applicant that “demister” is a descriptive word or has become so to identify a type of product in the industry. Obviously if DEMISTER is considered a weak trade-mark, it will have an impact on the scope of protection afforded to it.
[14] Paul S. Fabian is Business Director, Mesh Products, of Koch-Otto York Separations Technology, a business group of Koch-Glitsch, LP. He states that the Opponent is a holding company that holds title to certain foreign intangible properties for Koch Industries, Inc. or for subsidiaries of that company. He states that the Mark has been licensed for use to Koch-Otto York Separations Technology, a business group of Koch-Glitsch, LP. Koch-Otto York Separators Technologies carries on business in Canada under the trade-names Koch-Otto York and Otto York. Mr. Fabian provides no information on the corporate structure of Koch-Glitsch, LP. A mere allegation of the existence of a license agreement is not sufficient to meet the provisions of s. 50 of the Act whenever an opponent is relying on the use of its trade-mark by its licensee(s) [see MCI Communications Corp. v. MCI Multinet Communications Inc. (1995), 61 C.P.R. (3d) 245].
[15] He states that the trade-mark DEMISTER is used on “knitted metallic and plastic wire mesh entrainment separators, commonly called mist eliminator pads”. The Opponent’s trade-mark DEMISTER is associated with its products through attachment of decals or labels, a sample having been filed. He states that the Opponent’s predecessor in title, Otto H. York Company, Inc. first used DEMISTER in Canada in 1952. He filed a brochure distributed by Otto H. York Company, Inc. describing the Opponent’s mist eliminators. However we have no date as to when such brochure was first distributed in Canada and to what extent. Otto H. York Company, Inc. has since become a “Koch division”. Although some information is provided on the Opponent’s corporate structure and it subsidiaries through Mr. Fabian as described above, we have no explanation as to what is meant by “Koch division”. It is not a defined term in Mr. Fabian’s affidavit. It will become obvious from a reading of my decision that such omission had no effect on it.
[16] He asserts that the yearly Canadian sales of products bearing the trade-mark DEMISTER had been between $1.5 to $2 million over the last ten years. He states that at least one thousand units of products bearing the trade-mark DEMISTER are sold each year in Canada. He filed invoices issued in 1999 by Koch-Otto York Separations Technology to two of its Canadian distributors: J.F. Comer Inc. and Warco Equipment Co. Ltd.
[17] Richard Robertson is the President of Micron Filtration, Inc. (“Micron”). He states that Micron began on April 1, 2001 selling mist elimination equipment of Koch-Otto York Separations Technology, the Opponent’s licensee. Micron’s primary customers are from the oil and gas industry but it also sells products to clients in the pulp and paper industry and to other markets in British Columbia, Alberta, Saskatchewan and Manitoba. Micron’s annual sales of products bearing the trade-mark DEMISTER are $1.5 million.
[18] Mr. Dan Levine is the president of Warco Process Technologies Incorporated (“Warco”) and has held this position for approximately 15 years. Warco is a distributor for Koch-Otto York Separations Technology. He filed extracts of his company’s website that includes information on products bearing the trade-mark DEMISTER. He states that Warco has sold products bearing the trade-mark DEMISTER for Otto H. York Company in Canada over the last 40 years.
[19] The Applicant has not filed any evidence of use of the Mark.
[20] A good portion of the Applicant’s evidence aims at establishing that the Opponent’s trade-mark is descriptive and used in the trade to identify any device that removes dispersed water droplets or mist from gaseous emission. An opposition proceeding is not the appropriate forum to challenge the validity of an opponent’s registered trade-mark [see Magill v. Taco Bell, Corp. (1990), 31 C.P.R. (3d) 221]. However, any admissible evidence can establish that the Opponent’s trade-mark is a weak trade-mark because of its use in the industry to describe the Wares. If that were the case then the addition of a coined word such as “Petromesh” might be sufficient to distinguish the Mark from the Opponent’s trade-mark DEMISTER.
[21] Patrick Tetlock was employed during a period of two years by RNG Controls (“RNG”), which dissolved in 2002. He was involved in products sales focusing on orders in Calgary for products bearing the trade-mark DIVMESH, including mist eliminators. RNG was the sole company responsible for promotion and sale of products in association with the trade-mark DIVMESH in Alberta. He filed as exhibit A to his affidavit a copy of a brochure used to advertise the sale of DIVMESH products entitled “LOOKING FOR A DEMISTER?”. It contains the following sentence: “We have experienced personnel from our manufacturing and sales division who are available for inspection of existing demister pads….”. This brochure was distributed to prospective and current clients in Alberta and British Columbia. No specific date was provided, but I have to assume that it was distributed at least as early as 2002, since RNG was dissolved during that year.
[22] Mr. Bratton is the Applicant’s President. The Applicant is located in Alberta. I am not considering the content of paragraphs 3 and 4 of his affidavit as they contain Mr. Bratton’s opinion on the issue of descriptiveness of the Opponent’s trade-mark DEMISTER and that the addition of the word “Petromesh” to “demister” makes the Mark distinctive. Those are amongst the issues to be decided by the Registrar. Paragraphs 8, 9, 10, 12, 13, 14 and 15 constitute inadmissible hearsay evidence as they relate to third parties: Petro Equipment Sales Ltd., Divmesh Separators Ltd. (“Divmesh”) and RNG. There is no evidence that Mr. Bratton was employed or has been an officer or director of any of those companies. I should mention that Mr. Fabian’s second affidavit, filed as reply evidence, deals mainly with the issue of ownership of third parties mentioned in the Applicant’s evidence. I do not consider the ownership of Divmesh or RNG Controls to be a relevant factor in this opposition.
[23] Exhibit A to Mr. Bratton’s affidavit is also inadmissible hearsay evidence as it is a brochure originating from Divmesh that was circulated in the trade. I should add that the brochure is identical to the one annexed to Mr. Tetlock’s affidavit as exhibit A, save for the absence of a sticker to hide and replace the reference to Petro Equipment Sales Ltd. by RNG.
[24] Paragraph 17 of Mr. Bratton’s affidavit as well as the production of a sample tag used by Divmesh constitutes inadmissible hearsay evidence. As for paragraph 18, it is a conclusion in law on the use of the Opponent’s trade-mark DEMISTER and as such it shall be ignored.
[25] I will now describe the other exhibits annexed to his affidavit. Exhibit C is a brochure of a third party downloaded off the Internet on October 22, 2005. We have no information as to whether it was ever circulated in Canada and if so during which period of time, including prior to the filing date of this application. I shall give very little weight to this document.
[26] Exhibit D is page 3 of 11 of a technical article, as described by Mr. Bratton in paragraph 20 of his affidavit, containing a definition of the word “demister”. We have no other information on the origin of this document as well as the date when it was first published and if it was ever distributed in Canada. It was downloaded off the Internet on October 18, 2005, subsequently to the filing date of the application. Again, I am giving very little probative value to this document.
[27] Exhibit E to Mr. Bratton’s affidavit is a definition of the term “demister” found in the IUPAC (International Union of Pure and Applied Chemistry) nomenclature book - Compendium of Chemical, 2nd Edition, 1997. It defines “demister” as:
Apparatus made of wire mesh or glass fibre which is used to help remove acid mist as in the manufacture of sulphuric acid. Demisters are also components of wet arrestment plants.
[28] Exhibit F is a 5-page document downloaded off the Internet explaining what IUPAC is all about. It is mentioned that IUPAC was formed in 1919 and has long been recognized as the world’s authority on chemical nomenclature, terminology, standardized methods for measurement, atomic weights and many other critically evaluated data. Therefore, I consider exhibit E to be a relevant extract of a technical book published prior to the filing date of the application.
[29] To support his contention that the word “demister” is commonly used in technical papers in Canada to describe a process and not a product manufactured by one company, Mr. Bratton filed as exhibit G to his affidavit the cover page and pages 34, 35 and 36 of a document entitled “Technologies and other Options for Reducing Marine Vessel Emissions in the Georgia Basin” downloaded off the Internet on October 24, 2005. It bears a date of May 26, 2003 and has the word “draft” on the cover page. We have no evidence that a final version has ever been published and, if that was the case, to what extent it was circulated in Canada and if there were any references to the term “demister” in its final version.
[30] Exhibit H is a document entitled “Workplace Health and Safety Bulletin”, published by the Alberta Human Resources and Employment Department. It was issued in June 2004 and contains facts scenario wherein the term “demister” is used as a descriptive word. The Opponent takes the position that the document does not demonstrate use of the word “demister” in the trade as it is a governmental document. However that document is aimed to inform people in the trade and the term “demister” is used in a descriptive form.
[31] Exhibit I is an article published in June 2002 by the National Centre for Upgrading Technology located in Devon, Alberta. Again the term “demister” is used as a descriptive word.
[32] Exhibit J is a copy of registration TMA554023 for the trade-mark MISTELIM filed on February 28, 2000 and registered on November 20, 2001 wherein the wares are described as “Demister for the removal ….”.
[33] Exhibits K, L and M are copies of Canadian patent applications. The first one is 2392745 entitled “Demister” with a Canadian National Entry date of May 28, 2002. The second one is 2027048 entitled “Demister Candle Assembly” and was laid open to the public on April 6, 1992. The last one is 1038778 entitled “Demister Assembly for Removing Liquids from Gases”. It was issued on September 19, 1978.
[34] Exhibit N is described by Mr. Bratton as “a print out of the search results on “demister” on the Canadian Patent Database”. The three Canadian patents mentioned in the previous paragraph are part of a list of 50 patents. We do not have any information on how the search was conducted and by whom. Furthermore, we do not have a full version of each of the patent listed. Therefore, I am not giving any weight to that portion of the Applicant’s evidence. I may add that exhibit O is a similar search report using the United States Patent Database. For the same reasons explained previously, I am also ignoring the content of that document.
[35] Exhibit P is a print out of an extract from the United States Patent and Trademark Office’s website of a cancelled trade-mark registration wherein the description of the wares includes the term “demister”, used in a descriptive form. I do not consider this document relevant for the purpose of assessing the degree of distinctiveness of the Opponent’s trade-mark in Canada.
[36] Exhibit Q is an extract of a third party’s website that appears to be located in the United Kingdom. This document constitutes inadmissible hearsay evidence. As for Exhibit R it is a print out of the search results using an Internet search engine. We have no information as to how the search was conducted and there are no details provided on the list of results. I shall disregard this portion of the evidence as well.
[37] Finally, exhibit S is a one-page document representing the first page of the search results using the Internet search tool Google. This search was performed after the filing date of the present application and of the statement of opposition. It could therefore only be relevant in so far as the registrability issue of the Mark is concerned. Even for that ground of opposition, in the absence of the full text corresponding to each hit obtained, it is impossible to speculate on the manner in which the term “demister” is used.
[38] From all this evidence I consider to be relevant exhibits A, E, F, H, I, J, K, L and M. Some of these documents might not be pertinent for the assessment of the grounds of opposition of entitlement, conformity and distinctiveness, as they might have been published after the relevant date associated with these grounds of opposition. Therefore I shall concentrate on the best-case scenario for the Applicant, namely registrability as it has the latest relevant date, the date of my decision, and thus all of these exhibits are admissible evidence under that ground of opposition.
[39] The exhibits listed in the preceding paragraph together with exhibit A to Mr. Tetlock’s affidavit enable me to conclude that the term “demister” is used in the trade in Canada to identify any product that serves as a filter to remove a liquid mist from a gas process. Without concluding that the Opponent’s trade-mark has lost its distinctiveness, it remains that it has become a weak trade-mark and should not have a wide ambit of protection [see Canada Games Co. Ltd. v. Llumar Star Kites Inc. (1994), 55 C.P.R. (3d) 250].
[40] As for the extent to which the trade-marks have become known, there is no evidence of use of the Mark. As for the Opponent’s trade-mark DEMISTER in the absence of evidence of quality control provisions over such use by its licensee, the Opponent cannot benefit from the provisions of s. 50 of the Act. Therefore any use of its trade-mark by Koch-Otto York Separations Technology and its distributors cannot accrue to the Opponent. Overall, the first criterion of s. 6(5) does favour the Applicant, as the Mark is inherently distinctive.
[41] The second criterion of s. 6(5) does not favour any of the parties. On one hand the Applicant did not file any evidence of use of the Mark while any evidence of use of the trade-mark DEMISTER cannot accrue to the Opponent’s benefit in the absence of evidence of the existence of quality control provisions in the license agreement between the Opponent and Koch-Otto Separations Technology.
[42] Concerning the nature of the parties’ respective wares and their channels of trade, the evidence can be summarized as follow: Mr. Fabian explains that the products bearing the Opponent’s trade-mark DEMISTER are used to eliminate liquid mist from gas streams and to improve quality, plant capacity and for air pollution control in refineries, chemical plants, paper mills, fertilizer manufacturers and oil and natural gas producers. Its products are distributed in Canada through Micron, J.F. Corner and Warco.
[43] It becomes obvious from the description of the Wares that the parties’ respective wares are in the same general class of wares. Mr. Bratton asserts that the Applicant’s market is located mainly in Alberta as 75% of the total available market in Canada is located in that province. The channels of trade appear to be similar. In any event the burden is on the Applicant to show otherwise. This factor favours the Opponent.
[44] The degree of resemblance is the most important factor when assessing the likelihood of confusion between two trade-marks. Mr. Justice Cattanach in Beverley Bedding & Upholstery Co. v. Regal Bedding & Upholstering Ltd. (1980), 47 C.P.R. (2d) 145 at par. 28 defined the issue in the following terms:
Realistically appraised it is the degree of resemblance between trade marks in appearance, sound or in ideas suggested by them that is the most crucial factor, in most instances, and is the dominant factor and other factors play a subservient role in the over-all surrounding circumstances.
[45] Moreover the first component of a trade-mark has often been characterized as the most important portion of a trade-mark [see Pernod Ricard v. Molson Breweries (1992), 44 C.P.R. (3d) 359].
[46] The first portion of the Mark is a distinctive element. The Opponent tried to argue at the oral hearing that the word “Petromesh” is similar to another of its trade-marks, namely “YORKMESH” and that such trade-mark is found in the Opponent’s brochure in close proximity with its trade-mark DEMISTER. Therefore there would exist a combination “YORKMESH DEMISTER”. I cannot subscribe to such argument. Firstly, the Opponent did not state in its statement of opposition that it intended to rely on its trade-mark YORKMESH. Secondly, there is no evidence in the record that YORKMESH DEMISTER is used by the Opponent as a trade-mark in association with wares similar to those covered by this application. Finally, there is no evidence that the public would associate the combination YORKMESH DEMISTER to the Opponent.
[47] The only resemblance in the parties’ respective trade-marks both phonetically and visually is the presence of DEMISTER. However as demonstrated above, such word is used in the trade as a descriptive term and thus renders the Opponent’s trade-mark weak. In fact the Applicant included in its application a disclaimer for the exclusive use of the word “demister” apart from the trade-mark as a whole.
[48] After reviewing the relevant surrounding circumstances, I conclude that the Applicant has met its burden to prove on a balance of probabilities that the Mark is not likely to cause confusion with the Opponent’s trade-mark DEMISTER. I come to this conclusion on the basis that the Opponent’s trade-mark is a weak trade-mark, and the addition of a distinctive element, PETROMESH, the first component of the Mark, negates any likelihood of confusion with the Opponent’s trade-mark. I therefore dismiss the third ground of opposition.
VI Distinctiveness
[49] In order to meet its initial onus the Opponent had to prove use of its trade-mark DFEMISTER or that it was known in Canada prior to the relevant date. As explained previously, any evidence of use of the trade-mark DEMISTER by Koch-Otto Separations Technology cannot ensue to the Opponent. Therefore the Opponent has not met its initial onus.
[50] Should I be wrong in concluding that the opponent has not met its initial onus, my conclusion reach under registrability would be equally applicable to distinctiveness as most of the documents establishing some use of “demister” in a descriptive form by the trade were published prior to the relevant date, namely January 25, 2005. Consequently, I also dismiss the fifth ground of opposition.
VII Entitlement and conformity
[51] Again the Opponent has not met its initial onus of proof. Should I be wrong on this conclusion, would my conclusion reach under registrability be applicable with respect to the grounds of opposition based on s. 30(i) and 16(3) in view of the fact that the relevant date is December 18, 2003? This earlier date would only eliminate exhibit H to Mr. Tetlock’s affidavit from the list of relevant documents mentioned in paragraph 38 above. Therefore those grounds of opposition are also dismissed for the same reasons as those described under the analysis of the registrability of the Mark.
VI Conclusion
[52] Having been delegated authority by the Registrar of Trade-marks by virtue of s. 63(3) of the Act, I reject the opposition pursuant to s. 38(8) of the Act
DATED IN BOUCHERVILLE, QUEBEC, THIS 14th DAY OF JULY 2009.