IN THE MATTER OF AN OPPOSITION by Neil P. Kelly, carrying on business as Creative Edge Communications to application No. 834,984 for the trade-mark CREATIVE EDGE COMMUNICATIONS filed by James M. Alexander and now standing in the name of James M. Alexander, trading as Creative Edge Communications
On January 31, 1997, the applicant, James M. Alexander, filed an application to register the trade-mark CREATIVE EDGE COMMUNICATIONS based on use since January 29, 1987, in Canada in association with the following services:
(1) Film and video production services including writing, producing and directing services. Communication services including consulting, research, writing and editing services.
The applicant filed a revised application on February 11, 1997, in which the applicant is identified as James M. Alexander, sole proprietor of Creative Edge Communications. A further revised application was filed February 20, 1997, identifying the applicant as James M. Alexander, trading as Creative Edge Communications, Inc. A final revised application was filed February 17, 1999, in which the applicant is identified as James M. Alexander, trading as Creative Edge Communications.
The application was advertised for opposition purposes on March 26, 1997.
The opponent, Neil P. Kelly, carrying on business as Creative Edge Communications, filed a statement of opposition on September 17, 1997. The first ground of opposition is that the application does not comply with the requirements of s.30(b) of the Trade-Marks Act, R.S.C. 1985, c. T-13 (hereinafter “the Act”), in that the applicant did not use its trade-mark on or before the date claimed in the application, and has never used the trade-mark at all. As its second ground of opposition, the opponent maintains that the application does not comply with the requirements of s.30(i) in that the application was not validly filed before the filing of the opponent’s application no. 807,934, for the trade-mark CREATIVE EDGE COMMUNICATIONS, which was filed March 25, 1996, and based upon use since July 20, 1995, in association with creative writing, editing, translation, speech writing and communications consulting. It is therefore the opponent’s submission that the applicant is not entitled to registration over the opponent’s application. The third ground of opposition is that the applied for trade-mark is not distinctive in view of the facts alleged by the opponent and also since it is not adapted to distinguish the services in association with which it is used by the applicant from the wares or services of others, including the wares [sic] of the opponent.
The applicant filed its counter statement on October 27, 1997, in which it generally denied the allegations asserted by the opponent in its statement of opposition. As its evidence, the opponent submitted the affidavit of Neil P. Kelly. Two affidavits of James M. Alexander were submitted as the applicant’s evidence. Mr. Alexander was cross-examined on his first affidavit and the cross-examination transcript, along with exhibits and replies to undertakings, forms part of the record in these proceedings. Both parties filed a written argument and an oral hearing was conducted at which both parties were represented.
With respect to the first two grounds, the legal burden is on the applicant to show that is application complies with Section 30 of the Act. This includes both the question as to whether the application formally complies with the requirements of Section 30 and the question as to whether or not the statements contained in the application are correct. However, to the extent that the opponent relies on allegations of fact in support of its Section 30 grounds, there is an initial evidential burden on the opponent to prove those allegations (see Joseph E. Seagram & Sons Ltd. v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325 at 329-330; and John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R. (3d) 293). To meet the evidential burden upon it in relation to a particular issue, the opponent must adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support that issue exist (see John Labatt Limited v. The Molson Companies Limited, 30 C.P.R. (3d) 293 at 298).
Considering initially the s.30(b) ground, there is, as noted above, an initial evidential burden on the opponent to establish the facts relied upon by it in support of this ground. In this regard, the evidential burden on the opponent respecting the issue of the applicant’s non-compliance with s.30(b) is a light one (see Tune Masters v. Mr. P.’s Mastertune, 10 C.P.R. (3d) 84 at 89). The opponent may rely on the applicant’s evidence to meet its evidential burden (see Labatt Brewing Company Limited v. Molson Breweries, A Partnership, 68 C.P.R. (3d) 216 at 230) in relation to this ground although if it does so, it should show that the applicant’s evidence is ‘clearly’ inconsistent with the applicant’s claims set forth in its application. Finally, s.30(b) also requires that there be continuous use of the mark since the date claimed (see Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R. (3d) 469 at 475).
Under this ground of opposition, the opponent relies in part on the affidavit of Neil P. Kelly who identifies himself as a writer of ministerial and senior management speeches, and also the owner of a co-pending application for the trade-mark CREATIVE EDGE COMMUNICATIONS. In his affidavit, Mr. Kelly describes the investigations made on his own behalf to determine if the words CREATIVE EDGE COMMUNICATIONS were available for registration in association with his services. The results of his investigations failed to reveal any listing for Creative Edge Communications in various local telephone directories, publications or in a corporation name search ordered through CCNC Corporate Services Ltd., either before or after the claimed date of first use.
The opponent also made several submissions with respect to the applicant’s own evidence to establish that the mark has not been used since the claimed date of first use (i.e. January 29, 1987). First, the opponent submits that the applicant’s evidence does not show performance of the applicant’s services as of the date of first use. In this regard, the opponent points to the fact that the only invoice submitted by the applicant regarding services performed is dated March, 1987, and is with respect to services performed in February, 1987 (see Exhibit E to the first Alexander affidavit). Second, the opponent submits that the applicant’s evidence does not show the use or display of the mark in advertising as of the date of first use. In this regard, the opponent points to the following testimony of Mr. Alexander on cross-examination:
Q. You use the terminology “continuously active” in paragraph 3 of your affidavit as describing your activities. You say: “My business, Creative Edge Communications, has been continuously active since January 29, 1987.” Do you see that there?
A. Yes.
Q. Is it fair to say that your understanding of what “continuously active” would mean would include your decision to call yourself Creative Edge Communications and to advertise and promote your services under that trade-name?
A. As I saw fit.
Q. But at that point once you had the business name registration, that’s when you felt free to advertise and promote your services?
A. I felt free, but not necessarily would I have to use that right to advertise.
Q. So, at that point once you had the business name, that is the point when you did then begin to actively advertise your services under the trade-name Creative Edge Communications, is it not?
A. Could you define what you mean by “advertise”?
Q. Seek work.
A. Yes, at that point, I was seeking work through word of mouth, phone calls and so forth.
From the above testimony, the opponent submits that the applicant’s evidence suggests that the only thing that happened on the claimed date of first use was the business name registration. Although the applicant also appeared to have started to seek work on that date, there is no indication that the mark was used or displayed in the advertising of the applicant’s services in the manner prescribed by s.4(2) of the Act as of that date. The opponent further relies on the fact that the applicant did not commence use of his company letterhead and business cards until June of 1987 (see Alexander cross-examination transcript, Exhibit 1 and q. 23-24). Third, the opponent submits that the applicant’s evidence with respect to the exact date when its commercial bank account in association with the trade-name was opened is contradictory (Alexander Affidavit, para. 6; Alexander Cross-Examination transcript, p.28-30 and Responses to Undertakings, Answer #3). Finally, the opponent submits that the second affidavit of Mr. Alexander (as well as the affidavit of Steven Leach) show that the applicant did not in fact use its mark in association with writing a speech for Minister Lloyd Axworthy as the contract for speech writing was between Corvideocom and the Department of Foreign Affairs and the applicant’s mark did not appear anywhere on the CD-ROM produced as Exhibit A to Mr. Alexander’s second affidavit.
The applicant claims that it has used the applied for mark since January 29, 1987. In support of this claim, the applicant, in its written argument, relies on the following evidence:
a) Mr. Alexander’s sworn statement that his business CEC has been continuously active in Ottawa since January 29, 1987 and has been the sole means of support for himself, his wife and three children since that date. (Alexander Affidavit, para. 3)
b) Mr. Alexander received a business name registration for the trade name CEC from the Ontario Ministry of Consumer and Commercial Relations, dated January 29, 1987 and subsequent renewals dated July 27, 1992, and July 3, 1997. (Alexander Affidavit, Exhibit A)
c) At the point of registration of the business name on January 29, 1987, the applicant was already “seeking work through word of mouth and phone calls and so forth” (Alexander cross-examination transcript, p. 24, q. 120)
d) Within a short period of time after January 29, 1987, the applicant opened a bank account and produced an invoice for services performed in February of 1987.
The applicant’s evidence also shows that the applicant has promoted its services in a number of publications, including: The 1988-1989 Eastern Canada Film and Video Guide; The Ottawa Independent Writers Directory (1991-92 and 1994 editions); a directory published by the Ottawa Independent Writers Association and distributed to members and corporate and government clients; the Ottawa Region Film and Television Production Guide (1992-93 and 1998-99 editions); and the 1998-1999 National Writing and Editing Services Guide. Attached as Exhibit F to Mr. Alexander’s first affidavit is a letter from Alan White, President of Corvideocom stating that on a regular basis since 1987, the affiant has provided his company with many services including writing, directing and producing, and in particular, the writing of a speech for one of Mr. White’s clients, a federal Minister.
As stated previously, the issue is whether the applicant’s evidence is clearly inconsistent with its claimed date of first use (i.e. January 29, 1987). Section 4(2) of the Act provides as
follows:
“A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services”.
This section has been interpreted to also mean that as long as the services are available to be performed in Canada, that is sufficient to meet the requirements of s.4(2), so long as the mark has been used or displayed in the advertising of services (see Wenward (Canada) Ltd. v. Dynaturf Co., 28 C.P.R. (2d) 20).
With respect to the opponent’s evidence, I am not satisfied that the evidence of Mr. Leach is sufficient to show that the applicant had not continuously used its mark since the date claimed. In this regard, the absence of the applicant’s business name in several local telephone directories, publications and in a corporate name search is not in itself sufficient to cast doubts on the applicant’s claimed date of use of its mark. The applicant has produced a registration certificate for its business name from the Ontario Ministry of Consumer and Commercial Relations and has also produced copies from several other local directories dated between 1988 and 1999 in which its trade-mark appeared.
With respect to the opponent’s arguments about the applicant’s evidence, I agree with the opponent that the applicant’s evidence as a whole is clearly inconsistent with its claimed date of first use. Although the applicant’s services may have been available to be performed as of the day the applicant’s business name was registered (which is also the claimed date of first use), the applicant’s evidence suggests that any advertising of the applicant’s mark with the applicant’s services did not occur until a later date. In this regard, even if the applicant had identified his business name when promoting his business through word of mouth and phone calls, this would not have been sufficient to show use under s.4(2) of the Act as the mark would not necessarily have been displayed in this type of promotion of the applicant’s services. Further, the fact that the applicant did not use any letterhead before June 19, 1987 (see Alexander cross-examination transcript, p.6, q.24), and did not order business cards until June of 1987 (see Alexander cross-examination transcript, Exhibit 1), precludes me from making the assumption that the mark was used or displayed in the advertising of the applicant’s services in some other manner as of the claimed date of first use. I therefore consider that the applicant’s evidence as a whole is sufficient to cast doubts on the applicant’s claimed date of first use. This ground of opposition is therefore successful.
With respect to the remaining grounds of opposition, from my review of the material, I would not likely have found for the opponent on either of these grounds as the second ground was not properly pleaded and the opponent did not meet its evidential burden under the third ground.
Accordingly, and with the authority delegated to me under s. 63(3) of the Act, I refuse the applicant’s application pursuant to s.38(8) of the Act .
DATED AT HULL, QUEBEC, THIS 28th DAY OF May, 2001.
C. R. Folz
Member,
Trade-Marks Opposition Board