IN THE MATTER OF AN OPPOSITION by Dr. Bruce Ball to application No. 716,759 for the trade-mark CRANE PRO SERVICES & Design filed by Kone, Inc. (now Konecranes Canada Inc.) _PRIVATE __
On November 12, 1992, the applicant, Kone, Inc., filed an application to register the trade-mark CRANE PRO SERVICES & Design for "installation, inspection, maintenance, repair, upgrading and modernization services in the field of cranes and hoists" based on use since at least as early as August 1992. The application was advertised for opposition purposes on January 26, 1994.
The opponent, Dr. Bruce Ball, filed a statement of opposition on August 30, 1994, a copy of which was forwarded to the applicant on November 9, 1994. The grounds of opposition are reproduced below:
The applicant filed and served a counterstatement. The opponent filed as its evidence the affidavit of Bruce Ball. Mr. Ball was cross-examined on his affidavit and the transcript of cross-examination forms part of the opposition record. The applicant submitted as its evidence the affidavits of MaryAnne Avery and Valerie Miller, as well as two affidavits of Keith H. King. As reply evidence, the opponent submitted the affidavit of Paulette Thomson.
The applicant changed its name to Kone-Landel (Canada) Inc. effective January 1, 1993 and then to Konecranes Canada Inc. effective April 21, 1995. Such changes were recorded in the Trade-marks Office in 1997.
Both parties filed a written argument and an oral hearing was conducted at which only the applicant was represented.
Paragraph 4 of the opponent=s grounds of opposition is irrelevant because it refers to Sections 16(2)(c) and 16(3)(a) of the Trade-marks Act which do not apply to an application based on use.
Regarding paragraph 1 of the grounds of opposition, there is an initial evidential burden on the opponent respecting the issue of the applicant's non-compliance with Section 30. This burden can be met by reference not only to the opponent's evidence but also to the applicant's evidence: see Labatt Brewing Company Limited v. Molson Breweries, a Partnership, 68 C.P.R. (3d) 216 at p.230.
The opponent has adduced no evidence in support of its Section 30(a) ground and therefore such ground fails. It has similarly introduced no evidence in support of its Section 30(b) ground. However, in its written argument, the opponent states that the applied-for Amark only appears on literature distributed by the US sister corporation@. The sworn testimony of Mr. King, the President of the applicant, is that the applicant distributes brochures bearing the trade-mark which originate with its US sister corporation. These brochures do bear the US company=s name. However it is the applicant that performs the services in Canada and the reports that the applicant provides when the services are performed bear the trade-mark without any reference to a corporate name. The opponent did not cross-examine Mr. King and I am not prepared to conclude that it has met its evidentiary burden with respect to Sections 30(b) or (e) solely on the basis of the appearance of the US corporation=s name on brochures distributed in Canada. It is possible that the distribution of such brochures might have supported a ground of non-distinctiveness if the pleadings had relied on such, but that is not the case.
Accordingly, I have rejected all of the Section 30 grounds.
I also reject the Section 12(1)(b) ground of opposition because the evidence does not support a conclusion that the applied-for mark is clearly descriptive or deceptively misdescriptive of the applicant=s services. The opponent=s only evidence on this point is Mr. Ball=s statement that Apro services@ suggests professional services (paragraph 18, Ball affidavit). Suggestiveness is however not a bar to registration. I also note that the applicant was not obliged to disclaim PRO in its application and that a number of other registrations for trade-marks incorporating the word PRO are on the Register without such a disclaimer (Miller affidavit). Although the two foregoing points are not conclusive of the issue, they are persuasive in concluding that the applied-for mark is not contrary to Section 12(1)(b).
The remaining grounds are all based on allegations of confusion between the opponent's trade-mark CRANE CERTIFICATION BUREAU and the applicant's trade-mark CRANE PRO SERVICES & Design. The applicant has the legal onus of proving that there is no likelihood of confusion.
The material dates with respect to the grounds of opposition which turn on the issue of confusion are as follows: Section 30(i) B the date of filing of the application, November 12, 1992; Section 12(1)(d) - the date of my decision; Section 16(1)(a) - the date of first use of the applied-for mark, August 1992; non-distinctiveness - the date of filing of the opposition, August 30, 1994 [see Re Andres Wines Ltd. and E.& J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.)].
Regardless of the date considered, I find that no likelihood of confusion exists for the following reasons.
Sections 16(5) and 17(1) of the Trade-marks Act place a burden on the opponent to establish its use of CRANE CERTIFICATION BUREAU prior to August 1992 and non-abandonment of such mark as of the date of advertisement of the present application, January 26, 1994. The applicant argues that the opponent has not met this onus but I will not deal with that issue, as it is unnecessary for me to decide it given that I do not consider confusion to be likely.
In applying the test for confusion set forth in Section 6(2) of the Trade-marks Act, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in Section 6(5) of the Act.
The opponent's trade-mark, CRANE CERTIFICATION BUREAU, is not an inherently distinctive mark as it is suggestive of the services offered by the opponent. The applicant's trade-mark has a greater degree of inherent distinctiveness because it incorporates a large design comprising an arrow within a circle.
The extent to which the trade-marks had become known as of August 1992 favours the opponent if we accept that it, or its predecessors, had used its trade-mark at that point of time for about ten years with sales of more than $750,000. As of the date of filing of the application as well as of the filing of the statement of opposition, this consideration also favours the opponent as the extent of the applicant=s use or promotion of its mark at that time is unknown. As of the date of Mr. King=s affidavit of November 29, 1995, we do know that the applicant was servicing approximately 5000 cranes. As of the date of Mr. Ball=s affidavit, December 16, 1994, the opponent had serviced in excess of 400 clients. In addition, there is evidence of advertisement of the opponent=s trade-mark by various licensees during 1993 and 1994. As neither party has provided detailed information, it is difficult to assess to what degree, if any, this circumstance favours either party as of today=s date.
The length of time the marks have been in use favours the opponent. The services of the parties are very similar, with a definite overlap. The clientele of both parties overlap and it is likely that such clientele will be discerning as the subject matter of the services, i.e. various lift equipment or cranes, are presumably important to their businesses and must sometimes meet government safety standards.
The trade-marks in issue resemble each other only to the extent that they both begin with the word CRANE. CRANE, being descriptive of the subject matter of both parties= services, is not a word that can be monopolised by anyone in this field. While the first component of a mark is often considered more important for the purpose of distinction, when a word is a common, descriptive word, it is entitled to a narrower range of protection than an invented or unique word: see Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.) and Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.). Considering the marks as a whole, CRANE CERTIFICATION BUREAU suggests services which will certify some aspect of cranes whereas CRANE PRO SERVICES & Design suggests some unknown services for cranes. Any resemblance in sound or appearance between the marks is attributable solely to the common first word.
Other circumstances to be considered which are not specifically listed in Section 6(5) include the state of the Trade-marks Register and the state of the marketplace. The applicant has introduced evidence aimed at showing that other parties use CRANE as part of trade-marks or business names in related fields. I will not comment further on such as it seems to me fairly self-evident that CRANE is a word which a trader, dealing in craneBrelated wares or services, would be likely to employ.
I have concluded that that there is not a reasonable likelihood of confusion between the applicant's CRANE PRO SERVICES & Design trade-mark and the opponent's CRANE CERTIFICATION BUREAU trade-mark as of each of the material dates. In reaching my decision, I was most influenced by the lack of similarity between the marks at issue and the relative weakness of each of the marks. In applying the test for confusion, I have of course born in mind that it is a matter of first impression and imperfect recollection but in the area in which we are dealing, it seems likely to me that the clientele, being relatively sophisticated, will be able to fairly easily distinguish the one mark from the other. I therefore reject the grounds of opposition based on Sections 30(i), 12(1)(d), 16(1)(a), and 38(2)(d).
With respect to paragraph 5 (b) of the grounds of opposition, I would add that the applicant=s trade-mark was adopted to distinguish, as its words and design are clearly capable of distinguishing its services. The opponent=s reference to Section 3 of the Trade-marks Act is inappropriate. In addition, the purpose of paragraph 5 (c) of the grounds of opposition is unclear and the allegation made therein unsupported by the evidence.
In conclusion, all of the grounds of opposition have been rejected.
Having been delegated by the Registrar of Trade-marks by virtue of Section 63(3) of the Trade-marks Act, I reject the opposition in view of the provisions of Section 38(8) of the Act.
DATED AT TORONTO, ONTARIO, THIS 9th DAY OF JULY, 1998.
Jill W. Bradbury
Hearing Officer
Trade-marks Opposition Board