IN THE MATTER OF AN OPPOSITION by UBS Financial Services Inc. (formerly Paine Webber, Incorporated) to application No. 1127706 for the trade-mark BEYOND THE BASICS filed by Grant Gilmour
On January 10, 2002, the applicant, Grant Gilmour, filed an application to register the trade-mark BEYOND THE BASICS based on use of the mark since January, 1998, in association with “accounting services, income tax consultations and preparations”. The application was advertised for opposition purposes on May 15, 2002.
The opponent, UBS Financial Services Inc. (formerly Paine Webber, Incorporated), filed a statement of opposition on October 15, 2002, a copy of which was forwarded to the applicant on November 5, 2002. The applicant served and filed a counter statement on December 4, 2002. The opponent filed as its evidence the affidavit of Les Levy, sworn July 1st, 2003. The applicant filed the affidavit of Grant Gilmour, sworn July 18, 2003. Only the applicant filed a written argument. An oral hearing was not requested.
The grounds of opposition, as pleaded, are reproduced as follows:
1. The application does not conform to the requirements of Section 30 and more particularly, the application does not conform to the requirements of Section 30(i), since contrary to the statement contained in the application, the applicant could not and cannot be satisfied that he is entitled to use the trade-mark in Canada, since the trade-mark BEYOND THE BASICS is not adapted to distinguish and does not actually distinguish the services of the applicant from the services of all others, in view of the use and making known of the trade-mark BEYOND THE BASICS in Canada by the opponent in association with brochures and publications used in investor training programs for women, and stock brokerage, money management and investment advisory services in the financial field.
2. The trade-mark is not distinctive of the services of the applicant because it does not actually distinguish, nor is it adapted to distinguish, the services of the applicant from the wares and services of all others, in view of the use and making known of the trade-mark BEYOND THE BASICS in Canada by the opponent in association with brochures and publications used in investor training program for women, and stock brokerage, money management and investment advisory services in the financial field.
The first ground of opposition based on Subsection 30(i) of the Act does not raise a proper ground of opposition in that the opponent did not allege that the applicant was aware of the opponent’s BEYOND THE BASICS trade-mark. Thus, the first ground of opposition is unsuccessful.
The material date with respect to the second ground of opposition (distinctiveness) is the date of filing of the opposition, i.e. October 15, 2002 (see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.); Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 412 at 424 (F.C.A.) and Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc., 2004 FC 1185). Although the legal onus is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its services from the services of others throughout Canada (see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R. (3d) 272 (T.M.O.B.)), there is an evidential burden on the opponent to prove the allegations of fact supporting its ground of non-distinctiveness. However, the opponent need not show that its trade-mark is well known in Canada or has been made known solely by the restricted means set out in Section 5 of the Trade-marks Act, R.S.C. 1985, c. T-13 (“the Act”) in order to meet this evidential burden (see Motel 6, Inc. v. No. 6 Motel Ltd., 56 C.P.R. (2d) 44 (F.C.T.D.) at 55). It is only necessary for the opponent to show that its mark has become known sufficiently to negate the distinctiveness of the applicant’s mark.
Mr. Levy, Senior Associate General Counsel of UBS Financial Services Inc. (formerly PaineWebber Incorporated), states that the opponent, a financial services company, is the owner of the trade-mark BEYOND THE BASICS, registered in the U.S. on June 4, 2002, under No. 2575593 in association with brochures, pamphlets and guide books in the field of investor training for women investors; stock brokerage, financial management and investment advice services in the financial field; and educational services, namely providing courses of instruction in the field of investments to women investors. Mr. Levy further states that the opponent provides services in the U.S. and in Canada and elsewhere around the world in association with the trade-mark BEYOND THE BASICS. I reproduce below paras. 4,6,7 and 8 of Mr. Levy’s affidavit, which relate to the issue of the promotion and use of the mark BEYOND THE BASICS in Canada.
4. The Opponent has published a book entitled BEYOND THE BASICS, which has been distributed in the United States and in Canada since 1998.
6. I am advised by company personnel that the Opponent has total approximate expenditures from 1998 to date in the United States of America and Canada of $900,000 for advertising and promotional costs associated with the advertising and promotion of its trademark BEYOND THE BASICS. The percentage of expenses allocated to Canada is at least 5%.
7. Now produced and shown to me and attached to this my affidavit marked Exhibit A is the BEYOND THE BASICS book which has been distributed in Canada.
8. Now produced and shown to me and attached to this my affidavit marked Exhibit B is an advertisement used by the opponent in Canada for purposes of advertising and promoting the opponent’s BEYOND THE BASICS goods and services.
The advertisement referred to by Mr. Levy in paragraph 8 is a copy of one advertisement that appeared in the Wall St. Journal on April 13, 2000, that promotes the opponent’s BEYOND THE BASICS book.
The opponent faces an evidential burden of establishing facts that support a conclusion that its mark was known sufficiently in Canada at the relevant date to negate the distinctiveness of the applicant’s mark. I conclude that it has not. While the opponent did provide expenditure figures with respect to advertising and promoting its mark in Canada, the opponent gives no indication as to what proportion of those expenses were incurred prior to the relevant date, if any. Further, while Mr. Levy asserts that the opponent’s book has been distributed in Canada, there are no details provided regarding where, when or how many of these books may have been actually sold in Canada. There is also no evidence whatsoever of use or making known of the opponent’s mark in Canada in association with any of the opponent’s services referred to under this ground in the statement of opposition (eg. stock brokerage, money management and investment advisory services in the financial field). The opponent’s strongest evidence of making known of the mark in Canada is one advertisement of the opponent’s BEYOND THE BASICS book which appeared in the Wall St. Journal, a foreign publication, eighteen months prior to the material date. Even if I were to take judicial notice of the circulation of the Wall Street Journal in Canada, I do not consider this sole advertisement sufficient to establish any reputation of note of the opponent’s mark in Canada at the relevant date.
Although the opponent’s burden was not to show that its mark was well known in Canada, I would have expected the opponent to have produced evidence showing that its mark was known to at least some extent in Canada as of the relevant date. From the evidence furnished, I am unable to determine to what extent the opponent’s mark was known in Canada at the relevant date, if at all. As the opponent has failed to establish that the mark has become known sufficiently to negate the distinctiveness of the applicant’s mark, I am not satisfied that the opponent has met its burden under the sub-section 38(2) ground of opposition. This ground of opposition is therefore also unsuccessful.
In view of the above, and pursuant to the authority delegated to me under sub-section 63(3) of the Act, I reject the opposition.
DATED AT GATINEAU, QUEBEC, THIS 2nd DAY OF November, 2004.
C. R. Folz
Member,
Trade-Marks Opposition Board