LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 185
Date of Decision: 2010-10-28
IN THE MATTER OF AN OPPOSITION by TSX Inc. to application No. 1,277,183 for the trade-mark WIS-X Design in the name of Harj Gill
[1] On October 26, 2005, Harj Gill (the Applicant) filed an application to register the trade-mark WIS-X Design (the Mark), shown below, on the basis of proposed use in Canada in association with “business providing stock exchange data via the internet; stock brokerage services”.
[2] The application was advertised in the Trade-marks Journal of June 21, 2006.
[3] TSX Inc. (the Opponent) filed a statement of opposition on November 21, 2006. Pursuant to r. 40 of the Trade-marks Regulations, SOR/96-195 (the Regulations), the Opponent requested leave to file an amended statement of opposition on July 18, 2007. The Opponent’s request was granted by the Registrar on October 23, 2007.
[4] The grounds of opposition set forth in the amended statement of opposition can be summarized as follows:
o Pursuant to s. 38(2)(b) and s. 12(1)(d) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act) the Mark is not registrable because it is confusing with the trade-mark TSX & Design (the Opponent’s Mark), shown below, of registration No. TMA607,697 for “computer software for trading in financial instruments and securities and recording, computing, reporting of information regarding trading in financial instruments and securities; publications, namely books, periodicals, newspapers and newsletters regarding finance, financial instruments and securities” and “recording, computing, reporting of information regarding trading of financial instruments and securities; operation of a stock exchange and stock market for trading in financial instruments and securities; establishing and issuing financial instruments and securities; reporting information relating to such trading, facilitation of on-line trading of financial instruments and securities and on-line financial information services”.
o Pursuant to s. 38(2)(c) and s. 16(3)(a) of the Act, the Applicant is not the person entitled to registration of the Mark since at the filing date of the application, the Mark was confusing with the Opponent’s Mark previously used in Canada by the Opponent in association with the wares and services set out above.
o Pursuant to s. 38(2)(d) and s. 2 of the Act, the Mark is not distinctive in that it cannot distinguish and is not adapted to distinguish the Applicant’s services from the Opponent’s services.
o The application does not conform to the requirements of s. 30 of the Act, in particular:
▪ to the requirements of s. 30(e), in that the Applicant did not intend to use the Mark in association with the services set out in the application because the Mark is not used in the format applied for and the Applicant does not intend to provide stock exchange data via the Internet or stock exchange services in association with the Mark;
▪ to the requirements of s. 30(h), in that the drawing is not an accurate representation of the trade-mark as proposed to be used by the Applicant; and
▪ to the requirements of s. 30(i), in that the Applicant could not have been satisfied of his entitlement to use the Mark in Canada since at the filing date of the application the Applicant had knowledge of the Opponent’s Mark as he was involved in a separate legal dispute with the Opponent.
[5] A counter statement was filed by the Applicant on December 18, 2006. The Applicant requested leave to file an amended counter statement, essentially denying each ground of opposition, on April 18, 2008. The Applicant’s request was granted by the Registrar on November 17, 2008 pursuant to r. 40 of the Regulations.
[6] The Opponent’s evidence, filed pursuant to r. 41 of the Regulations, consists of affidavits of Steve Kee, together with Exhibits “A” through “F”, and Jonathan Burkinshaw, together with Exhibits “A” through “G”, both sworn on September 18, 2007. Mr. Kee has been the Director, Corporate Communications at the Opponent since 2003 and has worked with the Opponent and its predecessors since 1988. Mr. Burkinshaw is an articling student employed by the Opponent’s trade-mark agent. Messrs. Kee and Burkinshaw were not cross-examined by the Applicant.
[7] The Applicant’s evidence, filed pursuant to r. 42 of the Regulations, consists of an affidavit of Lisa Saltzman, sworn on April 16, 2008, together with Exhibits “LS-1” and “LS-2”. Ms. Saltzman has been Director of the trade-mark searching department with Onscope (a division of Marque d’Or Inc.) since July 1985. She was not cross-examined by the Opponent.
[8] Only the Opponent filed a written argument. Neither party requested an oral hearing.
Onus
[9] The Applicant bears the legal onus of establishing, on a balance of probabilities, that his 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 Limited v. The Molson Companies Limited (1990), 30 C.P.R. (3d) 293 (F.C.T.D.)].
Material Dates
[10] The material dates that apply to the grounds of opposition are as follows:
• s. 38(2)(a)/s. 30 – the filing date of the application [see Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 (T.M.O.B.)];
• s. 38(2)(b)/s. 12(1)(d) – the date of my decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks (1991), 37 C.P.R. (3d) 413 (F.C.A.)];
• s. 38(2)(c)/s. 16(3)(a) – the filing date of the application [see s. 16(3)];
• s. 38(2)(d)/non-distinctiveness – the filing date of the statement of opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.)].
Analysis of the Grounds of Opposition
[11] I will analyze the grounds of opposition in regard to the evidence of record, although not necessarily in the order they were raised in the amended statement of opposition.
Registrability pursuant to s. 12(1)(d) of the Act
[12] A copy of registration No. TMA607,697 for the Opponent’s Mark is appended as Exhibit “A” to the Kee affidavit. Having exercised the Registrar’s discretion, I confirm that registration No. TMA607,697 is extant. Since the Opponent has discharged its initial evidentiary burden, the burden of proof lies on the Applicant to convince the Registrar, on a balance of probabilities, that there is no reasonable likelihood of confusion between the trade-marks at issue.
[13] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
[14] In applying the test for confusion, I must have regard to all the surrounding circumstances, including those specifically enumerated in s. 6(5) of the Act, namely: a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; b) the length of time the trade-marks have been in use; c) the nature of the wares, services or business; d) the nature of the trade; and e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight [see, in general, Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.)].
[15] Before analyzing the surrounding circumstances of this case, I wish to summarize hereafter the evidence introduced by the Kee affidavit with respect to the Opponent and its business.
[16] The Opponent is a wholly owned subsidiary of TSX Group Inc. and one of the TSX Group of companies (TSX Group) [par. 3]. All the trade-marks used by the Opponent and any of its affiliates are owned by the Opponent. Other companies in TSX Group are licensed by the Opponent to use its TSX trade-marks. The Opponent exercises direct or indirect control over the character and quality of all wares or services sold under the TSX trade-marks “in many ways, including but not limited to the implementation and enforcement of quality controls and the review of all publications and marketing materials referring to the TSX trade-marks” [par. 4]. The Opponent operates the Toronto Stock Exchange, which is Canada’s largest stock exchange [par. 5]. The Toronto Stock Exchange became known as TSX on April 8, 2002 [par. 7]. TSX Group also includes TSX Venture Exchange, an exchange focusing on new or “startup” companies, and NGX, Canada’s leading energy exchange. TSX Venture Exchange and NGX are licensees of the Opponent [par. 6].
[17] I shall now turn to the surrounding circumstances of this case and discuss the evidence in further detail.
The inherent distinctiveness of the trade-marks and the extent to which they have become known
[18] It is well established law that trade-marks or design marks consisting only of letters are characterized as weak marks [see GSW Ltd. v. Great West Steel Industries (1975), 22 C.P.R. (2d) 154 (F.C.T.D.)]. Here, the fanciful script employed for the letter “X” does very little, if anything, to increase the inherent distinctiveness of the parties’ trade-marks since, in each case, the design feature is intrinsic to the letter “X”.
[19] While the Mark and the Opponent’s Mark are inherently weak, their strength may be increased by means of them becoming known in Canada through promotion or use. Yet, the Applicant did not furnish any evidence of use of the Mark. By contrast, based on the evidence introduced by the Kee affidavit, as discussed hereafter, I am satisfied that the Opponent’s Mark has become known to a significant extent in Canada.
[20] Mr. Kee deposes that the Opponent’s Mark has been used in Canada since at least as early as April 2002 and “is used in almost every advertisement, promotion and consumer communication, whether in hard copy or electronic form” [pars. 10 and 11]. Mr. Kee also deposes that the Opponent’s Mark has appeared on billboards, in the lobby of the Exchange Tower in Toronto, in television advertisements, and on letterhead [par. 12]. Advertising proofs or final advertisements and brochures for the years 2002 through 2007 are filed by Mr. Kee as examples of use of the Opponent’s Mark in advertising, signage and letterhead [Exhibits “B1” through “B22”].
[21] Mr. Kee states that the Opponent’s Mark has been featured on the website www.tsx.com since at least as early as the beginning of 2003. He goes on to state that the website receives 35 – 40 million hits per month, with over 1.2 million unique visitors per month, the majority of which originate from users accessing the internet from Canadian Internet Service Providers. Comscore, a recognized, independent, media metrics company, ranks www.tsx.com as one of the Top 10 Financial Websites in Canada [par. 13]. Mr. Kee files printouts from the current website and from the archive of the website (taken from the Internet Archive at www.archive.org) [Exhibits “C1” through “C10”].
[22] According to the Kee affidavit, the Opponent’s Mark is featured in the Opponent’s TSXTRA Electronic Newsletter, which began publication in 2003. This newsletter is distributed to 7,000 – 8,000 individuals per quarterly issue. I find it reasonable to conclude that at least some of these individuals are located in Canada. Printouts of TSXTRA Newsletters (June 2006, December 2006 and March 2007) are appended as Exhibit “D” to the Kee affidavit [par. 15]. The Opponent’s Mark is also displayed in all of the annual reports for TSX Group. On average, at least 1,000 of these annual reports are sent to all shareholders of the Opponent each year [par. 16]. Copies of pages from the annual reports for the years 2002 through 2006 are appended as Exhibit “E” to the Kee affidavit.
[23] According to the yearly breakdown provided in the Kee affidavit, the Opponent has spent $15.2 million in marketing and advertising featuring the Opponent’s Mark from 2002 to 2006. At the date of the Kee affidavit, the Opponent projected spending $1.1 million for the year 2007 [par. 17].
[24] Finally, Mr. Kee deposes that there are approximately 70,000 individuals subscribing to the on-line market and trading data provided by the Opponent in association with the Opponent’s Mark [par. 18]
The length of time each trade-mark has been in use
[25] The application filed on October 27, 2005 is based on proposed use of the Mark. The Applicant did not furnish evidence of use of the Mark subsequent to the filing of his application. By contrast, the Kee affidavit establishes that the Opponent’s Mark has been used since April 2002.
The nature of the wares, services or business and the nature of the trade
[26] When considering the nature of the wares and services and the nature of the trade of the parties, it is the statement of services in the application and the statement of wares and services in the registration that govern the assessment of the likelihood of confusion under s. 12(1)(d) of the Act [see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.); Miss Universe, Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.)].
[27] The Mark has been applied for registration in association with “business providing stock exchange data via the internet; stock brokerage services” (the Services). The Opponent’s Mark is registered in association with the following wares and services:
Wares: (1) Computer software for trading in financial instruments and securities and recording, computing, reporting of information regarding trading in financial instruments and securities; publications, namely books, periodicals, newspapers and newsletters regarding finance, financial instruments and securities.
Services: (1) Recording, computing, reporting of information regarding trading of financial instruments and securities; operation of a stock exchange and stock market for trading in financial instruments and securities; establishing and issuing financial instruments and securities; reporting information relating to such trading, facilitation of on-line trading of financial instruments and securities and on-line financial information services.
[28] The Opponent submits that the Services are similar, if not identical, to its registered services.
[29] In the absence of any evidence from the Applicant as to his Services, I find it reasonable to conclude that the Services overlap with the Opponent’s registered services “operation of a stock exchange and stock market for trading in financial instruments and securities; establishing and issuing financial instruments and securities; reporting information relating to such trading, facilitation of on-line trading of financial instruments and securities and on-line financial information services”.
[30] To the extent that there is an overlap between the Services and the aforementioned registered services, in the absence of any evidence on the Applicant’s channels of trade, I find it reasonable to conclude to an overlap between the parties’ channels of trade. I would add that the Kee affidavit establishes that the stock exchange services associated with the Opponent’s Mark are offered via the Internet. Thus, to the extent that the Services include “business providing stock exchange data via the internet”, one could even conclude that the parties’ channels of trade would be identical.
The degree of resemblance between the marks in appearance or sound or in the ideas suggested by them
[31] The law is clear that when assessing confusion it is not proper to dissect trade-marks into their component parts. The trade-marks must be considered in their entirety. That being said, it is still possible to focus on particular features of a mark that may have a determinative influence on the public perception of it [see United Artists Corp. v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 (F.C.A.)].
[32] The Mark incorporates a stylized letter “X” that is nearly identical to the stylized letter “X” in the Opponent’s Mark. Moreover, both trade-marks contain the letter “S” as the second last letter directly preceding the stylized letter “X”. In each mark, the stylized letter “X” curves and extends underneath the preceding letters. In my view, the stylized letter “X” is the most memorable component of the trade-marks at issue. I agree with the Opponent that the differences between the letters “WI” in the Mark and the letter “T” in the Opponent’s Mark do not significantly lessen the resemblance between the trade-marks.
[33] In the end, I am of the view that the resemblances in the perception of the parties’ trade-marks in their entireties outweigh any differences in appearance, sound or in the ideas suggested.
Other surrounding circumstances
Family of trade-marks
[34] The Opponent is seemingly claiming a family of trade-marks featuring the stylized letter “X” as an additional surrounding circumstance supporting a finding of confusion. Indeed, Mr. Kee states that the use by the Opponent of trade-marks incorporating the stylized letter “X”, as well as the license use of these trade-marks by affiliates of TSX Group, “has further promoted” the distinctiveness of the stylized “X” found in the Opponent’s Mark [par. 21]. He files copies of three applications and two registrations owned by the Opponent for trade-marks displaying the stylized letter “X” [Exhibits “F1” through “F6”].
[35] In order to assert a family of trade-marks, one must prove the use of other marks member of the alleged family [see MacDonald’s Corporation v. Yogi Yogurt Ltd. (1982), 66 C.P.R. (2d) 101 (F.C.T.D.)]. Since the Opponent did not provide evidence specifically directed to the use of its five other trade-marks involving the stylized letter “X”, I do not consider this to be a case where the Opponent may assert a family of trade-marks.
State of the register evidence
[36] State of the register evidence is usually introduced to show the commonality of a trade-mark or a portion of a trade-mark in relation to the register as a whole. Since it is only relevant insofar as one can make inferences from it about the state of the marketplace, it should be comprised of trade-marks which include both the applied for mark or portion of the applied for mark and that are used with wares or services similar to those at issue [see Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432; Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R. (3d) 205 (F.C.T.D.)]. Inferences about the state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located [see Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.)].
[37] Ms. Saltzman was instructed to conduct one search “for the X design” and a second search for “X as the final letter of a short word or acronym with no more than 4 characters in total” [par. 2]. Both searches, conducted on April 16, 2008 through Onscope/Marque d’Or Inc.’s Canadian Trade-marks Database, were restricted to active marks in Class 36 (insurance and financial affairs).
[38] According to the report filed as Exhibit LS-1, Ms. Saltzman’s search for marks containing the letter “X”, all designs containing the letter “X” as well as curved lines, yielded 61 trade-marks. According to the report filed as Exhibit LS-2, her search for trade-marks with the letter “X” as a suffix yielded 273 trade-marks
[39] There are no submissions from the Applicant as to what factual inferences might be drawn from the results of Ms. Saltzman’s searches. By contrast, the Opponent in its written argument thoroughly analyses the results of the searches and comments thereon.
[40] The Opponent submits that the first search for trade-marks containing a stylized “X” is overly broad and not limited by the key elements that renders the Mark and the Opponent’s Mark confusing similar, specifically: the position of the letter “X” in the marks, the length of the marks; the design features of the stylized “X”, and the specific nature of the financial services. The Opponent submits that the 61 yielded trade-marks are not all registered, that it owns 7 of the 61 marks, and that official marks account for 6 of the 61 trade-marks. The Opponent also submits that by conducting the search in Class 36, numerous trade-marks are associated with services entirely unrelated to stock exchange services.
[41] As for the second search, suffice it to say that the Opponent submits that the fact that there are other trade-marks containing the letter “X” in the broad category of insurance and financial services “is obvious and of no relevance or evidentiary merit in this proceeding”.
[42] Although I acknowledge that Exhibits LS-1 and LS-2 to the Saltzman affidavit show a large number of registrations, I agree with the Opponent that the searches, as conducted by Ms. Saltzman, are too broad to draw any meaningful conclusion. Thus, I am not prepared to accept the Saltzman affidavit as evidence that trade-marks ending with a stylized curved letter “X”, which I consider the most memorable component of the trade-marks at issue, are commonly used by different traders in association with relevant services.
Conclusion on the likelihood of confusion
[43] In applying the test for confusion, I have considered it as a matter of first impression and imperfect recollection. Having considered all of the surrounding circumstances, I am not satisfied that the Applicant has met its burden to show that there is no reasonable likelihood of confusion between the Mark and the Opponent’s Mark.
[44] Having regard to the foregoing, the ground of opposition based upon s. 12(1)(d) of the Act is successful.
[45] I would like to add that even if I had concluded that the Saltzman affidavit was of some value in this proceeding, the outcome of the s. 12(1)(d) ground of opposition would have been the same. Indeed, since each of the s. 6(5)(a) through (e) factors clearly favours the Opponent, I would not have considered the state of the register as an additional circumstance so significant as to shift the balance of probabilities in favour of the Applicant.
Non-distinctiveness
[46] There is an initial burden on the Opponent to show that the Opponent’s Mark had become known sufficiently at the material date to negate the distinctiveness of the Mark [see Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 (F.C.T.D.); Bojangles’ International, LLC and Bojangles Restaurants, Inc. v. Bojangles Café Ltd. (2006), 48 C.P.R. (4th) 427 (F.C.)].
[47] I am satisfied that the Opponent has discharged its evidentiary burden to show that, as of November 21, 2006, the Opponent’s Mark had become known sufficiently in association with the Opponent’s stock exchange services to negate the distinctiveness of the Mark. As the difference in material dates does not have a significant impact on my previous analysis of the surrounding circumstances under the registrability ground of opposition, I find that the Applicant has not discharged its onus to establish, on a balance of probabilities, that the Mark was not confusing with the Opponent’s Mark at the material date.
[48] Having regard to the foregoing, the ground of opposition based upon non-distinctiveness of the Mark is successful.
Remaining grounds of opposition
[49] As I have found in favour of the Opponent under more than one ground of opposition, I see no need to address the ground of opposition based upon non-entitlement pursuant to s. 16(3)(a) of the Act or the grounds of opposition based upon non-conformity to s. 30 of the Act.
Disposition
[50] Having regard to the foregoing, pursuant to the authority delegated to me under s. 63(3) of the Act, I refuse the application pursuant to s. 38(8) of the Act.
______________________________
Céline Tremblay
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office