TRADUCTION/TRANSLATION
IN THE MATTER OF THE OPPOSITION by Trailtech Inc. to application No. 1216745 for the trade-mark TREUILTECH filed by Nicole Labbé and François Landry, a general partnership doing business under the name of Usinage François Landrymark_ _______
I The pleadings
On May 13, 2004, Usinage François Landry, a general partnership, filed application number 1216745 to register the trade-mark TREUILTECH (the “Mark”).
This application is based on use in Canada since as early as September 20, 2003, in association with winches and accessories, namely: deviation pulley, choker and loading boom with winch anchoring device (the “Wares”).
The application was advertised for opposition purposes in the March 30, 2005, edition of the Trade-marks Journal.
Trailtech Inc. (“the Opponent”) filed a statement of opposition on May 26, 2005, which the Registrar forwarded to the Applicant (as defined hereafter) on June 30, 2005. On July 27, 2005, the Applicant filed a counter statement denying the grounds of opposition.
The Opponent filed in evidence the affidavit of Keith Brown and Josh MacFadden, while the Applicant filed the affidavit of Nicole Labbé. Each of the parties filed written arguments. An oral hearing was held at which the parties were represented.
While this opposition was pending, the present application for registration and the rights related to it were assigned to Usinage François Landry (2006) Inc. (throughout this decision I will refer to this company or to the general partnership doing business under the name of Usinage François Landry as the “Applicant” without distinction, except where the context does not admit it).
II Statement of opposition
The grounds of opposition may be summarized as follows:
- Under the provisions of sections 38(2)(a) and 30(i) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”), the application for registration does not conform to the requirements of the Act in that the Applicant could not state that it is entitled to use the Mark in Canada, because it was aware of the Opponent’s prior rights;
- Under the provisions of sections 38(2)(b) and 12(1)(d) of the Act, the Mark is not registrable because it is confusing with the Opponent’s registered trade-marks TRAILTECH and design, certificate of registration TMA501315, in association with cargo trailers, agricultural trailers, trailers and truck decks, and TRAILTECH, certificate of registration TMA547404, in association with vehicles, namely, flat deck trailers, cargo trailers, transporters and truck decks;
- Under provisions of sections 38(2)(c) and 16(1)(c) of the Act, the Applicant is not the person entitled to registration of the Mark because at the date of the filing of the application for registration, the Mark was confusing with the Opponent’s registered trade-marks that had been previously used in Canada by the Opponent;
- Under the provisions of sections 38(2)(d) and 2 of the Act, the Applicant’s Mark is not distinctive because it is not adapted to actually distinguish the Applicant’s Wares from the wares of the Opponent because of the confusion with the Opponent’s registered trade-marks.
III Analysis of the grounds of opposition
The Applicant has the onus of showing that the application for registration complies with the Act, but the Opponent has the initial burden of establishing the facts in support of each of its grounds of opposition. If the Opponent discharges this burden, it is then up to the Applicant to establish on a balance of probabilities that the grounds of opposition should not prevent registration of the Mark [see Joseph E. Seagram & Sons Ltd. et al. v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, 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].
The relevant dates for assessing the grounds of opposition vary depending on the ground:
➢ Failure to comply with a provision of section 30 of the Act: the date of filing of the application for registration (May 13, 2004) [see Dic Dac Holdings (Canada) Ltd v. Yao Tsai Co. (1999), 1 C.P.R. (4th) 263 and Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R. (3d) 469];
➢ The registrability of the Mark under section 12(1)(d) of the Act must be analyzed as at 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 page 424 (F.C.A)];
➢ Entitlement to register the Mark where the application is based on previous use: the date of first use of the Mark identified in the application (September 20, 2003; section 16(1) of the Act);
➢ The distinctiveness of the Mark is generally determined at the date of filing of the statement of opposition (June 30, 2005) [see E. & J. Gallo Winery v. Andres Wines Ltd. (1975), 25 C.P.R. (2d) 126, p age130; [1976] 2 F.C. 3 (F.C.A.), and Metro-Goldwyn-Mayer Inc v. Stargate Connections Inc., [2004] F.C. 1185 (F.C.T.D.)].
i) Ground of opposition based on section 30(i) of the Act
The Opponent deals very little with this ground of opposition in its written arguments. Moreover, it makes no reference to this section of the Act. However, it was argued at the oral hearing and in the written arguments that the Applicant had not established use of the Mark from the date of first use alleged in its application for registration.
It is not necessary to conduct a detailed analysis of the evidence adduced by the Applicant to deal with this ground of opposition. Suffice it to say that if the Opponent wanted to challenge the statement in the application concerning the date of first use of the Mark, it should have relied on section 30(b) of the Act and not section 30(i). All that section 30(i) requires is that the application contain a statement that the Applicant is satisfied that it is entitled to use the Mark in Canada. Such a statement is found in the application for registration.
I would add that even if the Opponent had argued that there had been a violation of section 30(b) of the Act, the initial burden remains on the Opponent, and it is not up to the Applicant to establish that is has been using the Mark since the date of first use alleged in its application for registration. However, the Opponent may refer to the Applicant’s evidence to discharge its initial burden. In such a case, the Applicant’s evidence must raise serious doubts about the truthfulness of the date of first use stated in the application for registration. Lack of evidence of use of the Mark at the date of first use alleged in the application is insufficient for the Opponent to discharge its initial burden.
In the circumstances, the first ground of opposition is rejected.
ii) Ground of opposition based on section 12(1)(d) of the Act.
Mr. Brown is president of the Opponent. The Opponent is the owner of the following registered trade-marks:
➢ TRAILTECH and design, certificate of registration TMA501315, in association with cargo trailers, agricultural trailers, trailers and truck decks;
➢ TRAILTECH, certificate of registration TMA547404, in association with vehicles, namely, flat deck trailers, cargo trailers, transporters and truck decks;
The affiant filed certified copies of certificates of registration for these trade-marks. Accordingly, the Opponent has discharged its initial burden of proof.
It is now up to the Applicant to show on a balance of probabilities that there is no likelihood of confusion between the Mark and the Opponent’s trade-marks. For the purposes of this analysis, I will limit myself to comparing the Mark with the trade-mark TRAILTECH, certificate of registration number TMA547404, because this is the Opponent’s trade-mark that most resembles the Mark; the Opponent’s other trade-mark has the additional distinctive element of a design.
The risk of confusion between two trade-marks must be analyzed on the basis of the specific circumstances in each case. A non-exhaustive list of relevant circumstances appears in section 6(5) of the Act. The Honourable Mr. Justice Binnie, writing on behalf of the Supreme Court of Canada, ruled on the scope of this section in Mattel Inc. v. 3894207 Canada Inc., (2006) 49 C.P.R. (4th) 321, stating the following:
Within the “all the surrounding circumstances” test, s. 6(5) of the Act lists five factors to be considered when making a determination as to whether or not a trade-mark is confusing. These are: “(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; (b) the length of time the trade-marks or trade-names 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 or trade-names in appearance or sound or in the ideas suggested by them”. The list of circumstances is not exhaustive and different circumstances will be given different weight in a context-specific assessment. See Gainers Inc. v. Marchildon (1996), 66 C.P.R. (3d) 308 (F.C.T.D.).
The parties dwelt on the nature of their respective businesses and the resemblances that may or may not exist between their trade-marks. I will therefore have to analyze the evidence submitted on the basis of each of the relevant criteria, including those listed in section 6(5) of the Act.
The trade-marks at issue here are coined words. However, they are made up of descriptive or suggestive elements such as “TREUIL”, “TRAIL” and “TECH” and therefore have a rather low degree of inherent distinctiveness, since the trade-marks TREUILTECH and TRAILTECH are suggestive of the wares with which they are associated. In fact, the term “TRAIL” may be considered as a derivative of the English word “trailer” when used in association with the Opponent’s wares. I cannot conclude that either of these marks has a higher degree of inherent distinctiveness than the other. However, the degree of distinctiveness may be enhanced by use and promotion over the years.
Mr. Brown states that the Opponent was incorporated in 1985 and has operated since then in the field of the manufacture and distribution of transportation products and equipment and trailers. Its products include vehicles, namely, flat deck trailers, cargo trailers, transporters and truck decks. Since April 1989, the Opponent has been selling several types of flat deck truck trailers in association with its marks. Every year since 2000, in Canada, it has sold at least $12 million worth of products bearing the marks TRAILTECH and TRAILTECH and design.
Mr. Brown submitted a specimen of the Opponent’s 2004 catalogue illustrating its various products for sale and bearing the trade-marks TRAILTECH and TRAILTECH and design. He also filed pages from the Opponent’s Web site showing the Opponent’s products. The Opponent is a member of a number of associations for the purpose of promoting the sale of its products.
Nicole Labbé is the secretary-treasurer of Usinage François Landry (2006) Inc. This company was incorporated in 2006. However, its predecessor in title, Usinage François Landry, was founded in 2003. She describes the type of wares manufactured and sold by the Applicant, and I will deal with that description further on.
I agree with the Opponent’s submission to the effect that there is no evidence in the material filed by the Applicant of use of the Mark within the meaning of section 4(1) of the Act. There is a considerable number of pamphlets and excerpts from pages of the Applicant’s Web site, but that in itself is not evidence of use of a trade-mark in association with wares. In addition, it is impossible for us to distinguish the Mark on the wares illustrated in those promotional materials.
In the circumstances, I conclude that the trade-mark TRAILTECH is better known in Canada than the Mark.
As regards the duration of use of the trade-marks at issue here, in light of the evidence described above, this factor is also in the Opponent’s favour.
The evidence shows that the winches sold by the Applicant are portable mechanical winches currently sold to forestry producers who skid logs on timberland lots. The Opponent argues that nothing prevents it from selling its trailers and accessories to forestry producers. This may be true, but it remains to be seen whether a purchaser of one of the Applicant’s Wares who is aware of the products and marks of the Opponent could on a balance of probabilities think that the Wares were of the same origin as trailers manufactured and sold by the Opponent in asssociation with its trade-mark TRAILTECH. If there some connection between the wares of the parties, there may be a likelihood of confusion. [See V. Kann Rasmussen Industri A/S v. Linen Chest “Phasde II” Inc. (1989), 25 C.P.R. (3d) 252] As the evidence submitted by Mr. Brown shows a certain connection between the respective wares of the parties, I conclude that, in spite of the differences in the wares sold by the parties, this factor is very slightly in favour of the Opponent.
I would note that I disregarded the evidence submitted by Mr. MacFaden. He filed excerpts from Web sites to show that third parties sell both trailers and winches. However, the contents of those excerpts from Web sites are hearsay evidence.
The Opponent’s customers are from various fields: farmers, transportation companies, owners of recreational vehicles with transportation needs and purchasers of made-to-measure products that the Opponent may manufacture from time to time. The Opponent sells its products through a distribution network in Canada. It also sells directly to some customers throughout Canada and the United States. As regards the Wares, they are sold to forestry producers either directly at the Applicant’s place of business in Islet, Quebec, or through its dealer in Notre-Dame-de-Lourdes, Quebec.
To distinguish the nature of the parties’ businesses, the Applicant argues that the evidence shows that it operates in Quebec, whereas the Opponent is located in Saskatchewan, and there is no evidence that the Opponent sells its wares in Quebec. To dispose of this argument, it is sufficient to refer to section 19 of the Act, which states that the owner of a registered trade-mark has the exclusive right to use it throughout Canada. Its use is not limited to a defined territory.
However, the evidence on record of the nature of the businessl activities of the parties allows me to conclude that the respective natures of their businesses are different. Accordingly, this factor favours the Applicant.
The other issue hotly contested by the parties is the possible degree of resemblance between the trade-marks at issue. The Applicant argues that the Mark consists of the terms “TREUIL”, a French word, and “TECH”, while the Opponent’s trade-mark uses the word “TRAIL”, an English word which is visually, phonetically and semantically distinct when compared with “TREUIL”. The Opponent argues that the only phonetic and visual difference is the replacement of the letter “A” with the letters “EU.”
The word “treuil” is defined in the dictionary Le Nouveau Petit Robert as a [translation] “lifting and loading apparatus consisting of a cylinder (drum) that is turned on its axis using a crank or motor and around which a cord or a cable is coiled”. In the Oxford Canadian Dictionary, the word “trail” is defined as, among other things, “. . . a part dragging behind a thing or a person (a trail of smoke)”.
I note that the component “TRAIL” of the Opponent’s mark, where used in association with the Opponent’s wares, “TRAIL” is suggestive because it is a derivative of the English word “trailer”.
The applicable test in this case is that of the average consumer who has an imperfect recollection of the Opponent’s trade-mark. This is not a painstaking comparison. This average Canadian consumer may be a unilingual Francophone, a unilingual Anglophone or a bilingual person. The Federal Court of Appeal dealt with this issue in Pierre Fabre Médicament v. SmithKline Beecham Corp. [2001] 2 F.C. 636. Mr. Justice Décary stated as follows:
10 With respect, I think the Registrar, in Les Vins La Salle Inc., misread what Joyal and Strayer JJ. were saying. They were simply observing that in the Canadian linguistic context the perception of the Francophone consumers warranted just as much attention as that of the Anglophone consumers, and once there was a reasonable probability of confusion among either of them, the mark could not be registered. Both judges added, in an effort to adequately cover all the bases in light of the special features of the cases before them, that neither the average French-speaking consumer nor the average English-speaking consumer might be confused but the average bilingual consumer might be, in which case this risk of confusion sufficed by itself to rule out the registration. Nowhere was there any suggestion of a test that would consider only the perception of the average bilingual consumer as opposed to the perceptions of the average French-speaking and English-speaking consumers.
11 Joyal J., a few months later, in Produits Freddy Inc. v. Ferrero SpA (1986), 20 C.P.R. (3d) 61 (F.C.T.D.), had occasion himself to issue a warning after the Registrar’s decision in Les Vins La Salle Inc. was cited to him. He stated, at page 65, that:
It seems to me that it is not sufficient to simply apply the bilingual version test in determining the issue of confusion between one trade mark and another
and at page 68, that:
... I feel that caution must be exercised when applying the bilingual equivalence test to coined words.
12 This Court, upholding Joyal J.’s decision in Produits Freddy Inc. v. Ferrero SpA (1988), 22 C.P.R. (3d) 346 (F.C.A.), did not make the average bilingual consumer test an independent test. Quite the contrary, Marceau J.A. noted that the risk of confusion was a finding “of concrete fact to be verified in real life, and not one to be inferred from the constitutionally established bilingual nature of the country” (at page 350). Lacombe J.A., for his part, commented as follows, at page 354:
It is only where a mark is borrowed from everyday speech or derived from a common noun that a question arises as to the possible effect of its transposition into the other language: see Boy Scouts of Canada v. Alfred Sternjakob GmbH & Co. KG et al. (1984), 2 C.P.R. (3d) 407, 4 C.I.P.R. 103 (F.C.T.D.); 101482 Canada Inc. v. Registrar of Trade Marks (1985), 7 C.P.R. (3d) 289, 6 C.I.P.R. 222 (F.C.T.D.). It is a matter which must be considered as one of the tests to be applied in deciding whether such a mark creates confusion with another mark in the mind of the public. This requirement is necessary not only to safeguard the official status of both languages but also the integrity and statutory protection of trade marks in respect of those who speak or understand English and French. However, this factor should not be taken too far, obliterating the other tests mentioned in s. 6(5) of the Act or ignoring the rules laid down by the courts.
13 The approach adopted by the Court is easily comprehensible. French and English are of equal value in Canada. The Trade-marks Act applies throughout Canada. Section 6 states that confusion may result from the use of a trade-mark in only one area of Canada. Paragraph 12(1)(b) provides that a trade-mark is not registrable if it is “either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services”. A trade-mark may be used anywhere in Canada (see, for example, section 16 [as am. by S.C. 1994, c. 47, s. 195]) and its registration, according to section 19 [as am. by S.C. 1993, c. 15, s. 60], gives the owner “the exclusive right to the use throughout Canada of the trade-mark”, subject to the cited exceptions.
It follows from this statement that if there is a risk of confusion in the mind of a unilingual Francophone, a unilingual Anglophone or a bilingual person, the Mark will not be registrable. For a unilingual Anglophone or Francophone having an imperfect recollection of the trade-mark TRAILTECH, there is such a visual resemblance with the trade-mark TREUILTECH that there is a reasonable likelihood of confusing them.
As additional circumstances, the Appellant raises the state of the register by filing the results of two distinct searches, one of which reveals three (3) references for the trade-mark TRAILTECH, including the two (2) registrations belonging to the Opponent. Therefore, this leaves only one other registered trade-mark TRAILTECH, that is, an application for registration in association with wares that are in no way related to the wares covered by the Opponent’s certificates of registration, namely apparel, bags and luggage of all kinds. This evidence is far from conclusive. As regards the other search, it involves twenty-four (24) trade-marks in the register ending in the suffix “TECH”. However, no details were given as to the methodology and parameters that led to this result. We have no information about any of the trade-marks cited, except for the fact that seven (7) of them were expunged, or the applications for registration were abandoned. We do not know the nature of the wares or services covered by the other references. Without this information, this evidence is of not much use.
Finally, as regards the evidence of an Internet search using the terms “TREUILTECH” and “TRAILTECH”, the contents of the sites identified, apart from the sites of the parties to this dispute, are inadmissible hearsay evidence.
In light of the analysis of all of the relevant circumstances, I reach the conclusion that there is a reasonable likelihood that a unilingual Francophone or Anglophone consumer of average intelligence having an imperfect recollection of the Opponent’s trade-mark, when faced with the Mark, confuses it with the Opponent’s trade-mark. I rely on the evidence on record to the effect that the wares of the parties are related, the Applicant did not consider it appropriate in its application to limit the use of its winches to the forest industry, and some of the trailers sold by the Opponent are equipped with winches; as well, there is a strong visual resemblance between the marks of the parties.
I would add that as mentioned in the preceding, the burden of proof rests on the shoulders of the Applicant. At best for the Applicant, the likelihood in this case that there may or may not be any confusion between the trade-marks of the parties is equal, and in this case the Applicant would not have discharged its burden of proof.
I therefore allow this ground of opposition.
iii) Grounds of opposition based on section 16 of the Act and the inherent distinctiveness of the Mark
The Opponent has proven that it had used its trade-mark TRAILTECH previously to the date of first use of the Mark alleged in the application for registration and that it had not abandoned that use at the date of advertisement of this application (ref.: section 16(5) of the Act). Accordingly, it has discharged its initial burden of proof with respect to the Applicant’s entitlement to registration of the Mark. However, the difference between the relevant dates with respect to the moment at which the analysis of the factors under subsection 6(5) of the Act must be made to determine whether or not there is a reasonable likelihood of confusion between the marks at issue under the present ground of opposition has no effect on this analysis. Therefore, the ground of opposition under section 16 of the Act is also allowed for the same reasons as those invoked in the analysis of the ground of opposition based on section 12(1)(d) of the Act.
Having regard to the evidence described above, I also conclude that the Applicant has not discharged its burden of proving that the Mark is distinctive, that is, adapted so to distinguish the Wares from the Opponent’s wares sold under the trade-mark TRAILTECH.
I therefore allow the ground of opposition based on the lack of inherent distinctiveness of the Mark.
IV Conclusion
Having been delegated authority by the Registrar under section 63(3) of the Act, I reject the application for registration of the Mark in association with the Wares, pursuant to section 38(8) of the Act.
DATED AT BOUCHERVILLE, QUEBEC, ON SEPTEMBER 29, 2008
Jean Carrière
Member
Trade-marks Opposition Board
Certified true translation
Michael Palles