Trademark Opposition Board Decisions

IN THE MATTER OF AN OPPOSITION by Simpson Strong-Tie Company, Inc. to application No. 1,212,531 for the trade-mark QUIK FLIP filed by Canadian Tire Corporation, Limited_________                                                     

 

On April 7, 2004, Canadian Tire Corporation, Limited (the “Applicant”) filed an application to register the trade-mark QUIK FLIP (the “Mark”) based upon proposed use of the Mark in Canada in association with drill drivers, drills, screwdrivers.

 

The application was advertised for opposition purposes in the Trade-marks Journal of November 10, 2004. On December 7, 2004, Simpson Strong-Tie Company, Inc. (the “Opponent”) filed a statement of opposition, which alleges confusion with the Opponent’s marks QUIK DRIVE, QUIKSTRIP, QD, QD2000 and QUIKDRIVER.

 

The Applicant filed and served a counter statement in which it denied the Opponent’s allegations.

 

In support of its opposition, the Opponent filed the affidavit of G. Lyle Habermehl. The Applicant obtained an order to cross-examine him on his affidavit and the transcript of the cross-examination, as well as answers to certain questions, have been filed.

 

In support of its application, the Applicant initially filed the affidavits of Anthony Henry Whitehouse and Christine Walo. It subsequently obtained leave to file additional evidence, namely the affidavits of Shane Fortier and Patti Terry.

 

The Opponent obtained an order for the cross-examination of Mr. Whitehouse but did not proceed with a cross-examination.

 

Each party filed a written argument and participated in an oral hearing.

 

Onus

The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Trade-marks Act, R.S.C. 1985, c. T-13 (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.) at 298]. 

 

Summary of Opponent’s Evidence

I will summarize below what I consider to be the key portions of the evidence.

 

Habermehl Affidavit

Mr. Habermehl is the President of both Quik Drive USA Inc. (“Quik Drive”) and Quik Drive Canada Inc. (“Quik Drive Canada”). Quik Drive is the original owner of the marks relied upon by the Opponent in these proceedings (QUIK DRIVE, QUIKSTRIP, QD, QD2000 and QUIKDRIVER), the marks having been assigned to the Opponent on October 14, 2004. Quik Drive Canada was the Canadian distributor for Quik Drive.

 

Mr. Habermehl attests that from the 1980s until October 14, 2004, Quik Drive was a manufacturer of automatic screw driving systems and carried on the business of selling power screwdrivers, plastic strips carrying screws to be used with power screwdrivers and bits for power screwdrivers. (During cross-examination, Mr. Habermehl agreed that, general speaking, collated specialty fasteners and auto feed driving systems were Quik Drive’s only business: Questions 89-90.) From at least 1988 and continuously to October 14, 2004, Quik Drive “extensively, and continuously, sold and provided” the following wares in Canada in association with the QUIK DRIVE trade-mark to its Canadian distributor, namely Quik Drive Canada: replaceable metal screwdriver bits for power screwdrivers; strips of screws for power screwdrivers; power screwdrivers. Mr. Habermehl has provided packaging, brochures and photographs to show how QUIK DRIVE was associated with such wares. (Exhibits “F”, “G”, “H” and “I”)

 

Quik Drive Canada sold the QUIK DRIVE products to distributors and building supply dealers in Canada, who in turn sold them to end users. Most QUIK DRIVE products have been sold to contractors and professional builders but they have also been sold at the retail level.

 

Brochures showing the QUIK DRIVE mark have been distributed in Canada continuously from at least 1994 to October 14, 2004. In excess of at least 60,000 such flyers/brochures have been distributed in Canada from 1998. QUIK DRIVE products have also been promoted in Canada at trade shows.

 

Because the parties are competitors, Mr. Habermehl has been reluctant to disclose the exact details regarding Quik Drive Canada’s sales; instead, he states that there were sales of QUIK DRIVE products in Canada in at least the tens of millions of Canadian dollars prior to each of the dates April 7, 2004 and October 14, 2004.

 

The bulk of Mr. Habermehl’s evidence is directed to the QUIK DRIVE mark. He does not make any reference to a QUIKDRIVER mark, but he does provide the following evidence concerning the remaining marks relied upon by the Opponent:

• Re QD and QD2000: QUIK DRIVE screwdriving tools are part of the QD series of tools, and in particular, the QD2000 series of automatic screwdriving tools (see Exhibit “G”, a brochure from 2000 regarding the QD2000 series of power screwdrivers, which also refers to QUIK DRIVE bit packs);
• Re QUIKSTRIP: the trade-mark QUIKSTRIP has appeared on boxes of QUIK DRIVE screw strips sold in Canada from at least 1998 (see Exhibit “I”, packaging used in Canada).

 

Mr. Habermehl has been retained by the Opponent to assist it and he therefore states that he is personally aware of the Opponent’s activities in Canada with respect to the QUIK DRIVE products and that the Opponent has continued to offer for sale and sold the QUIK DRIVE, QUIKSTRIP, QD and QD2000 products in Canada continuously since October 15, 2004. (Mr. Habermehl’s affidavit was sworn on May 3, 2005.)

 

During cross-examination, Mr. Habermehl was asked to provide an example of the Opponent’s QUIK DRIVE packaging (Question 182). This question was taken under advisement. The Opponent’s agent subsequently advised, “We continue the objection and refusal to Question 182 and will not be providing samples of additional packaging at this time.” However, the Opponent did not provide any reasons in support of its objection. Given that a valid basis for the objection and refusal is not evident, I agree with the Applicant that a negative inference should be drawn based on the Opponent’s refusal. (The Opponent did produce side panels etc. of the pre-October 15, 2004 packaging to show that Quik Drive U.S.A., Inc.’s name did appear on that packaging, pursuant to Question 102.)

 

I will also address the part of the cross-examination that related to paragraph 22 of Mr. Habermehl’s affidavit. Paragraph 22 reads:

Most QUIK DRIVE products have been sold in Canada to contractors and professional builders. However, QUIK DRIVE products, including power screw drivers, screw tips and bits, have been sold in Canada at the retail level. I understand that Simpson currently has plans to and intends to offer for sale and sell at retail the various QUIK DRIVE products as described above.

 

On cross-examination, there was the following exchange:

111.          Q. When you say in the last paragraph, paragraph 22, you say you understand that Simpson currently has plans to and intends to offer for sale. Is that something that someone has told you?

A.    Yes.

112.          Q. Who would that be?

A.    Various.

113.          Q. Employees of Simpson Strong-Tie?

A.    Yes.

114.          Q. Current employees of Simpson Strong-Tie?

A. Yes.

It thus appears that the statement was inadmissible hearsay and I am therefore disregarding it.

 

Summary of Applicant’s Evidence

I will summarize below what I consider to be the key portions of the evidence.

 

Whitehouse Affidavit

Mr. Whitehouse is the Applicant’s Line of Business Director – Tools. He attests that QUIK FLIP drill drivers, drills and screwdrivers have been sold since at least as early as September 2004 and that as of December 31, 2005 sales exceeded five million dollars. QUIK FLIP wares are sold to the public both through Canadian Tire Associate Stores and through the Applicant’s website.

 

Mr. Whitehouse states that thousands of advertising dollars have been spent each year since 2004 to promote the QUIK FLIP mark across Canada. However, given that his affidavit was signed in January 2006, that merely amounts to a statement that at least two thousand dollars were spent in 2005.

 

The QUIK FLIP mark was promoted in the Applicant’s 2005 catalogue; 11.3 million copies of this catalogue were distributed to customers in every province of Canada. In addition, QUIK FLIP wares were advertised in flyers, newspaper inserts and at point of sale. Examples of flyers from 2004 and 2005 have been provided as Exhibit “D”. The number of flyers and newspaper inserts distributed on a given occasion is similar to the number of catalogues distributed for that year.

 

The Mark was also promoted in a television commercial at the end of 2004 (Exhibit “E”).

 

Mr. Whitehouse notes that the Applicant’s Mark sometimes appears incorrectly in advertisements as QUICK FLIP. However, I am not particularly concerned by this since the use of QUICK FLIP would be held to qualify as use of QUIK FLIP pursuant to current jurisprudence [see e.g. Promafil Canada Ltée v. Munsingwear Inc. (1992), 44 C.P.R. (3d) 59, Alibi Roadhouse Inc. v. Grandma Lee’s International Holdings Ltd., 76 C.P.R. (3d) 326, and Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 C.P.R. (3d) 535].

 

As noted by Mr. Whitehouse, QUIK FLIP, not QUICK FLIP, appears on the product packaging.

 

Walo Affidavit

Ms. Walo is a trade-mark clerk with the firm that represents the Applicant. In late 2005 or early 2006, she conducted various searches aimed at locating marks containing the word QUICK, QUIK or KWIK for use in association with tools and related wares/services. Her results include the following:

1. approximately 30 websites that offered to sell such wares to Canadians;
2. 35 such marks on the Canadian trade-marks database.

 

I consider the most relevant marks located by Ms. Walo to include the following:

1. QUICKTOOL for manufacturing of specialized cutting tools
2. QUIKUT for hand tools, namely knives, blades, saws…
3. KWIK-PRO for drywall screws
4. QUICKMILL for milling machines and drilling machines
5. QUICK LOAD for welding torches
6. QUICKSAND for sander
7. QUICK-CHANGE for Blade-left MAG-SA kit
8. QUICK CLAMP for jig saw
9. QUIK-LOK cord for drill
10. QUICK RELEASE for cutters
11. QUICK-GRIP for clamps
12. QUICK-PACK for adapter plates
13. KWIK STEPPER for bits
14. KWIK STRIPPER for wire stripper
15. KWIK CYCLE for crimp tool
16. QUICKBLADE for utility knife
17. KWIK-TITE for ratchet wrenches

 

Fortier Affidavit

Mr. Fortier, a private investigator, located the following wares being offered for sale in Canada in November/December 2006:

•         DEWALT RAPID LOAD Quick Change Accessory System

•         BLACK & DECKER jigsaws featuring QUICK CLAMP for blade changes

•         BLACK & DECKER drill drivers with a QUICK CONNECT feature

•         QUICK-GRIP clamps and vices

•         QUICK-JAW clamps

•         QUICK RELEASE tubing cutter

•         QUICKSQUARE squares

•         QUICK TOOL custom-made cutters

•         KWIK-PRO products available at Home Depot

•         KWIK START drill bit sets

 

Terry Affidavit

Ms. Terry, a private investigator, provides a copy of a catalogue that she obtained in Canada on November 26, 2006 that advertises QUICK-CHANGE tap adapters.

 

Section 12(1)(d) grounds of opposition

The Opponent has pleaded that the Mark is not registrable within the meaning of s. 12(1)(d) of the Act because it is confusing with the following registered trade-marks, both individually and collectively as a family:

1. QUIK DRIVE registered under No. TMA455,959 for replaceable metal screwdriver bits for power screwdrivers; belts carrying collated fasteners for feeding to fastener installation power tools; metal screw collated in a plastic holding strip for feeding to power screwdriver; collated metal screws; metal screws; fastener installation power tools; power screw drivers and parts and attachments therefor
2. QUIKSTRIP registered under No. TMA513,984 for metal screws; metal screws collated in a plastic holding strap for feeding to power screwdrivers  
3. QD registered under No. TMA539,044 for power tools for fastener installation, namely, power screwdrivers and parts therefore; screwdriver attachments for power operated fastener installation tools; accessories for power fastener installation tools, namely, fastener magazines, screwdriver mandrels, replaceable metal screwdriver bits, and belts carrying collated fasteners; metal screws, collated metal screws, metal screws collated in a plastic holding strip for feeding to power screwdrivers
4. QD2000 registered under No. TMA481,523 for screwdriver attachments for power operated fastener installation tools; screwdriver attachments for driving fasteners collated in a holding strip
5. QUIKDRIVER registered under No. TMA612,070 for auto-feed screw driving tools; screwdriver attachments for power operated fastener installation tools; power tool accessories, namely, screwdriver attachments for driving fasteners collated in a holding strip; screwdriver attachments for power operated tools for the installation of threaded fasteners.

 

 

test for confusion

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.

 

In applying the test for confusion, the Registrar 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 each has 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.).]

 

preliminary issue: family of trade-marks

The Opponent has claimed that it has a family of trade-marks but this is not born out by the evidence. 

 

In order to rely on a family of trade-marks an opponent must prove use of each mark of the alleged family. [McDonald's Corp. v. Alberto-Culver Co. (1995), 61 C.P.R. (3d) 382 (T.M.O.B.); MacDonald’s Corporation v. Yogi Yogurt Ltd. (1982), 66 C.P.R. (2d) 101 (F.C.T.D.)] In addition, the presumption of the existence of a family is rebutted where there is evidence that the alleged family’s common feature is registered or used by others. [Thomas J. Lipton Inc. v. Fletcher’s Fine Foods Ltd. (1992), 44 C.P.R. (3d) 279 (T.M.O.B.) at 286-7; Canadian Olympic Association v. Techniquip Limited (1999), 3 C.P.R. (4^th) 219 (F.C.A.)]

 

The five registered marks of the Opponent do not successfully form a family. First of all, the marks QD and QD2000 differ substantially from the remaining three marks, QUIK DRIVE, QUIKSTRIP and QUIKDRIVER. Second, there is no evidence of use of QUIKDRIVER, only of QUIKSTRIP and QUICK DRIVE, and a family typically consists of more than two marks. I also note that the Opponent’s marks co-exist with another QUIK-prefixed mark on the register, namely QUIKUT for hand tools (registration No. TMA159,719).

 

Thus the benefit bestowed by the family of marks doctrine is not available to the Opponent.

 

assessment of s. 6(5) factors

As the Opponent’s position is strongest with respect to its QUIK DRIVE mark, I will assess the s. 6(5) factors having regard to that mark.

 

s. 6(5)(a) - inherent distinctiveness of the marks and the extent to which each has become known

Both marks are inherently weak because both QUIK FLIP and QUIK DRIVE are suggestive marks. QUIK indicates that the associated tools perform their tasks quickly. DRIVE is a reference to the function of a screwdriver. FLIP appears at first blush to be less suggestive, but when one sees the Applicant’s tool, it is apparent that FLIP refers to the tool’s ability to “flip” to exchange a drill bit with a screwdriver bit.

 

The Opponent has submitted that the unique spelling of QUIK in its mark increases its distinctiveness. I am not convinced of this both because “quik” is a phonetic equivalent of “quick” and the Opponent is not the only party who has chosen to misspell “quick” as “quik” in a trade-mark (see Ms. Walo’s evidence re QUIKUT and QUIK-LOK).

 

As of today’s date, both QUIK DRIVE and QUIK FLIP have become known to some extent.

 

The Applicant submits that QUIK DRIVE is not presently distinctive of the Opponent because there is no evidence that the Opponent has educated the public concerning its acquisition of QUIK DRIVE and no evidence that the Opponent’s name has been associated with QUIK DRIVE in the market.  In this regard, the Applicant relies upon Heintzman v. 751056 Ontario Ltd.  (1990), 34 C.P.R. (3d) 1 (F.C.T.D.) and Wilkinson Sword (Canada) Ltd. v. Juda (1966), 51 C.P.R. 55 (Ex. Ct.). Each of those cases concerned the expungement of a trade-mark registration on the basis that the mark was not distinctive of the current owner of the registration. In each case, the mark had been known for a long time to indicate a particular source/quality of wares. Following the assignment of the mark, the source/quality changed, without the public being informed of such change. In those circumstances, the court held that the registrations were invalid because the marks were not distinctive of the new owner. The present case is not very similar to those cited. In particular, I will note that the validity of the Opponent’s registrations is not at issue in an opposition.

 

However if, based on the Opponent’s failure to produce the Opponent’s own packaging, I am entitled to draw the negative inference that the Opponent has not continued to sell QUIK DRIVE wares, then the Applicant’s Mark might be more known than the Opponent’s mark as of today’s date. Alternatively, if the negative inference to be drawn is that subsequent to the assignment, the packaging referred to a party other than the assignee, then this would support a conclusion that the distinctiveness acquired by QUIK DRIVE through use/promotion by the assignor prior to October 14, 2004 has subsequently diminished because the associated goodwill has since October 14, 2004 enured to a party other than the assignee. Either inference has a negative impact on the extent to which the Opponent’s mark has become known as of today’s date.

 

s. 6(5)(b) - the length of time each mark has been in use

The Applicant’s evidence reveals that use of QUIK FLIP began at least as early as September 2004 whereas the Opponent’s evidence shows that QUIK DRIVE was in use in Canada by the Opponent’s predecessor-in-title, Quik Drive USA Inc., from at least 1988 to October 14, 2004.

 

s. 6(5)(c) and (d) - the nature of the wares, services or business; the nature of the trade

The parties’ wares are very similar and the Applicant has conceded that there may be an overlap in the channels of trade (paragraph 80, Applicant’s written argument). I do not consider the fact that the Opponent’s wares are power tools whereas the Applicant’s wares are hand tools to be a significant factor. (It is also noted that the Applicant’s statement of wares does not restrict the tools to exclude power tools.)

 

s. 6(5)(e) - the degree of resemblance between the marks in appearance or sound or in the ideas suggested by them

The marks resemble one another primarily because the first word of each mark is identical. Although the first component of a mark is often considered more important for the purpose of distinction, when a word is a common, descriptive or suggestive word, the significance of the first component decreases [see Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.); Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.); Phantom Industries Inc. v. Sara Lee Corp. (2000), 8 C.P.R. (4^th) 109 (T.M.O.B.)].

 

The differences between the words FLIP and DRIVE result in the marks differing somewhat in appearance, sound and idea suggested.

 

other surrounding circumstances

i) The Opponent’s use of another QUIK-prefixed mark, QUIKSTRIP, may be considered to be a further surrounding circumstance but given the sparse evidence of such use, I do not consider it to be significant.

 

ii) There is no evidence showing that the Opponent’s mark has been used in Canada subsequent to 2004.

 

iii) The Applicant has introduced evidence of various third party marks. The Opponent’s position is that only marks starting with QUIK (not any phonetic equivalent thereof) are relevant. I agree with the Opponent that the evidence regarding third party QUIK marks is insufficient to be meaningful. However, I do not agree that QUICK or KWIK marks are completely irrelevant.  Based on the evidence provided by the Applicant, I am prepared to conclude that the average Canadian purchaser/user of tools and related products would be used to seeing marks that begin with a phonetic equivalent of the word “quick” from a variety of sources, at least as of 2006.

 

iv) More than five million dollars worth of sales of QUIK FLIP tools occurred between September 2004 and December 31, 2005, without there being any evidence of confusion with QUIK DRIVE in the marketplace, despite the fact that Mr. Habermehl alleged that during the ten years preceding October 14, 2004, QUIK DRIVE products have been about 90% of the total Canadian market for power screwdriving tools, screw strips and bits. 

 

conclusion regarding likelihood of confusion

Having considered all of the surrounding circumstances, I find that there is not a reasonable likelihood of confusion between QUIK DRIVE and QUIK FLIP as of today’s date. My conclusion has been supported by the fact that “quick” in various forms is today a fairly common component of trade-marks in the parties’ general field.

 

As the Opponent’s position is no stronger with respect to its other marks, all of the s. 12(1)(d) grounds of opposition are dismissed.

 

Before proceeding, I will reproduce a comment that was relied upon by the Applicant and made by former Chairman Metcalfe in Societe des Produits Nestle S.A. v. Delmark Co. Inc.  (1979), 52 C.P.R. (2d) 114 at 118:

…the word “quick” in any form being an expression that is and must remain common to the trade, that is to say, open to the trade to use and cannot be permitted to become the subject of an extensive monopoly by any one trader.

[emphasis added]

 

Although this comment seems at first blush to strongly support the Applicant’s position, its application to the case at hand must be tempered by the differing facts that were before Chairman Metcalfe. In particular, the cited decision concerned an opposition by the owner of the trade-mark QUIK for instant flavoured powder for addition to milk against an application for the trade-mark DELMARK QUICK for dried-food mixes having as their principal components pasta, cereals or vegetables, to be used in making main-meal preparations. Chairman Metcalfe held that both parties’ wares were in the broad class of alimentary products but that their specific wares were unrelated. He also noted that the Opponent’s QUIK mark, although well known, had been limited to one single product and concluded that it was only entitled to an extremely narrow ambit of protection due to its lack of inherent distinctiveness. It is of course also to be noted that the component DELMARK has greater inherent distinctiveness than the present Applicant’s FLIP component, and that DELMARK, unlike FLIP, appears as the first and dominant portion of the applied-for mark. 

 

Section 16(3)(a) grounds of opposition

The Opponent has pleaded that the Applicant is not the person entitled to registration because QUIK FLIP was confusing as of April 7, 2004 with each of the five trade-marks listed under the s. 12(1)(d) grounds, individually and as a family, such marks having allegedly been previously used and made known in Canada by the Opponent and its predecessor-in-title, Quik Drive USA Inc., in association with wares covered by their respective registrations.

 

As set out earlier, I have already found that the Opponent cannot claim the benefit of a family of trade-marks.

 

Once again, I will focus my discussion on the Opponent’s QUIK DRIVE mark.

 

The evidential burden on the Opponent under the entitlement grounds of opposition is two-fold: 1.  the Opponent must demonstrate prior use or making known of its mark;

2. the Opponent must establish non-abandonment of its mark as of the date of advertisement of the Applicant’s application (s. 16(5)).

 

The Opponent has met the first arm of its initial evidential burden with respect to its QUIK DRIVE mark, as there is evidence that this mark was in use prior to April 7, 2004. However, has it established that use of such mark had not been abandoned as of November 7, 2004? The Applicant submitted in its written argument and at the oral hearing that the Opponent has not.

 

A finding of abandonment requires finding an intent to abandon [Dastous v. Mathews-Wells Co. Ltd., [1950] S.C.R. 261 at 275; Labatt Brewing Co. v. Molson Breweries Partnership (1992), 42 C.P.R. (3d) 481 (F.C.T.D.)]. It will be recalled that ownership of the marks changed hands on October 14, 2004, i.e. only weeks before advertisement of the application on November 7, 2004. The Opponent’s evidence regarding its activities as of November 7, 2004 comprises Mr. Habermehl’s sworn statements on May 3, 2005 that 1) the Opponent has continued to offer for sale and sold the QUIK DRIVE, QUIKSTRIP, QD and QD2000 products in Canada continuously since October 15, 2004 and 2) he has been retained by the new owner since October 14, 2004 to assist it in selling the QUIK DRIVE products in Canada. In the circumstances of this case, I am prepared to find that Mr. Habermehl’s second statement is sufficient evidence that the Opponent had not abandoned (or intended to abandon) QUIK DRIVE as of November 7, 2004. Accordingly, the Opponent has satisfied its initial burden under s. 16(5).

 

Distinctiveness ground of opposition

Disposition

Having been delegated by the Registrar of Trade-marks by virtue of s. 63(3) of the Act, I refuse the application pursuant to s. 38(8) of the Act.

 

 

DATED AT TORONTO, ONTARIO, THIS 6th DAY OF FEBRUARY 2009.

 

 

 

Jill W. Bradbury

Member

Trade-marks Opposition Board