IN THE MATTER OF AN OPPOSITION by
Les Systèmes Proxima Ltée/ Proxima Systems Ltd. to application No. 1,044,515
for the trade-mark PROXIMA
filed by InFocus Corporation
On January 28, 2000, the applicant, InFocus Corporation, filed an application to register the trade-mark PROXIMA based upon use of the trade-mark in Canada since at least as early as May 1989 in association with the following wares:
Projectors
that project images onto a viewing surface, and
accessories therefor, namely liquid crystal display (LCD) projection
panels; electronic meeting room systems, namely liquid crystal display
projection devices, and multimedia projectors, and optical mouse
emulating projector control apparatus storing, retrieving and
transmitting electronic data or images using electronic circuitry,
optics, software and/or firmware; portable multimedia projectors and
liquid crystal display projection devices, and optical computer mouse
emulating projector control apparatus for storing, retrieving and
transmitting electronic data or images using electronic circuitry, optics,
software, and/or firmware; portable and lightweight multimedia
projectors and liquid crystal display projection devices; light wand
software, enabling highlighted images to be formed on computer-projected
images; integrated liquid crystal display projectors for projecting multimedia
presentations, consisting of images from data, video and audio inputs; movie
projectors, home theatre systems and digital cinema systems, and accessories
related to them.
The application was advertised for opposition purposes in the Trade-marks Journal of November 10, 2001. On March 11, 2002, the opponent, Les Systèmes Proxima Ltée/Proxima Systems Ltd., filed a statement of opposition against the application. The applicant filed and served a counter statement, which denied each of the grounds of opposition.
Neither party filed evidence.
Only the applicant filed a written argument. The argument makes reference to various facts that are not in evidence and I have disregarded those portions of the written argument, with the exception of the dictionary definitions of which I may take judicial notice.
An oral hearing was not requested.
Grounds of Opposition
The grounds of opposition are summarized below:
1. The application does not conform with the requirements of subsection 30(i) of the Trade-marks Act in that the applicant could not have been satisfied that it was entitled to use the trade-mark in Canada in association with the wares.
2. The trade-mark is not registrable in that, contrary to paragraph 12(1)(d) of the Act, the mark is confusing with the trade-mark PROXIMA registered by the opponent under No. TMA 377,672.
3. Having regard to subsection 16(1) of the Act, “the applicant is not the person entitled to registration of the trade-mark because, at the date of filing of the application, the trade-mark was confusing inter alia, with” the registered trade-mark PROXIMA “which has been extensively used by the opponent and/or its licensees in Canada prior to the alleged date of first use” and “because [as] of the alleged date of first use, the trade-mark was confusing with the opponent’s trade-name Les Systèmes Proxima Ltée/Proxima Systems Ltd. which continues to be extensively used by the opponent in Canada.”
4. The trade-mark is not distinctive of the applicant within the meaning of section 2 of the Act because it does not distinguish nor is it adapted to distinguish the wares of the applicant from the wares or services of others and more particularly those of the opponent.
Onus
Although the applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act, there is an initial 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, 30 C.P.R. (3d) 293 at 298; Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.)]
Subsection 30(i) Ground of Opposition
The opponent’s first ground of opposition has not been sufficiently pleaded in that the opponent has not claimed that the applicant was aware of the opponent’s alleged prior rights. In any event, the opponent has not shown that the applicant was aware of the opponent’s registration and prior use of its trade-mark or to otherwise show that the applicant could not have been satisfied that it was entitled to use the applied for mark. The subsection 30(i) ground of opposition is therefore unsuccessful.
Paragraph 12(1)(d) Ground of Opposition
Although the opponent has not provided evidence of registration No. 377,672, the Registrar does have discretion to check the register in order to confirm the existence of this registration [see Quaker Oats of Canada Ltd./La Compagnie Quaker Oats du Canada Ltée v. Menu Foods Ltd. (1986), 11 C.P.R. (3d) 410 (T.M.O.B.)]. I have exercised this discretion and confirmed that registration No. 377,672 is in good standing.
The test for confusion is one of first impression and imperfect recollection. In applying the test for confusion set forth in subsection 6(2) of the Trade-marks Act, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in subsection 6(5) of the Act. Those factors specifically set out in subsection 6(5) are: the inherent distinctiveness of the marks and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; and the degree of resemblance in appearance or sound of the marks or in the ideas suggested by them. The weight to be given to each relevant factor may vary, depending on the circumstances [Clorox Co. v. Sears Canada Inc. 41 C.P.R. (3d) 483 (F.C.T.D.); Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 C.P.R. (3d) 308 (F.C.T.D.)]. The material date for assessing the likelihood of confusion under paragraph 12(1)(d) is the date of my decision [Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37 C.P.R. (3d) 413 (F.C.A.)].
The parties’ marks, being identical, have the same degree of inherent distinctiveness.
No evidence has been provided with respect to the extent to which either mark has become known.
According to the applicant’s application, it first used its PROXIMA mark at least as early as May 1989. According to the opponent’s registration, it first used its PROXIMA mark at least as early as April 1986.
The applicant’s statement of wares lists a variety of projectors and related equipment, including software, that clearly is for use in business presentations, although some of the wares are also intended for use in homes. The wares and services listed in the opponent’s registration are computer software and consulting services in information management; creation, development and marketing of management information systems; training of personnel; custom software development; after sales support. It is not clear what either party’s channels of trade are but presumably they could overlap to the extent that both target businesses as their clientele.
As the parties’ marks are identical, there is a 100% degree of resemblance between them.
The applicant has submitted in its written argument that the differences between the parties’ wares/services are sufficient to make confusion unlikely. However, I cannot agree that these differences are sufficient to satisfy the onus on the applicant given that none of the other subsection 6(5) factors favour the applicant. Moreover, as stated in Beverley Bedding & Upholstery Co. v. Regal Bedding & Upholstery Ltd. (1980), 47 C.P.R. (2d) 145 (F.C.T.D.) at 149, affirmed 60 C.P.R. (2d) 70, “Realistically appraised it is the degree of resemblance between trade marks in appearance, sound or in ideas suggested by them that is the most crucial factor, in most instances, and is the dominant factor and other factors play a subservient role in the over-all surrounding circumstances.”
I will add that I do not consider the lack of evidence of actual confusion to be persuasive in the present case because there is no evidence that the parties have used their marks to any great extent or in the same geographic area. I also note that there is no evidence that third parties have adopted any marks that would dilute the protection to be accorded to the opponent’s mark.
For the foregoing reasons, the paragraph 12(1)(d) ground of opposition succeeds.
Subsection 16(1) Ground of Opposition
The opponent has not filed any evidence to show prior use of its trade-mark or trade-name. Accordingly this ground is dismissed on the basis that the opponent has not met its initial evidential burden.
Distinctiveness Ground of Opposition
The opponent’s decision to not file evidence results in it not having satisfied its evidential burden with respect to this ground as well. This ground is therefore also dismissed.
Disposition
Having been delegated by the Registrar of Trade-marks by virtue of subsection 63(3) of the Trade-marks Act, I refuse the application pursuant to subsection 38(8) of the Act.
DATED AT TORONTO, ONTARIO, THIS 14th DAY OF SEPTEMBER 2005.
Jill W. Bradbury
Member
Trade-marks Opposition Board