IN THE MATTER OF AN OPPOSITION
by Ronald A. McIntosh to application
no. 768,702 for the trade-mark SCAN-IT filed
by La-Co Industries Inc.
On November 16, 1994, the applicant, La-Co Industries Inc., filed an application to register the mark SCAN-IT for
(1) fluorescent markers, based on use in Canada since at least as early as August 1990, and for (2) fluorescent marking crayons based on use and registration of the mark, under no.1,614,863, in the United States of America.
The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated May 3, 1993 and was opposed by Ronald A. McIntosh on October 3, 1995. A copy of the statement of opposition was forwarded to the applicant on October 17, 1995. The applicant responded by filing and serving a counter statement.
The first ground of opposition alleges that the subject application is not in compliance with Section 30 of the Trade-marks Act because (a) the application does not describe the subject wares in ordinary commercial terms, (b) the applicant has not used the mark SCAN-IT in Canada since the date alleged, “or in the manner alleged, or in association with the alleged wares . . . ., ” (c) the application does not identify the present applicant’s predecessors in title, (d) the subject mark “as advertised is not an accurate representation of any mark actually used by the applicant,” and (e) the applicant could not have been satisfied that it was entitled to use the mark SCAN-IT in Canada because the applicant knew that its mark was not distinctive in view of “prior rights of the opponent and other parties in one or more confusingly similar marks and trade-names . . .”
The second ground of opposition is pleaded so vaguely that I am unable to determine if it raises a substantial issue for decision. Accordingly, the second ground is rejected under subsection 38(4) of the Act. The third ground of opposition alleges that the applicant is not the person entitled to register the mark SCAN-IT because it is confusing with the mark SCAN-ALL previously used or made known in Canada in association with marking crayons, and confusing with the trade-name Scan-All Industrial Products. I would note that the third ground is deficient in not identifying the person who allegedly used the mark SCAN-IT, although the inference might be that it was used by Scan-All Industrial Products (there are some indications in the file record, but not in evidence, that the applicant does business as Scan-All Industrial Products). The fourth ground alleges that the mark SCAN-IT is not distinctive of the applicant’s wares in view of the above allegations, and also for the reason that the mark SCAN-IT is “descriptive.” Presumably, the opponent intended to plead that the mark SCAN-IT is clearly descriptive of the applicant’s wares as proscribed by Paragraph 12(1)(b) of the Act. In any event, the applicant’s counter statement does not take issue with any possible shortcomings in the opponent’s pleadings which I am therefore treating (aside from the second ground) as mere technical deficiencies.
The opponent requested, and was granted, a six months extension of time to submit its evidence. However, the opponent defaulted in meeting its due date and the Board issued a notice advising that the opposition was deemed withdrawn pursuant to subsection 38(7.1) of the Act. Nevertheless, the opponent was subsequently granted its request for a retroactive extension of time (and the aforementioned Board notice was withdrawn) to file a statement that it would not be submitting evidence in chief: see the Board ruling dated September 18, 1996. The applicant then advised the Board that it would not be filing evidence since the applicant filed no evidence. Both parties filed a written argument and both were represented at an oral hearing.
About one week prior to the oral hearing, the opponent requested leave to file additional evidence namely, the affidavit of Marie Capewell and exhibits thereto. The Board followed its usual practice by requesting the applicant’s written submissions; not surprisingly, the applicant objected to the opponent’s request. As set out in the Practice Notice -Procedure before the Trade-marks Opposition Board, leave to file additional evidence will only be granted if the Board is satisfied that it is in the interests of justice to do so having regard to all the surrounding circumstances including (a) the stage the opposition proceeding has reached, (b) why the evidence not filed earlier, (c) the importance of the evidence, and (d) the prejudice which will be suffered by the other party. In the instant case, the additional evidence was filed at a very late stage, that is, shortly before the oral hearing. The opponent has not offered a satisfactory or credible explanation of why the evidence was not filed earlier on. The evidence itself is of little probative value due to its hearsay nature. In this respect, the purpose of the proposed evidence is to introduce, via exhibits, copies of extracts from the file history for the trade-mark SCAN-IT, registration no.1,614,863, found in the United States Patent & Trademark Office. However, the affiant Marie Capewell did not personally attend at the U.S.P.T.O to locate the file nor to take copies. I am therefore unable to rely on the exhibit material attached to her affidavit. Finally, the applicant would be prejudiced in terms of significantly delaying a final resolution of this matter if the proposed evidence was accepted. In this respect, the applicant would have to consider submitting evidence in response, cross-examining Ms. Capewell and resubmitting a written argument. After hearing further oral submissions from the parties at the commencement of the oral hearing, I refused the opponent’s request to file additional evidence.
There is an initial evidential burden on the opponent in respect of each of the grounds of opposition pleaded even though the legal burden is upon the applicant to establish that its application complies with the provisions of Section 30, that it is entitled to registration, and that the applied for mark is distinctive. To meet the evidential burden upon it in relation to a particular issue, the opponent must adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support that issue exist. Further, the evidential burden is lighter respecting the issue of non-compliance with Section 30 of the Act: see John Labatt Limited v. The Molson Companies Limited, 30 C.P.R. (3d) 293, at p. 298 (F.C.T.D.) and see Tune Masters v. Mr. P's Mastertune, 10 C.P.R.(3d) 84, at p. 89 (TMOB).
In the instant case, the opponent has failed to meet its evidential burden in respect of all of the grounds of opposition pleaded, except for the ground alleging that the mark SCAN-IT is clearly descriptive of the applicant’s wares. In the latter case, an opponent need not necessarily adduce evidence when the opponent's legal argument may be based entirely on the ordinary meaning of words. The issue of whether a mark is clearly descriptive is to be decided from the point of view of an everyday user of the wares considering the mark in its entirety, as opposed to carefully analysing and dissecting the mark into its component parts, and as a matter of first impression The material time for considering the circumstances respecting a ground of opposition based on Section 12(1)(b) is as of the date of my decision: see Wool Bureau of Canada Ltd. v. Registrar of Trade-marks (1978), 40 C.P.R. (2d) 25 at 27-28 (F.C.T.D.), Atlantic Promotions Inc. v. Registrar of Trade-marks (1984), 2 C.P.R. (3d) 183 at 188 (F.C.T.D.), Lubrication Engineers, Inc. v. The Canadian Council of Professional Engineers (1992) 41 C.P.R.(3d) 234 (F.C.A.).
I do not find much merit in the contention that the phrase SCAN-IT is clearly descriptive of the applicant’s wares. At best, the phrase SCAN-IT may be suggestive of a manner of reading or inspecting, but not of a utensil employed to write or to highlight passages while reading.
In view of the foregoing, the opponent’s opposition is rejected.
DATED AT HULL, QUEBEC, THIS 31st DAY OF MARCH, 1998.
Myer Herzig,
Member,
Trade-marks Opposition Board