IN THE MATTER OF AN OPPOSITION
by Unipac Corporation to application No.
1,136,651 for the trade-mark UNIPAC
filed by Unipac Embalagens Ltda.
[1] On April 5, 2002, the applicant, Unipac Embalagens Ltda. (“Unipac”), filed an application to register the trade-mark UNIPAC based on use and registration of the mark in Brazil in association with “packing materials namely, plastic films for wrapping food products.” The application was advertised for opposition purposes on June 2, 2004. The statement of wares was subsequently amended on two occasions and now reads as follows:
plastic films for forming plastic shrink packaging bags and plastic casings for use in the meat processing industry for wrapping fresh and frozen meat products, specifically excluding use of the shrink packaging bags and plastic casings in the packaging industry in conjunction with bottle caps, container lids, inner seals or seal liners for containers.
[2] The opponent, Unipac Corporation, filed a statement of opposition on November 2, 2004, a copy of which was forwarded to the applicant on December 2, 2004. The first ground of opposition is that the applicant’s trade-mark is not registrable pursuant to Section 12(1)(d) of the Trade-marks Act because it is confusing with the opponent’s trade-mark UNIPAC registered under No. 339,069 for “lining material for bottle caps and other container lids.”
[3] The second ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(2)(a) of the Act because, as of the applicant’s filing date, the applied for trade-mark was confusing with the mark UNIPAC previously used by the opponent in Canada with the wares noted above. The third ground is one of prior entitlement based on Section 16(2)(b) of the Act and the opponent’s application for the trade-mark UNIPAC previously filed on February 16, 1987. The fourth ground is one of prior entitlement based on Section 16(2)(c) of the Act and the opponent’s alleged prior use of its trade-name Unipac Corporation. The fifth ground alleges that the applied for mark UNIPAC is not distinctive of the applicant’s wares.
[4] The applicant filed and served a counter statement on December 31, 2004. The opponent’s evidence consists of the affidavit of Andrea Slane, which serves to introduce into evidence a certified copy of registration No. 339,069, and an affidavit of Robert W. Finlay. The applicant’s evidence comprises an affidavit of Paulo Beolchi Rios. Both parties filed a written argument and an oral hearing was held on November 5, 2009 at which only the applicant was represented.
Opponent’s Evidence
[5] In his affidavit, Mr. Finlay identifies himself as the Assistant Controller for Unipac, a division of ITW Canada, a limited partnership (“ITW Canada”). According to Mr. Finlay, the opponent Unipac Corporation was incorporated in 1995. The mark UNIPAC was assigned from Insulec Ltd. to the opponent in 1996. The opponent was acquired by Illinois Tool Works in 1998 and transferred its material assets to ITW Canada in 2000. According to Mr. Finlay, the opponent retained its intellectual property and has licensed ITW Canada to use the trade-mark UNIPAC since January 1, 2000. However, Mr. Finlay did not clearly evidence any such licensing arrangement nor did he evidence properly licensed use of the mark UNIPAC by ITW Canada.
[6] The opponent is a leading supplier of induction foil laminates and cap seals for the closure lining industry. Its UNIPAC foil seals are used by most major food and pharmaceutical manufacturers. The opponent’s mark UNIPAC identifies closure lining products made of pulp, metal foil, synthetics and plastics. The products are used by the opponent’s customers to make inner seals, seal liners and foam seals for bottles and containers. The products are sold to packaging companies who in turn provide packaging solutions to the food, pharmaceutical, cosmetic and household products industries.
[7] The opponent has been using its mark since about January of 1988. The evidence also shows that customers would have made purchases of the opponent’s products from companies with various business names which include the word “Unipac” such as Unipac, A Division of Insulec Ltd.; Cap-Seal Unipac; Unipac Corporation and Unipac, an ITW Company.
[8] The opponent’s customers in turn provide plastic closures and containers to the dairy, juice and food industries. They also provide glass and plastic containers and packaging to the following industries: food and beverage; beer, wine and spirits; household, automotive and chemical products; personal care and cosmetics; and prescription medication. They also manufacture flexible packaging for food products made of film, foil and paper materials as well as plastic film overwraps. Attached to Mr. Finlay’s affidavit are several exhibits showing uses of the “Unipac” trade-names noted above and one example (Exhibit F to his affidavit) of use of the opponent’s mark UNIPAC.
[9] Annual revenues for UNIPAC products were about $25 million in 1996, $41 million in 1997 and thereafter increased steadily to average $58 million in 2003 and 2004. Mr. Finlay did not provide annual revenue figures specific to sales in Canada and the only invoices appearing in Exhibit E to his affidavit are for foreign sales. Thus, it is difficult to conclude that there have been any significant sales to Canadian-based customers. Further, Unipac Corporation has not used the mark UNIPAC itself since at least January of 2000 and, as noted, there is no evidence of properly licensed use of the mark by others since that date.
Applicant’s Evidence
[10] In his affidavit, Mr. Rios identifies himself as Coordinator for Technologies of Unipac. Since the filing of the application, the applicant Unipac has begun to use the mark in Canada in association with plastic shrink packaging bags for the meat processing industry. Sales to Canadian customers in the meat processing industry for the years 2004 and 2005 were about $26,000 (USD) and were forecast to be $75,000 (USD) for 2006. The applicant’s products are designed to provide oxygen and/or moisture barrier properties for packaged meat products. According to Mr. Rios, the applicant’s packaging materials are sold either as a seamless tubular product or as pouches or bags. The applicant’s products have never been used as a sealant or lining material for containers or as liners for container closures.
[11] As noted by Mr. Rios, the source of his company’s packaging material is not known to the end consumer since its packaging products become part of the total meat product produced for eventual retail purchase. In paragraph 18 of this affidavit, Mr. Rios states as follows:
18. Unipac and Unipac Corporation sell their respective UNIPAC products in different markets and therefore are not competitors in the marketplace as Unipac sells its plastic shrink packaging bags and plastic castings [sic] to company’s [sic] in the meat processing industry in Canada and in the United States of America and, as noted by Mr. Finlay in his affidavit, Unipac Corporation’s UNIPAC products are largely sold to customers in the packaging industry.
Grounds of Opposition
[12] At the oral hearing, the agent for the applicant noted that, since the exchange of the parties’ written arguments, registration No. 339,069 has been assigned. In accordance with the decision in Quaker Oats of Canada Ltd. v. Menu Foods Ltd. (1986), 11 C.P.R.(3d) 410 (T.M.O.B.), I exercised my discretion to check the trade-marks register and confirmed that the current owner of record is Walrus Acquisition Subsidiary Canada ULC. However, no request was made to change the opponent in this proceeding which may suggest a lack of interest on the part of the past or current owner of the registered mark in pursuing this opposition.
[13] Initially, it should be noted that the third ground based on Section 16(2)(b) of the Act is invalid as the opponent’s application was not pending as of the applicant’s advertisement date ( i.e. - June 2, 2004) as required by Section 16(4) of the Act. In fact, that application issued to registration under No. 339,069 on April 8, 1988. Thus, the third ground is unsuccessful.
[14] As for the first ground of opposition, the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark is the date of my decision: see the decision in Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R.(3d) 538 at 541-542 (T.M.O.B.). Furthermore, the onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Finally, in applying the test for confusion set forth in Section 6(2) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set forth in Section 6(5) of the Act.
[15] As for Section 6(5)(a) of the Act, although the term UNIPAC is a coined word, it nevertheless possesses a relatively low degree of inherent distinctiveness because it is suggestive of “a unitary package” - i.e. - one that does not leak. Mr. Finlay’s evidence is rather scant as to how the opponent’s mark is used in association with its wares. Only one example of use of the mark UNIPAC for a single product is evidenced (see Exhibit F to the Finlay affidavit).
[16] As noted above, Mr. Finlay failed to provide sales figures specific to Canada. Furthermore, he failed to evidence licensed use of the opponent’s mark UNIPAC by its purported licensees. Thus, based on the evidence of record, I am not prepared to find that the opponent has established any more than a minimal reputation for its mark UNIPAC in Canada.
[17] As with the opponent’s registered mark, the applicant’s mark UNIPAC is a coined word but is not an inherently strong mark when used with the applicant’s wares. Based on the Rios affidavit, I find that the applicant’s mark began to acquire at least a minimal reputation in Canada beginning in 2004 when the applicant commenced use of its mark in this country.
[18] As for Section 6(5)(b) of the Act, the length of time that the marks in issue have been in use favors the opponent as its use of the mark UNIPAC dates back to 1988 while the applicant’s use of its mark commenced in 2004. However, as there is little evidence indicating the extent of use of the opponent’s mark in Canada, the length of time that the marks have been in use is a not a significant factor in this case.
[19] As for Sections 6(5)(c) and 6(5)(d) of the Act, it is the applicant’s statement of wares in its application and the opponent’s statement of wares in registration No. 339,069 that govern: see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R.(3d) 3 at 10-11 (F.C.A.), Henkel Kommanditgesellschaft v. Super Dragon (1986), 12 C.P.R.(3d) 110 at 112 (F.C.A.) and Miss Universe, Inc. v. Dale Bohna (1994), 58 C.P.R.(3d) 381 at 390-392 (F.C.A.). However, those statements must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording. In this regard, evidence of the actual trades of the parties is useful: see the decision in McDonald’s Corporation v. Coffee Hut Stores Ltd. (1996), 68 C.P.R.(3d) 168 at 169 (F.C.A.).
[20] As submitted by the opponent, the wares of both parties can be broadly classified as relating to the packaging industry. However, it appears that the parties operate in distinct, specialized areas of that industry. The opponent sells its lining materials to packaging companies which use them to manufacture bottle caps and container lids. Those products are in turn sold to companies in different industries to package their goods. As noted by the applicant, those latter companies are not the opponent’s customers (see paragraph 39 of the applicant’s written argument).
[21] The applicant’s product, on the other hand, is used solely in the meat processing industry. Its product is used to encase or shrinkwrap meat products and is used by meat packing companies. Meat packing companies and container manufacturing companies engage in separate and distinct areas of commerce and, in the absence of evidence on point, there would appear to be no overlap in their respective trades.
[22] Further, as noted by the applicant, the parties’ wares are not sold to the average retail consumer but to sophisticated purchasers with specialized knowledge and very specific task requirements (see paragraph 41 of the applicant’s written argument). This circumstance requires the purchaser to carefully consider each product before purchasing it and lessens the likelihood of confusion as to the source of the product.
[23] As for Section 6(5)(e) of the Act, the marks of the parties are identical in all respects.
[24] As an additional surrounding circumstance, I have considered that there has been contemporaneous use of the two marks in the United States without any evidence of actual confusion. However, since the evidence of such contemporaneous use is limited and since it took place in another country, I have not given great weight to this circumstance.
[25] In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my conclusions above, and particularly in view of the differences between the wares and trades of the parties and the limited reputation in Canada for the opponent’s mark and notwithstanding the identity between the marks at issue, I find that the applicant has satisfied the onus on it to show no reasonable likelihood of confusion between its mark and the registered mark UNIPAC. Thus, the first ground is unsuccessful.
[26] As for the second ground of opposition, there was an initial burden on the opponent to
evidence use of its mark UNIPAC prior to the applicant’s filing date and non-abandonment of that mark as of the applicant’s advertisement date. Although the Finlay affidavit appears to evidence prior use of the opponent’s mark, it is far from clear that it also evidences non-abandonment of that mark by the opponent. That is not to say that the mark is not in use; rather the opponent has failed to clearly evidence properly licensed use of the mark by others within the meaning of Section 50 of the Act. Since January of 2000, the opponent was merely a holding company for intellectual property rights and allegedly licensed the right to use the mark UNIPAC to others. Since it failed to clearly evidence such licensed use, any such use by purported licensees does not enure to its benefit and, if anything, undermines the distinctiveness of the mark in the opponent’s hands. The opponent has therefore failed to establish continuous use by it of the mark UNIPAC which would show non-abandonment as of the applicant’s advertisement date. Thus, the second ground is also unsuccessful.
[27] With respect to the fourth ground of opposition based on Section 16(2)(c) of the Act and prior use of the opponent’s trade-name Unipac Corporation, the applicant argues that the opponent has not established that it had not abandoned use of that trade-name as of the date of advertisement of the applied for mark (i.e. - June 2, 2004) as required by Section 16(5) of the Act. As noted by the applicant in its written argument, there is no evidence to show that the trade-name Unipac Corporation was used after September 28, 1998 - i.e. - after the opponent was acquired by Illinois Tool Works Inc. Rather, the exhibit material attached to Mr. Finlay’s affidavit shows use of the trade-name “Unipac, an ITW Company” after September, 1998. Furthermore, there is insufficient evidence to establish proper licensing of any such trade-name. In any event, as noted by the applicant, Section 50 of the Act does not provide for licensed use of a trade-name that would enure to the trade-name owner’s benefit. Thus, I agree with the applicant that the opponent has not met the legal burden on it to establish that the opponent did not abandon its trade-name and therefore the fourth ground of opposition is also unsuccessful.
[28] As for the fifth ground of opposition, the onus or legal burden is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its wares from those of others throughout Canada: see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (T.M.O.B.). Furthermore, the material time for considering the circumstances respecting this issue is as of the filing of the opposition (i.e. - November 2, 2004): see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.). Finally, there is an evidential burden on the opponent to prove the allegations of fact in support of its ground of non-distinctiveness.
[29] As noted by the applicant, the opponent did not include any supporting allegations of fact for its fifth ground. Thus, in accordance with the decision in Benson & Hedges (Canada) Ltd. v. Imasco Ltd. (1976), 25 C.P.R.(2d) 269 at 272 (F.C.T.D.), the opponent’s fifth ground is not in compliance with Section 38(3)(a) of the Act and is therefore unsuccessful on that count alone. If, however, I am incorrect in that conclusion and the allegations of confusion from the previous grounds can be read into the fifth ground, it would nevertheless have been unsuccessful since my conclusions respecting the first ground are, for the most part, applicable here as well.
[30] In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I reject the opponent’s opposition.
DATED AT GATINEAU, QUEBEC, THIS 13th DAY OF NOVEMBER, 2009.
David J. Martin,
Member,
Trade Marks Opposition Board.