IN THE MATTER OF AN OPPOSITION by Adaptek Systems Inc. to application No. 688,924 for the trade-mark ADAPTEC filed by Adaptec, Inc.
On September 3, 1991, the applicant, Adaptec, Inc. filed an application to register the trade-mark ADAPTEC based upon proposed use of the trade-mark in Canada in association with:
"INTEGRATED CIRCUITS, PRINTED CIRCUIT BOARDS, AND COMPUTER PERIPHERAL EQUIPMENT, NAMELY COMPUTER CONTROL UNITS AND SOFTWARE USED FOR INTERFACING BETWEEN COMPUTERS, OPERATING SYSTEMS AND PERIPHERALS"
The applicant claimed and was accorded a priority filing date of March 20, 1991 based on an application for registration of the trade-mark ADAPTEC filed in the United States of America under Serial No. 149,717.
The opponent, Adaptek Systems Inc., filed a statement of opposition on August 18, 1992 which was amended by the opponent in response to objections raised in an Office letter dated September 21, 1992. In its revised statement of opposition, the opponent alleged the following grounds of opposition:
(a) The applicant's application does not comply with Section 30 of the Trade-marks Act as the applicant could not have been satisfied that it was entitled to use the trade-mark ADAPTEC in Canada in that, as of its date of adoption, the applicant knew of the prior use of ADAPTEK as a trade-mark and trade-name by the opponent in association with the operation of a business involving the installation, maintenance and distribution of software programs, systems and hardware including consulting services generally;
(b) The applicant is not the person entitled to registration of the trade-mark ADAPTEC in that the applicant's trade-mark was confusing with the opponent's trade-mark ADAPTEK which had been used or made known in Canada by the opponent and with the opponent's trade-name Adaptek Systems Inc. for services associated with the operation of a business involving the installation, maintenance and distribution of software programs, systems and hardware including consulting services generally;
(c) The applicant's trade-mark is not distinctive in that the trade-mark ADAPTEC does not actually distinguish the applicant's wares or is not adapted so as to distinguish them from the wares and/or services of others, including the services of the opponent.
The applicant served and filed a counter statement in which it effectively denied the allegations set forth in the statement of opposition.
The opponent filed as its evidence the affidavit of Daniel Beauchamp while the applicant elected not to file any evidence.
Both parties filed a written argument and an oral hearing was not requested by either party.
While the legal burden is upon the applicant to show that its application complies with Section 30 of the Trade-marks Act, there is an initial evidential burden on the opponent in respect of its Section 30 ground (see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330). To meet the evidential burden upon it in relation of 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. As no evidence has been filed by the opponent to show that the applicant knew of the opponent's trade-mark ADAPTEK or trade-name Adaptek Systems Inc. as of the applicant's priority filing date, the opponent has failed to meet the evidential burden upon it in respect of this ground. I have therefore rejected the Section 30 ground of opposition.
As its second ground, the opponent has alleged that the applicant is not the person entitled to registration of the trade-mark ADAPTEC in view of the prior use and prior making known by the opponent of its trade-mark ADAPTEK and trade-name Adaptek Systems Inc. With respect to the grounds of opposition based on Sections 16(3)(a) and (c) of the Trade-marks Act, there is a burden on the opponent in view of the provisions of Sections 16(5) and 17(1) of the Act to establish its prior use and prior making known of its trade-mark ADAPTEK and trade-name Adaptek Systems Inc. as of the applicant's priority filing date [March 20, 1991], as well as to show that it had not abandoned its trade-mark and trade-name in Canada as of the date of advertisement of the applicant's application in the Trade-marks Journal [March 25, 1992].
With respect to the burden upon it, the opponent has adduced the affidavit of Daniel Beauchamp, President of Adaptek Systems Inc. Paragraphs 2 and 8 of the Beauchamp affidavit are conclusions of law with respect to the opponent's alleged use of its trade-mark and trade-name in Canada. Further, paragraph 3 and Exhibit "A" are of no assistance to the opponent insofar as showing that it has either used or made known its trade-mark ADAPTEK or trade-name Adaptek Systems Inc. in Canada. Further, the remaining paragraphs are silent as to the manner in which the opponent has used either its trade-mark ADAPTEK or trade-name Adaptek Systems Inc. in this country in association with the services provided by the opponent to its customers. In this regard, the opponent has not provided any invoices, letterhead, sales brochures, advertising or promotional materials which would show the manner in which the opponent has used its trade-name Adaptek Systems Inc. or its trade-mark ADAPTEK within the scope of Section 4(2) of the Trade-marks Act. Indeed, the opponent has provided nothing which would point to the manner in which its trade-mark or trade-name would be brought to the attention of its customers or potential customers in Canada.
In view of the above, I have concluded that the opponent has failed to meet the burden upon it under Sections 16(5) and 17(1) of the Trade-marks Act of establishing either its prior user or prior making known of its trade-mark and trade-name relied upon in its revised statement of opposition. I have therefore dismissed the Section 16(3) grounds of opposition.
The third ground relates to the alleged non-distinctiveness of the applicant's trade-mark. While the legal burden is on the applicant to establish the distinctiveness of its trade-mark ADAPTEC, there is an evidential burden on the opponent to adduce sufficient evidence which, if believed, would support the truth of its allegations relating to the alleged non-distinctiveness of the applicant's mark. As the opponent did not file any evidence relating to the manner in which it has used or has otherwise brought its trade-mark ADAPTEK and trade-name Adaptek Systems Inc. to the attention of consumers in Canada, I have concluded that the opponent has failed to meet the evidential burden on it in respect of its non-distinctiveness ground. I have therefore rejected this ground of opposition.
In view of the above, I reject the opponent's opposition pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 28th DAY OFFEBRUARY1995.
G.W.Partington,
Chairman,
Trade Marks Opposition Board.