IN THE MATTER OF AN OPPOSITION by
Express File, Inc. to application no. 797,808
for the trade-mark EXPRESS FILE H&R BLOCK
in the name of HRB Royalty, Inc. __
On November 21, 1995, HRB Royalty, Inc., the applicant, filed an application to register the trade-mark EXPRESS FILE H&R BLOCK based upon proposed use of the trade-mark in Canada in association with the electronic filing of tax returns. The application was advertised for opposition purposes in the Trade-marks Journal of July 17, 1996. Express File, Inc., the opponent, filed a statement of opposition on December 17, 1996. The applicant filed its counter statement on March 6, 1997.
The opponent filed as its evidence the affidavits of Gary Porter and Joseph Grano, Jr. As its evidence, the applicant filed the affidavit of Peter Premachuk. Although the opponent obtained an order for the cross-examination of Mr. Premachuk on his affidavit, it did not proceed with the cross-examination.
Each party filed a written argument and was represented at an oral hearing.
The statement of opposition pleads that the applied for mark is not registrable and the applicant is not the person entitled to register the mark because the mark is confusing with the trade-mark and trade-name EXPRESS FILE that the opponent previously used and made known in Canada within the meaning of Section 5 of the Trade-marks Act in association with electronic tax filing services. These are grounds of opposition under Paragraphs 16 (3)(a) and (c) of the Act.
Although the opponent refers to its application No. 821,115 for EXPRESS FILE and Paragraph 16(3)(b), a ground of opposition based on Paragraph 16(3)(b) requires that the opponent's application have been filed prior to the applicant's application. As application No. 821,115 was filed after November 21, 1995, there is no valid Paragraph 16(3)(b) ground of opposition.
The opponent has also pleaded that the applicant has not complied with Subsection 30(i) of the Act because it could not have been satisfied that it was entitled to use the mark because it was "well aware of the existence of the opponent and the use and notoriety of its mark and trade-name in Canada" prior to the filing of this application. As there is no evidence that the applicant was aware of the opponent or its activities when it filed its application, the opponent has not met its evidential burden with respect to this ground of opposition. I therefore dismiss the Subsection 30(i) ground of opposition.
The next ground of opposition is that the applicant's mark is not distinctive of the applicant for the reasons already raised.
The final ground of opposition is based on Subsection 30(e) of the Act, the opponent pleading that the applicant has never had any intention to use the mark. The opponent has not filed any evidence concerning this ground and has made no submissions concerning it in either its written or oral arguments. Moreover, the applicant's evidence does show that the applied-for mark has been used in Canada. Accordingly, I dismiss the Subsection 30(e) ground of opposition.
Mr. Porter, the President of the opponent, provides "representative samples of brochures advertising EXPRESS FILE electronic tax filing services that are offered in the U.S. by various controlled licensees to both American and Canadian citizens who file tax returns in the United States." I reproduce below paragraphs 4, 5, 8 and 9 of Mr. Porter's affidavit, which relate to the issue of the promotion and use of EXPRESS FILE services with respect to Canadian residents.
Mr. Porter provides copies of various promotional materials as well as newspaper and newsletter ads. Some of the promotional materials only bear the name of a bank and we have not been provided with any information concerning when or where the ads were placed.
He also provides expenditure figures with respect to advertising the EXPRESS FILE service and net sales for the EXPRESS FILE service but gives no indication as to what proportion, if any, is attributable to Canada.
Mr. Grano was "directly responsible for instituting and establishing the Express File program" at Manufacturers and Traders Trust Company (the "Bank") in Buffalo, New York in 1991. From 1992 to 1995, he was the Branch Manager at two of the Bank's offices in New York. Mr. Grano states that the Bank was licensed by the opponent to provide electronic tax filing system services in association with the trade-mark EXPRESS FILE, but gives no further details such as when the licence was in place or the means by which Express File, Inc. controlled its licensee's use.
Mr. Grano attests that the Bank has branches in the upper New York State area, some of which are within minutes of the Canadian border and that, in his Bank capacities, he was personally aware of some customers who resided in Canada and maintained accounts in the U.S. He does not however state when, during his tenure, he was aware of such Canadian resident customers and it is possible that it was after the filing of the applicant's application.
He states that the Bank advertised the opponent's EXPRESS FILE services by sending information to the Bank's customers, including those located in Canada. Although he states that over 250,000 promotions were mailed to customers in January 1992, there is no indication as to how many, if any, were sent to Canadian addresses. He states that the EXPRESS FILE services were for making tax filings with the IRS and that Canadian customers were invited to either bring their completed tax filing kits back to the Bank or to mail the kits directly to the Bank's office.
Mr. Premachuk is the Assistant Vice-President of H & R Block Canada, Inc. He states that H & R Block Canada, Inc. is a controlled licensee of the applicant. He provides certified copies of five Canadian trade-mark registrations owned by the applicant for trade-marks that he refers to as consisting of the applicant's house mark "H&R BLOCK". Each of these identifies H & R Block Canada, Inc. as a registered user.
Mr. Premachuk provides representative advertisements and promotional materials that bear the applicant's "H&R BLOCK" mark and discusses how many tax returns have been filed by his company and where the applicant's tax return preparation services are offered across Canada. As Exhibit "G", he provides "representative samples of promotional materials bearing the Subject Mark, advertising and promoting income tax return preparation services that are offered in Canada". He states that the applicant has commenced use of EXPRESS FILE since January 1996.
The outstanding grounds of opposition turn on the issue of the likelihood of confusion between the EXPRESS FILE H&R BLOCK proposed-use trade-mark and the previously used or made known trade-mark or trade-name EXPRESS FILE. There is of course an evidential burden on the opponent to establish that it had previously used or made known EXPRESS FILE in Canada.
At the oral hearing, the debate centered on whether the opponent used its trade-mark in Canada in association with its services by advertising its mark in materials sent into Canada and by offering to perform the services if its kit was returned to it. The best evidence that we have concerning whether such occurred prior to the material date of November 21, 1995 is Mr. Porter's statement in paragraph 4 that EXPRESS FILE promotional materials have been sent to Canadians since at least as early as January 31, 1992 and his provision as Exhibit "E" of electronic filing kits that he says were used and made available in Canada and the United States to American and Canadian residents and citizens in 1992. Although on its face, this statement seems clear, in paragraph 9, Mr. Porter states, "I estimate from discussions with the financial institutions that Express File, Inc. deals with, and do verily believe, that approximately 200 financial institution locations that have signed with Express File, Inc. have Canadian depositors that have had EXPRESS FILE promotional material mailed to them in Canada encouraging them to use the EXPRESS FILE service." Clearly that statement is hearsay. When combined with the statement in paragraph 5 that it is "not possible to identify with precision Canadian 'residents' who have used and use the EXPRESS FILE electronic filing service" and the somewhat ambiguous statement from Mr. Grano as to when he was personally aware of the Bank having Canadian resident customers, I must question the reliability of Mr. Porter's statement concerning the timing of any activities with respect to Canadian residents.
If I were to accept that the opponent's services were advertised in association with its trade-mark in Canada prior to November 21, 1995, the opponent would then have to establish that its services were either performed in Canada or were available to be performed in Canada prior to such date [see Wenward (Canada) Ltd. v. Dynaturf Co., 28 C.P.R. (2d) 20] .
As we do not have any evidence showing that any Canadian residents actually used the opponent's services, the question becomes whether the services were available to be performed in Canada. I conclude that they were not. True, someone in Canada was able to order the services from Canada, but the services would not then have been performed in Canada. Clearly, the opponent electronically files tax returns in the United States, not in Canada. A Canadian resident may instruct a U.S. bank to electronically file his/her tax return but all of the services are done in the United States, not Canada. The evidence suggests that the bank itself does not do the filing but rather acts as a drop-off point, within the United States, for the completed kits that are used to employ the opponent's electronic tax filing services. It is noted that Canadian residents must use an American address in order to avail themselves of the opponent's services.
The present case is not like the situation in Wenward, but approaches more the situation in Porter v. Don the Beachcomber, 48 C.P.R. 280. To illustrate this, I reproduce the following extract from page 25 of the Wenward decision:
“The applicant filed in evidence copies of letters to inquiries made from various parts of Canada for constructing and resurfacing of tennis courts which letters clearly indicate that the applicant was prepared to send its crews to construct and resurface tennis courts and other recreational surfaces in various parts of Canada if the applicant were awarded any contracts. In this case, the applicant was willing and able to provide services when contracted for in Canada whereas in the Beachcomber case referred to above, the applicant only offered its services at its own facilities, and these facilities only existed in the United States.”
The fact that someone in Canada could order the opponent's services does not convince me that the services were available in Canada. I doubt that the opponent's licensees would claim that they are performing banking services in Canada even though they send various materials to Canadian residents to promote services that they offer with respect to bank accounts in the U.S., some of which I imagine Canadian residents could arrange for by phone or letter.
The opponent has relied on Saks & Co. v. Registrar of Trade-marks et al. (1989), 24 C.P.R. (3d) 49 (F.C.T.D.) as support for the conclusion that the opponent's activities amount to use of its trade-mark in association with its services. However, I consider that case to be distinguishable on several points. First, it was a Section 44 [now Section 45] proceeding and the Court noted at page 59 that in such proceedings, "registrations for trade-marks that are obviously in use are not to be cancelled on a technical ground". Second, the trade-mark owner there provided considerable, fact-specific evidence of its actual activities and services provided to Canadian residents. Here the opponent faces an evidential burden of establishing facts that support a conclusion that it used its mark in Canada prior to the filing of the applicant's application and it has not provided any specific evidence of a single Canadian resident having received its promotional materials in Canada or of having used its services.
Another case raised by the parties was Cornerstone Securities Canada Inc. v. Smart & Biggar (1994), 58 C.P.R. (3d) 417 (F.C.T.D.). This case also concerned Section 45 proceedings. In finding that the trade-mark owner had not shown use of its service mark in Canada, at page 420 the Court stated that the evidence did not satisfy it that the advertisements were actually distributed to prospective customers in Canada, noting that no individuals were identified as to whom the advertisements were sent.
In summary, there are two preliminary issues: whether the opponent has established that its activities with respect to Canada predated the applicant's filing date and whether its activities amounted to use pursuant to Subsection 4(2). It is my conclusion that the opponent has not successfully addressed either issue.
I therefore agree with the applicant that the opponent has failed to establish prior use of EXPRESS FILE in Canada.
I also agree that the opponent has not established that it had made EXPRESS FILE known in Canada in accordance with Section 5 of the Act. The making known requirements set out in Section 5 require a finding that the mark/name has become well known in Canada by reason of the distribution or advertising of the opponent—s services in association with the mark/name in Canada. We have no indication of the number of Canadians that may have received the opponent's promotions. In addition, the opponent has not shown that a substantial area of Canada knows its mark/name, as required by the Federal Court Trial Division in Marineland Inc. v. Marine Wonderland and Animal Park Ltd. (1974), 16 C.P.R. (2d) 97.
Given that the opponent has not met its evidential burdens, it is not necessary for me to consider the Subsection 6(5) factors. However, I will comment that it is possible that if the opponent had satisfied me that it had used its mark in Canada as of the material date, it might nevertheless still not have succeeded because of the inherent weakness of the mark EXPRESS FILE, the apparent lack of significant use or making known of that mark in Canada, and the inclusion of the arguably very distinctive words H&R BLOCK in the applicant's mark.
Although there is a later material date with respect to the ground of non-distinctiveness, that ground also fails because there is no indication that the opponent's mark acquired a sufficient reputation in Canada to negate the distinctiveness of the applied-for mark.
Accordingly, none of the grounds of opposition succeed.
Having been delegated by the Registrar of Trade-marks by virtue of Subsection 63(3) of the Trade-marks Act, I reject the opponent's opposition pursuant to Subsection 38(8) of the Act.
DATED AT TORONTO, ONTARIO, THIS 7th DAY OF DECEMBER, 2001.
Jill W. Bradbury
Hearing Officer
Trade-marks Opposition Board