IN THE MATTER OF AN OPPOSITION
by Flowmatic Holdings Inc. to application
No. 728,413 for the trade-mark FLOWMATIC
filed by Arburg GmbH & Co.
On May 7, 1993, the applicant, Arburg GmbH & Co., filed an application to register the trade-mark FLOWMATIC for the following wares based on use in Canada since 1980:
apparatus for the control of the temperature of hydraulic circuits of plastic and metal manufacturing machines, injection moulding machines and moulds thereof.
The application was advertised for opposition purposes on March 30, 1994.
The opponent, Flowmatic Holdings Inc., filed a statement of opposition on May 5, 1994, a copy of which was forwarded to the applicant on July 25, 1994. Leave was granted on February 22, 1996 to file an amended statement of opposition.
The first ground of opposition is that the applicant’s application does not comply with the provisions of Section 30(i) of the Trade-marks Act. In this regard, the opponent alleged that the applicant could not have been satisfied that it was entitled to use its mark in view of the prior use and registration of the opponent’s confusing mark FLOWMATIC. The second ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Act because it is confusing with the opponent’s trade-mark FLOWMATIC registered under No. 204,826 for “valves for regulating the flow of liquids” and under No. 274,910 for the following wares:
(1) pumps, water guns, wire braid, high pressure hoses, unloaders, accumulators, gauges, cleaning wands (2) goose neck cleaning wands, water supply tanks, heaters for water supply tanks, housing cabinets, recovery tanks, carpet cleaner silencers (3) vacuum hoses, solution hoses and blowers.
The third ground is that the applicant is not the person entitled to registration of the applied for mark pursuant to Section 16(1)(a) of the Act because, as of the applicant’s claimed date of first use, the applied for trade-mark was confusing with the trade-mark FLOWMATIC previously used in Canada by the opponent. The fourth ground is one of prior entitlement based on the opponent’s prior use of its trade-names Flowmatic and Flowmatic Holdings Limited. The fifth ground is that the applied for trade-mark is not distinctive in view of the opponent’s use of its trade-mark and trade-names.
The applicant filed and served a counter statement. As its evidence, the opponent submitted an affidavit of Lionel Bascus. As its evidence, the applicant submitted an affidavit of Herbert Kraibühler. Only the applicant filed a written argument and an oral hearing was conducted at which both parties were represented.
As for the first ground of opposition, it essentially turns on the issue of confusion. Thus, a consideration of the remaining grounds will effectively decide the outcome of the first ground.
As for the second 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.). The onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Furthermore, 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.
As for Section 6(5)(a) of the Act, the applicant’s trade-mark FLOWMATIC is a coined word and is therefore inherently distinctive. However, it is at least somewhat suggestive of the nature of the applicant’s wares and its therefore not an inherently strong mark. Although the applicant has claimed use of its mark in Canada since 1980, it has not evidenced any such use. Thus, I must conclude that the applicant’s mark has not become known at all in Canada.
The opponent’s registered mark FLOWMATIC is also inherently distinctive although it, too, is at least somewhat suggestive of the nature of the opponent’s wares. The opponent has evidenced steady use of its mark in Canada for over twenty years within the field of high pressure washing equipment for commercial and industrial uses. Thus, I can conclude that the opponent’s mark has become known to some extent in Canada.
The length of time the marks have been in use favors the opponent. The wares of the parties are similar in that they comprise sophisticated, expensive equipment for use in a commercial or industrial setting. Furthermore, as noted by the opponent’s agent, the wares of both parties can be broadly characterized as devices which control the flow of fluids. However, the natures of the specific wares sold are different. The opponent’s wares are high pressure washing equipment and related parts and accessories. The applicant manufactures and sells apparatus for controlling the temperature of plastic and metal manufacturing machines by means of fluid flow.
In paragraph eight of his affidavit, Mr. Bascus identifies various businesses that use the opponent’s FLOWMATIC washing equipment. As noted by the applicant’s agent, none of the businesses has been specifically identified as a plastic or metal manufacturer. However, as noted by the opponent’s agent, it seems likely that the opponent’s customers in the automotive industry would, or could, use plastic or metal manufacturing machines. Furthermore, Mr. Bascus states that his company’s products are designed for use by a variety of commercial and industrial establishments. Presumably, FLOWMATIC washing equipment could be purchased and used by a manufacturing plant that makes use of the applicant’s machines. Thus, there is a potential overlap in the trades of the parties.
The trade-marks at issue are identical in all respects.
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 identity between the marks, the reputation associated with the opponent’s mark and the potential overlap in the trades of the parties, I am left in a state of doubt respecting the issue of confusion. Since the onus is on the applicant to show no reasonable likelihood of confusion, I must resolve that doubt against it. Thus, the second ground of opposition is successful. Had the applicant been able to evidence a long period of co-extensive use of the marks in Canada with no incidents of actual confusion arising, my conclusion might well have been different.
As for the third and fourth grounds of opposition, the opponent has evidenced use of its trade-mark and trade-names prior to the applicant’s claimed date of first use and non-abandonment of it mark and names as of the applicant’s advertisement date. Thus, those two grounds remain to be decided on the issue of confusion with the applicant’s mark as of the applicant’s claimed date of first use. My conclusions respecting the second ground are, for the most part, also applicable here although the opponent’s mark and names had not been used as extensively as of December 31, 1980 as they were later. Thus, I find that the applicant has not satisfied the burden on it to show that its trade-mark was not confusing with the opponent’s trade-mark and trade-names as of the material time. The third and fourth grounds are therefore also successful.
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. - May 5, 1994): 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.
The fifth ground essentially turns on the issue of confusion between the applicant’s mark and the opponent’s trade-mark and trade-names. Given my conclusions above respecting the issue of confusion respecting the second, third and fourth grounds, it also follows that the applicant has failed to satisfy the burden on it to show that its mark is not confusing with the opponent’s trade-mark and trade-names as of the filing of the present opposition. Thus, the fifth ground is also successful.
In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I refuse the applicant’s application.
DATED AT HULL, QUEBEC, THIS 1st DAY OF MAY, 1998.
David J. Martin,
Member,
Trade Marks Opposition Board.