IN THE MATTER OF AN OPPOSITION
by Universal Flow Monitors, Inc.
to application No. 578,237 for
the trade-mark UNIVERSEL filed
by Universel Epsco, Inc.
On February 16, 1987, the applicant, Universel Epsco, Inc., filed an application to register the trade-mark UNIVERSEL based on use in Canada since October of 1984 in association with the following wares:
an automatic temperature compensation device
designed for use with metering devices that
monitor the dispensing rate of various liquids
or gases and automatically adds or subtracts
pulses based on the product temperature at time
of delivery.
The application was advertised for opposition purposes on March 22, 1989.
The opponent, Universal Flow Monitors, Inc., filed a statement of opposition on April 24, 1989, a copy of which was forwarded to the applicant on May 10, 1989. The grounds of opposition include, among others, one based on Section 12(1)(d) of the Trade-marks Act, namely, that the applied for trade-mark is not registrable because it is confusing with the opponent's trade-mark UNIVERSAL registered under No. 259,288 for "fluid flow monitors; flow indicators."
The applicant filed and served a counter statement. As its evidence, the opponent filed a certified copy of its registration. As its evidence, the applicant filed an affidavit of its President, Bolling H. Sasnett, Jr. As evidence in reply, the opponent filed the affidavit of Lars O. Rosaen. Both parties filed a written argument but no oral hearing was conducted.
As a preliminary matter, the applicant has objected to the Rosaen affidavit as not constituting proper reply evidence pursuant to Rule 45 of the Trade-marks Regulations. I agree with the applicant's contention. The Rosaen affidavit is not confined strictly to matter in reply to the applicant's evidence but, in fact, appears to be an attempt by the opponent to introduce its evidence in chief at the reply stage. Thus, I find that the Rosaen affidavit is inadmissible in this proceeding and I have given it no consideration.
As for the ground of opposition based on Section 12(1)(d) of the Act, the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark is as of the date of my decision: see the opposition decision in The Conde Nast Publications Inc. v. The Canadian Federation of Independent Grocers (1991), 37 C.P.R.(3d) 538 at 541-542. 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.
The marks of both parties are inherently distinctive although not inherently strong. Both UNIVERSAL and its French language equivalent UNIVERSEL when used as adjectives can mean "comprehensively broad and versatile" or "adapted or adjustable to meet varied requirements." Thus, both marks have at least a slight laudatory connotation when used with their respective wares.
The opponent having filed no admissible evidence respecting the use of its mark, I must conclude that the trade-mark UNIVERSAL has not become known at all in Canada. Mr. Sasnett states, in his affidavit, that there have been sales of the applicant's wares in Canada totalling about $30,000 (U.S.) for the period 1985 to 1989. However, there is no clear indication in the Sasnett affidavit that the trade-mark UNIVERSEL was associated with the wares in respect of any of those sales. In any event, given the minimal number of sales, I am unable to conclude that the applicant's mark has become known in Canada in association with the applied for wares.
The length of time the marks have been in use is not a material circumstance in the present case. As discussed, there is no clear indication that the applicant has used its trade-mark UNIVERSEL in association with the applied for wares. The opponent's registration No. 259,288 indicates that its mark UNIVERSAL has been used in Canada since September 22, 1970 but there is no admissible evidence showing any use of the mark since that date.
On a reading of the statements of wares appearing in the applicant's application and the opponent's registration, it would appear that the wares at issue are very similar. The opponent's wares are fluid flow monitors and flow indicators. The applicant's wares appear to also be some form of fluid flow monitor or control mechanism to be used in association with metering devices for liquids or gases. Presumably, the trades of the parties could also be similar.
The applicant sought to differentiate the wares of the parties in view of the Sasnett affidavit which shows that the actual wares sold to date by the applicant are highly specialized devices used only with rebuilt gasoline dispensing pumps and sold to a limited group of specific customers. In its written argument, the applicant also submitted that the actual wares sold by the opponent are unrelated to the applicant's wares and are sold to a different class of purchaser. However, no such restrictions appear in either the applicant's statement of wares or the opponent's statement of wares and that is what governs in the present case: see the decisions in Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R.(3d) 3 at 10-11 (F.C.A.) and Henkel Kommanditgesellschaft v. Super Dragon (1986), 12 C.P.R.(3d) 110 at 112 (F.C.A.).
As for Section 6(5)(e) of the Act, I consider that the marks at issue are virtually identical in all respects, the applicant's mark being the French language equivalent of the opponent's registered mark. There is only a very slight difference visually and phonetically between the two marks.
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 similarities between the wares, trades and marks of the parties, I find that the applicant has failed to satisfy the onus on it to show that its mark UNIVERSEL is not confusing with the opponent's registered mark UNIVERSAL. Thus, the ground of opposition based on Section 12(1)(d) of the Act is successful and the remaining grounds need not be considered.
In view of the above, I refuse the applicant's application.
DATED AT HULL, QUEBEC, THIS 31st DAY OF March , 1993.
David J. Martin,
Member,
Trade Marks Opposition Board.