IN THE MATTER OF AN OPPOSITION
by Vantage Computer Systems Inc. to
application no. 746,009 for the trade-mark
SAMS:VANTAGE filed by Sterling Software Inc.
On January 24, 1994, the applicant, Sterling Software Inc., filed an application to register the trade-mark SAMS:VANTAGE, based on intended use of the mark in Canada, in association with the following wares:
Computer programs; printed instructional manuals for computer programs; units comprising computer programs and printed instructional manuals.
The subject application was accorded a priority filing date of July 28, 1993 in view of the applicant’s previous filing of a corresponding application in the United States of America: in this regard, see Section 34 of the Trade-marks Act.
The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated August 10, 1994. Vantage Computer Systems Inc. was granted a retroactive extension of time to oppose the subject application and filed its statement of opposition on January 10, 1995. A copy was forwarded to the applicant on March 15, 1995. The applicant responded by filing and serving a counterstatement.
The first ground of opposition alleges that the application does not comply with subsection 30(a) of the Trade-marks Act in that the wares specified in the application are not stated in ordinary commercial terms. The second ground alleges non-compliance with subsection 30(e) in that the applicant had and has no intention “to use the trade-mark itself as a trade-mark in association with the wares in Canada.” The fifth ground of opposition, based on paragraph 16(2)(c) of the Act, is not relevant since the subject application is not based on use and registration of the mark in a foreign jurisdiction. The remaining grounds plead that the applicant could not have been satisfied as to its entitlement to use the applied for mark, that the applicant is not entitled to register the applied for mark, and that the applied for mark is not distinctive of the applicant’s wares, in view of the opponent’s prior use and making known of its marks VANTAGE and VANTAGE-ONE, and its trade-name Vantage Computer Systems Inc., in association with computer software.
The opponent’s evidence consists of the affidavits of Donald Levin, formerly a programmer analyst with the opponent company, and John Connell, Vice President of The Continuum Company Inc. The Continuum Company Inc. acquired the opponent company in 1993 at which time the opponent became a wholly owned subsidiary of The Continuum Company Inc. The applicant’s evidence consists of the affidavits of Geno Tolari, Chief Operating Officer of the applicant company, and Igor Muratovic, an employee of the firm representing the applicant. Mr. Muratovic’s affidavit serves to introduce into evidence a state of the trade-marks register search “in respect of applications and registrations having in the word the string VANTAGE . . . ” As its evidence in reply, the opponent filed a second affidavit of John Connell. Both parties filed a written argument, however, neither party requested an oral hearing.
The opponent’s evidence in chief may be summarized as follows. Since about 1984, the opponent has been licensing a computer software package under the trade-mark VANTAGE-ONE to life insurance companies. The software package is a sophisticated program for use in administering life insurance policies. A license to use the program costs about $US 1.95 million and the time required for a purchaser to test and evaluate the software is about nine months to two years. The software is supplied on computer cartridge or tape and clearly identified by the mark VANTAGE-ONE. The opponent’s mark also appears on the computer screen each time the program is started. As of November 1995, the opponent had four licensees in Canada; two have been using the VANTAGE-ONE program since 1984, one since 1986 and one since 1987. Once the software is installed, it is used by at least fifty employees of the licensee. It is Mr. Connell’s testimony that the trade-mark VANTAGE-ONE is well known in the life insurance industry in Canada and that it is common for industry employers to advertise that they are seeking new employees with experience using VANTAGE-ONE software.
Mr. Tolari’s evidence, filed on behalf of the applicant, may be summarized as follows. The applicant’s wares are designed to assist businesses in managing data stored on computers, as is more fully described in an excerpt, reproduced below, taken from page 3 of a product brochure attached as Exhibit D to Mr. Tolari’s affidavit:
As can be seen from the above, SAMS:VANTAGE is one of several products sold by the applicant under trade-marks prefixed by the component SAMS (hereinafter “SAMS:Products”). The applicant has been marketing SAMS:VANTAGE software in Canada since about April 1994. Sales under the mark to mid-June 1996 (the date of Mr. Tolari’s affidavit) were about $365,000 to customers including Canadian Tire, Nova Gas, Alberta Treasury and Banque National. The mark SAMS:VANTAGE appears on computer screens when the program is started as well as on various menu screens during operation of the program. Promotion and advertising expenses relating specifically to SAMS:VANTAGE software amounted to $29,000 to mid-June 1996. Mr. Tolari is unaware of any instances where purchasers of SAMS:VANTAGE software were mistakenly under the impression that the software originated with anyone other than the applicant.
As alluded to above, the applicant herein is the owner of several (registered) trade-marks namely, SAMS:DISK, SAMS:COMPRESS, SAMS:SAVE, SAMS:AUTOMATE and SAMS:ALLOCATE used in association with software and related products. The applied for mark usually appears in the form “SAMS:Vantage” and, as noted by the opponent in its written argument,
. . . the alleged members of the Applicant’s SAMS family of trade marks are depicted in the same way that the Applicant depicts the applied for mark namely SAMS:Disk, SAMS:Compress, etc. thus, the Applicant itself has made a distinction between the SAMS portion of its marks and the remainder of those marks . . .
The opponent argues that the distinction between capital letters and lower case letters emphasizes the second portion of the applicant’s marks. I have come to the opposite conclusion namely, that it is the first portion of the applicant’s marks that is emphasized. Actual sales of SAMS:Products in Canada for the two year period 1994-1995 were about $1.5 million while projected sales for the year 1996 are about $240,000. During the period 1991-1996, the applicant expended about $140,000 in promoting and advertising SAMS:Products in newspapers, trade publications, magazines, product brochures and point-of-purchase advertising. Mr. Tolari in his affidavit has also referred to the applicant’s and opponent’s activities in the United States of America but such evidence, by itself, does not assist the applicant in this proceeding. As noted by the opponent in paragraph 12(c) of its written argument,
the allegations with respect to sales and trade marks in the United States are irrelevant. Mr. Tolari does not attest to any similarities, or differences, between the Canadian market and the United Sates market for such products . . . the allegation in Mr. Tolari’s affidavit that the purported co-existence in the United States establishes that there is no likelihood of confusion in Canada have [sic] no evidential foundation whatsoever.
Mr. Connell’s evidence in reply is that the opponent’s VANTAGE-ONE software and the applicant’s SAMS:VANTAGE software are designed to be installed and to be run using the same computer operating systems (for example, OS/2, Windows 3.0 or higher, MVS/ESA) and that he is aware of one business, in the United States, which has both VANTAGE-ONE and SAMS:VANTAGE software in service at its data centre.
The first ground of opposition alleges that the wares specified in the subject application are not stated in ordinary commercial terms since “computer programs” simpliciter encompasses “an unacceptably large assortment of wares”: see paragraph 22 of the opponent’s written argument. Although the current Trade-marks Examination Manual requires a trade-mark application for computer software to specify the “area of use and the function of the programs,” it would appear that the current Examination policy was not in force as of January 24, 1994 when the subject application was filed. In any event, the opponent has not brought forward any evidence to support the first ground of opposition and, accordingly, the first ground of opposition is rejected. With respect to the second ground of opposition, the opponent alleges that the applicant had and has no intention “to use the trade-mark itself as a trade-mark in association with the wares in Canada.” The opponent has not adduced any evidence to support its allegation while the applicant’s uncontradicted and unchallenged evidence establishes that the applicant used the applied for mark in Canada after filing the subject application. Thus, the second ground of opposition is rejected.
The remaining grounds of opposition turn on the issue of confusion between the applied for mark SAMS:VANTAGE and the opponent’s trade-marks VANTAGE and VANTAGE-ONE, and the opponent’s trade-name Vantage Computer Systems Inc. However, the opponent has not demonstrated any significant use of, or reputation for, its mark VANTAGE or its trade-name, and therefore the determinative issue in this proceeding is whether there is a likelihood of confusion between the applied for mark and the opponent’s mark VANTAGE-ONE. The material dates to assess the issue of confusion are the effective date of filing the application namely, July 28, 1993, in respect of the allegations that the applicant could not have been satisfied as to its entitlement to use the applied for mark and not entitled register its mark, and the date of opposition namely, January 10, 1995, in respect of the allegation that the applied for mark is not distinctive of the applicant’s wares. In the circumstances of this case, nothing turns on which material date is chosen to assess the issue of confusion.
The legal onus is on the applicant to show that there would be no reasonable likelihood of confusion, within the meaning of Section 6(2), between the applied for mark SAMS:VANTAGE and the opponent's mark VANTAGE-ONE. The presence of an onus on the applicant means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant: see John Labatt Ltd. v. Molson Companies Ltd. (1990) 30 C.P.R.(3d) 293 at 297-298 (F.C.T.D.). The test for confusion is one of first impression and imperfect recollection. Factors to be considered, in making an assessment as to whether two marks are confusing, are set out in Section 6(5) of the Act: the inherent distinctiveness of the marks and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; the degree of resemblance in appearance or sound of the marks or in the ideas suggested by them. This list is not exhaustive; all relevant factors are to be considered. All factors do not necessarily have equal weight. The weight to be given to each depends on the circumstances: see Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 C.P.R.(3d) 308 (F.C.T.D).
Neither the applied for mark nor the opponent’s mark possess a high degree of inherent distinctiveness since the component VANTAGE suggests the laudatory term “advantage.” Mr. Connell’s evidence leads me to conclude that the opponent’s mark VANTAGE-ONE had acquired some reputation in Canada at all material times, but such reputation is limited to the life insurance industry. The applied for mark SAMS:VANTAGE would not have acquired any reputation at the earlier material date, but would have acquired some reputation (less than the opponent’s mark) at the later material date. The opponent’s mark has been in use in Canada since 1984 while the applied for mark was not used in Canada until after January 24, 1994. Thus, the length of time that the marks have been in use favours the opponent. The nature of the parties’ wares are similar to the extent that both parties sell computer software, however, it is clear from the evidence that the parties’ software serve different purposes. The opponent’s trade is limited to life insurance companies while applicant’s wares are suitable for any person involved in the management of large volumes of computerized data. Thus, there is some potential for overlap in the parties’ channels of trade since the applicant would be expected to offer its software to life insurance companies. There is a fairly high degree of resemblance between the marks in all respects since the component VANTAGE is a prominent component of each mark. Nevertheless, the first word or the first syllable in a trade-mark is far the more important for the purpose of distinction (see Conde Nast Publications Inc. v. Union Des Editions Modernes (1979) 26 C.P.R.(2d) 183 at 188 (F.C.T.D.)) and in the instant case the first portion of the applied for mark namely, SAMS, serves to distinguish the applicant’s mark from the opponent’s mark.
As a surrounding circumstance, I have considered that the applicant has been using its family of SAMS marks in Canada since as early as May 1983 (see paragraph 14 of Mr. Tolari’s affidavit) and I am prepared to infer from the applicant’s evidence of sales and advertising that the applicant’s family of SAMS marks had acquired some reputation as of the later material date January 10, 1995. Thus, there is some support for the applicant’s submission that the average consumer of computer software might recognize the applied for mark as an addition to the applicant’s family of SAMS marks, at least as of the later material date.
The applicant sought to rely on the state of the register evidence introduced by means of the Muratovic affidavit to establish that the component “vantage” is a common element of trade-marks. State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace: see Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R.(3d) 432 (TMOB) and Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R.(3d) 205 (F.C.T.D.). See also Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R.(3d) 349 (F.C.A.) which is support for the proposition that inferences about the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located. In the instant case the applicant has located, by my count, some 50 trade-mark registrations and 18 applications, 26 of which relate to computers or computer software. Of those 26 marks, the component “vantage” simpliciter appears in 4 marks while the component “advantage” appears in the remaining 22 marks. Thus, the evidence does not support the contention that the component “vantage” simpliciter is common in the computer or computer software industries.
As a further surrounding circumstance I have considered that the parties’ products would not be purchased in a hurried or careless manner. Rather, it is likely that the average purchaser of such wares would methodically apply technical expertise in considering the specific capabilities of the wares and their manner of installation. As evidenced by the opponent, there is a long period of consultation and evaluation before the opponent’s VANTAGE-ONE software is licensed and I would expect a thorough investigation of the applicant’s SAMS:VANTAGE software as well. Careful attention to such purchases lessens the likelihood of confusion as to the source of the wares.
Considering the above, I find that the applicant has met the onus on it to show that, on the balance of probabilities, there is no likelihood of confusion between the applied for mark SAMS:VANTAGE and the opponent’s mark VANTAGE-ONE. Accordingly, the opponent’s opposition is rejected.
DATED AT HULL, QUEBEC, THIS 14th DAY OF OCTOBER, 1997.
Myer Herzig,
Member,
Trade-marks Opposition Board