IN THE MATTER OF AN OPPOSITION by
Apple Computer, Inc. and Apple Canada Inc.
to application No. 687,757 for the trade-mark
APPLE BOX PRODUCTIONS filed by ITV, a
division of Westcom TV Group Ltd.
On July 18, 1991, ITV, a division of Westcom TV Group, filed an application to register the trade-mark APPLE BOX PRODUCTIONS, based on proposed use in Canada in association with the wares
commercial advertisement, commercial films, video recordings namely, discs and tapes, and audio recordings namely, discs and tapes
and with the services
audio-visual production for others namely, production of television commercials and radio commercials, production of industrial promotional films and programs, and production of short feature programs for television and radio.
The application disclaims the right to the exclusive use of the word PRODUCTIONS apart from the mark as a whole.
The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated March 18, 1992 and was opposed by Apple Computer, Inc. and its subsidiary Apple Canada Inc. on August 18, 1992. A copy of the statement of opposition was forwarded to the applicant on October 5, 1992. The applicant responded by filing and serving a counter statement.
The first ground of opposition, pursuant to Section 30(i) of the Trade-marks Act, is that the applicant could not have been satisfied that it was entitled to use the applied for mark APPLE BOX PRODUCTIONS in view of the prior use and registration of the first opponent's registered marks including APPLE and APPLE DESIGN (as illustrated below) covering computer hardware and software and computer related services.
The second ground of opposition is somewhat vague; however, it appears that the second and third grounds both allege that, pursuant to Section 12(1)(d), the applied for mark is not registrable in view of the first opponent's registered marks including APPLE and APPLE DESIGN. The fourth and fifth grounds of opposition, pursuant to Sections 16(3)(a) and (b), are that the applicant is not the person entitled to register the applied for mark APPLE BOX PRODUCTIONS because (i) it confusing with the first opponent's registered marks, including APPLE and APPLE DESIGN, previously used in Canada, (ii) it is confusing with trade-marks applications previously filed by the first opponent for, among others, the marks APPLE and APPLE DESIGN covering, among other things, computer related services. Other marks relied upon in the statement of opposition include the word component APPLE, or a pictorial representation of an apple, as part of the mark.
The sixth ground of opposition, pursuant to Section 16(3)(c), is that the applicant is not entitled to registration because, at the date of filing of the subject application, the applied for mark was confusing with the second opponent’s trade-name APPLE CANADA INC. The final ground of opposition is that the applied for mark APPLE BOX PRODUCTIONS is not distinctive of the applicant's wares and services.
The opponents' evidence in chief consists to the affidavit of David Lindsay Wright (dated August 12, 1993), Vice-President, Marketing of the opponent Apple Canada Inc. and the affidavit of Michel Sergio, Senior Account Manager of an advertising firm. The applicant's evidence consists of the affidavit of Hans Dys, Vice-President of the applicant company. The opponents' evidence in reply consists of a second affidavit of David Lindsay Wright, dated June 7, 1994. Both parties filed a written argument and both were represented at an oral hearing.
In its written argument and at the oral hearing, the applicant objected that paragraph 13 of the second Wright affidavit is inadmissible because it is not in reply to any evidence introduced by the applicant. I agree. Paragraph 13 attempts to introduce evidence of a specific type of computer manufactured and marketed by the opponents for use in post-production services in the radio and television industries. It is evidence which should have been included in the opponents’ evidence in chief and I have therefore disregarded it.
At the oral hearing, the opponents argued that the outcome of this proceeding could be decided in their favour solely on a technical basis. The opponents submitted that the applicant, in its counter statement, neglected to deny the allegation in paragraph 1(f) of the statement of opposition that the applied for mark was confusing with the second opponent’s trade-name APPLE CANADA INC. I do not agree. In my view, the applicant’s pleadings in paragraphs 1 and 3 of the counter statement constitute sufficient denials.
The main and determinative issue in this proceeding is whether the applied for mark APPLE BOX PRODUCTIONS for the production of television and radio commercials and the like is confusing with the mark APPLE for computer software and hardware and related computer services.
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 and the opponents’ mark APPLE. The presence of a legal 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.(d.) 293 at 297-298 (F.C.T.D.). In determining whether there would be a reasonable likelihood of confusion, I am to have regard to all the surrounding circumstances, including those enumerated in Section 6(5) below:
6(5) In determining whether trade-marks . . . are confusing, the . . . Registrar . . . shall have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trade-marks . . . and the extent to which they have become known;
(b) the length of time the trade-marks . . . have been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trade-marks . . . in appearance or sound or in the ideas suggested by them.
In the instant case, nothing turns on whether the issue of confusion is determined at the date that the application was filed [with respect to Sections 16(3) and 30(i)], the date of my decision [with respect to Section 12(1)(d)], or the date on which the opposition was filed [with respect to the last ground of opposition alleging non-distinctiveness].
The opponents’ mark APPLE possesses a fair degree of inherent distinctiveness since the word "apple" has no apparent connection with computers. I infer from the opponents' evidence of extensive sales and advertising that their mark APPLE had acquired a significant reputation in Canada in relation to computer wares and services by the earliest material date July 18, 1991. However, as argued by the applicant, the opponents' evidence does not establish a reputation or goodwill for their marks in the area of audio-visual production. The applied for mark APPLE BOX PRODUCTIONS also possesses a fair degree of inherent distinctiveness owing to the component APPLE BOX which has no readily apparent meaning in relation to audio-visual production. However, the inherent distinctiveness of the mark is lessened to the extent that the term APPLE BOX would be recognized as a catch word for a particular piece of equipment used in the film and video industry [see paragraph 5 of the Dys affidavit, discussed later]. The word PRODUCTIONS forming part of the applicant’s mark is non-distinctive in relation to the applied for services and the applicant has recognized this by entering a disclaimer to that word in its trade-mark application. The evidence shows that the mark APPLE BOX PRODUCTIONS has been used in Canada for the applied for services after the filing date and I therefore conclude that the applied for mark has acquired at least a minimal reputation in Canada after the earliest material date. The length of time that the marks have been in use favours the opponents, their use dating back to at least 1980 [see paragraph 20 of Mr. Wright's first affidavit].
The applicant's services relate to the audio-visual production industry, namely, the production of television and radio commercials, of industrial promotion films, and of short feature programs for television and radio. Such services differ from the sale of computers, ancillary wares, and related services. The applicant offers specialized commercial services while the opponents offer a wide array of wares and services to a host of industries and to the general public. Of course, the applicant's wares as specified in the application include "discs and tapes" that may be viewed and/or heard on the opponents’ computers sold under the mark APPLE [see paragraph 23 of the first Wright affidavit] and to that extent the trades of the parties overlap.
The marks in issue resemble each other visually and aurally since the opponents’ mark APPLE constitutes the first component of the applied for mark APPLE BOX PRODUCTIONS. The idea suggested by the mark APPLE is the fruit apple while the main idea suggested by the applied for mark is an apple box, that is, some type of container for storing apples. Mr. Dys testifies [in paragraph 5 of his affidavit] that the term "apple box" is a catch word used in the film and video production industry to describe a platform or riser upon which equipment, sets, or cameras are placed. Thus, the term "apple box" has a distinct meaning in the film and video industry.
The applicant has submitted that the significance of any resemblance between the marks APPLE and APPLE BOX PRODUCTIONS is mitigated by the state of the register evidence and evidence of business listings in Canadian telephone directories. In the instant case the above-noted evidence must be regarded as hearsay and given reduced weight since Mr. Dys did not personally conduct the trade-mark and trade-name searches. Further, the state of the register evidence provides incomplete particulars of the registrations located and I have therefore discounted that evidence entirely [the preferred manner of proving state of the register evidence is discussed in Quebec Maple Products v. Stafford Foods Ltd. (1988), 20 CPR(2d) 404 at 408 (TOMB)]. However, considering the dozens of entries evidenced in Canadian telephone listings for businesses that have adopted the prefix APPLE as part of their name, I find that there is some support for applicant’s contention that the public is accustomed to distinguishing among the marks of different traders containing the component APPLE and that “the ordinary person of average intelligence . . . would not, while seeking specialized audio and visual production services confuse such services with the opponents and their computers and computer-related wares and services”: see paragraph 17 of the applicant’s written argument.
As a surrounding circumstance, the opponents point to examples of the applicant’s advertising, as shown below, to argue that the likelihood of confusion between their mark APPLE and the applied for mark APPLE BOX PRODUCTIONS is heightened owing to the apple design appearing in the applicant’s advertising.
On the other hand, the applicant contends that the above design is of an apple in a box and that the design reinforces the concept of its mark APPLE BOX PRODUCTIONS. In any event, I do not find that the applicant’s advertising supports the opponents’ submission [at p.19, paragraph 5.4(g) of its written argument, and at the oral hearing] that "at all material times the applicant was bent on trading on the opponents' reputation" nor is there any other evidence of record to support that allegation.
The test for assessing the issue of confusion between trade-marks is one of first impression and imperfect recollection. Considering all of the circumstances discussed above, I am in a state of doubt whether the applied for mark would cause confusion with the opponents’ mark APPLE in respect of the wares discs and tapes. As discussed earlier, such doubt must be resolved against the applicant. Further, I find that the applicant has met the onus on it to show that, on the balance of probabilities and at all material times, its mark APPLE BOX PRODUCTIONS for audio-visual production services is not confusing with the opponents’ mark APPLE or any other of the opponents’ marks.
In view of the above, the application is refused with respect to the wares specified in the subject application and the opposition is rejected with respect to the services specified in the application. Authority for a divided decision is found in Produits Menagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf GmbH (1986), 10 C.P.R. (3d) 482 (F.C.T.D.). The result would not have been any different had I taken into consideration paragraph 13 of Mr. Wright’s second affidavit.
DATED AT HULL, QUEBEC, THIS 25TH DAY OF JANUARY, 1996.
Myer Herzig,
Member,
Trade-marks Opposition Board