IN THE MATTER OF TWO OPPOSITIONS by
Drytac Canada Inc. to application Nos. 723, 272 and
732,315, both for the mark DRY TECH, filed by
Polaroid Corporation
On February 23, 1993, the applicant, Polaroid Corporation, filed an application to register the mark DRY TECH for the wares
unexposed, photosensitive film, paper and plates; graphic arts imaging film and paper; offset‑lithographic printing plates (application no. 723,272),
and July 5, 1993, Polaroid filed a further application for the same mark for the wares
printing, laminating, peeling and separating machines and parts and fittings therefor; printing plates (application no. 732,315).
Both applications are based on proposed use of the mark in Canada. The first filed application was advertised for opposition purposes in the Trade-marks Journal issue dated August 25, 1993, and the second application was similarly advertised on March 23, 1994. The opponent filed statements of opposition against application nos. 723,272 and 732,315 on February 25 and August 22, 1994, respectively. The applicant responded by filing and serving counter statements. The pleadings, evidence and written arguments filed in the two proceedings are essentially the same and both parties were represented at an oral hearing. I will first deal with the opposition against application no. 732,315.
The first ground of opposition alleges that the applied for mark DRY TECH is not registrable because it is confusing with the opponent’s mark DRYTAC, regn. no. 244,671 covering wares which “are used in the photographic fields” namely,
dry mounting and laminating presses;
accessories for dry mounting and laminating presses, namely tacking irons, perforators, foam overlay blankets, carrier boards, pressure plates, and paper trimmers; and
materials and further accessories for dry mounting and laminating, namely dry mounting tissue, dry mounting film, heat seal laminating film, release paper, acetate foil, mounting canvas, canvas stretcher bars, and canvas stretching pliers.
The second ground alleges that the applicant is not the person entitled to register the applied for mark because at the date of filing the application, it was confusing with the opponent’s mark DRYTAC, with the opponent’s trade-names Drytac and Drytac Canada Inc. and with the opponent’s corporate name Drytac Canada Inc., all previously used and made known in Canada “for dry mounting and laminating and sold in channels of trade which include the photographic field . . .”
The third ground alleges that the applied for mark is not distinctive of the applicant in view of the above. The final ground alleges that the applicant could not have been satisfied that it was entitled to use the applied for mark, contrary to Section 30 of the Trade-marks Act. In particular, the opponent alleges that (i) “use of the mark DRY TECH would violate the opponent’s rights under its registered trade-mark no. 244,671 for DRYTAC and (ii) “would also violate the opponent’s rights under Section 7 . . . and at common law . . .” in view of the opponent’s use of its mark, trade-names and corporate name.
The opponent’s evidence consists of the affidavit of Richard Kelley, Director of the opponent company. The applicant’s evidence consists of the affidavit of Diane M. Anderson, Director of Product Management of Polaroid Corporation.
The opponent’s evidence may be summarized as follows. Drytac Canada Inc. is the successor in title to Drytac Inc., a company incorporated in 1976 for the purpose of carrying on a business specializing in the manufacture and sale of equipment and products used in dry mounting and laminating. As explained in Exhibit E of Mr. Kelley’s affidavit,
Laminating is the process of bonding clear plastic film to the surface of photographs, prints, posters, maps, drawings and artwork to protect or enhance them . . . the laminating film forms a physical shield against the damaging effects of humidity, toxic chemicals in the air, and fingerprints. Laminate prints . . . can be wiped clean with a damp cloth.
These [the opponent’s] products provide integrated systems that allow photographers, picture framers and others with mounting requirements to easily, quickly, reliably and economically bond their work to a broad range of materials . . .
Drytac’s 3442 dry mounting and laminating press is the choice of photographic laboratories, studios and picture framers worldwide.
The opponent, through its predecessors, has been using the trade-name Drytac in Canada since about 1976 and has been using the trade-mark DRYTAC for laminating presses and related wares since about 1978. Typical end users include custom and commercial colour labs, portrait labs, portrait/wedding photographers, commercial/studio photographers and picture framers, including Japan Camera Centre, Kodak Canada, One-Hour Photos and Frames, The Picture Frame Factory and Sooter Studios. The opponent’s trade-name and trade-mark are prominently displayed on its product packaging, in advertising and in the promotion of the opponent’s business. The costs incurred to promote the DRYTAC brand to Canadian customers has been about $30,000 annually from 1988 through 1992. It appears from the exhibit material attached to Mr. Kelley’s affidavit that the opponent advertises and promotes its wares through product information brochures, product catalogues and trade journals including PHOTOVIDEO, PICTURE FRAMING MAGAZINE, and PPOC- Professional Photographers of Canada. The opponent’s laminating and mounting presses range in price from about $1,500 to $11,500. Sales of presses and related materials under the mark DRYTAC have been about $3 million annually from 1990 to 1994 inclusive.
The applicant’s evidence may be summarized as follows. In May 1995, the applicant introduced a new line of image processing machines (as described in application no. 732,315) , and related products (as described in application no. 723,272), under the mark DRY TECH in a trade show in Germany. As explained in paragraph 5 of Ms. Anderson’s affidavit,
Polaroid’s DRY TECH products produce high quality four-colour or more film sheets which are then processed or “laminated” with a thermal transfer overcoat, separated or “peeled,” and transformed into a high resolution printing plate.
Thus, the applicant’s “laminating” process and photosensitive films are fundamentally different from the applicant’s laminating process and dry mounting films. The applicant’s processing machines are intended for use in the fields of graphic arts and commercial printing and allow prepress preparation of magazines, product brochures, corporate annual reports, and other professionally printed and published documents. The opponent’s image processing system typically costs over $150,000. End users will be graphic arts professionals such as commercial printers, colour trade shops serving the prepress industry, and corporate prepress printing centres.
The first three grounds of opposition turn on the issue of confusion between the applied for mark DRY TECH used in association with its image processing system and the opponent’s trade-mark DRYTAC and trade-name Drytac used in association with dry mounting equipment and related products. The material times for considering the issue of confusion are the date of the filing of the application namely July 5, 1993, in respect of the pleading alleging non-entitlement; the date of opposition namely August 22, 1994, in respect of the pleading alleging non-distinctiveness; and the date of my decision with respect to the pleading alleging non-registrability. 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 subsection 6(2), between the applied for mark DRY TECH and the opponent's mark or trade-name DRYTAC. 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 marks (or trade-names) are confusing, are set out in Section 6(5) of the Act: the inherent distinctiveness of the marks (or trade-name) and the extent to which they have become known; the length of time the parties’ marks (or trade-names) have 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 trade-names) 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).
The opponent’s mark DRYTAC, although a coined word, possesses a relatively low degree of inherent distinctiveness in relation to its the opponent’s wares and business since the components DRY and TAC are suggestive of the character or quality of the opponent’s products, that is, products for adhesion without the use of liquids. In this respect, exhibit material attached to Mr. Kelley’s affidavit describe the opponent’s products in the following terms: “no messy cleanups” and “. . . constant pressure is maintained throughout the dry transfer process.” Similarly, the applied for mark DRY TECH possesses a relatively low degree of inherent distinctiveness in relation to the applicant’s image processing equipment since the components DRY and TECH suggest a method of image processing using advanced technology free of wet chemicals. The opponent’s mark and trade-name DRYTAC would have acquired some reputation in Canada at all material times, at least with commercial and/or professional photographers and framers, owing to use and promotion of the mark and trade-names since 1978 and 1976 respectively. There is no evidence showing that the applied for mark has ever been used in Canada, or that the mark DRY TECH would have acquired any more than a minimal reputation in Canada at any material time.
As for the wares and trades of the parties, it is the applicant’s statement of wares in its application and the opponent’s statement of wares in registration no. 244,671 that govern: see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R.(3d) 3 at 10-11 (F.C.A.), Henkel Kommanditgesellschaft v. Super Dragon (1986), 12 C.P.R.(3d) 110 at 112 (F.C.A.) and Miss Universe, Inc. v. Dale Bohna (1994), 58 C.P.R.(3d) 381 at 390-392 (F.C.A.). However, those statements must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording. In this regard, evidence of the actual trades of the parties is useful, at least where the description of the wares (or services) is open to interpretation: see McDonald’s Corporation v. Coffee Hut Stores Ltd. (1996), 68 C.P.R.(3d) 168 (F.C.A.) and the recent Board decision in Dura Undercushions Ltd. v. BASF Corporation (July 31, 1997, yet unreported, re application no. 700,883 for the trade-mark DURAPLUSH). In the instant case, it is clear that the parties’ wares are not intended for the general public but for specialty commercial/professional groups. As noted earlier, the opponent’s target population is, to a large extent, commercial photo finishing outlets and professional photographers who mount and laminate photographs while the opponent’s target population is the prepress industry. I appreciate the opponent’s argument at the oral hearing that image processing (as provided by the applicant) and photo finishing (as provided by the opponent) may be merging with advances in technology. However, in my view, there is insufficient evidence to support any substantive present day merging. Rather, I find that there would be little overlap in the parties’ channels of trade at all material times.
Ordinarily it is the first word or the first syllable in a trade-mark that is more important than subsequent components for the purpose of distinguishing between marks. However, the importance of the prefix is less critical in a case such as this where the first portion DRY is suggestive of the quality or character of the wares. Nevertheless, there is a fairly high degree of visual and aural resemblance between DRYTAC and DRY TECH when the marks are considered in their entireties. Both marks suggest the idea of dryness, however, the applied for mark also suggests the ideas of “technology” while the opponent’s mark suggests the idea of a “tack” or of “tacky.”
I agree with the applicant’s submissions at paragraphs 8.2 and 8.4 of its written argument that the applicant’s customers would be sophisticated and knowledgable about the expensive products and machines they purchase, and would give some degree of attention to transactions involving the applicant’s products, thereby lessening the chances of confusion between the applied for mark DRY TECH and the opponent’s mark and trade-name DRYTAC. The applicant submits that another surrounding circumstance lessening the likelihood of confusion is that
“ . . . all advertising [by the applicant] prominently and consistently features the Polaroid name and brand . . . it is highly unlikely that there would be public confusion as a result of the Applicant’s use of the Trade Mark [that is, DRY TECH] on wares and in adverting vis à vis the Opponent’s trade mark and trade name.”
I disagree with this latter submission since it is the effect of the marks or trade-names themselves that must be considered, not of other indicia that may appear together with the marks or trade-names since the other indicia are not part of the marks or trade-names: see British Drug Houses Ltd. v. Battle Pharmaceuticals (1944), 4 C.P.R. 48 at 55 (Ex. C.); see also Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R.(3d) 3 at 11 (F.C.A.) where the Court held that appearances of the marks as actually used are irrelevant considerations for the issue of confusion. As a further surrounding circumstance the opponent has provided evidence that its customers and suppliers sometimes incorrectly refer to the opponent as Drytech, Drytec, or Dryteck rather than Drytac, and submits that this demonstrates that “people will believe that the DRY TECH and DRYTAC products and businesses are associated.” However, such mistakes by themselves are not probative in showing that customers believed that they were buying DRY TECH products made by the applicant. Rather, these instances of mistake support my earlier observation that the marks in issue are similar aurally and visually.
In view of the above, and considering in particular the low inherent distinctiveness of the opponent’s mark and trade-names and that the parties’ wares would travel through different channels of trades to knowledgable commercial/professional users, I find that the applicant has met the onus on it to show that the applied for mark DRY TECH, for the wares described in application no. 732,315, is not confusing with the opponent’s mark or trade-names at any material time.
It is not clear to me that the fourth ground of opposition, as pleaded, sets out sufficient detail to enable the applicant to reply thereto, however, the applicant denied the fourth ground in its counter statement. At the oral hearing it became clear that the opponent was alleging that the application does not comply with subsection 30(i) because the applicant could not have been satisfied that it is entitled to use the mark in Canada. In the instant case the success of the fourth ground is contingent upon a finding that the trade-marks (and trade-name) at issue are confusing, and therefore the fourth ground of opposition is rejected.
Although the photosensitive, graphic arts and lithographic films, papers and plates described in application no. 723,272 are not restricted to any particular use, the opponent’s evidence is clear that such wares are intended to be used together with the applicant’s new DRY TECH image processing equipment, and would therefore travel through the same channels of trade as the applicant’s equipment: in this respect, see McDonald’s Corporation v. Coffee Hut Stores Ltd., above, and see Dura Undercushions Ltd. v. BASF Corporation, above. I would expect that the products described in application no. 723,272 are far less expensive than the applicant’s processing machines, perhaps costing hundreds of dollars rather than thousands of dollars. Other than the cost factor, essentially the same pleadings, evidence and considerations that were taken into account in determining whether application no. 732,315 is confusing with the opponent’s mark and trade-names are relevant to determining whether application no. 723,272 is confusing with the opponent’s mark and trade-names, and the same results follow.
In view of the above, the opponent’s oppositions are rejected.
DATED AT HULL, QUEBEC, THIS 22nd DAY OF AUGUST, 1997.
Myer Herzig,
Member,
Trade-marks Opposition Board