Trademark Opposition Board Decisions

IN THE MATTER OF AN OPPOSITION by Crossworld Software, Inc. to application No. 1,080,518 for the trade-mark CROSSWORLDS filed by Crossworlds Software, Inc. (now in the name of International Business Machines Corporation)__________________________

                                                         

 

On October 27, 2000, Crossworlds Software, Inc., a Delaware Corporation, filed an application to register the trade-mark CROSSWORLDS based on proposed use in association with the following services:

Consultancy, design testing, research and advisory services, all relating to computer programming; computer aided engineering design drawing services; lithographic printing; computer programming; computer systems analysis; computer timesharing; research and development of computer hardware and software; technological services relating to computers; rental and leasing of computers and leasing of access time to a computer data base; computer rental and updating of computer software; computer software design; computer database leasing.

 

In January 2002 the application was assigned to International Business Machines Corporation (the “Applicant”).

 

The application was advertised for opposition purposes in the Trade-marks Journal of September 11, 2002. On November 5, 2002, a Quebec company, Crossworld Software, Inc. (the “Opponent”), filed a statement of opposition against the application. The statement of opposition pleaded grounds of opposition under s. 38(2)(a), (b), (c), and (d) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”). The Applicant filed and served a counter statement in which it denied the Opponent’s allegations and also denied having knowledge of the original applicant’s activities and intents.

 

As rule 41 evidence, the Opponent filed the affidavits of Philip Azimov (the Opponent’s President) and Manon Goudreau (a trade-mark searcher), plus a certified copy of registration No. TMA453,566.

 

Pursuant to rule 44, the Opponent also filed a certified copy of the Canadian Intellectual Property Office’s file relating to the present application and a second affidavit of Mr. Azimov.

 

As rule 42 evidence, the Applicant filed affidavits of John Mesberg (an executive employed by the Applicant) and Martha Murphy (a librarian employed by a company that is related to the Applicant), two affidavits of Mary Fox (a patent and trade-mark administrator employed by a company that is related to the Applicant), and certified copies of the following documents:

•         assignment of Canadian trade-mark applications 874,389, 1,080,518 and 1,069,220;

•         Canadian application 1,080,518;

•         Canadian registration TMA,568,553;

•         file history for application 1,080,518;

•         file history for application 773,831 (issued to registration as TMA453,566);

•         U.S. Trademark Registration 2,110,252;

•         U.S. Trademark Registration 2,375,703;

•         U.S. Trademark Registration 2,612,095;

•         U.S. Trademark Registration 2,423,654.

 

As reply evidence, the Opponent filed a Certificate of Compliance and a Certificate of Existence issued by Industry Canada with respect to the existence of the corporation Crossworld Software Inc. (i.e. the Opponent) as of July 7, 2004.

 

Only the Applicant filed a written argument. An oral hearing was not requested.

 

Onus

The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. There is however an initial burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist. [See John Labatt Limited v. The Molson Companies Limited, 30 C.P.R. (3d) 293 at 298; Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.).]

 

Material Dates

Section 38(2)(a) Ground of Opposition

This ground of opposition reads, in part, as follows:

…the opposed application does not comply with the requirements of section 30 of the Act since:

a.         the Applicant at the time of the filing of the application was already using the Mark in Canada, in whole or in part;…

 

There is a line of case decisions wherein the Registrar of Trade-marks has refused proposed use applications where actual use of the trade-mark was evidenced prior to the filing date. [See Nabisco Brands Ltd. v. Cuda Consolidated Inc. (1997), 81 C.P.R. (3d) 537 (T.M.O.B.) at 540.]

 

In the Nabisco case, the Chair of the Board wrote, at paragraph 4,

…the legal burden or onus is on the applicant to show that its application complies with Section 30 of the Trade-marks Act. This includes both the question as to whether or not the applicant has filed an application which formally complies with the requirements of Section 30 and the question as to whether or not the statements contained in the application are correct. To the extent that the opponent relies on allegations of fact in support of their Section 30 ground, there is an initial burden on the opponent to prove those allegations [see Joseph E. Seagram & Sons Ltd. v. Seagram Real Estate Ltd. (1984), 3 C.P.R. (3d) 325 (T.M. Opp. Bd.), at pp. 329 -330]. However, the opponent can rely on the applicant's evidence to meet the evidentiary burden upon it in respect of the Section 30 grounds.

 

In the present case, as in Nabisco, the Opponent has not presented any evidence in support of its claim that the applied-for Mark had been used in Canada prior to the filing of the proposed-use application, i.e. October 27, 2000. However, the Applicant’s own evidence appears to make this clear. At paragraphs 7 and 8 of his affidavit, Mr. Mesberg, who was employed by the original applicant, Crossworlds Software Inc., from 1998 to 2002 (when the Mark was assigned to the current owner) and was subsequently employed by the Applicant, states as follows:

7.         Crossworlds Software Inc. and International Business Machines Corporation have had business dealings over the years with customers involving Crossworlds software and services in Canada and the United States. Attachment A is a copy of selected pages of a Software License and Services Agreement entered into by Crossworlds Software Inc. dated August 4, 1999, subsequent schedules thereto and a Purchase Order all involving Crossworlds software and services, wherein the pages have been redacted to delete confidential information not intended to be made public.

 

8.         Attachment A provides an example of the content of the agreement used by Crossworlds Software Inc. in the normal course of trade with customers involving Crossworlds software and services in Canada and the United States.

 

The August 4, 1999 Software License Agreement and Services Agreement is between Crossworlds Software Inc. and an Ontario company. It provides for fees broken down between software and service fees, with the service fees consisting of hourly rates for “CrossWorlds Application Consultant” and “CrossWorlds Technical Consultant/Manager”. The fees for such services are stated to include computer consulting, development planning and programming services, as well as full implementation services. These services were slated to begin August 3, 1999 and to be completed by December 31, 1999. In addition, there is a provision for annual technical support fees. I also note that, although heavily redacted, the Purchase Order included in Attachment A bears a date of October 27, 1999.

 

I find that the foregoing satisfies the Opponent’s initial burden with respect to s. 30(e).  Given the absence of any evidence from the Applicant countering it, the s. 38(2)(a) ground of opposition succeeds on the basis that the original applicant, Crossworlds Software, Inc., was already using the Mark in Canada in association with its services when it filed its proposed use application.

 

The Applicant did make submissions with respect to the impact of Mr. Mesberg’s evidence on this ground of opposition, as follows at pages 15 and 16 of its written argument:

Further the Agreement attached to and referenced by the John Mesberg affidavit is an example of a software and service agreement used for customers in Canada and the United States. This Agreement states that it is to be governed by and construed in accordance with the laws of the State of New York, New York. Furthermore as indicated on the second page of the Agreement of Attachment A, the Agreement is intended to cover the ‘Territory’ which is qualified in the Agreement as a list of many countries where the customer carries on business. This Agreement is a private communication and document between the parties involved. Thus the above clearly provides that it was the intention of the parties that this Agreement does not constitute public advertisement or promotion in association with the mark CROSSWORLDS by the Applicant or predecessor in title in Canada or in any other country.

…

With regard to the John Mesberg affidavit and the attachment thereto, which is a redacted agreement dated August 4, 1999, this attachment is an example of an agreement that could be used in Canada and United States for providing CROSSWORLDS software and services to customers.

 

I am not swayed by these arguments. First, the Agreement does bear the authorized signature of a representative of the original applicant and appears to have had the signature of the Ontario company redacted. It is therefore not merely an agreement that “could” have been used.  Second, I see no reference in the Attachment A to the law that governs the agreement (nor is there any indication of where it was signed). Third, although page 2 does indicate that “territory” means any of the countries listed in Schedule F, Schedule F (or any other qualification) has not been provided. Fourth, there is no indication that this is not an arm’s length transaction and the display of CROSSWORLDS in the agreement and the invoice do qualify as “use” of the trade-mark for services. Finally, I note that it is clear from the evidence that performance of the Applicant’s services involve attendance at the purchaser’s place of business and given that the agreement identifies the purchaser’s offices as being in Ontario, there is no reason to assume that the services were not performed there in the time frame set out in the agreement.

 

Section 38(2)(c) Ground of Opposition

The ground of opposition pleaded under s. 38(2)(c) reads, in part, as follows:

      …the Applicant is not the person entitled to secure the sought registration since:

 

a.                   at the date of filing of the opposed application and at any relevant date, the Mark was confusing with a trade-mark that had been previously used in Canada or made known in Canada by the Opponent (or for its benefit by a licensee) or its predecessors in title, the particulars of which are hereinafter set forth:

 

a.1       CROSSWORLD for computer software and related services including    computer consultation services

 

accordingly, the opposed application should be refused pursuant to paragraphs 38(2)(c) and 16(3)(a) of the Act.

 

b.                  at the date of filing of the opposed application and at any relevant date, the Mark was confusing with a trade name that had been previously used in Canada by the Opponent or its predecessors in title, the particular of which are hereinafter set forth:

 

b.1       CROSSWORLD SOFTWARE, INC.;

b.2       CROSSWORLD SOFTWARE;

b.3       LOGICIEL CROSSWORLD INC.;

b.4       LOGICIEL CROSSWORLD.

 

for computer software and related services including computer consultation services;

 

accordingly, the opposed application should be refused pursuant to paragraphs 38(2)(c) and 16(3)(c) of the Act.

 

In order to satisfy its initial burden with respect to this pleading, the Opponent must establish that its trade-mark/trade-names were used or made known in Canada prior to October 27, 2000 in association with computer software and related services, and that such use or making known was not abandoned as of September 11, 2002. [See s. 16(5) and 17(1) of the Act.] The Opponent’s use must be both continuous and in the ordinary course of trade. [See Redsand Inc. v. Dylex Ltd. (1997), 74 C.P.R. (3d) 373 (FCTD) at 384.]

 

I summarize below those parts of the Opponent’s evidence that relate to its use of CROSSWORLD prior to the two above-mentioned material dates:

• The Opponent specializes in the development, sale and distribution of customized computer software and it offers ongoing technical support to its clients regarding the use of said software. Mr. Azimov alleges that use of CROSSWORLD began in Canada at least as early as 1994. The mark was registered on February 2, 1996 in association with computer software, among other things, based on use in Canada since at least as early as May 24, 1994. [See paragraphs 5-7, Azimov affidavit (#1) and certified copy of registration No. TMA453,566.]
• In 1996/97, the Opponent designed customized medical records and billing software for a client in the United States. The software was designed in the Opponent’s Montreal offices and a representative of the client attended at those offices to examine the software as it was being developed. Initial screenshots of such software show the CROSSWORLD trade-mark, while the invoice to the client, dated March 1, 1997, displayed the trade-name Crossworld Software, Inc.  Invoices for technical support were subsequently issued. [See paragraphs 20-24 and Exhibits PA-3 and PA-4, Azimov affidavit (#1).]
• “[I]n the early part of 1997, the Opponent designed under the trade-mark CROSSWORLD a Windows 95 version of computer software for crossword puzzles, word puzzles and word search puzzles.” Since the Opponent did not have the means to do so, it granted the right to copy and distribute this software under its trade-mark CROSSWORLD to Gametek Inc., a manufacturer who reproduced and distributed the CROSSWORLD software to retailers for resale. Gametek Inc. distributed the CROSSWORLD software to retail stores in Canada and the United States “from at least the month of December 1997”. Mr. Azimov provides a copy of the packaging used. [See paragraphs 9-15 and Exhibit PA-1, Azimov affidavit (#1).] The packaging displays the CROSSWORLD trade-mark.
• Another company, Softkey Multimedia Inc., also copied and distributed the CROSSWORLD software to retailers in Canada “during the course of 1998”. That packaging is provided as Exhibit PA-2. The packaging displays the CROSSWORLD trade-mark. Mr. Azimov was unable to provide distribution figures for the aforementioned software, but did himself buy a copy from a retail store in Montreal in 1998. [See paragraphs 16-18, Azimov affidavit (#1).] Distribution of the CROSSWORLD puzzle software ceased in 1999 in Canada. [Paragraph 19, Azimov affidavit (#1)]
• In 2002, the Opponent designed software for a sales database for a client located in Montreal. Initial screenshots of such software show the CROSSWORLD trade-mark, while the invoices to the client, dated September 18, 2002, December 12, 2002, and December 14, 2002, displayed the trade-names Crossworld Software and Crossworld Software Inc. [See paragraphs 25-28 and Exhibits PA-5 and PA-6, Azimov affidavit (#1).]
• Mr. Azimov attests at paragraph 29:

Though the Opponent’s operations might be viewed by others as modest, Crossworld Software, Inc. has used on a continuous basis its trade-mark CROSSWORLD since prior to 2000 and up to today [July 11, 2003]: Not only does the Opponent design software for its clients but it also provides services, for example, the after sale servicing, i.e. the technical support needed by the clients when they use the software designed by the Opponent. In order to illustrate the services provided by the Opponent, I file as exhibit PA-7 in support of my affidavit, a copy of an invoice for services rendered by the Opponent to one of its clients in Ville St-Laurent (Montreal) in 1995. [Such invoice displays the trade-name Crossworld Software Inc.]

           

Based on Mr. Azimov’s evidence, I find that the Opponent has met its initial burden with respect to its s. 16(3)(c) ground of opposition, in so far it is based on the trade-name Crossworld Software, Inc., and also with respect to its s. 16(3)(a) ground (the latter based on the sales in 1998 and 2002).

 

I note that the Applicant’s written argument relies on the affidavits of Ms. Fox in support of its submission that the Opponent’s trade-names have not been used or have not acquired any reputation. Ms. Fox conducted three searches that failed to locate the Opponent’s trade-names: a search of a Dun and Bradstreet database of businesses in Canada; a search of business telephone numbers listed on the CANADA411 database; and a search of the OnCorp Direct database of companies carrying on business in Ontario. (She also introduced hearsay evidence to the effect that she had been informed that the Opponent’s name had been struck from the Quebec business registry as of May 10, 2002. Such evidence is inadmissible, but in any event the Opponent’s rule 44 evidence established that it was still in existence in 2004.)

 

The Fox evidence does not prevent the Opponent from successfully satisfying its initial burden under s. 16, most importantly because the Fox evidence postdates the relevant material dates.

 

Having found that the Opponent has met its initial burden, I will now turn to an assessment of the likelihood of confusion. As I consider the Opponent’s s. 16(3)(c) ground to be stronger than its s. 16(3)(a) ground, I will focus on it.

 

The test for confusion is one of first impression and imperfect recollection. Section 6(3) of the Act indicates that use of a trade-mark causes confusion with a trade-name if the use of both the trade-mark and trade-name in the same area would be likely to lead to the inference that the wares or services associated with the trade-mark and those associated with the business carried on under the trade-name are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in s. 6(5) of the Act, namely: the inherent distinctiveness of the trade-marks or trade-names 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; and the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.

 

In Polo Ralph Lauren Corp. v. United States Polo Association et al. (2000), 9 C.P.R. (4^th) 51 (F.C.A.) at 58-59, Malone J.A. summarized the guidelines to be applied when assessing the likelihood of confusion as follows:

 

A review of some of the leading cases also establishes some practical guidelines. For example, the Court is to put itself in the position of an average person who is familiar with the earlier mark but has an imperfect recollection of it; the question is whether the ordinary consumer will, on seeing the later mark, infer as a matter of first impression that the wares with which the second mark is used are in some way associated with the wares of the earlier. With respect to the degree of resemblance in appearance, sound or ideas under subparagraph 6(5)(e), the trade‑marks at issue must be considered in their totality. As well, since it is the combination of elements that constitutes a trade‑mark and gives distinctiveness to it, it is not correct to lay the trade‑marks side by side and compare and observe similarities or differences among the elements or components of the marks when applying the test for confusion. In addition, trade‑marks must not be considered in isolation but in association with the wares or services with which they are used. When dealing with famous or well‑known marks, it may be more difficult to demonstrate that there is no likelihood of confusion, especially if the nature of the wares are similar. Lastly, the enumerated factors in subsection 6(5) need not be attributed equal weight. Each particular case of confusion might justify greater emphasis being given to one criterion than to others.

 

inherent distinctiveness of the trade-mark and trade-name

The applicant’s Mark CROSSWORLDS and the Opponent’s trade-name Crossworld Software, Inc. share a similar degree of inherent distinctiveness.

 

the extent to which each has become known

Since the application was filed based on proposed use, one would assume that the Applicant’s Mark had not become known to any extent as of the filing date. However, as discussed earlier, there is evidence that the original applicant used the Mark in Canada prior to the filing of the application. If I am entitled to consider such evidence under this ground, then I would conclude that the Applicant’s Mark had become known to some degree in Canada as of the filing of its proposed-use application but, given that the evidence only shows a single sale, any such reputation would appear to be very limited. I will also mention that although the Applicant has filed a lot of additional evidence in the form of articles available on the Internet that “include references to IBM and Crossworlds Software”, I have accorded such evidence little if any weight, primarily because there is no evidence that the articles had any Canadian circulation. In addition, I note that about a third of those articles postdates the material date and of course the articles are not admissible as evidence of truth of their contents. I also note that the Applicant’s written argument states at page 16, “These publications essentially refer to CROSSSWORLDS as a trade name and in association with software and not for the specifically defined services with which the subject CROSSWORLDS trade-mark application is associated by the Applicant.”

 

Based on the evidence, it is difficult to assess to what extent the Opponent’s trade-name had become known and I cannot conclude that it was more than minimal.

 

the length of time each has been in use

The length of time that each had been in use as of the filing of the proposed-use application favours the Opponent.

 

the nature of the wares, services or business; the nature of the trade

Both parties are in the computer business.

 

Mr. Azimov states that the Opponent “operates a business specialized in the development, sale and distribution of customized software; it also offers ongoing technical support to its clients regarding the use of said software. Three different kinds of CROSSWORLD software have been evidenced as sold by the Opponent:

1.      customized medical records and billing software;

2.      software that creates and plays word puzzles, crossword puzzles and word search puzzles; and

3.      software for a sales database.

 

Although the present application is for services, not wares, Mr. Mesberg describes the Applicant’s CROSSWORLDS “product” as follows:

IBM’s Crossworlds branded products are a suite of business process integration software that are licensed to customers to unite and extend business processes. The software can be used for such purposes as to streamline and improve internal operations and trading relationships, reduce information technology costs, increase productivity and improve responsiveness to customer demands. Crossworlds software is sophisticated business process software and typically requires associated consultative instructions, technical support and training services in order to result in effective use of the software by the end user customer.

 

As discussed earlier, Mr. Mesberg provides portions of an August 4, 1999 Software License Agreement and Services Agreement between the original applicant and an Ontario company, which sets out fees broken down between software and service fees. The service fees are stated to consist of computer consulting, development planning and programming services and are billed in the form of hourly rates for “CrossWorlds Application Consultant” and “CrossWorlds Technical Consultant/Manager”. In addition, there is a provision for annual technical support fees. The “software” covered by the license is defined as any software product of the Applicant listed in the applicable schedule. It is not clear to me what those products are, but I will assume that they fall within the description set out above.

 

the degree of resemblance between the trade-mark and trade-name  in appearance or sound or in the ideas suggested by them

There is an extremely high degree of resemblance between CROSSWORLDS and Crossworld Software, Inc. Although it appears that CROSSWORLD may be a play on “crossword” when associated with the Opponent’s game software, it is unclear to me what idea would be suggested in association with the Opponent’s business, services or other software or the Applicant’s services. However, in its written argument, the Applicant submits that CROSSWORLDS “connotes the services of integrating and bringing together disparate computer systems possibly involving the Internet into one operational system and which may function on a world wide basis.”

 

other surrounding circumstances

At paragraph 9 of his affidavit, Mr. Mesberg states:

I am not aware of, nor have I ever been advised of, any instances of confusion in Canada or in the United States between use of the name “Crossworlds” by IBM on its wares and services, and any use of any similar name on wares and services of any third party, including, but not limited to that of the Opponent.

 

However, that does not assist the Applicant because there is no evidence that Mr. Mesberg is the individual to whom any instance of confusion would be reported. Also, Mr. Mesberg, through his reference to IBM, is clearly referring to a time frame that postdates the date that is material with respect to the s. 38(2)(c) ground of opposition.

 

As a further surrounding circumstance, the Applicant points to the fact that it was able to overcome a citation of the Opponent’s registration during prosecution of the present application. However, a decision by the examination section of the Trade-marks Office is not binding on this Board and does not have precedential value for this Board. “This Board is not in a position to explain findings by the examination section of the Trade-marks Office. Further, the examination section does not have before it evidence that is filed by parties in an opposition proceeding: see the Board decisions in Thomas J. Lipton Inc. v. Boyd Coffee Co. (1991), 40 C.P.R. (3d) 272 (T.M.O.B.) at 277 and Procter & Gamble Inc. v. Morlee Corp. (1993), 48 C.P.R. (3d) 377 (T.M.O.B.) at 386.” [Interdoc Corporation v. Xerox Corporation, unreported decision of the Trade-marks Opposition Board dated November 25, 1998 re application s.n. 786,491] It is also noted that the burden on an applicant during examination is different from its burden during opposition proceedings.

 

The Applicant also points to its evidence that the parties’ marks co-exist on the United States Trade-mark Register. However, there may be factors that justify the co-registration of marks in a foreign jurisdiction that do not exist in Canada (e.g. differences in the law or a different state of the register), and so co-existence on foreign trade-mark registers is to be accorded little weight. [See Quantum Instruments, Inc. v. Elinca S.A., 60 C.P.R. (3d) 264 (T.M.O.B.) at 268-9.]

 

conclusion re likelihood of confusion

Even though the Opponent has evidenced only some prior use of its trade-name, I conclude that, on a balance of probabilities, there was a reasonable likelihood of confusion between the Applicant’s CROSSWORLD computer-related services and the Opponent’s Crossworld Software, Inc. computer-related business as of October 27, 2000. After all, the Opponent is the senior user, the mark and name are almost identical, the word CROSSWORLD has not been evidenced as commonly adopted in the computer world and, although there may be differences between the two parties’ computer wares and services, it is not apparent that such differences are sufficient to prevent confusion. In the end, both parties appear to sell software and supporting services in association with a CROSSWORLD(S) mark/name to help businesses improve their operations.

 

The s. 38(2)(c) ground of opposition therefore succeeds based on the s. 16(3)(c) portion of its pleading.

 

Before proceeding, I will mention that the Applicant evidenced that the Opponent’s registration No. 453,566 for CROSSWORLD was amended pursuant to s. 45 to delete computer consultation services, further to a decision dated July 17, 2001.  However, the fact that the Opponent did not evidence use in association with such services in those s. 45 proceedings does not detract from my ability to find that the Opponent was using its trade-mark/trade-name as of the material date herein based on the evidence filed in the present proceedings.

 

Remaining Grounds of Opposition

As I have already found in favour of the Opponent under two of the grounds of opposition, I will not address the remaining grounds.

 

Disposition

 

 

 

 

 

DATED AT TORONTO, ONTARIO, THIS 28th DAY OF AUGUST 2006.

 

 

 

Jill W. Bradbury

Member

Trade-marks Opposition Board