IN THE MATTER OF AN OPPOSITION
by Canada Post Corporation to application
No. 1,164,246 for the trade-mark WEBPOST
filed by Butterfield & Daughters Computers
Ltd. (now Webpost Enterprises Ltd.)
On January 8, 2003, Butterfield & Daughters Computers Ltd. filed an application to register the trade-mark WEBPOST based on proposed use in Canada. The applicant changed its name to Webpost Enterprises Ltd. and the application was subsequently advertised for opposition purposes on December 15, 2004. The application as advertised covers the following wares:
(1) computer software for providing multiple‑user access to computer networks, (2) computer software for use in creating and designing web sites
and the following services:
(1) development of computer software for others, (2) design, construction, maintenance and hosting of web sites for others, (3) hosting the data, images, audio and video content of others on a global computer network, internal networks, and extranets, (4) consultation, technical support, and advice regarding web site design, construction, maintenance, optimization, and regarding the creation of online communities and personal portals, (5) providing temporary use of on‑line non‑downloadable software for creating electronic catalogs, web sites, electronic storefronts and database‑related applications on global and internal communications networks.
The opponent, Canada Post Corporation, filed a statement of opposition on February 14, 2005, a copy of which was forwarded to the applicant on February 24, 2005. The first ground of opposition is that the applied for trade-mark is not registrable in view of the provisions of Section 12(1)(b) of the Trade-marks Act. In this regard, the opponent has alleged that the applicant’s mark is clearly descriptive or deceptively misdescriptive in the English language of the character or quality of the applied for wares and services and of the persons employed in their sale, production and performance.
The second ground of opposition is that the applicant’s application does not conform to the requirements of Section 30(a) of the Act because the wares “computer software for providing multiple-user access to computer networks” and the services “development of computer software for others” are not defined in ordinary commercial terms. The third ground is that the application does not conform to the requirements of Section 30(i) of the Act. In support of this ground, the opponent has alleged that the applicant could not have been satisfied that it was entitled to use its mark in Canada because the mark suggests that the wares have been authorized or approved by the opponent and because use of the mark is contrary to Sections 58 and 61 of the Canada Post Corporation Act.
The fourth ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Act because it is confusing with over fifty registered trade-marks of the opponent including a number of marks which include the suffix or prefix POST. In particular, the registrations for the following marks owned by the opponent include computer software or computer-related services: POSTWARE, CANADA POST, GEOPOST, MAIL POSTE & Design, POSTE MAIL & Design, OMNIPOST, POST CARDS, POSTALSOFT, POSTEL and POSTNET.
The fifth ground is that the applied for trade-mark is not registrable pursuant to Sections 9(1)(d) and 12(1)(e) of the Act because it is likely to lead to the belief that the wares and services in association with which it is proposed to be used have received or are produced, sold or performed under governmental patronage, approval or authority. The sixth ground is that the applied for trade-mark is not registrable pursuant to the provisions of Sections 9(1)(n)(iii) and 12(1)(e) of the Act in view of more than sixty official marks of the opponent including more than fifty which employ the prefix or suffix POST. The opponent has placed particular reliance on its official marks CYBERPOST, CYBERPOSTE, EPOST and EPOSTE.
The seventh ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(3)(a) of the Act because, as of the applicant's filing date, the applied for trade-mark was confusing with dozens of trade-marks, trade-names and official marks previously used and/or applied for in Canada by the opponent. The eighth ground of opposition reads as follows:
The trade-mark, pursuant to paragraph 38(2)(d) of the Act, is not distinctive in that it is not adapted to distinguish and does not actually distinguish the wares or services in association with which registration is sought from the wares and services provided by the opponent and its predecessor; on the contrary, it is calculated to give rise to confusion, and to enable the applicant to benefit from and trade off the goodwill of the opponent in its corporate name, trade-marks, official marks and trade-names as referred to above.
The applicant filed and served a counter statement. As its evidence, the opponent submitted 42 affidavits from the following individuals:
Gary Allen (2) Patrick Bartlett
Dale Bemben Josée Bergeron
Gaston Bouchard David Brassard
Elliott Clarke Raymond Clement
Steve Cutler (2) Simon J. Ely (2)
Jean-Maurice Filion David Findlay (2)
Judith Follett-Johns Ray Gervais
P. Claire Gordon Douglas Johnston (2)
Joelle Kolodny David Lamarche
Tom Lippa Gilles Manor (4)
Jean-Claude Martineau Herbert McPhail
Jean-Marc Nantais Paul Oldale (3)
Lianne Pepper John Reis
Catherine Riggins Timothy Skelly
Andrea Smith Jennifer Vanmeer
Pierre-Yves Villeneuve Janet Wilkinson
The applicant chose not to submit evidence. Both parties filed a written argument although the applicant’s written argument is a perfunctory two-page document basically asserting that the opponent has not met its evidential burden respecting any of its grounds of opposition. An oral hearing was conducted at which only the opponent was represented.
Dealing first with the second ground of opposition based on Section 30(a) of the Act, the former Registrar of Trade-marks stated in Dubiner and National Yo-Yo and Bo-Lo Ltd. v. Heede Int'l Ltd. (1975), 23 C.P.R. (2d) 128 that an applicant in its application “must clearly set forth wares or services as they are customarily referred to in the trade (emphasis added).” In this regard, reference may also be made to the opposition decision in Pro Image Sportswear, Inc. v. Pro Image, Inc. (1992), 42 C.P.R.(3d) 566 at 573. In the present case, the opponent contends that the service described as “development of computer software for others” is too broad and unspecific and therefore not in ordinary commercial terms. I agree. In order for that description to be meaningful, it would be necessary to provide more specifics such as the type of software or the purpose for which it has been designed. Thus, the second ground is successful insofar as it applies to the service “development of computer software for others.”
The opponent also contended that the ware described as “computer software for providing multiple-user access to computer networks” is too broad and unspecific. However, unlike the challenged service, the description of the challenged ware does set out the purpose for which the software has been designed. Thus, in the absence of evidence on point from the opponent, this aspect of the second ground of opposition is unsuccessful. The opponent did not challenge the remaining wares and services pursuant to Section 30(a).
Central to most of the opponent’s remaining grounds is its contention that the word “post” is generally understood to refer to the wares and services of the opponent and that consequently the applicant's trade-mark WEBPOST would lead the public to believe that the associated wares and services are manufactured, performed, sold or licensed by the opponent. The dictionary and encyclopedia entries evidenced by the Gordon affidavit support the opponent's contention that one meaning of the word “post” relates to the work performed by a government postal system. The Canada Post Corporation Act gives the opponent exclusive rights in this area within certain parameters and, considering the volume of business conducted by the opponent, it is likely that most Canadians associate the ordinary word “post” with the opponent, at least in the context of mail-related wares and services. In this regard, reference may also be made to the decision in Société Canadienne des Postes v. Postpar Inc. (1989), 20 C.I.P.R. 180, [1988] R.J.Q. 2740. On the other hand, the word “post” also has other commonly used meanings that are not necessarily related to the delivery of mail: see Canada Post Corp. v. Micropost Corp. (2000), 4 C.P.R.(4th) 417 at p. 419 (F.C.A.); affg. (1998), 84 C.P.R.(3rd) 225 (F.C.T.D.); affg. (1997), 84 C.P.R.(3rd) 214 (T.M.O.B.).
A review of the opponent's evidence reveals that the applicant and the opponent are potential competitors. The opponent’s evidence establishes that, although its primary business is the delivery of mail, it has engaged in the development of computer software for others, the design and construction of web sites for others and various other on-line services. A detailed discussion of the overlap in the wares and services of the parties can by found at pages 39-43 of the opponent’s written argument. For example, the Villeneuve, Brassard and Johnston affidavits describe the development and sale of computer software to customers by the opponent or its related companies. Also of note is the opponent’s Software Evaluation and Recognition Program which indicates to large volume mailers which third party software programs meet the opponent’s standards (see the Bouchard and Pepper affidavits).
In reviewing the evidence in the present case, I have also been guided by the decision of Mr. Justice Muldoon in Canada Post Corp. v. Registrar of Trade Marks (1991), 40 C.P.R.(3d) 221 (F.C.T.D.) which involved an application for judicial review of an interlocutory ruling from an opposition proceeding. The following comments by Muldoon, J. regarding the Postpar decision appear at page 239 of his decision:
The incidents of Parliament's special regard for, and statutory protection of Can. Post abound in the C.P.C.A. [the Canada Post Corporation Act] and are especially noticeable in the above-recited passages. The definitions, especially those of "mail", "mailable matter" and "transmit by post", virtually equate Can. Post with the notions of "mail or mailing" and "post or posting" of "any message, information, funds or goods which may be transmitted by post.”
Mr. Justice Muldoon went on to discuss the provisions of the Canada Post Corporation Act at length and stated as follows at page 240 of the decision:
In light of Can. Post's extraordinary special status conferred by Parliament, the corporation cannot lawfully be prevented, on the TMOB's discretion under the rules, from evincing all of its enormous statutory importance in specific regard to Can. Post's marks and words of corporate identity, by refusing the amendments to its statement of opposition just as if Can. Post were an ordinary individual or corporation. Put another way, the law exacts that Can. Post be enabled to evince its special status regarding its corporate identity in order that the TMOB have fully for consideration Can. Post's exertion of its monopoly, status and identity in opposition to anyone and everyone who or which would seek to become the registered holder of trade marks similar to, or even suggesting those of Can. Post, for such marks fall under the ban of outlawry imposed by the specific and general provisions of the C.P.C.A.
In passing, I wish to note that while it is undoubtedly true that Canada Post Corporation has a special status by virtue of its enabling statute and that it can use the provisions of that statute in support of one or more grounds of opposition, Canada Post Corporation nevertheless should
receive the same treatment as others respecting interlocutory requests in opposition proceedings. If Mr. Justice Muldoon is saying otherwise, I disagree.
As for the first ground of opposition, in view of the decision in Fiesta Barbeques Limited v. General Housewares Corporation (2003), 28 C.P.R.(4th) 254 (F.C.T.D.) which relies on the decision of the Supreme Court of Canada in Lightning Fastener Co. v. Canadian Goodrich Co. [1932] S.C.R. 189, it appears that the material time for assessing a ground based on Section 12(1)(b) of the Act is, and always was, the filing date of the application. Furthermore, the issue under Section 12(1)(b) of the Act is to be determined from the point of view of an everyday user of the wares or services. Finally, the trade-mark in question must not be carefully analyzed and dissected into its component parts but rather must be considered in its entirety and as a matter of first impression: see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R.(2d) 25 at 27-28 and Atlantic Promotions Inc. v. Registrar of Trade Marks (1984), 2 C.P.R.(3d) 183 at 186.
Given that the applicant’s statements of wares and services are fairly broadly worded and not restricted to non-postal or non-mail applications, it is possible that consumers may react to the mark WEBPOST as having some connection with Canada Post. On the other hand, it seems equally likely that consumers would react to the mark as suggesting wares or services designed to help post something to the Web. Thus, it cannot be said that the proposed mark WEBPOST clearly describes the character or quality of the applicant’s wares or services or the persons employed in their sale, production and performance. Thus, the first ground of opposition is unsuccessful.
As for the second ground of opposition, the applicant has formally complied with the provisions of Section 30(i) of the Act by including the required statement in its application. The issue then becomes whether or not the applicant has substantively complied with that subsection - i.e. - was the statement true when the application was filed? The opponent contends that the statement could not have been true because the applicant's use of its mark was contrary to the provisions of Sections 58 and 61 of the Canada Post Corporation Act.
In the present case, it was incumbent on the opponent to adduce sufficient evidence from which it could reasonably be concluded that the applicant’s use of its mark WEBPOST would be in contravention of Section 58 of the Canada Post Corporation Act. Having reviewed the opponent’s evidence, I consider that it has met its evidential burden respecting this ground. Given that the parties could potentially provide similar wares and services under similar marks, I find that the opponent has satisfied its evidential burden to show that the applicant’s use of its mark would contravene Section 58 of the Canada Post Corporation Act. Since the applicant failed to file evidence to show otherwise, the second ground is successful. Had the applicant restricted its statements of wares and services to non-mail and non-postal applications, the result might have been different in accordance with the Micropost decision noted above.
As for the fourth ground of opposition, the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark is the date of my decision: see the decision in Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R.(3d) 538 at 541-542 (T.M.O.B.). The onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Furthermore, 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. As previously noted, the opponent’s registered trade-marks include the following marks registered for computer software or computer-related services: POSTWARE, CANADA POST, GEOPOST, MAIL POSTE & Design, POSTE MAIL & Design, OMNIPOST, POST CARDS, POSTALSOFT, POSTEL and POSTNET.
As for Section 6(5)(a) of the Act, the applicant’s proposed mark WEBPOST is a coined word and is therefore inherently distinctive. However, it suggests either Web-based postal services or wares and services that allow a user to post to the Web. Thus, the mark is not inherently strong. Since there is no evidence from the applicant, I must conclude that its mark has not become known at all in Canada.
The opponent’s marks are also inherently distinctive although they all suggest mail or postal-related services. Thus, none of those marks is inherently strong. The opponent’s evidence establishes that certain of its marks, such as CANADA POST, MAIL POSTE & Design and POSTE MAIL & Design, have become very well known throughout Canada for postal and delivery services. The other marks noted above have been used to a lesser extent. For the most part, these marks are used and known in relation to the opponent’s mail delivery business. However, a very limited reputation has been acquired within a select market for some of the marks for computer-related wares and services including computer software.
As for Section 6(5)(b) of the Act, the length of time the marks have been in use favors the opponent. As for Sections 6(5)(c) and 6(5)(d) of the Act, it is the applicant’s statements of wares and services and the statements of wares and services in the opponent’s registrations 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: see the decision in McDonald’s Corporation v. Coffee Hut Stores Ltd. (1996), 68 C.P.R.(3d) 168 at 169 (F.C.A.).
As noted, the opponent’s principal business is the processing and delivery of mail. However, the evidence does establish some minor activity by the opponent in the areas of computer software and related services. Furthermore, the applicant did not restrict its statements of wares and services to limit itself to non-mail and non-postal applications. Thus, unlike in the Micropost case, it appears that there could be an overlap in the wares, services and trades of the parties.
As for Section 6(5)(e) of the Act, there is a fair degree of resemblance between the marks in all respects since all the marks include the word “post.” As noted, one of the ideas suggested by the applicant’s mark WEBPOST is the performance of postal services via the Web which is the same idea that is suggested by the opponent’s registered mark POSTNET.
As an additional surrounding circumstance, I have considered the opponent’s family or series of marks. As noted, the opponent owns a number of marks which include the word POST and are registered for computer-related wares or services and the evidence establishes that some of those marks have been in active commercial use. Furthermore, the evidence also establishes that the opponent has made use of other POST marks although not necessarily for computer-related applications. Those other marks include DOCUPOST, ENVOYPOST, INTELPOST, PRIORITY POST and XPRESSPOST. The opponent’s family of POST marks therefore increases the likelihood of confusion particularly given the broad scope of the applicant’s statements of wares and services.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. The onus or legal burden is on the applicant to show no reasonable likelihood of confusion on a balance of probabilities. That means that if the probabilities favor neither side, I must resolve the issue against the applicant. In view of my conclusions above, and particularly in view of the resemblance between the marks at issue, the potential overlap in the wares, services and trades of the parties and the existence of the opponent’s family of POST marks, I find that the probabilities are evenly balanced. Thus, the applicant has failed to satisfy its onus and the fourth ground is successful. Had the applicant’s statements of wares and services been restricted to non-postal related fields or if the applicant had submitted evidence to distinguish its business from the opponent’s, the result may have been different.
The material time for considering the circumstances respecting the sixth ground of opposition is the date of my decision: see the decisions in Allied Corporation v. Canadian Olympic Association (1989), 28 C.P.R.(3d) 161 (F.C.A.) and Olympus Optical Company Limited v. Canadian Olympic Association (1991), 38 C.P.R.(3d) 1 (F.C.A.). Furthermore, the opponent is not required to evidence use and adoption of the official marks being relied on, at least not in the absence of evidence suggesting that the marks were not used: see page 166 of the Allied decision. Finally, if the applicant is able to cast doubt as to whether or not an official mark owner qualifies as a public authority, the opponent may be required to evidence that status before relying on any such official mark: see page 216 of the trial level decision in Big Sisters Association of Ontario v. Big Brothers of Canada (1999), 86 C.P.R.(3d) 504 (F.C.A.); affg. (1997), 75 C.P.R.(3d) 177 (F.C.T.D.) and Heritage Canada Foundation v. New England Business Service, Inc. (1997), 78 C.P.R.(3d) 531 at 536 and 538 (T.M.O.B.).
As stated in Section 9(1)(n)(iii) of the Act, the test to be applied is whether or not the applicant's mark consists of, or so nearly resembles as to be likely to be mistaken for, the official mark. In other words, is the applicant's mark identical to, or almost the same as, the official mark?: see page 217 of the trial level decision in the Big Sisters case noted above. It has been contended that the words “consists of” are not equivalent to “identical to” but Mr. Justice O’Keefe held otherwise in Canadian Council of Professional Engineers v. APA - The Engineered Wood Association (2000), 7 C.P.R.(4th) 239 (F.C.T.D.) at page 259 as follows:
Having outlined the protection official marks enjoy, based on the provisions of the Act, it must be determined what the scope of prohibited marks is: The meaning of "consists of" most specifically. As a result of the foregoing, which clearly shows the privileged position official marks enjoy, I reject the interpretation of subparagraph 9(1)(n)(iii) proffered by the appellant and declare that the interpretation advanced by the Registrar is correct. In order to offend subparagraph 9(1)(n)(iii) so as to be unregistrable under paragraph 12(1)(e), the proposed mark must either be identical to the official mark or so nearly resemble it so as to be likely to be mistaken for it. The words "consists of" in the subsection of the Act are to be interpreted to mean "identical to" as was apparently held by the Registrar.
At pages 218-219 of the trial level decision in the Big Sisters case, Mr. Justice Gibson confirmed that in assessing the resemblance between the marks at issue, regard may be had to the factors set out in Section 6(5)(e) of the Act. Further, at page 218, Mr. Justice Gibson indicated that the test was to be applied as a matter of first impression and imperfect recollection: see also pages 302-303 of the decision of the Federal Court of Appeal in Canadian Olympic Association v. Techniquip Limited (1999), 3 C.P.R.(4th) 298. Finally, the opponent can rely on a family of official marks if it evidences use of the family members: see pages 303-304 of the Techniquip decision.
The opponent has relied on over fifty official marks which include the word POST or POSTE although it has placed primary reliance on the official marks CYBERPOST, CYBERPOSTE, EPOST and EPOSTE. The applicant’s proposed mark WEBPOST is not identical to any of those four marks and, having applied the tests of first impression and imperfect recollection, I do not consider that it so nearly resembles as to be likely to be mistaken for any of them. However, the opponent has evidenced use of a number of members of its family of official POST marks including CANADA POST, GEOPOST, INNOVAPOST, INTELPOST, MAIL POSTE & Design, PRIORITY POST and XPRESSPOST. This factor makes it more likely that the applicant’s proposed mark WEBPOST would be mistaken for one of the four official marks the opponent is primarily relying on. It was open to the applicant to adduce state of the register or marketplace evidence to establish the adoption and use of third party POST marks in order to counter the effect of the opponent’s family of marks but it chose not to do so. Consequently, I find that the applicant has failed to satisfy the onus on it respecting the ground based on Sections 9(1)(n)(iii) and 12(1)(e) of the Act and the ground is therefore successful.
As for the eighth ground of opposition, the material time for considering the circumstances respecting the issue of distinctiveness is as of the filing of the opposition. The onus or legal burden is on the applicant to show that its applied for trade-mark actually distinguishes or is adapted to distinguish its wares and services from those of others throughout Canada. There is, however, an evidential burden on the opponent to prove its supporting allegations of fact.
Again, I find that the opponent has satisfied its evidential burden by establishing a significant association in the public's mind between the ordinary word “post” and the opponent and by establishing that it has been engaged, at least to some extent, in computer-related wares and services in association with a number of its POST marks. I have also considered that the opponent apparently enjoys a wider ambit of protection for its marks in view of Mr. Justice Muldoon's interpretation of the provisions of the Canada Post Corporation Act in the Canada Post Corp. decision discussed above. My conclusions respecting the fourth and sixth grounds of opposition are also applicable to this ground. Since the applicant has failed to submit evidence or to restrict its statements of wares and services, it has failed to meet the legal burden on it and the eighth ground of opposition is also successful. It is therefore unnecessary to consider the remaining two grounds.
In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I refuse the applicant’s application.
DATED AT GATINEAU, QUEBEC, THIS 17th DAY OF JUNE, 2008.
David J. Martin,
Member,
Trade Marks Opposition Board.