IN THE MATTER OF AN OPPOSITION by Simware Inc. to application No. 596,875 for the trade-mark PC SIM filed by Petro Simulator Systems Inc.
On December 4, 1987, the applicant, Petro Simulator Systems Inc., filed an application to register the trade-mark PC SIM based upon use of the trade-mark in Canada since May 10, 1987 in association with "Instruments namely; Computer Software". The applicant disclaimed the right to the exclusive use of the word PC apart from the trade-mark.
The opponent, Simware Inc., filed a statement of opposition on October 4, 1988 in which it alleged that the applicant is not the person entitled to the trade-mark PC SIM in that the applicant's trade-mark is confusing with the opponent's trade-marks SIMPC, SIMWARE and SIM 3278 and trade-name Simware Inc. as previously used in Canada. Further, the opponent alleged that the applicant's trade-mark PC SIM is not distinctive in view of the use by the opponent of its previously-noted trade-marks and trade-name in Canada. In its statement of opposition, the opponent also alleged that it is the owner of the trade-marks: SIMPC as applied to "computer software" which is the subject of application No. 612,617 filed August 9, 1988, the application being based on use of the trade-mark in Canada since June 1984; SIMWARE as applied to "computer software and instruction and user manuals" which is the subject of application No. 593,510 filed September 29, 1987, the application being based on use in Canada since June 5, 1983; and SIM 3278 as applied to "computer software and related documentation" which is the subject of application No. 592,375, filed September 29, 1987, the application being based on use of the trade-mark in Canada since April 23, 1982.
The applicant served and filed a counter statement in which it asserts that its trade-mark PC SIM is registrable and distinctive, and that it is the person entitled to its registration.
The opponent filed as its evidence the affidavit of Llewellyn A. Shepherdson while the applicant submitted the affidavit of Mustafa Oguztorelli. Further, both parties filed written arguments and both were represented at an oral hearing.
With respect to its grounds of opposition relating to the applicant's entitlement to registration, there is an initial burden on the opponent to establish its prior user of its trade-marks and trade-name prior to the applicant's claimed date of first use (May 10, 1987), as well as non-abandonment of the trade-marks and trade-name as of the date of advertisement for opposition purposes of the applicant's application in the Trade-marks Journal (September 7, 1988).
Having regard to paragraphs 7 and 11 of the Shepherdson affidavit and the accompanying exhibits referred to in these paragraphs, I am satisfied that the opponent has used its trade-name Simware Inc. in Canada prior to May 10, 1987, and had not abandoned its trade-name in this country as of September 7, 1988. Further, from paragraphs 10 and 11 and exhibits G and H, taken together with paragraphs 3, 5 and 8 and accompanying exhibits to the Shepherdson affidavit, the opponent has established its prior use and non-abandonment of the trade-mark SIM 3278 in association with computer software in Canada. In particular, paragraph 10 and 11 of the Shepherdson affidavit provide as follows:
10. That the largest proportion of my Company's sales of computer software are to customers in the United States, about 75% of the total sales being to those customers. Of the remaining sales, about 15% are presently to customers in Europe, and about 10% to Canadian customers. Attached to this my affidavit as Exhibit G is a tabulation of total revenues to my company relating to the SIM3278 and SIMPC products as well as a breakdown geographically for the years 1983 through the end of April 1989. The fiscal year for my company ends at the end of April. My company's total revenues from its software products are at present in excess of $9 million Canadian per year.
11. That attached to this my affidavit as Exhibit H are copies of invoices to various customers in the United States and Canada which are representative of sales of My Company's computer products during the period 1982 to early in 1989. My Company's trade marks and corporate name appear on the invoices, the corporate name, Simware Inc., appearing only after the change of name of the company as aforementioned herein. Many of the sample invoices refer to the SIM3278/PC product but in fact from some time prior to November 1984 both this trade mark and the trade mark SIMPC appeared on the diskettes sold to customers, so these invoices represent sales of the product under the trade mark SIMPC.
The above paragraphs are also of relevance with respect to the burden on the opponent in respect of its alleged prior use of the trade-mark SIMPC. Additionally, in paragraph 4 of his affidavit, Mr. Shepherdson refers to the adoption of the trade-mark SIMPC while paragraphs 3, 6 and 8 describe the nature of the opponent's activities in respect of its use and non-abandonment of the trade-mark SIMPC in Canada. In this regard, I have concluded that the opponent has met the burden upon it under Sections 16(5) and 17(1) of the Trade-marks Act in relation to the trade-mark SIMPC.
In view of the above, the legal burden is upon the applicant to establish that there would be no reasonable likelihood of confusion between its trade-mark PC SIM and one, or more, of the opponent's trade-marks SIM 3278, SIMWARE and SIMPC and its trade-name Simware Inc. In determining whether there would be a reasonable likelihood of confusion between the trade-marks and trade-name at issue as of the applicant's claimed date of first use, the Registrar must have regard to all the surrounding circumstances, including those set forth in Section 6(5) of the Act.
With respect to the burden upon it, the applicant has relied upon the affidavit of Mustafa Oguztorelli. The entirety of Mr. Oguztorelli's affidavit essentially comprises three invoices relating to sales of software by the applicant to the University of Alberta in 1987. Mr. Oguztorelli in his affidavit also refers to advertising literature but has not annexed copies thereof to his affidavit. As a result, none of the applicant's evidence addresses the issue of confusion between the trade-marks and trade-name at issue.
Considering the issue of confusion, the wares of the applicant and opponent are identical and, in the absence of any limitation in the applicant's statement of wares as to the specific channels of trade associated with its wares, the channels of trade associated with the wares of the parties must be considered as overlapping for the purposes of deciding the outcome of this opposition. Further, the applicant's trade-mark PC SIM is quite similar in both appearance and sounding to the opponent's trade-mark SIMPC and also bears some degree of similarity in sounding and appearance to the trade-marks SIMWARE and SIM 3278, as well as the trade-name Simware Inc. As a result, I have concluded that the applicant has failed to meet the legal burden upon it of establishing that there would be no reasonable likelihood of confusion between its trade-mark SIM PC and any one of the opponent's trade-marks SIMPC, SIMWARE or SIM 3278 or the opponent's trade-name Simware Inc. As a result, the applicant is not the person entitled to registration of the trade-mark PC SIM.
I refuse the applicant's application pursuant to Section 38(8) of the trade-marks Act.
DATED AT HULL, QUEBEC, THIS __19th___ DAY OF __June_______, 1991.
G.W.Partington,
Chairman,
Trade Marks Opposition Board.