IN THE MATTER OF AN OPPOSITION
by Compagnie Montreal Trust / Montreal
Trust Company to application No. 683,099
for the trade-mark CHUBB HOMESECURE
filed by The Racal Corporation Canada Inc.
and subsequently assigned to Chubb Security
Canada Inc. - Sécurité Chubb Canada Inc.
On May 29, 1991, The Racal Corporation Canada Inc. filed an application to register the trade-mark CHUBB HOMESECURE based on proposed use with the following wares:
electronic security systems, access control systems and
fire protection systems
and with the following services:
supply, installation and monitoring of electronic security
systems; intrusion protection, fire protection, access control.
The application was advertised for opposition purposes on January 1, 1992. In September of 1992, the application was assigned to Chubb Security Canada Inc. - Sécurité Chubb Canada Inc., the current applicant of record.
The opponent, Compagnie Montreal Trust / Montreal Trust Company, filed a statement of opposition on January 24, 1992, a copy of which was forwarded to the applicant on March 5, 1992. The statement of opposition appears to be a standard form document used by the firm acting as the opponent's trade-mark agent. It includes a number of extraneous grounds which have no merit but apparently have been included simply because they appear in the firm's standard form. There is no need to adopt such a shotgun approach at the commencement of the proceeding since the statement of opposition can be amended pursuant to Rule 42 of the Trade-marks Regulations if a new ground of opposition subsequently arises. The approach adopted by the opponent in this case should be discouraged because it creates needless work for everyone involved.
The first ground of opposition is that the applicant's application does not comply with Section 30(b) of the Trade-marks Act because the applicant had used its trade-mark prior to filing its proposed use application. The second ground is that the application does not comply with Section 30(e) of the Act because the applicant did not intend to use its applied for mark. The third ground is that the application does not comply with Section 30(i) of the Act because the applicant's statement that it is satisfied that it is entitled to use its mark in Canada is false.
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 the opponent's trade-mark HOMESECURE registered under No. 373,032 for the "operation of a business offering mortgage insurance services." The fifth ground is that the applicant is not the person entitled to registration pursuant to Section 16(3) of the Act because, as of the applicant's filing date, the applied for trade-mark was confusing with the trade-mark HOMESECURE previously used in Canada by the opponent in association with "financial, real estate and insurance services." The sixth ground is that the applicant is not the person entitled to registration in view of the opponent's prior use of its trade-name Homesecure.
The seventh ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16 of the Act because the application does not comply with Section 30 of the Act, the applied for mark is not registrable and it is not a proposed mark. The eighth ground is that the applied for mark is not distinctive in view of (1) the opponent's use of its trade-mark and trade-name, (2) use of the applicant's mark outside the scope of the permitted use provided for by Section 50 of the Act and (3) use of the mark by more than one party as a consequence of a transfer of rights in the trade-mark.
The applicant filed and served a counter statement. As its evidence, the opponent filed an affidavit of one of its vice-presidents, Donald J. Lobley and a certified copy of trade-mark registration No. 373,032. The applicant filed two affidavits of Lynda Doxsee. Only the applicant filed a written argument and no oral hearing was conducted.
As for the first three grounds of opposition, although the legal burden is on the applicant to show its compliance with Section 30 of the Act, there was an evidential burden on the opponent to prove its supporting allegations of fact. The opponent failed to do so and thus the first three grounds are unsuccessful. The sixth ground is also unsuccessful since the opponent failed to evidence its prior use of the term Homesecure as a trade-name. It is debatable whether or not the seventh ground of opposition is even a proper ground. However, to the extent that it is, its success is contingent on the success of one or more of the other grounds. As for the eighth ground of opposition, its only supportable basis is the first one, namely that the applicant's mark is confusing with the opponent's trade-mark. The second basis no longer exists since the registered user provisions formerly in the Act have been repealed. As for the third basis, the opponent has failed to support that allegation with evidence.
In view of the above, the opposition is reduced to three grounds, the fourth and fifth grounds and the ground of non-distinctiveness insofar as it is based on confusion with the opponent's trade-mark. Furthermore, all of those grounds are restricted to mortgage insurance services since those are the only services for which the opponent has evidenced use of its trade-mark HOMESECURE. Since the opponent's case is strongest respecting its fourth ground, a consideration of the issue of confusion between its registered mark and the applicant's mark will effectively decide the outcome of this proceeding.
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.). Furthermore, the onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Finally, 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 for Section 6(5)(a) of the Act, the registered mark HOMESECURE is highly suggestive of the opponent's mortgage insurance services which are designed to "secure" one's "home." Thus, the opponent's mark is inherently weak. The Lobley affidavit evidences fairly significant sales and advertising figures for the opponent's HOMESECURE services for the period 1988-1992. The opponent's services have been available through more than sixty of its branches throughout Canada. Thus, I am able to conclude that the opponent's mark has become known in Canada.
The applicant's mark comprises what appears to be a surname (CHUBB) and a highly suggestive word (HOMESECURE) which indicates that the applicant's wares and services will "secure" one's "home." Apart from two coupon booklets appended to the second Doxsee affidavit, there is no evidence that the applicant's trade-mark has been used. Thus, I must conclude that it has not become known at all in Canada.
The applicant's wares and services are completely different from the opponent's services. The applicant's wares comprise security, access and fire protection systems and its services relate to the installation and monitoring of such systems. The opponent, on the other hand, sells mortgage insurance services, namely mortgage life insurance and mortgage disability insurance. Presumably the trades of the parties would also differ significantly.
There is a fair degree of resemblance between the marks at issue in all respects since the second portion of the applicant's mark is identical to the opponent's registered mark. However, the element HOMESECURE is inherently very weak and the applicant's mark commences with the word CHUBB which differentiates it to some extent from the opponent's mark.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my conclusions above, and particularly in view of the inherent weakness of the opponent's mark and the significant differences between the wares, services and trades of the parties, I find that the applicant's mark is not confusing with the opponent's registered mark. It therefore follows that the fourth, fifth, seventh and eighth grounds of opposition are unsuccessful.
In view of the above, I reject the opponent's opposition.
DATED AT HULL, QUEBEC, THIS 31st DAY OF MAY, 1995.
David J. Martin,
Member,
Trade Marks Opposition Board.