IN THE MATTER OF AN OPPOSITION by La Confédération des Caisses Populaires et d’Économie Desjardins du Québec. to Application No. 883635 for the Trade-mark ACCORD filed by Accord Business Credit Inc.
I The Pleadings
On July 8, 1998, Accord Business Credit Inc. (the «Applicant») filed an application, based on use since 1978, to register the trade-mark ACCORD (the “Mark”), application number 883635, in association with recourse and non-recourse factoring services and credit recovery and collection outsourcing services for commercial businesses (the “Services”). On September 8, 1999, the application was advertised in the Trade-marks Journal for opposition purposes.
La Confédération des Caisses Populaires et d’Économie Desjardins du Québec (the “Opponent”) filed on September 11, 2000, a statement of opposition. The grounds of opposition pleaded are as follows:
1) In virtue of Sections 38(2)(a) and 30(a) of the Trade-marks Act R.S.C. 1985, c. T-13 (the “Act”), the application does not comply with the requirements of Section 30 in that it does not contain a statement in ordinary commercial terms of the specific services in association with which the Mark has been used;
2) In virtue of Sections 38(2)(a) and 30 (b) of the Act, the Mark has not been used in Canada since 1978 as alleged in the application and if it was used it was not used within the meaning of Section 4(1) (sic) of the Act by the Applicant since 1978 in association with the Services and has not been continuously used since then;
3) In virtue of Sections 38(2)(a) and 30(i) of the Act, the Applicant could not have been satisfied and cannot still make the declaration stipulated in Section 30(i) as it could not be convinced that it was entitled to use the Mark in Canada in association with the Services;
4) In virtue of Sections 38(2)(c) and 16 of the Act, the Applicant is not the person entitled to registration of the Mark as the application does not meet the requirements of section 30 of the Act, in that the Mark is not used or has been abandoned;
5) In virtue of Section 38(2)(d), the Mark is not distinctive, as it has never been used in conformity with the provisions of Sections 2 and 4 of the Act.
On November 14, 2000, the Applicant filed a counter statement denying each and every ground of opposition.
The Opponent’s evidence consists of the affidavits of Johanne Murzo together with exhibits JM-1 to JM-6, Alain Lacroix, Jean-Pierre Desmarais together with exhibit JPD-1 and Jennifer Petras together with exhibit JP-1.
The Applicant’s evidence consists of the affidavits of Mark Perna together with exhibits A to L, Jean-Paul Lafontaine including exhibit A and Karen Thompson together with exhibits A to C. Messrs. Perna and Lafontaine were cross-examined.
The Opponent did not file any reply evidence. Both parties filed written submissions and were represented at an oral hearing during which the Opponent advised the Registrar that it was abandoning grounds of opposition 3 and 5 described above. I shall therefore only deal with the remaining ones.
II The Opponent’s Evidence
Ms Muzzo has been working for the Opponent’s agents. She conducted a search on the Internet using the Google search engine. She inserted the words “accord credit business” which lead her to the Applicant’s website. She filed some pages of such website as exhibit JM-1. She alleges that the trade-mark ACCORD does not appear alone on those pages.
She filed extracts of the Webster’s Ninth New Collegiate Dictionary-1989, for the definition of the words: ”accord”, “factor”, “recourse”, “credit”, “collection” and “receivables”.
She also consulted two (2) electronic dictionaries namely: the BBG Financial Dictionary and Money 101 Glossary and filed, as exhibits JM-3 and JM-4, pertinent extracts.
She consulted “ Le Grand Dictionnaire Électronique” and “The Merriam-Webster On Line Dictionary” and produced extracts as exhibits JM-5 and JM-6 respectively.
Mr. Lacroix is an in-house counsel for the Opponent. He has been working for the Opponent since 1981. He alleges being familiar with financial services and has never seen or heard of the Applicant’s trade-mark ACCORD before the commencement of these opposition proceedings.
Mr. Desmarais is a private investigator working for Megaprobe. He received a mandate from the Opponent’s agents to investigate the use of the trade-mark ACCORD by the Applicant in association with the Services, since 1978.
On June 8, 2001, he spoke over the phone, with Mr. Lafontaine, the Applicant’s vice-president, using the name of Jean-Pierre Picotte. He asked Mr. Lafontaine if the Applicant was using the trade-mark ACCORD in association with its services. Mr Lafontaine allegedly replied that the Applicant did not use the word ACCORD alone in association with its services but used its trade-name Accord Business Credit Inc.
Ms. Petras has been an employee of the Opponent’s agents firm. She ordered from the Canadian Intellectual Property Office a true copy of the entire present application file that is annexed as an exhibit to her affidavit.
III The Applicant’s evidence
Mr. Lafontaine has been the Applicant’s vice-president since August 1993. He alleges having received a telephone call on June 7 or 8th, 2001, from a Mr. Jean-Pierre Picotte. The conversation lasted three to four minutes. Mr. Picotte did not state the purpose of his call nor did he indicate by whom he was employed. He gave general information about the Applicant and offered to Mr. Picotte informational brochures and samples of factoring agreements that were put in a folder to be picked up by someone on that afternoon. He filed a copy of these documents that bear the trade-mark ACCORD. He states that at no time there was any discussion about trade-marks. During his cross-examination he reinforced the content of his affidavit.
Mr. Perna joined the Applicant in June of 1978. [See his cross-examination at page 3] He has been the Applicant’s president since 1995, a wholly owned subsidiary of Accord Financial Corporation (“AFC”). Prior to 1995, he was the Applicant’s vice-president for a period of approximately ten (10) years. Arising from this corporate structure, there is an agreement with AFC by which the Applicant authorized it to use the trade-mark ACCORD in association with the Services. He alleges that the Applicant exerts direct control over the quality and character of the Services provided by AFC in association with the Mark. There has been no evidence of use of the Mark by AFC.
He provides a detailed description of each of the Services allegedly sold since 1978 by the Applicant in Canada. The Applicant has offices in Montreal and Toronto. He alleges that, since 1978, the Applicant has spent more than $2,6 million dollars to promote the Services in Canada in association with the Mark. It advertised the Services in trade magazines and business publications. Samples of such advertisements were filed as exhibit E to his affidavit. The oldest advertisement filed was published in The Secured Lender issue of May/June1987. We have no circulation figures in Canada of the magazines in which ads were placed, if indeed those magazines circulate in Canada.
He does allege that the Applicant has been using the Mark since 1978 in association with the Services. [See paragraphs 4 and 5 of his affidavit]. Mr. Justice Cattanach, in Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R.(2d) 183 made the following comment on the concept of use:
«What constitutes "use" for the purposes of the Trade Marks Act is defined in s. 2 and s. 4 thereof and any conclusion as to whether any given set of facts constitutes use is a conclusion of law. This is not a conclusion for the affiant to make for to do so is a usurpation of the function of the Registrar. What an affiant should do is establish facts from which a conclusion of use can follow.»
As such, I must look into the evidence filed to determine if there is any evidence of use of the Mark and not simply rely on the assertions made by the affiant.
The Applicant promotes the Services through its website and brochures, samples of which were filed as exhibit F to his affidavit. During his cross-examination he did admit that the Applicant started using brochures only since the early 1980’s. [See page 52 and 65 of the cross-examination] Exhibit G consists of various documents and forms, on which appears the Mark. Mr. Perna could not swear that the forms used in 1978 had the Mark as opposed to the Applicant’s trade-name. [See page 71 of the cross-examination]
The Applicant has been a member, since 1980, of various factors and finance associations. The affiant has provided the Canadian volume figures for the Services for the period of 1979 to 2000. He filed, as exhibit G, various documents on which appears the Mark together, sometimes, with a stylized A but I consider such “use” to be use of the Mark. [See Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 C.P.R. (3d) 535 (TMOB)] It is important to note that the oldest document filed by Mr. Perna goes back to 1989, being the Applicant’s 1988 annual report. Moreover such document could only serve to establish that the Applicant was carrying on business in 1988, but it is not evidence of use of the Mark in association with the Services within the meaning of Section 4(2) of the Act.
Definitions of the various services described in the application were provided through extracts of books on factoring and the Trade-marks Examination Wares and Services Manual, filed as exhibits J, K and L.
It is apparent from the content of Mr. Perna’s cross-examination that the Opponent was trying to test the veracity of the allegation of first use of the Mark since 1978 specially in view of the fact that the Applicant’s evidence, in the record at that time, did not contain any documents prior to 1987 on which appears the Mark [Exhibit E to Mr. Perna’s affidavit]. Counsel for the Opponent did request in various ways throughout Mr. Perna’s cross-examination the production of samples of promotional material and forms used in 1978 or 1979 bearing the Mark. The Applicant initially objected to such requests on the basis that the requests were too broad and were of the nature of a fishing expedition. In some occasions it took the matter under advisement. The Opponent’s position was clearly express in the following statement:
“And I’ll explain to you right now why I would like a sample of these reports. Because in my mind this is, more importantly than the brochures and catalogues, this is what the clients of Accord Business Credit pay most attention to. And the reason I’m going back to ‘78 is I’d like to see the evolution of the trademark on those forms, because we don’t have in Mr. Perna’s affidavit any sample of the trademark, if I’m not mistaken, older than ’87.” [page 24 of Mr. Perna’s cross-examination]
The Opponent’s counsel made similar remarks at pages 71 to 74 of such cross-examination.
In its replies to the undertakings, the Applicant responded maintaining its objections to such questions but in any event did provide few “extraneous historical documents” as the Applicant allegedly destroys, typically after seven years, in the normal course of its business forms and records. The oldest document bearing the Mark goes back to November 6, 1981. It is a photocopy of a memo pad sheet bearing the Mark. It does not establish use per se of a trade-mark in association with the Services as defined in Section 4(2) of the Act. The other document filed, as annex A to the reply to the undertakings, is a letter from the Applicant, dated November 1st, 1981, on which appears the trade-name Accord Business Credit. This document does not establish use of the Mark. I do not consider the use of the Opponent’s trade-name Accord Business Credit as use of the trade-mark ACCORD. [See Registrar of Trade Marks v. CII Honeywell Bull, [1985] 1 F.C. 406]
During his cross-examination, Mr. Perna stated that the first logo used by the Applicant in 1978 was a stylized A, which by itself does not constitute use of the Mark. The word ACCORD was added underneath such logo since at least 1981. However, the Applicant did not file any documents to substantiate such statement. The earliest document bearing the combination of the stylized A and the Mark is dated December 31, 1984. [See invoice 766 as part of exhibit A to the reply to undertaking 7 to Mr. Perna’s cross-examination] A new stylized version was implemented at the end of 1997.
Ms. Thompson has been a trade-mark searcher for 24 years and was employed by the Applicant’s agents when she executed her affidavit. She was asked to do a search using the CDNamesearch system, which comprises the Canadian Trade-marks database, to locate any trade-marks allowed or registration issued containing the word “factoring” within the description of the services. She located 77 trade-marks. Out of these 77 marks, four of them specifically referred to “recourse factoring” in the description of the services.
III The law
The legal onus is upon the Applicant to show that its application complies with the provisions of Section 30 of the Act, but there is however an initial onus on the Opponent to establish the facts relied upon by it in support of each ground of opposition. Once the Opponent has satisfied this initial onus, the Applicant still has to prove that the particular grounds of opposition should not prevent the registration of the Mark [See Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330; and John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R. (3d) 293].
The material time for considering the issue of non-entitlement to the registration of the Mark is the date of first use alleged in the application [See Section 16(1) of the Act]. The Applicant did not state in its application a precise date during the calendar year of 1978. Under these circumstances the Registrar considers the alleged date of first use to be December 31, 1978. [See Khan v. Turban Brand Products Ltd. (1984) 1 C.P.R. (3d) 388 (TMOB).]
The critical date for assessing the issue of non-compliance with the provisions of Section 30 of the Act is the filing date of the application [see Dic Dac Holdings (Canada) Ltd v.Yao Tsai Co. (1999), 1 C.P.R. (4th) 263]
IV Analysis of the legal issues
I will first deal with the fourth ground of opposition as drafted. The issue of non-entitlement to the registration of a trade-mark must be supported by either an allegation of prior use in Canada of a confusingly similar trade-mark or trade-name or an allegation that a trade-mark has been made known in Canada prior to the alleged date of first use of the trade-mark applied for or that an application for the registration of a trade-mark was previously filed in Canada (Section 16(1) of the Act). The Opponent has not included any such allegation in its statement of opposition. As such the Opponent cannot rely on Section 16 to argue that the Applicant did not meet the requirements of Section 30 of the Act. It has already been pleaded in the second ground of opposition. Therefore the fourth ground of opposition is dismissed because, as drafted, it does not constitute a valid ground of opposition.
As for the first ground of opposition, the Opponent has not met its initial onus. The content of the affidavit of Ms. Muzzo does not establish that the Services are not described in ordinary commercial terms. In any event, paragraphs 4, 12, 13 and 14 of Mr. Perna’s affidavit do confirm that the Services were described in ordinary commercial terms. Therefore the first ground of opposition is also dismissed.
The second ground of opposition raises the issues of burden of proof, what can be used to meet such burden and if it is met what are the consequences. I refer to the decision of Hearing Officer J. Bradbury in Black Dog Tavern Co. v. 533737 Alberta Ltd. 2000, CarswellNat 2479, wherein she summarized these issues in the following words:
“To the extent that the opponent relies on allegations of fact in support of its Section 30 ground, there is an evidential burden on the opponent to prove those allegations [see Joseph E. Seagram & Sons Ltd. et al. v. Seagram Real Estate Ltd. (1984), 3 C.P.R. (3d) 325 at pp. 329-330]. That burden is lighter respecting the issue of non-compliance with Subsection 30(b) [see Tune Masters v. Mr. P’s Mastertune (1986), 10 C.P.R. (3d) 84 at p. 89]. To meet the evidential burden upon it with respect to a particular issue, the opponent must adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support that issue exist [see John Labatt Limited v. The Molson Companies Limited (1990), 30 C.P.R. (3d) 293 at p. 298]. This burden can be met by reference not only to the opponent's evidence but also to the applicant's evidence [see Labatt Brewing Company Limited v. Molson Breweries, a Partnership (1996), 68 C.P.R. (3d) 216 at p. 230].”
I shall also reproduce a pertinent extract of Mr. Justice Heald’s judgement in Labatt Brewing Company Limited, supra, which has been cited in many cases involving a ground of opposition based on Section 30(b) of the Act:
“As Labatt correctly stated in its submissions, it had an onus, as an applicant, to satisfy the Registrar that it had complied with the requirements of section 30. Accordingly, Labatt filed evidence, including the Beasley affidavits, to establish the trade-mark's registrability. In Molson's Amended Statement of Opposition, it relied on the ground set out in subsection 38(2) (a) above, and asserted that the applied for mark had not been in use by Labatt since the date claimed, being 1957. However, Molson did not adduce any evidence in support of this allegation. Thus, the issue arises as to whether the Registrar erred in refusing registration of the trade-mark on this ground, in view of the opponent's failure to adduce evidence pertaining to this ground.
In my view, the issue is not as simple as Labatt contends. It cannot simply be said that because Molson did not file evidence relating to the ground of opposition, that a finding on that ground is erroneous. Labatt's position was that the facts contained within its affidavit evidence established use of the mark since the date claimed. Molson, without challenging those facts per se, except on the basis of admissibility, took the position that those facts did not establish use of the applied for mark. In my view, Molson was not required to adduce evidence in support of this submission. The decision in John Labatt, supra, puts an evidentiary burden on an opponent to the extent that the opponent relies on allegations of fact. However, the opponent in the case at bar, Molson, was making a legal argument as to the inferences to be drawn from the facts alleged by Labatt. Accordingly, I reject the submission of Labatt that the Registrar erred in deciding on a ground for which Molson had not filed evidence.
Labatt further relied on the Federal Court of Appeal decision in Playboy, supra. In that case, the Registrar rejected opposition to an applied for mark on the ground that the applicant had not used it as of the date claimed. The Trial Division [39 C.P.R. (2d) 32] affirmed the Registrar's decision [35 C.P.R. (2d) 43] and the Court of Appeal dismissed the appeal. Although the opponent had asserted that there was no use as of the date claimed, the opponent did not adduce any evidence in support of the assertion. The applicant for the applied for mark also had not filed any evidence as to use on the date claimed. The Court summarized the situation as follows:
The appellant [opponent] in the opposition proceedings filed four affidavits in none of which was any evidence submitted to support the allegation that the date of first use was later than that specified in the application. By the same token, there was no sworn testimony from the respondent to support that specification other than the reiteration thereof contained in the counterstatement. The Registrar was thus left in the position that he had the statement of the respondent in the form required by the Act and the rules pursuant thereto, unrebutted by any evidence having any probative value. He had only the unsubstantiated allegation of the appellant. In this situation he had a question of fact to resolve and, in my view, on the evidence before him was entitled to conclude, as he apparently did, that the attack on the date of first use specified by the respondent had not been successful. In my opinion, he was quite entitled, on the material before him, to so conclude and the trial Judge did not err in rejecting this attack on the Registrar's decision. [ Playboy, supra at 275-276.]
Labatt's Counsel submitted that the passage in Playboy quoted above, supports its submission that if the opponent does not file evidence with respect to a ground of opposition, then the applicant should be able to conclude that it is no longer in issue. I do not agree that Playboy supports that submission. The facts in Playboy render it distinguishable from the case at bar, as in that case there was no sworn evidence before the Registrar. The only evidence before him was an unrebutted statement of the applicant. The Registrar chose to accept that statement, and made his findings accordingly. In the case at bar, there was sworn evidence before the Registrar from which he could draw factual inferences. The Registrar in the case at bar was thus not in the same position as was the Registrar in Playboy.
Labatt's Counsel submitted that the Registrar "can only look at the totality of the evidence in respect of the ground in respect of which it was filed." (Transcripts, April 9, 1996 at page 19.) Counsel further submitted that the Registrar must look at the evidence on an "issue-by-issue basis, a ground-by- ground basis." (Transcript, April 9, 1996 at page 19.) I reject this position taken by Labatt. In my view, the Registrar is entitled to look at the evidence in its entirety, in order that he/she be satisfied that the mark is registrable and that there are no valid grounds of opposition. If this were not the case, the purity of the Trade-marks Register would be jeopardized.” (My underlines)
Finally, Board Member Mr. Martin in Hearst Communications, Inc. v. Nesbitt Burns Corp., (2000) 7 C.P.R. (4th) 161 stated:
“The opponent's evidence does not deal with the accuracy of the applicant's claimed date of first use. However, as noted by the opponent, the applicant's own evidence casts doubt on the claimed date.”
I shall address the issues raised by the parties with respect to this ground of opposition in applying the principles enunciated above.
The Applicant is arguing that the Opponent has not met its initial onus of proof. It takes the position that Mr. Lacroix has no expertise in trade-mark law and his employment with the Opponent goes back only to 1981. Therefore, even if he was qualified to attest the non-use of the Mark, his personal knowledge would go back only to 1981, while the application is based on use since 1978.
The Applicant argues that the Desmarais affidavit is pure hearsay as it purports to rely on statements made by Mr. Lafontaine. Such affidavit does make proof that a telephone conversation took place but does not make proof of its content. In any event as it will appear from my reasoning, I am not relying on the content of Mr. Desmarais’s affidavit to support my conclusion.
As stated above, even though the Opponent has an evidential onus, it is a light one [See in addition Tune Masters c. Mr. P’s Mastertune Ignition Services Ltd. (1986) 10 C.P.R. (3d) 84 (T.M.O.B.), Labatt Brewing Co. c. Molson Breweries, a Partnership (1996), 68 C.P.R. (3d) 216 (F.C.T.D.) et Williams Telecommunications Corp. c. William Tell Ltd., (1999) 4 C.P.R. (4th) 107 (T.M.O.B)]. Often opponents will allege such ground in their statement of opposition but it is dismissed for failure to meet the initial onus. The Applicant has referred to Dion Neckwear Ltd v. Christian Dior, S.A. [2002] 3 C.F.405 to argue that the standard of proof is the balance of probabilities and the Opponent’s evidence has not met that standard.
The Applicant argues further that if we look at the evidence as a whole, the balance of probabilities favours the Applicant in that it is more reasonable to conclude that it has been using the mark since 1978 than to conclude otherwise. I disagree for the reasons hereinafter set forth.
If the Opponent raises as a ground of opposition that the Applicant did not comply with the requirements of Section 30 of the Act, he has an initial onus to establish facts that make this allegation probable. However, in order to meet this initial onus, the Opponent can rely on all the evidence filed, including if any, the evidence filed by the Applicant. There is no interlocutory decision that is rendered by the Registrar on the sufficiency of the evidence filed by the Opponent and therefore the Applicant has to determine at this early stage if it is necessary to file any evidence to prove that the grounds of opposition raised should not prevent the registration of the trade-mark. It could be that some evidence needs to be filed to dispose of a particular ground of opposition, but such evidence is part of the record and could be used by the Opponent to meet its initial onus with respect to any ground of opposition pleaded. If the Opponent meets its initial onus by referring to the whole evidence in the record, the burden will then shift to the Applicant who will have to prove, on a balance of probabilities, that its application complies with the requirements of Section 30 of the Act, namely in our case, that the Mark was first used as of the claimed date of first use, and that such use was on a continuous basis. [See Labatt Brewing Co. v. Benson & Hedges (Canada) Ltd. (1996), 67 C.P.R. (3d) 258 (F.C.T.D.) at 262]
From the evidence filed by both parties, I conclude that the Opponent has met its initial onus. The combined effect of the content of the affidavits of Mr. Lacroix and Mr. Perna, together with his cross-examination, raises serious doubts as to the actual use of the Mark as of the claimed date of first use and its continuous use between 1978 and December 31, 1984 (the date where it could be argued that there is proof of use of the Mark). Mr. Perna, in his affidavit, makes conclusions in law without filing any documentary evidence to substantiate the date of first use of the Mark. As for Mr. Lacroix, despite the fact that he could not attest to the non-use of the Mark between 1978 and 1981, the date when he began his employment with the Opponent, he has been working for a financial institution for over twenty years and the statement made in his affidavit is serious enough to raise some doubts as to the continuous use of the Mark in Canada between 1981 to 1984.Those doubts are confirmed by examining the content of the cross-examination of Mr. Perna in which the Applicant objected to the production of documents that would enable it to establish use of the Mark in Canada as of the claimed date of first use. With all due respect for the Applicant, such issue was important and the answers to the undertakings provided were not satisfactory. If an applicant decides to base its application on use since a particular date, one would expect that it could justify such use if required. The Applicant alleged that it destroys its records after seven years. Despite such destruction, I notice that the Applicant was able to retrieve documents going back to 1981. If an applicant cannot substantiate the use of a trade-mark from the date of first use, it is always possible for it to rely on a later date of first use, which it will be able to prove; but he cannot file its application based on proposed use if it was used before the filing date of the application. [See Marineland Inc. v. Marine Wonderland & Animal Park Ltd. (1974), 16 C.P.R. 97 (FCTD)]
Consequently, the burden shifted on the Applicant who had to prove, on a balance of probabilities, that it first used the Mark in 1978 and continued to do so since then. The Applicant failed to show use of the Mark in Canada since 1978, within the meaning of Section 4(2) of the Act, in association with the Services and continued use since that date until the filing date of the application. There is no evidence of use of the Mark in Canada in association with the services between January 1st, 1979 and December 31, 1984, the date appearing on invoice 766. I agree with the Applicant that it does not need to establish use of its trade-mark for every single month of the critical period, but the gap of five (5) years in our case is too important to be ignored in view of the evidence filed by the Opponent. The balance of probabilities favours the Opponent in that it is more probable to conclude, from the evidence in the record, that the Applicant did not start using the Mark as of December 31, 1978 and only started using the Mark on a continuous basis from December 31, 1984 onwards. I therefore maintain the Opponent’s second ground of opposition.
V Conclusion
Having been delegated authority by the Registrar of Trade-marks by virtue of Subsection 63(3) of the Act, I refuse the Applicant’s application to register the Mark pursuant to Subsection 38(8) of the Act.
DATED, IN BOUCHERVILLE, QUEBEC, THIS 21st DAY OF SEPTEMBER 2005.
Jean Carrière,