Trademark Opposition Board Decisions

IN THE MATTER OF AN OPPOSITION by Valcom Manufacturing Group Inc. to application No. 1,181,448 for the trade-mark VELCOM filed by 1465539 Ontario Inc._____   ___________________________

                                                       

 

On June 13, 2003, 1465539 Ontario Inc. (the “Applicant”) filed an application to register the trade-mark VELCOM (the “Mark”) based upon use of the Mark in Canada in association with services since January 14, 2000. The statement of services currently reads:

Telecommunication services, namely electronic transmission of data, video, voice, images, and documents via computer-based global information and communication networks; providing multiple-user access to computer-based global information and communication networks; providing electronic mail and messaging services over a global computer network; providing electronic file transfer services over global computer networks; providing global computer networks and computer gateway services for a global computer network; assisting others in the location, colocation and operation of web sites, web servers, and various other global computer and communications networks to provide various services; the operation of web sites and other global information and communication networks to provide global computer and communication networks; providing computer network security monitoring; and web site development services relating to the foregoing.

 

The application was advertised for opposition purposes in the Trade-marks Journal of May 12, 2004.

 

On December 10, 2004, Valcom Manufacturing Group Inc. (the “Opponent”) filed a statement of opposition against the application. The Applicant filed and served a counter statement, in which it denied the Opponent’s allegations.

 

The Opponent’s evidence consists of the affidavit of Paul R. MacPherson. The Applicant’s evidence consists of the affidavit of Robert Contaldi. I have disregarded those portions of Mr. Contaldi’s affidavit that constitute argument.

 

Neither affiant was cross-examined.

 

Only the Applicant filed a written argument. Neither party requested an oral hearing.

 

Onus

The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Trade-marks Act, R.S.C. 1985, c. T-13 (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 Ltd v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D.) at 298; Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.).]

 

Section 12(1)(d) Ground of Opposition

The Opponent has pleaded that the Applicant’s Mark is not registrable pursuant to s. 12(1)(d) of the Act because the Mark is confusing with the trade-mark VALCOM registered in Canada by the Opponent under No. TMA221,337 in association with antennas, transformers, amplifiers, electrical filters and electrical cable sets.

 

The material date with respect to this ground of opposition is the date of my decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks (1991), 37 C.P.R. (3d) 413 (F.C.A.)].

 

The Opponent has met its initial burden because its registration is in good standing.

 

the test for confusion

The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks 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: a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; b) the length of time each has been in use; c) the nature of the wares, services or business; d) the nature of the trade; and e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight.

 

The Supreme Court of Canada has discussed the appropriate process for assessing all the surrounding circumstances to be considered in determining whether two trade-marks are confusing in its decisions in Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 and Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée et al. (2006), 49 C.P.R. (4th) 401. It is with these general principles in mind that I shall now assess all of the surrounding circumstances.

 

s. 6(5)(a) - inherent distinctiveness of the trade-marks and the extent to which each trade-mark has become known

Each of the marks is inherently strong since neither is suggestive of its associated wares or services.

 

The strength of a trade-mark may be increased by means of it becoming known through promotion or use.

 

The evidence of the Opponent’s President, Mr. MacPherson, provides the following information:

• the Opponent and its predecessors-in-title have designed and manufactured its registered wares and also provided professional, engineering and technical support in the area of information management, application development, communications, data communications and materials, and cable and wiring services since 1955
• approximately 5000 flyers promoting the Opponent’s wares and services were distributed across Canada and the United States between 1995 and 2005 (the quantity attributable to Canada is not provided)
• the Opponent promotes its wares and services at various trade shows, but it is not clear that any of these take place in Canada
• the Opponent promotes its wares and services via the Internet, but no information has been provided concerning the number of Canadians who have accessed its website
• the amounts spent on advertising and promoting the VALCOM mark in Canada were at least $105,000 in fiscal 2004 and $275,000 in fiscal 2005; approximately 2000 video disks promoting the Opponent’s wares and services have been distributed in Canada between 1995 and 2005
• gross revenue for the sale of antennas and communication equipment by the Opponent in Canada was approximately $7.3 million in fiscal 2004 and $5.7 million in fiscal 2005
• an article concerning the Opponent appeared in the October 1997 edition of the Ottawa Chapter of Air Force Communication Electronic Association’s newsletter (no details of the circulation figures of this publication have been provided)
• there is an entry in the 2005 edition of Book of Lists Ottawa’s Buying Guide for the Opponent’s licensee, Valcom Consulting Group Inc. (Mr. MacPherson attests that Valcom Consulting Group Inc. “carries on high quality consulting, project management and professional services to assist government and industry in achieving their objectives in multi-discipline areas of information management, communications and engineering and specialty technical support”; it is licensed to use VALCOM in association with these services by the Opponent and the “quality of these services … is closely monitored.”)

 

On the other hand, the affidavit of the Applicant’s President, Mr. Contaldi, establishes the following:

• the Applicant’s business is the provision of Internet website hosting and related services
• all of the Applicant’s advertising and promotion occurs on the Internet
• the Applicant spent approximately $106,000 annually as of 2006 on advertisement and promotion, which amount has grown from about $63,000 annually in 2000 (there is however no evidence as to what extent the advertisements/promotions were seen by Canadians)
• gross revenues from customers located in Canada have grown from about $215,000 annually when the business was started in 2000 to approximately $395,000 annually in 2006

 

Based on the foregoing information, I conclude that the Applicant’s Mark has become known to some extent in Canada, but the Opponent’s mark has become known to a greater extent.

 

s. 6(5)(b) - the length of time each trade-mark has been in use

The length of time that each mark has been in use favours the Opponent (1955 versus 2000).

 

s. 6(5)(c) and (d) - the nature of the wares, services or business; the nature of the trade

When considering the wares, services and trades of the parties, it is the statement of wares or services in the parties' trade-mark application and registration that govern in respect of the issue of confusion arising under s. 12(1)(d) [Henkel Kommanditgesellschaft auf Aktien v. Super Dragon Import Export Inc. (1986), 12 C.P.R. (3d) 110 (F.C.A.); Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.); Miss Universe Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.)].

 

The Opponent’s evidence includes the following information:

• the Opponent provides professional, engineering and technical support to the government of Canada’s National Defence, the Department of Defense of the United States navy and army, Pratt & Whitney, Rolls-Royce, General Electric, Volvo and MTU
• clients for the Opponent’s wares include Supply and Services Canada
• antennas sold by the Opponent are installed either on land, aircraft or on ships and become part of the communication systems; “today’s sophisticated antennas are sold with computers to link to the Internet as well as radio frequency signals”
• an invoice dated April 1982 shows that the Opponent sold “circuit card assembly, 1 printed wiring board, 8 transistors, 5 diodes, 12 resistors, 3 capacitors, 4 integrated circuits connector MTD normal/scan board, P/O alarm-monitor” to the Dept. of National Defence for $585
• trade shows attended by the Opponent include the Armed Forces and Communications and Electronics Associations Trade Show; the Opponent is a member of this association which it describes as a networking association of approximately 400 members in the IT and communications industry in Canada and the United States
• in the promotional material provided as Exhibits 3 and 12, the Opponent describes itself as “a service provider of choice for the Canadian military aerospace community” and “world’s leading manufacturer of fiberglass whip antennae”
• the Opponent has a website that promotes its wares and services; pages dated 10/4/2004 have been provided but no information has been provided as to the number of Canadians who have seen this website
• in the 2005 Book of Lists (Exhibit 18), the Opponent’s licensee, Valcom Consulting Group Inc., is listed as Ottawa’s 7^th largest IT consultant, specializing in the defence industry and providing the IT services of network design, network support, database management, computer security, project management, IM/IT, customer relationship management, help desk and software development; it is also listed as the 2^nd largest aerospace and defence company

 

Overall, the Opponent’s wares and clientele appear to be quite specialized.

 

The Applicant’s evidence includes the following information:

• the Applicant’s services are provided to individuals and businesses who wish to establish and maintain an Internet website and/or obtain Internet access
• the Applicant’s services are telecommunications services in that they enable customers to communicate at a distance over the Internet
• the Applicant provides its services over the Internet; the Applicant’s customers deal with it directly, not through wholesalers or distributors who might offer a variety of goods from different sources
• the Applicant’s services are “virtual” in the sense that they are created and carried on by means of a computer or computer network
• “Through a variety of options, the Applicant provides a choice to its customers of how their Internet websites can be hosted at its data center: on dedicated servers, collocated servers, or by virtual hosting on servers containing unrelated websites. However, the channels of trade are the same in each case: a customer connects to the Internet at his or her own premises via the Internet service provider (‘ISP’) of his or her own choice; once the customer is connected to the Internet he or she then has the ability to connect to the servers located at the Applicant’s data center; those servers are connected to high-band-width Internet backbone lines; this allows the hosted website(s) of the customer to be viewed and interacted-with by persons on the Internet globally.”
• Mr. Contaldi notes that the Opponent does not distribute its products online and that the nature of the Opponent’s wares prohibit them from being delivered in digital format
• the Applicant’s 2006 website offers its services at the following prices: micro package - $2.65 per month; starter package - $6.95 per month; WIN2003-SQL Serve $310 per month; business ADSL 3.0 - $59.95 per month; and premium business ADSL 6.0 $149.95 per month

 

s. 6(5)(e) - the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them

Visually, the marks bear a high degree of resemblance to each other since they differ only by a single letter. Aurally, the resemblance is also high. Neither mark suggests any particular idea, although the common suffix “com” could be interpreted as an abbreviation for “communications” or “commercial”.

 

further surrounding circumstances

i) state of the marketplace

Mr. Contaldi attests, “In my experience in the Internet web hosting industry over the last six years, the use of the suffix ‘com’ is ubiquitous on the Internet.”

 

ii) lack of evidence of confusion

Mr. Contaldi attests, “The Opponent has not alleged any instances of confusion between the trade-marks in question, despite the concurrent use of the trade-marks by the parties. This corresponds with the experience of the Applicant. I am not aware of there ever having been any instance of actual confusion between the trade-marks whatsoever.”

 

It is of course not necessary for the Opponent to evidence confusion in order for me to find that there is a likelihood of confusion. Nevertheless, an absence of confusion over a relevant period of time may entitle one to draw a negative inference about the likelihood of confusion [see Monsport Inc. v. Vetements de Sport Bonnie (1978) Lteé (1988), 22 C.P.R. (3d) 356 (F.C.T.D.), Mercedes-Benz A.G. v. Autostock Inc. (formerly Groupe T.C.G. (Québec) Inc.), 69 C.P.R. (3d) 518 (T.M.O.B.)].

 

conclusion re likelihood of confusion

As stated at paragraph 33 of the Veuve Clicquot Ponsardin decision (supra), “Section 6(2) recognizes that the ordinary somewhat-hurried consumer may be misled into drawing the mistaken inference ‘whether or not the wares or services are of the same general class’, but it is still a question for the court as to whether in all the circumstances such consumers are likely to do so in a particular case.” Having considered all of the surrounding circumstances, I find that the Applicant has satisfied its onus to show that, on a balance of probabilities, confusion between the marks is unlikely. This is primarily because of the differences between the Opponent’s wares and the Applicant’s services, and between their respective channels of trade. Even though the marks are similar and the Opponent’s mark has been used for a longer period of time, the fact that the Opponent’s reputation lies primarily in the aerospace and military fields, combined with the fact that the Opponent’s wares are antennas, transformers and the like, makes it seem unlikely that the typical consumer would think that VELCOM website services emanate from the Opponent. In today’s computer-focused society, the fact that promotion of the Opponent’s wares includes by means of the Internet and promotional DVD disks and the fact that its wares have some computer components are not in themselves enough to indicate a link between the Opponent’s wares and the Applicant’s services or to make confusion likely.

 

The s. 12(1)(d) ground is accordingly dismissed.

 

Section 16(1)(a) Ground of Opposition

I note that if the Opponent had met its initial burden, the s. 16(1)(a) ground would have failed for reasons similar to those set out above with respect to the s. 12(1)(d) ground of opposition, since nothing turns on the date at which the issue of confusion is herein assessed.

 

Section 16(1)(b) Ground of Opposition

The Opponent has further pleaded that the Applicant is not the person entitled to registration pursuant to s. 16(1)(b) on the basis that the Mark is confusing with an application for registration of VALCOM previously filed by the Opponent. It would appear that the application that the Opponent is referring to is the one that issued to registration as No. TMA211,337. As that application was not pending as of the advertisement of the Applicant’s application, this ground is dismissed. [See s. 16(4).]

Section 16(1)(c) Ground of Opposition

 

While the Opponent’s business includes computer services through its licensee, they are focussed on the defence industry and such services appear to relate to the use of the Opponent’s manufactured products. I note that Mr. MacPherson relies in his affidavit on the following quote from the newsletter in his Exhibit 17:

The Valcom Guelph facility offers its customers a complete product – service package, ISO 9001 approved, consisting of engineering design, manufacturing, software development, and repair and overhaul services for both military and civilian electronic, meteorological equipment and systems, and military and civilian broadcast antennas. The Ottawa office provides engineering management and technical support services to numerous government departments. 

 

Overall, there appear to be distinct differences between the businesses of the two parties and the s. 16(1)(c) ground fails for reasons similar to those set out above in my discussion of the s. 12(1)(d) ground of opposition.

 

Distinctiveness Ground of Opposition

The Opponent has pleaded that the Mark is not distinctive and is not capable of distinguishing the Applicant’s services from the business, wares and services associated with the Opponent’s VALCOM trade-mark and trade-name.

Section 30(a) Ground of Opposition

The Opponent has pleaded that the application does not conform to the requirements of s. 30(a) of the Act in that the statement of services is alleged to be “indeterminate, inadequately particularized and not readily ascertained”.

 

There is an initial evidential burden on the Opponent respecting the issue of the Applicant's non-compliance with s. 30(a). The Opponent has not filed any evidence or argument in support of this ground, with the result that it has not met its initial burden. This ground is accordingly dismissed. 

 

Section 30(i) Ground of Opposition

The Opponent has pleaded that the application does not conform to the requirements of s. 30(i) of the Act because the Applicant cannot be satisfied that it is entitled to use the Mark in view of the Opponent’s use of VALCOM. This ground cannot succeed for several reasons: 1) the Opponent did not plead or show that the Applicant was aware of the Opponent’s use; 2) this ground is contingent on a finding that VALCOM and VELCOM are confusing, which has not been found to be the case; and 3) where an applicant has provided the statement required by s. 30(i), a s. 30(i) ground should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant. [Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.) at 155]

 

Disposition

 

 

 

DATED AT TORONTO, ONTARIO, THIS 24th DAY OF AUGUST 2007.

 

 

 

Jill W. Bradbury

Member

Trade-marks Opposition Board