IN THE MATTER OF AN OPPOSITION
by Photofax Manufacturing (1988) Inc. to
application No. 670,753 for the trade-mark
PROTOFAX filed by Omninet Inc.
On November 20, 1990, the applicant, Omninet Inc., filed an application to register the trade-mark PROTOFAX based on proposed use in Canada with the services of the “operation of a business offering telecommunication services, namely facsimile transmission services.” The application was advertised for opposition purposes on March 25, 1992.
The opponent, Photofax Manufacturing (1988) Inc., filed a statement of opposition on May 25, 1992, a copy of which was forwarded to the applicant on June 23, 1992. The first ground of opposition is that the applicant’s application does not comply with the provisions of Section 30(e) of the Trade-marks Act because it does not contain a statement that the applicant intends to use the applied for trade-mark in Canada. The second ground is that the applicant’s application does not comply with the provisions of Section 30(i) of the Act because the applicant was aware of the opponent’s trade-mark and trade-name.
The third ground of opposition is that the applicant is not the person entitled to registration of the trade-mark PROTOFAX because, as of the applicant’s filing date, the applied for mark was confusing with the trade-name Photofax Manufacturing (1988) Inc. previously used in Canada by the opponent and with the trade-mark PHOTOFAX previously used in Canada by the opponent and its predecessor in title Photofax Manufacturing Corp. in association with
photocopiers and parts thereof, and the operation of a business offering for sale and selling photocopiers and parts thereof.
The fourth ground is that the applied for trade-mark is not distinctive in view of the foregoing.
The applicant filed and served a counter statement. As its evidence, the opponent filed an affidavit of its Controller, Michael O’Leary. As its evidence, the opponent filed an affidavit of its Sales and Marketing Manager, Yves Quenneville. Only the applicant filed a written argument and an oral hearing was conducted at which only the applicant was represented.
As for the first ground of opposition, the opponent has merely alleged that the applicant’s application does not contain the statement that the applicant intends to use its trade-mark in Canada as required by Section 30(e) of the Act. However, a review of the applicant’s application reveals that the required statement has been included. The first ground is therefore unsuccessful.
As for the second ground of opposition, the opponent has failed to prove its allegation that the applicant was aware of the opponent’s trade-mark and trade-name when it filed its application. Even if it had, however, that fact alone would not have been sufficient to support a ground of non-compliance with Section 30(i) of the Act. The second ground is therefore unsuccessful.
As for the ground of prior entitlement, in view of the provisions of Sections 16(3) and 16(5) of the Act, it was incumbent on the opponent to evidence use of its trade-mark or trade-name prior to the applicant's filing date and to show that the mark or name had not been abandoned as of the applicant's date of advertisement (i.e. - March 25, 1992). The O’Leary affidavit satisfies the opponent’s evidential burden although it only shows use of the opponent’s trade-mark and trade-name in association with “photo-receptor drums” for photocopiers and the related business of selling that product.
The applicant submitted that the opponent had not shown use of its trade-mark for any wares since the product descriptions in the copies of invoices appended as Exhibit A to the O’Leary affidavit refer to the photo-receptor drums by using third party trade-marks such as SAVIN, TOSHIBA, PANASONIC and MITA. However, it is apparent from a review of the O’Leary affidavit that the opponent manufactures photo-receptor drums for photocopier manufacturers and the opponent’s invoices include a representation of its trade-mark PHOTOFAX in the top right hand corner. I consider that the appearance of the trade-mark on the invoices constitutes use of the mark for the invoiced wares. Furthermore, Exhibit C to the O’Leary affidavit is a product label which also bears the trade-mark PHOTOFAX as a portion of the trade-name of the opponent’s apparent predecessor in title Photofax Manufacturing Corp. Although Mr. O’Leary was less informative and precise than he could have been in describing his company’s business, I consider that his affidavit does evidence prior use of his company’s trade-mark PHOTOFAX for photo-receptor drums.
In view of the above, the ground of prior entitlement remains to be decided on the issue of confusion between the applicant’s mark and the opponent’s mark and name. The onus or legal burden is on the applicant to show no reasonable likelihood of confusion. Furthermore, the material time for considering the circumstances respecting that issue is as of the applicant's filing date in accordance with the wording of Section 16(3). Finally, in applying the tests for confusion set forth in Sections 6(2) and 6(3) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set out in Section 6(5) of the Act.
The applicant’s mark PROTOFAX is a coined word and is therefore inherently distinctive. However, the mark is not inherently strong since the component FAX is descriptive of the applicant’s services. As of the material date, there was no use of the applicant’s mark and I must therefore conclude that it had not become known at all in Canada.
The word PHOTOFAX comprising the opponent’s mark and appearing in its name Photofax Manufacturing (1988) Inc. is a coined word and the mark and name are therefore inherently distinctive. However, the mark and name are not inherently strong since the component PHOTO suggests a photocopier or one of its parts and the component FAX suggests the function of a photocopier, namely to make a facsimile. The opponent has evidenced steady sales of photo-receptor drums from 1986 on to a select clientele of photocopier manufacturers and retailers. Thus, the opponent’s mark and name have become known in Canada but only within a very limited commercial field.
The length of time the marks and name have been in use favors the opponent. The opponent’s wares and services differ from the applicant’s services. The opponent sells a specialized photocopier component whereas the applicant intends to provide facsimile transmission services. The opponent submitted that the applicant’s services are related to photocopiers since some companies deal in both photocopiers and facsimile transmission machines. Although that latter observation may be true, it is irrelevant to the issue at hand since the opponent does not deal in photocopiers but rather in one specialized component of photocopiers and the applicant does not sell fax machines but rather provides facsimile transmission services. As noted by Mr. Quenneville in his affidavit, the trades of the parties are distinct.
As for Section 6(5)(e) of the Act, the marks of the parties bear a relatively high degree of visual and phonetic resemblance, the only difference being the second letter in each mark. The ideas suggested by the marks are, however, somewhat different. Similar comments apply when comparing the applicant’s mark and the opponent’s trade-name.
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 differences in the wares, services and trades of the parties and notwithstanding the resemblance between the marks and name, I find that the applicant has satisfied the onus on it to show that its trade-mark is not confusing with the opponent’s trade-mark and trade-name. The third ground is therefore unsuccessful.
As for the fourth ground of opposition, the issue of distinctiveness essentially turns on the issue of confusion between the applicant’s mark and the opponent’s mark and name. Notwithstanding the later material time respecting this issue (i.e. - the filing of the opposition), I find that my conclusions regarding the issue of confusion for the third ground are also applicable to the ground of non-distinctiveness. Thus, the fourth ground is also unsuccessful.
In view of the above, I reject the opponent’s opposition.
DATED AT HULL, QUEBEC, THIS 23rd DAY OF FEBRUARY, 1996.
David J. Martin,
Member,
Trade Marks Opposition Board.