IN THE MATTER OF OPPOSITIONS by Tridon Limited to application Nos. 745,404 and 745, 417 for the trade-marks AERO VANTAGE Design and AEROVANTAGE filed by Cooper Industries, Inc.
On January 19, 1994, the applicant, Cooper Industries, Inc., filed applications to register the trade-marks AERO VANTAGE Design (represented below) and AEROVANTAGE both based upon use of the trade-marks in Canada by the applicant itself or through its authorized licensee since at least as early as June, 1990 in association with:
“wiper blades for use on vehicles, i.e. cars, trucks, boats, airplanes”
Application No. 745,404
Both applications were advertised for opposition purposes in the Trade-marks Journal of December 21, 1994 and the opponent, Tridon Limited, filed a statement of opposition in respect of each of the applications on March 10, 1995, a copy of each of which was forwarded to the applicant on June 9, 1995. The opponent alleged the following grounds of opposition in each of the statements of opposition:
(a) The present application does not comply with Section 30 of the Trade-marks Act in that the applicant does not identify any predecessors-in-title to the applicant and it is believed that the applicant did not use the trade-mark at the claimed date of first use, namely June 1990;
(b) The applicant’s trade-mark is not registrable in view of Paragraph 12(1)(d) of the Trade-marks Act because it is confusing with its registered trade-mark AEROFOIL, registration No. 386,231, covering “Windshield wiper assemblies and component parts thereof namely windshield wiper blade supports and windshield wiper blades”;
(c) The applicant is not the person entitled to registration within the meaning of Section 16 of the Trade-marks Act in that the applicant’s trade-mark is confusingly similar to the opponent’s trade-mark AEROFOIL which has been used in Canada since at least April 1991, prior to the filing date of the applicant’s applications on January 19, 1994;
(d) The applicant is not the person entitled to registration within the meaning of Section 16 of the Trade-marks Act in that the applicant’s trade-mark is confusingly similar to the opponent’s trade-mark AEROFOIL in respect of which an application for registration was filed on May 23, 1990, prior to the claimed date of use of June 1990 and prior to the date of filing of the applicant’s applications of January 19, 1994;
(e) The applicant’s trade-marks are not distinctive within the meaning of Section 2 of the Trade-marks Act in that the applicant’s trade-mark does not distinguish and is not adapted to distinguish the applicant’s wares from the wares of the opponent, the opponent having adopted and used the trade-mark AEROFOIL in association with a windshield wiper currently sold throughout Canada since at least April 1991.
The applicant served and filed a counter statement in each proceeding on October 10, 1995. The opponent filed as its evidence in each opposition the affidavits of Matthew O’Brien and Tina Anderson. Both Matthew O’Brien and Tina Anderson were cross-examined on their affidavits, the transcripts of and exhibits to their cross-examinations and the response to the undertaking given during the O’Brien cross-examination forming part of the record in both proceedings. The applicant submitted as its evidence in both oppositions the affidavits of Scott Gregory Stone, Francesca Morrison and Gay J. Owens. Further, the opponent submitted a second affidavit of Matthew O’Brien as evidence in reply. Both parties filed a written argument and both were represented at an oral hearing.
As its first ground, the opponent alleged that the present applications do not comply with Section 30 of the Trade-marks Act in that the applicant does not identify any predecessors-in-title to the applicant and it is believed that the applicant did not use the trade-marks at the claimed date of first use, namely June 1990. While the legal burden is upon the applicant to show that its applications complies with Section 30 of the Trade-marks Act, there is an initial evidential burden on the opponent in respect of its Section 30 grounds [see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330]. To meet the evidential burden upon it in relation of 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. The material time for considering the circumstances respecting the issues of non-compliance with Section 30 of the Act is the filing date of the applications [see Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R.(3d) 469, at p. 475]. Furthermore, the evidential burden on the opponent respecting the issue of the applicant’s non-compliance with Subsection 30(b) of the Act is a light one [see Tune Masters v. Mr. P's Mastertune, 10 C.P.R.(3d) 84, at p. 89].
In the present case, the opponent has not submitted any evidence in support of its Subsection 30(b) grounds. Rather, the opponent has argued that certain paragraphs of the Stone affidavit and the exhibits thereto are inconsistent with the applicant’s claim that it has used its trade-marks AERO VANTAGE Design and AEROVANTAGE in Canada by itself or through its authorized licensee since at least as early as June, 1990 in association with “wiper blades for use on vehicles, i.e. cars, trucks, boats, airplanes”. While the opponent may rely upon the applicant’s evidence to meet its evidential burden, the opponent must show that the applicant’s evidence is ‘clearly’ inconsistent with the applicant’s claim as to its date of first use of its trade-mark(s) in Canada, bearing in mind that the opponent did not seek to cross-examine the applicant’s affiants on their affidavits.
The opponent has argued that none of the documentation submitted by the applicant conclusively shows that the applicant, Cooper Industries, Inc., used the trade-marks AERO VANTAGE Design and AEROVANTAGE in Canada in 1990. However, there was no burden on the applicant to adduce evidence in support of its claimed date of first use as no evidence had previously been submitted by the opponent which would have met its initial evidential burden in relation to the Subsection 30(b) issue. The opponent next submits that Mr. Stone failed to state in his affidavit that there is a license agreement between the applicant and Cooper Industries, Canada, Inc., its wholly-owned subsidiary, authorizing the latter to use the trade-marks AERO VANTAGE Design and AEROVANTAGE in Canada. However, the applicant’s packaging which bears a copyright notice referring to Cooper Industries, Canada, Inc., as well as reference to “Quality from Cooper Industries” and to the wares being manufactured in the United States of America, does not clearly identify the applicant or Cooper Industries, Canada, Inc. as being the source of origin of the windshield wiper blades. Thus, the evidence of record does not clearly show that Cooper Industries, Canada, Inc. has “used” the trade-marks AERO VANTAGE Design and AEROVANTAGE in Canada in association with windshield wiper blades. Consequently, the absence of evidence relating to a license arrangement between these companies is not fatal to the applicant’s use claim.
The opponent also submitted that the United States registration for the trade-mark AEROVANTAGE, registration No. 1,583,452, does not support the allegation that in 1989 Anco had already been purchased by the applicant and that Anco was a division under the applicant’s control. Moreover, the opponent pointed out that the United States registration was assigned to Cooper Automotive, Inc. in a document signed on December 18, 1992, there being no mention of any acquisition by the applicant although Cooper Industries, Inc. is identified in the address for correspondence. As well, the opponent alleged that Anco is a predecessor of the applicant in the United States of America and therefore ought to have been identified as a predecessor of the applicant in the present application. However, the present applications are not based upon use and registration of the trade-mark AEROVANTAGE in the United States and therefore the ownership of the trade-mark AEROVANTAGE in the United States is not relevant to ownership of the trade-marks AERO VANTAGE Design and AEROVANTAGE in Canada or to the issues in these proceedings.
The next ground of opposition in each case is based on Paragraph 12(1)(d) of the Trade-marks Act, the opponent alleging that the applicant’s trade-marks AEROVANTAGE and AERO VANTAGE Design are not registrable in that they are confusing with its registered trade-mark AEROFOIL, registration No. 386,231, covering “Windshield wiper assemblies and component parts thereof namely windshield wiper blade supports and windshield wiper blades”. In assessing whether there would be a reasonable likelihood of confusion between the trade-marks at issue, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in Subsection 6(5) of the Trade-marks Act. Further, the Registrar must bear in mind that the legal burden is on the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks at issue as of the date of my decision, the material date with respect to the Paragraph 12(1)(d) ground of opposition [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37 C.P.R. (3d) 413 (F.C.A.)].
Paragraph 6(5)(a) of the Act requires that the Registrar consider the inherent distinctiveness of the trade-marks at issue. In this regard, the opponent's trade-mark AEROFOIL is the British equivalent of the word “airfoil” and the latter is defined in the W.W. Webster Dictionary as “a body (as an airplane wing or propeller blade) designed to provide a desired reaction force when in motion relative to the surrounding air”. As the applicant’s evidence points to the fact that wiper blade assemblies can incorporate “airfoil” type structures and such evidence predates the date of adoption by the opponent of its trade-mark AEROFOIL [see, for example, Exhibit B to the Stone affidavit], it is apparent that the opponent’s trade-mark AEROFOIL is descriptive when applied to windshield wiper assemblies and component parts thereof, the wares covered in the opponent’s registration. As a result, the opponent’s trade-mark AEROFOIL possesses relatively little inherent distinctiveness. On the other hand, the applicant’s trade-marks AERO VANTAGE Design and AEROVANTAGE possess more inherent distinctiveness than does the opponent’s trade-mark although the applicant’s marks may vaguely suggest to some consumers that the applicant’s wares provide some kind of aerodynamic advantage.
As for the extent to which the trade-marks at issue have become known, the O’Brien affidavit attests to in excess of $6,100,000 in sales of AEROFOIL windshield wipers from April 1991 to January 1995 while spending $460,000 in advertising and promoting its AEROFOIL windshield wipers from 1991 to 1994 inclusive. According to Mr. O’Brien, the opponent’s AEROFOIL windshield wipers are distributed to consumers in Canada through such retail outlets as Canadian Tire Corporation, Uniselect, UAP, Walmart, Mr. Lube, Ford of Canada, Toyota and General Motors of Canada. Consequently, the opponent’s AEROFOIL windshield wipers have become known in Canada. In his affidavit, Scott Gregory Stone, Director of Marketing for the Cooper Automotive Products Division of Cooper Industries Canada, Inc, provides the annual sales by his company in Canada from 1991 to 1996 inclusive of AEROVANTAGE brand wiper blades purchased from the ANCO Division of the applicant, the total number of units being in excess of 360,000 which would correspond to approximately $5,500,000 in sales based on each unit having an average retail value of $15.00. Thus, the applicant’s trade-marks have also become known in Canada.
Having regard to the above, it would appear that the opponent’s trade-mark AEROFOIL has become known to a slightly greater extent in Canada than have the applicant’s trade-marks. Further, the length of time the trade-marks have been in use appears to favour the applicant which commenced use of its trade-marks in Canada in June of 1990 whereas the opponent started using its trade-mark AEROFOIL in Canada in April, 1991. Further, the wares of the parties are identical and their respective channels of trade would or could overlap. There is some degree of resemblance between the trade-marks at issue in appearance and in sounding, and the marks when considered in their entireties do not bear any apparent similarity in the ideas suggested.
As a further surrounding circumstance in respect of the issue of confusion, the applicant submitted the affidavit of Gay J. Owens which introduces into evidence the results of a state of the register search conducted by the affiant of trade-marks having the prefix AERO and covering wares in the automotive field. A number of the registrations disclosed by Ms. Owens’ search cover such wares as trucks, trains and boats sustained and guided on a cushion of air, motor homes, travel trailers, buses, campers, racing cars, automobiles, amphibious hybrid vehicles, truck bodies, truck bed covers for pickup trucks, sleeper cabs for trucks and holiday trailers. While these wares differ from the wares of the parties, they are indirectly related to windshield wiper blades and assemblies which, as noted in the applicant’s statements of wares, are for use on vehicles such as cars, trucks, boats and airplanes. Apart from the state of the register evidence, the applicant has furnished evidence of marketplace activities relating to a number of the trade-marks identified in the search results. It is therefore unnecessary to determine what weight ought to be accorded the state of the register evidence.
The applicant also filed the affidavit of Francesca Morrison, a trade-mark agent employed by the agents for the applicant. Ms. Morrison has annexed to her affidavit the results of searches of Canadian telephone books, certain business and trade directories and certain CD-ROM reference materials for business names containing the term AERO. Also included as an exhibit to the Morrison affidavit are photocopies of the cover page and pages 21 and 59 of the 1996 Canadian Tire Automotive Specialty Catalogue obtained by the affiant at a Canadian Tire Store in Ottawa. Page 21 of the catalogue includes an advertisement for the AEROWING rear window air deflector which, according to the advertisement, is intended to “force airflow down rear window to reduce rain, dust and road grime build-up”. As well, annexed as an exhibit to the Morrison affidavit is an AEROQUIP Catalogue for performance hose and fittings used in competitive racing cars which was obtained by the affiant’s firm in June of 1996. Ms. Morrison states that she confirmed with the manufacturer, Aeroquip Corporation, and its Canadian distributors, Turboquip, and CISCO, that AEROQUIP products are being sold in Canada. Ms. Morrison also obtained and has annexed as an exhibit to her affidavit a brochure entitled The Breeze “Family of Clamps” which shows AERO-SEAL clamps which can be used for automotive applications. Further, Ms. Morrison states that she attended at the Canadian Trade-marks Office and obtained a copy of an affidavit of Matthew O’Brien which was filed as evidence in an opposition to registration of the trade-mark AEROGUARD, application No. 741,350, on October 11, 1996. In that affidavit, Mr. O’Brien states that he is familiar with inter alia AEROFIRE tires, AEROSEAL hose clamps, AEROLITE trailers and AEROQUIP hose fittings, pipe fittings, pressure seals and couplings. In my view, this evidence shows that the prefix AERO has at least been adopted by a number of traders in Canada for their trade-marks in the automotive and automotive parts field. Also, in his reply affidavit, Mr. O’Brien states that the opponent is comprised of three divisions which manufacture windshield wipers, hose clamps and electronic flashers respectively although he does note that there is no expectation that a consumer would associate the three product lines.
As yet a further surrounding circumstance in respect of the issue of confusion, I would note that no evidence of instances of actual confusion have been adduced by the opponent despite the concurrent use of the trade-marks at issue both in Canada and in the United States of America. The opponent has submitted that no evidence has been furnished by the applicant to show that the wares of the parties were currently being sold through the same retail outlets in Canada. However, considering the volume of wiper blades sold by both parties in association with their respective trade-marks, the average consumer could well encounter the wares of both parties in the marketplace although not necessarily in the same retail outlets. As a result, I find the absence of evidence of instances of actual confusion to be a relevant surrounding circumstance in assessing the likelihood of confusion between the trade-marks at issue in the present proceedings.
Having regard to the inherent weakness of the opponent’s AEROFOIL trade-mark and the adoption by third parties of the AERO prefix for their trade-marks in the automotive and automotive parts and accessory field, combined with the absence of evidence of instances of actual confusion between the trade-marks at issue despite the concurrent use of the trade-marks in Canada, I have concluded that the applicant has met the legal burden upon it in respect of the issue of confusion. I have therefore rejected the Paragraph 12(1)(d) ground.
The non-entitlement grounds of opposition are also based on allegations of confusion between the applicant’s trade-marks and the opponent’s trade-mark AEROFOIL which had been allegedly previously used in Canada and was the subject matter of a previously filed application. While the material dates for assessing these grounds is the applicant’s claimed date of first use and therefore differs from the material date for considering the Paragraph 12(1)(d) ground, my conclusions concerning the surrounding circumstances in respect of the issue of confusion in relation to the non-entitlement grounds do not differ from the conclusions reached in the Paragraph 12(1)(d) ground. I have therefore rejected these grounds of opposition.
As its final ground, the opponent argued that the applicant’s trade-mark is not distinctive in view of the applicant’s misuse of the trade-marks in Canada. However, the opponent has not pleaded any facts relating to the applicant’s misuse of its trade-marks in Canada in its final ground and I have therefore dismissed this issue. On the other hand, the opponent did allege that the applicant’s trade-marks are not distinctive in that they are confusing with the opponent’s trade-mark AEROFOIL which had been used in Canada. The material date for considering this ground is as of the date of opposition in each proceeding. As in the case of the non-entitlement grounds, my conclusions concerning the surrounding circumstances in respect of the issue of confusion in relation to the non-distinctiveness ground in each opposition do not differ from the conclusions reached in the Paragraph 12(1)(d) ground. I have therefore dismissed the non-distinctiveness grounds.
Having been delegated by the Registrar of Trade-marks by virtue of Subsection 63(3) of the Trade-marks Act, I reject the opponent’s opposition pursuant to Subsection 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 20th DAY OF OCTOBER, 1998.
G.W.Partington,
Chairperson,
Trade-marks Opposition Board.