IN THE MATTER OF AN OPPOSITION by The Information Technology Association of Canada to application No. 622,588 for the trade-mark ITAC filed by Siemens Aktiengesellschaft
On January 5, 1989, the applicant, Siemens Aktiengesellschaft, filed an application to register the trade-mark ITAC based upon use and registration of the trade-mark ITAC in the Federal Republic of Germany, the country of origin of the applicant, in association with "ISDN terminal adaptor circuits". The applicant claimed and was accorded a priority filing date of July 6, 1988 based on its application for registration of the trade-mark ITAC filed in the Federal Republic of Germany under No. S 46906/9.
The present application was advertised for opposition purposes in the Trade-marks Journal of April 15, 1992 and the opponent, The Information Technology Association of Canada, filed a statement of opposition on August 26, 1992. The opponent requested and was granted leave on February 12, 1993 to submit an amended statement of opposition pursuant to Rule 42 of the Trade-marks Regulations. In its amended statement of opposition, the opponent alleged the following grounds of opposition:
(a) That the applicant's application does not comply with Section 30 of the Trade-marks Act in that the applicant could not state that it was satisfied that it was entitled to use the trade-mark ITAC in Canada in association with the wares described in the application;
(b) That the applicant's trade-mark ITAC is not registrable in view of the provisions of Section 12(1)(d) of the Trade-marks Act in that the trade-mark ITAC is confusing with the opponent’s registered trade-marks ITAC and ITAC & Design, registration Nos. 347,977 and 347,978;
(c) That the applicant is not the person entitled to registration of the trade-mark ITAC in that the applicant's trade-mark was confusing with the opponent’s trade-mark ITAC which had been used in Canada in association with software since at least as early as December, 1987;
(d) That the applicant's trade-mark ITAC is not distinctive in that it would not distinguish and is not adapted to distinguish the wares in association with which it is used from the services associated with the opponent’s trade-mark ITAC.
The applicant served and filed a counter statement in which it denied the allegations set forth in the statement of opposition. The opponent filed as its evidence the affidavit of Janice Moyer while the applicant submitted as its evidence the affidavit of Philip Lapin, an employee with the applicant’s trade-mark agents, Fetherstonhaugh & Co. Both parties submitted written arguments and both were represented at an oral hearing.
While the legal burden is upon the applicant to show that its application complies with Section 30(i) of the Trade-marks Act, there is an initial evidential burden on the opponent in respect of its Section 30 ground [see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330]. In this regard, the opponent relied upon the involvement of the applicant’s Canadian subsidiary, Siemens Electric Limited, as a member of the opponent association since October of 1988. However, no evidence has been furnished by the opponent that the applicant itself was aware of the opponent association or its activities. In any event, and even had the applicant been aware of the opponent’s trade-marks prior to filing the present application, such a fact is not inconsistent with the statement in the application that the applicant was satisfied that it was entitled to use the trade-mark ITAC in Canada on the basis, inter alia, that its mark is not confusing with the opponent’s trade-marks ITAC and ITAC & Design. Thus, the success of this ground is contingent upon a finding that the trade-marks at issue are confusing [see Consumer Distributing Co. Ltd. v. Toy World Ltd., 30 C.P.R. (3d) 191, at pg. 195; and Sapodilla Co. Ltd. v. Bristol-Myers Co., 15 C.P.R. (2d) 152, at pg. 155].
The second ground of opposition is based on Section 12(1)(d) of the Trade-marks Act, the opponent asserting that there would be a reasonable likelihood of confusion between the applicant's trade-mark ITAC and its registered trade-marks ITAC and ITAC & Design. In determining whether there would be a reasonable likelihood of confusion between the trade-marks at issue within the scope of Section 6(2) of the Trade-marks Act, the Registrar must have regard to all the surrounding circumstances, including those which are specifically enumerated in Section 6(5) of the Act. Further, the Registrar must bear in mind that the legal burden is upon 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 in relation to the Section 12(1)(d) ground [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37 C.P.R. (3d) 413 (FCA)].
Under Subsection 6(5)(a) of the Act, consideration must be given to the inherent distinctiveness of the trade-marks at issue and the extent to which they have become known. While some consumers might recognize the applicant’s trade-mark ITAC as being formed from the initial letters of the words comprising the statement of wares, "ISDN terminal adaptor circuits", no evidence has been furnished by the parties that the applicant’s trade-mark is a recognized acronym for its wares. Thus, the applicant's trade-mark ITAC possesses some measure of inherent distinctiveness as applied to "ISDN terminal adaptor circuits". On the other hand, the registered trade-marks ITAC and ITAC & Design would be perceived by the average user of the opponent’s services as an acronym for its name, The Information Technology Association of Canada, and, as such, the trade-marks ITAC and ITAC & Design possess relatively little inherent distinctiveness. Accordingly, the opponent’s registered trade-marks ITAC and ITAC & Design are weak marks and are therefore not entitled to a broad ambit of protection.
No evidence has been furnished by the applicant from which I could conclude that its trade-mark ITAC has become known to any extent in Canada while the opponent’s trade-marks have become known in Canada, particularly in the telecommunications and computer industries, as identifying an organization which represents companies operating in the telecommunications and computer hardware, software and service sectors. Thus, the extent to which the trade-marks have become known favours the opponent in this proceeding. Likewise, the length of use of the trade-marks at issue weighs in the opponent’s favour in that its trade-marks ITAC and ITAC & Design have been used in Canada in association with the lobbying and promotional services covered in its registrations since January of 1987 whereas the applicant has not evidenced any use of its trade-mark ITAC in Canada.
The applicant’s trade-mark ITAC and the registered trade-mark ITAC are identical in appearance and could be sounded in a similar manner. However, except to the extent that both trade-marks might be perceived as being acronyms, the trade-marks of the parties do not suggest any idea in common.
The only remaining criteria under Section 6(5) of the Trade-marks Act are the nature of the wares and services of the parties and their respective channels of trade. In this regard, there is no similarity in the applicant’s "ISDN terminal adaptor circuits" and the lobbying and promotional services covered in the opponent’s registrations, namely:
“To represent the interests of members of the applicant which are engaged in or concerned with the production in Canada of information systems, services or equipment; to serve the needs of members of the applicant by providing leadership on issues effecting the growth and profitability of the information technology industry in Canada; to provide a forum for the information technology industry in Canada to identify and discuss issues relating to the industry; to promote analysis, discussion and co-operation in the development; of standards for the information technology industry; to act as an information resource to government, academia, industry and media for the information technology industry of Canada; and to promote improvement in the well-being of Canadians and in the quality and effectiveness of Canadian industry, education and government through effective use of information technology.”
With respect to the channels of trade of the parties, and considering the disparate nature of the wares and services associated with the trade-marks at issue, there would appear to be no potential overlap in the channels of trade associated with the applicant’s adaptor circuits and the opponent’s lobbying and promotional activities.
In her affidavit, Ms. Moyer, President and Chief Executive Officer of the opponent, states the following:
18. As the President of ITAC, I would be very concerned if ITAC’s name were to appear on any commercial article. For example, if the applicant’s ISDN connectors and the particular equpment [sic] were demed [sic] not to meet the privacy protection code, our name, and therefore our ability to make meaningful submissions to the government on issues such as the privacy code would be put in jeopardy.
18.[sic] If Siemens were to supply the government connectors bearing the trade-mark, civil servants would be hopelessly confused. I believe that civil servants would think that we were either selling the connectors, or that Siemens was a non-profit organization dedicated to advocacy on the part ofthe [sic] industry.
However, no evidence has been furnished by the opponent that the applicant’s wares might not meet the privacy code and I therefore have no reason to assume that such a situation could arise. Furthermore, no evidence has been submitted that civil servants who would be aware of the opponent and its activities might be potential purchasers of the applicant’s wares. Rather, from the exhibit to the Lapin affidavit and exhibit B to the Moyer affidavit, it would appear that the applicant’s wares are relatively sophisticated connectors having application in the telecommunications field and are not wares which I would expect to be purchased by civil servants.
In view of the above, and considering that the wares and services of the parties differ, as would the respective channels of trade of the parties, and bearing in mind that the opponent’s trade-marks are weak marks and are therefore not entitled to a broad ambit of protection, I have concluded that the applicant has met the legal burden upon it in respect of the issue of confusion between its trade-mark ITAC and the registered trade-marks of the opponent. I have therefore rejected the Section 12(1)(d) ground of opposition.
As its third ground, the opponent alleged that the applicant is not the person entitled to registration in view of the prior use by the opponent of its trade-mark ITAC in association with software. However, the opponent’s evidence does not establish that it has used its trade-mark ITAC in Canada in association with software within the scope of Section 4(1) of the Trade-marks Act. As a result, the opponent has failed to meet the burden upon it under Section 16(5) of the Act in respect of its third ground which I have dismissed.
Having concluded that the applicant’s trade-mark ITAC is not confusing with the opponent’s trade-marks ITAC and ITAC & Design, and as no further facts have been pleaded by the opponent in respect of its fourth ground of opposition, I have dismissed the final ground relating to the alleged non-distinctiveness of the applicant’s trade-mark ITAC.
In view of the above, I have rejected the opponent’s opposition pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS 10th DAY OF JANUARY, 1996.
G.W. Partington,
Chairman,
Trade Marks Opposition Board.