IN THE MATTER OF AN OPPOSITION by Home Quarters Warehouse, Inc. to application No. 655,535 for the trade-mark HOME WAREHOUSE filed by Home Depot, U.S.A., Inc., and presently standing in the name of Homer TLC, Inc.
On April 19, 1990, the applicant, Home Depot, U.S.A., Inc., filed an application to register the trade-mark HOME WAREHOUSE based upon proposed use of the trade-mark in Canada in association with “Operating retail stores for home improvement products”. The applicant subsequently amended its application to disclaim the right to the exclusive use of the word HOME and the word WAREHOUSE apart from its trade-mark.
The applicant’s trade-mark was advertised for opposition purposes in the Trade-marks Journal of July 24, 1991 and the opponent, Home Quarters Warehouse, Inc., filed a statement of opposition on August 26, 1991, a copy of which was forwarded to the applicant on November 27, 1991.
The applicant served and filed a counterstatement in which it denied the opponent's grounds of opposition. The opponent filed as its evidence the affidavit of Philip Langlotz while the applicant submitted the affidavit of Lawrence A. Smith. Both parties filed written arguments and an oral hearing was not conducted in respect of this proceeding. Prior to advertisement, the applicant filed a nunc pro tunc assignment dated June 3, 1991, effective February 3, 1991, assigning its rights in and to the trade-mark HOME WAREHOUSE to Homer TLC, Inc., the present applicant of record. On November 4, 1992, the applicant submitted a further assignment document dated October 20, 1992 which purports to confirm the previous transfer as it relates to the present application for registration.
The first ground of opposition is based on Section 30(i) of the Trade-marks Act, the opponent alleging that the applicant is not and cannot be satisfied that it is entitled to use its trade-mark in Canada in association with the services covered in the present application. No specific allegations of fact have been set forth in the statement of opposition with respect to the Section 30(i) ground. Accordingly, this ground is contrary to Section 38(3)(a) of the Trade-marks Act. In any event, no evidence has been furnished by the opponent in support of its Section 30(i) ground. I have therefore dismissed the first ground of opposition.
As its second ground, the opponent alleged that the applicant does not intend to use the trade-mark HOME WAREHOUSE in Canada. The material time for assessing the applicant's compliance with Section 30(e) is the filing date of its application. As of that date, Section 30(e) of the Trade-marks Act provided as follows:
30. An applicant for the registration of a trade-mark shall file with the Registrar an application containing
(e) in the case of a proposed trade-mark, where the application is not accompanied by an application for registration of a person as a registered user, a statement that the application intends to use the trade-mark in Canada;
Subsequent to the filing date of the present application, Section 30(e) was amended to refer to licensed use rather than an accompanying registered user application.
While the legal burden is upon the applicant to establish that its application complies with Section 30(e) of the Trade-marks Act, there is an initial evidentiary burden on the opponent in respect of the 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]. To meet the evidentiary 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 [see John Labatt Limited v. The Molson Companies Limited, 30 C.P.R. (3d) 293, at p. 298]. It has also been pointed out that the initial burden on an opponent is lighter respecting the issue of non-compliance with Section 30(e) of the Act [see Canadian National Railway Co. v. Schwauss, 35 C.P.R.(3d) 90, at p. 95].
The present application complies with the formal requirements of Section 30(e) of the Trade-marks Act in that the required statement appears in the application. The issue, therefore, is whether or not the applicant has substantially complied with Section 30(e), that is, is the applicant's statement that it intended to use the applied-for trade-mark true? [see Jacobs Suchard Ltd. (now Kraft Jacobs Suchard SA) v. Trebor Bassett Limited, 69 C.P.R. (3d) 569, at p. 572].
In support of this ground, the opponent submitted the affidavit of Philip Langlotz, identified in his affidavit as being at the time a student-at-law employed by the trade-mark agents for the opponent. The applicant has submitted that the Langlotz affidavit is entirely hearsay as the affiant has no personal knowledge of any of the facts at issue, but rather is based on statements made by a reporter. The Langlotz affidavit does establish that a magazine article entitled “King Kong of Hardware” appeared in Maclean’s magazine, dated April 27, 1992, and that the article included the following:
“A spokesman for Home Depot, meanwhile, said that Canada is “a logical place to look” for expansion, but added that the company has no current plans to open in Canada.”
Mr. Langlotz outlines in his affidavit his attempt to obtain an affidavit from one Barbara Wickens who had done the reporting for this article. In paragraphs 4 to 10 of his affidavit, Mr. Langlotz states as follows:
In Labatt Brewing Company Limited v. Molson Breweries, A Partnership, 68 C.P.R. (3d) 216 (F.C.T.D.), it was held that statements made in an affidavit based on information and belief are prima facie inadmissible hearsay evidence unless they satisfy the criteria of necessity and reliability. Therefore, to determine the weight to accord to the above paragraphs of the Langlotz, it is necessary to apply the criteria of necessity and reliability. In my view, the fact that Ms. Wickens was precluded by her employer from providing an affidavit in this opposition speaks to the necessity of the information in the above paragraphs being included in the Langlotz affidavit. Further, I have no reason to question the reliability of the evidence furnished by Mr. Langlotz in the above paragraphs of his affidavit. I am therefore prepared to consider Mr. Langlotz’s evidence in support of the opponent’s Section 30(e) ground.
Even considering the Langlotz affidavit, I still have my doubts as to whether the opponent has met its evidentiary burden in respect of the Section 30(e) ground. In my view, the quotation appearing in Maclean’s magazine is not inconsistent with the applicant’s assertion in its application that, as of the filing date of April 19, 1990, it intended to use its trade-mark HOME WAREHOUSE in Canada in association with the services covered in the present application. In any event, and even were I to conclude that the opponent had met its evidentiary burden, I am satisfied that the applicant would have met its legal burden in respect of this ground. In particular, Lawrence A. Smith, Vice-President, Legal, of Home Depot, U.S.A., Inc., states in his affidavit that he instructed solicitors for the original applicant to arrange to make application to the Canadian Trade-marks Office to register the trade-mark HOME WAREHOUSE in Canada in association with the operation of retail stores for home improvement products and that, as of April 19, 1990, Home Depot, U.S.A., Inc. intended to use the trade-mark HOME WAREHOUSE in Canada in association with these services. As this evidence has not been challenged by cross-examination, I accept it as reflecting the intentions of the applicant as of the filing date of this application. I have therefore rejected the second ground of opposition.
The third ground is based on Section 30(g) of the Trade-marks Act, the opponent alleging that the present application does not correctly state the applicant’s address. Section 30(g) of the Act requires the applicant to provide the address of its principal office or place of business in Canada, if any, and if the applicant has no office or place of business in Canada, the address of its principal office or place of business abroad. The material date for considering this ground is as of the filing date of the present application. The present application identifies the applicant’s address as being: 100 Paces West, 2727 Paces Ferry Road, Atlanta, Georgia 30339. The opponent has argued that the reference to “100 Paces West” appears to be instructions on how to reach the applicant from 2727 Paces Ferry Road. However, no evidence has been furnished by the opponent in support of this ground and the applicant in its counter statement asserted that the address set out in its application “is an appropriate address of the applicant”. I have therefore dismissed this ground for failure of the opponent to meet its evidentiary burden.
The remaining grounds of opposition relate to the applicant’s entitlement to registration and the distinctiveness of the applicant’s trade-mark HOME WAREHOUSE. As no evidence has been furnished by the opponent in respect of any of these grounds, the opponent has failed to met its initial burden upon it in respect of each of them. I have therefore rejected the Sections 16(3)(a) and (c) grounds, as well as the non-distinctiveness ground of opposition.
Having been delegated by the Registrar of Trade-marks pursuant to Section 63(3) of the Trade-marks Act, I reject the opponent’s opposition pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 18th DAY OF JUNE, 1997.
G.W. Partington,
Chairman,
Trade Marks Opposition Board.