IN THE MATTER OF AN OPPOSITION by Mister Mechanic Inc. to application no. 659,562 for the trade-mark LUBEMASTER & Design filed by Pater International Automotive Franchising Incorporated
On June 7, 1990, the applicant, Pater International Automotive Franchising Incorporated, filed an application to register the trade-mark LUBEMASTER & Design, represented below, based on use of the trade-mark in Canada by the applicant’s predecessor-in-title, Master Mechanic Inc., since at least as early as August 1, 1984 in association with “automobile maintenance services, namely lubrication and oil change services”.
The present application was advertised for opposition purposes in the Trade-marks Journal of April 23, 1993 and a statement of opposition was filed by Mister Mechanic Inc. on June 21, 1993. The first ground is based on non-compliance with Section 30(b) of the Trade-marks Act since the mark had allegedly not been used since August 1, 1984. The opposition is also based on Section 12(1)(d) of the Trade-marks Act , the opponent alleging that the applicant’s trade-mark is confusing with its trade-mark MISTER MECHANIC & Design, a representation of which is set out below, registration No. 334,518, registered on November 20, 1987 in association with the services of maintaining and repairing motorized vehicles. As its final ground, the opponent alleged that the applicant’s trade-mark is not distinctive of the applicant in view of the opponent’s use and registration of the mark MISTER MECHANIC & Design.
Registration No. 334,518
The applicant filed a counterstatement denying all the allegations made in the statement of opposition. The opponent filed as its evidence the affidavit of a legal secretary for the opponent’s trade-mark agents attaching a certified copy of the opponent’s registration for the trade-mark MISTER MECHANIC & Design. The applicant’s evidence consists of the affidavit of Andrew Wanie, President of the applicant. Only the applicant filed a written argument and neither party requested an oral hearing.
With regard to the first ground of opposition, the onus or legal burden is on the applicant to show that its application complies with Section 30 of the Trade-marks Act [see Joseph Seagram & Sons v. Seagram Real Estate, 3 C.P.R. (3d) 325, at pp. 329-330]. However, the opponent has an initial evidentiary burden to submit sufficient evidence from which it could reasonably be concluded that the facts exist to support that ground, although that burden is lighter in respect of a Section 30(b) ground of opposition [see Tune Masters v. Mr. P’s MasterTune, 10 C.P.R. (3d) 84, at p.89]. In this case, the only evidence submitted by the opponent was a certified copy of its registration for the trade-mark MISTER MECHANIC & Design and this evidence does not support the first ground of opposition. Therefore, this ground is dismissed for failure of the opponent to meet its evidential burden.
With regard to the opponent’s claim that the applicant’s trade-mark is not registrable in view of the provisions of Section 12(1)(d) of the Trade-marks Act, the opponent submitted a certified copy of its registration for the trade-mark MISTER MECHANIC & Design. This ground can therefore be determined by examining whether or not the trade-marks at issue are confusing as of the material date which, in this instance, is the date of my decision [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.)]. The issue of whether or not there would be a reasonable likelihood of confusion between the trade-marks at issue must be decided based on a consideration of all the surrounding circumstances, including those specifically enumerated in Section 6(5) of the Trade-marks Act. Finally, it must be kept in mind that 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 material date.
The first consideration according to Section 6(5) of the Act is the inherent distinctiveness of the trade-marks at issue and the extent to which they have become known. In this case, neither mark possesses any significant measure of inherent distinctiveness as LUBEMASTER is suggestive of lubrication services and MISTER MECHANIC is suggestive of the fact that the services are going to be for automobiles and will be performed by an automobile mechanic. The design matter associated with each mark adds little to its inherent distinctiveness. According to the Wanie affidavit, the applicant’s trade-mark has been used since August 1, 1984 with annual sales from 1989 to 1992 inclusive being at least $3,800,000 while annual advertising expenditures during this period were at least $74,000. The opponent did not provide any evidence relating to its use or making known of its trade-mark so I must assume that the trade-mark MISTER MECHANIC & Design has not become known to any extent in Canada. Accordingly, the extent to which the trade-marks at issue have become known, as well as the length of use of the trade-marks, both weigh in the applicant’s favour.
The nature of the services of the applicant and the opponent are quite similar in that both are directed at the maintenance and repair of automobiles. Further, a consideration of the nature of the trade similarly favours the opponent as both parties’ services are in the same general area. As a result, the services would probably be advertised in the same channels.
The degree of resemblance between the trade-marks at issue when considered in their entireties is slight. In this regard, the dominant element of the applicant’s trade-mark consists of the words LUBEMASTER whereas the opponent’s mark is dominated by the words MISTER MECHANIC. While there is a fair degree of similarity in the design components of the trade-marks at issue, the design portions do not form a dominant element of either trade-mark. Apart from there being little similarity in the appearance of the trade-marks at issue, there is even less similarity in their sounding. As for the ideas suggested, the applicant’s mark suggests the idea of an entity specializing in lubrication of vehicles while the opponent’s trade-mark suggests the idea of a mechanic.
As an additional surrounding circumstance, the applicant relied upon a settlement agreement between itself, its predecessor-in-title and the opponent involving the opponent’s trade-mark MISTER MECHANIC & Design, the registration relied upon by the opponent in the present opposition, and another mark of the applicant’s, namely, MASTER MECHANIC PROFESSIONAL AUTO SERVICE & Design, registration No. 377,011. Support for considering the terms of a prior settlement agreement between the parties to an opposition proceeding can be found in McDonald’s Corp. et al v. Alberto-Culver Co., 61 C.P.R. (3d) 382, at p. 397 (TMOB) although the facts in that case differ in some respects from the present opposition. In the settlement agreement dated March 5, 1990 involving the parties to this opposition, the opponent agreed to discontinue its opposition to registration of the applicant’s trade-mark MASTER MECHANIC PROFESSIONAL AUTO SERVICE & Design covering the repair, maintenance and service of motorized and non-motorized vehicles while the applicant agreed to discontinue its Federal Court action to expunge the registration for the trade-mark MISTER MECHANIC & Design and also to withdraw its opposition to the opponent’s application to register another MISTER MECHANIC & Design mark. Moreover, the opponent agreed not to expand its use of the MISTER MECHANIC mark from the date of the settlement agreement and not to challenge the use of the trade-mark MASTER MECHANIC & Design (referred to above in full) or the validity of any current or future registration therefor. For its part, the applicant similarly agreed not to challenge any of the opponent’s MISTER MECHANIC marks.
Although the settlement agreement does not deal with the trade-mark which is the subject of the current application, the parties are the same, the services are less similar than those associated with the marks in the agreement, and the trade-mark LUBEMASTER & Design is less similar to the opponent’s mark than is the MASTER MECHANIC & Design mark identified in the agreement. Furthermore, the applicant’s mark referred to in the settlement agreement includes the exact same design element of a figure that appears in both marks in this case, this being the only element of similarity in appearance between the trade-marks at issue in this opposition. The fact that the opponent consented to the use by the applicant of a more similar trade-mark for more similar services makes it difficult to understand why the opponent is now claiming that the less similar trade-mark LUBEMASTER & Design is confusingly similar to its MISTER MECHANIC & Design trade-mark.
Considering that the trade-marks at issue possess little inherent distinctiveness and therefore are weak marks entitled to a narrow ambit of protection, and bearing in mind that the marks bear little similarity either in appearance or in sounding when considered in their entireties as a matter of immediate impression, and that the opponent is not entitled to broad protection in respect of the idea suggested by its mark, I have concluded that the applicant has discharged its onus to show that there is no reasonable likelihood of confusion between its trade-mark LUBEMASTER & Design and the opponent’s registered trade-mark MISTER MECHANIC & Design. I have therefore rejected the ground of opposition based on Section 12(1)(d) of the Act.
With regard to the final ground, the issue of distinctiveness must be considered as of the date the statement of opposition was filed, namely June 21, 1993 [see Re Andres Wines Ltd. v. E.J. Gallo Winery, 25 C.P.R. (2d) 126 at 130 (F.C.A.)]. While the legal burden is upon the applicant to establish that its trade-mark is distinctive, the opponent has an initial evidentiary burden to establish the facts being relied upon by it in support of this ground of opposition. As the only evidence filed by the opponent is a certified copy of its trade-mark registration and even were I to infer minimal use of the opponent’s mark from its registration, this is not sufficient to meet the opponent’s initial burden. I have therefore dismissed this ground of opposition.
As all three grounds of opposition are unsuccessful, the opposition is rejected pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS 22nd DAY OF AUGUST, 1996.
G.W. Partington,
Chairman,
Trade Marks Opposition Board.