Trademark Opposition Board Decisions

IN THE MATTER OF AN OPPOSITION

by Canada Post Corporation to application

no. 683,875 for the mark ROYAL MAIL

filed by The Post Office

-----------------------------------------------------------

On June 11, 1991, the applicant, The Post Office located in London, England, filed an application to register the mark ROYAL MAIL for use in association with

(1) philatelic supplies namely stamps, envelopes and first day covers,   (2) model postal delivery vehicles,   (3) machines for the mechanical handling, processing and sorting (by size) of goods . . . for use in connection with postal services,   (4) ceramic tableware, (5) electrical, electronic and optical apparatus and instruments . . . . computers, computer programs, discs and tapes . . . for use in connection with postal services

The basis for registration for the wares indicted under (1) above is use of the mark by the applicant in Canada since at least as early as 1840. The basis for registration of the applied for mark for the remaining wares, indicated under (2) - (5) above, is use and registration of the mark in Great Britain. Further, the subject application disclaims the right to the exclusive use of the word MAIL apart from the mark as a whole. The file record indicates that Her Majesty’s Postmaster General performed post office functions in Great Britain from 1636 to 1969 and that subsequently the responsibility for such functions was transferred to the applicant by assent of Her Majesty.

The subject application was advertised in the Trade-marks Journal on September 2, 1992 and was opposed by Canada Post Corporation on November 12, 1992. However, there were a number of errors of commission and omission by the Trade-marks Office in advertising the subject application, which resulted in the advertisement of September 2, 1992 being treated as a nullity: see the Board ruling dated March 19, 1993. Accordingly, the subject trade-mark application was re-advertised in the Journal on December 8, 1993. A further error occurred in the December 8, 1993 advertisement, which error was corrected by means of an erratum notice in a subsequent issue of the Journal. Opposition proceedings in respect of subject application commenced with the filing of a statement of opposition by Canada Post Corporation on February 8, 1994. A copy of the statement of opposition was forwarded to the applicant on March 21, 1994. The applicant responded by filing and serving a counter statement.

The grounds of opposition raised by the opponent in the statement of opposition may be

summarized as follows:

1          The applied for mark ROYAL MAIL is not registrable because it is deceptively misdescriptive of the character or quality of the applicant’s wares. In this regard, the term “royal mail” implies that the applicant’s wares are provided by the opponent Canada Post and its employees.

2          The application does not comply with Section 30(b) of the Trade-marks Act because the applicant has not used the mark ROYAL MAIL since 1840 as claimed in the subject application.

3          The application does not comply with Section 30(i) of the Trade-marks Act because the applicant could not be satisfied that it was entitled to use the mark in Canada as such use would be unlawful. In this regard, the applicant’s use of the mark ROYAL MAIL would be contrary to    Section 58(2) of the Canada Post Corporation Act.

4          The application does not comply with Section 30(i) of the Trade-marks Act because the applicant could not be satisfied that it was entitled to use the mark in Canada at the time that the subject trade-mark application was filed. In this regard, the applicant’s use of the mark ROYAL MAIL would be unlawful since the government of Canada has had a proprietary interest in the term ROYAL MAIL since 1851.

5          The applied for mark ROYAL MAIL is not registrable, pursuant to Section 12(1)(d) of the Act, because it is confusing with one or more of the opponent’s registered trade-marks listed below: 

6          The applicant is not entitled to register the applied for mark because, at the date of filing the subject application, the applied for mark was confusing with the opponent’s trade-marks and trade-names CANADA POST CORPORATION, CANADA POST and POST OFFICE, with  the opponent’s official marks, with the marks cited in paragraph 5 above and with the  opponent’s mark ROYAL MAIL “all of which had been previously used in Canada by the opponent and/or its predecessor, Her Majesty in Right of Canada . . .”

7          The applied for mark is not registrable, pursuant to Section 12(1)(e) of the Act, because it is a mark the adoption of which is prohibited by Section 9 of the Act, in that it is likely to be mistaken for the opponent’s following official marks:

8          The applied for mark is not registrable, pursuant to Sections 12(1)(e) and 9(1)(d) of the Act, in that the applicant’s use of the mark ROYAL MAIL would likely lead to the belief that such use is under the patronage, approval or authority of the government of Canada.

9          The applied for mark is not distinctive in that it does not distinguish the applicant’s wares and services from the opponent’s wares and services provided under the opponent’s trade-names, trade-marks and official marks.

The opponent’s evidence in chief consists of affidavits of the following individuals:

Allan Burnett (two affidavits)                                    Douglas Johnson

Bryan Kalef                                                    Bruce Moreland

Loretta Bozovich                                            Paul Oldale (three affidavits)

Robert Devlin                                                 Gay Owens

Chris de Layen                                                Mark Rees

Marc Gingras                                                  Susanne Scheurwater

Thomas Hillman                                              Bianca Gendreau

Dean Karakasis                                               Philip Lapin

Randy Carter                                                  Gilles Manor

George Anstey                                                Ralph Mitchener

Raymond Douglas Hutton

The applicant’s evidence consists of the affidavits of the following individuals:

Michael Godwin

Geoffrey Stephan Brown

Kevin Wong

Messrs. Brown and Wong were cross-examined on their affidavits, the transcripts thereof forming part of the evidence of record. It is apparent from Mr. Wong’s cross-examination that the majority of his affidavit evidence is inadmissible hearsay.  

The opponent’s evidence in reply consists of the affidavits of Margaret Kruszewski and Carol Weatherall. On two occasions the opponent requested and was granted leave to submit additional evidence pursuant to Section 44 of the Trade-marks Regulations: see the Board rulings dated September 17, 1996 and December 8, 1998. Such additional evidence consists of the affidavits of Kurt Kaiser, Tommy Ciriello, Philippe Leroux (four affidavits) and Charles Raphael.   Both parties submitted a written argument and both parties were ably represented at an oral hearing.

The opponent’s evidence establishes that the term ROYAL MAIL was in use from about the turn of the century to about 1940 on wagons, trucks and airplanes used by the opponent’s predecessor for the delivery of mail: see the affidavits of Allan Burnett, Robert Devlin and Philip Lapin. It would appear, however, that such use of the term ROYAL MAIL gradually fell into disuse and has been defunct for the past half century. Mr. Hutton’s evidence establishes fairly current use of the term CANADA POST and POSTES CANADA on toy postal delivery trucks sold through postal outlets and through mail orders. As noted by the applicant, the packaging for these toy trucks display the trade-marks LEGO, MATCHBOX and TONKA. Thus, it would appear that the opponent is merely serving as a retail outlet for toy postal delivery vehicles bearing the trade-marks of third parties.

One of the issues in dispute between the parties, in relation to the sixth ground of opposition, is whether the opponent can demonstrate current use of the term ROYAL MAIL as a trade-mark for postal services.  In this regard, Mr. Leroux’ evidence establishes that the term ROYAL MAIL is embossed on ornate, early style but still fully functioning mailboxes located inside buildings in Montreal namely, in (i) the Windsor Station Building at 910 Peel Street, (ii) the Insurance Exchange Building at 267 St-Jacques Street (iii) the Royal Bank Building at 360 St-Jacques Street, and (iv) the Sun Life Building at 1155 Metcalfe Street. Mr. Raphael’s evidence establishes that another such mailbox is found in the Canada Cement Building at 606 Cathcart St. in Montreal.  Mr. Ciriello’s evidence establishes that another such mailbox is found in the Ritz-Carleton Hotel at 1228 Sherbrooke Street West in Montreal. Mr. Kaiser’s evidence establishes that another such mailbox is found in the Palliser Hotel in Calgary. Paragraph 3 of his affidavit, shown below, describes the functioning of the mailbox at the Palliser Hotel:

The functioning of the mailbox and mail chute at the Palliser Hotel appears to be equally applicable to the mailboxes referred to by Messrs. Leroux, Raphael and Ciriello. 

The applicant’s interpretation of the above evidence, found at paragraphs 37-39 of the applicant’s written argument, is that the mail chutes referred to above

are used by the building in order to gather mail from tenants or occupants which mail is then delivered, in the normal course of the operation of a commercial building, to Canada Post for handling. Indeed, even the notice of collection times from the chute fails to mention Canada Post and it is equally likely that the collection times are set by the building management or by the hotel staff . . . . . it is more likely that the buildings or hotels have maintained these historic mail chutes to maintain the historic feel for the building . . . . if anything, the evidence goes to show that the trade-mark ROYAL MAIL is used by others, in Canada, in association with the collection of mail.

The applicant’s arguments are persuasive while the opponent’s evidence is somewhat incomplete  in establishing that the use of the term ROYAL MAIL on mailboxes in buildings qualifies as use of a trade-mark, within the meaning of Sections 4(1) or 4(2) of the Trade-marks Act, which can accrue to the benefit of the opponent. I am therefore reluctant to find that the opponent has established that it is currently using the mark ROYAL MAIL in association with mail collection services. Nonetheless, the opponent’s evidence does tend to show that the public is at least being reminded that the term ROYAL MAIL, which term has fallen into disuse, was once commonly associated with Canada’s postal delivery system.

Mr. Brown’s affidavit evidence (filed on behalf of the applicant) and testimony on cross-examination may be summarized as follows. The applicant The Post Office is the official government mail carrier for the United Kingdom and has international service links with most other governmental postal carriers including Canada.  Mail from the United Kingdom destined for Canada arrives in mailbags which are marked ROYAL MAIL. The applicant sells prepaid envelopes marked with its trade-mark ROYAL MAIL to customers for use in the transport of mail to Canada and the delivery of mail in Canada. The applicant also offers bulk mailing services in Canada (for the UK and international destinations) under its mark ROYAL MAIL through its exclusive Canadian licensee, Key Mail Canada Inc. Mail originating in Canada is collected by Key Mail Canada Inc. to be taken to the UK where it will be injected into the UK postal system for delivery in the UK and internationally. Such “mail” is not delivered as mail to the UK but as freight. Key Mail Canada Inc. puts the Canadian mail into mail bags marked ROYAL MAIL provided by the applicant. The bags are then put onto planes travelling to the UK. Mail arriving in the UK from Canada in the above manner will have postage on it as applied by Key Mail Canada Inc. or by the Canadian sender or, if the mail arrives without postage, the applicant will apply postage as part of its service. The applicant began such services in Canada in 1994. The applicant advertises and promotes its wares and services in Canada through brochures, a bi-annual newsletter, and at trade-shows and conventions.

Mr. Godwin’s affidavit, filed on behalf of the applicant, provides evidence of Canadian trade-mark applications, registrations and official marks incorporating the word “mail” or “post.” I agree with the opponent that such evidence does little to advance the applicant’s case because many of the registrations are for use in association with newspapers or other publications or for other wares and  services which are not relevant to this proceeding. None of the registrations or applications located consist of or are comprised of the phrase ROYAL MAIL.

A significant part of the opponent’s case is based on the notion that the term MAIL is, in the minds of most Canadians, associated with the opponent, that is, with a Canadian government organization having responsibility for delivering mail in Canada. The term ROYAL MAIL, according to the opponent, would be perceived equally so having regard to its historical  use on mail delivery vehicles and on antiquated mailboxes which are still functioning. Further, the opponent submits that it acts as an agent of Her Majesty in Right of Canada, and is therefore  just as much a “royal” institution today as when its predecessor the Post Office Department was first formed in 1851. The reported case Societe Canadienne des Postes v. Postpar Inc.(1989), 20 C.I.P.R. 180, [1988] R.J.Q. 2740, as well as the opponent’s evidence filed in this proceeding including evidence of use of its trade-marks incorporating the term MAIL, provides support for the opponent’s position. The Postpar case, above, was decided on the basis that use of the word "post" in the corporate name of the defendant Postpar Inc. violated the provisions of s. 58 of the Canada Post Corporation Act, R.S.C. 1985, c. C-10, shown below:

The court in Postpar, above, noted as follows at p. 224 of the reported decision:

Postpar is distinguishable on its facts from the case at hand. However, Postpar does support the opponent's position that the word component "mail" in the applied for mark ROYAL MAIL at the very least suggests an affiliation with the Canadian postal system, that is, with the opponent  Canada Post Corporation. The applicant, however, points out that the “monopoly” granted to Canada Post to deliver mail is a restricted monopoly. For example, Section 15(1)(e) of the Canada Post Corporation Act provides that

   15. (1) The exclusive privilege referred to in subsection 14(1) does not                apply to . . .

     (e)   letters of an urgent nature that are transmitted by a

                                          messenger for a fee at least equal to an amount that is

                                         three times the regular rate of postage payable for

                                         delivery in Canada of similarly addressed letters

                                         weighing fifty grams;

Whether a letter is urgent is subjective, with the result that anyone who charges three times or more the regular postal rate is entitled to deliver letters in Canada so long as the sender is of the view that the letters are urgent. Further, Section 15(1)(h) of the Canada Post Corporation Act removes from Canada Post’s monopoly all letters sent by electronic means. The applicant therefore submits that while the Canadian public understands and uses the term “mail” to refer to matter which is moving through the government authorized postal system, it does not follow that the Canadian public uses the term “mail” only in respect of mail handled by Canada Post. For example, in the typical office mail room, the mail will include matter delivered by Canada Post, by a variety of other couriers, by facsimile mail and by interoffice mail. Thus, the applicant concludes that various organizations process mail with no involvement by Canada Post.

The applicant’s written argument, and submissions at the oral hearing, were justifiably critical of various aspects of the opponent’s evidence. However, the applicant’s evidence,  for its part, falls far short of establishing any significant reputation in Canada for its mark ROYAL MAIL at any material time. Even if I were to view the applicant’s evidence in its best light, and the opponent’s evidence in its worst light, I would still conclude that the term ROYAL MAIL, used in association with the wares and services specified in the subject application, appertains as much to the opponent as to the applicant. In this regard, both parties are equally “royal,” sharing the same Queen and both providing mail and mail-related wares and service under government authority. The above considerations  lead to the issue of whether the applicant can establish that its mark ROYAL MAIL is distinctive, in Canada, of the wares and services specified in the subject application, which issue has been raised by the opponent in the statement of opposition.

The onus or legal burden is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its wares and services, throughout Canada, from those of Canada Post: see Muffin Houses Inc. v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (TMOB).  The presence of a legal onus means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant. The material time for considering the circumstances respecting the issue of distinctiveness is as of the commencement of the opposition, in this case February 8, 1994: see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.);  Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.).                                                         

In deciding the issue of distinctiveness, I have been guided by the dicta of  Addy J. in Motel 6, Inc. v. No. 6 Motel Ltd. (1981),  56 C.P.R.(2d) 44 at 58 (F.C.T.D.):

On the issue of lack of distinctiveness of a mark, although it must be shown that the rival or opposing mark the must be known to some extent at least, it  is not necessary to show that it is well known . . . It is sufficient to establish that the other mark [the opponent's mark] has become known sufficiently to negate the distinctiveness of the mark under attack [the applicant's mark].

I have also been guided by the comment of Denault J. in Steinberg Inc. v. J.L. Duval Ltée (1992), 44 C.P.R.(3d) 417 at 423 (F.C.T.D.):

The determination of whether a trade‑mark actually distinguishes the wares or services of its owner from those provided by other suppliers of such goods or such services will depend on the individual facts of each case.

In the instant case, the opponent cannot rely on any proprietary right to the trade-mark ROYAL MAIL. As discussed earlier, in my view the evidence does not support the opponent’s claim to ownership of the mark ROYAL MAIL as of any of the material dates in this proceeding. In this regard, it appears that the opponent Canada Post has permitted the term ROYAL MAIL to fall into disuse as a trade-mark to identify its wares and services. Nevertheless, the dicta of Addy J. is still pertinent because the issue of distinctiveness, unlike the grounds of opposition based on non-registrability under Section 12(1)(d) or non-entitlement under Section 16, does not depend on the existence of a rival trade-mark (or trade-mark application). The issue of whether an applied for trade-mark is distinctive may be, and often is, decided on general considerations of marketplace conditions such as, for example, widespread use of the mark (or a confusingly similar mark) by third parties. Another marketplace condition arises when, for example, the dicta of Addy J. is altered to read as follows:

On the issue of lack of distinctiveness of a mark, although it must be shown that the rival or competing term  must be known to some extent at least, it is not necessary to show that it is well known . . . It is sufficient to establish that the other term  has become sufficiently associated with another party [usually, the opponent], or other third parties, to negate the distinctiveness of the mark under attack [the applicant's mark].              

The rewritten form of the dicta Addy J. is merely one application of the general principle alluded to by Denault J, above.

As discussed earlier, in Canada the term ROYAL MAIL is as much applicable to the opponent’s wares and services as it is to the applicant’s wares and services. I am of the view that the ordinary consumer would either believe that the applicant’s wares and services, sold under the mark ROYAL MAIL, originated with the opponent or would be in a state of doubt whether the applicant’s wares and services provided under the mark ROYAL MAIL  were approved, licensed or sponsored by the opponent Canada Post. In view of the above, the opponent is successful under the eighth ground of opposition alleging non-distinctiveness and, for essentially the same reasons as above, the opponent succeeds under the ninth ground of opposition. It is not necessary for me to decide the remaining grounds of opposition and I make no findings in respect of the remaining grounds.

In view of the above, the subject application is refused.

DATED AT HULL, QUEBEC, THIS   28th     DAY OF   June, 2001.

Myer Herzig,

Member,

Trade‑marks Opposition Board