IN THE MATTER OF AN OPPOSITION
by Exxon Corporation to application No. 582,078
for the trade-mark EXXOFF filed by Exxoff Inc.
On April 14, 1987, the applicant, Exxoff Inc., filed an application to register the trade-mark EXXOFF based on use in Canada since October 1, 1986. The application, as amended, is for "chemical products used as a stain remover for clothing." The application was advertised for opposition purposes on October 4, 1989.
The opponent, Exxon Corporation, filed a statement of opposition on February 5, 1990, a copy of which was forwarded to the applicant on February 15, 1990. The first ground of opposition is that the application does not comply with Section 30(b) of the Trade-marks Act because the applicant did not use its trade-mark since October 1, 1986, as claimed. The second ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Act because it is confusing with a series of registered trade-marks comprising or including the word EXXON or EXON owned by the opponent.
The third ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(1) of the Act because, as of the applicant's claimed date of first use, the applied for trade-mark was confusing with the opponent's registered trade-marks previously used in Canada by the opponent. The fourth ground is that the applied for trade-mark is not distinctive because it is confusing with the opponent's various EXXON trade-marks.
The applicant filed and served a counter statement. As its evidence, the opponent filed the affidavits of Bette Poirier, Michael V. van Vlymen, J. Kenneth Kansas, Niven Keymer, John W. Collins, Geraldine M. Kovacs and Mildred Joan Lusk. The applicant filed an affidavit of its President, E.M. Del Grande. As evidence in reply, the opponent filed an affidavit of Ruth Mary Palazzolo. Both parties filed a written argument and an oral hearing was conducted on May 23, 1995 at which only the opponent was represented.
Immediately prior to the commencement of the oral hearing, Mr. John Curry of the law firm Lang Michener sought an adjournment of the hearing. Mr. Curry indicated that he was acting on instructions from a Mr. Dan Pole and that Mr. Pole had been appointed as the applicant's new trade-mark agent. Apparently Mr. Pole was unavailable due to another matter that arose on May 19, 1995 and he instructed Mr. Curry to seek a postponement of the oral hearing in this proceeding.
I indicated to Mr. Curry that there was no record on the Trade-marks Office file to indicate that the applicant had changed agents. The applicant has been represented by the firm Sim & McBurney throughout this opposition and that firm's most recent correspondence of April 21, 1995 made no mention that the applicant was changing its trade-mark agent.
I further indicated to Mr. Curry that even if Mr. Pole had been appointed as the applicant's agent, the Opposition Board is generally not prepared to adjourn or postpone a scheduled oral hearing unless the other side consents and sufficient notice is given. The opponent's agent did not consent to a postponement. Consequently, the oral hearing proceeded with only the opponent's agent participating. My subsequent investigations revealed that Mr. Pole is not recorded on the register of trade-mark agents maintained by the Registrar and therefore could not have acted on behalf of the applicant, in any event.
As for the opponent's first ground of opposition, the onus or legal burden is on the applicant to show its compliance with the provisions of Section 30(b) of the Act: see the opposition decision in Joseph Seagram & Sons v. Seagram Real Estate (1984), 3 C.P.R.(3d) 325 at 329-330 and the decision in John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R.(3d) 293 (F.C.T.D.). There is, however, an evidential burden on the opponent respecting its allegations of fact in support of that ground. That burden is lighter respecting the issue of non-compliance with Section 30(b) of the Act: see the opposition decision in Tune Masters v. Mr. P's Mastertune (1986), 10 C.P.R.(3d) 84 at 89.
In his affidavit, Mr. Keymer identifies himself as a private investigator formerly employed by I.S.C. International Security Consulting (ISC). Pursuant to instructions from Imperial Oil Limited, a Canadian subsidiary of the opponent, Mr. Keymer conducted an investigation of Exxoff Inc. in August of 1987 regarding possible use of the term EXXOFF in association with stain removers and other wares. His investigation revealed no product sold under that trade-mark. The only product of Exxoff Inc. he was able to locate was a stain remover sold under the trade-mark Z'OUT.
In June of 1989, ISC conducted a further investigation of Exxoff Inc. According to Mr. Keymer, the only apparent use of the term EXXOFF by Exxoff Inc. at that time was as part of its trade-name. In April of 1990, ISC ceased conducting private investigations and Mr. Keymer commenced working for A.I.S. Services. In October of 1990, pursuant to instructions from Imperial Oil Limited, Mr. Keymer conducted a further investigation of Exxoff Inc. and again found that the only apparent use of the term EXXOFF was as part of the applicant's corporate name. A sample of the applicant's Z'OUT product was obtained and the only reference on the product container to the term EXXOFF was as part of the trade-name Exxoff Inc. appearing in small lettering at the bottom of the back portion of the container (see Exhibit C to the Keymer affidavit).
The Keymer affidavit is sufficient to meet the opponent's evidential burden respecting the first ground of opposition. Mr. Keymer's investigations suggest that the only use made by the applicant of the term EXXOFF was as part of the trade-name Exxoff Inc. Furthermore, the manner in which the trade-name has been used on the applicant's Z'OUT product container does not constitute use of the term EXXOFF as a trade-mark.
It was therefore incumbent on the applicant to positively evidence its claimed date of first use for the trade-mark EXXOFF. The only evidence filed by the applicant is an affidavit of its President, E.M. Del Grande. In his affidavit, Mr. Del Grande states that his company (Exxoff Inc.) has marketed a stain remover in association with both the trade-mark Z'OUT and the trade-mark EXXOFF. In support of that contention, he appends as an exhibit to his affidavit photocopies of a number of invoices covering sales of the Z'OUT stain remover. However, the earliest of those invoices is dated January 25, 1988 and Mr. Del Grande does not provide sufficient information to determine if any sales were made before that date or, more importantly, on or before the applicant's claimed date of first use of October 1, 1986. Thus, I find that the applicant has failed to satisfy the onus on it to prove its claimed date of first use. The first ground of opposition is therefore successful.
Even if the Del Grande affidavit could somehow be viewed as supporting a date of first use of October 1, 1986 for the applicant's Z'OUT product, I do not consider that this would support a finding that the trade-mark EXXOFF had been used since that date. As evidenced by the Keymer affidavit, the applicant's Z'OUT product container only contains a minor reference to the applicant's trade-name Exxoff Inc. which does not constitute trade-mark use of the term EXXOFF. There is no indication in the Del Grande affidavit that the applicant's product container differed at any time from the one obtained by Mr. Keymer in October of 1990.
Mr. Del Grande also refers to a point of sale advertising pamphlet which bears the applicant's trade-name Exxoff Inc. on the back cover. The term EXXOFF is used in a design format and appears above and in larger letters than the term INC. In certain circumstances, use of the trade-name in that fashion would also constitute use of the trade-mark EXXOFF. However, in the present case, the pamphlet prominently features the trade-mark Z'OUT on the front page and repeatedly refers to Z'OUT and Z'OUT stain remover throughout the text appearing on the second and third pages. In the context of the entire pamphlet, the average consumer would, in my view, react to the small design version of the applicant's trade-name appearing on the back of the pamphlet as being nothing more than the applicant's corporate name and not as a trade-mark usage of the term EXXOFF in association with the Z'OUT stain remover.
The applicant has also relied on the photocopies of invoices appended to the Del Grande affidavit to support its contention that there has been use of the term EXXOFF in association with stain remover. Again, I cannot agree. The invoices prominently feature the trade-mark Z'OUT and the product description appearing on each invoice refers either to Z'OUT or "Zout [sic] stain remover." The applicant's trade-name appears in small lettering at the top and the bottom of the invoice. The design version of its trade-name also appears at the bottom of the invoice immediately to the right of the following wording: "Please make cheques payable to Exxoff Inc." I consider that the average consumer would not likely even notice the design version of the applicant's trade-name appearing at the bottom of the invoice and, even if he did, I doubt that he would view it as anything more than a reference to the applicant's corporate name. Thus, the first ground of opposition would also have been successful on the basis that any use shown by the applicant of the term EXXOFF did not qualify as trade-mark use.
As for the second ground of opposition, the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark is the date of my decision: see the decision in Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R.(3d) 538 at 541-542 (T.M.O.B.). Furthermore, the onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Finally, in applying the test for confusion set forth in Section 6(2) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set forth in Section 6(5) of the Act.
The most pertinent of the opponent's registrations is No. 214,016 for the trade-mark EXXON which covers a long list of products including "solvents", "waxes" and "hand cleaners." Thus, a consideration of the issue of confusion between that registered mark and the applicant's trade-mark EXXOFF will effectively decide the outcome of the second ground of opposition.
As for Section 6(5)(a) of the Act, the Kovacs affidavit establishes that the opponent's trade-mark EXXON is a coined word and is inherently very strong. In its written argument, the applicant concedes that the opponent's trade-mark is well known to Canadians in association with oil, gas and petroleum-based products. The opponent's evidence establishes that the opponent's Canadian subsidiary Imperial Oil has effected significant sales of paint thinner and cleaning solvent. However, those sales have been in association with the trade-marks VARSOL and ESSO. The trade-mark EXXON appears on the labels for such products in small print at the bottom of the label such that consumers would not likely notice it. Thus, the opponent's trade-mark EXXON has not become known to any significant extent in Canada in association with cleaning solvents.
The applicant's trade-mark EXXOFF is also a coined word and is therefore an inherently strong mark. The applicant contends that EXXOFF would be viewed as equivalent to "X'ed off" or "rubbed off" but, in the absence of evidence on point, I doubt that the average consumer would react to the mark in that fashion. As discussed, the Del Grande affidavit evidences use of the trade-mark Z'OUT, not the trade-mark EXXOFF. I am therefore unable to assume that there is any reputation of note for the applicant's mark in association with the applied for wares.
The length of time the marks have been in use favors the opponent. The wares of the parties are not the same but they are similar. The applicant's product is a stain remover. As noted, the opponent sells VARSOL cleaning solvent with the trade-mark EXXON also appearing on the label. The representative label appended as Exhibit O.P.2A to the Poirier affidavit states that the product can be used to remove grease, tar or oil stains from clothes. Also of note is the fact that Imperial Oil has sold various EXXON household products in Canada such as household deodorant, all purpose spray lubricant and hand cleaner (see paragraph nine of the Poirier affidavit).
The trades of the parties could overlap. The Poirier affidavit establishes that VARSOL cleaning solvent is sold to grocery distributors and to national chain stores such as Sears and Canadian Tire. It is also sold in large containers to commercial and industrial customers including customers in the dry cleaning industry. The invoices appended to the Del Grande affidavit show that its Z'OUT stain remover has been sold to various retail outlets such as pharmacies and clothing stores. It would seem likely that a stain remover could also be sold through supermarkets and national chain stores.
As for Section 6(5)(e) of the Act, there is a high degree of resemblance between the marks at issue in all respects. Both marks comprise two syllables and both commence with the letters EXXO. The applicant's mark also resembles the opponent's mark since it ends with the word OFF which is the antonym to the last component of the opponent's mark, namely the word ON. It is also noteworthy that the design version of the applicant's mark EXXOFF bears a striking resemblance to the design version of the opponent's mark EXXON, both marks having a similar style of lettering and both employing interlocking X's.
The applicant contends that an additional surrounding circumstance in the present case is the lack of incidents of actual confusion notwithstanding the contemporaneous use of both marks for some years. I disagree. As noted previously, the applicant has failed to evidence use of its mark EXXOFF. Thus, the fact that there have been no incidents of actual confusion is not surprising.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my conclusions above, and particularly in view of the inherent strength of the opponent's mark, the extent to which it has become known in Canada with a wide range of products, the similarities between the wares and trades of the parties and the high degree of resemblance between the marks themselves, I find that the applicant has failed to satisfy the onus on it to show that its mark EXXOFF is not confusing
with the opponent's registered mark EXXON. The second ground of opposition is therefore also successful and the remaining grounds need not be considered.
In view of the above, I refuse the applicant's application.
DATED AT HULL, QUEBEC, THIS 22nd DAY OF JUNE, 1995.
David J. Martin,
Member,
Trade Marks Opposition Board.