IN THE MATTER OF AN OPPOSITION by UAP Inc. to application No. 574,782 for the trade-mark OTTO-MAX filed by Otto-Max Industries Ltd.
On December 16, 1986, the applicant, Otto-Max Industries Ltd., filed an application to register the trade-mark OTTO-MAX based upon proposed use of the trade-mark in Canada in association with "automotive paints and marine paints".
The opponent, UAP Inc., filed a statement of opposition on December 9, 1988 and was granted leave on March 19, 1990 to amend its statement of opposition pursuant to Rule 42 of the Trade-marks Regulations. The most relevant of the grounds of opposition asserted in the amended statement of opposition is that based on Section 16(3)(b) of the Trade-marks Act, the opponent alleging that the applicant's trade-mark OTTO-MAX is confusing with the opponent's trade-mark AUTOMAX, application No. 560,247, filed April 16, 1986 and covering, inter alia, "peintures".
The applicant served and filed a counter statement in which it effectively denied the opponent's grounds of opposition.
Both the opponent and the applicant filed evidence and written arguments although neither party requested an oral hearing.
The opponent's application No. 560,247 was filed April 16, 1986, prior to the filing date of the present application, and was pending as of November 30, 1988, the date of advertisement of the applicant's application. Accordingly, the opponent has met the burden upon it in respect of Section 16(4) of the Trade-marks Act. As a result, the legal burden is on the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks OTTO-MAX and AUTOMAX as of the filing date of the applicant's application, the material date in respect of the opponent's Section 16(3)(b) ground of opposition.
In determining whether there would be a reasonable likelihood of confusion between the trade-marks at issue as of the applicant's filing date (December 16, 1986), the Registrar must have regard to all the surrounding circumstances, including but not limited to the criteria which are specifically enumerated in Section 6(5) of the Trade-marks 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 of the parties as of the material date.
With respect to the inherent distinctiveness of the trade-marks at issue, I consider that both the opponent's trade-mark AUTOMAX as applied to the wares and services covered in the opponent's application and the applicant's trade-mark OTTO-MAX as applied to the wares covered in its application possess some inherent distinctiveness when considered in their entireties. The opponent's trade-mark AUTOMAX includes the element AUTO which clearly indicates that certain of the wares and services associated with the trade-mark are related to or are for use in association with automobiles. Further, the applicant's trade-mark includes the surname or given name OTTO which adds little inherent distinctiveness of the trade-mark OTTO-MAX.
As of the filing date of its proposed use trade-mark application, the applicant's trade-mark OTTO-MAX had not become known to any extent in Canada in association with either automotive paints or marine paints, the wares covered in the applicant's application. On the other hand, the Lemay statutory declaration does indicate that the opponent's trade-marks AUTOMAX and AUTOMAX & Design had become known to some extent in the area of Montreal, Quebec in association with services relating to the sale and installation of automotive parts and the repair of automobiles. In this regard, in paragraph 7 of his statutory declaration, Mr. Lemay states that the opponent's sales in 1986 were $1,449,799.
Further, the length of time that the trade-marks have been in use does not appear to be a particularly relevant factor in respect of the issue of confusion.
As for the nature of the wares of the parties and the respective channels of trade associated with these wares, the applicant's automotive and marine paints are included within the wares described in the opponent's application as "peintures". Further, to the extent that the wares of the parties are overlapping, the channels of trade associated with these wares must likewise be considered as overlapping.
Considering the degree of resemblance between the trade-marks at issue, I consider there to be some similarity in appearance between the trade-marks OTTO-MAX and AUTOMAX and no similarity in ideas suggested by the trade-marks. On the other hand, the trade-marks appear to be identical in sounding and no evidence has been adduced by the applicant to suggest that the similarity in sounding of the trade-marks at issue would be of no relevance to the issue of confusion.
In view of the above, I have concluded that the applicant has failed to meet the burden upon it of establishing that there would be no reasonable likelihood of confusion between its trade-mark OTTO-MAX as applied to "automotive paints and marine paints" and the applicant's trade-mark AUTOMAX as applied to "peintures".
I refuse the applicant's application in view of the provisions of Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS _30rd____ DAY OF _October___, 1992.
G.W. Partington,
Chairman,
Trade Marks Opposition Board.