LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2014 TMOB 61
Date of Decision: 2014-03-17
IN THE MATTER OF AN OPPOSITION by Scepter Corporation to application No. 1,428,501 for the trade-mark SCEPTER in the name of Callidus Technologies, L.L.C.
[1] Callidus Technologies, L.L.C. (the Applicant) has applied to register the trade-mark SCEPTER (the Mark). The application, as amended, is based upon proposed use in association with “gas burners for industrial, petrochemical and commercial use, namely, burner pilot igniters used in the refining and petrochemical industry”.
[2]
Scepter Corporation (the Opponent) has opposed
the application primarily on the basis that there is a reasonable likelihood of
confusion between the Mark and its own trade-marks SCEPTER, SCEPTER &
Design (shown below) and SCEPTERENE & Design (shown below), which have
previously been used in association with various plastic products and other items,
such as pipe, electrical conduit and fuel containers, as well as services
relating to mold making and the design of plastic parts.
[3] For the reasons that follow, the opposition is rejected.
File History
[4] The Applicant filed its application to register the Mark on February 20, 2009.
[5] The application for the Mark was advertised in the Trade-marks Journal for opposition purposes on November 4, 2009.
[6] The Opponent opposed the application under section 38 of the Trade-marks Act, RSC 1985, c T-13 (the Act) by filing a statement of opposition on December 23, 2009.
[7] The grounds of opposition, which will be set out in more detail below, are based upon sections 30(e), 30(i), 12(1)(d), 16(3)(a), 16(3)(c) and 2 of the Act.
[8] In support of its opposition, the Opponent filed the affidavit of Robert Torokvei, sworn August 16, 2011.
[9] In support of its application, the Applicant filed the affidavit of Manon Goudreau, sworn May 3, 2012.
[10] No cross-examinations were held.
[11] Only the Opponent filed a written argument.
[12] A hearing was held and attended by both parties.
Onus
[13] The Applicant bears the legal onus of establishing on a balance of probabilities that its application complies with the requirements of the Act. However, there is an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist [see John Labatt Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298].
Grounds of Opposition Summarily Dismissed
Non-conformity - Section 30(e)
[14] The Opponent has pleaded that contrary to section 30(e) of the Act, at the time of filing of the application, the Applicant did not have a real intention to use the Mark in Canada in association with the wares set out therein.
[15] The section 30(e) ground of opposition is dismissed on the basis that the Opponent has not met its initial evidential burden, as the Opponent did not file any supporting evidence or make any submissions with respect to this ground.
Non-conformity - Section 30(i)
[16] The Opponent has pleaded that the application does not comply with section 30(i) of the Act as the Applicant could not have been satisfied that it was entitled to use the Mark in view of the Opponent’s registered trade-marks.
[17] Where an applicant has provided the statement required by section 30(i), a ground of opposition based upon this section should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant [see Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155].
[18] The Applicant has provided the necessary statement and the Opponent has not demonstrated that this is an exceptional case.
[19] Accordingly, this ground is also dismissed.
Analysis of Remaining Grounds of Opposition
Non-entitlement – Sections 16(3)(a) and 16(3)(c)
[20] The Opponent has pleaded that the Applicant is not the person entitled to registration of the Mark in view of the Opponent’s trade-marks SCEPTER, SCEPTER & Design and SCEPTERENE & Design which had previously been used in Canada by the Opponent. In addition, the Opponent has pleaded that the Applicant is not the person entitled to registration of the Mark in view of the Opponent’s prior use of its trade-name SCEPTER CORPORATION.
[21] In order to meet its initial burden with respect to its section 16(3)(a) ground of opposition, the Opponent must show that one or more of its pleaded marks had been used in Canada prior to the February 20, 2009 filing date of the Applicant’s application and had not been abandoned as at the date of advertisement of the application for the Mark, namely, November 4, 2009 [section 16(5) of the Act].
[22] In order to meet its initial burden with respect to its section 16(3)(c) ground of opposition, the Opponent must show that its pleaded trade-name had been used in Canada prior to the Applicant’s February 20, 2009 filing date.
[23] In support of these grounds of opposition, the Opponent filed the affidavit of Robert Torokvei, sworn August 16, 2011.
[24] I have summarized the contents of Mr. Torokvei’s affidavit in the paragraphs which follow.
The Torokvei Affidavit
[25] Mr. Torokvei has been employed with the Opponent since 1974 and has been the President of the Opponent since 1992 [see para 1].
[26] In paragraph 2, Mr. Torokvei states that the SCEPTER mark has been continuously used in Canada on blow molded, extruded and injection molded plastic articles since at least 1953.
[27] In paragraph 3, Mr. Torokvei states that a certified copy of Canadian trade-mark registration No.TMA240, 014 for the trade-mark SCEPTER is attached to his affidavit. Mr. Torokvei states that the registration accurately sets out a list of some of the goods which have been offered by the Opponent since the dates set out in the registration, namely:
(1) Plastic products namely: Containers
namely: cans, pans, boxes, tote boxes, cases including beverage cases; and
container accessories including container caps (since April 1958);
(2) Pipe, pipe fittings, electrical conduit, electrical conduit fittings (since
November 1955); and
(3) Hardware accessories namely saw guards (since October 1960).
[28] In paragraph 4 of his affidavit, Mr. Torokvei states that in addition to the items listed above, SCEPTER branded products have also included items for the military such as ammunition containers and some items for use in the construction and automotive industry such as fuel containers and gas cans, funnels, vacuum pumps for collecting oil and portable car ramps and containers for mixing cement. Mr. Torokvei states that these items have been sold in Canada since well before 2008 and are still for sale in Canada.
[29] In paragraph 5, Mr. Torokvei states that sales of SCEPTER branded products in Canada exceeded $14,400,000 in 2007, $20,300,000 in 2008, $18,400,000 in 2009 and $20,900,000 in 2010. In paragraph 6, Mr. Torokvei states that sales of SCEPTER branded gas cans and fuel nozzles in Canada exceeded $5,600,000 in 2007, $7,700,000 in 2008, $7,700,000 in 2009 and $7,600,000 in 2010.
[30] Notably, Mr. Torokvei has not made reference to use of the Opponent’s trade-marks SCEPTER & Design or SCEPTERENE & Design in his affidavit. There is also no information in Mr. Torokvei’s affidavit regarding the use of the Opponent’s trade-name and no information has been provided regarding how the Opponent’s services are performed or advertised in association with its trade-marks. Moreover, Mr. Torokvei has not provided any invoices as exhibits or any other exhibits to show how the Opponent’s trade- mark SCEPTER has been used in association with the Opponent’s goods in Canada. In view of the significant sales which appear to have taken place, presumably it would have been a relatively simple matter for the Opponent to provide some evidence to show how its trade-mark was used in association with the wares which it has sold. However, for some reason, it elected not to provide any such evidence.
[31] The word "use" is a legal term which is specifically defined in section 4 of the Act and one must look at the evidence filed in order to determine if in fact there has been use of a trade-mark in association with wares and services within the meaning of section 4. I have reproduced the wording of section 4 of the Act below:
4. (1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.
(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
(3) A trade-mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares.
[32] In my view, Mr. Torokvei’s simple sworn statement that the trade-mark has been used in Canada “on blow molded, extruded and injection molded plastic articles”, in combination with the sales figures which he has provided is not sufficient to enable me to conclude that there has been use. Without seeing the manner in which the trade-mark has been used, I am not prepared to reach a conclusion that the use which Mr. Torokvei has referred to in his affidavit was in fact “use” within the meaning of section 4 of the Act.
[33] In view of the foregoing, I conclude that the Opponent has not discharged its initial evidential burden to show prior use of any of its alleged trade-marks, nor of its alleged trade-name. The section 16(1)(a) and (c) grounds are therefore dismissed.
Non-Registrability - Section 12(1)(d)
[34] The Opponent has pleaded that the Mark is not registrable because it is confusing with its registered trade-marks SCEPTER (registration No.TMA240,014), SCEPTER & Design (registration No.TMA355,211) and SCEPTERENE & Design (registration No.TMA125,833).
[35] The material date to assess the section 12(1)(d) ground of opposition is the date of my decision [see Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trade Marks (1991), 37 CPR (3d) 413 (FCA)].
[36] I have exercised my discretion and checked the register to confirm that the Opponent’s registrations are extant [Quaker Oats Co of Canada v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)]. Therefore, the Opponent has met its initial burden with respect to this ground.
[37] As the Opponent’s evidentiary burden has been satisfied, the Applicant must therefore establish on a balance of probabilities, that there is no reasonable likelihood of confusion between its trade-mark and the Opponent’s trade-marks.
[38] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
[39] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 6(5) of the Act, namely: (a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; (b) the length of time each has been in use; (c) the nature of the wares, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight [see, in general, Mattel, Inc v 3894207 Canada Inc (2006), 49 CPR (4th) 321 (SCC) and Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC)].
[40] In its written submissions and at the hearing, the Opponent focused on the likelihood of confusion between the Mark and the trade-mark SCEPTER (registration No.TMA240,014). I shall do the same, as I also consider the Opponent’s case to be strongest when comparing the Mark with its word mark SCEPTER.
Section 6(5)(e) – degree of resemblance between the trade-marks
[41] In most instances, the dominant factor in determining the issue of confusion is the degree of resemblance between the trade-marks in their appearance or sound or in the ideas suggested by them, and other factors play a subservient role in the overall surrounding circumstances [see Beverly Bedding & Upholstery Co v Regal Bedding & Upholstery Ltd (1980), 47 CPR (2d) 145, conf. 60 CPR (2d) 70 (FCTD)].
[42] In Masterpiece the Supreme Court of Canada considered the importance of s. 6(5)(e) in conducting an analysis of the likelihood of confusion (see para 49):
…the degree of resemblance, although the last factor listed in s. 6(5) is the statutory factor that is often likely to have the greatest effect on the confusion analysis … if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion. The other factors become significant only once the marks are found to be identical or very similar… As a result, it has been suggested that a consideration of resemblance is where most confusion analyses should start.
[43] Bearing this in mind, I have elected to begin my analysis by considering section 6(5)(e).
[44] The parties’ trade-marks are identical. This factor therefore favors the Opponent.
Section 6(5)(a) – inherent distinctiveness and the extent to which the marks have become known
[45] As noted above, the parties’ trade-marks are identical. Neither of the trade-marks have any particular meaning in the context of the parties’ goods and services. Accordingly, I find it reasonable to conclude that the parties’ trade-marks are equally inherently distinctive and that they possess a fair degree of inherent distinctiveness.
[46] The strength of a trade-mark may be increased by means of it becoming known in Canada through promotion or use. I will therefore now turn to asses the extent to which the trade-marks have become known in Canada.
[47] The Opponent has not provided any information regarding how its wares are advertised or promoted in association with its trade-mark. In addition, the Opponent has not provided sufficient evidence to enable me to conclude that there has been use of its SCEPTER trade-mark within the meaning of section 4 of the Act. I am therefore unable to properly assess the extent to which its trade-mark has become known.
[48] The only evidence filed by the Applicant is the Goudreau affidavit. In paragraph 1, Ms. Goudreau identifies herself as being employed as a clerk at the agent for the Applicant’s law firm. Ms. Goudreau indicates that on May 3, 2012, she accessed the Applicant’s website located at www.callidus.com and utilized the search function on the website to access a brochure relating to the Applicant’s SCEPTER burner pilot product. A copy of the brochure is attached as Exhibit “MG-2” to Ms. Goudreau’s affidavit. The brochure shows images of the Applicant’s product featuring the trade-mark SCEPTER and provides some information about the product and the industries in which it is used (i.e. the petroleum and chemical refining industries).
[49] At the hearing, the Opponent submitted that this evidence is of little assistance, as the existence of a brochure on the Applicant’s website does not establish that there has been use of the Applicant’s trade-mark in Canada. I agree.
[50] In view of the foregoing, I must conclude that this factor does not favour either party.
Section 6(5)(b) – the length of time each has been in use
[51] The Applicant has not filed any evidence of use of the Mark and the existence of the Opponent’s registration only enables me to infer de minimus use of its trade-mark.[see Entre Computer Centers Inc v Global Upholstery Co (1991), 40 CPR (3d) 427 (TMOB) at 430]. At best, this factor therefore only very slightly favours the Opponent.
[52] As an aside, I wish to note that even if I had accepted Mr. Torokvei’s affidavit as supporting claimed dates of first going back as far as the dates of first use which are set out in the Opponent’s registration, it would not change the outcome of this opposition proceeding, in view of my analysis of the sections 6(5)(c) and (d) factors as set out below.
Sections 6(5)(c) and (d) – the nature of wares, services or business and trade
[53] It is the Applicant’s statement of services as defined in its application versus the Opponent’s registered wares and services that governs my determination of this factor [see Henkel Kommanditgesellschaft auf Aktein v Super Dragon Import Export Inc (1986), 12 CPR (3d) 110 (FCA); Mr. Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA); Miss Universe Inc v Bohna (1994), 58 CPR (3d) 381 (FCA)].
[54] The statement of wares in the Applicant’s application now read as follows:
“gas burners for industrial, petrochemical and commercial use, namely, burner pilot igniters used in the refining and petrochemical industry”.
[55] The statement of wares in the Opponent’s registration reads as follows:
(1) Plastic products namely: Containers
namely: cans, pans, boxes, tote boxes, cases including beverage cases; and
container accessories including container caps;
(2) Pipe, pipe fittings, electrical conduit, electrical conduit fittings; and
(3) Hardware accessories namely saw guards.
[56] In the brochure which is attached as Exhibit “MG-2” to Ms. Goudreau’s affidavit, the Applicant’s products are identified as being specially designed to address the rugged requirements of the refining and petrochemical industries. The Applicant’s pilot igniters are further described in Exhibit “MG-2” as being available in two models. The first is the “original”, which consists of self-contained electronics, stainless steel construction and hermetically sealed flame and ignition rods. The second is a portable model which consists of an ignition lance, igniter electronics and a gas propylene or propane bottle. The portable model is described as being a safe and reliable solution for the toughest burner ignition applications, including situations where steam or rain may be present. The unit may be used during the replacement of spent burner igniters or in emergency situations where the firing of burners fails due to electrical power loss.
[57] Before proceeding, I wish to acknowledge that the manner in which the Applicant’s evidence was adduced does give rise to some hearsay issues, as Ms. Goudreau is employed as a clerk at the Applicant’s law firm and does not have any personal knowledge of the Applicant or its business. She simply visited the Applicant’s website to access the brochure which is attached as Exhibit “MG-2” to her affidavit. Nevertheless I have accorded this evidence some weight, as it does shed light on the nature of the Applicant's wares and their channels of trade and the Opponent relied upon it to make its submissions at the hearing [see McDonald's Corp v Coffee Hut Stores Ltd (1996), 68 CPR 3(d) 168 (FCA) at 169]. In the event that I have erred in so doing, I wish to note that such error would not affect the ultimate outcome of this decision, as the description of wares in the application for the Mark is sufficient to enable me to arrive at the same conclusion regarding the nature of the Applicant’s wares and its channels of trade.
[58] At the hearing, the Opponent submitted there is a connection between its “gas cans” and the Applicant’s wares, since the Applicant’s wares can utilize and store gas and the Opponent’s gas cans relate to fuel storage. However, I’m not sure that such a connection is of much assistance to the Opponent. Although the statement of wares in the Opponent’s registration broadly covers “cans”, in his affidavit, Mr. Torokvei specifically states that the Opponent’s “fuel containers” and “gas cans” are for use in the automotive and construction industries [see para 4]. In my view, these are entirely different industries than the refining and petrochemical industries. Moreover, a “gas can” for use in the automotive or construction industry would presumably differ somewhat from the gas propylene or propane bottles which are incorporated into the Applicant’s burner ignition products.
[59] The Opponent also submitted at the hearing that there is a connection between the Applicant’s wares and the Opponent’s “pipe”, “pipe fittings”, “electrical conduit” and “electrical conduit fittings”, as there are no restrictions in the Opponent’s statement of wares and such items could therefore conceivably somehow be incorporated into a petrochemical or refining plant, perhaps in a structure, apparatus or piece of equipment or they could be sold to such industries.
[60] While it’s true that the Opponent’s “pipe”, “pipe fittings”, “electrical conduit” and “electrical conduit fittings” could potentially be present in or sold to a refining or petrochemical plant, it doesn’t necessarily follow that such wares would be considered to overlap with or somehow be connected to those of the Applicant.
[61] Although the Opponent has not provided any detailed evidence regarding the precise nature of its wares, in paragraph 2 of his affidavit, Mr. Torokvei does indicate that the Opponent uses its SCEPTER trade-mark on “blow molded, extruded and injection molded plastic articles”. This appears to be consistent with the description of services in the Opponent’s registration for SCEPTER & Design (registration No. TMA355,211), which describes the Opponent’s services as “…mold making, design of plastic parts”. Based upon this information, I find it reasonable to conclude that the Opponent is in the plastics business and that its products would therefore primarily be plastic goods. In my view, the Opponent’s “pipe”, “pipe fittings”, “electrical conduit” and “electrical conduit fittings” are goods which are fairly basic in nature and which have a somewhat broad application.
[62] By contrast, the Applicant’s wares appear to be quite specialized, fully assembled articles with sophisticated electronics. They are specifically intended for burner pilot ignition and are specially constructed to address the rugged requirements of the petrochemical and refining industries [see Exhibit “MG-2” to Ms. Goudreau’s affidavit].
[63] In summary, even if I were to accept the Opponent’s submissions that some of its products could potentially be sold to or somehow be present in the same industries as those of the Applicant, I am still of the view that the parties’ wares differ substantially from one another. Moreover, the mere fact that particular products may be found in the same industry does not automatically lead to a conclusion that they originate from a common source or are directed to the same consumer.
Conclusion on the Likelihood of Confusion
[64] In applying the test for confusion, I have considered the parties’ marks as a matter of first impression and imperfect recollection. Even though my assessment of the circumstances of this case leads me to conclude that the section 6(5)(b) and (e) factors favour the Opponent, in my opinion the differences between the wares associated with the parties’ marks are significant enough to shift the balance of probabilities in favour of the Applicant. I am of the view that upon seeing the Mark, the average consumer would not be confused and believe that its burner pilot igniters for use in the refining and petrochemical industries would originate from the same source as the pipe, electrical conduit and other wares of the Opponent, who is involved in the plastic making industry.
[65] I therefore conclude that the Applicant has discharged the legal onus resting upon it to show that confusion between the Mark and the Opponent’s trade-mark SCEPTER, which is the subject of registration No.TMA240,014 is not likely. Further, as I previously indicated, I find that comparing the Mark with the Opponent’s trade-mark SCEPTER of registration No. TMA240,014 effectively decides the outcome of this ground of opposition.
[66] The section 12(1)(d) ground of opposition is therefore dismissed.
Non-distinctiveness – Section 2
[67] The Opponent has pleaded that the Mark does not distinguish and is not adapted to distinguish the wares of the Applicant from the wares or services of others, including those of the Opponent.
[68] The material date to assess this ground of opposition is the filing date of the statement of opposition, namely, December 23, 2009 [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC)].
[69] For the reasons previously mentioned in relation to the section 16 grounds of opposition, I am not satisfied that the Opponent has met its evidentiary burden to establish that any of its trade-marks or its trade-name had become known sufficiently in Canada as of December 23, 2009, to negate the distinctiveness of the Mark [see Motel 6, Inc v No 6 Motel Ltd (1981), 56 CPR (2d) 44 (FCTD); Bojangles’ International, LLC and Bojangles Restaurants, Inc v Bojangles Café Ltd (2006), 48 CPR (4th) 427 (FC)]. As mentioned above, the Opponent has not filed evidence of actual use of its trade-marks. Moreover, I note that the mere filing of a certificate of registration of a trade-mark is not sufficient to meet the initial onus on an opponent under a distinctiveness ground [see Rooxs, Inc v Edit-SRL (2002), 23 CPR (4th) 265 (TMOB)].
[70] In view of the foregoing, the non-distinctiveness ground of opposition is also dismissed.
Disposition
[71] Pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(8) of the Act.
______________________________
Lisa Reynolds
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office