| OPIC
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CIPO
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| LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADEMARKS
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Citation: 2019 TMOB 134
Date of Decision: 2019-11-29
IN THE MATTER OF OPPOSITION
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TP-LINK Technologies Co., Ltd. and
TP-LINK International Limited
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Opponents |
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Oplink Communications US Division, LLC
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Applicant
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1,661,662 for OPLINK
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Application
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Overview
[1] Oplink Communications US Division, LLC (a Texas limited liability company) (the Applicant) has applied to register the trademark OPLINK (the Mark) in association with a number of fiber optic networking hardware and software-embedded products.
[2] TP-LINK Technologies Co., Ltd. and TP-LINK International Limited (collectively the Opponent) allege that the Mark is confusing with its use and registration of the trademarks TP-LINK and TP-LINK Design and its trade name TP-LINK.
[3] For the following reasons, I find that the Applicant has failed to prove that there is no reasonable likelihood of confusion between the Mark and the Opponent’s registrations with respect to the goods shown in strike-out below. With respect to the remaining goods, I find that the Applicant has met its legal onus of demonstrating that there is no reasonable likelihood of confusion. The applied-for goods in their totality below are referred to as the Goods in this decision.
Fiber optic networking hardware and software-embedded products, namely, dense wavelength division multiplexers (DWDM)/demultiplexers, coarse wavelength division multiplexers (CWDM)/demultiplexers, band wavelength division multiplexers (BWDM)/demultiplexers, arrayed waveguide gratings (AWG) for use as multiplexers and demultiplexers, filters, fiber optical interleavers, micro-optical devices in the nature of wavelength lockers, optical isolators, signal couplers/splitters, polarization maintaining beam combiners/splitters, power monitors, hybrid components in the nature of wavelength division multiplexers (WDM), isolator hybrids, coupler/isolator hybrids, filter/isolator hybrids, splitter/power monitor hybrids and depolarizer/beam combiner hybrids, circulators, collimators, switches, optical channel monitor modules, reconfigurable optical add-drop multiplexers, wavelength selective switches, amplifiers, gain block amplifiers, variable optical attenuators, variable multiplexers, tunable optical filters, tunable filter arrays, wavelength blocker arrays, jumpers/patch cords, optical connectors, optical adapters, optical patch panels, and fixed attenuators. fiber optical transceivers, optical transmitters, receivers, transmitter optical subassemblies, receiver optical subassemblies, bi-directional optical subassemblies, bi-directional optical transceivers, CWDM transceivers, DWDM fixed wavelength transceivers, parallel optical transceivers, DWDM tunable transceivers, optical transponders, video optical transceiver, video optical transmitters, video optical receivers, video CWDM transceivers, optical supervisory channel transceivers, differential quadrature phase shift keying (DQPSK) transceivers, multilane on-off keying (OOK) transceivers, multilane DWDM dual polarization quadrature phase shift keying(DP-QPSK) transceivers, multilane pulse amplitude modulation (PAM) transceivers, maximum-likelihood sequence estimation (MLSE) transceivers, multilane quadrature amplitude modulation (QAM) transceivers, multilane OOK transceivers, multilane QAM transceivers, multilane PAM DWDM transceivers, chassis platform, fiber-optic amplifier, optical switch, RF amplifier, RF switch.
Background
[4] The application to register the Mark in association with the Goods was filed on January 29, 2014 by the Applicant’s predecessor-in-title. The application for the Mark is based on the Applicant’s proposed use in Canada and claims a priority filing date of July 30, 2013. The application was advertised for opposition purposes in the Trademarks Journal issue dated September 9, 2015.
[5] The Opponent opposed the application on the basis of the grounds of opposition summarized below on November 3, 2015 pursuant to section 38 of the Trademarks Act, RSC 1985, c T-13 (Act). This Act was amended on June 17, 2019. All references are to the Act as amended, with the exception of references to the grounds of opposition which refer to the Act before it was amended (see section 70 of the Act which provides that section 38(2) of the Act as it read prior to June 17, 2019 applies to applications advertised before this date).
(a)
The application does not comply with the requirements of section 30(e) of the Act in that the Applicant does not intend to use the Mark in Canada in association with the Goods.
(b)
The Mark is not registrable pursuant to section 12(1)(d) of the Act as it is confusing with registration Nos. TMA630,492; TMA707,917; and TMA852,405 owned by the opponent TP-LINK INTERNATIONAL LIMITED. Particulars of these registrations are in the table below.
| TP-LINK
TMA630,492
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| TP-LINK
TMA707,917
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| TMA852,405
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(c)
The Applicant is not the person entitled to register the Mark in view of section 16(3)(a) of the Act since the Mark was confusing with the TP-LINK trademarks previously used or made known in Canada by the Opponent.
(d)
The Applicant is not the person entitled to register the Mark in view of section 16(3)(c) of the Act since the Mark was confusing with the trade name TP-LINK previously used in Canada by the Opponent.
(e)
The Mark is not distinctive of the Applicant, within the meaning of section 2 of the Act, by reason of the fact that the Mark does not actually distinguish the Goods from the goods and services of others including the Opponent in view of “(i) a likelihood of confusion between the [Mark] and Opponent’s trademarks TP-LINK and (ii) the association of the [OPLINK] mark with the Opponent.”
[6] The Applicant filed and served a counter statement.
[7] The Opponent filed as its evidence the affidavit of XU Feng. The Applicant did not file any evidence. Neither party filed a written argument. Only the Applicant was represented at a hearing.
Evidential Burden and Legal Onus
[8] Before considering the grounds of opposition, it is necessary to review some of the requirements with regard to (i) the evidential burden on an opponent to support the allegations in the statement of opposition and (ii) the legal onus on an applicant to prove its case.
[9] With respect to (i), there is an evidential burden on an opponent to support the facts in its allegations pleaded in the statement of opposition [John Labatt Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298]. An evidential burden on an opponent with respect to a particular issue means that in order for the issue to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that issue exist. With respect to (ii) , the legal onus is on an applicant to show that the application does not contravene the provisions of the Act as alleged by an opponent (for those allegations for which the opponent has met its evidential burden). A legal onus on the applicant means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against an applicant.
Material Dates
[10] The material dates that apply to the grounds of opposition are:
· sections 38(2)(a)/30 - the filing date of the application [Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB) at 475];
· sections 38(2)(b)/12(1)(d) - the date of my decision [Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trade Marks (1991), 37 CPR (3d) 413 (FCA)];
· sections 38(2)(c)/16(3) - the priority filing date claimed in the application [sections 16(3) and 34 of the Act]; and
· sections 38(2)(d)/2 - the date of filing of the opposition [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 at 324 (FC)].
Grounds of Opposition
Section 12(1)(d) Ground of Opposition
[11] The Opponent has pleaded that the Mark is not registrable because it is confusing with registration Nos. TMA630,492 and TMA707,917 for the word mark TP-LINK as well as registration No. TMA852,405 for TP-LINK Design. I have exercised my discretion and have checked the Register to confirm that these registrations are extant [Quaker Oats Co of Canada v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)]. I now have to determine, on a balance of probabilities, if the Mark is likely to cause confusion with any of these registrations.
Test to Determine Confusion
[12] The test to determine the issue of confusion is set out in section 6(2) of the Act where it is stipulated that the use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would likely lead to the inference that the goods and services associated with those trademarks are manufactured, sold or leased by the same person, whether or not the goods and services are of the same general class or Nice class. In making such an assessment, I must take into consideration all the relevant surrounding circumstances, including those listed in section 6(5): the inherent distinctiveness of the trademarks and the extent to which they have become known; the length of time the trademarks have been in use; the nature of the goods and services or business; the nature of the trade; and the degree of resemblance between the trademarks in appearance, or sound or in the ideas suggested by them. The criteria in section 6(5) are not exhaustive and different weight will be given to each one in a context-specific assessment [Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22, 1 SCR 772 at para 54]. I also refer to Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC) at para 49, where the Supreme Court of Canada states that section 6(5)(e), the resemblance between the marks, will often have the greatest effect on the confusion analysis.
Analysis of the Section 6(5) Factors
Inherent Distinctiveness
[13] Both parties’ trademarks have a similarly low degree of inherent distinctiveness. They are coined words consisting of initials and the highly suggestive, if not descriptive word LINK and, in the case of the TP-LINK Design mark, unexceptional design features. I find the word LINK highly suggestive, if not descriptive, because the parties’ goods are used to link, network or connect computers, devices and the like.
Extent Known and Length of Time in Use
[14] There is no evidence that the Applicant has commenced use of the Mark.
[15] The Opponent filed the affidavit of Mr. Xu, the vice president of TP-LINK International Limited (para 1). I find based on Mr. Xu’s evidence set out below that the TP-LINK trademark has become known to some extent in Canada with Ethernet adapters, wireless routers, desktop switches, cables, power banks, range extenders, and cameras. Mr. Xu’s evidence is that:
· The opponents belong to the TP-LINK group of companies, a global organization that manufactures and sells electronic and data communication equipment with accessories and components (para 3).
· TP-LINK is the group of companies’ house trademark (para 3).
· In Canada, the trademark registrations for TP-LINK and TP-LINK Design are owned by TP-LINK International Limited (para 5).
· In Canada, TP-LINK’s products are sold in the name of TP-LINK Canada Inc., an associated company of TP-LINK International Limited that has been licensed to use these trademarks in Canada (para 6). While no terms of a license agreement are provided, there is an employee of TP-LINK International Limited who supervises all business matters of TP-LINK Canada Inc. (para 8). As such, I consider that the Opponent has demonstrated the requisite control and that the evidence of use provided in the affidavit enures to the opponent TP-LINK International Limited [See Empresa Cubana del Tabaco v Shapiro Cohen, 2011 FC 102 where Kelen J sets out that there are three main methods by which an owner can demonstrate the control required to benefit from section 50(1) of the Act: first, by clearly attesting to the fact that it exerts the requisite control; second, by providing evidence demonstrating that it exerts the requisite control; or third, by providing a copy of the license agreement that explicitly provides for the requisite control].
· TP-LINK Canada Inc. has sold routers, Ethernet adapters, switches, cameras, power banks, and WI-FI range extenders and issued invoices displaying the trademark TP-LINK and the tradename TP-Link Canada (Exhibit D). Attached as evidence are pictures of displays in stores and website information featuring routers, plugs, range extenders, and cameras with the trademark TP-LINK which Mr. Xu states are reflective of use and advertisement in the Canadian market (para 7; Exhibit D).
· From 2011-2016, TP-LINK Canada has sold over 400,000 products every year in Canada (para 8, Exhibit E). At the hearing, the Applicant’s agent objected to this evidence on the basis that it is hearsay as the source of this information was an employee of TP-LINK International Limited, rather than from TP-Link Canada directly. However, I give full weight to this evidence as it is necessary for an opponent to file sales information and it is reliable as Mr. Xu explains that it was provided by Krystal Li of TP-LINK International Limited who supervises all business matters of TP-LINK Canada Inc. (para 8; Exhibit E) [Labatt Brewing Co. v. Molson Breweries, A Partnership (1996), 68 CPR (3d) 216 (FCTD)].
Nature of Goods, Services and Trade
[16] I find that the nature of the parties’ goods somewhat overlaps as the Goods and the Opponent’s registered goods and services may broadly be described as goods for networking computers and devices.
[17] At the hearing, the Applicant submitted that the parties’ goods are different and pointed to the invoices, advertisements and pictures attached to Mr. Xu’s affidavit in Exhibit D which show the use of the Opponent’s trademark TP-LINK being limited to Ethernet adapters, wireless routers, desktop switches, cables, power banks, range extenders, and cameras, none of which the Applicant submits are described in the Goods.
[18] The Opponent’s registrations, however, cover a wider range of goods including various couplers, switches, receivers, transreceivers, amplifiers and adapters, such as: i) from registration No. TMA707,917: fiber optic converters, network switches, transmitters of electronic signals, receiver servers; fibre optic transmitters, fibre optic receivers, fibre optic node units all for use as as an optical communication apparatus, and ii) from registration No. TMA852,405: computer hardware and peripherals, namely, routers, adapters, switches, switch modules, network cards, gbic standard modules, couplers, wireless adapters, fiber optical networks comprised of hubs, switches and fiber-to-electrical media converters, communication hubs, communication routers and switches having mixed fiber optical and electrical media ports; optical communication devices, namely, lasers and audio receivers, video receivers and optical communication data receivers. In the absence of evidence from the Applicant, I am unable to infer that these goods are of a different nature or sold through a different channel of trade than the couplers, switches, receivers, transreceivers, amplifiers and adapters in the Goods, including those listed below (the Overlapping Goods). Therefore, I find that the overlap in the nature of goods identified below favours the Opponent to a significant extent.
Fiber optic networking hardware and software-embedded products, namely, signal couplers/splitters, coupler/isolator hybrids, switches, wavelength selective switches, amplifiers, gain block amplifiers, optical adapters, fiber optical transceivers, optical transmitters, receivers, receiver optical subassemblies, bi-directional optical transceivers, CWDM transceivers, DWDM fixed wavelength transceivers, parallel optical transceivers, DWDM tunable transceivers, optical transponders, video optical transceiver, video optical transmitters, video optical receivers, video CWDM transceivers, optical supervisory channel transceivers, differential quadrature phase shift keying (DQPSK) transceivers, multilane on-off keying (OOK) transceivers, multilane DWDM dual polarization quadrature phase shift keying(DP-QPSK) transceivers, multilane pulse amplitude modulation (PAM) transceivers, maximum-likelihood sequence estimation (MLSE) transceivers, multilane quadrature amplitude modulation (QAM) transceivers, multilane OOK transceivers, multilane QAM transceivers, multilane PAM DWDM transceivers, fibre-optic amplifier, optical switch, RF amplifier, RF switch.
[19] With respect to the remaining applied-for goods, I do not find that the overlap favours the Opponent to a significant extent. While the Opponent’s registrations include broadly described goods and services such as “Computer hardware for interconnecting and managing computer networks and telecommunications” (TMA630,492) and “communications by networks, namely, providing multiple user access to a global computer network” and “providing user access to a global computer network” (TMA852,405), the evidence is that the Opponent sells Ethernet adapters, wireless routers, desktop switches, cables, power banks, range extenders, and cameras. Absent more specific evidence or submissions from the Opponent, the fact that its registrations include these broad descriptions is not sufficient for me to find that the overlap in the nature of the goods, services and trade is significant since the Goods each appear to have a very specific and narrow function as opposed to allowing networking generally.
Degree of Resemblance
[20] As stated earlier, the degree of resemblance between the trademarks will often have the greatest effect on the confusion analysis. When considering the degree of resemblance, the law is clear that the trademarks must be considered in their totality. The appropriate test is not a side-by-side comparison but an imperfect recollection in the mind of a consumer of an opponent’s trademark [Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée et al, 2006 SCC 23 at para 20].
[21] There is necessarily a high degree of resemblance in appearance and sound as the only real difference between the Mark and the Opponent’s trademarks TP-LINK and TP-LINK Design is that the Mark includes the first component OP as opposed to TP. With respect to idea suggested, while the parties’ trademarks all suggest that the associated goods assist linking computers, networks, and devices, there can be no monopoly in this idea in association with the parties’ goods [American Assn of Retired Persons v Canadian Assn of Retired Persons/Assoc Canadienne des Individus Retraites (1998), 84 CPR (3d) 198 at para 34 (FCTD)]. Further, in the absence of evidence, I do not find that the initials TP and OP suggest something different to consumers.
Surrounding Circumstance – Associated Marks
[22] At the hearing, the Applicant submitted that it had registered other OPLINK trademarks. This, however, is not in evidence and the Registrar generally declines to take cognizance of its own records except to verify whether trademark registrations and applications identified in a statement of opposition are extant [Quaker Oats of Canada Ltd/La Compagnie Quaker Oats du Canada Ltée v Menu Foods Ltd, supra]. Further, it is well established that an applicant’s ownership of one or more trademarks does not give it the automatic right to obtain a further registration [Coronet-Werke Heinrich Schlerf GmbH v Produits Ménagers Coronet Inc (1984), 4 CPR (3d) 108 at 115 (TMOB); 385229 Ontario Limited v ServiceMaster Company, 2012 TMOB 59 at para 47]. Further, in the absence of evidence of use with respect to any of the goods in the Applicant’s registrations, there are no circumstances in this case that would support a finding that the existence of these other trademarks is a relevant surrounding circumstance [contrast with the Caesarstone Sdot-Yam Ltd v Ceramiche Caesar SPA, 2016 FC 895 case where a prior registration was found to be relevant].
Conclusion
[23] Having considered all of the surrounding circumstances, I find that the Applicant has not met its legal burden with respect to the Overlapping Goods. I reach this conclusion due to the degree of resemblance between the marks and the overlap in the nature of these particular goods (being couplers, switches, receivers, transreceivers, amplifiers and adapters) with the Opponent’s registered goods. In so finding, I have only afforded the Opponent’s trademarks a narrow scope of protection. That being said, a narrow scope of protection is not the same as having no protection at all.
[24] I reach a different conclusion with respect to the remaining goods. When one considers the remaining goods, I find that the Applicant meets its legal onus of proving that there is not a reasonable likelihood of confusion. There is no evidence that these goods are of the type that the Opponent has specified in its TP-LINK registrations, or that it would be a natural extension of its business to do so.
[25] Accordingly, the section 12(1)(d) ground of opposition succeeds, but only to the extent set out above.
Entitlement and Section 2 Grounds of Opposition
[26] The basis of the remaining entitlement and distinctiveness grounds of opposition are allegations of confusion with the trademarks TP-LINK and TP-LINK Design and trade name TP-LINK. I do not intend to address the remaining grounds of opposition in detail. To the extent that the Opponent has met its initial burden under sections 16(3)(a) and (c) and 2 of the Act, it will have only done so with Ethernet adapters, wireless routers, desktop switches, cables, power banks, range extenders, and cameras. As such, these grounds of opposition would not have resulted the refusal of any goods beyond those refused with respect to the section 12(1)(d) ground of opposition.
Section 30(e) Ground of Opposition
[27] The Opponent has not provided any evidence or submissions in support of its section 30(e) ground of opposition. As such, I find that the Opponent has failed to meet its evidential burden with respect to this ground of opposition and it is rejected.
Disposition
[28] Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application with respect to the goods set out in strike out below, and reject the opposition with respect to the remainder of the goods, pursuant to section 38(12) of the Act.
Fiber optic networking hardware and software-embedded products, namely, dense wavelength division multiplexers (DWDM)/demultiplexers, coarse wavelength division multiplexers (CWDM)/demultiplexers, band wavelength division multiplexers (BWDM)/demultiplexers, arrayed waveguide gratings (AWG) for use as multiplexers and demultiplexers, filters, fiber optical interleavers, micro-optical devices in the nature of wavelength lockers, optical isolators,
signal couplers/splitters, polarization maintaining beam combiners/splitters, power monitors, hybrid components in the nature of wavelength division multiplexers (WDM), isolator hybrids,coupler/isolator hybrids,filter/isolator hybrids, splitter/power monitor hybrids and depolarizer/beam combiner hybrids, circulators, collimators,switches,optical channel monitor modules, reconfigurable optical add-drop multiplexers,wavelength selective switches,amplifiers, gain block amplifiers,variable optical attenuators, variable multiplexers, tunable optical filters, tunable filter arrays, wavelength blocker arrays, jumpers/patch cords, optical connectors,optical adapters, optical patch panels, and fixed attenuators.fiber optical transceivers,optical transmitters,receivers,transmitter optical subassemblies,receiver optical subassemblies, bi-directional optical subassemblies,bi-directional optical transceivers,CWDM transceivers,DWDM fixed wavelength transceivers,parallel optical transceivers,DWDM tunable transceivers,optical transponders,video optical transceiver,video optical transmitters,video optical receivers,video CWDM transceivers,optical supervisory channel transceivers,differential quadrature phase shift keying (DQPSK) transceivers, multilane on-off keying (OOK) transceivers, multilane DWDM dual polarization quadrature phase shift keying(DP-QPSK) transceivers, multilane pulse amplitude modulation (PAM) transceivers, maximum-likelihood sequence estimation (MLSE) transceivers, multilane quadrature amplitude modulation (QAM) transceivers, multilane OOK transceivers, multilane QAM transceivers, multilane PAM DWDM transceivers, chassis platform,fiber-optic amplifier,optical switch,RF amplifier,RF switch.
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| Natalie de Paulsen
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| Member
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| Trademarks Opposition Board
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| Canadian Intellectual Property Office
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TRADEMARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
___________________________________________________
HEARING DATE 2019-07-16
APPEARANCES
| Amy Grenon
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For the Applicant
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| No one appearing
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For the Opponent
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AGENTS OF RECORD
| Norton Rose Fulbright Canada LLP/S.E.N.C.R.L., S.R.L.
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For the Applicant
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| Mrs. Dan Yang-Hoffmann |
For the Opponent
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