Citation: 2019 TMOB 125

Date of Decision: 2019-11-25

IN THE MATTER OF AN OPPOSITION

	Fortress Real Developments Inc.	Opponent
and
	Fortress Properties Inc.	Applicant
	1,676,838 for FORTRESS	Application

Introduction

[1]  Fortress Real Developments Inc. (the Opponent) opposes registration of the trademark FORTRESS (the Mark), which is the subject of application No. 1,676,838, filed by Fortress Properties Inc. (the Applicant) on the basis of use of the Mark in Canada since at least as early as July 1997 in association with “property management services” (the Services).

[2]  For the reasons that follow, I find the opposition ought to be rejected.

The record

[3]  The application for the Mark was filed on May 13, 2014 and advertised for opposition purposes in the Trademarks Journal on February 4, 2015.

[4]  On July 3, 2015, the Opponent filed a statement of opposition under section 38 of the Trademarks Act, RSC 1985, c T-13 (the 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 that date).

[5]  There are two grounds of opposition pleaded by the Opponent in this case, namely non-compliance of the application with the provisions of section 30(b) of the Act, and non-distinctiveness of the Mark pursuant to section 2 of the Act. Both grounds were denied by the Applicant by counter statement dated October 2, 2015.

[6]  In support of its opposition, the Opponent filed the affidavit of Andrea F. Ashton, a trademark agent employed by the firm that was formerly representing the Opponent in the present proceeding, which is dated January 27, 2016 (the Ashton affidavit) and includes as Exhibits A and B respectively, one copy of a Canadian Corporate Name Search for the name FORTRESS prepared by Thomson CompuMark, dated July 3, 2015, and another copy, dated January 27, 2016 (the Thomson CompuMark Report(s)); and a certified copy of extracts from the opposition proceeding with respect to Canadian trademark application No. 1,514,906 for FORTRESS REAL CAPITAL & Castle Design, which was applied for by the Opponent and successfully opposed by the Applicant [Fortress Properties Inc v Fortress Real Developments Inc, 2015 TMOB 228], namely:

·  the affidavit of John Kearley, the Executive Vice-President of the Applicant at the time, which is dated August 8, 2012 and includes Exhibits A to P (the first Kearley affidavit); and

·  the transcript of the cross-examination of Mr. Kearley on his affidavit of August 8, 2012, which took place on March 1, 2013.

(Sometimes collectively referred to as the FORTRESS REAL CAPITAL & Castle Design Trademark Opposition Extracts).

[7]  In support of its application, the Applicant filed the affidavit of its President since January 1, 2016, John Kearley, which is dated May 31, 2016 and includes Exhibits JK-1 to JK-28 (the second Kearley affidavit). Mr. Kearley’s affidavit canvasses the history, nature and scope of the Applicant’s business under the FORTRESS name and logos, and details the Applicant’s advertising and promotional efforts, exposure and expenditures over the years. Mr. Kearley was cross-examined on his affidavit and the transcript of that cross-examination forms part of the record.

[8]  Both parties filed written arguments, but only the Applicant was represented at an oral hearing.

The parties’ respective burden or onus

[9]  The Opponent has the initial evidential burden to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist. Once that burden is met, the Applicant bears the legal onus of establishing, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark [John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD); and Dion Neckwear Ltd v Christian Dior, SA et al, 2002 FCA 29, 20 CPR (4th) 155].

Analysis of the grounds of opposition

Ground of opposition based on section 30(b) (non-compliance) of the Act

[10]  The Opponent has pleaded that:

…the [a]pplication does not comply with the requirements of section 30(b) of the Act, because the Applicant did not use the Mark in association with [the Services] since July 1997 as claimed in the [a]pplication.

[11]  More particularly, the Opponent contends in its written argument that “the Applicant’s evidence fails to establish use of the FORTRESS word as a trade-mark.”

[12]  The relevant date for considering the circumstances concerning this ground of opposition is the filing date of the Applicant’s application [Georgia-Pacific Corporation v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB)at 475]. In this regard, section 30(b) of the Act requires that there be continuous use of the Mark since the date claimed [Labatt Brewing Co v Benson & Hedges (Canada) Ltd (1996), 67 CPR (3d) 258 (FCTD) at 262]. To the extent that the relevant facts pertaining to a ground of opposition based on section 30(b) of the Act are more readily available to the Applicant, the evidential burden on the Opponent with respect to such a ground of opposition is less onerous [Tune Master v Mr P’s Mastertune Ignition Services Ltd (1986), 10 CPR (3d) 84 (TMOB) at 89]. Furthermore, this burden can be met by reference not only to the Opponent’s evidence but also to the Applicant’s evidence [Labatt Brewing Company Limited v Molson Breweries, a Partnership (1996), 68 CPR (3d) 216 (FCTD) at 230]. However, the Opponent may only successfully rely upon the Applicant’s evidence to meet its initial burden if the Opponent shows that the Applicant’s evidence is clearly inconsistent or puts into issue the claims set forth in the Applicant’s application [Corporativo de Marcas GJB, SA de CV v Bacardi & Company Ltd 2014 FC 323 (CanLII) at paras 30-38].

[13]  In the present case, the Opponent contends at paragraph 28 of its written argument that the FORTRESS REAL CAPITAL & Castle Design Trademark Opposition Extracts satisfy the Opponent’s light evidential burden in the following manner:

• a) The first Kearley Affidavit only refers to use of FORTRESS as a trade-name (or business name) rather than as a trade-mark; and

• b) The earliest advertising in the [first] Kearley Affidavit occured post claim [sic] date.

[14]  More particularly, the Opponent contends at paragraphs 30 to 33 of its written argument that:

(A) The Kearley Affidavit only refers to use of a trade-name, not a trade-mark

30. In the Prior Opposition Proceeding, Fortress Properties [i.e. the Applicant in the present case] asserted section 16(1)(c) of the Act, which states that a mark will not be registrable if it is confusing with a trade-name. Fortress Properties chose not to assert section 16(1)(a) of the Act, which prevents entitlement to a trade-mark registration if it is confusing with another trade-mark. The Court should draw an adverse inference against the Applicant that the decision to not assert section 16(1)(a) of the Act was deliberate because FORTRESS name was only ever used as a trade-name.

31. Throughout the Kearley Affidavit, Mr. Kearly only refers to trade-names used by the Applicant. This raises doubts as to whether the Applicant used FORTRESS as a trade-mark since at least as early as July 1997.

(B) The earlieast advertising in the Kearley Affidavit occurred post claim [sic] date

32. There is no evidence in the first Kearley Affidavit of an advertisement of the Applicant’s trade-name or alleged trade-mark prior to 2001. There are exhibits that provide examples of advertisements but none are dated as early as July 1997. The earliest examples of advertising contained in the Kearley Affidavit are the 2001 advertisements in The StarPhoenix newspaper.

33. The Opponent submits that the ambiguity with respect to when FORTRESS was first used as a trade-mark, as demonstrated by the first Kearley Affidavit, satisfies the light evidential burden and shifts the legal burden onto the Applicant.

[15]  I cannot accept the Opponent’s argument.

[16]  The mere fact that in his first affidavit, Mr. Kearley does not expressly refer to the word “FORTRESS” being used as a trademark per se, but rather focuses on the Applicant’s trade name “Fortress Properties”, can by no means be considered to support the Opponent’s argument that the Applicant did not start using the Mark since July 1997. Mr. Kearley’s statements must be considered in their context (which includes the applicable material dates governing the proceeding in which these statements were made) and are consistent that Fortress Properties is a name under which the Applicant conducts business. In this regard, one can only speculate as to the reason why the Applicant allegedly elected to only assert section 16(1)(c) of the Act in its opposition to the Opponent’s former application No. 1,514,906 for the trademark FORTRESS REAL CAPITAL & Castle Design. Furthermore, trade-mark and trade name usage are not necessarily mutually exclusive, as more fully discussed below.

[17]  This brings me to consider the Opponent’s additional contention, relying upon the Applicant’s evidence, that:

49. The Applicant has provided no compelling evidence of trade-mark use of FORTRESS since as early as July 1997. In the four volumes of the [s]econd Kearley affidavit, most of the evidence is irrelevant for proving trade-mark use since the claim [sic] date. In fact, during cross-examination, Mr. Kearley admitted that “Fortress Properties Inc.” is the trade-name of the Applicant and that this name appears on their advertisements. Use of the FORTRESS trade-name does not constitute use as a trade-mark and the Applicant has failed to provide evidence of the latter.

[18]  With respect, I cannot agree with the Opponent’s position.

[19]  In this regard, it is to be reminded that as the Opponent is relying upon the Applicant’s evidence, the issue becomes whether the Applicant’s evidence is clearly inconsistent or puts into issue its use claim.

[20]  I will begin my discussion with a review of the evidence introduced through the second Kearley affidavit. Only the most salient portions of this affidavit are outlined below.

The second Kearley affidavit

[21]  According to Mr. Kearley, the Applicant was incorporated on October 26, 1995 in Saskatchewan and provides property management services for the properties acquired by Millennium III Capital Corporation (Millennium III) on behalf of its investor clients (the Investor Clients). Mr. Kearley explains that Millennium III provides an opportunity for investors throughout Canada, without the need for commercial real estate expertise, to participate collectively in commercial real estate and acquire and develop property in a very cost effective manner, through a limited partnership structure [paras 1-6].

[22]  More particularly, at paragraph 7 of his affidavit, Mr. Kearley explains that the Applicant’s property management services generally entail performing, on behalf of the partnerships owned by the Investor Clients, all acts that are reasonably necessary for the proper and efficient management and operation of the properties and include but are not limited to:

·  collecting rent;

·  soliciting new tenants;

·  negotiating new leases and/or renewals or extensions of existing leases;

·  supervising moving of new tenants and moving out of former tenants;

·  supervising and enforcing the oligations of tenants;

·  observing and performing on behalf of the owner all covenants and obligations of the owner pursuant to the lease and/or any landlord and tenant, rent control or other legislation or laws;

·  hiring or retaining all janitorial, maintenance, security and other staff as necessary and to make contracts on behalf of the owner of such services;

·  arranging for and maintaining water, electricity, power and other utilities; and

·  maintaining, repairing and renovating the properties, and overseeing any subcontracted construction work.

[23]  The Applicant has been active in Saskatchewan since 1995 and in Alberta since 2005. In this regard, Mr. Kearley summarizes the portfolio of properties managed by the Applicant over the years [paras 10-12].

[24]  Mr. Kearley then turns to the FORTRESS name and logos. He explains that the name FORTRESS PROPERTIES INC. was selected in 1995. The term “FORTRESS” was specifically chosen given its “secure” and “positive” connotations in the field of investment [para 13].

[25]  Mr. Kearley states that “since at least as early as late 1996, [the Applicant] began offering property management services and at the time, displayed the name FORTRESS PROPERTIES INC. on letterhead in its day to day communications […]” [para 14].

[26]  Mr. Kearley states that “with the start” of the Applicant’s operations, the Applicant “also began using the [following] logo” [para 15]:

[27]  By way of one example, Mr. Kearley includes a copy of a fax transmittal page, dated January 8, 1997, attaching a letter, dated December 30, 1996, addressed to the tenant at one of the properties managed by the Applicant, which letter informs the latter that the property in question has been acquired by a partnership owned by the Investor Clients and will be managed by the Applicant on behalf of that partnership. Mr. Kearley explains that the letter contains a copy of a business card from the Applicant’s commercial property manager, which bears the First FORTRESS Logo [para 16].

[28]  Mr. Kearley states that “[s]imilarly, since at least as early as late 1996, [the Applicant] has displayed the name FORTRESS PROPERTIES INC. on the front door of its Saskatchewan office and since 2003, the name FORTRESS in the reception area, as shown [in the photographs] below” [para 17]:

[29]  Mr. Kearley not only confirms at paragraph 18 of his affidavit that these photographs are representative of the signage displayed at these locations since that time, but also confirms at paragraph 30 of his affidavit that:

…since the start of [the Applicant’s] operations in late 1996, it would not be uncommon for tenants and potential tenants of the properties managed by [the Applicant] to visit [the Applicant’s] office in order to, for instance, pay rent, sign leases or lease renewals, meet to discuss upcoming renewals or to go over potential spaces to lease, drop off or pick-up signed documents or otherwise go over documents and have [the Applicant’s employees] explain documents and/or answer any questions.

[30]  Mr. Kearley goes on and explains the changes of logos that took place over the years. He states that in or around 2002, the Applicant adopted the logo shown below at the left, which logo was later on changed to the one shown below at the right:

[31]  More particularly, Mr. Kearley explains that the transition from one logo to another has been progressive and that the New FORTRESS Logo was approved in late 2010. Mr. Kearley states that the New FORTRESS Logo has first appeared on uniforms, which were delivered to the Applicant on June 16, 2011, and worn by the Applicant’s maintenance employees in the course of their duties on the date of delivery. Mr. Kearley states that the transition from the 2002 FORTRESS Logo to the New FORTRESS Logo has thereafter been progressive, much like the transition from the First FORTRESS Logo to the 2002 FORTRESS Logo, and is only recently nearing completion, as more fully explained in his affidavit [paras 15 and 19-24].

[32]  Mr. Kearley thereafter provides detailed and lengthy examples of the use and display of the FORTRESS name and logos in the performance and advertisement of the Applicant’s property management services, such as, for instance:

• on the Applicant’s business cards [para 29]:

• on “Property Managed by” and “For Lease” signs appearing in, on or adjacent to the properties managed by the Applicant, as illustrated by the following representative examples of such signs [paras 33-36; and Exhibits JK-9 and JK-10]:

• on signs appearing inside the properties managed by the Applicant (e.g. in elevators and fire escapes) [para 39];

• on the Applicant’s website and Facebook®page [paras 47-52; and Exhibits JK-13 to JK-16]; and

• in numerous third party print publications (i.e. newspapers) [paras 53-69; and Exhibits JK-17 to JK-27].

[33]  Mr. Kearley provides the Applicant’s annual advertising expenditures in Canada between 1998 and 2016, which total in excess of $348,200.

[34]  Laslty, Mr. Kearley also provides information with respect to the Applicant’s revenues over the years. He explains, among other things, that these revenues have generally increased over the years, from under $10,000 in 1996 to in excess of one million dollars in 2012.

Trade name use versus trademark use

[35]  While I acknowledge that the distinction between a trade name and a service mark can sometimes be quite tenuous, the presumption that a company name is a trade name rather than a trademark is rebuttable, and trade name use does not preclude concurrent trademark use. The question is whether it is identifiable as a trademark and not merely as a corporate name or corporate identifier. This is a question of fact. Relevant factors to decide whether use is as a trademark or trade name include whether the trademark stands apart from the corporate or trade name and other corporate identifier information to the extent that the public would perceive such use as a trademark and not merely identification of a legal entity [Road Runner Trailer Manufacturing Ltd v Road Runner Trailer Co (1984), 1 CPR (3d) 443 (FCTD); Nightingale Interloc Ltd v Prodesign Ltd (1984), 2 CPR (3d) 535 (TMOB); and by example Miller Thomson v Thinklab Consulting Inc, 2019 TMOB 8 (CanLII); Borden Ladner Gervais LLP v GDC Communities, 2015 TMOB 50 (CanLII); Stikeman Elliot LLP v Haydock, 2008 CanLII 88304, CarswellNat 1168 (TMOB); Bereskin & Parr v Red Carpet Food Systems Inc (2007), 64 CPR (4th) 234 (TMOB)].

[36]  In this case, I agree with the Applicant that the word FORTRESS appears throughout most of the materials in the exhibit evidence separate and apart and clearly stands out from all the other visual and verbal constituting elements of the foregoing logos. Notably, in addition to appearing on its own line, FORTRESS is in a different typeface that is multiple times larger than the other verbal elements. The much greater prominence given to the word FORTRESS creates a distinctive element in the corporate name FORTRESS PROPERTIES INC. sufficient to constitute use as a trademark in this particular case. Put in other words, the word FORTRESS sufficiently stands out to create a distinct impression apart from the remaining wording to the extent that the public would perceive such use either as a trademark on its own and not merely identification of a legal entity, or as both a trade name and a trademark [see Consumers Distributing Co/Cie Distribution aux Consommateurs v Toy World Ltd, 1990 CasrwellNat 1398 (TMOB) at para 14 which confirms that trademark and trade name usage are not necessarily mutually exlcusive; and by analogy Bereskin & Parr v Keen-Flo Tumber Industries Ltd, 2010 TMOB 121; and Osler, Hoskin & Harcourt LLP v Multibond Inc., 2017 TMOB 75 (CanLII)].

Use of the Mark since as early as July 1997

[41]  I am mindful that much of the voluminous evidence introduced through the second Kearley affidavit postdates the material date of July 1997. However, I stress again that the Applicant was under no obligation to positively evidence such use. I also agree with the Applicant that its evidence is not clearly inconsistent with the claimed date of first use of the Mark. To the contrary, bearing in mind my comments above regarding trademark and trade name usage, I agree with the Applicant that display of the name FORTRESS PROPERTIES INC. on the front door of the Applicant’s Saskatchewan office as shown above at paragraph 28 of my decision “since at least as early as late 1996” as well as display of the First Fortress Logo on the Applicant’s business cards for the years “late 1996-2003”, when considered in the context of the Kearley affidavit as a whole, do support, to some extent, the Applicant’s claimed date of first use of the Mark in association with the Services “since at least as early as July 1997”.

Conclusion – re section 30(b) ground of opposition

[37]  In view of all the forgegoing, I find that the Opponent has not discharged its relatively light evidential burden under section 30(b) of the Act.

[38]  Accordingly, the section 30(b) ground of opposition is rejected.

Ground of opposition based on section 2 (non-distinctiveness) of the Act

[39]  The Opponent has pleaded that:

…the Mark is not distinctive, having regard to section 2 of the Act, in that the Mark does not distinguish the Applicant’s [Services] from the services of others, including the services of Fortress Properties in Nova Scotia and Fortress Property Management Inc. in Vancouver, B.C. Moreover, the Mark is not adapted so as to distinguish the Applicant’s [Services] from the services of others, including the services of Fortress Properties and Fortress Property Management Inc.

[40]  The material date for considering the circumstances respecting this ground of opposition is as of the filing date of the statement of opposition [Andres Wines Ltd v E & J Gallo Winery (1975), 25 CPR (2d) 126 (FCA) at 130; and Park Avenue Furniture Corp v Wickes/Simmons Bedding Ltd (1991), 1991 CanLII 11769 (FCA), 37 CPR (3d) 413 at 424]. The Opponent has the initial evidential burden to prove the allegations of fact in support of its ground of non-distinctiveness. Once that burden is met, the legal burden or onus is on the Applicant to show that the Mark is adapted to distinguish or actually distinguishes its Services from those of others throughout Canada [Muffin Houses Inc v Muffin House Bakery Ltd (1985), 4 CPR (3d) 272 (TMOB)].

[41]  To meet its evidential burden in respect of this ground, the Opponent must show that there has been third party use of similar “FORTRESS” names to such an extent this would negate the distinctiveness of the Mark [Motel 6, Inc v No 6 Motel Ltd (1981), 1981 CanLII 2834 (FC), 56 CPR (2d) 44 at 58; and Bojangles’ International, LLC v Bojangles Café Ltd (2004), 40 CPR (4th) 553, affirmed (2006), 2006 FC 657 (CanLII), 48 CPR (4th) 427].

[42]  I agree with the Applicant that the Opponent has not met its initial evidential burden of adducing sufficient evidence to persuade the Registrar that the ground of opposition based on lack of distinctiveness is sustainable.

[43]  Indeed, the Opponent has not filed any evidence to establish whether any of the business name entities revealed by the Thomson CompuMark Reports attached to the Ashton affidavit have been used, much less become known to any extent in Canada [see by analogy Freedom RV Canada Inc v CMSR Entreprises Inc, 2008 CarswellNat 4346 (TMOB) at para 12; Great Pacific Industries Inc v 970007 Ontario Inc (1996) 74 CPR (3d) 264 (TMOB) at pp 269-270; and The Mixing Bowl Inc v MTL DWN Grill Inc, 2018 TMOB 2, at para 40]. In this regard, with respect to the entities named Fortress Properties in Nova Scotia and Fortress Property Management Inc. in Vancouver, B.C., which have been expressly pleaded in the Opponent’s statement of opposition, the reports merely confirm that these two entities were registered in Nova Scotia (in 2003) and in British Columbia (in 2009), respectively, but do not otherwise provide any information as to whether either of these names were known to any extent, if at all, in Canada at the date of filing of the statement of opposition.

[44]  Accordingly, the non-distinctiveness ground of opposition is also rejected.

Disposition

[45]  Pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(12) of the Act.

Annie Robitaille

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2019-10-22

APPEARANCES

No one appearing	FOR THE OPPONENT
Guillaume Lavoie Ste-Marie	FOR THE APPLICANT

AGENTS OF RECORD

No agent appointed	FOR THE OPPONENT
Smart & Biggar LLP	FOR THE APPLICANT