Citation: 2021 TMOB 137

Date of Decision: 2021-06-29

IN THE MATTER OF AN OPPOSITION

	WeldPro Limited	Opponent
and
	WeldWorld Corp	Applicant
	1,717,976 for 1-877-WELDPRO	Application

Introduction

[1] WeldWorld Corp (the Applicant) has filed application No. 1,717,976 (the Application) to register the trademark 1-877-WELDPRO (the Mark) in association with the goods and services set out in Schedule A to this decision. The Application is based on use of the Mark in Canada since at least as early as 2013.

[2] The Application was advertised for opposition purposes in the Trademarks Journal on May 4, 2016. On October 3, 2016, WeldPro Limited (the Opponent) filed a statement of opposition against the Application pursuant to section 38 of the Trademarks Act, RSC 1985, c T-13 (the Act). The Act was amended on June 17, 2019, and pursuant to section 70 of the Act, the grounds of opposition in this proceeding will be assessed based on the Act as it read prior to June 17, 2019.

[3] The Opponent raises grounds of opposition based on non-entitlement under sections 16(1)(a) and (c), non-distinctiveness under section 2, and non-compliance with section 30(i) of the Act. The non-entitlement and non-distinctiveness grounds are based on an alleged likelihood of confusion with the Opponent’s trademark WELDPRO and trade names WeldPro and WeldPro Limited. The section 30(i) ground is based on alleged bad faith by the Applicant in view of the history between the parties, discussed further below, and the Applicant’s knowledge of the Opponent’s trademark and trade names.

[4] The Applicant filed a counter statement denying the grounds of opposition. Both parties submitted evidence and written representations. Only the Opponent attended the hearing.

[5] For the reasons that follow, the Application is refused.

Summary of the Facts

[6] The parties to this opposition proceeding have already engaged in litigation in the Federal Court and Alberta’s Court of Queen’s Bench. The litigation in the Federal Court, conducted under docket number T-1902-16 (the Weldpro Federal Court proceeding), addressed similar subject matter to the present proceeding and concluded with the decision Weldpro Limited v Weldworld Corp, 2018 FC 312 (the Weldpro Federal Court decision).

[7] Much of the evidence in this opposition consists of affidavits and cross-examination transcripts from the Weldpro Federal Court proceeding, which the parties have included and adopted as their evidence for this opposition. As such, the evidence before me in this proceeding is consistent with that discussed in the Weldpro Federal Court decision, and many of the facts discussed below have already been canvassed in that decision. Nevertheless, it is useful to review them again here.

The Parties

[8] The Applicant is a privately held corporation located in Alberta. The Applicant was originally incorporated under the name Advanced Industrial Supply Ltd (AIS) but changed its name to Weldworld Corp in October 2013. The President of the Applicant is Mr. William Kocken.

[9] The Opponent is a corporation also located in Alberta. The Opponent was initially incorporated as 1105514 Alberta Ltd. but changed its name to WeldPro Limited in May 2009. The Opponent’s sole officer and director is Mr. Perry Rideout. Mr. Rideout worked for the Applicant (then AIS) from 2005 until late August 2009.

[10] The parties operate competing businesses in Edmonton involving the sale and service of welding supplies and gasses. At one point, one of the Applicant’s locations was situated across the street from the Opponent’s business.

The Parties’ use of the term “WELDPRO”

[11] In or around 1999, the Applicant adopted the phone number 1-877-935-3776, which can be entered as 1-877-WELDPRO using a standard alphanumeric touchtone phone pad. Commencing in 2001, the Applicant prominently identified the phone number as “1-877-WELDPRO” on its website. The Applicant also displayed the Mark on various advertising materials from 2011 onward. These facts regarding the Applicant’s use of the Mark in 2001 and from 2011 onwards do not appear to be in dispute.

[12] The parties do dispute whether the Applicant used the Mark during the period between 2001 and 2011.

[13] As noted above, the Opponent in May 2009 changed its name to WeldPro Limited. The evidence indicates that the Opponent has been operating its business under that name ever since.

Litigation History

[14] In 2009 the Opponent commenced proceedings against the Applicant in Alberta’s Court of Queen’s Bench for unpaid accounts (the Alberta litigation). The Applicant counterclaimed, alleging that the Opponent by using the name WeldPro was engaged in passing off in respect of the Mark. The Alberta litigation was concluded when the parties executed a settlement agreement and mutual release of their claims in May 2012, which included recognition of the Opponent’s use of the name WeldPro.

[15] In March 2015, the Applicant filed the present Application to register the Mark. In September 2015, the Opponent filed an application to register the trademark WeldPro.

[16] In 2016, the Opponent initiated the Weldpro Federal Court proceeding asserting that the Applicant’s use of the Mark constituted passing off pursuant to section 7(b) of the Act, in view of the Opponent’s use of the trademark and trade name WELDPRO. The Opponent was unsuccessful in that proceeding. In the Weldpro Federal Court decision, the Court found that the Opponent had failed to demonstrate each of the three elements necessary to succeed in a claim for passing off, namely, (1) goodwill, (2) misrepresentation or deception, and (3) damage. The Weldpro Federal Court decision was not appealed and is therefore final.

Evidence

[17] Set out below is a summary of how the affidavits in this proceeding were organized and incorporated the material from the Weldpro Federal Court proceeding. Salient facts from this evidence are summarized in the preceding section of this decision, and are further discussed in the analysis of the grounds of opposition.

Opponent’s Evidence-in-chief

1. Affidavit of Mohamed Abdelkader sworn July 10, 2017 (the Abdelkader Affidavit)

[18] Mr. Abdelkader is a paralegal with the Opponent’s agent. His affidavit includes the following documents which were filed in the Weldpro Federal Court proceeding:

(a) Affidavit of Jaymee Pardo sworn December 8, 2016 (the Pardo Federal Court Affidavit) and transcripts of the cross-examination of Ms. Pardo on that affidavit on May 10, 2017.

(b) Affidavit of Gilbert Taylor sworn December 8, 2016 and transcripts from the cross-examination of Mr. Taylor on that affidavit on May 10, 2017.

(c) Affidavit of William Kocken sworn January 25, 2017 which was served on the Opponent in the Weldpro Federal Court proceeding, and transcripts from the cross-examination of Mr. Kocken on that affidavit on May 10, 2017.

2. Affidavit of Jaymee Pardo sworn July 11, 2017

[19] Ms. Pardo is the bookkeeper and corporate document specialist at the Opponent. She indicates that the Opponent is registered under the laws of the Province of Alberta. Her affidavit adopts and relies on the content of her affidavit sworn December 8, 2016 and the transcripts of the cross-examination which took place on May 10, 2017, referenced above, which were filed in the Weldpro Federal Court proceeding.

3. Affidavit of Gilbert Peter Taylor sworn July 11, 2017

[20] Mr. Taylor is a salesman with the Opponent. His affidavit adopts and relies on the contents of his affidavit sworn on December 8, 2016 and the transcripts of his cross-examination on May 10, 2017, referenced above, which were filed in the Weldpro Federal Court proceeding.

4. Replacement Affidavit of Mohamed Abdelkader sworn July 9, 2018.

[21] Leave was granted to the Opponent to file this affidavit on July 18, 2018. This affidavit includes the Notice of Application and Memorandum of Fact and Law filed by the Opponent in the Weldpro Federal Court proceeding.

Applicant’s Evidence

1. Affidavit of William Kocken sworn October 31, 2017 (the Kocken Opposition Affidavit)

[22] Mr. Kocken is the President of the Applicant. The Kocken Opposition Affidavit includes as Exhibits “A” and “B” the Applicant’s Record and Book of Authorities, respectively, filed by the Applicant in the Weldpro Federal Court proceeding.

[23] The Kocken Opposition Affidavit also attaches as Exhibit “C” a copy of the transcript of Mr. Kocken’s cross-examination in the Weldpro Federal Court proceeding on May 10, 2017 (this transcript was also included in the Abdelkader Affidavit, introduced above). At paragraph 7 of the Kocken Opposition Affidavit, in reference to the transcript from his cross-examination in the Weldpro Federal Court proceeding, Mr. Kocken states “[s]aid transcript was created during my cross-examination, and therefore, I believe it is accurate and reliable.”

[24] Mr. Kocken was cross-examined on the Kocken Opposition Affidavit on June 22, 2018 and the transcripts and exhibits from that cross-examination were filed on July 5, 2018 and form part of the record.

2. Affidavit of William Kocken sworn March 29, 2018

[25] Leave to file this affidavit was granted to the Applicant on May 24, 2018. This affidavit includes a copy of the Weldpro Federal Court decision.

Opponent’s Reply Evidence

[26] My understanding is that the Opponent’s evidence filed in reply in this opposition is evidence which was not filed in the Weldpro Federal Court proceeding.

1. Affidavit of Desmond Taljaard sworn October 16, 2018 (the Taljaard Affidavit)

[27] Mr. Taljaard is a private investigator and the Director of Risk Solutions & Investigations at Xpera Risk Mitigation & Investigation LP, a private investigation firm. His affidavit includes the results of his search of archived versions of webpages at the domain www.shopneeds.com.

2. Affidavit of Perry Rideout sworn November 1, 2018 (the Rideout Affidavit)

[28] Mr. Rideout is the sole officer and director of the Opponent. His affidavit includes as Exhibits “PR-1” through “PR-5” various dated photographs of the Opponent’s signage prominently bearing the words “weldpro limited” in stylized font. Exhibit “PR-6” is a bundle of invoices from the Opponent, each bearing the words “weldpro limited” at the top of the document in the same stylized font as the signage. Some of the invoices also reference “WELDPRO LIMITED” at the bottom of the document. The earliest invoice is dated August 31, 2009.

[29] Mr. Rideout indicates that the Opponent’s signage and invoices since 2009 have displayed the words “weldpro limited” in the manner depicted in the above-referenced exhibits.

[30] Exhibit “PR-5” is comprised of photographs of the Opponent’s delivery trucks displaying the words “weldpro limited”. Mr. Rideout indicates that the Opponent’s delivery trucks have displayed the words “weldpro limited” in this form since June 6, 2013.

Analysis of the Grounds of Opposition

Preliminary Issues

The Federal Court litigation

[31] There is significant overlap between the evidence filed in this opposition and that considered in the Weldpro Federal Court proceeding. However, there are fundamental differences in the nature of the two proceedings which means that some of the specific issues raised are different. First, unlike in the Weldpro Federal Court proceeding, the Applicant’s right to continue using the Mark in the marketplace is not in issue in this opposition. What is ultimately in issue is whether the Applicant is entitled to be granted registered exclusive rights across Canada in the Mark. Second, in the Weldpro Federal Court proceeding, the legal burden was on the Opponent to demonstrate the requisite elements of passing off. In the present proceeding, while the Opponent has an initial evidential burden to demonstrate facts which support its grounds of opposition, if that initial evidential burden is met, the ultimate legal burden rests on the Applicant to demonstrate that its Mark is registrable [see John Labatt Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298].

[32] With the above in mind, in this decision I do not make any findings of fact or law that differ from those made in the Weldpro Federal Court decision, but note that some of the issues necessary to resolve this opposition are different from those considered in the Weldpro Federal Court proceeding.

Are the Taljaard and Rideout Affidavits proper reply evidence?

[33] The Applicant contends that the Taljaard Affidavit and Rideout Affidavit do not constitute proper reply evidence.

[34] Proper reply evidence responds directly to points raised in an applicant’s evidence which are unanticipated. It should not include evidence which could have been filed as part of the opponent’s evidence-in-chief [see Lemon Hart Rum Co v Bacardi & Co, 2015 TMOB 75 at para 22; and Halford v Seed Hawk Inc, 2003 FCT 141 (FCTD) at paras 14-15]. Section 54 of the Trademarks Regulations, SOR/2018-227 permits the filing of reply evidence [see also section 43 of the Trade-marks Regulations, SOR/96-195 which states that reply evidence must be strictly confined to matters in reply].

Taljaard Affidavit

[35] The Taljaard Affidavit is comprised of the results of a private investigator’s research regarding the display of the Mark on the Applicant’s website at www.shopneeds.com. In particular, archived versions of the home page of the Applicant’s website displayed the Mark in 2001, but archived versions of the home page and “Contact Information” page of the Applicant’s website did not display the Mark during the period from 2002 to 2010.

[36] I am satisfied that the Taljaard Affidavit is proper reply evidence and therefore admissible. Recall that the Application claims use of the Mark in Canada since at least as early as 2013. However, the Applicant’s evidence in this proceeding instead suggested that the Applicant had been using the Mark since at least 2001, some twelve years earlier than the date claimed in the Application [for example, see Mr. Kocken’s answers at pages 15-16 of the transcript from the cross-examination on the Kocken Opposition Affidavit].

[37] The Taljaard Affidavit calls into question whether the Applicant used the Mark during the period between 2001 and 2011. In these circumstances, in my view, the Taljaard Affidavit constitutes proper reply evidence. In particular, the Taljaard Affidavit is in response to the Applicant’s evidence purporting to establish a date of first use which is significantly earlier than the date claimed in the Application.

Rideout Affidavit

[38] The Rideout Affidavit includes various examples of the Opponent’s signage and invoices bearing the words “weldpro limited”. I am satisfied that the Rideout Affidavit demonstrates use of the trade name WELDPRO by the Opponent since 2009. I am also satisfied that the Rideout Affidavit demonstrates use of the trademark WELDPRO since 2009 in association with the Opponent’s services relating to the sale of welding supplies and equipment pursuant to section 4(2) of the Act.

[39] At the hearing, the Opponent argued that this evidence constitutes proper reply because the images of the signage and invoices were put to the Applicant’s affiant Mr. Kocken during his cross-examination and marked as exhibits for identification, and the Rideout Affidavit constitutes a formal means of now entering these documents in the record.

[40] However, I disagree with the Opponent’s position that the Rideout Affidavit constitutes proper reply. The Rideout Affidavit is comprised of basic evidence relating to the Opponent’s use of its trade name and trademark which plainly could have been submitted as part of the Opponent’s evidence-in-chief. The Opponent has provided no justification as to why it waited until the cross-examination of the Applicant before putting forward the examples of its own use of the trade name and trademark contained in the Rideout Affidavit. Nor has the Opponent explained how the Rideout Affidavit responds to facts set out in the Applicant’s evidence.

[41] As a result, I find that the Rideout Affidavit is not proper reply evidence and is therefore inadmissible in its entirety.

[42] However, as discussed below, the Rideout Affidavit is not the only evidence in this proceeding of the Opponent’s use of its trade name.

Section 16(1)(a) and (c) Grounds of Opposition

Material Date

[43] With non-entitlement grounds of opposition under section 16(1)(a) and (c) of the Act, the material date is the date of first use of the applied-for trademark. In most cases, that date will be the date of use claimed in the trademark application, though an applicant is at liberty to demonstrate through evidence a date of first use earlier than that claimed in the application [see Datascope of Canada Ltd v Datascope Corp (1998), 81 CPR (3d) 420 (TMOB) at para 31].

[44] In this case, the date of use claimed in the Application is “since at least as early as 2013”. However, the Applicant contends that it has been continuously using the Mark in Canada since 2001, and therefore the Applicant’s position is that 2001 should be the material date for the non-entitlement grounds.

[45] As noted above in the summary of the facts, there is no dispute between the parties that the Applicant used the Mark in 2001. The Applicant’s evidence also demonstrates that it continuously used the Mark from 2011 onwards. However, in my view, the Applicant has not demonstrated on a balance of the probabilities that it used the Mark during the period from 2002 to 2010. In particular, the Taljaard Affidavit filed by the Opponent calls into question the use of the mark during that nine year period, and in my view the Applicant has not filed evidence sufficient to demonstrate any use of the Mark during that time. While the Applicant may have retained and in some instances displayed the phone number “1-877-935-3776” during that time, I do not have any evidence of the display of the Mark itself during the period from 2002 to 2010.

[46] With evidence of an apparent nine year period of non-use of the Mark from 2002 to 2010, I find that the Applicant has not demonstrated continuous use of the Mark since 2001. Rather, the Applicant has demonstrated continuous use of the Mark since 2011. Consequently, in my view, the material date for the section 16(1)(a) and (c) grounds of opposition in this case is 2011.

Has the Opponent met its initial evidential burden?

[47] I will begin with the section 16(1)(c) ground of opposition. With this ground of opposition, the Opponent has an initial evidential burden to demonstrate that it was using the trade name WELDPRO prior to the material date of 2011, and had not abandoned the trade name as of the date of advertisement of the Application (namely, May 4, 2016). For ease of reference in this analysis, I will refer to the Opponent’s trade name in all upper case as WELDPRO. Further, in my view, the outcome of the analysis of the section 16(1)(c) ground of opposition is the same whether the Opponent’s trade name is considered to be WELDPRO or WELDPRO LIMITED.

[48] I am satisfied that the Opponent has met its initial evidential burden for the section 16(1)(c) ground. In particular, the President of the Applicant has acknowledged on cross-examination that the Opponent has been operating under the name WELDPRO since 2009. Set out below are portions of the transcript of the cross-examination of Mr. Kocken in the Weldpro Federal Court proceeding which took place on May 10, 2017 (see in particular Q73-127 and Q189). I note that the Applicant included this cross-examination transcript as part of its evidence via Exhibit “C” to the Kocken Opposition Affidavit, and Mr. Kocken stated in that affidavit his belief that the transcript is accurate and reliable.

Q. And you know they were using the name based on what?

What is the basis of your conclusion?

A. I don’t exactly recall when I first noticed it, but it was around the time when the owner of that company presented some kind of a document.

I don’t know exactly when I saw it or they started using WeldPro.

Q. So that was back in 2009, correct?

A. What was back in 2009?

Q. When they started using the name WeldPro?

A. That’s when I discovered it, somewhere in 2009, yes.

Q. And to your knowledge, that name is still in use today, is that correct?

A. I know it’s still in use.

Q. You know it’s in use.

And how do you know it’s still in use?

A. Because we compete with them every day.

[...]

Q. So WeldPro Limited is also located on 51^st Avenue, correct?

A. That is correct.

Q. So they are located right across the street from you, is that correct?

A. That is true.

[...]

Q. Standing on your premises, looking in front, do you see the sign of WeldPro Limited from your location?

A. I can look across the street and they would see our sign and we can see their sign.

Q. Thank you.

And you can see their trucks and they can see your trucks.

A. They can. And we can, yes.

[...]

Q. Have you lost business to WeldPro?

[...]

A. Absolutely we have lost business to WeldPro.

Q. And they have lost business to you?

A. Probably.

[...]

Q. So based on paragraph 25 of your Federal Court affidavit, you talk about “co-existence”. What does that mean?

How do you understand those words “co-existence”?

A. It means that they know that we use “1-877 WeldPro” and we know that they use the name “WeldPro”.

[49] In addition, at paragraph 23 of the Kocken Affidavit filed in the Weldpro Federal Court proceeding, Mr. Kocken states as follows regarding the settlement of the Alberta litigation in 2012:

Mr. Rideout, the Applicant and Weldworld settled all issues in the Prior Litigation wherein Weldworld permitted Mr. Rideout and the Applicant to continue to non-exclusively use the term “weldpro” in its business name. [...]

[50] Evidence in this case speaking to the scope of the Opponent’s use of the trade name WELDPRO is unquestionably weak. For example, the Opponent has provided no annual or total sales figures and no distribution data for any advertising in association with its business.

[51] However, on the more basic question of whether there is evidence of record in this proceeding that the Opponent has used the trade name WELDPRO since prior to the material date of 2011, for the reasons set out above the answer to that question is yes. Further, there is no evidence to suggest that the Opponent had abandoned the trade name at the date of advertisement of the Application. Taken together, that is sufficient for the Opponent to meet its initial evidential burden for the section 16(1)(c) ground of opposition.

[52] When it comes to the section 16(1)(a) ground of opposition, however, I am not satisfied that the Opponent has met its initial evidential burden. In particular, based on the evidence of record in this proceeding, I am not satisfied that the Opponent has demonstrated use of WELDPRO as a trademark pursuant to sections 4(1) or 4(2) of the Act. While paragraphs 17 through 20 of the Pardo Federal Court Affidavit reference the Opponent’s use of the trademark WELDPRO, no examples actually demonstrating use are provided. Consequently, the section 16(1)(a) ground of opposition fails as the Opponent has not met its initial evidential burden.

[53] I note that had I found the Rideout Affidavit admissible, I would have found that the Opponent did meet its initial evidential burden under section 16(1)(a).

[54] In view of the above, the confusion analysis conducted below is in respect of the section 16(1)(c) ground of opposition with reference to the Opponent’s trade name WELDPRO. The Opponent having met its initial evidential burden for the section 16(1)(c) ground, the legal burden shifts to the Applicant to demonstrate that there is no likelihood of confusion between the Mark and the Opponent’s trade name WELDPRO.

Likelihood of confusion

[55] The test for confusion is one of first impression and imperfect recollection. In applying the test for confusion set out in section 6(3) of the Act, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 6(5) of the Act. The weight to be given to each factor may vary, depending on the circumstances [see Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23, 49 CPR (4th) 401; Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22, [2006] 1 SCR 772; and Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27, 92 CPR (4th) 361]. These factors are considered below.

[56] The degree of resemblance is often the most significant factor in the confusion analysis. When considering this factor, it is preferable to first consider whether there is an aspect of the trademark that is “particularly striking or unique” [Masterpiece, supra, at paragraph 64]. The striking or unique aspect of both the Opponent’s trade name and the Applicant’s Mark is the term WELDPRO. Thus, the degree of resemblance is high.

[57] The inherent distinctiveness factor does not favour either party, since the striking element of the Opponent’s trade name and the Applicant’s Mark is identical. I note that I consider both the Opponent’s trade name and the Applicant’s Mark to possess a low degree of inherent distinctiveness in association with the goods and services concerned, since the term WELDPRO is highly suggestive of “welding products” or “welding professionals”. I do not consider the element “1-877-” in the Mark to lend any inherent distinctiveness, as it is apparent that this is a telephone number code.

[58] The evidence indicates that the Opponent has been using the trade name WELDPRO continuously since 2009 and that the Applicant has been using the Mark continuously since 2011. The parties’ goods, services and businesses are essentially identical. The Applicant has acknowledged that the parties are competitors.

[59] I note that I do not have any evidence of actual confusion, despite what appears to be a lengthy period of co-existence. However, I do not attribute much weight to that factor in this case given the dearth of evidence as to the scope of use of either the Opponent’s trade name or the Applicant’s Mark.

[60] Considering all of the above factors, even though the Opponent’s trade name is inherently weak and entitled to a narrow scope of protection, in view of the high degree of resemblance between the Opponent’s trade name and the Mark, and the direct overlap in the parties’ goods, services and business, I find that the Applicant has failed to meet its legal burden to show that there is no likelihood of confusion.

[61] Consequently, the section 16(1)(c) ground of opposition succeeds.

[62] As noted above, I find that the section 16(1)(a) ground of opposition fails because the Opponent did not meet its initial evidential burden to demonstrate use of the trademark WELDPRO. However, had the Rideout Affidavit been admissible, I would have found that the Opponent’s section 16(1)(a) ground of opposition succeeds based on essentially the same confusion analysis as set out above with respect to the section 16(1)(c) ground of opposition.

Section 2 Ground of Opposition

[63] It is well established that in order to meet its initial evidential burden under this ground, an opponent must show that its mark had a substantial, significant or sufficient reputation in Canada in association with relevant goods and/or services, prior to the date of the statement of opposition [see Bojangles’ International, LLC and Bojangles Restaurants, Inc v Bojangles Café Ltd, 2006 FC 657, 48 CPR (4th) 427 (FC) at para 34].

[64] In the present case, the Opponent has not provided sufficient evidence from which I could assess the extent of its reputation in the trade name (or trademark) WELDPRO, as is necessary to meet the Opponent’s initial evidential burden for the section 2 ground. For example, I have no total or annual sales figures or advertising figures for the Opponent’s business that would permit me to assess the scope of any reputation. Consequently, I reject the section 2 ground of opposition as the Opponent has failed to meet its initial evidential burden.

Section 30(i) Ground of Opposition

[65] Section 30(i) of the Act requires an applicant to include a statement in the application that the applicant is satisfied that it is entitled to use the trademark in Canada. Where an applicant has provided the required statement, the jurisprudence suggests that non-compliance with section 30(i) of the Act can be found only where there are exceptional circumstances that render the applicant’s statement untrue, such as evidence of bad faith [see Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155]. Mere knowledge of the existence of an opponent’s trademark is not sufficient to support a section 30(i) ground of opposition [see Woot Inc v WootRestaurants Inc, 2012 TMOB 197]. The material date for assessing this ground is the filing date of the application [Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB) at 475].

[66] In the present case, at paragraphs 72 to 129 of the Opponent’s written representations, the Opponent advanced a variety of arguments as to why, given the history between the parties, the Application was filed in bad faith. I do not consider these submissions persuasive. The Application contains the requisite statement that the Applicant was satisfied that it was entitled to use the Mark, and the Applicant’s knowledge of the Opponent’s use of its trade name is alone not sufficient for the Opponent to succeed under section 30(i). Further, I do not consider the fact that the Opponent may at some point have provided services to the Applicant to render the Opponent a “principal” of the Applicant, as argued by the Opponent at paragraphs 110 to 125 of its written representations. That is to say, I do not consider the facts of this case to be similar to those addressed in Bikers Rights Organization (Ontario) Inc. v. Sarnia-Lambton Bikers Rights Organization Inc. 2012 TMOB 189 at para 12, such as where a distributor or licensee sought to usurp the trademark rights of a principal in a manner that contravened section 30(i) of the Act. Finally, it is worth noting that the question under section 30(i) is whether the Applicant could have been satisfied of its entitlement to use the Mark in Canada. The Opponent has already contested the Applicant’s use of the Mark via the Weldpro Federal Court proceeding and was unsuccessful. Given all of the above, I do not consider this to be an exceptional case involving bad faith on the part of the Applicant. Accordingly, the section 30(i) ground of opposition is dismissed.

Disposition

[67] Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the Application pursuant to section 38(12) of the Act.

 

Timothy Stevenson

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

Schedule A

Application No. 1717976

Goods

(1) Welding machines, electric arc welding machines, electric welding machines, gas welding machines, laser welding machines, welding wire, metal welding flux, metal welding rods, oxyacetylene welding and cutting machines, rods of metal for brazing and welding including those from alloy steel and titanium, welding electrodes, welding rods, welding and brazing chemicals, welding aprons, welding helmets, welding masks, welding torches, abrasives for use in welding, gases for welding.

(2) Beverage gases, namely carbon dioxide; food preservation gases, namely nitrogen; carbon steel, brass and stainless steel valves and pipes for dispensing gases and liquids.

(3) Liquid oxygen; liquid nitrogen; liquid argon; liquid carbon dioxide; specialty gas mixtures for use in welding, laser cutting, plasma cutting.

(4) Safety supplies, namely respirators, hard hats, ear plugs, safety glasses, welding masks, gloves, leather jackets.

 

Services

(1) Retail sale of welding machines, electric arc welding machines, electric welding machines, gas welding machines, laser welding machines, welding wire, metal welding flux, metal welding rods, oxyacetylene welding and cutting machines, rods of metal for brazing and welding including those from alloy steel and titanium, welding electrodes, welding rods, welding and brazing chemicals, welding aprons, welding helmets, welding masks, welding torches, abrasives for use in welding, gases for welding.

(2) Retail sale of beverage gases, namely carbon dioxide; retail sale of food preservation gases, namely nitrogen; retail sale of carbon steel, brass and stainless steel valves and pipes for dispensing gases and liquids; retail sale of liquid oxygen, liquid nitrogen, liquid argon, liquid carbon dioxide; retail sale of specialty gas mixtures for use in welding, laser cutting, plasma cutting; retail sale of safety supplies, namely respirators, hard hats, ear plugs, safety glasses, welding masks, gloves, leather jackets.

(3) Wholesale sales of welding machines, electric arc welding machines, electric welding machines, gas welding machines, laser welding machines, welding wire, metal welding flux, metal welding rods, oxyacetylene welding and cutting machines, rods of metal for brazing and welding including those from alloy steel and titanium, welding electrodes, welding rods, welding and brazing chemicals, welding aprons, welding helmets, welding masks, welding torches, abrasives for use in welding, gases for welding.

(4) Wholesale sales of beverage gases, namely carbon dioxide; wholesale sale of food preservation gases, namely nitrogen; wholesale sale of carbon steel, brass and stainless steel valves and pipes for dispensing gases and liquids; wholesale sales of liquid oxygen, liquid nitrogen, liquid argon, liquid carbon dioxide; wholesale sales of specialty gas mixtures for use in welding, laser cutting, plasma cutting; wholesale sales of safety supplies, namely respirators, hard hats, ear plugs, safety glasses, welding masks, gloves, leather jackets.

(5) Bulk delivery services of beverage gases, namely carbon dioxide; bulk delivery services of food preservation gases, namely nitrogen; bulk delivery services of liquids, namely, liquid oxygen, liquid nitrogen, liquid argon, liquid carbon dioxide, specialty gases for use in welding.

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2021-02-18

APPEARANCES

Karen Hansen	For the Opponent
No one appearing	For the Applicant

AGENTS OF RECORD

OLLIP P.C.	For the Opponent
Gregory K. Pang (RedFrame Law)	For the Applicant