Citation: 2021 TMOB 289

Date of Decision: 2021-12-21

IN THE MATTER OF AN OPPOSITION

	Vermillion Networks Inc.	Opponent
And
	Cenovus Energy Inc.	Applicant
	for HELIX Designs, Application Nos. 1669660, 1669661, 1669662, 1669663	Application

Introduction

[1] Vermillion Networks Inc. (the Opponent) is a not for profit company which provides a number of goods and services relating to its primary goal of promoting sustainability. Cenovus Energy Inc. (the Applicant) has filed four trademark applications for petroleum, fuels, coal and fuel oils, electrical power generators and various industry specific services relating to petroleum, natural gas, and related hydrocarbons and electricity.

[2] The Opponent opposes the Applicant’s applications for a number of reasons, including non-compliance with section 30 of the Act and that the applied for marks are likely to be confused with one or more of the Opponent’s SWIRL Design marks. The Opponent’s registered SWIRL Design marks, registration Nos. TMA894,117 and TMA891,721 (shown below) have been used in association with a number of goods and services, including various novelty items, printed materials, stationery supplies, and clothing, as well as association services, educational services, business centre services, human resource centre services and advertising services, to name just a few.

TMA894,117 TMA891,721

[3] For the reasons that follow, I find that each of the Applicant’s four applications should be allowed.

Application No. 1,669,660

Background

[4] On March 25, 2014, the Applicant filed an application to register the trademark HELIX Design, shown below, based on use of this trademark since December 1, 2009, in association with the Goods and Services as set out in the attached schedule A.

[5] The application was advertised for opposition in the Trademarks Journal dated December 16, 2015. On May 16, 2016, the Opponent opposed the application on the basis of non-compliance with the Act, non-registrability, non-entitlement and non-distinctiveness.

[6] The Applicant requested an interlocutory ruling on the sufficiency of certain of the grounds of opposition that were pleaded. An interlocutory ruling issued on September 19, 2016, striking certain portions of the statement of opposition. The Applicant filed and served its counter statement on September 22, 2016.

[7] The Opponent was granted leave to file an amended statement of opposition on May 25, 2017.

[8] The Opponent filed as its evidence the affidavit of Wade Ferguson. The Applicant filed the affidavits of Dean Stobo and Jane Buckingham. All of the affiants were cross-examined on their affidavits. Their cross-examination transcripts, exhibits and replies to undertakings all form part of the record.

[9] Both parties submitted written representations and attended a hearing.

Preliminary Issues

Requests for leave to file affidavits 2 & 3 of Mr. Wade Ferguson as additional evidence

[10] By way of letters dated July 5, 2017, and October 26, 2018, the Opponent made separate requests for leave to file affidavits 2 and 3 of Mr. Wade Ferguson. Both of these requests for leave were denied [see office letters dated September 21, 2017, and December 13, 2018].

Request for leave to file affidavits 4 & 5 of Mr. Wade Ferguson as additional evidence

[11] On September 24, 2021, five days prior to the oral hearing, the Opponent filed a further request for leave to file additional evidence. The additional evidence comprised Affidavits 4 and 5 of Wade Ferguson, both sworn September 24, 2021. On September 27, 2021, the Applicant filed a letter objecting to the Opponent’s request.

[12] At the hearing, I indicated that I was denying leave to the Opponent and that my ruling on the leave request would issue alongside the decision on the merits of the opposition.

[13] The Practice in Trademarks Opposition Proceedings provides that leave to file additional evidence will only be granted if the Registrar is satisfied that it is in the interests of justice to do so having regard to all the surrounding circumstances including: (1) the stage the opposition proceeding has reached; (2) why the evidence was not submitted earlier; (3) the importance of the evidence; and (4) the prejudice which will be suffered by either party.

[14] I will begin by applying these criteria to the Opponent’s request to file affidavit 4 of Wade Ferguson.

[15] The Opponent’s request for leave was submitted five days prior to the hearing, which is at a very late stage in the proceeding. Indeed, the evidentiary stage closed in April, 2018, and the parties filed written arguments in June of 2019. The Opponent submits that it only recently became aware that it could make use of evidence filed in another proceeding before the Federal Court which was made of the public record.

[16] With respect to the importance of the affidavit 4, the Opponent takes the position that the evidence is determinative of the section 30(b) and section 30(i) issues. In this regard, the Opponent submits that the additional evidence provides further support to cast doubt on the Applicant’s claimed date of first use and also provides additional reasons to doubt that the Applicant believed it was entitled to display or use the Mark.

[17] The Applicant, on the other hand, submits that the documents attached to Affidavit 4 are irrelevant to the present proceeding as they are in relation to a Federal Court proceeding regarding different trademarks. In this regard, the Federal Court proceeding relates to registration Nos. TMA874,307, and TMA874,310, while the present proceedings deal with application Nos. 1,669,660, 1,669,661, 1,669,662 and 1,669,663. The relevant dates and substantive issues are also different. I also note that the proposed evidence appears to be comprised at least in part of triple hearsay (insofar as it includes copies of affidavits which attached copies of affidavits filed in other proceedings). I therefore agree with the Applicant that the proposed evidence is of limited relevance to this proceeding.

[18] Regarding the prejudice which will be suffered by either party, the Opponent acknowledged that it would make the affiant available for cross-examination at the request of the Applicant. However, as noted by the Applicant, the Opponent’s deadline to file evidence expired three years ago. Further, the parties have been awaiting a hearing for over two years. If this evidence would be allowed in, the Applicant would need time to consider the evidence, possibly cross-examine on it, file evidence in reply, submit additional written representations and adjourn the hearing which was scheduled for September 30, 2021. In other words, the prejudice that would be suffered by the Applicant if this evidence was allowed in would far outweigh the prejudice to the Opponent if this evidence was not allowed in.

[19] In view of the above, and in particular, considering the very late stage of the proceeding, and the prejudice to the Applicant, I find that it is not in the interests of justice to grant leave to the Opponent to file affidavit 4 of Wade Ferguson. Although the Opponent has to some extent explained why some of this evidence could not have been filed earlier, I consider that the importance of the proposed evidence – which appears to be limited – does not outweigh the prejudice that would be occasioned by the Applicant if the Opponent was granted leave. Accordingly, the Opponent’s request for leave to file affidavit 4 of Mr. Wade Ferguson is denied.

[20] With respect to the Opponent’s request for leave to file affidavit 5 of Mr. Wade Ferguson, the Opponent submits the following:

There is basically one kind of evidence in Affidavit 5; it relates primarily to the legal test for confusion set out in the Trademarks Act. As set out in this affidavit, the documentary evidence became available on Tuesday of this week, after a senior leader within a competitor to (or a major energy industry peer of) the Applicant had: (a) approached me in a forum of Calgary-area energy sector stakeholders; (b) provided me with information about some positive aspects of their operational practices; (c) engaged in further talks with me on Monday of this week; and (d) responded to an email I sent the next day that memorialized the state of the service discussions

[21] Again, the Opponent submitted that Mr. Ferguson would be available for cross-examination.

[22] In my view, the importance of the proposed evidence is limited. In this regard, it consists primarily of an email from Mr. Ferguson to an unnamed third party at an unnamed company. This evidence would therefore be of little value to the Opponent’s case. Therefore, although the Opponent has explained why this evidence was not available earlier, considering the very late stage of the proceeding, and the fact that the prejudice to the Applicant outweighs the importance of the proposed evidence, I do not find that it is in the interests of justice to grant leave to the Opponent to file affidavit 5 of Mr. Wade Ferguson as additional evidence. Accordingly, the Opponent’s request for leave to file affidavit 5 of Mr. Wade Ferguson is denied.

[23] I would note that even if I had accepted the proposed evidence, it would not have affected the outcome of my final decision in this case.

Allegation of abuse of process

[24] In its oral argument, counsel for the Applicant raised that this entire proceeding has been an abuse of process. In this regard, the Applicant submitted that the Opponent has filed incomprehensive arguments and has strained the resources of the Trademarks Opposition Board and the Federal Court by its initiation of numerous trademark proceedings.

[25] The parties in this opposition proceeding are not strangers to each other. Indeed, in a previous section 45 proceeding, Essilor Group Canada Inc v Vermillion Networks Inc, 2021 TMOB 184, involving the same parties, it was the Opponent who raised the argument of abuse of process against the present Applicant and other companies. Hearing Officer Melchin responded to this argument as follows at para. 108:

Mr. Ferguson states that the behaviour of the third parties Vermilion Energy Inc. [VEI] and Cenovus Energy Inc. [CEI] was unusual, uncommon, or exceptional in that the parties abused the processes of the Trademarks Opposition Board and the United States Patent and Trademark Office, and further states that he suspects that these entities have colluded to maximize disruption to Vermillion and its funding sources. However, even if I were to accept that these entities sought to disrupt Vermillion’s use of its trademarks through an aggressive litigation strategy, such occurrences are not unusual, uncommon, or exceptional. In this respect, I note that a determination of whether these parties’ actions amount to an abuse of process is well beyond the scope of these proceedings [see, e.g., Sim & McBurney v HA Kidd and Company Limited/HA Kidd et Compagnie Limitée, 2020 TMOB 119 at para 11].

[26] In opposition proceedings, the mechanism adopted by Parliament to prevent abuse of process through frivolous opposition proceedings is set out at section 38(4) of the Act. Under this section, when the Registrar receives a statement of opposition, the Registrar must read it to determine whether there is at least one ground of opposition that, on its face, appears to raise a substantial issue. In forwarding the statement of opposition on the Applicant, the Registrar deemed that, on its face, the statement of opposition was not frivolous [see Nautilus Plus Inc v Centres Stop Inc, 2011 TMOB 115].

[27] I acknowledge that much of the evidence filed by the Opponent in this proceeding has been irrelevant to the issues to be determined, and the Opponent’s arguments have been difficult to comprehend. Further, I question the reasonableness and the proportionality of some of the steps taken by the Opponent in this proceeding such as filing requests for leave to file voluminous evidence at the last minute, or cross-examining an affiant mainly to put one’s own self-serving statements on the record, as such steps are not relevant or necessary and they can strain the resources of both the Board and the parties involved. However, as noted above, a determination of whether the actions such as these amount to an abuse of process is beyond the scope of opposition proceedings. As the Opponent has raised valid grounds of opposition, these grounds will be assessed individually on their merits based on the evidence of record.

Opponent’s Evidence

Affidavit 1 of Wade Ferguson

[28] The Opponent’s evidence is voluminous consisting of a 139 page affidavit and one exhibit consisting of several hundred pages spread out across physical exhibits and many digital folders.

[29] The Applicant has made several submissions about the Opponent’s evidence. For one, the Applicant submits that the Opponent’s evidence is “meandering, at once both dense and vague, and almost entirely irrelevant to the matters at issue in this proceeding”. The Applicant further submits that the Opponent’s evidence is “replete with hearsay, speculation and conjecture”.

[30] At paragraph 7 of its written argument, the Applicant notes the following about Mr. Ferguson’s affidavit:

The affidavit puts forward dozens of paragraphs providing “background” information apparently for the benefit of the Registrar but contains virtually no information that would be of assistance to the Registrar in making a determination of the issues in the opposition. For instance, the affidavit contains discussions of the following which simply serve to distract from and unduly complicate the issues at play in the opposition: green washing, green muting, Sustainanalytics, pay-to-play systems, Non-Governmental Organizations, Hockey Night in Canada, WWF, Dr. Jane Goodall, artificial gravity, Microsoft NDAs, Canada Revenue Agency, International Society of Sustainability Professionals, Bluetooth Special Interest Group, Dow Jones, generally accepted accounting principles, Sheldon Kennedy Child Advocacy Centre, the International Olympic Committee, the Oscars, community tree planting projects, human brain chemistry, and many, many more.

[31] I agree with the Applicant that much of Mr. Ferguson’s evidence is of limited or no relevance in this proceeding. Nevertheless, Mr. Ferguson’s evidence also contains some useful information that speaks to the issues in this proceeding. Accordingly, while I have considered all of the evidence submitted by Mr. Ferguson, only those pieces of evidence relevant to this decision will be discussed in my analysis below.

Cross-examination of Wade Ferguson

[32] In its written argument, the Applicant notes that Mr. Ferguson’s evidence and his answers on cross-examination paint the picture of a complex web of interconnected companies, divisions and names which offer or promote a lengthy list of goods and services including Vermillion Networks, Inc., the Vermillion Institute, Vermillion Professional Network, Vermillion Canada, Vermillion Community Services, Vermillion Communities Incorporated and Vermillion Calgary. The Applicant further notes that it became clear on cross-examination that regardless of the company/division/name being referred to, it was Mr. Ferguson, essentially alone, behind these ventures (none of which have any employees).

[33] The Applicant did not make any other submissions about Mr. Ferguson’s cross-examination.

[34] I would like to add here that Mr. Ferguson states in his affidavit that the Opponent refers to each affiliate as a “Vermillion Community” and that in his affidavit, “Vermillion” means one or more of the affiliates acting cooperatively [Ferguson, para. 4]. He also states that as part of how the Opponent licenses its trademarks to these “communities”, the Opponent retains and exercises direct or indirect control of the character or quality of the goods and services sold in Canada in association with its trademarks [Ferguson, para. 5]. In view of this sworn statement, I am satisfied that any evidenced use of the Opponent’s trademarks by the Vermillion communities and other licensees enures to the Opponent’s benefit [see Empress Cubana Del Tobaco Trading v Shapiro Cohen, 2011 FC 102].

Applicant’s evidence

Affidavit of Dean Stobo

[35] Mr. Stobo describes himself as Director of Enterprise Security at the Applicant company. The purpose of his affidavit, which consists of a total of three paragraphs, was to describe an incident which happened with Mr. Ferguson at the Applicant’s business. The Applicant did not make any submissions regarding the relevance or importance of this evidence to the issues in this proceeding.

Cross-Examination of Dean Stobo

[36] Mr. Stobo was cross-examined on his affidavit. I note that during the cross-examination the Applicant’s agent raised objections to 151 of the questions asked by the Opponent, and also instructed Mr. Stobo to refuse to provide 88 out of 90 undertakings requested, on either the basis of relevance or on the basis that they were not in line with the purpose of his affidavit.

[37] The Opponent requests that a negative inference be drawn from the affiant’s refusal to answer many of the questions posed on cross-examination, or to provide the undertakings requested. I agree with the Applicant that very few of the questions asked related to issues raised in the opposition proceeding or were far outside the reasons for which the affidavit was sworn and submitted [see Nguesso v Canada (Citizenship and Immigration), 2015 FC 102 at para 108]. For example, the Opponent asked the affiant questions about trademark applications, trademark registrations, issues pertaining to predecessors in title, employees of the Applicant company and the U.S. opposition proceedings. He also requested evidence of use of the Applicant’s trademark in association with many of the Applicant’s applied for Goods and Services.

[38] The Applicant’s counsel explained to the Opponent that, as Director of Enterprise Security at Cenovus Inc., Mr. Stobo had no experience in trademark law and did not understand the basic concepts of statutory trademark use. Further, Mr. Stobo’s affidavit did not discuss corporate issues relating to the Applicant and its predecessor-in-title, nor any of the Applicant’s branding or trademarks, or proceedings related to the trademarks. Finally, as noted above, the three paragraph affidavit of Mr. Stobo was submitted to describe one incident that occurred at the Applicant’s place of business.

[39] I agree with the Applicant that the Opponent exceeded what was proper cross-examination of Mr. Stobo on his affidavit in covering issues which were not in line with the purpose of his affidavit. As I find that the Applicant’s objections were reasonable, I will not draw adverse inferences from Mr. Stobo’s refusal to answer the majority of the questions which were asked.

[40] I will add here that it appears that the Opponent primarily used the cross-examination of Mr. Stobo to put his own understanding of the facts of the case on the record. This is not the purpose of cross-examination.

Affidavit of Jane Buckingham

[41] Jane Buckingham is a senior trademark searcher with the Applicant’s agent. She was asked to locate all active trademark applications and registrations that contain a vortex or similar design. Her affidavit shows 65 active third party applications or registrations which share common characteristics of the parties’ marks. The goods range from pharmaceutical preparations to cleaning products and the services range from retail services in the field of apparatus for heating, drying and ventilation to educational services in the field of skin basics.

Onus and Material Dates

[42] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. There is, however, an initial 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 Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) at 298; Dion Neckwear Ltd v Christian Dior, SA (2002), 20 CPR (4th) 155 (FCA)].

[43] The material dates that apply to the grounds of opposition are as follows:

· Section 38(2)(a)/Section 30 - the filing date of the application [see Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB) at 475];

• Section 38(2)(b)/Section 12(1)(d) - 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)];

· Section 38(2)(b)/Section 12(1)(e) - the date of my decision [Canadian Olympic Association v Olympus Optical Co (1991), 38 CPR (3d) 1 (FCA)];

· Section 38(2)(c)/Section 16(1)(a) - the filing date of the application [see section 16(1)(a)];

· Section 38(2)(d)/non-distinctiveness - the date of filing of the opposition [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 ( andFC)].

Grounds of Opposition

Non-compliance with section 30(a) of the Act

[44] In its statement of opposition, the Opponent alleges that the application does not comply with section 30(a) of the Act in that “it does not contain a statement in ordinary commercial terms of the specific goods and services in association with which the Mark allegedly has been used or is used in Canada”.

[45] The Applicant submits that this ground of opposition should be dismissed for not having been properly pleaded. In this regard, the Applicant submits that the Opponent did not identify the Goods or Services which it considered to be not defined in ordinary commercial terms in its statement of opposition.

[46] In view that the Opponent has not identified in its statement of opposition which of the Goods or Services listed in the Application allegedly do not comply with section 30(a), I agree with the Applicant that this ground of opposition was insufficiently pleaded [see Cathay Pacific Airways Limited v Air Miles International Trading B.V., 2016 FC 1125; Avana Canada Inc v Runway Blue, LLC, 2021 TMOB 177; and K-tel International Ltd v 133064 Canada Inc (1998), 86 CPR (3d) 122 (TMOB)].

[47] As an aside, if this ground had been properly plead, there would have been two issues to be determined: first, whether the statement of Goods and/or Services was in ordinary commercial terms; and, second, whether the application adequately identified the specific Goods and Services [see Whirlpool SA v Eurotherm Holdings Ltd, 2010 TMOB 171 at para 39].

[48] In its written argument, the Opponent specifically objected to the applied for Goods “crude oil” and “electrical power generators for commercial, residential or industrial applications”, as well as all of the applied for Sservices.

[49] It has previously been held that the Registrar may exercise his discretion to check the Trademarks Office Goods and Services Manual to confirm whether these goods and services are actually defined in ordinary commercial terms [see Johnson & Johnson v Integra Lifesciences Corp (2011), 98 CPR (4th) 429 (TMOB)]. I have exercised my discretion and can confirm that both of these goods, as well as the applied for services, appear in the Goods and Services Manual. I therefore consider the Applicant’s Goods and Services to have been defined in ordinary commercial terms.

[50] The next question would have been whether these applied for Goods and Services adequately identify the specific goods and services the Applicant is using its Mark in association with.

[51] The Opponent submits that the trade refers to the Applicant’s product as bitumen or unconventional crude oil and that this is not the same as the crude oil which the Applicant has applied for [see paragraphs 255 to 266 of the Ferguson affidavit and Folder L]. None of the documents relied upon by the Opponent, however, show use of the Mark by the Applicant in association with bitumen as opposed to crude oil as of December 1, 2009, the Applicant’s claimed date of first use. In any case, Mr. Ferguson confirms himself in his affidavit at paragraph 264 that bitumen is not crude oil but “can be refined and sold in that manner”. It follows that if the Applicant can sell crude oil, then this good is adequately defined in the application.

[52] With respect to the electrical power generators for commercial, residential or industrial applications, the Opponent submits that generators can be powered by many types of energy and therefore the consumer would not understand from the Applicant’s description of this good in its application what this description really covers. The Opponent’s evidence does not show, however, how the Applicant’s Goods are not specific enough to describe the goods the Applicant claims to have used its Mark in association with since Dec. 1, 2009.

[53] Finally, the Opponent submits that many if not all of the applied for Services are not in ordinary commercial terms because the Applicant’s activities are “merely what the Applicant does in its “Petrochemical Business Activities” to make money for its shareholders”. In my view, this argument is vague and ambiguous. Further, in the absence of evidence or clear argument to the contrary, I have no reason to find that the Applicant’s Services are not specifically described in ordinary commercial terms.

[54] In view of the above, this ground of opposition is not successful.

Non compliance with section 30(b) of the Act

[55] In the statement of opposition as amended, the Opponent’s section 30(b) contains the following allegations:

· the Applicant has not used the Mark as a trademark in association with the applied for Goods and Services;

· an accurate date of first use has not been set out in the application;

· any alleged use has been by third parties; and

· the Applicant does not identify any predecessors-in-title.

[56] The initial burden on an opponent is light respecting the issue of non-conformance with section 30(b) of the Act because the facts regarding an applicant’s first use are particularly within the knowledge of an applicant [see Tune Masters v Mr P's Mastertune Ignition Services Ltd (1986), 10 CPR (3d) 84 (TMOB) at 89]. To meet its burden, an opponent must show that an applicant’s evidence is clearly inconsistent with the claimed date of first use or raises doubt as to the veracity of the claimed date of first use [see Ivy Lea Shirt Co v Muskoka Fine Watercraft & Supply Co (1999), 2 CPR (4th) 562 (TMOB), at 565 -6, aff'd (2001), 11 CPR (4th) 489 (FCTD); Corporativo de Marcas GJB, SA de CV v Bacardi & Company Ltd, 2014 FC 323; Reitmans (Canada) Limited v Atlantic Engraving Ltd, 2005 CanLII 78234 (TMOB)]. The applicant is not obliged to submit any evidence to substantiate its claimed date of first use unless the opponent meets its burden [see Kingsley v Ironclad Games Corporation, 2016 TMOB 19 at para. 63].

[57] In this case, the Applicant did not file any evidence regarding the use of its Mark. The Opponent seeks to rely on a collection of public filings, news releases, and corporate responsibility documents of the Applicant found either on the Applicant’s website or through online searches, as well as the Opponent’s own investigations, to meet its evidential burden under this ground. Although the evidence of the Applicant’s website is hearsay, I consider it admissible because it satisfies the criteria of necessity and reliability. In this respect it was necessary for the Opponent to file this evidence to challenge the section 30(b) claim to use. I also consider this evidence reliable since the Applicant, being a party, had the opportunity to refute the evidence [see Reliant Web Hostings Inc v Tensing Holding BV, 2012 TMOB 48 at para. 35].

[58] When considered in its entirety, I do not find that the evidence is inconsistent with or casts doubt on the Applicant’s compliance with section 30(b) for the following reasons.

Has the Applicant used the Mark as a trademark in association with the applied for Goods and Services since the claimed date of first use?

[59] With respect to the first argument under this ground, the Opponent submits that its evidence provides reason to doubt that the Applicant has used the Mark in association with the applied for Goods and Services. In this regard, the Opponent makes the following submissions.

[60] With respect to electrical generators, the Opponent relies on its evidence that Mr. Ferguson called the Applicant’s switchboard on February 21, 2017, and asked how he could purchase electrical generators for industrial and residential applications [Ferguson, para. 265]. The person at the front desk allegedly replied that she had no knowledge of the Applicant selling such products.

[61] I agree with the Applicant that, in addition to being dated after the material date, this evidence is self serving and hearsay. In this regard, the Opponent’s submission that it is unclear whether the Applicant ever sold generators is based on a phone call made to an unidentified person at the Applicant’s “switchboard” three years after the material date. I have therefore not given any weight to this evidence.

[62] The Opponent further submits that a negative inference should be drawn from Mr. Stobo’s refusal to answer a number of questions regarding the Applicant’s use of the Mark in association with the applied for Goods and Services as of the claimed date of first use [Stobo, q. 43.6-47.5; 47.6-65.24, 67.3-72.5]. However, as previously stated, I have agreed with the Applicant’s position that many of the questions asked and/or undertakings asked for were not in line with the purpose of Mr. Stobo’s affidavit. I will therefore not draw a negative inference from Mr. Stobo’s refusal to answer questions regarding the Applicant’s use of the Mark in association with electrical generators or any of the other Goods or Services.

[63] The Opponent also claims that the Opponent’s evidence of the Applicant’s activities do not amount to use of the Mark in association with the applied for Goods and/or Services. However, the Opponent appears to have focused on what was missing in this evidence to substantiate the Applicant’s claimed date of first use as opposed to pointing out where there may have been inconsistencies in the public documents of the Applicant in order to meet its evidential burden under this ground. In this regard, the Opponent has not sufficiently explained how the press releases, annual reports or corporate responsibility reports put into issue whether or not the Applicant has used its Mark in association with any of its applied for Goods or Services as of the material date for this ground. Had there been a discrepancy in the evidence regarding the Applicant’s claimed date of first use of December 1, 2009, then the onus would have been on the Applicant to positively support the date it has claimed.

[64] Although it may have been preferable for the Applicant to have provided details pertaining to the use of the Mark in association with the applied for Goods and Services dating back to December 1, 2009, the fact that it may not have done so does not amount to an inconsistency or raise doubt regarding the Applicant’s claimed date of first use. The Applicant has the right to choose not to file any evidence of use. The fact that it did not file this type of evidence is not “evidence that it did not have such use”, as the Opponent submits at para. 153 of its written argument.

[65] Finally, I agree with the Opponent that the materials about the Applicant’s company may not, by themselves, support use of the Mark in association with the Goods pursuant to section 4(1) of the Act. However, the fact that the Applicant advertises or promotes its Goods in association with the Mark in this manner in these materials does not necessarily mean that the Applicant has not also properly used the Mark in association with the applied for Goods since the claimed date of first use.

Has the use shown been by the Applicant as opposed to an unidentified predecessor in title or third party?

[66] My understanding of the Opponent’s remaining arguments under this ground is that, as the Applicant did not comply with the requirement to designate a predecessor-in-tile, any alleged use of the Mark by the claimed date of first use has been by third parties and not the Applicant.

[67] I confirm the Opponent’s evidence shows the Applicant company was launched on December 1, 2009, when EnCana Corporation split into two independently publicly traded energy companies: EnCana Corporation and Cenovus Energy Inc. In this regard, the Applicant’s Annual Financials for 2009, submitted by the Opponent, states the following in the Message to the Shareholders:

…Since Cenovus was only in existence for one month last year, we have produced this abbreviated report for 2009. It includes Cenovus’ Audited Financial Statements and Management’s Discussion and Analysis for the year ended December 31, 2009. Given that Cenovus’ assets were held by EnCana Corporation until November 30, 2009, our financial and production information has been derived from the accounting records of EnCana on a carve-out accounting basis for the periods prior to December 1, 2009.

[68] In my view this evidence is consistent with EnCana Corporation being owner of the Applicant company until November 30, 2009, and the Applicant company being launched on December 1, 2009. While it is true that when there is a change in ownership, a predecessor in title must be included in the application to cover the period of use claimed [see RWS Hoists & Cranes Inc v Richards-Wilcox Canada Inc, 2004 CanLII 72223 (TMOB)], this is not the situation in the present case. In this regard, the Applicant has not claimed a date of first use until after it was launched as a company. Therefore, as the period of use did not begin until the Applicant became owner of the Mark, there was no need for a predecessor-in-title to be included in the application.

[69] I will add that the mere fact that the Applicant’s launch date coincides with its claimed date of first use is not in itself sufficient to cast doubt on whether it was the Applicant who started using the Mark on such date as opposed to a third party. In this regard, I consider that a launch date can be compared to a company’s date of incorporation. The Registrar has previously held that the mere fact that an Applicant’s date of incorporation coincides with its claimed date of first use is not in itself sufficient to cast doubts on the applicant’s claimed date of first use [see Canadian Occidental Petroleum Ltd v Oxychem Canada Inc (1990), 33 CPR (3d) 345 (TMOB)]. I can apply the same reasoning to this case. Further, given the evidence that EnCana Corporation had operated as an energy company until November 30, 2009, the evidence is not sufficient to cast doubt on the Applicant’s claim that it started using the Mark in association with the applied for Goods and Services on December 1, 2009, when the Applicant company split from EnCana Corporation.

[70] In summary, I do not find the evidence furnished sufficient to raise doubts about the veracity of the Applicant’s claimed date of first use. And contrary to the Opponent’s submission, it is not through a combination of reasons that an Opponent can meet its burden under this ground.

[71] Accordingly, this ground of opposition is rejected.

Section 30(i) Ground of Opposition

[72] Section 30(i) of the Act requires that an applicant declare itself satisfied that it is entitled to use the applied-for mark. The jurisprudence suggests that non-compliance with section 30(i) can be found in one of two circumstances: 1) where there are exceptional circumstances such as bad faith which render the applicant’s statement that it is satisfied that it is entitled to use the applied-for mark untrue [see Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155; Cerverceria Modelo, S.A. de C.V. v Marcon, 2008 CanLII 88189, 70 CPR (4th) 355 (TMOB) at 369]; and 2) where there is a prima facie case of non-compliance with a federal statute [see Interactiv Design Pty Ltd v Grafton-Fraser Inc (1998), 87 CPR (3d) 537 (TMOB) at 542-543; E Remy Martin & Co SA v Magnet Trading Corp (HK) Ltd (1988), 23 CPR (3d) 242 (TMOB) and Canada Post Corp v Metromail Corp (1997), 84 CPR (3d) 511 (TMOB)].

[73] In this case, the Opponent has made a number of submissions under this ground, some of which overlap with other grounds and some of which may be considered as separate grounds of opposition for reasons which will be explained further on in my decision. I will therefore focus on the following arguments as I consider them to be the most relevant under this ground:

· the design is an infringement of the Opponent’s copyright in its marks;

· the use of the Mark is contrary to the provisions of the Competition Act and or the Consumer Packaging and Labelling Act; and

· the application was filed in bad faith.

[74] I find that the Applicant was satisfied that it was entitled to use the Mark at the filing date of the application for the following reasons.

Is there a prima facie case of non-compliance with a federal statute?

[75] The Registrar’s expertise does not extend to the interpretation or application of a federal statute. The reason that the Registrar must only consider whether there is a prima facie case of non-compliance with a federal statute is because he cannot condone registration of a mark if the applicant’s use would violate Federal legislation [see Bojangles’ International LLC v Bojangles Café Ltd (2004), 40 CPR (4th) 553 (TMOB), at 561-562; Star Island Entertainment, LLC v Provent Holdings Ltd, 2015 TMOB 25].

Compliance with the Copyright Act

[76] With respect to the copyright infringement allegation, the Opponent did not identify the particular section of the legislation it was relying upon to support its pleading. However, this point was not raised by the Applicant in its request for an interlocutory ruling based on the sufficiency of portions of the Opponent’s statement of opposition. I therefore assume the Applicant knew the case it had to meet with respect to this branch of this ground [see Star Island Entertainment, supra].

[77] Thus, in the present case with the Opponent’s section 30(i) ground of opposition, the first issue is whether the Opponent has met its initial evidential burden of demonstrating a prima facie case of copyright infringement. In order to do so, an opponent must establish (i) copyright in the work, and (ii) that the trademark applied for is a substantial copying of the work [see Jones v Dragon Tales Production Inc (2002), 27 CPR (4th) 369 at para 13 (TMOB)].

[78] In this case, Mr. Ferguson confirms in his affidavit at para.28 that the Opponent owns all copyright in what he refers to as the “Initial Swirls” (i.e. application Nos. 1,373,294 and 1,373,296, which are now registered), in the stationery attached as Exhibit D-1 to his affidavit and to what he refers to as the “Basic Emblem” which is depicted in paragraph 2 of his affidavit and below at paragraph 149. He further states that ownership of the designs was accomplished by way of “a complete and absolute assignment” to the Opponent of the rights in that design, which was provided by Kelly Hartman, the Opponent’s longstanding art director, as soon as her studio was paid in full. I find it curious that the Opponent did not submit copyright registrations for any of its designs. Further, the Opponent did not include a copy of the document showing the assignment to the Opponent of the rights in any of the designs from the author of the design, Ms. Kelly Hartman.

[79] Even if I could infer from the Opponent’s Initial Swirls trademark applications that the Opponent was the proper owner of these two design marks and that copyright existed in them at the material date for this ground, with respect to the question of whether the Applicant’s Mark constitutes a substantial copying of these marks, I am not satisfied that the Opponent has demonstrated a prima facie case of copyright infringement. First, the infringing work must copy a substantial part of the copyright work and the simpler the copyrighted work, the greater the need to establish exact copying in order to establish infringement [see Pyrrha Design Inc v Plum and Posey Inc, 2019 FC 129]. Secondly, as the Court stated in Philip Morris Products S.A. v Malboro Canada Limited, 2010 FC 1099: “an inference of copying is also rebutted where the similarity between the works is the result of the use of conventional ideas or of common source material: Kilvington Brothers Limited v Goldberg, 1957 CanLII 421 (ON SC), 28 CPR 13, at p. 16; Collins et al v Rosenthal et al (1974), 14 CPR (2d) 143, at pp. 148-149.” In this case, given how conventional swirl designs are as shown by the state of the register evidence (described in more detail below), I do not find that there is a prima facie case of copyright infringement.

Compliance with the Competition Act and/or the Consumer Packaging and Labelling Act

[80] With respect to the allegation that the Mark did not comply with the Competition Act and/or the Consumer Packaging and Labelling Act, again the Opponent did not identify the particular section of the legislation it was relying upon. However, this point was not raised by the Applicant in its request for an interlocutory ruling based on the sufficiency of portions of the Opponent’s statement of opposition. I therefore assume the Applicant knew the case it had to meet with respect to this branch of this ground [see Star Island Entertainment, LLC v Provent Holdings Ltd, supra].

[81] As noted above, the Registrar’s expertise does not extend to the interpretation and application of either the Competition Act or the Consumer Packaging and Labeling Act. It is up to the Opponent to establish how this legislation enables it to make a prima facie case [see JTI-Macdonald TM Corp v Kabushiki Kaisha Studio Ghibli, 2020 TMOB 123].

[82] From my understanding of the Opponent’s argument, it is the Opponent’s position that both the Competition Act and the Consumer Packaging and Labelling Act prohibit merchants from displaying a symbol in any manner which the consumer can interpret or assume, wrongfully, that the merchant’s offering is not harmful to the environment. In this regard, the Opponent relies on what it names the “Green Guide”, which is a publication of the Canadian Standards Association entitled “Environmental claims: A guide for industry and advertisers”. I understand that this document is a best practice guide that is intended to help the public comply with the provisions of the above statutes that prohibit false or misleading representations.

[83] The Opponent submits that the Mark contravenes the above statutes because the Mark wrongfully suggests to consumers that the Goods or Services are not harmful to the environment. It bases this submission on the following arguments: 1) the Mark, because it is “an abstraction of the natural occurrence of seeds in flowers” could “increase the chances of suggesting to consumers that the subject company and/or its offerings are not harmful to the environment” and/or 2) because the Mark is too similar to the Opponent’s marks, which are known to some extent in Canada in association with sustainable development, the Mark could deceptively suggest to consumers that the Applicant and/or its offerings are not harmful to the environment.

[84] I do not find it apparent from the evidence of record that the use of the Mark would create an erroneous impression in the minds of Canadian consumers regarding the character or quality of the Applicant’s Goods or Services. In fact, in describing how the SWIRL Design marks were derived, Mr. Ferguson stated the following in his affidavit at para. 28.(i):

“…This interlocking dot pattern occurs in nature in a few settings, most notable among them being at the centre of many kinds of flowers; as such flowers grow, they efficiently pack all their seeds in a very small space and in so doing, they make the most of their chance to sustain the species. Most of the public, however, does not associate that design as coming from nature, they just think it’s attractive…In summary I verily believe that the ideas suggested by this design are…community cohesion, strength in numbers, planning (in the sense of an order within chaos), efficiency, energy (because the mark is energizing) and (on an unconscious level) nature and the environment.”

[85] In my view, any descriptive or misdescriptive nature of the Applicant’s HELIX Design is not obvious. It follows that, if consumers are not aware of the idea suggested by the Mark’s design, it is unlikely that they would erroneously assume anything about the Applicant’s Goods or Services.

[86] Further, similar to my finding on confusion (which will be discussed below), I do not find that use of the Mark would mislead the public into believing that there is an association with the Opponent’s sustainable development program.

[87] The Opponent has therefore not made out a prima facie case of non compliance with either the Competition Act and or the Consumer Packaging and Labelling Act and this part of this ground is therefore rejected.

Are there exceptional circumstances amounting to bad faith?

[88] In its written argument, the Opponent submits “the Applicant’s behaviour constitutes bad faith, in that it represents a deliberate attempt to encroach on the Vermillion System.” In support of this statement, the Opponent relies on a number of allegations regarding the Applicant’s behaviours. For example, the Opponent states that the Applicant filed four applications in a move to quadruple the Opponent’s costs of opposition. However, at the filing date of the applications the Applicant could not have been aware that the Opponent intended to oppose each application.

[89] The Opponent also alleges, inter alia, that the Applicant “instructed its counsel to file a mis-descriptive name for the Mark”, “instructed its counsel to assign mis-descriptive colours to three of the four SWIRL Sisters”, and “chose not to enable a nearly 75% reduction in paper (by refusing to consent to one set of consolidated arguments…).” I will begin by noting that any decisions made by the Applicant with respect to how to manage its trademark applications or trademark opposition proceedings are not relevant to the Applicant having made the statement that it is satisfied that it is entitled to use the applied for Mark in association with the applied for Goods and Services.

[90] I also do not understand how any of these allegations show that the Applicant’s behaviour “was done with full knowledge and with flagrant disregard of the Opponent’s rights, with an intention to deceive the public and the Registrar about the nature of the Applicant’s rights, especially with respect to the professional services and consumer products”. Even if the Applicant was aware of the Opponent’s prior use of its trademarks, this awareness would not have by itself precluded the Applicant from making the statement that it was satisfied that it was entitled to use the Mark in association with the applied for Goods and Services [see Woot, Inc v WootRestaurants Inc Les Restaurants Woot Inc 2012 TMOB 197].

[91] In summary, I do not find that any of the allegations made by the Opponent support the Opponent’s claim that the Applicant filed the application in bad faith. And again, contrary to the Opponent’s submission, it is not through a combination of reasons that an Opponent can meet its burden under this ground.

[92] This ground of opposition is therefore rejected.

The Mark is unregistrable under sections 12(1)(e) and section 9(1)(n)(iii) of the Act

[93] At paragraph 3(i) of the amended statement of opposition, the Opponent pleads as follows:

Pursuant to section 38(2)(a) of the Act, the application does not comply with section 9(ii)(e) of the Act, in that the Mark is a mark the adoption of which is prohibited in that it so nearly resembles the official mark owned by the University of British Columbia, as set out in Schedule C, as to be mistaken for it.

[94] The Applicant submits that this ground is improperly pled because the Act does not contain a section 9(ii)(e). While I agree with the Applicant that this ground contains an incorrect section number of the Act, in my view it was possible to infer from both the wording of this pleading along with the identification of the official mark (which was attached as Schedule C to the amended statement of opposition), that the Opponent was basing this ground on section 9(1)(n)(iii) of the Act. Further, it was clear in the written argument that the Applicant understood the case that it had to meet. As such, I consider that this is a valid ground of opposition.

[95] Section 9(1)(n)(iii) of the Act is reproduced below:

9(1) No person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,

. . . . .

(n)    any badge, crest, emblem or mark

. . . . .

(iii)    adopted and used by any public authority, in Canada as an official mark for goods or services, in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use;

[96] As previously noted, in support of this ground, the Opponent relies upon a third party official mark, application No. 920085 (shown below), owned by the University of British Columbia (UBC). I have exercised my discretion and checked the register to confirm that this official mark is extant [see Quaker Oats Co of Canada v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)].

[97] I must now determine whether or not the Mark consists of, or so nearly resembles as to be likely to be mistaken for, the official mark. In Big Sister Assn of Ontario v Big Brothers of Canada, 1997 CanLII 16918 (FC); aff’d 1999 CanLII 8094, 86 CPR (3d) 504 (FCA), the test was set out as follows at para. 62:

… Clearly, the Defendant’s mark is not identical to the marks of BSAO. The issue then is whether or not the Defendant’s mark is almost the same as, or substantially similar to any or all of BSAO's marks. Counsel were in agreement that the issue as stated in R. v Kruger as to whether a "person familiar with [BSAO’s] marks [or any of them] but having an imperfect recollection thereof would ... be likely to mistake the [Defendant’s mark therefor]" is correct. I agree. Further, I am satisfied that the statement of the test by Mr. Justice Rothstein in Canadian Olympic Assn. v Health Care Employees Union of Alberta is nothing more than a useful restatement of the Kruger test and does not vary from the Kruger test. For ease of recollection, Mr. Justice Rothstein wrote:

The question must be determined in the context of whether a person who, on a first impression, knowing one mark only and having an imperfect recollection of it, would likely be deceived or confused.

[98] The Applicant submits that although the parties’ marks may be said to bear some similarities to the extent that they both consist of dotted designs, the Mark does not consist of or so nearly resemble as to be likely to be mistaken for UBC’s mark. In this regard, the Applicant provides the following submissions:

· UBC’s mark appears to emulate a galaxy or a hurricane with arms extending out in the same direction from a circular core;

· each arm in UBC’s mark is clearly individually recognizable;

· the official mark appears to suggest rotation or movement given the manner in which the individual dotted arms extend outwards from the centre of the mark;

· the Mark is not reminiscent of a galaxy or hurricane with arms but instead is reminiscent of a sphere; and

· the Mark contains more individual dots that are not organized in a manner that produces visible arms, but rather appear to create a tunnel like effect as the dots get smaller and closer together as they approach the circular centre of the Mark.

Application No. 1,669,660 Official Mark 920085

[99] I will begin by noting these submissions are far too detailed for what would occur as a matter of first impression [see Techniquip Limited v Canadian Olympic Association, 1998 CanLII 7573 (FC) at para. 16].

[100] Further, in my view, while the Mark is not identical to UBC’s official mark, it does, as a matter of first impression, resemble UBC’s official mark to a fair degree. In this regard, both marks are comprised of dotted circle designs, the dots in both marks get smaller and closer together as they approach the circular centre of the mark creating a tunnel like effect and both marks suggest rotation (although I acknowledge that the UBC mark suggests rotation in one direction whereas the arms of the Mark appear to rotate in two directions).

[101] What is also relevant in this case, however, is the Applicant’s state of the register evidence. As noted above, the Buckingham affidavit revealed 65 active trademark applications and registrations which contain a vortex or similar design.

[102] In the Techniquip decision, supra, Justice Joyal stated the following about the Applicant’s state of the register evidence at paras. 23-26:

In the Thibeault affidavit, the trademark researcher lists over 250 registrations for stick figures, featuring lines in the shape of a man, engaged in various activities, with or without the head appearing separate from the body. Some were registered as early as 1959, others as recently as 1989.

Even more relevant, is the Elrifi affidavit, which lists hundreds of stick figure pictograms from telephone directories and newspapers, displaying lines in the shape of a person engaged in various activities. The owners of those marks are involved in businesses ranging from insurance to costume design. Others are local governments setting down traffic directions, shopping centres providing information to customers, or road gangs directing traffic.

It is clear from the evidence submitted by the applicant that marks owned by a multitude of different owners share the common characteristics of the respondent's marks. Therefore, the stick-like figures representing a person in diverse activities should no longer, in isolation, constitute irrefutable protection for official trademarks of the kind involved here.

I believe that the Board erred when it failed to acknowledge the applicant's evidence in respect of the shared characteristics of the Respondent's marks. In other words, the state of the Register is, in the circumstances I have described, of material consideration.

[103] In this case, as noted above, the Buckingham affidavit shows 65 active third party applications or registrations which share common characteristics of UBC’s mark. The goods range from pharmaceutical preparations to cleaning products and the services range from retail services in the field of apparatus for heating, drying and ventilation to educational services in the field of skin basics.

[104] While there may not be as many third party marks with similar designs in this case as there were in the Techniquip decision, I still find that the evidence shows that there are a sufficient number of marks owned by a number of different owners which share the common characteristics of the parties’ marks. Therefore, although I consider the marks in this case to be more similar visually than they are different, in view of the state of the register evidence which shows that these marks share similar characteristics as a large number of other active marks on the register, I do not find that the Applicant’s Mark is a trademark of which the adoption is prohibited by section 9. This ground is therefore not successful.

The Mark is unregistrable under section 12(1)(d) of the Act

[105] The Opponent alleges that the Mark is not registrable pursuant to section 12(1)(d) of the Act as it is confusing with the Opponent’s registered SWIRL Design trademarks TMA894,117 and TMA891,721, both registered in association with a wide variety of goods and services as set out in the attached Schedule B.

[106] I have exercised the Registrar’s discretion to confirm that these registrations are in good standing [see Quaker Oats Co of Canada v Menu Foods Ltd, supra]. In recent section 45 proceedings, it was held that both of these registrations should be amended to delete certain goods and services, as no evidence of use was produced in connection with those goods and services in those proceedings [see Essilor Group Canada Inc v Vermillion Networks Inc, 2021 TMOB 183 and Essilor Group Canada Inc v Vermillion Networks Inc, supra]. However, in view that both of these decisions have been appealed [see Vermillion Networks v Essilor Group Canada Inc, T-1484-21], these goods and services remain in the Opponent’s registrations and must be taken into account in my assessment of these factors.

[107] Since the Opponent has satisfied its initial evidential burden for this ground of opposition, the issue is whether the Applicant has met its legal onus to establish, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and either of the Opponent’s registered trademarks.

Test for confusion

[108] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class. 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 trademarks and the extent to which they have become known; b) the length of time each has been in use; c) the nature of the goods, services or business; d) the nature of the trade; and e) the degree of resemblance between the trademarks in appearance or sound or in the ideas suggested by them.

[109] 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. These enumerated factors need not be attributed equal weight [see Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22; Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23; Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27].

Section 6(5)(a) - inherent distinctiveness of the trademarks and the extent to which each trademark has become known

[110] The overall consideration of the section 6(5)(a) factor involves a combination of inherent and acquired distinctiveness of the trademarks. A trademark is inherently distinctive if it is not suggestive of a characteristic of the associated goods and services. I consider both the Applicant’s and the Opponent’s marks to possess some degree of inherent distinctiveness as they do not suggest any characteristic of the parties’ goods or services. However, being relatively simple designs, they are not inherently strong marks [see Levi Strauss & Co v Vivant Holdings Ltd (2003), 34 CPR (4th) 53 (TMOB)].

[111] The acquired distinctiveness of a mark refers to the extent to which it has become known. The evidence of the Opponent, namely the affidavit of Mr. Wade Ferguson, is quite voluminous, and, as explained above, focuses mostly on the background information about the Opponent. Mr. Ferguson does also provide, however, a summary of his cost of advertising and promoting the Opponent’s “offerings” in association with its marks in Canada between 2008 and 2016. The costs range between $4,000 in 2015 to $105,000 in 2010, and he asserts that the actual costs are in excess of these numbers.

[112] Mr. Ferguson admits that the Opponent has not advertised and promoted its offerings extensively. In this regard, Mr. Ferguson states the following at para. 233 of his affidavit:

In the fashion shown above, Vermillion has used the Vermillion Marks to advertise and promote its Vermillion Goods and Services in Canada through a range of activities and channels. I would like to be able to say we’ve done so “extensively”, because (in accordance with Vermillion’s mission), I know how much more we’ve advertised our offerings compared with many Canadian NGOs, and because I know how intense our efforts have been for much of the past 8 years, so it feels to me like we’ve advertised and promoted extensively. But because of my past work in brand development, I know that trademarks such as Bell, Telus and Canadian Tire are really the ones in Canada which are advertised extensively. So in an effort to keep it real, I know it is accurate to say that Vermillion has advertised diligently since January 2008. (emphasis added)

[113] At paragraph 238 of his affidavit, Mr. Ferguson provides annual sales figures of the Opponent’s goods and services between 2008 and 2016. These totals range from between $450 in 2012 to $14,700 in 2016. Mr. Ferguson further asserts that the actual sales are in excess of these numbers.

[114] Again, Mr. Ferguson admits that not all of the Opponent’s services have “worked well”. In this regard, Mr. Ferguson states the following at para. 236 of his affidavit:

When it comes to Vermillion services, there are many available services, and many ways it has tried to sell them. Over many years, I’ve felt like I’m living the Thomas Edison story where he was asked if he feels bad that he tried hundreds of materials for a light bulb filament, and none of them had worked yet; his response in the famous story is that he’s not dejected because he had the productive experience of learning more about hundreds of materials that didn’t work. Similarly, only a fraction of the indicated service sales approaches have worked well, but in the course of that experimentation, Vermillion has discovered more of the tensions that local and national NGOs need help with to further professionalize their work. (emphasis added)

[115] The primary issue with the Opponent’s evidence is that there is no breakdown of sales or of promotional and/or advertising expenses provided for each of the numerous goods and services listed in each of the Opponent’s registrations. While in its written argument the Opponent provides what he entitles “a summary of the Opponent’s evidence of the wide ranging use of its marks across its goods and services”, what the Opponent has actually included is a list of each registered good or service along with reference to where the evidence of this good or service can be found in his affidavit, exhibits or undertaking responses, with no explanation as to how the evidence relates to the registered goods or services in question. For example, with respect to the service “business process consulting”, the Opponent refers to the following:

v. business process consulting

1) [Aff 1.96, Tab F-2 Vermillion Analytics Slides]

2) [Aff 1.108 and Tab F-4 Vermillion Strategic Presentation]

The Opponent does not explain how the Vermillion Analytic Slides or the Vermillion Strategic Presentation show use of its marks pursuant to section 4(2) of the Act in association with the service “business process consulting”.

[116] In my view, in order to show the extent to which its marks had become known in Canada, it was up to the Opponent to make the correlation between the goods or services shown to be in use and the registered goods and services. As I do not find that the Opponent did so, the ambiguity of the evidence must be resolved against the Opponent [see Conde Nast Publications Inc v Union des Editions Modernes (1979), 46 CPR (2d) 183 (FCTD)].

[117] Further, Mr. Ferguson’s affidavit contains few references to any particular good or service. It is therefore not possible to truly understand which goods or services the Opponent’s marks have become known in association with. As a result, I can only find that the Opponent’s marks have become known to a limited extent in Canada, and it is not clear in association with which specific goods or services.

[118] As the Applicant has not filed any evidence of use of its Mark in Canada, I must find that this factor favours the Opponent, but only slightly.

Section 6(5)(b) – length of time the trademarks have been in use

[119] Given the minimal nature of the Opponent’s use of its trademarks, and the absence of evidence of use of the Mark, this factors favours the Opponent, but only to a slight extent.

Sections 6(5)(c) & (d) – the nature of the goods, services or business and the channels of trade

[120] When considering sections 6(5)(c) and 6(5)(d) of the Act, it is the statement of Goods and Services in the application and the statement of goods and services in the Opponent’s registration that govern the assessment of the likelihood of confusion under section 12(1)(d) of the Act [see Henkel Kommanditgesellschaft auf Aktien 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)]. However, those statements must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording. In this regard, evidence of the actual trades of the parties is useful [see McDonald’s Corp v Coffee Hut Stores Ltd, 1996 CanLII 3963 (FCA); Procter & Gamble Inc v Hunter Packaging Ltd (1999), 2 CPR (4th) 266 (TMOB); American Optical Corp v Alcon Pharmaceuticals Ltd (2000), 5 CPR (4th) 110 (TMOB)].

[121] The nature of the parties’ goods, services and businesses are very different. The Opponent primarily educates businesses and the public about sustainability while the Applicant is an oil and gas company. Given the parties’ respective businesses, they target and meet very different needs of their consumers.

[122] With respect to the parties’ goods, the applied for goods can be summarized as petroleum and fuels, coal and fuel oil and electrical power generators. These goods are considerably different from the Opponent’s novelty items, printed materials, canvas shopping bags, stationery supplies, paper napkins and clothing. In view of the differences between the nature of these goods, the parties’ channels of trade for these goods would not likely overlap.

[123] With respect to the parties’ services, as noted by the Applicant’s agent, the Applicant’s services are all industry specific services such as energy brokerage, petroleum exploration, extraction, transportation and storage, generation, production and transmission of electricity and refining of crude oil as well as marketing services targeted to the field of petroleum, natural gas and related hydrocarbons and electricity.

[124] On the other hand, the evidence shows that most if not all of the Opponent’s services are related to the Opponent’s primary mission of promoting sustainability. In this regard, the general categories of the Opponent’s numerous services comprise association services, educational services, services of providing information, business centre services, human resource services, advertising services and a variety of miscellaneous services that appear to be generally targeted towards businesses to support the Opponent’s primary mission of promoting sustainability.

[125] In its written argument at pages 94-95, the Opponent sets out what appears to be a comparison between its services and those of the Applicant, which I reproduce in the form of a chart as follows:

Opponent’s Services	Applicant’s Services
Marketing services	Marketing services
Broker services	Broker services
Engineering, procurement and construction services	“The Application includes various oilfield services in the Claims that involve similar professionals doing similar things.”
Sustainability, waste services and energy upgrading	“The Application includes power generators in the Claims that could use waste as feedstock”.
Association and consortium services and recognition services for deserving companies	“The Applicant founded COSIA as a consortium that inter alia enables companies to be less environmentally impactful and then allowed them to advertise participation as soon as they join”.
The Opponent Services set out in Tabs L-7, L-8 and L-9.	Stakeholder engagement activities

 

[126] What the Opponent has not included in its comparison, however, is the fact that the Applicant has included limitations as to its intended channels of trade for many of its applied for services. For example, the Applicant has limited its marketing services to “the field of petroleum, natural gas and related hydrocarbons”. The Applicant’s brokerage services have also been limited “to the field of petroleum, natural gas and related hydrocarbons, as well as the field of electricity”. The last category of the Applicant’s brokerage services is limited to the “trading, buying and reselling of electricity, petroleum, natural gas and related hydrocarbons”. As the Applicant did include limitations as to its intended channels of trade, the Applicant is prevented from selling its services to many of the same customers that the Opponent offers its services to, e.g. NGOs.

[127] The Opponent’s comparison is also not accurate in that the Applicant has not applied for engineering, procurement and construction services; sustainability, waste services and energy upgrading association; consortium services and recognition services for deserving companies, or stakeholder engagement activities. These registered services of the Opponent therefore do not overlap with the applied for Services.

[128] I do acknowledge that some of the services of the Opponent may be related to those of the Applicant to the extent that the Applicant’s Services are intended for some of the same customers as those of the Opponent. In this regard, the Opponent’s evidence shows that it offers a range of services to companies in the oil and gas industries in order to educate them about sustainability (i.e. provide them with information regarding how they can improve their operations to operate more profitably and sustainably).

[129] Therefore, while I consider the services offered by the parties to be considerably different, the evidence suggests that both parties would operate, albeit in different ways, in the oil and gas industries. In the absence of evidence to the contrary, I consider that there is a potential for overlap between the parties’ channels of trade to a limited extent.

Section 6(5)(e) – the degree of resemblance between the marks

[130] 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 goods or services [see Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, supra, at para. 20].

[131] The Applicant submits that while the marks are similar to the extent that they both consists of dotted designs, their overall appearance is different in the following ways:

· the Opponent’s marks are reminiscent of the shape of a galaxy or a hurricane with dotted arms extending out in the same sweeping direction from a circular core;

· each dotted arm in the Opponent’s marks is easily recognizable;

· at least one dotted arm in the Opponent’s marks is a different colour than the rest of the mark and extends out further from the core than the other dotted arms;

· the different coloured and longer dotted arm is the most striking and dominant feature of each of the Opponent’s marks;

· the Mark does not appear like a galaxy or hurricane and does not give a consumer the idea of rotation or movement;

· the Mark does not share the same striking element as the Opponent’s marks (i.e. a longer or different coloured dotted arm);

· the dotted design of the Mark is more dense than the dotted design of the Opponent’s marks; and

· the individual dots in the Mark are not organized in a manner that produces visible arms but rather appear to create a tunnel-like effect as the dots get smaller and closer together as they approach the core of the Mark.

[132] The Applicant’s approach, however, appears to involve a side by side comparison of the marks, which was the type of comparison warned against by the Courts [see Veuve Clicquot, supra, at para 20, and International Stars SA v Simon Chang Design Inc, 2013 FC 1041 at para 9].

[133] In my view, the most striking or unique element of the Mark is the overall effect of the sphere or vortex design. The most striking element of the Opponent’s marks are the different coloured arm (as in Registration No. TMA894,117) or arms (as in Registration No. TMA891,721) which extend out of each design. Therefore, while both marks share a fair degree of resemblance in appearance, each of the Opponent’s marks also comprise a distinguishable difference from the Applicant’s Mark.

[134] With respect to sound and idea suggested, neither trademark is susceptible of being sounded and neither trademark suggests any idea in particular [see Levi Strauss& Co v Benetton Group SpA (1997) 77 CPR (3d) 233 (TMOB)].

Surrounding circumstance – state of the register evidence

[135] As noted above, the Applicant has filed evidence state of the register evidence through the affidavit of Jane Buckingham.

[136] State of the register and marketplace evidence favours an applicant when the presence of a common element in marks causes purchasers to pay more attention to the other features of the marks, and to distinguish between them by those other features [see McDowell v Laverana GmbH & Co. KG, 2017 FC 327 at para 42]. Inferences regarding the state of the market may be drawn from such evidence only if a large number of relevant registrations are located [see Kellogg Salada Canada Inc v Maximum Nutrition Ltd (1992), 43 CPR (3d) 349 (FCA); McDowell, supra, at paras 41-46]. Relevant trademarks include those that (i) are registered or are allowed and based on use; (ii) are for similar goods and services as the marks at issue, and (iii) include the component at issue in a material way [see Sobeys West Inc v Schwan's IP, LLC, 2015 TMOB 197; Allergan Inc v Lancôme Parfums & Beauté & Cie, société en nom collectif (2007), 64 CPR (4th) 147 (TMOB) at 169].

[137] While the evidence of Ms. Buckingham shows that there are 65 active vortex or similar designs on the Register, the vast majority of these are for unrelated goods and services. There is therefore insufficient evidence to conclude that consumers are used to distinguishing such similar trademarks in the same industries as those of the parties in this case.

Surrounding circumstance – family of trademarks

[138] In its statement of opposition, the Opponent alleges that it has a family of trademarks with a SWIRL design, as set out in schedules A and B to the Opponent’s statement of opposition. The Opponent’s alleged family comprises the Opponent’s two registered SWIRL Design marks, the Basic Emblem, the Canada Emblem and two others which the Opponent calls the “USA Emblem” and the “Australia Emblem”.

[139] Where there is a family of trademarks, there may be a greater likelihood that the public would consider a trademark that is similar to be another trademark in the family and consequently, assume that the product or service that is associated with that trademark is manufactured or performed by the same person. There is, however, no presumption of the existence of a family of marks in opposition proceedings. A party seeking to establish a family of marks must establish that it is using more than one or two trademarks within the alleged family [see Techniquip, supra; Now Communications Inc v CHUM Ltd (2003), 32 CPR (4th) 168 at para. 35 (TMOB)].

[140] In this case, while the Opponent has shown some use of its two registered SWIRL Design marks, it has not provided any evidence of use for any of the other versions of the Opponent’s design trademarks. I therefore do not find that the Opponent has provided sufficient evidence of a family of trademarks such that I could find that there is an increased likelihood of confusion.

Surrounding circumstance - jurisprudence concerning weak trademarks

[141] The Applicant submits that inherently weak marks should only be afforded a narrow ambit of protection. The Applicant also submits that when a trademark is of low inherent distinctiveness, comparatively small differences may suffice to render it distinguishable from another mark.

[142] I consider the jurisprudence on weak marks to assist the Applicant’s position in this case to some extent. In this regard, the jurisprudence concerning weak trademarks was summarized by my colleague Member dePaulsen as follows in Fiber-Shield (Toronto) Ltd v Henkel Corporation, 2020 TMOB 137 at para 18:

It is well accepted that comparatively small differences will suffice to distinguish between weak trademarks [Boston Pizza International Inc v Boston Chicken Inc, 2001 FCT 1024 (CanLII), 15 CPR (4th) 345 (FCTD) at para 66]. As explained in Provigo Distribution Inc v Max Mara Fashion Group SRL (2005), 2005 FC 1550, 46 CPR (4th) 112 at para 31:

The two marks being inherently weak, it is fair to say that even small differences will be sufficient to distinguish among them. Were it otherwise, first user of words in common use would be unfairly allowed to monopolize these words. A further justification given by courts in coming to this conclusion is that the public is expected to be more on its guard when such weak trade names are used …

A party adopting a weak trademark has been held to accept some risk of confusion [see General Motors v Bellows (1949), 1949 CanLII 47 (SCC), 10 CPR 101 at 115-116 (SCC)]. While it is possible for the degree of distinctiveness attributed to a weak trademark to be enhanced through extensive use [Sarah Coventry Inc v Abrahamian (1984), 1 CPR (3d) 238 (FCTD) at para 6], there is no evidence that this is the case here.

[143] In this case, the Opponent’s SWIRL Design marks are relatively simple designs and, as noted above, are not inherently strong. Further, the amount of distinctiveness attributed to these marks has not been enhanced through extensive use. I therefore agree with the Applicant that small differences may be sufficient to distinguish between marks like those of the parties in this case.

Conclusion

[144] Section 6(2) of the Act is not concerned with confusion between the trademarks themselves, but rather confusion as to the source of the Opponent’s goods and services and the applied for Goods and Services. Further, as the Supreme Court of Canada explains in Mattel, supra, at para 57, the ordinary consumer is owed a certain amount of credit:

… I fully agree with Linden J.A. in Pink Panther that in assessing the likelihood of confusion in the marketplace “we owe the average consumer a certain amount of credit” (para. 54). A similar idea was expressed in Michelin & Cie v. Astro Tire & Rubber Co. of Canada Ltd. (1982), 69 CPR (2d) 260 (FCTD), at 263:

. . . one must not proceed on the assumption that the prospective customers or members of the public generally are completely devoid of intelligence or of normal powers of recollection or are totally unaware or uninformed as to what goes on around them.

[145] In this case, an assessment of confusion asks whether a consumer confronted with the Mark in association with gas and oil type goods and industry specific related services would be confused and think that they emanate from the Opponent, whose primary mission is to promote sustainability. On a balance of probabilities, I find that they would not.

[146] Having regard to all of the surrounding circumstances and, in particular, to the differences in the nature of the parties’ goods and services and that the parties’ businesses target and achieve entirely different objectives, and that small differences may be sufficient to differentiate between weak marks, I conclude that the Applicant has met the legal burden upon it of establishing that there is no reasonable likelihood of confusion between its Mark and either of the Opponent’s SWIRL Design trademarks. Accordingly, I reject this ground of opposition.

Non entitlement ground of opposition

[147] Under the section 16(1) ground, the Opponent must show that it had used or made known at least one of its trademarks prior to the Applicant’s date of first use [section 16(1)(a) of the Act] as well as non-abandonment of its trademarks at the date of advertisement of the Mark, namely December 16, 2015 [section 16(5) of the Act].

[148] The Opponent’s section 16(1)(a) ground of opposition relies on use of its two registered trademarks pleaded with respect to the section 12(1)(d) ground of opposition, as well as four additional similar SWIRL designs referred to by Mr. Ferguson as the Basic Emblem, the “Canada Emblem”, (found at paragraph 2 of Mr. Ferguson’s affidavit), the “USA Emblem” and the “Australia Emblem”.

“Basic Emblem”

[149] As explained above, Mr. Ferguson states in his affidavit that the Basic Emblem represents the starting point from which Vermillion’s registered SWIRL Design trademarks were derived. However, as noted above, the evidence does not show use or making known of the Basic Emblem design mark, nor any of the other unregistered design marks of the Opponent.

[150] But, since the Opponent has shown use or making known of its registered SWIRL Design marks as of the Applicant’s date of first use, the Opponent has therefore met its burden under this ground with respect to those two marks.

[151] In view that the difference in material dates between this ground and the section 12(1)(d) ground would not have any significant impact on the determination of the issue of confusion between the marks of the parties, this ground of opposition also fails.

Non-distinctiveness ground of opposition

[152] The Opponent’s section 2 ground of opposition also relies on the Opponent’s use or making known of all of its SWIRL Design trademarks, as well as the official mark, Application No. 920085, owned by the University of British Columbia.

[153] In order to meet its evidential burden with respect to the section 2 ground, the Opponent must show that as of the filing of the opposition, either it or UBC had acquired a sufficient reputation in at least one of the trademarks or the official mark [see Bojangles’ International LLC v Bojangles Café Ltd (2006)] to negate the distinctiveness of the Mark [see Park Avenue Furniture Corporation, supra, 412 at 424].

[154] The Opponent has not shown use or making known in Canada of any of its non-registered marks, nor UBC’s official mark. The Opponent has therefore not met its evidential burden under the section 2 ground with respect to these marks.

[155] With respect to the Opponent’s registered marks, to the extent that the Opponent has met its burden under these grounds with respect to these marks, in my view, the differences in material dates between these grounds and the section 12(1)(d) ground would not have had any significant impact on the determination of the issue of confusion between the trademarks of the parties. Accordingly, these grounds of opposition also fail.

Application No. 1,669,661

[156] Application No. 1,669,661 for the trademark HELIX Design (blue), shown below, was filed on March 25, 2014, based on use since at least December 1, 2009, in association with the same Goods and Services as the Mark.

Colour is claimed as a feature of the trademark. The HELIX Design is the colour of blue turquoise (Pantone 15-5217).

[157] The HELIX Design (blue) trademark was advertised for opposition purposes on December 16, 2015, and was opposed by the Opponent on May 16, 2016.

[158] The issues for decision and the evidence of record are substantially similar to the above case with the exception of the section 6(5) factors discussed in more detail below. I also consider the Opponent’s best chance of success in this case to be its SWIRL Design registered marks with respect to the section 12(1)(d) ground.

[159] The only difference between HELIX Design (blue) and the application for the Mark discussed above is that instead of being black dots on a white background, the HELIX Design (blue) trademark is comprised of blue turquoise dots on a white background. As both this trademark and the Opponent’s SWIRL Design marks are comprised of circular dotted designs, the degree of resemblance between the marks is more or less the same as in the above case because the issue of the likelihood of confusion it is to be assessed by consumers with an imperfect recollection [see Joseph E. Seagram & Sons Ltd v Seagram Real Estate Ltd (1990), 33 CPR (3d) 454 (FCTD); Dollarama LP v Dollar Tree Stores Canada, Inc, 2013 TMOB 26]. With respect to sound and idea suggested, neither trademark is susceptible of being sounded and neither trademark suggests any idea in particular [see Levi Strauss& Co v Benetton Group, supra]. Accordingly, the ground of opposition based on section 12(1)(d) also fails.

[160] With respect to the remaining grounds of opposition, my findings above with respect to each of these other grounds of opposition equally apply to each of the grounds of opposition raised against the trademark HELIX Design (blue). Therefore, for all of those remaining grounds where the Opponent has met its initial evidential burden, I conclude that the Applicant has met the legal burden upon it of establishing that its application is in compliance with all of section 30 of the Act, the HELIX Design (blue) mark is registrable under section 9(1)(n)(iii), and there is no reasonable likelihood of confusion between HELIX Design (blue) and either of the Opponent’s registered SWIRL Design trademarks.

Application No. 1,669,662

[161] Application No. 1,669,662 for the mark HELIX Design (teal), shown below, was filed on March 25, 2014, based on use since at least December 1, 2009, in association with the same Goods and Services as the Mark.

Colour is claimed as a feature of the trademark. The HELIX Design is the colour of deep teal (Pantone 19-4914).

[162] The HELIX Design (teal) was advertised for opposition purposes on December 16, 2015, and was opposed by the Opponent on May 16, 2016.

[163] The issues for decision and the evidence of record are substantially similar to the above case with the exception of the section 6(5) factors discussed in more detail below. I also consider the Opponent’s best chance of success in this case to be its SWIRL Design registered marks with respect to the section 12(1)(d) ground.

[164] The only difference between this application and the application for the Mark discussed above is that instead of being black dots on a white background, the HELIX Design (teal) trademark is comprised of deep teal colored dots on a white background. As both this mark and the Opponent’s SWIRL Design marks are comprised of circular dotted designs, the degree of resemblance between the marks is more or less the same as in the above case because the issue of the likelihood of confusion it is to be assessed by consumers with an imperfect recollection [see Joseph E Seagram & Sons Ltd v Seagram Real Estate Ltd, supra; Dollarama LP v Dollar Tree Stores Canada, supra]. With respect to sound and idea suggested, neither trademark is susceptible of being sounded and neither trademark suggests any idea in particular [see Levi Strauss& Co v Benetton Group, supra]. Accordingly, the ground of opposition based on section 12(1)(d) fails.

[165] With respect to the remaining grounds of opposition, my findings above with respect to each of these other grounds of opposition equally apply to each of the grounds of opposition raised against HELIX Design (teal). Therefore, for all of those remaining grounds where the Opponent has met its initial evidential burden, I conclude that the Applicant has met the legal burden upon it of establishing that its application is in compliance with all of section 30 of the Act, the HELIX Design (teal) mark is registrable under section 9(1)(n)(iii), and there is no reasonable likelihood of confusion between HELIX Design (teal) and either of the Opponent’s registered SWIRL Design trademarks.

Application No. 1669663

[166] Application No. 1,669,663 for the mark HELIX Design (white on black), shown below, was filed on March 25, 2014, based on use since at least December 1, 2009, in association with the same Goods and Services as the Mark.

[167] The HELIX Design (white on black) was advertised for opposition purposes on December 16, 2015, and was opposed by the Opponent on May 16, 2016.

[168] The issues for decision and the evidence of record are substantially similar to the above case with the exception of the section 6(5) factors discussed in more detail below. I also consider the Opponent’s best chance of success in this case to be its SWIRL Design registered marks with respect to the section 12(1)(d) ground.

[169] The only difference between this application and the application for the Mark discussed above is that instead of being black dots on a white background, the HELIX Design (white on black) trademark is comprised of white dots on a black background. As both this mark and the Opponent’s SWIRL Design marks are comprised of circular dotted designs, the degree of resemblance between the marks is more or less the same as in the above case because the issue of the likelihood of confusion it is to be assessed by consumers with an imperfect recollection [Joseph E Seagram & Sons Ltd v Seagram Real Estate Ltd, supra, Dollarama LP v Dollar Tree Stores Canada, supra]. However, also as in the above case, neither trademark is susceptible of being sounded and neither trademark suggests any idea in particular [Levi Strauss& Co v Benetton Group, supra]. Accordingly, the ground of opposition based on section 12(1)(d) also fails.

[170] With respect to the remaining grounds of opposition, my findings above with respect to each of these other grounds of opposition equally apply to each of the grounds of opposition raised against this trademark. Therefore, for all of those remaining grounds where the Opponent has met its initial evidential burden, I conclude that the Applicant has met the legal burden upon it of establishing that its HELIX Design (white on black) application is in compliance with all of section 30 of the Act, the HELIX Design (white on black) mark is registrable under section 9(1)(n)(iii), and there is no reasonable likelihood of confusion between this trademark and either of the Opponent’s registered SWIRL Design trademarks.

Disposition

[171] Pursuant to the authority delegated to me under section 63(3) of the Act, I reject the oppositions against application Nos. 1,669,660, 1,669,661, 1,669,662 and 1,669,663 pursuant to section 38(12) of the Act.

 

Cindy R. Folz

Member,

Trademarks Opposition Board

Canadian Intellectual Property Office

Schedule A – Applicant’s Trademarks

Application No. 1,669,660

Goods

(1) Petroleum and fuels, namely crude oil, natural gas liquids, natural gasoline, gasoline and diesel; coal and fuel oil; electrical power generators for commercial, residential or industrial applications. (Goods)

Services

(1) Business marketing services for others in the field of petroleum, natural gas and related hydrocarbons, namely, providing marketing strategies for others in the field of petroleum, natural gas and related hydrocarbons; business marketing of electricity for others, namely providing marketing strategies for others in the field of electricity; Brokerage services in the field of petroleum, natural gas and related hydrocarbons; Brokerage services in the field of electricity; Brokerage services, namely, trading, buying and reselling of electricity, petroleum, natural gas and related hydrocarbons for others; Extraction of petroleum, natural gas and related hydrocarbons; Transportation of petroleum, natural gas and related hydrocarbons via pipeline, rail or truck; Storage of petroleum, natural gas and related hydrocarbons; Transmission of electricity; Refining and upgrading of crude oil; Generation and production of electricity; Production of petroleum, natural gas and related hydrocarbons; Exploration for petroleum, natural gas and related hydrocarbons. (Services)

 

Application No. 1,669,661

 

Goods

(1) Petroleum and fuels, namely crude oil, natural gas liquids, natural gasoline, gasoline and diesel; coal and fuel oil; electrical power generators for commercial, residential or industrial applications.

Services

 

(1) Business marketing services for others in the field of petroleum, natural gas and related hydrocarbons, namely, providing marketing strategies for others in the field of petroleum, natural gas and related hydrocarbons; business marketing of electricity for others, namely providing marketing strategies for others in the field of electricity; Brokerage services in the field of petroleum, natural gas and related hydrocarbons; Brokerage services in the field of electricity; Brokerage services, namely, trading, buying and reselling of electricity, petroleum, natural gas and related hydrocarbons for others; Extraction of petroleum, natural gas and related hydrocarbons; Transportation of petroleum, natural gas and related hydrocarbons via pipeline, rail or truck; Storage of petroleum, natural gas and related hydrocarbons; Transmission of electricity; Refining and upgrading of crude oil; Generation and production of electricity; Production of petroleum, natural gas and related hydrocarbons; Exploration for petroleum, natural gas and related hydrocarbons.

 

 

Application No. 1,669,662

 

Goods

(1) Petroleum and fuels, namely crude oil, natural gas liquids, natural gasoline, gasoline and diesel; coal and fuel oil; electrical power generators for commercial, residential or industrial applications.

Services

 

(1) Business marketing services for others in the field of petroleum, natural gas and related hydrocarbons, namely, providing marketing strategies for others in the field of petroleum, natural gas and related hydrocarbons; business marketing of electricity for others, namely providing marketing strategies for others in the field of electricity; Brokerage services in the field of petroleum, natural gas and related hydrocarbons; Brokerage services in the field of electricity; Brokerage services, namely, trading, buying and reselling of electricity, petroleum, natural gas and related hydrocarbons for others; Extraction of petroleum, natural gas and related hydrocarbons; Transportation of petroleum, natural gas and related hydrocarbons via pipeline, rail or truck; Storage of petroleum, natural gas and related hydrocarbons; Transmission of electricity; Refining and upgrading of crude oil; Generation and production of electricity; Production of petroleum, natural gas and related hydrocarbons; Exploration for petroleum, natural gas and related hydrocarbons.

 

 

Application No. 1,669,663

 

Goods

(1) Petroleum and fuels, namely crude oil, natural gas liquids, natural gasoline, gasoline and diesel; coal and fuel oil; electrical power generators for commercial, residential or industrial applications.

Services

(1) Business marketing services for others in the field of petroleum, natural gas and related hydrocarbons, namely, providing marketing strategies for others in the field of petroleum, natural gas and related hydrocarbons; business marketing of electricity for others, namely providing marketing strategies for others in the field of electricity; Brokerage services in the field of petroleum, natural gas and related hydrocarbons; Brokerage services in the field of electricity; Brokerage services, namely, trading, buying and reselling of electricity, petroleum, natural gas and related hydrocarbons for others; Extraction of petroleum, natural gas and related hydrocarbons; Transportation of petroleum, natural gas and related hydrocarbons via pipeline, rail or truck; Storage of petroleum, natural gas and related hydrocarbons; Transmission of electricity; Refining and upgrading of crude oil; Generation and production of electricity; Production of petroleum, natural gas and related hydrocarbons; Exploration for petroleum, natural gas and related hydrocarbons.

 

Schedule B – Opponent’s Registered Trademarks

 

Registration No. TMA894,117

 

Goods

(1) Novelty items, namely, mugs; Printed materials, namely, pamphlets, reports, and printed guides, all in the field of best practices and techniques for businesses, organizations, people and societies in the areas of management, financial performance, sustainability performance, sustainability reporting, economics, marketing and sales (except in the field of sales and marketing skills for mortgage and home equity loans), media relations, communication and advertising, cultural activities, fair trade, public policy, leadership, environment, social affairs and public affairs; canvas shopping bags; stationery supplies, namely, pens, notepads, postcards, bumper stickers, decals; paper napkins; Clothing, namely, T-shirts and hats.

Services

(1) Association services, namely, promoting the interests and policy agenda of various organizations, namely, promoting public interest in and awareness of the importance of sustainable development that takes care of people, planet and profit, and promoting public interest in and awareness of the importance of other public and social affairs; arranging and conducting marketing programs with or on behalf of third parties to promote fundraising for and education about and support for sustainable development and other public affairs, namely, by the dissemination of printed materials and of other advertising materials; promoting public interest in and awareness of the need for financial support to non-governmental organizations and their programs; promoting public interest in and awareness of global issues and international cooperation; association services, namely, administration of philanthropic projects and activities; association services, namely, organizing and conducting awards programs; association services, namely, organizing and conducting luncheon and dinner events recognizing the achievements of private and public companies and governmental and non-governmental organizations for the purpose of fostering progress in sustainable development and in other public affairs; association services, namely, administering educational, cultural, international student, and professional exchange programs, and research programs in the fields of business, law, technology, politics, international relations, fair trade, sustainable development, civil society, and human rights; association services, namely, representing the interests of member firms and promoting ethical practice, technical competency and professional standards; association services, namely, administering international fellowship grant programs; association services, namely, promoting public awareness and participation regarding policy and legislative issues and leadership positions at local and national levels; association services, namely, distributing newsletters through e-mail transmissions; association services, namely, making phone calls, proposing policies and legislation, and encouraging members and the public at large to take action through lobbying and other means to help shape public policy, legislation and leadership positions; association services, namely providing information to members and the public at large regarding issues relating to policies, legislation and leadership positions at local and national levels; political action committee services, namely, promoting the interests of political candidates running for elected office; accounting services, namely, account and business auditing, and sustainability auditing; business and management consulting relating to training services, strategic planning services and sustainability advisory services; business process consulting; business marketing consulting services (except in the field of sales and marketing skills for mortgage and home equity loans); market research services, namely, conducting business, market research, and opinion poll surveys in the field of politics, economics, public, international, and social affairs, leisure, cultural activities and commercial affairs; opinion polling for business, non-business, political, advertising and non-advertising purposes; production and interpretation of information collected on public and consumer opinions and behavior within the scope of research, marketing, advertising studies, and satisfaction studies; and disseminating information relating to production and interpretation of information collected on public and consumer opinions and behavior within the scope of research, marketing, advertising studies, and satisfaction studies; conducting profit surveys; collection of data to a central file in the fields of politics, economics, social affairs, leisure, cultural activities and commercial affairs, and analysis of this data once collected; providing statistical information; message transcription for others; data processing in the field of advertising, marketing and communication; economic analysis; cooperative advertising and marketing services, namely, pooling the advertising or marketing resources of others to enable results that individual participants could not produce at similar rates; procurement services, namely, purchasing office furniture, telephone equipment, oilfield tools, oilfield equipment, call center equipment, and security and monitoring equipment for others; waste disposal procurement, namely, purchasing of waste disposal equipment and services for others; energy supply purchasing procurement for others; providing information in the fields of sustainable development, business management, accounting and business marketing (except in the field of sales and marketing skills for mortgage and home equity loans); project management in the fields of specification; analysis services, namely, audit services in the fields of account auditing, auditing utility rates for others, business auditing, energy auditing, insurance premiums auditing; business information services in the field of sustainable development, business change management, business process management, business strategic planning services and business technology; business management planning, networking and supervision; commercial and industrial management assistance; business centre services, namely, renting space within managed offices; business centre services, namely, renting business furniture, telephone and videoconferencing equipment, office equipment and machinery; business centre services, namely providing integrated telephone and computer data systems for others; business centre services, namely, providing services relating to the operation of offices such as secretarial, mail handling, kitchen and catering, paraprofessional, document reproduction, telephone answering, word processing and document management services; business centre services, namely, providing facilities for business meetings; human resources services, namely, search, recruitment and placement services; human resources services, namely, temporary staffing services; human resources services, namely, providing technical support workers, and other professional and non-professional workers to others on an outsourcing basis; human resources services, namely, secretarial services; human resources services, namely, career management services; human resources services, namely, employee and student communications and employer branding; human resources services, namely, career counselling services; human resources services, namely, personnel management consulting; online recruiting services, namely, providing searchable job postings and resume postings; advertising services, namely, personnel recruitment advertising and response management services; advertising agency services; preparation of advertising for others in the electronic and print media; advertising services, namely, providing coupons and discounts for goods and services offered by others; advertising services, namely, creating corporate logos for others, creating corporate and brand identities for others; rental of advertising space; directory agency; public relations services; publicity services, namely delivering the messages of others through news releases; Publicity services, namely, assisting others in developing public relations strategies; providing a computerized online business-to-business portal providing access to information, resources, business forms and non-downloadable software tools for use by businesses, governments, and non-governmental organizations; arranging and conducting networking opportunities and events on the subjects of business, law, technology, fair trade, sustainable development, civil society, and human rights; and arranging and conducting trade shows and conferences in the field of sustainable development, business, business management, and other public affairs; Charitable, not-for-profit fund-raising services for others; providing grants, financial support and direct technical assistance to non-governmental organizations and their recipients in the field of sustainable development, economics and economic development, governmental and social policy, public and social affairs, human and civil rights, education, legal reform, media and communications, international affairs, and the promotion of awareness of and fostering the development of a civil society; providing news, information, and consultation in the field of financial support to non-governmental organizations; providing news, information, and consultation pertaining to financial and investment matters as they relate to the field of sustainable development, economics and economic development, governmental and social policy, public and social affairs, human and civil rights, education, media and communications, and international affairs; providing grants for research and international fellowship programs; financial sponsorship of programs for the distribution of educational materials, namely, books, textbooks; financial research; financing of venture capital, namely, venture capital funding services to emerging and start-up companies; financial planning and consulting services; investment planning, consulting services; providing advice relating to insurance issues; arranging of insurance for others in relation to professional liability; financial research in the attainment of benefits, business interruption and loss determination; providing financial information, financial analysis and consultation; financial management; real estate management consultation; management and rental of commercial property; and providing information in the fields in the electronic and print media; Construction management consultation; construction planning, and construction supervision; telecommunication services, namely, telephone communication services, namely, local, long distance telephone communications services, audio and video teleconferencing services, electronic mail services, electronic transmission of images and data in the fields of business, law, technology, fair trade, sustainable development, civil society, and human rights via computer and a global computer network; Educational services, namely, conducting classes, seminars, workshops all in the field of best practices and techniques for businesses, organizations, people and societies in the areas of management, sustainability performance, engineering, construction, architecture, accounting, sustainability reporting, information technology, outsourcing, procurement, auditing, economics, human resources, insurance, law, consumer market research, marketing and sales (except in the field of sales and marketing skills for mortgage and home equity loans), communication and advertising, politics, public policy, leadership, environment, social affairs and public affairs, and distributing course materials in connection therewith, and all provided through workshops and seminars; educational services, namely, sponsoring and conducting educational, cultural, international student, and professional exchange programs, policy conferences, and research programs; educational services, namely, providing online publications, information, and news via web sites, online computer databases, streaming audio and video, and pod casts; educational services, namely, disseminating the educational materials of others; educational services, namely, conducting seminars, workshops and classes in the fields of business, law, technology, fair trade, sustainable development, civil society, and human rights; educational services, namely, providing a curriculum to schools that provides students with simulations and real-world experiences; arranging and conducting debates and speeches relating to current affairs and business affairs; information and entertainment services, namely, providing information and entertainment via web sites, online publications, online computer databases, journals, articles, streaming audio and video, and pod casts all relating to current affairs and business affairs; Mediation services in conclusion of commercial transactions for others; mediation of agreements regarding the sale and purchase of goods and services; mediation of disputes between two parties; computer services, namely, providing a computer communications database for the exchange of information and news about best practices and lessons learned between businesses, governments, non-governmental organizations and people in the areas of management, organizational performance, financial performance, sustainability performance, engineering, construction, architecture, sustainability reporting, information technology, procurement, economics, insurance, human resources, employment opportunities, law, industry market research, marketing and sales, public policy, business, leadership, environment, social affairs and public affairs; computer services, namely, providing on-line connectivity to databases to enable real-time interaction between computer users about best practices and lessons; providing information in the fields of information technology, computers and computer systems; consulting in the areas of computer, computer systems and information technology; computer services, namely, computer programming services for others; computer services, namely, developing websites for others; computer services, namely, operating websites for others; application service provider services, namely providing a server platform and third-party software that allows others to make fractional use of system resources and software licenses; application service provider services, namely providing integrated telephone and computer data systems for others; news agency services, namely, gathering and dissemination of news; Arranging and conducting of conferences, luncheon and dinner events and joint advertisement and promotional events in the fields of business, law, technology, fair trade, sustainable development, civil society, and human rights; Arranging of promotional operations and activities that allow people to sample the goods and services of others; recruiting sponsors; mediation in the placement of advertisements; administrative handling of financial sponsorship; information and entertainment services, namely production of programming to be distributed via television, streaming audio and video, and pod casts; scientific research and consultation, namely, providing industrial analysis and research related to technology change and sustainable development; scientific research and consultation, namely, providing social analysis and research related to public affairs; legal services; lawyer referral services; reviewing standards and practices to assure compliance with environmental, building code and zoning laws and regulation; engineering in the fields of environmental remediation, waste water purification and disposal, civil engineering, thermal engineering; and architectural design services.

 

 

TMA891,721

 

Goods

 

(1) Novelty items, namely, mugs; Printed materials, namely, pamphlets, reports, and printed guides, all in the field of best practices and techniques for businesses, organizations, people and societies in the areas of management, financial performance, sustainability performance, sustainability reporting, economics, marketing and sales (except in the field of sales and marketing skills for mortgage and home equity loans), media relations, communication and advertising, cultural activities, fair trade, public policy, leadership, environment, social affairs and public affairs; canvas shopping bags; stationery supplies, namely, pens, notepads, postcards,bumper stickers, decals; paper napkins; Clothing, namely, T-shirts and hats.

Services

 

(1) Association services, namely, promoting the interests and policy agenda of various organizations, namely, promoting public interest in and awareness of the importance of sustainable development that takes care of people, planet and profit, and promoting public interest in and awareness of the importance of other public and social affairs; arranging and conducting marketing programs with or on behalf of third parties to promote fundraising for and education about and support for sustainable development and other public affairs, namely, by the dissemination of printed materials and of other advertising materials; promoting public interest in and awareness of the need for financial support to non-governmental organizations and their programs; promoting public interest in and awareness of global issues and international cooperation; association services, namely, administration of charitable and philanthropic foundations, organizations, projects and activities; association services, namely, organizing and conducting awards programs; association services, namely, organizing and conducting luncheon and dinner events recognizing the achievements of private and public companies and governmental and non-governmental organizations for the purpose of fostering progress in sustainable development and in other public affairs; association services, namely, administering educational, cultural, international student, and professional exchange programs, and research programs in the fields of business, law, technology, politics, international relations, fair trade, sustainable development, civil society, and human rights; association services, namely, representing the interests of member firms and promoting ethical practice, technical competency and professional standards; association services, namely, administering international fellowship grant programs; association services, namely, promoting public awareness and participation regarding policy and legislative issues and leadership positions at community, local, state and national levels; association services, namely, distributing newsletters through mail, e-mail and facsimile transmissions; association services, namely, making phone calls, proposing policies and legislation, and encouraging members and the public at large to take action through lobbying and other means to help shape public policy, legislation and leadership positions; association services, namely providing information to members and the public at large regarding issues relating to policies, legislation and leadership positions at community, local, state and national levels; political action committee services, namely, promoting the interests of political candidates running for elected office; accounting services, namely, account and business auditing, sustainability auditing, tax preparation, bookkeeping and tax consulting; business and management consulting relating to training services, strategic planning services and sustainability advisory services; business process management and consulting; business marketing consulting services (except in the field of sales and marketing skills for mortgage and home equity loans); market research services, namely, conducting business, market research, and opinion poll surveys in the field of politics, economics, public, international, and social affairs, leisure, cultural activities and commercial affairs; opinion polling for business, non-business, political, advertising and non-advertising purposes; production and interpretation of information collected on public and consumer opinions and behavior within the scope of research, marketing, advertising studies, and satisfaction studies; and disseminating information relating to production and interpretation of information collected on public and consumer opinions and behavior within the scope of research, marketing, advertising studies, and satisfaction studies; conducting profit surveys; collection of data to a central file in the fields of politics, economics, social affairs, leisure, cultural activities and commercial affairs, and analysis of this data once collected; providing statistical information; providing demographic information and demographic consultation; message and stenographic transcription for others; data processing in the field of advertising, marketing and communication; computerized data base management; documentation services concerning conducting business and marketing research surveys and public opinion polls, all these services by means of computer; economic forecasting and analysis; cooperative advertising and marketing services, namely, pooling the advertising or marketing resources of others to enable results that individual participants could not produce at similar rates; procurement services, namely, purchasing office furniture, telephone equipment, oilfield tools, oilfield equipment, call center equipment, and security and monitoring equipment for others; waste disposal procurement, namely, purchasing of waste disposal equipment and services for others; procurement, namely, purchasing of travel services for others; energy supply purchasing procurement for others; providing information in the fields of sustainable development, business management, accounting and business marketing (except in the field of sales and marketing skills for mortgage and home equity loans); project management in the fields of specification; analysis services, namely, audit services in the fields of account auditing, auditing utility rates for others, business auditing, energy auditing, insurance premiums auditing; business information services in the field of sustainable development, business change management, business process management, business strategic management and planning services and business technology; business management planning, networking and supervision; commercial and industrial management assistance; business centre services, namely, leasing and renting space within managed offices; business centre services, namely, providing off-site managed office space for others; business centre services, namely, leasing and renting business furniture, telephone and videoconferencing equipment, office equipment and machinery; business centre services, namely providing integrated telephone and computer data systems for others; business centre services, namely, providing services relating to the operation of offices such as secretarial and clerical, mail handling, kitchen and catering, paraprofessional, document reproduction, telephone answering, typing, word processing and document management services; business centre services, namely, providing facilities for business meetings; business centre services, namely, preparation of payroll; business centre services, namely, administration of customer loyalty and incentive award programs for others; business centre services, namely, management and operation of business centers for others; providing human resources administration services for others; serving as a human resources department for others; human resources services, namely, search, recruitment and placement services; human resources services, namely, temporary staffing services; human resources services, namely, employee leasing services; human resources services, namely, providing call centre workers, technical support workers, and other professional and non-professional workers to others on an outsourcing basis; human resources services, namely, secretarial services; human resources services, namely, payroll services; human resources services, namely, providing business information on employment and careers; human resources services, namely, career management services; human resources services, namely, employee and job profiling; human resources services, namely, employee and student communications and employer branding; human resources services, namely, career counselling services; human resources services, namely, personnel management consulting; online recruiting services, namely, providing searchable job postings and resume postings; advertising services, namely, personnel recruitment advertising and response management services; advertising agency services; preparation of advertising for others in the electronic and print media; advertising services, namely, providing coupons and discounts for goods and services offered by others; advertising services, namely, creating corporate logos for others, creating corporate and brand identities for others; rental of advertising space; arranging newspaper and other subscriptions for third parties; directory agency; public relations services; publicity services, namely delivering the messages of others through news releases; Publicity services, namely, assisting others in developing public relations strategies; providing a computerized online business-to-business portal providing access to information, resources, business forms and non-downloadable software tools for use by businesses, governments, and non-governmental organizations; arranging and conducting networking opportunities and events on the subjects of business, law, technology, fair trade, sustainable development, civil society, and human rights; and arranging and conducting trade shows and conferences in the field of sustainable development, business, business management, and other public affairs; Charitable, not-for-profit and political fund-raising services for others; providing grants, financial support and direct technical assistance to non-governmental organizations and their recipients in the field of sustainable development, economics and economic development, governmental and social policy, public and social affairs, human and civil rights, education, legal reform, media and communications, international affairs, and the promotion of awareness of and fostering the development of a civil society; providing news, information, and consultation in the field of financial support to non-governmental organizations; providing news, information, and consultation pertaining to financial and investment matters as they relate to the field of sustainable development, economics and economic development, governmental and social policy, public and social affairs, human and civil rights, education, media and communications, and international affairs; providing grants for research and international fellowship programs; providing monetary exchange services; financial sponsorship of programs for the distribution of educational materials, namely, books, textbooks and software; financial research; financing of venture capital, namely, venture capital funding services to emerging and start-up companies; financial planning, consulting and management services; investment planning, consulting and management services; mutual fund investment and brokerage services; mutual fund portfolio management services; securities portfolio management services; providing advice relating to insurance issues; arranging of insurance for others in relation to the rental of managed offices or professional liability; financial research in the attainment of benefits, business interruption and loss determination; providing financial information, financial analysis and consultation; financial management; real estate management consultation; leasing, management, and rental of commercial property; real estate brokerage services; mortgage and insurance brokerage services; and providing news, information, and consultation in the fields in the electronic and print media; Construction management consultation; construction planning, and construction supervision; Telecommunication services, namely, telephone communication services, namely, local, long distance and mobile telephone communications services, audio and video teleconferencing services, electronic mail services, electronic transmission of images and data in the fields of business, law, technology, fair trade, sustainable development, civil society, and human rights via computer and a global computer network; press agency services; television broadcasting services; Educational services, namely, conducting courses, seminars, workshops and classes, all in the field of best practices and techniques for businesses, organizations, people and societies in the areas of management, organizational performance, financial performance, sustainability performance, engineering, construction, architecture, accounting, financial reporting, sustainability reporting, information technology, computerized information processing, managed offices, outsourcing, procurement, auditing, economics, insurance, human resources, law, industry market research, consumer market research, marketing and sales (except in the field of sales and marketing skills for mortgage and home equity loans), media relations, communication and advertising, leisure, cultural activities, fair trade, current events, world events, politics, public policy, the legislative process, government, business, leadership, networking, environment, social affairs and public affairs, and arbitration and mediation, and distributing course materials in connection therewith, and all provided through classes, workshops, seminars and via a global computer network; educational services, namely, sponsoring and conducting educational, cultural, international student, and professional exchange programs, policy conferences, and research programs; educational services, namely, providing online publications, information, and news via web sites, online computer databases, journals, articles, streaming audio and video, and pod casts; educational services, namely, disseminating the educational materials of others; educational services, namely, conducting courses, seminars, workshops and classes in the fields of business, law, technology, fair trade, sustainable development, civil society, and human rights; educational services, namely, providing a curriculum to schools that simulates sustainable development as it relates to business operations; educational services, namely, providing a curriculum to schools that provides students with simulations and real-world experiences; arranging and conducting debates and speeches relating to current affairs and business affairs; information and entertainment services, namely, providing information and entertainment via web sites, online publications, online computer databases, journals, articles, streaming audio and video, and pod casts all relating to current affairs and business affairs; Mediation services in conclusion of commercial transactions for others; mediation of agreements regarding the sale and purchase of goods and services; mediation of disputes between two parties; computer services, namely, providing a computer communications database for the exchange of information and news about best practices and lessons learned between businesses, governments, non-governmental organizations and people in the areas of management, organizational performance, accounting, financial performance, sustainability performance, engineering, construction, architecture, financial reporting, sustainability reporting, information technology, computerized information processing, managed offices, outsourcing, procurement, auditing, economics, insurance, human resources, employment opportunities, law, industry market research, consumer market research, marketing and sales, media relations, communication and advertising, leisure, cultural activities, fair trade, current events, world events, politics, public policy, the legislative process, government, business, leadership, networking, environment, social affairs and public affairs, arbitration and mediation, and the promotion of awareness of and fostering development of a civil society; computer services, namely, providing on-line connectivity to databases to enable real-time interaction between computer users about best practices and lessons; providing information in the fields of information technology, computers and computer systems; consulting in the areas of computer, computer systems and information technology; computer services, namely, computer programming services for others; computer services, namely, developing websites for others; computer services, namely, operating websites for others; application service provider services, namely providing a server platform and third-party software that allows others to make fractional use of system resources and software licenses; application service provider services, namely providing integrated telephone and computer data systems for others; news agency services, namely, gathering and dissemination of news; Arranging and conducting of conferences, luncheon and dinner events and joint advertisement and promotional events in the fields of business, law, technology, fair trade, sustainable development, civil society, and human rights; Arranging of promotional operations and activities that allow people to sample the goods and services of others; recruiting sponsors; advertising acquisition; mediation in the placement of advertisements; administrative handling of financial sponsorship; information and entertainment services, namely production of programming to be distributed via television, cable television, satellite television, radio, streaming audio and video, and pod casts; scientific research and consultation, namely, providing industrial analysis and research related to technology change and sustainable development; scientific research and consultation, namely, providing social analysis and research related to public affairs; legal services; lawyer referral services; reviewing standards and practices to assure compliance with environmental, public financial market, telecommunications, building code and zoning laws and regulation; engineering and engineering consulting in the fields of environmental remediation, transportation, water control and delivery, waste water purification and disposal, civil engineering, fire engineering, thermal engineering and hydrotechnical engineering; and architectural design services.

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2021-09-21

APPEARANCES

Wade Ferguson	For the Opponent
Eric Macramella	For the Applicant

AGENTS OF RECORD

No Agent Appointed	For the Opponent
Gowling WLG (Canada) LLP	For the Applicant