A recent decision of the Federal Court emphasizes the importance of considering the effect of the material date for each ground of opposition.
The Facts
The Servicemaster Company (the “Applicant”) filed trademark applications for two trademarks: SERVICEMASTER CLEAN (the “Word Mark”) and SERVICEMASTER CLEAN & Design (the “Design Mark”) for use in association with the services which included services and disaster restoration services, namely restoring building interiors and exteriors damaged by fire, flood, and other disasters, based on use since October 1997.
The Design Mark appears as follows:
385229 Ontario Ltd., doing business as, Masterclean Service Company (the “Opponent”) is the owner of the registered trade-mark MASTER CLEAN for use in association with wares, being “carpet cleaning machines”, and the services “restoration, renovation and cleaning services”.
The opponent opposed each of the applications on the basis that the applied for marks were:
a) not registrable because they were confusing with the Opponents registered trademark MASTERCLEAN, the (“Registrability ground”). The material date for this ground of opposition is the hearing date of the opposition.
b) the Applicant was not the person entitled to registration of its applied for marks because at the date which the Applicant claimed that it first used the marks, they were confusing with the Opponent’s previously used MASTERCLEAN trademark, the (“Entitlement ground”). The material date for this ground of opposition was October, 1997.
The Decision of the Trade-mark Opposition Board
The Hearing Officer allowed the oppositions and dismissed the applications. In both oppositions the ground based on the Entitlement ground succeeded. The Hearing Officer concluded that the probabilities of confusion between the respective marks, as of the Applicants date of first use, were evenly balanced between a finding of confusion and of no confusion.
While MASTER CLEAN was not the type of mark that is typically accorded a broad scope of protection and the Applicant’s Word Mark has a different beginning from the Opponent’s mark, only the Opponent had acquired a reputation in association with its mark as of the date of first use. In addition, the parties were competitors and the Applicant’s Word Mark consisted of the Opponent’s entire mark preceded by the inherently weak word SERVICE. Since the legal burden was on the Applicant to establish, on a balance of probabilities, that the marks were not confusing with the Opponent’s trademark, the Entitlement ground succeeded
The Hearing Officer made other findings concerning the Registrability ground but this ground was decided as of the hearing date of the oppositions. The difference in outcome between the Entitlement ground and the Registrability ground was also attributable, in part, to the fact that the evidence of co-existence without confusion, as well as the evidence of third party use of similar marks, could not be considered under the Entitlement ground.
The Appeal
The Applicant appealed to the Federal Court and submitted new evidence to show a lengthy period of co-existence without any instances of confusion as well as other evidence.
The Applicant challenged the Hearing Officer’s findings on the relevance of evidence that post-dated the date of first use. It was asserted that the exclusion of such evidence was an error in principle. As a matter of logic, it was argued that the inference to be drawn from lack of evidence of confusion for over 15 years should be considered to give an indication as to whether there was a likelihood of confusion at the date of first use.
The Judge refused to accept this argument. The Hearing Officer’s conclusion was based on a literal interpretation of the words used in the Act which requires that the analysis be determined at the date of first use. It was not enough to resort to “logic” to support the challenge. Only a properly framed statutory interpretation argument establishing that the Registrar’s literal interpretation of the Act was not correct, when viewed in the context of compelling evidence and, or, compelling precedent, would suffice and none was advanced.
Comment
The decision emphasizes the importance of considering the impact of the material date for each ground of opposition. While the hearing officer’s conclusion seems highly technical presumably it was “reasonable” within the meaning of this term as it applied to appeals of this nature.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.