Date: 19981130
Docket: T-1458-95
BETWEEN:
AIRCRAFT TECHNICAL PUBLISHERS
Applicant
-and -
ATP AERO TRAINING PRODUCTS INC.
Respondent
REASONS FOR ORDER AND ORDER
BLAIS J.
[1] This is an application brought pursuant to section 57 of the Trade-marks Act wherein the applicant seeks the expungement of Canadian Trade-mark Registration No. TMA 370,805 for the trade-mark ATP owned by the respondent herein.
THE FACTS
[2] The applicant Aircraft Technical Publishers ("Aircraft") is a corporation organized and existing under the laws of the state of California.
[3] The respondent is a company which was incorporated according to the laws of British Columbia in 1980 under the name "Bomber Joe"s Bookstores Limited", but which changed its name to "ATP Aero Training Products Inc." by special resolution made on March 31, 1988.
[4] Aircraft is in the business of producing, updating and selling technical literature and libraries pertaining to the construction, maintenance and repair of aircraft.
[5] The respondent Aero operates through one shop located at the Vancouver International Airport.
[6] Aero has used the trade-mark ATP since at least April 8, 1987 in relation to wares and services described as aviation training, aviation navigational clipboard, aviation navigational instruments, aviation computer software, aviation audio training cassettes, aviation radio replacement parts, aviation uniforms and shirts, aviation technical books and manuals.
[7] The applicant represents that it has used the trade-mark ATP in both word and design format to designate and distinguish its technical literature and libraries in both the Canadian and U.S. marketplaces, since 1975.
[8] One of the design formats used by the applicant comprises the letters ATP in combination with the graphic representation of a film strip ("ATP Film Strip Design"). The ATP Film Strip Design is registered in the United States under No. 1,213,439 in the name of the applicant.
[9] In 1993, the applicant introduced a new design mark comprising the letters ATP in combination with the representation of an airplane and a jet stream (ATP Jetstream Design). The ATP Jetstream Design is registered in the United States under No. 1,862,702 in the name of the applicant.
[10] The respondent has registered the trade-mark "ATP and Design" in Canada on July 13, 1990 and the registration mentions that the respondent has used the trade-mark ATP since at least April 8, 1987.
[11] In the summer of 1990 the owner of the respondent, Mr. Reilly Burke ("Mr. Burke") decided to approach the applicant Aircraft to determine whether the companies could enter into a business arrangement.
[12] As it was demonstrated by the evidence before the Court, the trade-mark ATP (in word or design form) appears on applicant"s products or is applied to the packaging and labelling of those products. It also appears on invoices or picking slips which accompany the products at the time of sale as many exhibits have demonstrated before the Court.
[13] Documents filed in the Court by the applicant reflect sales as far as September 24, 1975.
[14] The applicant has demonstrated that the products were advertised and sold extensively in the aviation industry throughout Canada.
[15] The applicant has also demonstrated that its customers were found in both the public and private sectors including government agencies such as Canadian Aviation Safety Board, Transport Canada, Ontario Ministry of Natural Resources, and the Transportation Safety Board, educational institutions, commercial airlines, flying clubs, manufacturers of aircrafts and parts, large corporations with private aircrafts.
[16] The applicant has demonstrated sales to many of those businesses from 1975 until 1995.
[17] It was not surprising that the respondent"s owner, Mr. Burke, after having registered its trade-mark, has approached the applicant to do business together.
[18] I have reviewed the correspondence between the two parties and I understand that since the very beginning of their discussions, sales and business relations, there has been a problem relating to which company whether the applicant or the respondent was the owner of the trade-mark ATP.
[19] I understand that after those business relations started in fall of 1990, the respondent has used or tried to use the applicant"s film strip logo that was a registered trade-mark in the United States.
[20] The respondent finally accepted to abandon the use of this film strip logo.
[21] From the evidence filed by the applicant and particularly through the affidavit of Mr. Michael Sandifer, applicant"s former vice-president of business development, the affidavit of Mr. A.L. Hurd, Jr., regional sales manager for the applicant from 1976 to July 30, 1985, the affidavit of the former marketing director for the applicant, Ms. Julie McNulty, and the affidavit of Mr. R.J. Peacock, who has been involved with the Canadian aviation industry for over twenty-eight years, it is clear in my mind that the applicant was involved in marketing and sales in the Canadian market from 1976 until 1995.
[22] The respondent has decided not to cross-examine those affiances.
[23] I understand that the respondent is a corporation that carries on business at the Vancouver International Airport and is involved in the business of manufacturing and distributing training manuals, software and videos regarding the operation and maintenance of aircraft such as navigational clipboard, aviation navigational instruments, aviation uniforms and shirts.
[24] When the respondent"s president decided to approach the applicant to enter a contract to become a distributor of the applicant"s products in Canada, it is clear that the respondent wanted to enjoy the reputation and goodwill in Canada of the applicant.
[25] Obviously, the two companies, the applicant and the respondent, are not involved in exactly the same ware and services; nevertheless, they are in the same area meaning aviation and aircraft documents and it is a small world as was mentioned in the affidavits.
[26] I understand that for business reasons, the applicant decided to make the respondent a distributor of its products on an unexclusive basis for the region of Western Canada, as it appears from the evidence.
[27] It is also clear from the evidence that the applicant continued to sell his products throughout Canada, both directly to customers and through other distributors in Canada. The applicant was in business with a distributor named Upper Valley Aviation in Western Canada; less than a year after the applicant and the respondent started their business relationship, the respondent came into litigation with Upper Valley Aviation Company.
[28] I understand that from the very beginning of their business relationship, neither the applicant or respondent"s company has agreed as to the ownership of the trade-mark ATP.
[29] Given that no agreement was reached by the parties over their on and off business relationship, the contract between the two parties was terminated in June 1993.
[30] On July 10, 1995, the applicant started the actual proceedings seeking the expungement of the respondent trade-mark registration.
ISSUES
[31] Assuming that the onus of proof in the circumstances is on the applicant, there are two issues to be determined:
| 1. Was the respondent entitled to register the trade-mark ATP? |
| 2. Was ATP distinctive of the respondent at the commencement of proceedings? |
[32] Aero raised a supplementary issue:
| 3. Does the delay of the applicant in challenging the trade-mark provide for a presumption in favour of the respondent regarding the validity of its registration? |
| 1. Was the respondent entitled to register the trade-mark ATP? |
[33] The argument of the applicant can be summarized as follows:
| - The applicant has used this trade-mark ATP prior to the respondent, since 1975 for the applicant versus 1987 for the respondent; |
| - The applicant has never abandon the trade-mark; |
| - The trade-mark ATP is confusing pursuant to section 6(5) of the Trade-mark Act because: |
| - It represents the initials of both companies; |
| - The applicant"s mark ATP was more widely known than the ATP for the respondent; |
| - The applicant has used this mark for a longer period of time; |
| - The nature of wares and services of business is similar; |
| - The nature of the trade is similar: sell and distribute retail goods in the aviation industry; |
| - High degree of resemblance in the mark: letters ATP being predominant. |
[34] The arguments of the respondent are as follows:
| - The applicant has not proven that it has used the trade-mark ATP in Canada; |
| - The invoices submitted by the applicant do not show how goods were marked; |
| - Most of the invoices are dated later than 1987; |
| - Allegations that a trade-mark is being used in Canada must be supported by evidence showing the use of it; |
| - And finally, the applicant has not proven that the trade mark is confusing because there is no evidence to suggest that anybody has expressed confusion between the two companies. |
[35] Relating to the question of the invoices that were filed in support of the applicant"s application, I have reviewed the jurisprudence submitted by the applicant and particularly in Gordon A. MacEachern Ltd. v. National Rubber Co. Ltd.1 where it is stated:
Now the question as to whether an invoice or invoices with the inscription of the trade mark thereon in association with wares are associated to a point that the receiver would thereby get notice of the association is, of course, a question of fact.
Having decided that proof of a number of sales or transmutations of goods or wares is before this court and that in all cases invoices were forwarded and received by the buyers, I have no difficulty in finding that the reception of these invoices with the trade mark inscribed thereon in association with the goods, in the normal course of trade of the applicant company"s is sufficient evidence of notification and of use as set down in s. 4(1) of the Act and that, consequently, the trade mark is thereby "so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred".
[36] The applicant"s counsel also referred to Boliden Aktiebolag v. Osmose Wood Preserving Co. of Canada Ltd.2, where Justice Heald stated:
I have the further view that the use by the applicant of its marks in numerous invoices in respect of Canadian sales during the relevant period is also a trade mark use in Canada...The evidence adduced establishes extensive and continuous use from 1961 through 1971, long after the critical date of October 5, 1965. Likewise, I am satisfied that the applicant"s marks are "trade marks" within the meaning ascribed to that term in s. 2 of the Act and that the applicant has used said marks in Canada as trade marks.
[37] The applicant"s counsel also referred to the Hartco Enterprises Inc. v. Becterm Inc.3, where Justice Dubé stated:
The applicant has annexed to the two affidavits of his vice-president, Meyer Hart, a large number of photocopies of correspondence and invoices bearing the mark MULTIMICRO in its letterhead, dating from 1981 throughout the succeeding years.
...
It is well established that the likelihood of confusion is a question of fact and may exist between trade marks or trade names or both and the actual confusion need not be proved.
...
Moreover, the "raison d"être" of the Act is primarily to protect the public: there is a strong public interest in maintaining the purity of the register. Public interest ought to transcend rival claims between parties:...Thus, s-s. 57(1) of the Act calls for the expungement of the entry in the register where, at the date of the application, such entry did not accurately reflect the existing rights of the person appearing to be the registered owner of the mark. On November 13, 1983, the mark MULTIMICRO was already in use by the applicant in association with computers and the respondent therefore had no existing rights to the mark MULTI-MICRO in association with computers.
[38] I have noticed in reading the affidavit of Mr. Peacock, from Calgary, that this individual has utilized the services of the applicant from 1973 to 1994. That represents more than twenty years. This is a clear evidence that was not contradicted.
[39] The applicant"s counsel was accurate when he raised the point that the fact that the respondent wanted to stop the applicant and one of its distributors in British Columbia from using the trade-mark ATP is evidence that there is confusion. This constitutes an admission by the respondent that there is confusion.
[40] It is clear that the applicant has met its evidential burden of proof in this regard, referring to invoices and documents to customers in Canada from 1977 to 1995 and affidavits filed in support.
[41] The applicant"s counsel is also accurate when he mentioned that the respondent is inconsistent when he argues on one side that there is no confusion at all and on the other side, that the applicant and its distributor in British Columbia cannot use the trade-mark of the respondent or that they have to obtain their permission first. The Honourable Justice Pigeon in S.C. Johnson & Son, Ltd. et al. v. Marketing International Ltd.4, raised the same point in that case, at page 27:
It appears to me that the Johnsons are now in a dilemma. In order to succeed on their claim for infringement they must under s. 20 establish that respondent"s use of "Bugg Off" is confusing. On the other hand, by virtue of para. 12(1)(d) OFF! as not validly registered if confusing with BUGZOFF.
[42] Even in the affidavit of Mr. Burke, the owner of the respondent, the opinion he expressed in paragraph 9 is slightly different from the position that was adopted in the letter sent to the applicant"s distributors in 1990.
[43] I also refer to Justice Teitlebaum in BMB Compuscience Canada Ltd. v. Bramalea Ltd.5 when he mentions:
As I have stated, I believe it is established law that a prior user of a trade mark may request the court to expunge a registration of a trade mark registered by another party if the requesting party can effectively prove prior usage and confusion will occur.
[44] Concerning the argument of the respondent that there were not enough use of the trade-mark by the applicant before 1987 to justify the applicant"s demand, I think we could see what Justice Rouleau said in G.H. Mumm & Cie v. Andres Wines Ltd.6 at page 201:
...it is sufficient for the trade mark to appear elsewhere than on the product itself so long as notice of the association is given to those for whom it is intended.
[45] Mr. Justice Rouleau indicated also at page 200 that on the question of how much use was required to satisfy the Act that there
may be as little as usage on a single occasion.
[46] Justice Teitlebaum and Justice Rouleau refer also to s. 4(1) of the Trade-marks Act in The Canadian Law of Trade-Marks and Unfair Competition, 3rd ed. (1972), where Fox has this to say at pp. 59 and 60:
...it is not essential that the trade mark be actually attached to the wares themselves or that it be placed on the packages in which they are distributed. That, of course, constitutes good trade mark use, but it is also sufficient if the trade mark is in any other manner so associated with the wares that notice of the association is given to the person to whom the property in or possession of the wares is transferred. Any of these acts must, by definition, take place at the time of the transfer of the property in or the possession of the wares or there is not adequate trade mark use...
[47] Reviewing the arguments of both parties and the jurisprudence, it appears clear that the applicant has met its evidential burden of proof by demonstrating that it has used the trade-mark ATP prior to the respondent, notably since 1975.
[48] The applicant has also demonstrated that he has sent invoices all over in Canada since 1975.
[49] I agree with the respondent"s counsel that most of the invoices were dated later than 1987. Most but not all and it cannot be expected that companies keep a large amount of invoices over ten or fifteen years old.
[50] There was a lot of evidence filed showing the use of the trade-mark in Canada by the applicant. The reputation of the company was there and the fact that the respondent communicated on its own with the applicant asking to become a distributor for the applicant"s products, is more evidence as to the reputation of the applicant"s products in Canada.
[51] The applicant has also proven that the trade-mark is confusing since many customers have mentioned it to the applicant"s employees, as shown by the affidavits that were filed.
| 2. Was ATP distinctive of the respondent at the commencement of proceedings? |
[52] One of the applicant"s arguments is that the prior use of the trade-mark by the applicant has established a reputation for its goods. It was also admitted in a letter to the applicant from the respondent which stated:
Our product line is such that our customers ask us about the availability of your products.
[53] The applicant also suggested that the respondent even tried to associate itself to its pre-existing reputation when it sought to link its name with it. When the applicant was distributing for the applicant, it advertised: "ATP Canada is... Aero Training Products!".
[54] The respondent argued that when marks are abbreviations, they are not inherently distinctive and small differences may be accepted to distinguish such mark from another. This assertion from the respondent is not accurate: for example in GSW Ltd v. Great West Steel Industries Ltd. et al.7, a case referred to by the respondent, the letters were the same but in a different order: GSW vs. GWS. And additionally, there was a difference in the nature of the wares and substantial differences in the channels of trade.
[55] In Canada Systems Group Ltd. v. 96028 Canada Inc.8, another case referred to by the respondent, the use of the same letters CSG was determined as being not confusing because 1) the opponent"s mark was known only for a short period of time and 2) respective wares, services and trades were totally different: detergent v. computers.
[56] The respondent also suggested that because the applicant did not even know of Aero"s existence prior to 1990 it shows that there was no confusion and offers guarantee for the future.
[57] The affidavits filed by the applicant have proven that there is confusion and we should remember that the respondent has registered the trade-mark "ATP and Design" on July 13, 1990, and that pursuant to the law, this Court has to answer this question: "Was ATP distinctive of the respondent at the commencement of proceedings?" (Emphasis added)
[58] The respondent suggested that the two companies are involved in very different activities: navigational training and the operation of aeronautic equipment v. mechanical maintenance and repair aviation equipment.
[59] I think it is exaggerated to say that the activities are very different; they both have to do with aviation industry and, as I mentioned earlier, this is a small world.
[60] The respondent mentioned that the channels of trade are different. Referring to section 6(5) of the Trade-marks Act Annotated which provides commentary on the likelihood of confusion and the determination of confusion:
... the existence of a likelihood of confusion is a matter of first impression and not a matter of close scrutiny.9
The courts should put themselves in the place of an average purchaser having an imperfect recollection of the trade-marks or trade names being compared. The trade-marks or trade-names should be considered in their entirety and their degree of resemblance should be considered from the point of view of the appearance, sound and idea suggested.10
[61] Since in my view the nature of the wares can be seen as similar because they come from the same general class i.e. aviation products, it can be said that an average purchaser would likely be lead to the inference that the wares associated with the trade-marks or the businesses are those of the same person.
[62] If the slight difference of wares is the only element of distinction it is not sufficient to remove the likelihood of confusion between the two marks used in association with aviation products.
[63] Finally, relating to the supplementary question.
| 3. Does the delay of the applicant in challenging the trade-mark create a presumption in favour of the respondent? |
[64] I do not think so because the real moment when the applicant learned about the respondent"s existence and involvement in their concurrent sector, is when the respondent"s president sent a letter in June 1990 asking to become a distributor for the applicant.
[65] They then engaged in a difficult business relationship for close to three years and during those three years, the two parties never really recognized the rights on ATP trade-mark.
[66] They terminated their business relationship in 1993 and within the legal time frame, the applicant has commenced these proceedings.
[67] I understand that the two parties acted in good faith and that no presumption was created in favour of any of the two companies and this Court has to appreciate the evidence that was filed before it and answer the two following questions:
[68] Was the respondent entitled to register the trade-mark ATP in 1990? The answer is no.
[69] Was ATP distinctive of Aero at the commencement of proceedings in 1995? The answer to that question is no.
[70] For these reasons, the registration should be expunged.
[71] THIS COURT ORDERS THAT:
| - Canadian Trade-mark Registration No TMA 370, 805-ATP be expunged from the registry. |
| - This application be allowed with costs to the applicant. |
Pierre Blais
Judge
OTTAWA, ONTARIO
November 30, 1998
__________________2 14 C.P.R. (2d) 222. at p. 228.
3 24 C.P.R. (3d) 223 at p. 228.
5 36-22 C.P.R. (3d) 561 at 569.
6 (1984), 3 C.P.R. (3d) 199, 3 C.I.P.R. 277 (F.C.T.D.).
9 Hugues G. Richard, Jacques A. Léger, Georges T. Robic, Canadian Trade-marks Act Annotated , vol. 1 (Don Mills, Ontario: Richard de Boo, 1984-) at 6-5.