Date: 20050726
Docket: T-20-04
Citation: 2005 FC 1029
Ottawa, Ontario, this 26th day of July, 2005
Present: THE HONOURABLE MR. JUSTICE O'REILLY
BETWEEN:
AUTODATA LIMITED
Applicant
and
AUTODATA SOLUTIONS COMPANY
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
I. Facts
[1] Autodata Ltd. ("AL") applied to register the trade-mark "AUTODATA" for printed materials used for automotive maintenance and repairs. Most of its sales are to tool companies, repair shops, parts vendors and mechanics.
[2] Autodata Solutions Company ("ASC") opposed AL's application. ASC holds a registered trade-mark for "AUTODATA" and has also used the trade-names "Autodata" and "Autodata Marketing Systems Incorporated". ASC uses its name and mark for printed materials and software containing technical data about automobiles. Its clients are mainly new and used vehicle dealerships, fleet management companies and car manufacturers.
[3] ASC argued two issues before the Trade-marks Opposition Board. First, it contended that AL was not entitled to register its proposed mark because of the likelihood of confusion with ASC's trade-names and trade-mark (ss. 16, 38(2)(c) of the Trade Marks Act R.S.C. 1985, C. T-13 (relevant sections of the Act are set out in the attached annex)). Second, ASC maintained that the proposed mark was not distinctive, again because the mark would likely be confusing (s. 38(2)(d)). The Board found in ASC's favour. AL appeals. I have found no basis for overturning the Board's decision and, therefore, must deny AL's appeal.
A. The Burdens of Proof
[4] To argue that AL was not entitled to register the proposed mark, ASC had to meet an initial evidentiary burden: to show that it was using its trade-mark and trade-names before AL applied for its proposed mark (i.e. before June 3, 1996), and that it did not abandon that use before the application was advertised (i.e. before November 25, 1997). Once it met this preliminary threshold, the burden shifted to AL to prove that confusion between its proposed mark and ASC's name and mark would be unlikely.
[5] To argue that AL's proposed mark lacked the essential quality of distinctiveness, ASC had to meet a slightly different initial burden: to show that its trade-mark and trade-names had become sufficiently well-known as of the date the application was advertised (i.e. November 25, 1997) that AL's proposed mark could not be said to be distinctive. At that point, the burden shifted to AL to show that confusion would be unlikely.
B. Decision of the Trade-marks Opposition Board
[6] The Board found that ASC had met part, but not all, of its evidentiary burden. While ASC had shown use and non-abandonment of the trade-name "Autodata Marketing Systems Incorporated" (the name it used until 1999), it had failed to prove non-abandonment of the trade-mark and trade-name "Autodata". The Board found that ASC had abandoned use of "Autodata" well before November 25, 1997. Accordingly, ASC had not met its obligation to prove non-abandonment and public knowledge of its use of "Autodata". However, it had met its evidentiary burdens in relation to the trade-name "Autodata Marketing Systems Incorporated" by showing use, non-abandonment and an established reputation. The burden then fell on AL to establish that its proposed mark "AUTODATA" would probably not be confused with "Autodata Marketing Systems Incorporated".
[7] After considering all of the surrounding circumstances, the Board concluded that AL had failed to prove that its proposed mark would not be confusing. Accordingly, ASC succeeded on both grounds of opposition.
C. Standard of Review
[8] The parties agree that I should overturn the Board's decision only if it was unreasonable, unless I find that there is new evidence before me that would have affected the Board's conclusions. If that is the case, I should decide whether, in light of all the evidence, the Board's decision was correct: Molson Breweries v. Labatt Brewing Co., [1996] F.C.J. No. 782 (T.D.) (QL).
[9] AL presented new evidence before me and claimed that this evidence would have materially affected the Board's conclusions. In particular, AL tendered an affidavit emphasizing that AL's clientele is confined to the automotive "after market" - garages, repair shops, mechanics and the like - whereas ASC targets manufacturers and dealers. Further, according to the affidavit, AL produces written materials exclusively, while ASC mainly sells software.
[10] AL filed a second affidavit to which are attached a number of print-outs from the internet showing AL's products for sale. These print-outs show that AL's wares are repair manuals that can be purchased through distributors specializing in automobile parts and repairs. The affidavit also includes excerpts from various dictionaries for the term "after market".
[11] In addition to these new affidavits, AL has filed further cross-examinations of Mr. Gregory Perrier, President of ASC, and of Mr. James Arnold, an experienced car sales manager. AL contends that the evidence of these witnesses supports its position that the wares of AL and ASC are unalike and are directed to different segments of the automotive market.
[12] AL relies on this new evidence in an attempt to show that the Board erred when it found that there was overlap in the parties' channels of trade and strong similarities in their wares, which were factors contributing to the likelihood of confusion. AL urges me to consider this new evidence, evaluate the Board's decision on a standard of correctness and, ultimately, overturn it. I find, however, that this new evidence would not have materially affected the Board's decision. The Board clearly recognized that there were "differences between both the specific wares/services of the two parties and the ultimate user of each of their products". However, it also found overlap to the extent that both parties target at least some part of the automotive after market. AL sells to persons involved in maintaining and repairing vehicles, which can include both new and used vehicle dealerships. Given that ASC also sells to dealerships, the Board found that the clientele of the parties overlaps. There is nothing in AL's new evidence that contradicts the Board's findings. Accordingly, I must decide whether the Board's decision on the issue of confusion was reasonable on the evidence before it.
[13] ASC has also tendered new evidence in an effort to show that the Board erred when it held that ASC had abandoned its use of "Autodata". In light of my conclusion that AL's appeal should be dismissed, it is unnecessary for me to consider whether the Board's decision could be upheld on the additional ground put forward by ASC.
II. Issues
1. Can ASC claim use of "Autodata Marketing Systems Incorporated"?
2. Did the Board err in its conclusion that ASC had shown use of "Autodata Marketing Systems Incorporated" in relation to the relevant wares and purchasers?
3. Was the Board's conclusion that AL's proposed trade-mark "AUTODATA" would likely be confused with ASC's trade-name "Autodata Marketing Systems Incorporated" reasonable on the evidence?
III. Analysis
1. Can ASC claim use of "Autodata Marketing Systems Incorporated"?
[14] The original opponent to AL's proposed trade-mark was "Autodata Marketing Systems Incorporated" (AMSI), which later became "Autodata Marketing Systems Company". In 1999, it changed its name again to "Autodata Solutions Company" (ASC). AL argues that the Board erred in finding that ASC could claim use of the trade-name "Autodata Marketing Systems Incorporated". In particular, AL alleges that there is no evidence that AMSI's intellectual property was transferred to ASC. During discoveries, AL sought, but was denied, details of the amalgamation and share purchase that led to the creation of ASC. Without that evidence, AL claims, ASC cannot prove that it is entitled to the benefit of prior use of the trade-name "Autodata Marketing Systems Incorporated".
[15] This issue appears not to have been canvassed before the Board. The Board clearly found that ASC had proved use and public knowledge of "Autodata Marketing Systems Incorporated", without reference to ASC's corporate structure or pedigree. It simply noted that, in 2000, it had allowed ASC to amend its statement of opposition to reflect the new company name.
[16] It appears to have been taken as a given before the Board that ASC could claim prior use of "Autodata Marketing Systems Incorporated". I have no basis, therefore, on which to question ASC's entitlement to oppose AL's proposed mark. Nor do I have any evidence before me suggesting that the Board's approach was incorrect.
[17] AL argues that ASC had the burden of showing that it actually used "Autodata Marketing Systems Incorporated" and that it has failed to discharge this initial evidentiary burden. But the Board found that ASC had met this burden. What AL is really claiming is that the Board should not have accepted ASC's evidence on this point because the exact nature of the relationship between ASC and AMSI had not been established. Without that, AL contends, the Board's finding regarding ASC's use of the trade-name "Autodata Marketing Systems Incorporated" cannot stand.
[18] In my view, AL should have raised this issue at the point at which ASC moved to amend its statement of opposition. Once the Board accepted that the substitution of ASC for AMSI was merely a change of company name, it was open to the Board to treat evidence relating to the use of "Autodata Marketing Systems Incorporated" as enuring to ASC's benefit. There is simply no basis on which I can disturb the Board's decision on this issue.
2. Did the Board err in its conclusion that ASC had shown use of "Autodata Marketing Systems Incorporated" in relation to the relevant wares and purchasers?
[19] AL argues that ASC failed to prove that it used the trade-name "Autodata Marketing Systems Incorporated" in any significant sense - in other words, that ASC may have used that trade-name, but it did not use it in relation to products or customers that are relevant to the segment of the automotive market that AL targets. In particular, AL argues that ASC has no significant relationship with the automotive after market and, accordingly, that the Board erred in finding that ASC had met its initial evidentiary burden of showing use and an established reputation in an area of trade closely connected to AL's business.
[20] Again, AL disputes the Board's conclusion that the parties' channels of trade overlap. It contests the Board's findings that ASC produces written materials and that its products are directed to the automotive after market. AL contends that there was no evidence before the Board supporting those conclusions.
[21] To meet its initial evidentiary burden as an opponent, ASC had to show that it used its trade-name in the ordinary course of trade: Professional Publishing Associates Ltd v. Toronto Parent Magazine Inc., [1986] F.C.J. No. 158 (T.D.)(QL). It did not have to show that its customers were the same as AL's or that it sold the same wares. Once the opponent met its initial burden, it fell to the applicant for the trade-mark, AL, to show that confusion would be unlikely. The analysis of confusion includes consideration of the nature of the parties' wares and their respective channels of trade. But the opponent did not have an initial burden to show that it used its mark or name in relation to the same wares or in respect of the same channels of trade as those of the applicant. It merely had to show use of the relevant mark or name.
[22] The evidence before the Board indicated that ASC had used the trade-name "Autodata Marketing Systems Incorporated" during the relevant time frame. Accordingly, the Board correctly put AL to its proof of a lack of confusion.
3. Was the Board's conclusion that AL's proposed trade-mark "AUTODATA" would likely be confused with ASC's trade-name "Autodata Marketing Systems Incorporated" reasonable on the evidence?
[23] The Board considered all of the relevant circumstances, as well as the applicable statutory criteria (as contained in s. 6(5) of the Trade-marks Act), in concluding that AL had failed to prove that confusion was unlikely.
(a) Inherent Distinctiveness and Public Knowledge
[24] The parties agree that there is little inherent distinctiveness in the names "Autodata" and "Autodata Marketing Services Incorporated". The Board agreed, stating that the word "Autodata" was merely suggestive of the wares or services with which it was associated.
[25] In terms of the extent to which "Autodata" and "Autodata Marketing Systems Incorporated" had become known, the Board noted that AMSI had significant sales in Canada ($700,000 in each of 1996 and 1997) and that articles about it had appeared in major newspapers. AL showed no public knowledge in Canada of the trade-mark it was proposing to register. Accordingly, this factor favoured ASC's position that AL's proposed mark would likely be confused with the "Autodata Marketing Systems Incorporated". I see nothing unreasonable in the Board's conclusion on that point.
(b) Length of Use
[26] AL argues that the Board failed to take adequate account of the fact that AL had used its proposed mark in the United Kingdom since 1976 and in the U.S. since 1992. However, the material dates for determining confusion were the date of AL's application (i.e. June 3, 1996) and the date the application was advertised (i.e. November 25, 1997), both of which were prior to any use by AL in Canada. The Board's conclusion that this factor also favoured ASC was reasonable.
(c) Nature of the Wares, Services , Business and Trade
[27] As mentioned, the Board considered the respective wares and services of the parties and concluded that there were differences between them. AL primarily produces manuals and other printed materials used in repairing and maintaining automobiles. ASC primarily produces software programs that are used to help purchasers, especially large purchasers such as dealers, leasing companies and the like, compare different vehicle models and make their choices accordingly. However, some of ASC's data are compiled in written reports, such as the National Incentive Reports.
[28] As I read the Board's decision as a whole, it appears that the Board considered the differences between the wares and services of the parties as lending some support to AL's contention that confusion between the two businesses was unlikely. However, the Board clearly determined that the overlap in the marketplace diminished the extent to which this factor could be said to favour AL's position. The Board analyzed the evidence fairly and thoroughly. I cannot find that its analysis was unreasonable.
(d) Degree of Resemblance
[29] The Board noted that AL proposed to register the beginning or dominant part of ASC's trade-name "Autodata Marketing Systems Incorporated". Obviously, there is a strong degree of resemblance between the proposed mark and that trade-name.
[30] AL argues that the Board failed to consider the appearance of the parties' respective marks and names within the design elements of their logos. However, AL was seeking registration of the word "Autodata". In the circumstances, the relevant consideration was the resemblance between the word "Autodata" and the trade-name "Autodata Marketing Systems Incorporated" in sound, appearance and ideas. The Board's recognition of a high degree of similarity was reasonable.
IV. Conclusion
[31] I cannot find any basis for overturning the Board's conclusion that AL's proposed mark would likely be confused with ASC's trade-name. Considering all of the relevant factors and circumstances, I find that the Board's conclusion was reasonable. Therefore, I must dismiss AL's appeal.
JUDGMENT
THIS COURT ORDERS that:
1. The appeal is dismissed with costs.
"James W. O'Reilly"
Judge
Annex
| Trade-marks Act, R.S.C. 1985, c. T
When mark or name confusing What to be considered
6. (5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; (b) the length of time the trade-marks or trade-names have been in use; (c) the nature of the wares, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
Registration of marks used or made known in Canada
16. (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with wares or services is entitled, subject to section 38, to secure its registration in respect of those wares or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with (a) a trade-mark that had been previously used in Canada or made known in Canada by any other person; (b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or (c) a trade-name that had been previously used in Canada by any other person.
Grounds 38. (2) A statement of opposition may be based on any of the following grounds: ... (c) that the applicant is not the person entitled to registration of the trade-mark; or (d) that the trade-mark is not distinctive. |
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Marques de commerce, Loi sur les, L.R.C. 1985, ch. T Quand une marque ou un nom crée de la confusion Éléments d'appréciation
6. (5) En décidant si des marques de commerce ou des noms commerciaux créent de la confusion, le tribunal ou le registraire, selon le cas, tient compte de toutes les circonstances de l'espèce, y compris_: a) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus; b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage; c) le genre de marchandises, services ou entreprises; d) la nature du commerce; e) le degré de ressemblance entre les marques de commerce ou les noms commerciaux dans la présentation ou le son, ou dans les idées qu'ils suggèrent.
Enregistrement des marques employées ou révélées au Canada
16. (1) Tout requérant qui a produit une demande selon l'article 30 en vue de l'enregistrement d'une marque de commerce qui est enregistrable et que le requérant ou son prédécesseur en titre a employée ou fait connaître au Canada en liaison avec des marchandises ou services, a droit, sous réserve de l'article 38, d'en obtenir l'enregistrement à l'égard de ces marchandises ou services, à moins que, à la date où le requérant ou son prédécesseur en titre l'a en premier lieu ainsi employée ou révélée, elle n'ait créé de la confusion_: a) soit avec une marque de commerce antérieurement employée ou révélée au Canada par une autre personne; b) soit avec une marque de commerce à l'égard de laquelle une demande d'enregistrement avait été antérieurement produite au Canada par une autre personne; c) soit avec un nom commercial qui avait été antérieurement employé au Canada par une autre personne. Motifs 38. (2) Cette opposition peut être fondée sur l'un des motifs suivants_: [...] c) le requérant n'est pas la personne ayant droit à l'enregistrement; d) la marque de commerce n'est pas distinctive. |
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FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-20-04
STYLE OF CAUSE: AUTODATA LIMITED v. AUTODATA SOLUTIONS COMPANY
PLACE OF HEARING: OTTAWA, ON
DATE OF HEARING: April 11, 2004
REASONS FOR JUDGMENT
AND JUDGMENT BY: THE HONOURABLE MR. JUSTICE O'REILLY
APPEARANCES BY:
Mr. Dennis S. K. Leung
Ms. Heather Probert FOR THE APPLICANT
Ms. Lillian L. Camilleri
Mr. P. Scott Maclean FOR THE RESPONDENT
SOLICITORS OF RECORD:
SHAPIRO COHEN
Ottawa, ON FOR THE APPLICANT
CASSAN MACLEAN
Ottawa, ON FOR THE RESPONDENT