[1] This appeal is brought pursuant to section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the "Act"). It concerns a decision of the Trade-marks Opposition Board dated October 9, 2001, (the "Decision") in which the Board's Hearing Officer (the "Registrar"), as a delegate of the Registrar of Trade-marks, refused the Applicant's application to register the trade-mark TECHNOCORP in association with computer-related wares and services.

THE PARTIES

[2] The Applicant incorporated Technosoft Business Systems ("Technosoft") as an Ontario corporation in 1992. Its business involves the retail sale of computers and custom software and the provision of services such as network installation and web-based development. On May 23, 1996, the Applicant filed Application No. 813261 to have TECHNOCORP registered as his trade-mark (the "Application").

[3] The Respondent, Gestion TechnoCap Inc., is a private company that was incorporated in the province of Québec in July, 1993. It was the opponent in the trade-marks opposition hearing and is referred to in these reasons as "the Opponent". The Opponent is a venture capital company that invests in privately owned technology companies that it calls collectively its "TechnoAffiliates" (the "Affiliates"). The Affiliates are separate companies with their own names. They carry on a variety of businesses including software sales, server development and integration which, in turn, includes computer network and data communication installation. The Opponent also operates a website with the domain name TECHNOCAFÉ.COM. This website has been operating since April of 1996 and provides a "virtual" meeting place for the Affiliates.

[4] TechnoCap Inc. is a separate entity although it has a close corporate relationship with the Opponent. It manages the Opponent's investment fund and offers marketing and sales services to the Affiliates.

[5] The two partners in the Opponent (Mr. Balevi and Mr. Prytula) attend thirty to forty trade shows each year in order to become familiar with new product lines which they bring to the attention of their Affiliates. They also host a twice-yearly event called the Forum des Présidents. It boasts an attendance of 200-300 presidents of technology companies.

THE PROCEEDINGS TO DATE

[6] On May 23, 1996, the Applicant applied to register TECHNOCORP and described the associated wares and services in the following terms:

(a) WARES "computer software, namely, computer software for advertisement of products and services over the Internet, Internet site installations, web server development and integration, computer systems integration, computer network installation and data communications, customs application development, asset management and service management and database applications.

(b) SERVICES "retail sale of computer hardware, software and accessories; computer software development; Internet services, namely Internet site installation and web server development and integration with enterprise systems, computer systems integration, computer network installation and data communications, custom application development and software maintenance, asset management and service management, database applications development, advertisement of computer prodcuts [sic] and computer consultants' services over the Internet."

[7] The Opponent filed its statement of opposition on June 6, 1997 (the "Opposition"). The Applicant filed and served a counter statement. On March 16, 1998, the Opponent sought leave to amend its Opposition and leave was granted on April 30, 1998. On January 20, 1999, the Opponent asked for leave to further amend its Opposition and leave was granted on February 10, 1999. On February 23, 1999, the Applicant sought leave to amend his counter statement and was given leave on March 17, 1999.

[8] The Opponent filed as its evidence the affidavit of Marc Balevi, sworn on March 13, 1998 (the "First Balevi Affidavit"). Mr. Balevi is the Vice-President of both the Opponent and TechnoCap Inc. The Applicant was granted leave to cross-examine Mr. Balevi and the transcript of his cross-examination on December 14, 1999, together with the answers given to undertakings, formed part of the record before the Registrar.

[9] The Applicant missed the filing deadline and filed no evidence within the prescribed period or within the extended period of time granted to him. Later, he sought leave to file his affidavit but, on March 2, 2000, leave was denied. On April 28, 2000, the Applicant asked for a reconsideration of the decision to deny leave. However, on July 28, 2000, his request was refused.

[10] The Applicant and the Opponent each filed written argument and an oral hearing was held before the Registrar at which both parties were represented.

[11] At the hearing, the Opponent withdrew its opposition pursuant to section 30 of the Act. Thereafter, the grounds of opposition read as follows:

(a) withdrawn

(b) the applicant is not the person entitled to registration to the Mark having regard to the provisions of:

(i) subsection 16(3)(a) in that at the date of filing of the application the Mark was confusing within the meaning of sections 2 and 6 with at least one trade-mark that had been previously used in Canada by any other person, and more particularly with the opponent's trade-marks TECHNOCAP, TECHNOCAP.COM and TECHNOCAFÉ, which have been used in Canada since at least as early as July 31, 1993 in association with the services "Internet and intranet (private internet) services namely operating public access Web sites or stations providing E mail between member companies, private forums, member marketing and R and D, and information services namely providing electronic bulletin boards broadcasting and netcasting on a global computing network; high speed communications via cable-television, digital telephone, traditional telephone, satellite and cellular providing a virtual gathering place for users including where techno issues (including internet, intranet, multimedia, computer, software and high speed communication issues) are discussed, freeware is made available, employment opportunities are made available and a magazine concerning intranets is provided";

(ii) subsection 16(3)(b) in that at the date of filing of the application, the Mark was confusing within the meaning of section 2 and 6 with at least one trade-mark in respect of which an application for registration had been previously filed in Canada by any other person, and more particularly with the application for registration of the trade-marks TECHNOCAFÉ filed by the opponent on May 8, 1996 under number 812,089 in association with the services aforementioned;

(iii) subsection 16(3)(c) in that at the date of filing of the application, the Mark was confusing within the meaning of sections 2 and 6 with a trade-name that had been previously used in Canada by any other person, and more particularly with GESTION TECHNOCAP INC., a trade-name used in Canada by the opponent since at least as early as July 31, 1993 in association with the services aforementioned;

(c) the Mark is not distinctive within the meaning of section 2 since it does not actually distinguish and is neither adapted to distinguish nor capable of distinguishing the wares and services of the applicant, as set out in the application, from the wares and services of others and more particularly from the of the [sic] opponent in association with which the latter has used and is still using its trade-marks TECHNOCAP, TECHNOCAP.COM and TECHNOCAFÉ and trade-name GESTION TECHNOCAP INC. in Canada.

THE RELEVANT TRADE-MARKS AND NAMES

[12] TECHNOCAFÉ is the Opponent's only registered trade-mark. The website TECHNOCAFÉ.COM advertises the businesses of the Affiliates. It also shows which Affiliates have job opportunities available and provides the Affiliates' latest news releases and a "chat" facility. However, the Affiliates are not licensed to use the trademark TECHNOCAFÉ. It was registered by the Opponent on September 19, 1997 and bears registration number TMA 482 675. The Opponent alleges that it has also used the trade-marks TECHNOCAP, TECHNOCAP.COM and TECHNOCAFÉ and the trade-name Gestion TechnoCap Inc. since 1993.

[13] The cross-examination on the First Balevi Affidavit revealed that:

(a) The mark TECHNOCAP is owned by TechnoCap Inc. (not by the Opponent) and the Opponent is the administrator of the domain name, TECHNOCAP.COM. Subsequently, during re-examination by his agent and under the objection of the Applicant's agent to those leading questions, Mr. Balevi stated that the Opponent owned the marks relied upon by the Opponent in this opposition;

(b) The prefix TECHNO is used by companies in many contexts or situations;

(c) The primary business of TechnoCap Inc. is to invest in private technology companies and to invest in public companies which are also in the technology area;

(d) The mark TECHNOCAFÉ is a virtual meeting place for TechnoAffiliates, customers and others;

(e) The mark TECHNOCAFÉ was filed in the name of TechnoCap Inc. and assigned to the Opponent in June, 1997; and

(f) The Opponent's website went on-line shortly before April, 1996.

MATERIAL DATES

[14] The material date for considering the issue of non-distinctiveness is the date on which the Opposition was filed. In this case that date was June 6, 1997. The date of the Applicant's first use of TECHNOCORP is the material date for the issue of confusion. However, there was no evidence before the Registrar on this topic.

THE REGISTRAR'S DECISION

[15] The Registrar began by considering the last ground of opposition which was the non-distinctiveness of the Applicant's mark TECHNOCORP. The Registrar correctly noted that "for that ground of opposition to succeed, the Opponent needed to show that, as of the date it filed its Opposition, at least one of its trade-marks or its trade-name had become sufficiently well known to negate the distinctiveness of TECHNOCORP.

[16] Because the Registrar had no evidence from the Applicant about its use of the mark TECHNOCORP, she began by considering whether the Opponent had met its onus of proving its allegation of non-distinctiveness of the Applicant's trade-mark by demonstrating its use of its trade-marks and trade-name. The Registrar noted that the Opponent needn't show that the marks it relied on were in fact distinctive of it. Rather it had to demonstrate that, given its use of marks with Techno as a prefix, the Applicant's TECHNOCORP could not be capable of distinguishing the Applicant's wares and services.

[17] The Registrar's conclusions are well described in paragraph 22 of the Applicant's Memorandum of Fact and Law. It reads as follows:

(a) Inherent distinctiveness - The Registrar found that both TECHNOCAP and TECHNOCORP are not inherently strong marks.

(b) Extent to which Marks have become Known - The Registrar noted that it did not have before it evidence that the Applicant's mark had been used or made known as of any date, though it did have evidence that the Opponent's TECHNOCAP mark had become known to a certain extent as of June 6, 1997 through the use of the Opponent's website, and its use in association with the April 28, 1997 forum.

(c) Length of Time the Marks Have Been in Use - The Registrar noted that it did not have before it evidence that the Applicant's mark had been used. The Registrar noted that the Opponent claimed use of TECHNOCAP since 1993. The Registrar did not conclude that there was evidence to support this claim.

(d) Nature of the Wares, Services, Business and Trade - The Registrar noted that Mr. Balevi's evidence asserted that the wares and services covered by the applicant's application are precisely in the same area as the services associated with TECHNOCAP. The Registrar noted that it did not have any evidence concerning the Applicant's business and trade other than in its statement of wares and services, but observed that it appeared that the Applicant's business and trade might differ from those of the Opponent.

(e) Degree of Resemblance Between the Marks - The Registrar found a high degree of resemblance between the marks TECHNOCAP and TECHNOCORP. The Registrar noted that there was no evidence before the Opposition Board as to whether the ideas suggested by each mark are significantly different, and in particular he did not have evidence that the typical Canadian would respond to TECHNOCAP as an abbreviation for "technology capital".

(f) Other Surrounding Circumstances - The Registrar found that there are other companies that use TECHNO prefix trade-marks. However, the Registrar noted that there was no evidence that other marks use a suffix that is as similar to CAP as is CORP. The Registrar did not find evidence that any third parties use TECHNO prefix trade-marks in a business area that is similar or related to that of the Opponent. The Registrar concluded that, to the extent that use by the Opponent of its own TECHNO prefix marks enures to the benefit of the Opponent, such use could make it harder for the Applicant's mark to distinguish its wares and services from the Opponent's Services.

[18] The Registrar concluded that the Applicant had not demonstrated that its TECHNOCORP trade-mark was capable of distinguishing its wares and services from those associated with TECHNOCAP. The Registrar stated at page 7 of the decision:

My conclusion is based largely on the similarities between the marks as well as the connection between their associated wares and services. The absence of evidence from the applicant made it difficult for me to conclude that the applicant had satisfied its onus.

[19] The Registrar did not consider the remaining grounds in detail, but concluded that the opposition based on the trade-mark TECHNOCAFÉ was less likely to succeed given the greater differences between TECHNOCORP and TECHNOCAFÉ.

[20] The Registrar also concluded that the grounds of opposition under section 16 of the Act were less likely to succeed than the non-distinctiveness ground, primarily because of the impact on the distinctiveness of the marks in the Opponent's hands caused by their apparent use by other companies including TECHNOCAP Inc. The Registrar indicated that this would narrow the scope of protection to which the Opponent's marks might be entitled.

THE ISSUES

Issue 1: What is the standard of review of the Registrar's Decision?

[21] The standard of review in appeals under section 56 of the Act was described by Mr. Justice Rothstein of the Federal Court of Appeal in Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (F.C.A.) at 148 in the following terms:

Even though the Trade-marks Act expressly provides for an appeal to the Federal Court, the Registrar's expertise has been recognized as requiring some deference. In the absence of additional evidence adduced in the Trial Division, the Registrar's decisions, whether of fact, law, or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar's decision.

[22] Subsection 56(5) of the Act permits litigants to file new evidence on an appeal to the Federal Court. Both parties have done so in this case. The Applicant filed the affidavit of Anthony R. Sukdeo, dated January 18, 2002 (the "Sukdeo Affidavit"). The Opponent filed a second affidavit of Mr. Balevi dated February 28, 2002 (the "Second Balevi Affidavit"). Neither Mr. Sukdeo nor Mr. Balevi were cross-examined on these affidavits which will be referred to together as the "New Evidence".

[23] The New Evidence provided a full description of the Applicant's business including the nature of its trade, its wares and its use of TECHNOCORP starting in May of 1996. The New Evidence also clarified the Opponent's corporate relationship with TECHNOCAP INC. and stated that the sum paid to the Opponent by TECHNOCAP INC. for management services included a fee for a license from the Opponent to TECHNOCAP INC. of the trademark TECHNOCAP.

[24] Against this background, the question is whether the New Evidence would have materially affected the Registrar's findings of fact or the exercise of her discretion.

[25] The Applicant answers this question in the affirmative and submits that the New Evidence: (a) establishes that the Applicant has used TECHNOCORP extensively in connection with his wares and services; (b) clarifies the nature of his wares and services and shows that they are entirely different from those of the Opponent; and (c) demonstrates that there has been no actual confusion.

[26] The Opponent, on the other hand, submits that the New Evidence reinforces the Registrar's decision rather than undermining it, so it can not be said to "materially affect" the Decision.

[27] In my view, the New Evidence would have materially affected the Registrar's findings of fact on three of the six factors that she considered; namely, the length of time the marks have been in use; the extent to which the marks had become known; and, the nature of the Applicant's wares, services, business and trade. For this reason, the Court must come to its own conclusion about the correctness of the Registrar's decision.

Issue 2: Was the Registrar's decision correct in light of the New Evidence?

[28] The Registrar restricted her analysis to the question of non-distinctiveness, and held that the other grounds of opposition dealing with confusion were less likely to succeed. I will first consider non-distinctiveness in light of the New Evidence, and then turn to the issue of confusion.

[29] To establish non-distinctiveness the Opponent must show that, at the time it filed its Opposition, its marks were sufficiently known in Canada to negate the distinctiveness of the Applicant's mark: Motel 6, Inc. v. No. 6 Motel Ltd. et. al. (1981), 56 C.P.R. (2d) 44 at 58. In the Opponent's submission, the test is whether the Applicant's mark is capable of distinguishing its wares and services in light of the presence in the marketplace of the Opponent's marks.

[30] The Applicant emphasized that there was no evidence of any actual confusion between TECHNOCORP and TECHNOCAP and provided two Federal Court decisions which say that the absence of evidence of actual confusion can serve as the basis for an inference that there is no likelihood of confusion: Multiplicant Inc. v. Petit Bateau Valton S.A. (1994), 55 C.P.R. (3d) 372 at 379 (F.C.T.D.) and CompuLife Software Inc. v. CompOffice Software Inc., [2001] F.C.J. No. 856; 2001 FCT 559. In response, the Opponent said that the general rule is that a trade-mark opponent need not show actual confusion; instead, the applicant bears the burden of showing that there is no likelihood of confusion: Mitac Inc. v. Mita Industrial Co., [1992] F.C.J. No. 9.

[31] In my view, the cases cited by the parties are not contradictory. An Opponent is not required to show actual confusion in order to successfully oppose a trade-mark application on the ground of non-distinctiveness. However, the Registrar or the Court, on a de novo hearing, can infer from the coexistence of two marks and no evidence of actual confusion that there is little likelihood of confusion. It is important, of course, to consider the length of time during which the marks coexisted. In this case, there is no evidence of actual confusion in the six-year period from the time the Applicant first used TECHNOCORP, in May of 1996, until at least the date of the Second Balevi Affidavit. As a result, there is, in my view, no likelihood of confusion and this factor, therefore, favours the Applicant.

The nature of the wares and services, the business and trade

[32] The evidence submitted by the Applicant on this appeal describes the nature of the Applicant's business as follows:

4. Technosoft's primary business includes computer software sales and custom business systems development. Technosoft is also involved in providing Internet-related services. Technosoft primarily serves businesses and individuals working in the computer industry.

5. I began using the trade-mark TECHNOCORP in May, 1996 in association with the retail sale of computer hardware, software and accessories; computer software development; Internet services namely Internet site installation and web server development and integration with enterprise systems, computer systems integration, computer network installation and data communications, custom application development and software maintenance, asset management and service management, database applications development, and advertisement of computer products and computer consultant services over the Internet. The mark TECHNOCORP is associated with all products and services of Technosoft.

[33] The Applicant submits that the Registrar's decision was based on an assumption that there was a connection between the Applicant's and the Opponent's wares and services. However, this assumption was made in the absence of evidence about the Applicant's business. The Applicant submits that the Sukdeo Affidavit now shows that the nature of its wares and services, and business and trade, is substantially different from the Opponent's, in that:

1. the Applicant sells computer hardware and software and the Opponent is a venture capital company;

2. the Applicant provides specialized and technical services such as the installation of web sites, web server development, computer systems integration, custom applications development and custom software development, while the Opponent provides operational and managerial services;

3. the Applicant charges for all of his services whereas some of the Opponent's services are free;

4. The Applicant and the Opponent have different customers in different channels of trade.

[34] The Opponent, on the other hand, submits that its business is related to the Internet, high tech, computer software, computer hardware, multimedia and the telecommunications industry, and that these are all similar to or identical with the Applicant's business or trade. However, the Opponent's business is only indirectly "related to" these trade areas because the businesses of the Affiliates resemble that of the Applicant. The Applicant sells computer hardware and designs and builds websites and custom software for sophisticated clients and, in contrast, the Opponent invests in technology companies. Accordingly, there is no direct or significant connection between the wares and services of the Applicant and those of the Opponent.

[35] The Opponent submits that the Applicant's statement of wares and services is not restricted to any particular trade, and so their trades could potentially overlap. The Opponent submits that it is the organizer of one of the largest computer trade shows in Canada, and notes that the Applicant promotes TECHNOCORP at trade shows and conferences. On this basis the Opponent says that there is already evidence that the two parties are targeting the same consuming public.

[36] However, to say that the parties are targeting the same consuming public because the Applicant attends trade shows overlooks the fact that their objectives at trade shows are completely different. The Applicant is trying to sell its products while the Opponent is looking for investment opportunities and for products which might be of interest to its Affiliates.

[37] The Opponent submits that the issue is whether the Applicant's and the Opponent's wares and services might eventually appear in the same market. It says that, in the circumstances, an average consumer familiar with TECHNOCAP would, as a matter of imperfect recollection and first impression, be led to the conclusion that TECHNOCORP had some connection with the Opponent's business. In my view, this submission is unrealistic given the very different nature of the parties businesses and the admitted sophistication of those with whom they deal.

Inherent distinctiveness

[38] There was no new evidence about this factor. The Applicant submits that the prefix TECHNO is common, and therefore it is appropriate to focus primarily on the suffix in assessing inherent distinctiveness. The Applicant points to the different meanings associated with CAP ("capital") and CORP ("corporation") to show that there is little likelihood of confusion. In response, the Opponent first submits that while TECHNO is commonly used as a prefix, there is no example on the record of a person using suffixes as similar as CAP and CORP. Secondly, the Opponent submits that there was no evidence that the typical Canadian would respond to TECHNOCAP as an abbreviation for "technology capital".

[39] The Registrar found, and the Court accepts, that neither TECHNOCORP nor TECHNOCAP are inherently strong marks.

Length of time the Marks have been in use and the extent to which they have become known

[40] The Sukdeo Affidavit states that the Applicant began using TECHNOCORP.COM on April 23, 1996, and TECHNOCORP in May 1996. The Opponent responds and the Court agrees that this factor is in the Opponent's favour as its use of TECHNOCAP, although minimal, dates back to July 31, 1993.

[41] However, there was no significant use of TECHNOCAP by either the Opponent or its licensee TECHNOCAP INC. until May of 1996, when the Opponent created its TECHNOCAFÉ.COM website and registered the TECHNOCAFÉ mark. Accordingly, the extent of use does not favour either party.

[42] The Registrar found that TECHNOCAP and TECHNOCAFÉ as well as Gestion TechnoCap Inc. were known to some extent in Canada as of June 6, 1997 which, being the date the Statement of Opposition was filed, was the material date with respect to non-distinctiveness.

[43] In my view, the Applicant had also made his mark known to some extent as of June 6, 1997. He began using TECHNOCORP in May of 1996, and provided a copy of registration particulars for the TECHNOCORP.COM domain name supporting registration as of May 2, 1996. He also provided correspondence on Technocorp letterhead, as well as invoices, all dated in May of 1996. The Sukdeo Affidavit, on which he was not cross-examined, states that he spent approximately $10,000 a year promoting his business and that his annual revenues were approximately $68,000 in the period from May to December of 1996. The Applicant was engaged in performing a contract developing a product called a "Data Streaming Mechanism Evolution" for Nortel Networks Inc. that appears to have been completed prior to June 6, 1997. In short, there is evidence on the record that was not before the Registrar that supports a finding that the Applicant's business was known to some extent in Canada as of the material date.

OTHER GROUNDS

[44] The final question is whether the New Evidence has a material impact on any of the grounds of opposition based on confusion.

[45] My answer is in the negative . I have found nothing in the New Evidence to cause me to doubt the correctness of the Registrar's conclusion that grounds other than non-distinctiveness were "less likely to succeed". I agree with her that the marks TECHNOCAP.COM and TECHNOCAFÉ are significantly different from the TECHNOCORP and TECHNOCAP and I would add that the trade name Gestion TechnoCap Inc. is in the same category. In the absence of any evidence of actual confusion in the Second Balevi Affidavit and given that the Sukdeo Affidavit describes the Applicant's trade and wares in a manner that makes confusion an improbability, I have concluded that the New Evidence does not cause me to doubt the correctness of the Registrar's Decision.

CONCLUSION

[46] In the Court's view, the wares and services, business and trade of the two parties are completely different and, therefore, the Applicant has met the burden of showing that his mark is distinctive of his wares and services notwithstanding the evidence about the presence of the Opponent's mark. The Applicant has satisfied me that the appeal should be allowed and that its application to register the trademark TECHNOCORP should also be allowed.

"Sandra J. Simpson"

JUDGE

Ottawa, Ontario

September 10, 2004

FEDERAL COURT

NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET: T-2151-01

STYLE OF CAUSE: Anthony R. Sukdeo et al. v. Gestion TechnoCap Inc.

PLACE OF HEARING: Vancouver, British Columbia

DATE OF HEARING: November 18, 2003

REASONS FOR ORDER : The Honourable Madam Justice Simpson

DATED: September 10, 2004

APPEARANCES:

Mr. Gordon Zimmerman FOR PLAINTIFF / APPLICANT

Ms. Giovanna Spataro FOR DEFENDANT/ RESPONDENT

SOLICITORS OF RECORD:

Borden Ladner Gervais LLP

Toronto, Ontario FOR PLAINTIFF/APPLICANT

Lapointe Rosenstein

Montreal, Quebec FOR DEFENDANT/ RESPONDENT

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Sukdeo v. Gestion Technocap Inc., 2004 FC 1237

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2004 FC 1237