Compulife Software Inc. v. Compuoffice Software Inc., 2001 FCT 559

                                                                                   Date: 20010531

                                                                              Docket: T-1398-97

                                                           Neutral Citation: 2001 FCT 559

Between:

                           COMPULIFE SOFTWARE INC.,

                                                                                             Applicant,

                                                 - and -

                          COMPUOFFICE SOFTWARE INC.,

                                                                                         Respondent.

                                  REASONS FOR ORDER

Muldoon. J.

1. Introduction

[1]         This is an application by Compulife Software Inc., under subsection 57(1) of the Trade-marks Act, R.S.C. 1985, Chap.T-13 as am. (the Act), to expunge two trade-marks, COMPUOFFICE and ACROSS THE BOARD, which are registered to the respondent, CompuOffice Software Inc.

2. Statement of Facts

The Applicant's Wares and Services

[2]                Compulife Software Inc. (the applicant) is the registered owner of the COMPULIFE trade-mark (Registration No. TMA321,727). The COMPULIFE trade-mark was registered on December 12, 1986, for wares comprising "computer software and programs for insurance, office management and marketing support" and for services comprising "computerized insurance brokerage, life insurance and annuity services." The applicant has used the trade-mark for the registered wares since November 18, 1982, and for the registered services since November 24, 1981. On November 1, 2000, the trade-mark registration was amended when the wares relating to "office management" and the services relating to "insurance brokerage and marketing support" were deleted from the registration.

[3]                Since 1983, the applicant's main product has been the COMPULIFE Quotation System software, a life insurance analysis program which is sold to life insurance agents on a monthly subscription basis. The COMPULIFE Quotation System software is used to survey, compare, and analyze life insurance policies offered by various life insurance companies. In 1997, the applicant had approximately 800 subscribers to its service. Between 1983 and 1996, the applicant's advertizing expenditures totalled $240,573 and its sales totalled $6,430,730.

[4]                The COMPULIFE product is licensed to insurance agents, insurance brokers, actuarial firms and insurance companies in Canada. The product is contained on computer diskettes. Each month, the applicant sends updated diskettes to subscribers, who then return the old diskettes. The applicant's COMPULIFE trade-mark appears prominently on all of its products and promotional materials.

The Respondent's Wares and Services

[5]                CompuOffice Software Inc. (the respondent) is the registered owner of the COMPUOFFICE trade-mark (Registration No. TMA457,165). The COMPUOFFICE trade-mark was registered on May 3, 1996, for wares comprising "office management computer software." The respondent has used the trade-mark since March 1, 1990. The COMPUOFFICE product is an office management database which can be customized by users. It has been sold to associations, clubs, automobile repair shops, and real estate agents. The COMPUOFFICE product is not specifically designed for life insurance agents, and only one sale has been made to a person in the insurance industry. Since March 1, 1990, the sales figures of the COMPUOFFICE product have been in the thousands of dollars.

[6]                Since 1992, the respondent has sold a computer software product under the LIFEGUIDE trade-mark. The LIFEGUIDE software is a life insurance analysis program which is marketed to life insurance agents on a monthly subscription basis. The respondent's LIFEGUIDE software is similar to the applicant's COMPULIFE Quotation System software. It is distributed on computer diskettes, and is updated monthly using replacement diskettes. The subscriber then returns the old diskettes. The respondent's annual sales of the LIFEGUIDE product are approximately $500,000 and the respondent has spent approximately $60,000 since 1993 to promote the product. The LIFEGUIDE trade-mark appears prominently on the computer diskettes and related advertising. The respondent's full corporate name also appears in fine print at the bottom of the diskettes, and in fine print at the bottom of the print advertisements.

[7]                The respondent is also the registered owner of the ACROSS THE BOARD trade-mark (Registration No. TMA445,444).    The ACROSS THE BOARD trade-mark was registered on July 21, 1995, for wares comprising "computer software for survey quotation and information relating to life insurance." The respondent has used the ACROSS THE BOARD trade-mark since July, 1993. The ACROSS THE BOARD trade-mark identifies specific functions of the LIFEGUIDE software product, allowing life insurance agents to evaluate the gross value, the net value, the pre-tax value, the after-tax value, the pre-inflation value, and the post-inflation value of various life insurance policies. Agents can also evaluate premium costs, year-by-year cash or fund-values, marginal and average income tax brackets, and erosion by inflation using the ACROSS THE BOARD functions.

3. Issues

[8]                The applicant submits the following three grounds to expunge the respondent's COMPUOFFICE trade-mark from the register of trade-marks:

a.         Under paragraph 18(1)(a) of the Act, the COMPUOFFICE trade-mark was not registrable because it was confusing with the applicant's COMPULIFE registered trade-mark;

b.        Under subsection 18(1) of the Act, the COMPUOFFICE trade-mark was invalid because the respondent was not entitled to secure the registration because it was confusing with the COMPULIFE trade-mark and trade-name previously used in Canada; and

c.        Under paragraph 18(1)(b) of the Act, the COMPUOFFICE trade-mark is invalid because it was not distinctive at the time these proceedings were commenced.

[9]                The applicant submits the following two grounds to expunge the ACROSS THE BOARD trade-mark from the register of trade-marks:

a.        Under paragraph 18(1)(a) of the Act, the ACROSS THE BOARD trade-mark was invalid because it was not registrable because it was clearly descriptive of the character or quality of the wares or services; and

b.        Under paragraph 18(1)(b) of the Act, the ACROSS THE BOARD trade-mark was invalid because the respondent was not entitled to secure the registration because it was confusing with a trade-mark of the same name previously used by the applicant.

4. The Nature of Expungement Proceedings

[10]            Section 57 of the Act gives exclusive original jurisdiction to the Federal Court of Canada to order that any entry in the register be struck out:

Exclusive jurisdiction of Federal Court

57(1) The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark.

[11]            In expungement proceedings, the trade-mark is presumed to be valid, and the onus lies on the party attacking the registration to prove, on a balance of probabilities, that the registration should be expunged. [Uniwell Corp. v. Uniwell North America Inc. (1996), 66 C.P.R. (3d) 436 at 438 (F.C.T.D.)].

[12]            In written and in oral arguments, the applicant submitted that there was a likelihood of confusion between its COMPULIFE trade-mark and the respondent's LIFEGUIDE trade-mark. The applicant alleged 23 instances of actual confusion between its COMPULIFE insurance software product and the respondent's LIFEGUIDE insurance software product. However, these proceedings concern whether or not to expunge the respondent's COMPUOFFICE trade-mark, or its ACROSS THE BOARD trade-mark, from the register of trade-marks, not whether to expunge the LIFEGUIDE trade-mark. The grounds for expungement are to be determined based solely on the wares or services covered by the registration. [Samann v. Canada's Royal Gold Pinetree Mfg. Co. 1986, 9 C.P.R. (3d) 223 at 231 (F.C.A.)]. Accordingly, because the LIFEGUIDE trade-mark is not the subject of these expungement proceedings, most of the evidence provided by the applicant involving the likely confusion between the COMPULIFE product and the LIFEGUIDE product is of little probative value. The allegations against LIFEGUIDE are dismissed.

5. COMPUOFFICE Trade-Mark

Issue 1(a):        Under paragraph 18(1)(a) of the Act, the COMPUOFFICE trade-mark was not registrable because it was confusing with the applicant's COMPULIFE registered trade-mark

[13]            This first ground to expunge the COMPUOFFICE trade-mark arises under paragraph 18(1)(a) of the Act:

When registration invalid

18(1) The registration of a trade-mark is invalid if

(a)          the trade-mark was not registrable at the date of registration,

...             

[14]            Paragraph 12(1)(d) states that a trade-mark is not registrable if it is confusing with another registered trade-mark:

When trade-mark registrable

12(1) Subject to section 13, a trade-mark is registrable if it is not

...

(d) confusing with a registered trade-mark;

[15]            The definition of "confusing" appears in section 2 of the Act:

2 "confusing"

"confusing", when applied as an adjective to a trade-mark or trade-name, means a trade-mark or trade-name the use of which would cause confusion in the manner and circumstances described in section 6.

[16]            Section 6 of the Act defines how a trade-mark can be confusing with another trade-mark:

When a trade-mark or name is confusing

6(1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.

Idem

(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.

...             

What to be considered

(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.

[17]            Therefore, this Court must determine whether there was confusion between the applicant's COMPULIFE trade-mark, and the respondent's COMPUOFFICE trade-mark on May 3, 1996, the date of registration of the COMPUOFFICE trade-mark.

[18]            By statutory definition in subsection 6(2), a trade-mark is confusing with another trade-mark if its use on wares or services is likely to lead to the inference that the wares or services are sold or performed by the same person, whether or not the wares or services are of the same general class. Therefore, the question to answer is whether the use of both trade-marks will likely lead to the inference that the wares and services are provided by the same person. [Prologic Systems Ltd. v. Prologic Corp. (1998), 78 C.P.R. (3d) 435 at 439]. The likelihood of confusion must be considered as a matter of first impression from the perspective of an average consumer having a vague or imperfect recollection of the first trade-mark. [Garbo Group Inc. v. Harriet Brown & Co. (1999), 3 C.P.R. (4th) 224 at 236 (F.C.T.D.)]. The issue is to be determined by reference to persons who are likely to purchase the wares in question. [Baylor University v. Governor and Co. of Adventurers Trading into Hudson's Bay (2000), 8 C.P.R. (4th) 64 at 74 (F.C.A.)]

Paragraph 6(5)(a) - Distinctiveness

[19]            The inherent distinctiveness of a trade-mark is expressed in two considerations: the inherent distinctiveness of the mark, and the acquired distinctiveness of the mark. Marks are inherently distinctive when nothing about them refers the consumer to a multitude of sources. Where a mark does not have inherent distinctiveness, it may still acquire distinctiveness through continual use in the marketplace. To establish this acquired distinctiveness, it must be shown that the mark has become known to consumers as originating from one particular source. [Pink Panther Beauty Corp. v. United Artists Corp. (1998), 80 C.P.R. (3d) 247 at 259 (F.C.C.A.)].

[20]            Distinctiveness concerns the originality of the trade-mark: the more original and distinctive the trade-mark, the stronger the protection. A strong, inherently distinctive trade-mark consists of a striking inventive name, and is entitled to a wide scope of protection; on the other hand, a trade-mark lacking such qualities is inherently less distinctive, and is a weaker mark. The ambit of protection afforded to a weak mark is much less than for a strong mark, and registration of other marks containing comparatively small differences may be permitted. [Man and His Home Ltd. v. Mansoor Electronics Ltd. (1999), 87 C.P.R. (3d) 218 at 224 (F.C.T.D.)].

[21]            The applicant's trade-mark is not inherently distinctive per se. It merely suggests a "computerized life" insurance software program. Moreover, thousands of trade-marks and trade names exist which incorporate the prefix "COMPU". Where a variety of trade-marks exists with the same features, the trade-mark has less inherent distinctiveness. [Via Rail Canada Ltd. v. Location Via-Route Ltd. (1992), 45 C.P.R. (3d) 96 at 107-114 (Que CA).]. However, the COMPULIFE trade-mark has acquired distinctiveness through continual use in the insurance industry since 1982. The applicant has spent approximately $250,000 to promote its COMPULIFE software product. There are approximately 800 subscribers to its service, and it has generated over $6,000,000 in sales. Therefore, given its long-standing use in a specialized industry, the COMPULIFE trade-mark has acquired an inherent distinctiveness.

[22]            The respondent's COMPUOFFICE trade-mark is also not inherently distinctive. It merely suggests a "computerized office" software program. As mentionned, thousands of trade-marks and trade names exist which incorporate the prefix "COMPU". However, as with the applicant, the COMPUOFFICE trade-mark has acquired distinctiveness through continual use since 1990. The applicant has not demonstrated any third party use of the COMPUOFFICE trade-mark, and the respondent has sold the product under the COMPUOFFICE trade-mark to many customers.

[23]            The applicant's customers are sophisticated buyers who understand the difference between life insurance quotation software, and general office management software. There is no evidence before this Court that either trade-mark refers these buyers to a multitude of sources. For insurance agents and companies, the applicant's COMPULIFE software product and the respondent's COMPUOFFICE office management product are sufficiently distinct to avoid confusion about the source. So this Court finds, and holds.

Paragraph 6(5)(b) - Length of Time in Use

[24]            A trade-mark which has been in use for a long time is presumed to have made an impression which must be given some weight. [Pink Panther Beauty Corp., supra at 260]. However, there is little likelihood of confusion when two trade-marks have been used concurrently for a long time without evidence of actual confusion between them. [Multiplicant Inc. v. Petit Bateau Valton SA (1994), 55 C.P.R. (3d) 372 at 379 (F.C.T.D.].

[25]            The COMPULIFE trade-mark has been used continuously since November, 1982. The COMPUOFFICE trade-mark, although registered on May 3, 1996, has been in continuous use since March, 1990. Therefore, both trade-marks were used concurrently for eight years without confusion before the COMPUOFFICE trade-mark was registered. Therefore, there is little likelihood that the consumers of the products will be confused about their respective sources.

Section 6(5)(c) - The Nature of the Wares, Services or Business

[26]            When trade-marks are similar, the degree of similarity between the wares or services which bear the marks is a large factor in determining whether confusion is likely to result. Although confusion may result whether or not the wares or services are of the same general class, yet where one product does not suggest the other, it is a strong indication that confusion is unlikely. In assessing the likelihood of confusion, the Court must examine how the trade-marks are used in the course of business. [McDonald's Corp. v. Coffee Hut Stores Ltd. (1996), 68 C.P.R. (3d) 168 at 169 (F.C.A.)].

[27]            The COMPULIFE trade-mark is registered and used in association with an insurance quotation software program which contains data about insurance policies offered by different companies. It is specifically targeted to life insurance agents and life insurance companies. The software is highly specialized and is sold only by subscription. The specialized nature of the applicant's product suggests that it is carefully selected by purchasers, since it can be used only for a very specific purpose.

[28]            The COMPUOFFICE trade-mark is registered and used in association with an office management software program. The software can be used for office management anywhere, and is not specifically designed for life insurance agents or companies. The COMPUOFFICE product does not provide information about insurance matters, and is designed to be customized by users to satisfy their own office management needs.

[29]            The COMPULIFE Quotation software and the COMPUOFFICE office management software are different in nature, and are marketed differently. The COMPULIFE Quotation product is more of a service, and an ongoing relationship exists between the applicant and its customers. The COMPUOFFICE product is a ware, a software program, which when installed successfully, does not require an ongoing relationship between the respondent and its customers. Again, the purchasers of these products are insurance agents and companies, who understand the difference between the products. There is really no likelihood of confusion as to their source.

Section 6(5)(d) - Nature of the Trade

[30]            Although the applicant and the respondent compete against one another in the insurance trade, the applicant's COMPULIFE software is sufficiently different from the respondent's COMPUOFFICE software, and confusion about the source is unlikely.

Section 6(5)(e) - Degree of Resemblance Between the Marks

[31]            In evaluating the degree of resemblance between trade-marks, a Court should not dissect and subject them to careful analyses. Rather, it should put itself in the position of a person who has a general recollection of one ot them, and then, upon seeing the other at a later date, determine whether such person is likely to think that they originate from the same source. [SkyDome Corp. v. Toronto Heart Industries Ltd. (1997), 72 C.P.R. (3d) 546 at 549 (F.C.T.D.)]. However, it is still possible to focus on particular features of the mark which may have a determinative influence on the public's perception of it. [Pink Panther Beauty Corp., supra at 263].

[32]            Both trade-marks have the same prefix, "COMPU", but they have different suffixes, "LIFE" and "OFFICE". The applicant suggests that this Court should concentrate on the common prefix, because the first word or first syllable in a trade mark is important for the purpose of distinction. [Sum-Spec Canada Ltd. v. Imasco Retail Ltd. (1990), 30 C.P.R. (3d) 7 at 13 (F.C.T.D.)]. The respondent submits that the suffixes are the most important element of the marks, and that they are so different in appearance, sound and suggested ideas that they effectively preclude any likelihood of confusion between the marks as a whole. [Sealy Sleep Products Ltd. v. Simpsons Sears Ltd. (1960), 33 C.P.R. 129 at 135 (Exch. Ct.)]. Moreover, the respondent submits that when trade-marks contain a common element which is also contained in a number of other trade-marks, purchasers pay more attention to the other features of the marks, and distinguish them by those features. [Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 at 358 (F.C.A.)].

[33]            The evidence shows that the prefix "COMPU" is used in thousands of trade-marks, trade-names, corporate names, and domain names in Canada. Given the ubiquitous nature of computers, and society's increasing dependence upon them, it is easy to understand why the prefix "COMPU" has become so popular. Even in the insurance industry, it would appear that computers are becoming the sine qua non of the trade. Therefore, given that the prefix "COMPU" is very popular, it would appear that insurance agents who purchase these products will have to distinguish them based on the other features of the trade-marks, namely, their suffixes. Because the suffixes are sufficiently different, it is unlikely that purchasers of the COMPULIFE or COMPUOFFICE software products will think that the trade-marks originate from the same source.   

Summary

[34]            The foregoing analysis demonstrates that the applicant has not discharged its burden to show that, in all the circumstances, there is a likelihood of confusion between the COMPULIFE and COMPUOFFICE trade-marks. Both trade-marks have acquired distinctiveness, both were used concurrently without confusion for eight years, both are fundamentally different in nature and application, and both are different in appearance, sound and idea suggested. Given that there are thousands of similar trade-marks, and that the consumers of the products are sophisticated purchasers, there is no likelihood of confusion between the applicant's COMPULIFE trade-mark and the respondent's COMPUOFFICE trade-mark.

Issue 1(b):         Under subsection 18(1) of the Act, the COMPUOFFICE trade-mark was invalid because the respondent was not entitled to secure registration because it was confusing with the COMPULIFE trade-mark and trade-name previously used in Canada

[35]            The second ground to expunge the respondent's COMPUOFFICE trade-mark arises under subsection 18(1) of the Act:

When registration invalid

18(1) The registration of a trade-mark is invalid if

...             

and subject to section 17, it is invalid if the applicant for registration was not the person entitled to secure the registration.

[36]            Paragraphs 16(1)(a) and (c) state that a person may not register a trade-mark if the trade-mark was confusing with a trade-mark or a trade-name previously used in Canada:

Subsection 16(1) - 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;

...

(c)          a trade-name that had been previously used in Canada by any other person.

[37]            This ground must also be evaluated using the confusion criteria outlined in subsection 6(5) of the Act. The relevant date on which to assess the likelihood of confusion here is that on which the respondent first used the trade-mark COMPUOFFICE, March 1, 1990. Given this Court's previous findings, it is unnecessary to repeat the analysis which demonstrated that the trade-marks are not likely to be confusing.

Issue 1(c):         Under paragraph 18(1)(b) of the Act, the COMPUOFFICE trade-mark is invalid because it was not distinctive at the time the proceedings to bring the validity of the registration into question were commenced

[38]            The third ground to expunge the COMPUOFFICE trade-mark arises under paragraph 18(1)(b) of the Act:

When registration invalid

18(1) The registration of a trade-mark is invalid if

...

(b)          the trade-mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced,

...

[39]            Section 2 of the Act defines the term "distinctive":

Section 2 - Definition of "distinctive"

"distinctive", in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them.

[40]            A trade-mark's registration may be invalidated because the trade-mark is no longer distinctive at the time the invalidation proceedings are commenced. Here, the key date is June 25, 1997, upon which these proceedings were commenced. While distinctiveness is often determined as part of an evaluation of whether a proposed mark is confusing with another mark, it is an independent ground for refusing registration because the trade-mark may suffer widespread use by third parties.

[41]            The applicant has provided no evidence to support this ground for expungement. Without evidence of widespread use of the COMPUOFFICE trade-mark, it is impossible for this Court properly to evaluate whether the mark is no longer distinctive. Having previously determined that the respondent's COMPUOFFICE trade-mark is distinctive, and in the absence of evidence to prove widespread use of the COMPUOFFICE trade-mark by third parties as of June 25, 1997, this ground for expungement fails.

6. ACROSS THE BOARD Trade-Mark

Issue 2(a):        Under paragraph 18(1)(a) of the Act, the ACROSS THE BOARD trade-mark was invalid because it was not registrable at the date of registration because it was clearly descriptive of the character or quality of the wares or services

[42]            This first ground to expunge the ACROSS THE BOARD trade-mark arises under paragraph 18(1)(a) of the Act:

When registration invalid

18(1) The registration of a trade-mark is invalid if

(a)          the trade-mark was not registrable at the date of registration,

...             

[43]            Under paragraph 12(1)(b), a word which is clearly descriptive of the character or quality of the wares or services is not registrable:

When trade-mark registrable

12(1) Subject to section 13, a trade-mark is registrable if it is not

...

(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;

...

[44]            To be clearly descriptive, a mark must be more than merely suggestive of the character or quality of the wares or services with which it is associated; its descriptive character must go to the material composition, or intrinsic quality of the goods or services. The test is one of immediate impression. [Unitel Communications Inc. v. Bell Canada (1995), 61 C.P.R. (3d) 12 at 55 (F.C.T.D.)].

[45]            The applicant submits that ACROSS THE BOARD is a common expression which means "of all types" or "in all categories." The expression is descriptive of the quality of comprehensiveness, and cannot be the subject of a trade-mark registration.

[46]            The applicant has not discharged its burden. In this Court's opinion, the ACROSS THE BOARD trade-mark does not describe the material composition, or an intrinsic quality of the software. This function permits insurance agents to evaluate financial information for multiple life insurance policies. A trade-mark which is merely suggestive of the character scope or quality of the wares, does not offend paragraph 12(1)(b) of the Act. [Unitel Communications Inc., supra, at 67]. The applicant's allegations against ACROSS THE BOARD are dismissed.

Issue 2(b):       Under paragraph 18(1)(b) of the Act, the ACROSS THE BOARD trade-mark was invalid because the respondent was not entitled to secure the registration, because it was confusing with a trade-mark of the same name previously used by the applicant

[47]          For this second ground to succeed, the applicant must prove that it used the ACROSS THE BOARD trade-mark before the respondent's registration date. The term "use" is defined in section 4 of the Act.

Subsection 4(1) - When a trade-mark is deemed to be used

4(1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.

Idem

(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

...

[48]            The applicant submits that it adopted the ACROSS THE BOARD trade-mark in June, 1989, to identify an option for its COMPULIFE Quotation System software. The applicant claims to have continuously used the ACROSS THE BOARD trade-mark since then. Therefore, under paragraph 16(1)(a) of the Act, the respondent was apparently not entitled to register the trade-mark.

[49]            As evidence of use of the ACROSS THE BOARD trade-mark, the applicant submitted a newsletter dated June, 1989, which stated:

This will lead to the next major option planned for the program. We are referring to this as the "across the board" survey/comparisons. This option will permit multiple categories to be handled in a single pass.

[50]            The applicant also refers to an undated LIFEGUIDE software advertisement which briefly mentions a "a multi-select feature" which "allows full and complete ‘across the board' comparisons within any number or all product categories chosen by you."

[51]            This evidence falls well short of proving that the applicant used ACROSS THE BOARD as a trade-mark within the meaning of section 4 of the Act. A passing reference in an undated advertisement is insufficient to prove that the option was ever finalized or incorporated into the COMPULIFE product. Nor did the applicant adduce any evidence to show that the ACROSS THE BOARD option was used continuously and without significant interruption. [Cheung Kong Holdings Ltd. v. Living Realty Inc. (1999), 4 C.P.R. (4th) 71 at 82 (F.C.T.D.)]. The applicant's evidence does not persuade the Court that ACROSS THE BOARD was displayed qua trade-mark by the applicant or by anyone. Consequently, this ground of expungement fails.

7. Conclusion

[52]            The applicant's application is dismissed. Costs are assessed employing Column V of Tariff B.

                                                                                                   Judge

OTTAWA, Ontario

May 31, 2001