Docket: T-2168-10
Citation: 2012
FC 496
Ottawa, Ontario, April 30,
2012
PRESENT: The Honourable Mr. Justice O'Reilly
BETWEEN:
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PRECISION DOOR & GATE SERVICE LTD.
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Applicant
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and
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PRECISION HOLDINGS OF BREVARD, INC.
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Respondent
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REASONS FOR JUDGMENT AND
JUDGMENT
I. Overview
[1]
The
applicant, Precision Door and Gate Service Ltd, has been selling, installing
and repairing various kinds of doors throughout the lower mainland of British
Columbia
since 1997. I will refer to it as Precision Door. It uses the following
trade-mark:
[2]
The
respondent, Precision Holdings of Brevard, Inc, is based in Titusville, Florida. Precision
Holdings sells and services garage doors through more than 70 franchises. It is
the registered owner of Canadian trade-marks for PRECISION DOOR SERVICE,
PRECISION, and PRECISION OVERHEAD GARAGE DOOR SERVICE & Design. Precision
Holdings applied for these trade-marks in 2002, at which time it was unaware of
Precision Door. The trade-marks were registered in 2009.
[3]
In
2005, Precision Door applied for the trade-mark PRECISION DOOR & GATE
SERVICE LTD, with the design shown above. The Canadian Trade-marks Office
rejected the application because the mark would be confusing when compared with
Precision Holdings’ registered marks.
[4]
Precision
Door asks me to expunge Precision Holdings’ registered trade-marks from the
register on the basis that Precision Holdings was not entitled to register
those marks because they were likely to be confused with Precision Door’s
trade-mark. Precision Door also argues that Precision Holdings’ marks do not
meet the statutory requirement of distinctiveness. Precision Door relies on s
57(1) of the Trade-marks Act, RSC 1985, c T-13 (statutory references are
set out in an Annex). In addition to contesting Precision Door’s submissions,
Precision Holdings also maintains that Precision Door acquiesced in the
registration of its trade-marks and cannot, therefore, oppose them now.
[5]
I
agree with Precision Door that Precision Holdings was not entitled to register
its trade-marks because they were confusing. Further, Precision Door did not
acquiesce in Precision Holdings’ registrations. Given my conclusion on these
two issues, it is unnecessary to consider the question of distinctiveness. Therefore,
I will grant this application. The issues are:
1. Are
Precision Holdings’ registrations invalid because it was not entitled to
register them?
2. Did
Precision Door acquiesce in the registration of Precision Holdings’ trade-marks?
II. Factual Background
[6]
Precision
Door started using the name “Precision Door Ltd” in relation to door and gate
installation and services after it was incorporated on September 23, 1997. The
name appeared on service trucks, stationery, business cards, invoices and
purchase orders, as well as on stickers affixed to the doors and gates it
installed. Its President, Mr John Crang, was not aware of any other door
company using that name at the time.
[7]
Beginning
in 1998, Precision Door advertised its name in the Vancouver, Richmond,
Langley-Surrey and New Westminster Yellow Pages. In early 1999, it moved to a
new building which bore its name. In 2000, it changed its name to “Precision
Door & Gate Service Ltd”. It has used that name and the corresponding logo
(above) continuously since July 2000, on invoices, business cards, service
trucks and in the Vancouver Yellow Pages.
[8]
Precision
Door has been a long-time member of various professional organizations,
including the BC Chapter of the Canadian Door Institute, the Delta Chamber of
Commerce and the Professional Association of Managing Agents. Its sales in Canada totalled
more than $3 million in the last five years.
[9]
Prior
to moving into the Canadian market, Precision Holdings looked for trade-marks
that might conflict with its proposed marks. It found none, so it proceeded to
file applications for its trade-marks on October 18, 2002. The applications
were advertised on November 26, 2003, and March 17, 2004.
[10]
Precision
Holdings’ first service call in Canada took place in February
2005, through a franchisee located in Seattle, Washington. All
services performed in Canada to date have been performed by that single
franchisee. Apparently, economic conditions have limited its growth, but
Precision Holdings intends to sell more new franchises in the future.
[11]
Precision
Holdings first became aware of Precision Door in 2005. It sought Precision
Door’s consent to use its marks and then offered to buy them. Precision Door
refused. At that point, it was too late to oppose Precision Holdings’
applications.
[12]
In
July 2005, Precision Door applied to register its own mark, “Precision Door and
Gate Service Ltd”. However, a trade-mark examiner concluded that Precision
Door’s application was subsequent to Precision Holdings’, and its proposed
trade-mark would be confusing when compared to Precision Holdings’.
III. Issue
One – Are Precision Holdings’ registrations invalid because it was not entitled
to register them?
[13]
A
person who, like Precision Holdings, has used and registered a trade-mark in
its country of origin (ie the United States) is entitled to register it in
Canada, unless another person in Canada previously used a confusingly similar
trade-mark or a trade-name (Trade-marks Act, s 16(2)). In this context,
“use” means “used or displayed in the performance or advertising” of services (Trade-marks
Act, s 4).
[14]
Here,
Precision Door bears the burden of displacing the presumption that Precision
Holdings’ registrations are valid by proving that it used its trade-mark in
Canada prior to the filing date of Precision Holdings’ applications, namely,
October 18, 2002, and that its trade-mark is confusing when compared to
Precision Holdings’. If it meets that burden, then Precision Holdings was not
entitled to register its trade-marks.
1. Precision Door’s Use
of its Trade-mark
[15]
Precision
Holdings argues that the evidence regarding Precision Door’s use of its
trade-mark prior to October 18, 2002 is inconsistent and weak. It says
Precision Door has not met the burden of showing it used its trade-mark prior
to October 18, 2002.
[16]
In
my view, Precision Door has shown that it used its trade-mark during the
relevant time-frame.
[17]
Precision
Holdings points out that Precision Door has provided evidence of stationery
bearing its original trade-mark (PRECISION DOOR LTD), but it has not proved
that these items were actually used. Precision Door relies on a business card
allegedly used in 1997, but it bears the name of an employee who did not join
the company until 1998. Further, the card includes an address that the company
did not occupy until 1999.
[18]
Precision
Door also points to a photograph of a service truck bearing its trade-mark. Mr.
Crang states in his affidavit that this was a vehicle used in 1997; however, on
cross-examination, he admitted that the truck was first used in 1998 or 1999.
[19]
Similarly,
Precision Door relied on photographs of a door bearing a sticker showing
Precision Door’s original mark. Mr Crang deposed that these photographs were
taken in 1998, but on cross-examination, he stated that the sticker was applied
to the door in 1999.
[20]
Some
of the evidence relied on by Precision Door post-dated 2002, for example,
Vancouver Yellow Pages advertisements from 2003-2004; photos of service trucks
taken in 2011; and invoices from 2004 and 2005.
[21]
There
are some problems with this evidence. A business card believed to have been
used in 1997 was actually not used until 1999. A truck believed to have gone
into service in 1997 was not on the road until 1998. A sticker on the door
dated from 1999, not 1997. However, this is still good evidence of use of
Precision Door’s trade-mark prior to October 18, 2002. And there is other
evidence, including other business cards, purchase orders, and photographs.
Some of the invoices in the record are dated 2002 or later, but there are many
others that preceded the filing date.
[22]
I
am satisfied that Precision Door has proved use of its trade-mark prior to
October 18, 2002, continuously from 1997 onward. In 2000, Precision Door
changed its full name from “Precision Door Ltd” to “Precision Door & Gate
Service Ltd”. The latter is a minor variant on the former name, and there is
evidence of use by Precision Door of both versions. Customers would likely
infer that it was the same company (Canada (Registrar of Trade Marks) v CII
Honeywell Bull, SA, [1985] 4 CPR (3d) 523, at 525).
2. Is Precision Door’s
Trade-mark Confusing?
[23]
Precision
Holdings maintains that it is virtually impossible to tell whether any
confusion between the parties’ trade-marks ever occurred. It submits that
Precision Door has provided no credible evidence of confusion.
[24]
I
disagree. There is a strong similarity between the parties’ trade-marks and
some evidence of actual confusion. Confusion is likely.
[25]
To
determine whether trade-marks are confusing, the Court must consider the
likelihood that in areas where both trade-marks are used, prospective customers
will infer incorrectly that the wares or services being provided are supplied
by the same person.
[26]
The
test for confusion is: What is the first impression in the mind of a casual
consumer somewhat in a hurry with an imperfect recollection of the trade-marks,
who does not pause to give the matter any detailed consideration or scrutiny,
nor to examine closely the similarities and differences between the marks?
Would this consumer be likely to think that the trade-marks are from the same
source? (See Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC
23, at para 20; Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27,
at para 41; Mattel Inc v 3894207 Canada Inc, 2006 SCC 22, at para 6.)
[27]
All
the surrounding circumstances must be considered, as well as five specific
elements set out in s 6(5) of the Trade-marks Act. The weight given to
each of these elements varies (Mattel, above, at para 54; Veuve
Clicquot, at para 21).
(a) The
degree of resemblance between the trade-marks or trade-names in appearance or
sound or in the ideas suggested by them;
[28]
While
this is the last factor listed in s 6(5), it is often the most significant (Masterpiece,
above, at para 49).
[29]
The
trade-marks must be compared as a whole, not by looking at their constituent
elements separately (Park Avenue Furniture Corp v Wickes/Simmons Bedding Ltd,
[1991] FCJ No 546 (CA)). Emphasis should be put on the first word of the
parties’ trade-marks (Andres Wines Ltd v Canadian Marketing International
Ltd, [1987] 2 FC 159, at para 28; Conde Nast Publications Inc v Union
des éditions modernes (1979), 46 CPR (2d) 183 (FCTD), at 188).
[30]
Here,
all the trade-marks in issue are dominated by the word PRECISION. They are
strikingly similar and, in essence, virtually the same.
(b) The
inherent distinctiveness of the trade-marks and the extent to which they have
become known;
[31]
The
parties’ trade-marks are not particularly distinctive. They are all dominated
by the word “Precision” which is a fairly common noun, associated with
exactitude and care. It is used widely in the names of a variety of businesses
(Mattel, above, at para 75).
[32]
In
connection with door services, Precision Door has been using its trade-mark in Canada for a longer
period of time than Precision Holdings. Invoices and other evidence show
frequent use of the trade-mark, which increases the likelihood of public
recognition of it. Precision Holdings has used its trade-marks sporadically,
and only since 2005. There is evidence that in 2010, radio advertisements by
Precision Holdings in Seattle may have reached
listeners in BC, but there is no evidence that they promoted services available
in BC.
(c) The length of time
the trade-marks have been in use;
[33]
Precision
Door has used its mark since 1997. Precision Holdings first used the trade-mark
PRECISION DOOR SERVICE in 1989 in Arizona and registered that
mark in the US in 1998.
There is little evidence that Precision Holdings has actually used its mark in Canada. The sole
piece of evidence is a copy of an invoice dated February 18, 2006 in relation
to services performed by Precision Holdings for a customer who subsequently
complained to Precision Door.
(d) The nature of the
wares, services or business;
[34]
Both
parties offer primarily garage door services. The nature of their wares and
services is essentially identical. This suggests that the potential for
confusion is high.
(e) The nature of the
trade;
[35]
The
nature of the trade of the parties is similar if they both target the same end
consumer (Ciba-Geigy Canada Ltd v Apotex Inc, [1992] 3 S.C.R. 120, at paras
57-59). In this case, the two parties both target primarily persons seeking
installation or servicing of garage doors.
(f) Other factors.
[36]
Looking
to other relevant circumstances, Precision Door cites four alleged instances of
confusion. The first, in 2006, involved a complaint from a customer of
Precision Holdings who complained to Precision Door about poor service and high
prices. Another Surrey customer also complained. In both cases, Precision Door,
at no charge, made repairs to doors installed by Precision Holdings. The third
and fourth events involved a courier delivery and invoice that Precision Door
received in error.
[37]
Precision
Holdings submits that this evidence is weak. There was some confusion in the
evidence about who attended at the homes of confused customers and what the
error was on the part of the courier company. I am satisfied, however, that
there is at least some evidence of actual confusion.
[38]
I
also note that the trade-mark examiner refused Precision Door’s trade-mark
application, partly because it was confusing. Further, Precision Holdings
itself presumably believed there was possible confusion when it asked for
permission to use Precision Door’s trade-mark, and then offered to purchase it.
[39]
I
am satisfied that, given the overall circumstances, together with the factors
considered above – the lack of inherent distinctiveness of the trade-marks, the
short length of time they have co-existed, the identical nature of their trade
and services, and the close resemblance of the marks – the likelihood of
confusion is high. I do not believe the “somewhat hurried consumer” would be
able to distinguish between “Precision Door & Gate Service Ltd”, “Precision
Door Service”, “Precision” and “Precision Overhead Garage Door Service” when
used in relation to garage doors and related services. Similarly, with respect
to the design marks used by both companies, both display prominently the word
“Precision”.
[40]
Overall,
looking at all of the trade-marks in issue, consumers would likely believe the
wares and services associated with those marks come from the same source.
Therefore, the trade-marks are confusing within the meaning of s 6 of the Trade-marks
Act. As Justice Teitelbaum stated when striking the trade-marks in Eurofase Inc v Industrias Fase, SA, [1999] FCJ No 1377 (TD), at para 26:
The evidence introduced by the
Applicant sufficiently establishes that the use of the two trade-marks in Canada would lead to the inference
that the products associated with both were made by the same manufacturer. (…)
I am satisfied that confusion would be inevitable in this case given that the
trade names are not merely similar but identical and deal with the same type of
wares (…)
[41]
Therefore,
I am satisfied that Precision Holdings’ registrations are invalid because it
was not the person entitled to register them.
IV. Issue
Two – Did Precision Door acquiesce in the registration of Precision Holdings’
trade-marks?
[42]
Precision
Holdings argues that Precision Door acquiesced in the registration of Precision
Holdings’ trade-marks and, therefore, cannot challenge them now. Precision
Door became aware of Precision Holdings’ proposed use and registration of its
trade-marks in Canada back in 2005, but waited until 2010 to
challenge them.
[43]
It
is an open question whether this issue can be raised on an application for
expungement (Ling Chi Medicine Co (HK) v Persaud, 1998
CarswellNat 1169 (FCA), at para 2). It is unnecessary to decide this
question here since the evidence does not show acquiescence on Precision Door’s
part in any case.
[44]
To
succeed in its argument, Precision Holdings would have to show that Precision
Door did something more than just delay its challenge to the registration.
There must be proof that Precision Door’s conduct encouraged Precision Holdings
to believe that Precision Door did not intend to enforce its rights, and that
Precision Holdings relied on that belief to its detriment: Canadian Memorial
Services v Personal Alternative Funeral Services Ltd, [2000] FCJ No 140
(TD), at para 52; Remo Imports Ltd v Jaguar Cars Ltd, 2005 FC 870, at
para 53.
[45]
In
my view, Precision Holdings has not shown more than mere delay on Precision
Door’s part. There is no evidence that Precision Door did anything that might
have caused Precision Holdings to believe that it did not intend to assert its
rights to its mark. In fact, the evidence is to the contrary. Precision Door
refused to give permission to Precision Holdings to use its mark and declined
to sell its rights. Precision Door then tried to register its own mark in 2005.
There is no evidence of any detrimental reliance on Precision Holdings’ part.
[46]
Therefore,
in my view, Precision Door did not acquiesce in Precision Holdings’
registrations.
V. Conclusion and Disposition
[47]
Based
on Precision Door’s prior use of its trade-mark and the likelihood of confusion
between its mark and Precision Holdings’ marks, Precision Holdings was not
entitled to register its marks on October 18, 2002. Further, Precision Door did
not acquiesce in Precision Holdings’ registrations. Therefore, those
registrations (Nos TMA738668, TMA738669 and TMA738737) are invalid under ss 16
and 18 of the Trade-marks Act, and should be struck from the register
under s 57 of the Trade-marks Act.
[48]
Precision
Door is entitled to its costs. It submitted a Bill of Costs setting out total
fees of $8,081.86 (based on Column III) and disbursements of $4,147.38. I am
satisfied that these amounts are reasonable in the circumstances and,
therefore, will fix total costs in the amount of $12,229.24.
JUDGMENT
THIS COURT’S
JUDGMENT is that:
1. Trade-mark registrations No TMA738668,
TMA738669 and TMA738737 shall be struck from the register under s 57 of the Trade-marks
Act;
2. Precision Door is
entitled to costs in the amount of $12,229.24.
“James
W. O’Reilly”
Annex
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Trade-marks
Act, RSC
1985, c T-13
When 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.
(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.
Persons
Entitled to Registration of Trade-marks
16. (2) Any applicant
who has filed an application in accordance with section 30 for registration
of a trade-mark that is registrable and that the applicant or the applicant’s
predecessor in title has duly registered in or for the country of origin of
the applicant and has used in association with wares or services is entitled,
subject
to section 38, to secure its registration in respect of
the wares or services in association with which it is registered in that
country and has been used, unless at the date of filing of the application in
accordance with section 30 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.
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,
(b) the
trade-mark is not distinctive at the time proceedings bringing the validity
of the registration into question are commenced, or
(c) the
trade-mark has been abandoned,
and subject to section 17, it is invalid if
the applicant for registration was not the person entitled to secure the
registration.
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.
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Loi
sur les marques de commerce, LRC 1985, ch T-13
Quand une marque de commerce est réputée employée
4. (1) Une marque de commerce est réputée employée en liaison
avec des marchandises si, lors du transfert de la propriété ou de la
possession de ces marchandises, dans la pratique normale du commerce, elle
est apposée sur les marchandises mêmes ou sur les colis dans lesquels ces
marchandises sont distribuées, ou si elle est, de toute autre manière, liée
aux marchandises à tel point qu’avis de liaison est alors donné à la personne
à qui la propriété ou possession est transférée.
(2) Une marque de commerce est réputée
employée en liaison avec des services si elle est employée ou montrée dans
l’exécution ou l’annonce de ces services.
Personnes admises à l’enregistrement
des Marques de Commerce
16. (2) 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 dûment déposée dans
son pays d’origine,
ou pour son pays d’origine, et qu’il a employée en liaison avec des
marchandises
ou services, a
droit, sous réserve de l’article 38, d’en obtenir l’enregistrement à l’égard
des marchandises ou services en liaison avec lesquels elle est déposée dans
ce pays et a été employée, à moins que, à la date de la production de la
demande, en conformité avec l’article 30, 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 a
été antérieurement produite au Canada par une autre personne;
c) soit avec
un nom commercial antérieurement employé au Canada par une autre personne.
Quand l’enregistrement est
invalide
18. (1) L’enregistrement
d’une marque de commerce est invalide dans les cas suivants :
a) la marque de
commerce n’était pas enregistrable à la date de l’enregistrement;
b) la marque de
commerce n’est pas distinctive à l’époque où sont entamées les procédures
contestant la validité de l’enregistrement;
c) la marque de
commerce a été abandonnée.
Sous réserve de l’article 17, l’enregistrement
est invalide si l’auteur de la demande n’était pas la personne ayant droit de
l’obtenir.
Juridiction
exclusive de la Cour fédérale
57. (1) La Cour
fédérale a une compétence initiale exclusive, sur demande du registraire ou
de toute personne intéressée, pour ordonner qu’une inscription dans le
registre soit biffée ou modifiée, parce que, à la date de cette demande,
l’inscription figurant au registre n’exprime ou ne définit pas exactement les
droits existants de la personne paraissant être le propriétaire inscrit de la
marque.
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