Docket: T-1031-13
Citation:
2014 FC 632
Ottawa, Ontario, June 27, 2014
PRESENT: The
Honourable Mr. Justice O'Reilly
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BETWEEN:
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MICRO FOCUS (IP) LIMITED
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Applicant
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and
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INFORMATION BUILDERS, INC.
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Respondent
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JUDGMENT AND REASONS
I.
Overview
[1]
Micro Focus (IP) Limited appeals a decision of
the Trade-marks Opposition Board refusing its application for registration of
the trade mark MICRO FOCUS in association with computer software and related
services. The Board found that there was a reasonable likelihood of confusion
between Micro Focus’s mark and the respondent’s FOCUS mark and, therefore,
refused Micro Focus’s registration.
[2]
Micro Focus submits that the Board erred in
refusing its application. It has presented fresh evidence that its use of the
MICRO FOCUS mark would not be confusing and submits that the Board’s decision
should be overturned.
[3]
The evidence before me indicates that Micro
Focus has used its mark extensively since at least 1989. That evidence would
have materially affected the Board’s conclusion on confusion. Therefore, I must
consider that issue afresh. I find, based on the fresh evidence, that there is
no reasonable likelihood of confusion between the appellant’s MICRO FOCUS mark
and the respondent’s FOCUS mark and must, therefore, allow this appeal. The
respondent did not submit any written arguments, and did not appear on the
appeal.
[4]
The sole issue is whether there is a reasonable
likelihood of confusion between the appellant’s MICRO FOCUS mark and the respondent’s
FOCUS mark.
II.
Does the new evidence suggest that confusion
between the parties’ marks is unlikely?
[5]
I must first consider whether new evidence would
have materially affected the Board’s decision. In my view, that evidence shows
that Micro Focus has used its mark continuously and extensively since at least
1989. Through promotion and advertising, the MICRO FOCUS mark acquired
distinctiveness and a reputation in Canada. Further, there has been no actual
confusion between Micro Focus’s mark and the respondent’s FOCUS mark. This
evidence would clearly have materially affected the Board’s conclusion that
there was a reasonable likelihood of confusion between the marks.
[6]
Therefore, I must decide the issue of confusion
based on the full evidentiary record before me. Below are the relevant factors
and evidence.
A.
Inherent Distinctiveness
[7]
There are at least 26 trade-marks using the word
“Focus” in association with computer software and services. This shows a lack
of inherent distinctiveness in the word “Focus” in this area, and also that
consumers are used to looking for other cues to distinguish between products
and companies. This factor favours Micro Focus.
B.
Length of time in use, and extent of public
knowledge
[8]
Micro Focus has used its mark for almost 25
years and has generated millions of dollars in annual sales. It has promoted
its mark in print and electronic media both within Canada, and in other media available
to Canadians. Further, there is no evidence that the respondent used its mark
after 2007. Again, this factor favours Micro Focus.
C.
Different wares, services, and channels of trade
[9]
The parties operate in different spheres. They
produce different software products aimed at different consumers. Micro Focus
targets mainly programmers, managers and IT professionals in large companies.
The respondent’s products are aimed at non-programmers and enable them to write
reports and access data from various systems. There is some overlap but, as
mentioned above, consumers are used to distinguishing between different software
products that incorporate the word “Focus”. This factor favours Micro Focus.
D.
Actual confusion
[10]
There is no evidence of any consumers actually
being confused about the source of the parties’ respective wares or services.
The respondent actually admitted as much in a co-existence agreement between
the parties in 2000. That admission is significant on the issue of confusion (Dell
Computer Corp v Latitude Communications Inc, 2003 FCT 629) at para 5. Therefore,
this factor also favours Micro Focus.
[11]
As all of the above factors suggest that there
is no reasonable likelihood of confusion between the parties’ trade-marks,
given Micro Focus’s extensive use of the mark, including in the period prior to
any use of the respondent’s mark. Accordingly, I find that Micro Focus has met
its burden of showing that its MICRO FOCUS mark would likely not be confusing
with the respondent’s mark. Accordingly, the Board’s conclusions that the
respondent’s grounds of opposition under ss 12(1)(d) and 16(2)(a)
of the Trade-marks Act, RSC 1985, c T-13 were well-founded are set
aside.
III.
Conclusion and Disposition
[12]
Micro Focus has presented new evidence that
would have materially affected the Board’s conclusion that its MICRO FOCUS mark
would be confused with the respondent’s FOCUS mark. That evidence persuades me
that confusion would be unlikely. Accordingly, I must allow this appeal, with
costs, and order that Micro Focus be permitted to register its MICRO FOCUS
mark.
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