Telus Corp. v. Orange Personal Communications Services Ltd., 2005 FC 590

Date: 20050429

Docket: T-844-04

Citation: 2005 FC 590

Ottawa, Ontario, April 29, 2005

PRESENT:    THE HONOURABLE MADAM JUSTICE MACTAVISH

BETWEEN:

TELUS CORPORATION and TELUS COMMUNICATIONS INC.

Applicants

and

ORANGE PERSONAL COMMUNICATIONS SERVICES LIMITED

Respondent

REASONS FOR ORDER AND ORDER

[1]       Telus Corporation is the successor to Clearnet Communications Inc., and is now the registered owner of a number of trade-marks incorporating the word "Future". One of these trade-marks is "The Future is Friendly". Telus Communications Inc. is a licensee of these trade-marks. The two companies will be referred to collectively as "Telus" in this decision.

[2]       When the respondent, Orange Personal Communications Services Limited ("Orange"), attempted to register the trade-mark "The Future's Bright, The Future's Orange", Clearnet opposed the registration. Prior to the hearing of the opposition, Telus Corporation acquired Clearnet, and the opposition continued under Telus' name.

[3]       The Registrar of Trade-marks, sitting as a Trade-marks Opposition Board, rejected Telus' opposition. Telus now appeals that decision, asserting, amongst other things, that the Board erred in applying the wrong test for confusion. Telus further submits that the Board erred in finding that Orange had established that it was more likely than not that its trade-mark would not be confused with that of Telus. Finally, Telus argues that the Board erred in finding that Orange had the requisite intent to use the "The Future's Bright" mark in Canada.                                                                            

Background

[4]       Telus is the largest telecommunications provider in western Canada, and the second largest in Canada as a whole. It provides subscribers with a full range of telecommunications products including telephone, data, Internet and wireless services.

[5]       Through its acquisition of Clearnet, Telus became the registered owner of six trade-marks utilizing the word "Future". In addition to "The Future is Friendly" mark previously referred to, Telus owns "Le Futur est Simple", "Le Téléphone du futur simple", "Future Friendly", "The Phone with a Future" and "The Future is Friendly" written in Chinese characters.

[6]       Telus is of the view that its strongest case is based on its "The Future is Friendly" mark, and, as a result, the parties' submissions, both here, and before the Board, focussed on this mark.

[7]       There was evidence before the Board of extensive use of the "The Future is Friendly" mark by Clearnet since 1997. Additional evidence was put before this Court to the effect that since Telus acquired Clearnet, Telus has begun using the "The Future is Friendly" mark in English, French and Chinese in connection with its full range of telecommunications products and services.

[8]       According to Telus, the "The Future is Friendly" marks in English, French and Chinese form the centrepiece of its brand.

[9]       On December 15, 1997, Orange applied to register the "The Future's Bright, The Future's Orange" ("Future's Bright") mark in Canada, in association with telecommunications equipment, printed matter and services including the installation, maintenance and repair of telecommunications apparatus' and systems.

[10]     This was a proposed use registration, and it is common ground that, to this day, the "Future's Bright" mark has never been used in Canada.

[11]     A Statement of Opposition was filed by Clearnet on November 25, 1999, alleging a likelihood of confusion with the six "Future" marks referred to above. With leave of the Board, an amended Statement of Opposition was filed with the Board on February 23, 2001 adding Telus as an opponent.

[12]     An oral hearing then took place before the Trade-marks Opposition Board and a decision was rendered by the Board on February 24, 2004.

The Board's Decision

[13]     The Board found that the material date with respect to the issue of confusion under paragraph 12(1)(d) of theTrade-marks Act was the date of its decision. It further held that there was a legal burden on Orange "to establish on a balance of probabilities that there would be no reasonable likelihood of confusion between the marks in issue."

[14]     Insofar as the test for confusion was concerned, the Board held that the test was one of "first impression and imperfect recollection". In applying this test, the Board held that it had to have regard for all of the surrounding circumstances, including the factors specifically enumerated in sub-section 6(5) of the Act. These are the inherent distinctiveness of the trade-marks and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; and the degree of resemblance between the trade-marks in appearance, sound or the ideas suggested by them.

[15]     In addition to the factors enumerated in sub-section 6(5) of the Act, the Board also examined the state of the Register and the state of the marketplace. In particular, the Board examined a number of registrations including the word "Future" in the field of telecommunications, focussing on 16 marks which the Board identified as the most pertinent.

[16]     In this context, the Board concluded that, when considered in their entirety, it was more probable than not that consumers would not believe that wares or services associated with the "Future's Bright" mark shared the same source as wares or services associated with the "The Future is Friendly" mark.

[17]     As a consequence, the Board found that, despite its extensive use, Telus was not entitled to a scope of protection broad enough to prevent the registration of Orange's "The Future's Bright, The Future's Orange" mark.

[18]     Given that Telus' other five "Future" marks were less similar to Orange's "Future's Bright" trade-mark, the opposition based upon those marks also failed.

[19]     The Board also dismissed the opposition insofar as it was based on the argument that Orange did not intend to use its "Future's Bright" mark in Canada. In this regard, the Board held that Telus failed to meet its evidentiary burden to establish that Orange did not intend to use its "Future's Bright" mark in Canada at the time that the application was filed.          

[20]     To the extent that Telus argued issues of entitlement under section 16 of the Trade-marks Act, and of non-distinctiveness under section 18(1)(b) , the Board adopted its reasoning on the question of registerability and rejected these arguments as well.

Issues

[21]     The parties have raised a number of issues on this appeal. In my view, each of these issues can be addressed under one of the following four headings:

1.         What is the appropriate standard of review?

2.          Did the Trade-marks Opposition Board apply the proper test for confusion pursuant to section 12(1)(d) of theTrade-marks Act?

3.          Did the Trade-marks Opposition Board err in finding that the two marks were not confusing? and

4.          Did Orange intend to use the "Future's Bright" mark in Canada?

Standard of Review

a)        The Test

[22]     The parties agree that the standard of review identified in John Labatt Limited v. Molson Companies Limited, (1990), 30 C.P.R. (3d) 293 (F.C.T.D.) at 298 and Molson Breweries, a Partnership v. John Labatt Ltd. (2000), 5 C.P.R. (4^th) 180 at p. 196 applies to appeals under section 56 of the Trade-marks Act from decisions of the Registrar of Trade-marks sitting as the Trade-marks Opposition Board.

[23]     That is, where no new evidence is filed on the appeal that would have materially affected the Board's findings of fact, or the exercise of discretion, the test is whether the Board was clearly wrong.

[24]     However, where additional evidence is filed on the appeal that would have materially affected the Board's findings of fact or law, or the exercise of discretion, the test is one of correctness. Although not an entirely apt description, some cases refer to this as a hearing de novo. In such cases, the Court is entitled to substitute its opinion for that of the Board.

[25]     Telus has filed a considerable volume of new evidence. What remains to be determined, however, is the significance of this evidence.

b)       The New Evidence

[26]     Telus filed a number of additional affidavits prior to the hearing of the appeal which address three issues: the extent to which Telus has used the "The Future is Friendly" mark since the hearing before the Board, the continued non-use of the "Future's Bright" mark by Orange, and the changes to the state of the Register since the matter was before the Board.

[27]     In addition, Orange filed an additional affidavit providing updated information as to the state of the Register as of July 29, 2004.

[28]     Subsequent to the hearing of the appeal, Telus brought a motion for leave to re-open the hearing in order to adduce further evidence regarding post-hearing developments with respect to the state of the Register. This evidence, which is contained in a March 29, 2005 affidavit of Allison Huff, is to the effect that certain of the registrations that were before the Trade-marks Opposition Board have since been expunged.

[29]     Orange does not oppose the admission of the post-hearing evidence. Instead, its submissions focus on the question of what weight, if any, should be attributed to the new evidence.

[30]     The Notices of Expungement were not issued until the week after the hearing of the appeal, and thus there is no way that Telus could have discovered this evidence prior to the hearing. Without addressing the probative value of the evidence at this juncture, it is obviously relevant to the issues in this proceeding. Further, Orange does not argue that it would be prejudiced in any way if the post-hearing evidence were admitted, nor does it assert that it needs to adduce any additional evidence in order to respond to Telus' new evidence.

[31]     In all of the circumstances, I am therefore prepared to exercise my discretion and allow Telus to re-open the hearing for the purposes of filing the Huff affidavit.

[32]     Having now determined the extent of the new evidence that is properly before the Court on this appeal, the next issue to be determined, in order to ascertain the appropriate standard of review in this case, is just how significant this new evidence is.

c)       How Significant is the New Evidence?

[33]     In deciding whether the impact of this new evidence is sufficient to warrant a review on the standard of correctness, I am guided by the comments in Garbo Group Inc. v. Harriet Brown & Co., [1999] F.C.J. No. 1763. Here, Justice Evans noted that in assessing the impact that additional evidence will have for the standard of review, the question is the extent to which the additional evidence has a probative significance that extends beyond the material that was before the Board. If the new evidence adds nothing of significance, but is merely repetitive of existing evidence, without enhancing its cogency, the issue will be whether the Board was clearly wrong.

[34]     The grounds of opposition and the arguments in support of those grounds advanced by Telus before this Court appear to be essentially the same grounds and arguments that were advanced before the Board.

[35]     The new evidence filed with the Court demonstrates that Telus has spent hundreds of millions of dollars since 2001 developing its brand. Through numerous advertising campaigns in various media, Telus' "The Future is Friendly" mark has reached millions of consumers on a nationwide basis. While impressive, I am not persuaded that this materially changes the situation. As the Board noted in its decision, the evidence before it was itself "impressive" and demonstrated extensive use of Telus' "Future" marks. The evidence before this Court is now more extensive and more impressive. In my view, this is ultimately a matter of quantity and not quality.

[36]     Insofar as the issue of use is concerned, there was no evidence before the Board that Orange had commenced using the "Future's Bright" mark. The new evidence filed by Telus merely demonstrates that nothing has changed in this regard.

[37]     Finally, while there have been changes to the state of the Register since 2001, having regard to the number of registrations using the word "Future" in relation to telecommunications goods and services, I am not persuaded that the changes to the state of the Register reflected in the new evidence have a probative significance that would justify the more interventionist standard of review.   

d)       Conclusion re Standard of Review

[38]     On the basis of the foregoing analysis, insofar as the Board's decision deals with an evaluation of issues of confusion and of Orange's intent to use the "Future's Bright" mark, I intend to examine the decision in order to see if it is clearly wrong.

[39]     That said, at the end of the day, nothing turns on my conclusion with respect to the standard of review to be used in connection with these issues, as, in my view, the Trade-marks Opposition Board was correct in its assessment.

[40]     Insofar as Telus' argument relating to the proper test for confusion is concerned, as will be seen in the next section of this decision, it appears that the source of Telus'dissatisfaction is not, in fact, the test that the Board used with respect to the question of confusion under section 12(1)(d) of the Trade-marks Act. Rather, what Telus takes issue with is the Board's identification of the nature of the burden on an applicant for registration with respect to the likelihood of confusion between its mark and the mark of the opponent.

[41]     The question of whether the Board properly identified the evidentiary burden on an applicant for registration involves a question of law. In my view, the proper standard of review with respect to this issue is therefore that of correctness.

Did the Trade-marks Opposition Board Apply the Proper Test for Confusion Pursuant to section 12(1)(d) of theTrade-marks Act?

[42]     Telus frames this issue as raising the question of whether the Trade-marks Opposition Board applied the proper test for confusion pursuant to section 12(1)(d) of theTrade-marks Act.

[43]     The Board identified the test for confusion as being that of "[F]irst impression and imperfect recollection". The question that the Board asked itself was whether, applying this test, consumers would believe that the wares or services in issue came from a common source.

[44]     Telus does not take issue with this, agreeing that this is indeed the appropriate test.

[45]     The portion of the Board's decision with which Telus does take issue is the Board's statement that there was a legal burden on Orange "to establish on a balance of probabilities that there would be no reasonable likelihood of confusion between the marks in issue."

[46]     According to Telus, this is an incorrect statement of the law. Telus argues that the onus is on the party seeking registration to show that there is nolikelihood of confusion.     

[47]     In support of this argument, Telus relies on the decision of the Federal Court of Appeal in Baylor University v. Hudson's Bay Co. (2000), 8 C.P.R. (4^th) 64, where the Court stated that in determining whether there is a reasonable likelihood of confusion, regard must be had to all of the surrounding circumstances, including the criteria enumerated in subsection 6(5) of the Trade-marks Act. The Court then went on to say that it is the party seeking registration "who bears the burden of establishing that there is no likelihood of confusion"(at para. 16, emphasis added).

[48]     In contrast, Orange states that the Board properly identified the legal burden on it with respect to the likelihood of confusion. In support of this contention, Orange points to the Federal Court of Appeal's decision in Dion Neckware Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4^th) 155. In Dion, the Court stated that in opposition proceedings, the Registrar "[M]ust be reasonably satisfied that, on a balance of probabilities, the registration is unlikely to create confusion; he need not be satisfied beyond doubt that confusion is unlikely" (at para. 15).

[49]     In Dion Neckware, the Court goes on to note that it would create an insurmountable obstacle for applicants for registration if they were required to demonstrate "beyond doubt" that there was no possibility of confusion, as "certainty in matters of likelihood of confusion is a rare commodity".

[50]     A review of Telus'argument thus reveals that the real issue between the parties is the extent of the burden on an applicant for registration with respect to the likelihood of confusion between its mark and the mark of the opponent.

[51]     To the extent that there is a difference between the standard of proof required by the Baylor University decision, and that set out in Dion Neckware, it should be noted that Dion Neckware is a more recent decision of the Federal Court of Appeal, and thus represents the current state of the law.

[52]     The Board's statement that it was incumbent on Orange "to establish on a balance of probabilities that there would be not reasonable likelihood of confusion between the marks in issue" is awkwardly worded. However, when regard is had to the statement itself, and to the analysis actually carried out by the Board, it is evident that the test applied by the Board was that espoused in the Dion Neckware decision.

[53]     As a consequence, I am satisfied that the Board correctly identified the standard of proof that Orange had to satisfy in order to be entitled to register the "Future's Bright" mark.

Did the Trade-marks Opposition Board Err in Finding That the Two Marks Were Not Confusing?

[54]     The parties agree that confusion is the key issue in this appeal. However, before turning to the parties' arguments with respect to the issue of confusion, it is necessary to consider the material date for assessing the likelihood of confusion. Telus submits that the analysis should properly be carried out as of the date of the hearing of the appeal, based upon the updated material before the Court.

[55]     In contrast, Orange submits that the proper date for the assessment of confusion is the date used by the Board - that is, the date of the Board's decision.

[56]     Both parties rely on the decision of the Federal Court of Appeal in Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade-marks (1991), 37 C.P.R. (3d) 413.

[57]     Given my conclusion with respect to the significance of the new evidence filed by Telus, I am satisfied that the proper date for the assessment of confusion is the date of the Board's decision, although once again, nothing turns on this finding, as I would come to the same conclusion were I to examine the issue in light of the current situation.

[58]     There was no evidence before the Board of any actual confusion between Telus' goods and services and those originating with Orange. This is not surprising, given that Orange has yet to use its "Future's Bright" mark in Canada.

[59]     However, it bears noting that there was also no survey evidence before the Board to measure the extent to which consumers might associate Orange's goods and services with those originating with Telus.

[60]     In coming to the conclusion that it was more probable than not that consumers would not believe that wares or services associated with the "Future's Bright" mark share the same source as wares or services associated with the "The Future is Friendly" mark, the Board considered the factors listed in section 6(5) of the Trade-marks Act. That is, the Board looked at the inherent distinctiveness of the trade-marks in issue, and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; and the degree of resemblance between the trade-marks in appearance, sound or the ideas suggested by them.

[61]     Although not specifically listed in the Act, the Board also examined the state of the Register and the state of the marketplace.

[62]     Each of these factors will be addressed in turn.

a)       Inherent Distinctiveness and the Extent to Which the Marks Have Become Known

[63]     The Board found that Orange's mark was inherently more distinctive than that of Telus, whereas Telus' mark was clearly widely known, as a result of the extensive and impressive sales and promotion of the wares of Telus and its predecessor.

[64]     In coming to the conclusion that Orange's mark was more inherently distinctive than that of Telus, the Board noted "The Future's Bright, The Future's Orange" had a "somewhat mysterious meaning".

[65]     Telus challenges the Board's finding in this regard, submitting that Orange's "Future's Bright" mark is no more inherently distinctive than Telus' marks. According to Telus, the only reason that Orange's mark is at all mysterious is because it has yet to be used in Canada.

[66]     In fact, Telus says, Orange's mark involves nothing more than an appropriation of Telus' idea of characterizing the future in a positive light, coupled with a redirection to Orange. Telus says that this is no more permissible than it would be to allow another company to say "The Future's Bright, The Future's [name of the other company]".       

[67]     I do not accept Telus' submissions in this regard. Unlike the company name mentioned in the example cited by Telus, the word "Orange" can be used both as a noun and as an adjective. Thus the phrase "The Future's Orange" not only directs the reader to the respondent, it also conjures up the idea of an orange-coloured future. This second, mysterious, meaning exists whether the respondent company becomes well known in Canada or not.

[68]     As a result, I am not persuaded that the Board's finding that Orange's mark was inherently more distinctive than that of Telus was clearly wrong.

b)       Length of Time the Marks Were in Use

[69]     The Board noted that Telus' "The Future is Friendly" mark had been in use since 1997, and was widely known as a result of extensive sales and promotion. Given that Orange had yet to use its "Future's Bright" mark, the Board found that these considerations weighed in Telus' favour.

[70]     Telus does not take issue with this finding, apart from noting its more extensive use of its mark in the years since the Board's decision.

c)       Nature of the Wares, Services or Business and the Nature of the Trade

[71]     The Board found that the parties' wares and service overlap, and that it was likely that their channels of trade would also overlap.

[72]     Once again, Telus does not take issue with this finding.

d)       Degree of Resemblance Between the Marks

[73]     In a carefully reasoned analysis, the Board held that there was a fair degree of resemblance between Telus' "The Future is Friendly" marks and Orange's "The Future's Bright, The Future's Orange" mark. Both refer to the future, and both suggest a positive idea about the future.

[74]     Although the first component of a mark is often considered to be the most important, in this case, the Board was of the view that it was the latter portion of Orange's mark, that is, the statement that "The Future's Orange", that was the more memorable. Further, the Board noted that where the first portion of a mark is common to the trade, or is suggestive, the significance of that portion decreases.

[75]     It was in this context that the Board examined the state of the Register, noting that there were 210 active applications or registrations for trade-marks that incorporated the word "Future" for wares or services in the relevant fields. The Board focussed on 16 marks which used the word "Future" specifically in association with telecommunications equipment and services, and were thus viewed as the most pertinent.

[76]     This group included marks such as "The Future is Calling", "The Wireless Future is Now", "The Future is Here" and a "Welcome to the Future"design. Other marks considered by the Board to be amongst the most pertinent were "Future Page", "Future World", "Futurekids", and "Futureway", all of which were used in connection with telecommunications goods and services.

[77]     Since the hearing before the Board, three of the group of 16 marks deemed by the Board to have been the most pertinent have been expunged, including the "Welcome to the Future"design. In addition, expungement proceedings have been commenced by Telus against the "The Future is Calling" mark, and the "The Future is Here" mark has been acquired by Telus.

[78]     There were also a number of marks in the Register as it stood before the Board incorporating the word "Future", which marks were owned by Future Shop Ltd. (now Best Buy Canada Ltd.). Future Shop Ltd. is a large retailer of electronic equipment, including, amongst other things, cellular telephones. There was also evidence of a "Futureway" mark owned by Futureway Communications Inc., a provider of digital telephone services.

[79]     From a review of this evidence, the Board concluded that Telus was not entitled to monopolize the word "Future", or the words "The Future is..." or "The Future's..."

[80]     Telus argues that the Board erred in concluding that the state of the Register evidence demonstrated that "Future" has been commonly adopted in the relevant trade. In particular, Telus notes that there was no evidence before the Board that any of "The Future is Calling", "The Wireless Future is Now" or the "Welcome to the Future" marks were actually in use.

[81]     Telus does not dispute that other "Future"marks, such as those owned by Future Shop Ltd. and Futureway Communications Inc. are in active use, and indeed, there was evidence before the Board to this effect.     

[82]     On an application such as this, the presence of marks on the Register, apart from the marks of the opponent, is a relevant circumstance to be considered by the Board: Park Avenue, previously cited. Where there are large numbers of relevant registrations, inferences can be drawn from the state of the Register about the state of the marketplace: Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.).

[83]     In relation to Orange's dilution argument, the Board found that there were a large number of registrations using the word "Future" in the telecommunications field. From this, the Board concluded that Telus was not entitled to monopolize the use of the word "Future", but that it was also not entitled to monopolize the words "The Future is..." or "The Future's...".

[84]     On the basis of the evidence before the Board, I am satisfied that this conclusion was reasonably open to the Board, and that it was not clearly wrong in coming to this conclusion. In addition, as was previously noted, I am not persuaded that the changes to the state of the Register in the period between the hearing before the Board and the hearing of the appeal would lead to a different conclusion.

[85]     With respect to the degree of resemblance between Telus' "The Future is Friendly" mark and Orange's "The Future's Bright" mark, the Board correctly noted that, in general, the first component of a mark will often be considered to be the most important, but where that portion is common to the trade, or is descriptive or suggestive, the significance of the first component decreases: CondéNast Publications Inc. v. Union des Éditions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.).

[86]     Indeed, as the Federal Court of Appeal noted in Polo Ralph Lauren Corp. v. United States Polo Association et al. (2000), 9 C.P.R. (4^th) 51, where two marks contain a common element which is also contained in a number of other marks in the same market, consumers tend to pay more attention to the other features of the marks, and to distinguish them by those other features (at p. 61).          

[87]     In this context, I am satisfied that the Board's conclusion that it was the latter portion of Orange's mark that was the more memorable was reasonably open to it.

e)       Conclusion on the Issue of Confusion

[88]     In light of the foregoing analysis, I find that the Board correctly identified the relevant factors to be considered in assessing whether two marks are confusing, and properly weighed these factors. In my view, the Board's conclusion that it was more probable than not that consumers would not believe that wares or services associated with the "Future's Bright" mark share the same source as wares or services associated with the "The Future is Friendly" mark, was one that was reasonably open to it, and was not clearly wrong.

[89]     Telus' argument with respect to the issue of entitlement under section 16(3) of the Trade-marks Act is based upon its contention that, as of the date on which Orange filed its application for registration, the two marks in issue were confusing.

[90]     In light of my finding as to the reasonableness of the Board's conclusion on the question of confusion, it is unnecessary to deal with the issue of entitlement, other than to observe that the difference in the material dates for the assessment of entitlement under section 16(3) versus confusion under section 12(d) does not lead to a different conclusion in this case.

[91]     Similarly, for the same reasons articulated earlier in this decision, Telus' argument with respect to distinctiveness under section 18(1)(b) cannot succeed, notwithstanding that, in accordance with section 18 of theTrade-marks Act, the assessment under this paragraph is to be carried out as of the time that the opposition proceedings were commenced.

Did Orange Intend to Use the "Future's Bright"Mark in Canada?

[92]     Telus contends that the Board erred in finding that Orange met the requirements of section 30 of the Trade-marks Act. That is, according to Telus, there was circumstantial evidence before the Board from which it could be reasonably inferred that Orange did not still intend to use the "Future's Bright" mark in Canada.

[93]     In this regard, Telus points to the fact that there was no evidence before the Board that Orange had begun to use its "Future's Bright" mark, nor had it filed a Declaration of Use, in accordance with the provisions of section 40(3) of theTrade-marks Act.

[94]     As a consequence, Telus says, the burden shifted to Orange to rebut this inference, and it failed to do so.   

[95]     Telus further submits that the fact that, some seven years after filing the initial application for registration, Orange has yet to use the "Future's Bright" mark in Canada, is compelling circumstantial evidence that it lacks the requisite intent to use the mark at all.

[96]     Telus contends that knowledge of Orange's future intentions is something that is exclusively within Orange's possession and control, and that, therefore, the onus on Telus to adduce evidence in this regard should be a very light one.

[97]     Orange's failure to lead any evidence in response to Telus' allegations leads to the inference, Telus says, that any evidence that Orange might have led in this regard would not have assisted it: Merrill Lynch & Co. v. Bank of Montreal(1996), 66 C.P.R. (3d) 150 (F.C.T.D.), at pp. 165-6.

[98]     Having failed to file any evidence of a bona fide intent to use the mark in Canada, Telus says, Orange failed to rebut the inference that it lacked the intent to use the mark, and the opposition should have succeeded on this basis.

[99]     A review of the Board's decision discloses that it found that Telus failed to meet the initial evidential burden on it of establishing the facts relied upon it in support of its section 30 argument. Specifically, the Board found that there was no evidence that would suggest that Orange did not intend to use the "Future's Bright" mark in Canada.

[100] In addressing this issue, the first question for the Court to determine is what is the material date with respect to this ground of opposition. From a review of the statutory provision itself, as well as the jurisprudence, I am satisfied that the material date for the non-compliance argument is the filing date of Orange's application for registration, that is, December 15, 1997.

[101] The next question is the extent of the evidentiary burden on a party alleging non-compliance with section 30 of the Trade-marks Act. It is clear from the case law that while the legal burden is on an applicant for registration to show that the application complies with section 30, there is an initial evidential burden on an opponent to establish the facts on which it relies to support its non-compliance argument: John Labatt Ltd., previously cited, at page 298.

[102] While it is true that the fact that certain knowledge is largely within the possession of one party will serve to lessen the evidentiary burden on another party, it does not eliminate that burden altogether: John Labatt Ltd., at pp. 298-9.

[103] In this case, the extent of the evidence before the Board to support Telus' non-compliance argument was that, as of the date of filing, Orange's "Future's Bright" mark had never been used in Canada. This is hardly surprising, given that it was a proposed-use application, and that Orange's right to use the mark was being hotly contested.

[104] The fact that Orange had yet to file a Declaration of Use, in accordance with the provisions of section 40(3) of the Act was of no assistance to Telus, in my view, as theTrade-marks Act does not require that such a declaration be filed until such time as the Registrar has allowed the registration.

[105] In these circumstances, the Board's finding that Telus failed to meet the initial evidential burden on it of establishing the facts that it relied upon in support of its section 30 argument was not clearly wrong.

[106] Further, I am not persuaded that the new evidence filed with this Court sheds any additional light on the question of Orange's intent as of December 15, 1997. As a result, Telus cannot succeed on this issue.

Conclusion

[107] In light of the foregoing analysis, I find that the Board's decision dismissing Telus' opposition to the registration of Orange's "The Future's Bright, The Future's Orange" mark was not clearly wrong. Indeed, in my view, the Board was correct in its conclusion.

[108] Consequently, the appeal is dismissed, with costs.

ORDER

THIS COURT ORDERS that this appeal be dismissed, with costs.

                                                                                                                     "Anne Mactavish"