Intuit Canada Inc. v. Quicklaw Inc., 2002 FCT 633

Date: 20020604

Docket: T-1627-00

                                                                                                  Neutral Citation: 2002 FCT 633

BETWEEN:                                                                                                           

                                                                 INTUIT INC.

                                                                                                                                          Applicant

                                                                        - and -

                                                             QUICKLAW INC.

                                                                                                                                      Respondent

                                                    REASONS FOR ORDER

HANSEN J.

[1]                 This is an appeal pursuant to section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the "Act") from a decision of the Trade-marks Opposition Board (the "Registrar") dated June 30, 2000 in which the appellant's opposition to Canadian Trade-mark Application No. 776,251 for the trade-mark QUICKTAX was rejected.

Background

[2]                 The appellant, Intuit Inc. ("Intuit"), sells personal financial software for home use. The appellant's product is sold across the country, primarily in retail stores. The mark QUICKTAX is used by the appellant in Canada on product and in promotional materials associated with its personal income tax preparation software.

[3]                 The respondent, Quicklaw Inc. ("Quicklaw"), filed a trade-mark application for the trade-mark QUICKTAX on February 21, 1995.    Intuit filed a trade-mark application for the trade-mark QUICKTAX almost five months later on July 4, 1995.

[4]                 Quicklaw's application was based on use of the trade-mark QUICKTAX in Canada since December 1988 in association with the wares "computer software" and in association with the services "operation of a business providing customers with instructions in the use, databases, word processing, electronic mail and providing telecommunications".

[5]                 In response to the advertisement of the trade-mark application in the Canadian Trade-marks Journal, Intuit opposed Quicklaw's application.

The Statement of Opposition

[6]                 The following grounds of opposition raised by the appellant are relevant to this appeal:

The application does not comply with sections 2, 3 and 4 of the Act, particularly,

i.          the trade-mark is not distinctive within the meaning of section 2, as it is not capable of distinguishing the wares and services of the applicant Quicklaw from the wares and services of the opponent Intuit; and

ii.          the trade-mark was not adopted to distinguish within the meaning of section 3 of the Act; and

iii.         the applicant Quicklaw did not use, and does not intend to use, the trade-mark in association with the wares and services described in the application within the meaning of subsections 4(1) and 4(2) of the Act.

[7]                 In support of its Statement of Opposition, the appellant filed the affidavits of Chad Frederick and Bruce Johnson, officers and employees of Intuit. The affiants were cross-examined on their affidavits. The transcripts, exhibits and undertakings given formed part of the evidence before the Opposition Board and are filed in this application.

The Counter-Statement

[8]                 In response to Intuit's Statement of Opposition, Quicklaw filed a Counter-Statement in which it denied the appellant's allegations. In support of the Counter-Statement, Quicklaw filed, among others, the affidavit of Lillian Siskins, Vice-President Administration at QL Systems Inc.. Intuit did not cross-examine Ms. Simkins.

Evidence Before the Registrar

[9]                 Intuit asserted that the mark QUICKTAX has been used in Canada on its product and in its promotional materials contemporaneously with the use of the mark by the respondent for at least 3 years prior to the material date for assessing distinctiveness of a trade-mark.

[10]            Intuit stated that the sale of its QUICKTAX brand computer software generates revenues of approximately $2,000,000 annually and it spends over $500,000 annually on advertising and promotion of the products in Canada. Representative examples of this advertising illustrating the appellant's use of the mark QUICKTAX were made exhibits to the affidavit of Chad Frederick. As well, Intuit maintained that its products are sold across the country primarily through retail stores in the ordinary course of doing business.

[11]            Quicklaw's evidence was that it has used the name and mark QUICKTAX in association with a collection of tax database and tax related services since as early as September 1987. Quicklaw asserted that it has used the prefix QUICK and QUIC in association with many of its products and services since its inception in 1973. In September 1987, Quicklaw hired an advertising agency to build on the goodwill and reputation in the trade-mark QUICKLAW by providing a new and consistent image for Quicklaw. In the fall of 1987, it was decided that all services provided by Quicklaw would include the word QUICK. The trade-mark QUICKTAX was developed for use in association with Quicklaw's tax databases and other tax services.

[12]            Quicklaw submitted documentation of its use of the trade-mark QUICKTAX as early as January 1988 in correspondence and November 1988 in advertising. In 1991, advertising for services used in association with the trade-mark QUICKTAX were listed with other Quicklaw services in Quicklaw's marketing literature and user manuals distributed widely across Canada.

[13]            Ms. Lillian Simkins deposed that she believes Quicklaw's customers will be confused with Intuit's use of the trade-mark QUICKTAX. She attested that customers expect QUICK-based marks in the field of law or tax to originate with Quicklaw.

The Registrar's Decision

[14]            In a written decision dated June 30, 2000, the Registrar rejected each of the grounds of opposition advanced by Intuit.

[15]            With respect to several of the grounds of opposition raised, the Registrar found that the opponent did not meet the evidentiary burdens imposed. On other grounds, the Registrar found that the opponent did not plead sufficient facts.

[16]            The Registrar made the following finding on the evidence:

• The transcripts of cross-examination of Messrs. Frederick and Johnson expand on their affidavit evidence. In several instances, their testimony on cross-examination either contradicts or is inconsistent with their affidavit evidence.

[17]            The Registrar also found that Intuit defaulted in answering undertakings given at cross-examination where the answers may have shed light on the issue of when it began to use the QUICKTAX mark.

[18]            On the issue of whether the applied for trade-mark QUICKTAX is confusing with the opponent's mark QUICKTAX, the Registrar noted that the opponent would have to satisfy the evidentiary burdens of proving 1) that Intuit used its mark prior to the date Quicklaw is claiming to have used the mark, in this case December 31, 1988, and 2) that Intuit did not abandon the use of the mark as of the date of the advertisement of the applied for mark, in this case, July 12, 1995.

[19]            The Registrar found:

• Having reviewed the testimony of Messrs. Johnson and Frederick at cross-examination, the exhibit material attached to their affidavits and the exhibit material introduced at their cross-examinations, I am unable to conclude that the opponent in fact used its mark QUICKTAX prior to about 1993. ... As far as I am able to determine from the evidence before me, there was no business dealing in the opponent's QUICKTAX product prior to 1993 and there was no use of the mark QUICKTAX by Wintax (now Intuit) ... prior to 1993.

[20]            And finally, the ground of opposition based on distinctiveness was also rejected. The Registrar held that the relevant date for judging distinctiveness is the date the opposition was commenced, in this case, January 18, 1996.

[21]            He concluded:

• The applicant has demonstrated not only sales and advertising under its mark QUICKTAX from 1988 on, but also sales and advertising for its family of QUICK marks for the period 1974-1996. Thus, consumers already familiar with the applicant's family of marks would more readily associate the mark QUICKTAX with the applicant rather than with any other trader. In circumstances where the applicant may rely on a family of marks, as in the present case, the opponent's task to negate the distinctiveness of a newcomer to the applicant's family of marks is somewhat more difficult than in the ordinary case. In the present, the opponent's task is to demonstrate that its mark QUICKTAX became sufficiently known, in the three-year period from January 1993 to January 18, 1996, to negate the distinctiveness of the applied for mark in the context of the applicant's family of marks. I do not consider that the opponent's evidence of sales and advertising under its mark as submitted in this proceeding, without further details of how its mark QUICKTAX was exposed to the public over the three year period 1993 to 1996, is sufficient for that purpose. ...

The Standard of Review on Appeal

[22]            With respect to an appeal of a decision of the Registrar of Trade-marks under section 56 of the Act, the Federal Court of Appeal has recently emphasized that decisions of the Registrar should be afforded a significant degree of deference based on his relative expertise, particularly where no new evidence was adduced before the Court. Rothstein J.A. stated in Molson Breweries, A Partnership v. John Labatt Ltd., [2000] F.C.J. No. 159 at paragraph 51:

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

Issues

[23]            The appellant raises the following issues:

1) Did the Registrar err in finding that Quicklaw had established a "family" of trade-marks? and

2) Did the Registrar err in requiring the opponent to negate the distinctiveness of the applied for mark in the context of Quicklaw's family of marks?

Submissions of the Parties

"Family" of marks

[24]            Intuit relies on U.L. Canada Inc. v. Wells' Dairy Inc., [1999] T.M.O.B. No. 59 for the proposition that a party asserting an existing "family of marks" must prove use of each mark in its family. Intuit submits that Quicklaw failed to prove use for each member of its "family of marks".

[25]            Intuit also submits that the Registrar's presumption that consumers were already familiar with Quicklaw's family of marks and that they would more readily associate the mark QUICKTAX with Quicklaw than with any other trader is without factual or evidentiary basis.

[26]            Further, Intuit argues that the Registrar erred in taking into account Quicklaw sales and advertising figures for the period between 1974 and 1987. The appellant submits that these figures reflected the sales and advertising of Quicklaw's products before a family of marks can be said to have existed and were therefore not relevant.

[27]            Accordingly, the appellant argues that the Registrar articulated an unduly harsh threshold for the opponent to succeed in the opposition hearings.

[28]            Quicklaw submits that the evidence before the Registrar establishes that not only was the mark QUICKTAX in use by Quicklaw, but also that many other marks in Quicklaw's "family" of trade-marks were in use. Ms. Simkins attests to the use of the QUICK trade-marks, including QUICKTAX, QUICKSEARCH, QUICKLAW, QL QUICKLAW & DESIGN, QUICKMAIL, QUICKLINK, QUICKNET and QUICKCITE.

[29]            Further, Quicklaw stated that the question of whether use was shown for each family member is irrelevant because Quicklaw had demonstrated significant sales for QUICKTAX itself leading up to the material date.

Analysis:

[30]            I accept the respondent's position. Ms. Simkins attests to the "Date of First Use" by Quicklaw for each mark in its family of trade-marks. Intuit did not cross-examine Ms. Simkins or in any other way challenge this evidence. Therefore, the evidence must be accepted.

[31]            To support his finding that "consumers already familiar with [Quicklaw's] family of marks would more readily associate the mark QUICKTAX with [Quicklaw] rather than with any other trader", the Registrar relied on the fact that Quicklaw had demonstrated "not only sales and advertising under its mark QUICKTAX from 1988 on, but also sales and advertising for its family of QUICK marks for the period 1974-1996".

[32]            In this respect, I agree with the appellant that the Registrar erred. For the period 1974 to 1987 there was no evidence that a family of marks existed. However, I do not find this error to be fatal to the Registrar's decision.

[33]            Regardless of whether a family of marks existed during the period of 1974 to 1987, a family of marks did exist in the subsequent years leading up to the material date. Therefore, the Registrar's determination that the mark QUICKTAX was distinctive of Quicklaw in the context of that family of marks was reasonable.

[34]            Also, the Registrar found that "Ms. Simkins' affidavit evidence demonstrates use of the mark QUICKTAX prior to December 31, 1988". Further, the Registrar noted that Quicklaw had demonstrated sales and advertising under the mark QUICKTAX from 1988 onwards, and significant sales for QUICKTAX itself between 1988 and 1996.

"Distinctiveness"

[35]            Counsel for the appellant argued that the Registrar erred in failing to impose on Quicklaw the onus to establish the distinctiveness of their wares. In particular, Intuit submits that the Registrar erred in concluding that the mark QUICKTAX was used by Quicklaw for wares, because no sworn affidavit evidence of use for each of the respondent's marks was entered into evidence.

[36]            The respondent submits that the evidence before the Registrar clearly showed that Quicklaw's QUICKTAX trade-mark was distinctive of the wares and services associated with the mark based on use. Given the evidence, the respondent submits that the Registrar acted reasonably.

Analysis:

[37]            The onus to prove distinctiveness rests with the trade-mark applicant, Quicklaw, and the relevant date is the date the opposition commenced, in this case January 18, 1996.

[38]            Intuit made the argument that Quicklaw sells services, not wares. Counsel noted that Quicklaw does not sell tax databases but charges for access to databases. Intuit relies on the statement of Ms. Simkins at paragraph 5 of her affidavit in which she describes how Quicklaw sought to change the names of "all QL services" to include the word QUICK in 1987, including "accessing our tax databases and other tax services".

[39]            It should be noted that the respondent's counsel objected to this argument being raised during the hearing on the grounds that it was not raised in the appellant's written submissions. In fact, the submission was stated in the appellant's Memorandum of Fact and Law at paragraph 30. Consequently, I will deal briefly with the issue.

[40]            I do not agree that the Registrar relieved Quicklaw of the onus to establish the distinctiveness of their wares. Quicklaw, in the trade-mark application, characterizes their wares as "computer software" and Ms. Simkins repeats this characterization in her affidavit. She was not cross-examined. As a result, her evidence must be accepted.

Conclusion

[41]            In my view, having regard to the totality of the evidence, the Registrar's decision was reasonable. Accordingly, the appeal is dismissed with costs to the respondent.

                                                                                "Dolores M. Hansen"            

                                                                                                      J.F.C.C.                      

Ottawa, Ontario

June 4, 2002