Canada Post Corp. v. Micropost Corp., docket A-776-98

Date: 20000224

Docket: A-776-98

CORAM:      DÉCARY J.A.

         ROBERTSON J.A.

         SEXTON J.A.

IN THE MATTER OF Sections 38 and 56 of the Trade-marks Act, R.S. 1985, c. T-13

AND IN THE MATTER OF an Appeal from T-1978-97, a Decision rendered on November 26, 1998 in the Federal Court Trial Division by Hugessen J. (which was an Appeal of a Decision rendered on behalf of the Registrar of Trade-marks dated July 10, 1997 relating to Serial No. 683,519 for the Trade-mark MICROPOST)

BETWEEN:

     CANADA POST CORPORATION

     Appellant

     (Opponent)

     - and -

     MICROPOST CORPORATION

     Respondent

     (Applicant)

Heard at Ottawa, Ontario, on Thursday, February 24, 2000

Judgment delivered from the Bench at Ottawa, Ontario, on Thursday, February 24, 2000

REASONS FOR JUDGMENT BY:      ROBERTSON J.A.

Date: 20000224

Docket: A-776-98

CORAM:      DÉCARY J.A.

         ROBERTSON J.A.

         SEXTON J.A.

IN THE MATTER OF Sections 38 and 56 of the Trade-marks Act, R.S. 1985, c. T-13

AND IN THE MATTER OF an Appeal from T-1978-97, a Decision rendered on November 26, 1998 in the Federal Court Trial Division by Hugessen J. (which was an Appeal of a Decision rendered on behalf of the Registrar of Trade-marks dated July 10, 1997 relating to Serial No. 683,519 for the Trade-mark MICROPOST)

BETWEEN:

     CANADA POST CORPORATION

     Appellant

     (Opponent)

     - and -

     MICROPOST CORPORATION

     Respondent

     (Applicant)

     REASONS FOR JUDGMENT

     (Delivered from the Bench at Ottawa, Ontario

     on Thursday, February 24, 2000)

ROBERTSON J.A.

This is an appeal from an order of Mr. Justice Hugessen dismissing an appeal against a decision of the Registrar of Trade-marks. The Registrar dismissed an opposition by the appellant to the respondent"s application to register the trade-mark "MICROPOST" for use in association with

"point-of-sale terminals incorporating all-purpose cash register and typing functions". The component word POST is said to be an acronym for point-of-sale terminals (computerized cash registers).

In the performance of its services and sale of its products, the appellant uses the trade-names CANADA POST CORPORATION and CANADA POST, as well as the French equivalent, and has adopted and used a wide variety of "family" marks including, for example, OMNIPOST, GEOPOST, TELEPOST and MEDIAPOSTE. While the appellant does not manufacture or sell point-of-sale terminals, it does use such devices in its own business and, as well, requires franchise dealers to use devices selected by the appellant.

The major thrust of the appellant"s argument is that there is a likelihood that the respondent"s trade-mark when applied to its associated wares would lead members of the public to assume an association with the appellant or generate confusion in the market-place. The argument is conveniently summarized at paragraph 69 of its factum and reads as follows:

This registration, if granted, will give the respondent the right to put the trade-mark MICROPOST on point-of-sale machines and sell them to anyone, including Canada Post"s competitors and franchises. Because Canada Post leases point-of-sale terminals and because franchisees are only permitted to use point-of-sale terminals and associated software which are authorized by Canada Post, and because franchisees are aware of the association between Canada Post and its POST trade-marks and trade names, it is certainly foreseeable that franchisees will assume that point-of-sale terminals which bear a trade-mark incorporating the term POST and which are designed for the retail sales and service markets are authorized by Canada Post. Additionally, the use of MICROPOST point-of-sale devices by competitors of Canada Post will surely cause or exacerbate confusion. Where it is likely that the target market will assume that the respondent"s goods are approved, licensed or sponsored by the appellant or where a state of doubt and uncertainty exists in the minds of that target market, it follows that the trade-marks are confusing.

Glen-Warren Productions Ltd. v. Gertex Hosiery Ltd. (1990), 29 C.P.R. (3d) 7 at 12 (F.C.T.D.)

Advance Magazine Publications Inc. v. Masco Building Products Corp., Richard, A.C.J., T-2756-96, January 26, 1999 (FCTD)

As noted above, the Trial Judge failed to appreciate or apply this broader concept of confusion.

In our view, the above argument was effectively addressed by Justice Hugessen at paragraph 20 of his reasons:

Second, given the huge variety of meanings which the word "post" already has in the English and French languages and its current use as a trade-mark or trade-name in other businesses or even simply as descriptive thereof, the appellant can only claim monopoly of it for other than postal services where it has in fact established and used the word in connection with a particular expanded line of business which it conducts, and even then only when some qualifying word, prefix or suffix is added. Put briefly, the appellant may have a monopoly of the word "post" simpliciter for mail services; it has none for its use in combination with other words in connection with other services. Even if the appellant uses point of sale terminals (as do most retail businesses today) or leases them to its franchisees, with or without some other "post" trade-mark attached, it has no monopoly on all coined words containing "post" in connection therewith. The proposed mark "Micropost" is such a word and, like the appellant"s own coined "post" marks is suitably adapted to distinguish the respondent"s wares and services. As such, it is registrable.

We are in agreement with the above reasons. In our respectful view, there is no reasonable basis for asserting that "point-of-sale" devices are part of or related to the business endeavours presently undertaken by the appellant. It merely requires that its chosen devices are used in carrying out its principal business, that is to say, the provision of mail and communication delivery services. Specifically, the purpose for compelling franchisees to use these devices is for accounting-related objectives, not to promote a product or enter a new product market. In the circumstances, it was reasonably open to the decision-makers below to conclude that the proper use of the trade-mark MICROPOST would not lead to confusion as contemplated by the Trade-marks Act . For example, we do not see how it could be reasonably inferred that consumers entering the premises of a competitor of Canada Post (e.g. Mail Boxes Etc) would be influenced or misled into believing that a computerized cash register, with the respondent"s trade-mark attached, is somehow associated with Canada Post or any of its family of trade-marks. This is so because Canada Post is not actively involved in the marketing of such devices. This explains why Justice Hugessen opined that the appellant could not attempt to obtain a "monopoly" on the use of the word "POST" when it had not used that word together with a prefix or suffix in a business initiative which expands upon the services and products which Canada Post presently offers. For this reason there could be no confusion between the respondent"s wares and the appellant"s.

The appellant also relies on subsection 58(2) of the Canada Post Corporation Act which reads as follows:

Every person commits an offence who, without the written consent of the Corporation, places on any thing, any word or mark suggesting that the thing

(a) has been duly authorized or approved by the Corporation;

(b) is used in the business of the Corporation; or

(c) is of a kind similar or identical to any thing used in the business of the Corporation.

Assuming without deciding whether that penal provision can be invoked in opposition proceedings, we do not think that on the facts of this case the trade-mark MICROPOST used in connection with point-of-sale devices would "suggest" to any reasonable person that those machines are used in the business of or are authorized by Canada Post. Given the fact that Canada Post is not involved in the marketing of computerized cash registers and that such devices are no more integral to Canada Post"s operations than they are to any other retailer of services, it is simply unrealistic to expect that subsection 58(2) could be interpreted as prohibiting that which the respondent proposes to do. [The appellant conceded that if it failed under subsection 58(2) it would fail under paragraph 9(1)(d) of the Trade-marks Act .]

For these reasons and those of Justice Hugessen the appeal will be dismissed. As the respondent did not appear there will be no costs.

     "J.T. Robertson"

     J.A.