Date: 19981126
Docket: T-1978-97
| 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 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 ORDER AND ORDER
HUGESSEN J.
[1] This is an appeal against a decision of the Registrar of Trade-Marks dismissing an opposition by the appellant to an application by the respondent 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 "post" is said to be an acronym for point of sale terminal.
[2] Both at the hearing before the registrar and on the appeal to this Court the respondent, Micropost, did not appear. It also failed to file any new evidence notwithstanding that the appellant filed a very substantial body of materials in this Court which had not been before the Registrar. There is some reason to think that the respondent Micropost has gone out of business; it certainly appears to have no active interest in prosecuting its trade-mark application which, however, has not been withdrawn. In the result, this appeal has proceeded ex parte without benefit of representations from the respondent and, in the light of the new affidavit material, takes the form of a hearing de novo. The burden of establishing registrability is, of course, on the respondent as applicant.
[3] Counsel for the appellant has grouped his attack upon the registrability of the trade-mark "Micropost"under four main headings.
[4] First, it is said that "Micropost" is confusing with a number of registered trade-marks owned by Canada Post with respect to a variety of wares and services offered by it; all of these marks consist of the word "post" with a prefix, suffix or qualifying word, the prefix frequently consisting of two syllables having Greek or Latin origin. The following are examples:
| Telepost, Envoypost, Mediaposte +, Escale Postale, Variposte, Expresspost, Geopost, Docupost, Post Cards, Priority Post, Mail Poste & Design, Poste Mail & Design, Canada Post and Ominpost. |
[5] This argument requires the Court to consider the matters set forth in subsection 6(5) of the Trade-Marks Act1 for the purposes of answering the question whether, in fact, the proposed trade-mark would, as a matter of first impression on the mind of an ordinary person having an imperfect recollection of the mark or marks with which it is said to be confusing, reasonably give rise to the inference of connection or commonality of source.2
[6] Second, it is said that the proposed trade-mark is not registrable as it is in breach of the prohibition contained in paragraph 9(1)(d) of the Trade-Marks Act, as consisting of:
| 9. (1) ... (d) any word or symbol likely to lead to the belief that the wares or services in association with which it is used have received, or are produced, sold or performed under, royal, vice-regal or governmental patronage, approval or authority; |
9. (1) ... d) un mot ou symbole susceptible de porter à croire que les marchandises ou services en liaison avec lesquels il est employé ont reçu l'approbation royale, vice-royale ou gouvernementale, ou sont produits, vendus ou exécutés sous le patronage ou sur l'autorité royale, vice-royale ou gouvernementale; |
[7] The "word or symbol" relied upon is the word "post" and it is argued that, because Canada Post Corporation is a Crown corporation, the use of the word "post" in the proposed trade-mark is likely to lead to the belief that the point of sale terminals in connection with which Micropost may use its proposed mark have received or are produced and sold under governmental patronage approval or authority. Here again, the test must be the effect that the use of the proposed mark would have on the mind of a reasonable person and the likelihood that such person would draw the inference that, because the proposed trade- mark contains the word "post", Micropost"s point of sale terminals have governmental patronage approval or authority.
[8] Next, it is argued that the proposed mark is unregistrable because its use would constitute an offence under subsection 58(2) of the Canada Post Corporation Act3 which prohibits placing any word or mark on any thing suggesting that the thing is or is similar to a thing used in the business of Canada Post Corporation. Given such prohibition the applicant could not reasonably believe that it was entitled to use the mark. Once again, the test is whether the inclusion of the word "post" in the proposed trade-mark "suggests" to a reasonable person that any given thing to which the trade-mark is attached emanates in some way from the appellant.
[9] Finally, it is argued that the proposed mark Micropost is not registrable because it is not distinctive. This argument engages a consideration of the proposed mark itself and of its capacity to distinguish respondent"s wares, as well as of its distinctiveness not only from Canada Post"s various registered trade-marks but also from a number of other trade-marks said to be owned and used by Canada Post but not registered. Apart from this expanded base for comparison, the test here is similar to that for confusion.
[10] What is common to each of these four arguments is the appellant"s contention that the word "post" is always and exclusively associated with the appellant"s business and no other. Thus, under the rubric of confusion, the appellant puts the matter this way:
| The Appellant owns numerous trade-marks and official marks, as well as its trade name and corporate name, which incorporate the word "post". The Appellant submits that the word "post" as used in the Respondent"s trade-mark is the most significant part of the Respondent"s mark, and is likely to be the part of the trade-mark that seizes the attention of the viewer. It is also the word "post" that is likely to create an inferred association with the Appellant (especially given that there is no evidence that the public is aware of the alleged acronym significance of the word "post" in the Respondent"s trade-mark). |
| Similarly, the word "post" as used in the Appellant"s trade-marks, official marks and trade names, is, in most cases, the most significant aspect thereof. The Appellant"s trade-marks, official marks and trade names, therefore have a considerable degree of resemblance to the Respondent"s trade-mark in appearance or sound or in the ideas suggested by them in that they all suggest that postal services or related wares or services are being offered in association therewith. |
[11] Similarly, when dealing with the question of distinctiveness the appellant argues:
| Given the association by the public of the term POST with the Appellant and given the use by the Appellant of point-of-sale terminals in thousands of its outlets, some of which bear the trade-mark MAIL POSTE & Design, it is likely that members of the public, as well as Canada Post franchisees, upon seeing point-of-sale terminals bearing the Respondent"s MICROPOST trade-mark, would assume an association with the Appellant. This point is strengthened given the evidence of use of thousands of vending machines by the Appellant since at least as early as 1975, which are also point of sale devices, and which bear the Appellant"s trade-marks. |
| It is submitted that the Appellant"s evidence proves that the Canadian public associates the word "post" with the Appellant and its wares and services. |
[12] The arguments founded upon section 9 of the Trade-marks Act and section 58 of the Canada Post Corporation Act are also based on the assumption that the inclusion of the word "post" in the respondent"s proposed trade-mark leads necessarily to the inference of government patronage or approval and to the suggestion of use in the appellant"s business.
[13] In brief, what the appellant asserts and asks this Court to approve is a virtual monopoly by it upon the use of the word "post". In my view, that is a claim which simply cannot be accepted.
[14] The word "post" in the English language has a great variety of meanings most of which do not describe or even suggest the wares and services provided by the appellant. There is no doubt that when it is used as a verb, the word is most commonly applied to the action of mailing a letter, although there are plenty of other accepted uses: we post notices on a board; field commanders post sentries at night; accountants post entries to a ledger; and equestrians post when they go up and down in the saddle. When used as a noun, the word has many meanings which are wholly unrelated to the wares and services offered by the appellant: listening posts, customs posts, outposts, diplomatic posts and trading posts are all expressions used to describe places where activities take place which have nothing to do with the appellant. There is also another meaning to the word when it is used to indicate a piece of wood stuck in the ground such as a fence post or boundary post.
[15] Moreover, since the appellant"s claim to a monopoly is in respect of a trade-mark, it may be relevant to note that there are a number of well-known trade names in common use which incorporate the word "post" and which have nothing to do with the appellant. "Post" is a common part of the name of magazines and newspapers, including at least one with national circulation in this country. There are also "Post" hotels and breakfast cereals, and lawyers are familiar with the self-gumming "post-it" notes used to mark or correct documents. None of these names suggests association with the appellant or its business, and there is none.
[16] In French the words "poster" or "poste" likewise do not have their primary meaning associated with the goods and services of the appellant. The verb is normally used to mean the placing or putting in position of a person or thing, while the most usual meanings for the noun are that of a station (radio, TV or service) or a job or function. In fact, when the word is intended to describe the appellant"s services, it is more properly used in the plural: "postes".
[17] In the light of this great variety of meanings and common uses of the word "post", the appellant"s claim to a monopoly of it is extravagant and cannot be accepted. No reasonable person would assume, infer or suggest that because a trade-mark contains the word "post" it must, in some way, be connected to the appellant.
[18] It is argued, however, that in recent years the appellant has expanded the number and variety of the wares and services which it offers and that the trade-marks which it has adopted to apply to those wares and services have caused the word "post" to acquire a new or secondary distinctiveness which associates it exclusively with the appellant. It puts the argument thus:
| The Appellant"s wares and services are expanding in kind and in scope and the public is aware of that fact through constant use and advertising of those expanded wares and services. The Appellant has coined and used various "post"-formative trade-marks and official marks for its wares and services, such as MAIL POSTE & Design, MEDIAPOSTE, INTELPOST, TELEPOST, XPRESSPOST, OMNIPOST, etc. On being exposed to the Respondent"s mark, nothing would be more natural than to infer than it designates yet another new or expanded product in the Appellant"s wide range of wares or services. As such, the Respondent"s mark is not and cannot be distinctive. |
[19] There are two flaws to this argument. In the first place, the "new or expanded" products which the appellant may chose to offer from time to time are, by statute, limited and must bear a relationship to the appellant"s primary business which is that of carrying mail4. That relationship is by no means evident when it comes to point of sale terminals which are not associated in the public"s mind with postal services.
[20] 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.
[21] I conclude, therefore, that the proposed mark "Micropost" is not confusing, is distinctive and is not in breach of any statutory prohibition. The appeal will be dismissed; the respondent not having appeared, there will be no order as to costs.
ORDER
The appeal is dismissed.
"James K. Hugessen"
Judge
__________________2 Miss Universe Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.)
4 Subsection 5(1) of the Canada Post Corporation Act talks of products and services "necessary or incidental to the postal services provided by the Corporation".