Datascope of Canada Ltd. v. Datascope Corp.
T-1765-97
Dubé J.
18/6/98
15 pp.
Appeal from Trade-marks Opposition Board's rejection of opposition to respondent's application for registration of trade-mark "Datascope"-Appellant buying, repairing, reselling used business equipment-Board finding used trade-mark "Datascope" in Canada since 1966-Respondent manufacturing, selling medical equipment-First used mark in Canada in 1965-Board holding as applicant's mark used for substantial length of time with significant sales, and as applicant's wares expensive, sophisticated medical instruments only purchased after research and consideration, thus differing substantially from opponent's used business machines, as matter of first impression and imperfect recollection, average purchaser not likely to confuse marks-Respondent filing three unsworn declarations, neither commissioned, nor notarized-Appellant claiming Board should not have accepted declarations as not complying with Canada Evidence Act, s. 41, thus no evidence properly before Board, and application ought to have been deemed abandoned under s. 38(7.2) (deeming application to have been abandoned if applicant not submitting either evidence or statement applicant not wishing to submit evidence)-Trade-marks Regulations (1996), s. 42 stipulating within one month after service of opponent's evidence, applicant shall submit by way of affidavit or statutory declaration evidence intending to rely upon-Board accepting declarations on ground fundamental requirements of Canada Evidence Act satisfied by opponent cross-examining declarants, and declarants admitting under oath everything contained in declarations true-Respondent referring to Saccon (Litigation Guardian of) v. Sisson (1992), 9 C.P.C. (3d) 383 (Ont. Gen. Div.), holding where affiant cross-examined under oath with respect to content of affidavit improperly executed, evidence elicited on crossexamination admissible-On procedural issue, Court agreeing with Board, S.C.O.-Furthermore, s. 56(5) providing evidence in addition to that adduced before Registrar may be filed before Federal Court of Canada on appeal and Court may exercise any discretion vested in Registrar-Finally, s. 38(7.2) not applicable as some evidence adduced-As to reasonable likelihood of confusion, factors to be considered when determining whether trade-marks confusing set out in Trade-marks Act, s. 6(5) considered-(i) No inherent distinctiveness to two trade-marks-Appellant spent $60,000 in advertising over last five years, confined to relatively specific geographic area-Respondent spending much larger amount on advertising, but all directed to American market-(ii) Both trade-marks used in Canada for approximately 30 years-(iii) Appellant buying, selling, repairing used office equipment manufactured by other companies, sold under trade-marks of other companies-Attaching small label with company name, telephone number-Respondent designing, manufacturing, selling sophisticated medical equipment-(iv) Equipment sold by parties likely to be purchased only by professional consumers, who are less likely to be confused than casual shoppers-(v) Trade-marks identical-Despite 30 years of concurrent use, no evidence use by respondent of its trade-mark causing public to believe goods manufactured or sold by appellant-As to distinctiveness, Court must ask, as matter of first impression, if in mind of ordinary person, having general, vague or imperfect recollection of respondent's trade-mark, use of trade-marks and trade names in same area and in same manner likely to lead to inference wares associated with those marks, names originate with same person-Critical, determining factors herein nature of wares, trade-First person to use trade-mark entitled to registration-Respondent establishing first sales of "Datascope" medical equipment made in 1965-No basis for disturbing Board's finding on entitlement to registration-Appeal dismissed-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6(5), 38(7.2) (as enacted by S.C. 1993, c. 15, s. 66(2)), 56(5)-Canada Evidence Act, R.S.C., 1985, c. C-5, s. 41 (as am. by R.S.C., 1985 (1st Supp.), c. 27, s. 203)-Trade-marks Regulations (1996), SOR/96-195, s. 42.