Decision highlights importance of determining who intends to use mark

In Alltemp Products Co Ltd v Bit Holder Inc (August 30 2007, unpublished), the Trademarks Opposition Board has upheld an opposition against the application to register the trademark ROTOMOTION on the grounds that the applicant had failed to state accurately who was intending to use the mark. At issue was whether the trademark ROTOMOTION was confusingly similar to the trademarks ROTOM, ROTOM MOTORS and ROTOM MOTON, and whether the trademark application complied with Section 30(e) of the Trademarks Act.

Mark Koch applied to register the trademark ROTOMOTION on the basis of proposed use in Canada for drill and drill drive attachments, bit holders and drill drivers. Koch gave an oral licence to Bit Holder Inc and subsequently assigned the trademark rights to Bit Holder.

Alltemp Products Company Limited alleged that Koch was not the person entitled to registration in view of Alltemp's prior use of the trademarks ROTOM, ROTOM MOTORS and ROTOM MOTON in association with electrical motors and related goods. Alltemp further alleged that the application failed to comply with Section 30(e) of the act because Koch did not intend to use the trademark in Canada in association with the listed goods as of the date of filing the application.

In assessing the issue of confusion, the board noted that the marks of both parties were invented words. The length of time during which the marks had been used and the extent of renown favoured Alltemp. However, the state of the register supported an inference that marks commencing with the element 'roto' were common in the marketplace for machinery and tools. The board determined that the goods did not overlap and that the trademarks were sufficiently different so as to render confusion unlikely.

In determining whether the application complied with the requirements of Section 30(e), the board considered the applicant's true intention. The application was initially filed by an individual and later assigned to Bit Holder. The application as filed contained the following statement: "the applicant intends to use the trademark in Canada with the following specific goods". Although the wording formally complied with the requirements of Section 30(e), Alltemp argued that the statement was not true because Koch intended to use the trademark in Canada through a licensee - namely, Bit Holder. The board determined that the evidentiary burden on Alltemp was lighter than usual, since the facts regarding the applicant's intentions were particularly within the knowledge of Koch himself. Alltemp satisfied its burden through its cross-examination of Koch's affiant.

The board reviewed the jurisprudence and determined that Section 30(e) aims to prevent applicants from trafficking in trademarks. Section 30(e) requires an applicant for a proposed trademark to state an intention to use the mark and who is intending to use the mark - specifically, the applicant by itself or through a licensee, or by itself and through a licensee. Koch did state an intention to use the trademark, but he did not state accurately who was intending to use the mark. The board found that Koch did not intend to engage in trafficking, but had rather unfortunately brought himself within the prohibition intended to prevent such abuses. Therefore, the application failed to comply with the formal requirements of Section 30(e) and the ground of opposition was successful.

This decision is of interest as it highlights the importance of determining who intends to use a trademark at the time of filing the application. If an applicant's intention is to have a licensee use the mark, it must clearly make a statement to this effect or it risks falling within the prohibition intended to prevent trademark trafficking. Even if an applicant has no intention of engaging in trafficking, the application will fail if the formal requirements of Section 30(e) are not met.

Airlie McGhee, Osler Hoskin & Harcourt LLP, Ottawa