The Servicemaster Company v. 385229 Ontario Ltd. DBA Masterclean Service Company 2015 FCA 114 (Boivin, Dawson, Stratas JJ.A.)
July 31, 2015
Peter W. Choe for the Appellant Servicemaster Company
Michael Adams for the Respondent 385229 Ontario Ltd. DBA Masterclean Service Company
The appellant, Servicemaster, brought an application for judicial review following a decision of the Trade-marks Opposition Board (Board) refusing to register the appellant’s trade-mark applications. As part of its application for judicial review, the appellant adduced new evidence pursuant to section 56 of the Trade-marks Act. The judge concluded that the new evidence would not have materially affected the Board’s conclusions and he therefore upheld the Board’s decision.
The appellant began operating in Canada in 1954 under the Servicemaster trade-mark in association with carpet cleaning services and subsequently residential cleaning, commercial cleaning, janitorial services, and disaster restoration services. In 1997, the appellant added the descriptive Clean to its trade-mark Servicemaster. Three years later, in August 2000, the appellant filed an application to register the trade-mark Servicemaster Clean from October 1997.
The respondent 385229 Ontario Ltd., which specializes in property loss mitigation and restoration construction, has used the trade-marks Masterclean since November 1971 and Master Clean since May 1980.
On October 25, 2005, the respondent filed a statement of opposition against the appellant’s application to register the trade-mark Servicemaster Clean.
The Board upheld the respondent’s opposition based on a finding of confusion. The Board held that the appellant’s evidence of coexistence without confusion as well as evidence of third party use of similar marks could not be considered under subsection 16(1) of the Act because it postdated the date of the appellant’s first use of the mark Servicemaster Clean. This exclusion of evidence post October 1997 explains why the Board made a finding of confusion.
The appellant submitted that the Servicemaster trade-mark had attracted a significant reputation prior to the date of first use. This evidence was adduced to support this argument given that the Board had found that only the respondent had acquired a reputation in association with the trade-mark. The judge held that the new evidence of sales was simply duplicated evidence already submitted to the Board. This holding, according to the appellant, constituted a palpable and overriding error.
The judge found that “being supplied with more evidence on the topic” would not have materially affected the Board’s findings regarding the trade-mark’s reputation. The Court of Appeal agreed.
The appellant also filed new evidence in order to establish that third parties were using similar marks. Yet this new evidence did not establish use per se, rendering this evidence irrelevant.
The Court of Appeal also found that the judge was correct in concluding, as did the Board, that such evidence did not demonstrate third party use of similar marks.
As a result, there was no palpable and overriding error in declining to draw the suggested inference and in ruling this evidence irrelevant, and the appeal was dismissed.
By: Megan Hodges, Blaney McMurtry LLP