Date: 19990217
Docket: T-2097-96
BETWEEN:
MAN AND HIS HOME LTD., carrying on business as
Alarme Sentinelle / Sentinel Alarm,
Plaintiff,
- and -
MANSOOR ELECTRONICS LTD. and
RENO-DEPOT INC.,
Defendants.
REASONS FOR JUDGMENT
DENAULT J.:
[1] The plaintiff is the owner of three registered trade-marks:
| a) PROTÉGÉ PAR ALARME SENTINELLE & DESIGN, registered under TMA 356,436 on May 26, 1989 and based on use in Canada since at least June 1980; |
| b) SENTINEL ALARM, registered under TMA 367,309 on March 30, 1990 and based on use in Canada since June 1980; and, |
| c) ALARME SENTINELLE, registered under TMA 367,598 on April 13, 1990, and based on use in Canada since June 1980. |
[2] All the marks are registered for use in association with "the operation of the business of installing of security systems which initiate a critical condition signal, the service and maintenance of such systems, the monitoring and surveillance of such systems at a central monitoring station".1
[3] The plaintiff also uses the unregistered mark ALARME SENTINELLE & DESIGN for which it has applied for registration in conjunction with its services based on use since at least January 1995:2
[4] Since 1979, the plaintiff has carried on business under the registered firm name and style SENTINEL ALARM CO. REG"D / CIE D"ALARME SENTINELLE ENRG.
[5] The defendant, Mansoor Electronics Ltd., uses the trade-mark HOME SENTINEL & DESIGN, registered under TMA 455,972 on March 22, 1996 in association with "wireless residential alarm systems".3 Its design mark is reproduced below:
[6] Initially, in its statement of claim, the plaintiff pursued its action againsts the defendants, Mansoor Electronics Ltd. and Reno-Depot Inc., under four separate heads: infringement under section 20 of the Trade-marks Act4 ("Act"), depreciation of goodwill under section 22, passing-off under paragraphs 7(b) and 7(c) and expungement of the respondent"s trade-mark under section 57. The defendants counterclaimed for the expungement of two other of the plaintiff"s registered trade-marks, TMA 350,300 and TMA 367,599.
[7] However, at the outset of the trial, many of the issues raised in the original pleadings were abandoned. In particular, the defendant decided not to pursue its counterclaim. The parties also agreed that the action against the defendant Reno-Depot Inc. would be dismissed without costs and that the plaintiff"s claim with respect to punitive damages would not be pursued. The plaintiff further agreed that it would not be pursuing its claim based on sections 22 and 7(c) of the Act and that its attack on the validity of the defendant"s trade-mark would be restricted to the issue of confusion.
[8] Given the foregoing, there are now only three issues before the Court:
| a) Is the defendant deemed to have infringed on the plaintiff"s rights contrary to section 20 of the Act by using a mark that causes confusion with the plaintiff"s marks? |
| b) By virtue of the defendant"s use of its trade-mark, has it acted contrary to paragraph 7(b) of the Act by directing public attention to its wares in such a way as to likely cause confusion? |
| c) Should the defendant"s mark be expunged from the register on the ground that it was not registrable at the date of registration because it was confusingly similar with the plaintiff"s registered trade-marks? |
[9] In essence, each of these separate but related issues ultimately comes down to the same question, namely, whether the trade-marks are confusing. Put differently, the question to be decided in accordance with subsections 6(2) and 6(3) of the Act is whether there is any "likelihood of confusion" between the trade-marks and trade-name of the plaintiff, which have been used in association with its services, and the trade-mark of the defendant, which has been used in association with its wares:
| 6.(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. |
6.(2) L'emploi d'une marque de commerce crée de la confusion avec une autre marque de commerce lorsque l'emploi des deux marques de commerce dans la même région serait susceptible de faire conclure que les marchandises liées à ces marques de commerce sont fabriquées, vendues, données à bail ou louées, ou que les services liés à ces marques sont loués ou exécutés, par la même personne, que ces marchandises ou ces services soient ou non de la même catégorie générale. |
| 6.(3) The use of a trade-mark causes confusion with a trade-name if the use of both the trade-mark and trade-name in the same area would be likely to lead to the inference that the wares or services associated with the trade-mark and those associated with the business carried on under the trade-name are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. |
6.(3) L'emploi d'une marque de commerce crée de la confusion avec un nom commercial, lorsque l'emploi des deux dans la même région serait susceptible de faire conclure que les marchandises liées à cette marque et les marchandises liées à l'entreprise poursuivie sous ce nom sont fabriquées, vendues, données à bail ou louées, ou que les services liés à cette marque et les services liés à l'entreprise poursuivie sous ce nom sont loués ou exécutés, par la même personne, que ces marchandises ou services soient ou non de la même catégorie générale. |
[10] The likelihood of confusion is determined having regard to all surrounding circumstances including those provided in subsection 6(5) of the Act:
| 6.(5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; (b) the length of time the trade-marks or trade-names have been in use; (c) the nature of the wares, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them. |
| 6.(5) En décidant si des marques de commerce ou des noms commerciaux créent de la confusion, le tribunal ou le registraire, selon le cas, tient compte de toutes les circonstances de l'espèce, y compris_: a) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus; b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage; c) le genre de marchandises, services ou entreprises; d) la nature du commerce; e) le degré de ressemblance entre les marques de commerce ou les noms commerciaux dans la présentation ou le son, ou dans les idées qu'ils suggèrent. |
[11] In addition to these factors, jurisprudence has refined several general principles which are of assistance in examining the question of confusion. It is well established that the Court must not only consider the evidence, it must use its own common sense and look at the issues through the eyes of the average consumer 5, bearing in mind that the average customer will not have the same attitude and care in selecting for instance groceries as in selecting more costly security products or services.6 As well, it must be remembered that the members of the consuming public being subject to a wealth of advertising are reasonably sophisticated about shopping and brand names so that they must not be entirely without "normal powers of recollection", nor are they "totally unaware" or uninformed about what goes on around them.7
[12] At trial, the plaintiff emphasized the overlap in the parties" fields of activity (both operate in the home security business) to support its conclusion of confusion between the trade-marks and trade-name. In turn, the defendant highlighted the differences between the parties" wares, services and trades. Whereas the plaintiff is in the business of providing costly high-end security services, the defendant is just a distributor of wireless alarm systems which are designed for do-it-yourself consumers. The defendant also claimed that the impugned trade-marks are weak in that they use the word "sentinel" taken from the common trade vocabulary and as a result, deserve little protection.
[13] Only two witnesses were called upon to testify at trial: Mr. Yvan Spector, president of the plaintiff corporation, and Mr. Ken Aviss, vice-president of the defendant corporation. After having carefully reviewed their evidence in regard to the criteria found in subsection 6(5), I find that there is no likelihood of confusion for the reasons explained below.
| A. The inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known |
[14] It is well established that trade-marks containing words which are suggestive of the wares or services offered by the owner are considered to be weak marks and consequently, are afforded a minimal level of protection.8 In such cases, even a small difference between the marks will be sufficient to diminish the likelihood of confusion.9 Furthermore, where a person adopts a word in common use and seeks to prevent competitors from doing the same, the trade-marks will have less inherent distinctiveness and the range of protection granted by the Court will be limited.10 Finally, where a party chooses to use a suggestive non-distinctive name, regardless of any acquired distinctiveness, it must accept a certain amount of confusion without sanction.11
[15] In the instant case, neither of the plaintiff"s three trade-marks has a high degree of inherent distinctiveness. In the plaintiff"s own admission, the word "sentinel" was selected in the dictionary because of its meaning as a guard and its connotation to a sense of security. In addition to being highly suggestive of the specific services provided by the plaintiff, the word "sentinel" is used in the commerce to denote security, protection and control. The state of the register of trade-marks to which the defendant referred indicates that several marks bear such a connotation. For example, the word "sentinel" is used in association with safety of chimneys12 (TMA 280,056), secure storage13 (TMA 342,618), and control devices for fire doors14 (TMA 462,156), which are all wares or services related to security, protection and control.
[16] Furthermore, there is no evidence that the plaintiff"s trade-marks have achieved any significant level of notoriety as to suggest acquired distinctiveness. Its marketing has been concentrated in urban Montreal and the surrounding area by advertisements in local directories, newsletters to clients and people of the industry, the word of mouth being the most effective tool of marketing for the plaintiff. In short, the evidence reveals that the plaintiff is more interested in being known as a quality supplier of installation and monitoring of surveillance alarm systems, a particular market niche of people interested in searching out and paying for high monitoring and security services.
[17] To that extent, I am of the view that the plaintiff"s trade-marks and its trade-name, insofar as they are suggestive of its services, the installation, monitoring and surveillance of security systems, are entitled to only a minimal degree of protection.
| B. The length of time the trade-marks or trade-names have been in use |
[18] So far as the evidence reveals that the plaintiff"s trade-name has been in use since 1979 and its marks since 1980, as opposed to the defendant"s mark in use since February 1996, the plaintiff can benefit from a longer period of exclusive use.
C. The nature of the wares, services or business
[19] A large portion of the evidence adduced at trial was aimed at establishing the parties" respective fields of activity. While there are obvious similarities and overlap between them, there are nonetheless significant differences which must be noted.
[20] By its own description, the plaintiff is a provider of quality professional security services, which include the installation of customed-tailored systems and the monitoring of such systems from a central monitoring station. The high level of sophistication of the plaintiff"s services are designed to appeal to "high-end users", such as builders, architects, insurance companies and enforcement agencies, who require professional security services. Naturally, the cost of such services is not inexpensive. The cost of installation of the system varies between $99.00 and $1,000.00 - an average of $600.00 - depending on the number of devices used and the size of the house. The costs are also ongoing, the monitoring fees amounting to at least $19.95 a month.
[21] In sharp contrast, the defendant is a mere distributor of wireless residential alarm systems.15 It offers no services - neither installation nor monitoring - to the consumers of its products. These are designed to be easily and readily installed by the consumer. At the very most, it offers its customers an option, the auto-dialler16, which is only applicable to a segment of its product line and the functionality of which is still left in the hands of the customer. The defendant"s interests lie not with the high-end users like the plaintiff, but with the cost-conscious do-it-yourself consumers who cannot afford a professional security service. The defendant"s packaging and point of sale displays and brochures clearly emphasize the do-it-yourself nature of the products. The products are not suited for use by professional high-end service providers. Their cost is also relatively less expensive than the cost of the plaintiff"s services. Not only are they one-time costs (no monitoring fees), but the products are available at prices ranging from $99.00 to $299.00 for complete systems and installation.
[22] In short, given these differences, the Court considers that the nature of the services provided by the plaintiff and the wares distributed by the defendant are very different and, as a result, there is no likelihood of confusion.
D. The nature of the trade
[23] The evidence also reveals differences between the parties" target markets, channels of distribution and advertisement. As previously indicated, the parties sell at different ends of the trade, the plaintiff targeting the high-end private or commercial market in need of state-of-the-art installation and monitoring services, and the defendant, the lower-end cost-conscious do-it-yourself individual.
[24] The plaintiff sells its services directly to its customers, advertising them directly through newsletters and articles written by its president, an active member of the Canadian Alarm and Security Association (CANASA), a trade association in the home and business security field.
[25] The defendant"s products, however, are available to consumers in retail outlets. It does not do any direct advertising for the sale of its products, except for attending distributor-directed shows, such as the Consumer Electronics Show held in Las Vegas where it attempts to make its products known to potential distributors such as Costco, Home Depot, Reno-Depot, Rona etc. Retail distributors of the defendant"s products are the ones who advertise the products as part of their regular newspaper and flag campaigns from time to time.
[26] Finally, there are geographic differences. The plaintiff"s trade is mainly limited to the greater Montreal area, whereas the defendant"s products are distributed in each province of Canada, in the United States, Mexico and through subdistributors in countries of Central and South America and Eastern Europe. Only a small portion of sales occur in the province of Quebec.
[27] To the extent that both parties are attempting to sell wireless alarm systems to consumers, it can be said that the nature of trade in which they operate is in the same general class. However, given the differences in the nature of the wares and services, the channels of trade, distribution and advertising, the Court finds that there is no likelihood of confusion between the parties" marks, at the very least in respect of the nature of the trades.
| E. The degree of resemblance between the trade-marks or trade- names in appearance or sound or in the ideas suggested by them |
[28] It is well established that the trade-marks are to be looked at in their entirety and not as dissected items. Rather, it is the totality of the marks that must be compared.17 In the instance, it is obvious that both parties" marks, ALARME SENTINELLE / SENTINEL ALARM and HOME SENTINEL & DESIGN, contain particular elements of confusion, i.e., the word "sentinel". It is important to note that both parties had to disclaim part of their trade-marks before they could be registered, the word "alarm" for the plaintiff18 and the word "home" for the defendant.19 The fact that the parties" marks can contain a similar element does not by itself mean that the marks are confusing. When considering these marks in their totality, the Court cannot but come to the conclusion that there is on balance, lack of resemblance and therefore, no likelihood of confusion, taking into consideration the fact, as found above, that there was no evidence that the plaintiff"s services and the defendant"s wares are sold or advertised in the same retail stores.
[29] As further evidence of a likelihood of confusion, the plaintiff has referred the Court to three incidents that, in its submission, lead to the conclusion that there is evidence of confusion in the public with respect to the parties" marks. Mr. Spector testified that in 1996, a client of his company, an alarm installer who had seen one of the defendant"s products on a shelf at Reno-Depot Inc. in the Montreal area, had congratulated him on the fact that it had a new program of sale with the retailer. The plaintiff"s president denied the fact, then realizing that his client had seen one of the defendant"s products on the shelf. Insofar as this story of a person with whom the plaintiff was doing business was told completely in the words of the plaintiff, without the witness being called to the stand, little weight can be attributed to this evidence. With respect to two e-mails that the plaintiff suggested to have received, one in January 1998 from Mississauga, Ontario, and another one in January 1999 with respect to one of the defendant"s products purchased in a retail store in British Columbia to which the defendant has denied ever having sold to, not much weight can be attributed to those pieces of evidence which in any event do not provide sufficient information to support a finding of confusion or likelihood of confusion.
[30] In conclusion, I cannot believe that the coexistence of the defendant"s trade-mark with the plaintiff"s trade-marks or trade-name, having regard to all the surrounding circumstances, creates confusion in the mind of an ordinary consumer even with an imperfect recollection of the marks.
[31] For these reasons, the plaintiff"s action is dismissed with costs.
| Judge |
Ottawa, Ontario
February 17, 1999
__________________1 Exhibits 76, 77 and 78.
2 Exhibit 80.
3 Exhibit 83.
4 R.S.C. 1985, c. T-13.
5 Miss Universe Inc. v. Bohna, "1995 > 1 F.C. 614 at 621-622 (C.A.).
6 General Motors Corporation v. Bellows, "1949 > S.C.R. 678 at 692; Ciba-Geigy Canada Ltd. v. Apotex Inc., "1992 > 3 S.C.R. 120 at 134-138.
7 Monsport Inc. v. Les Vêtements de Sport Bonnie (1978) Ltée (1989), 22 C.P.R. (3d) 356 at 360 (F.C. T.D.).
8 Molson Companies Ltd. v. John Labatt Ltd. (1995), 58 C.P.R. (3d) 527 at 529-530 (F.C.A.); Skydome Corp. v. Toronto Heart Industries Ltd. (1997), 72 C.P.R. (3d) 546 at 550 (F.C. T.D.).
9 Ibid.
10 General Motors Corporation v. Bellows, supra note 6 at 691; Molson Companies Ltd. v. John Labatt Ltd., ibid.
11 Molson Companies Ltd. v. John Labatt Ltd., ibid.
12 Exhibit 97.
13 Exhibit 106.
14 Exhibit 121.
15 The defendant distributes three wireless alarm systems (models WA100, WA200 and WA300) and a video intrusion system (VI400). It also distributes a remote control car security system (S19) and a Sentinel Car Alarm (S26).
16 Exhibit 70.
17 Sealy Sleep Products Ltd. v. Simpson"s-Sears Ltd. (1960), 33 C.P.R. 129 at 135-136 (Ex. Ct.).
18 Exhibits 76, 77, 78 and 80.
19 Exhibit 83.