TRADE MARKS |
Expungement |
Compulife Software Inc. v. CompuOffice Software Inc.
T-1398-97
2001 FCT 559, Muldoon J.
31/5/01
19 pp.
Application by Compulife Software Inc., under Trade-marks Act, s. 57(1), to expunge trade-marks "CompuOffice", "Across the Board" registered by respondent CompuOffice Software Inc.--Applicant registered owner of "Compulife" trade-mark for wares comprising "computer software and programs for insurance, office management and marketing support" and for services comprising "computerized insurance brokerage, life insurance and annuity services"--Trade-mark used for registered wares since November 18, 1992, for registered services since November 24, 1981--Respondent registered owner of "CompuOffice" trade-mark for wares comprising "office management computer software" Also registered owner of "Across the Board" trade-mark for wares comprising "computer software for survey quotation and information relating to life insurance"--Trade-mark used since July 1993--Act, s. 57 gives exclusive original jurisdiction to Federal Court of Canada to order any entry in register be struck out--In expungement proceedings, trade-mark presumed to be valid, onus on party attacking registration to prove, on balance of probabilities, registration should be expunged--Court must determine whether confusion existed between applicant's "Compulife" trade-mark, respondent's "CompuOffice" trade-mark on May 3, 1996, date of registration of latter trade-mark--Applicant's trade-mark not inherently distinctive per se--Merely suggesting "computerized life" insurance software program--However, given long-standing use in specialized industry, "Compulife" trade-mark acquired inherent distinctiveness--Respondent's "CompuOffice" trade-mark also not inherently distinctive--Merely suggesting "computerized office" software program--For insurance agents, companies, applicant's "Compulife" software product, respondent's "CompuOffice" office management product sufficiently distinct to avoid confusion about source--Both trade-marks used concurrently for 8 years without confusion before "CompuOffice" trade-mark registered--No real likelihood of confusion as to source--Both trade-marks having same prefix "Compu", but with different suffixes "Life", "Office"--Because suffixes sufficiently different, unlikely purchasers of "Compulife", "CompuOffice" software products will think trade-marks originate from same source--Applicant has not discharged burden to show likelihood of confusion between "Compulife", "CompuOffice" trade-marks--No evidence applicant used "Across the Board" as trade-mark within meaning of Act, s. 4--Application dismissed--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 4, 57.