Compulife Software Inc. v. Compuoffice Software Inc.

Compulife Software Inc. v. Compuoffice Software Inc.

Applicant failed to discharge the burden to show invalidity: COMPUOFFICE and COMPULIFE, despite sharing the prefix 'COMPU', were sufficiently distinguishable by suffix, by distinct nature and markets of wares/services, long concurrent use without confusion, and sophisticated purchasers; no evidence COMPUOFFICE lacked distinctiveness as of commencement; ACROSS THE BOARD is not clearly descriptive of intrinsic qualities and applicant failed to prove prior use of ACROSS THE BOARD as a trade-mark within the meaning of the Act; therefore both registrations remain valid and the expungement application is dismissed.

Citation
2001 FCT 559
Parties
Applicant: Compulife Software Inc.; Respondent: CompuOffice Software Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
31 May 2001
Procedural Posture
Expungement Application Under S.57(1) of the Trade Marks Act / Final Reasons for Order Following Application Hearing
Outcome
Application dismissed; registrations maintained
Legal Topics
Expungement, Registrability, Distinctiveness, Confusion, Prior Use, Descriptiveness, Sections 2, 4, 6, 12, 16, 18, 57 of Trade Marks Act
Source Language
English
Intellectual Property Trade Mark Law Administrative Law Expungement Registrability Distinctiveness Confusion Prior Use +2 more

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Parties

Compulife Software Inc.

Applicant

CompuOffice Software Inc.

Respondent

Procedural Posture

Expungement Application Under S.57(1) of the Trade Marks Act / Final Reasons for Order Following Application Hearing

Legal Issues

  1. 1 Whether COMPUOFFICE was confusing with COMPULIFE under s.18(1)(a) and s.12(1)(d)
  2. 2 Whether respondent was not entitled to register COMPUOFFICE because it was confusing with a previously used trade-mark or trade-name under s.16(1) and s.18(1)
  3. 3 Whether COMPUOFFICE lacked distinctiveness at the commencement of proceedings under s.18(1)(b)

Ratio Decidendi

Applicant failed to discharge the burden to show invalidity: COMPUOFFICE and COMPULIFE, despite sharing the prefix 'COMPU', were sufficiently distinguishable by suffix, by distinct nature and markets of wares/services, long concurrent use without confusion, and sophisticated purchasers; no evidence COMPUOFFICE lacked distinctiveness as of commencement; ACROSS THE BOARD is not clearly descriptive of intrinsic qualities and applicant failed to prove prior use of ACROSS THE BOARD as a trade-mark within the meaning of the Act; therefore both registrations remain valid and the expungement application is dismissed.

Court Disposition

Application dismissed; registrations maintained

Orders

  • Application to expunge COMPUOFFICE and ACROSS THE BOARD dismissed
  • Costs awarded to respondent assessed pursuant to Column V of Tariff B