Date: 20091013
Docket:
A-40-09
Citation:
2009 FCA 290
CORAM: SEXTON
J.A.
LAYDEN-STEVENSON
J.A.
TRUDEL
J.A.
BETWEEN:
MASTERPIECE
INC.
Appellant
and
ALAVIDA
LIFESTYLES INC.
Respondent
CO-REASONS FOR JUDGMENT
SEXTON and
TRUDEL JJ.A.
Overview
[1]
This is an
appeal arising from a judgment by Justice O’Reilly dismissing the appellant’s
application for the expungement of the respondent’s registered trade-mark
"Masterpiece Living" [2008 FC 1412].
Facts
[2]
The
appellant and respondent operate in the retirement residence industry. The
appellant claims to have been using an evolving series of unregistered
trade-marks, all of which use the word “masterpiece,” and some of which also
use the word “living,” since 2001. The appellant began using the mark
"Masterpiece Living" either in December 2005 or February 2006,
depending on the exhibit consulted (compare the affidavit of Tim Garforth-Bles,
appeal book, volume 1 at page 131 with the Canadian Trade-marks Database,
appeal book, volume III at page 544).
[3]
The
respondent applied to register the trade-mark “Masterpiece Living” on December
1, 2005 and began using the mark in January 2006 on its website. The
application was granted in March 2007.
[4]
On January
23, 2006, the appellant applied to register the mark “Masterpiece” and on June
29, 2006 applied to register the mark “Masterpiece Living.” In September 2006,
the Canadian Intellectual Property Office denied the appellant’s application on
the basis that the respondent had already applied for the mark “Masterpiece
Living.”
[5]
On March
16, 2007, the appellant applied to expunge the respondent’s trade-mark under
paragraph 18(1)(a) of the Trade-marks Act, R.S.C. 1985, c. T-3
(“the Act”) on the ground that it was confusing—and therefore unregistrable—as
of the date of registration. On December 23, 2008, the appellant’s expungement
application was dismissed.
Analysis
[6]
According
to the parties’ submissions, there are four main issues on appeal. They are as
follows:
A. Did
Justice O’Reilly err by considering confusion only as of the date of registration
and refusing to take into account the possibility of future confusion?
[7]
This is a
question of pure law and is subject to appellate review on a standard of
correctness (Housen v. Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R.
235 at paragraph 9).
[8]
Subsection
6(2) of the Act defines confusion as follows:
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.
(Emphasis
added)
Subsection 6(3) of the Act uses the same language,
only with respect to confusion between trade-marks and trade names.
[9]
The
appellant submits that the phrase “would be likely” means that the Court must
take into account whether, at the time of registration, it was likely that
confusion would occur in the future. The appellant says that while it,
at the time of registration of the respondent’s trade-mark, did not market in
Eastern Canada, it had some plans to do so in the future. The respondent argues,
on the other hand, that the phrase “would be likely” should be construed so
that a likelihood of confusion was required at the time of registration
without looking into the future.
[10]
We agree with the respondent
based on three tools of analysis: an examination of the general context of the Act,
a review of prior case law referred to by the appellant, and an analysis of the
French version of the Act.
(1) The Act in context
[11]
An
analysis of the overarching scheme of the Act reveals different temporal
parameters within which certain situations are to be assessed.
[12]
For example,
it has been determined that the material date for determining confusion with an
existing mark under paragraph 12(1)(d) is the date of disposition of the
matter (see Tradition Fine Foods Ltd. v. Groupe Tradition'l Inc.,
2006 FC 858, [2006] 296 F.T.R. 216 at paragraph 15; Park Avenue Furniture
Corp. v. Wickes/Simmons Bedding Ltd. et al., [1991], 37
C.P.R. (3d) 413 (F.C.A) at page 422).
[13]
This
Court has also found that the material date for assessing confusion in actions
for infringement under section 20 of the Act, though normally the time of the
hearing, may vary depending on the specific facts and pleadings of each case
(see Alticor Inc. v. Nutravite Pharmaceuticals Inc., 2005 FCA 269, [2005]
257 D.L.R. (4th) 60 at
paragraph 16).
[14]
In
addition, paragraph 16(1)(a) provides that a person may not register a
trade-mark if the trade-mark was confusing with a trade-mark previously used in
Canada. It has been
held that the relevant date on which to assess the likelihood of confusion
under this provision is the respondent’s first use of the trade-mark (see Compulife
Software Inc. v. Compuoffice Software Inc., 2001 FCT 559, [2001] 205 F.T.R.
283 at paragraph 37).
[15]
The present case hinges on
subsection 16(3) of the Act, which outlines the grounds upon which an applicant
who has filed an application for registration of a proposed mark is entitled to
secure its registration. It reads as follows:
Proposed
marks
16. (3) Any
applicant who has filed an application in accordance with section 30 for
registration of a proposed trade-mark that is registrable is entitled, subject
to sections 38 and 40, to secure its registration in respect of the wares or
services specified in the application, unless at the date of filing of the
application it was confusing with
(a) a
trade-mark that had been previously used in Canada or made
known in Canada by any other
person; …
[emphasis
added]
[16]
Subsection
16(3) authorizes the registration of a proposed trade-mark unless it was
confusing with another mark at the date of filing of the application.
Subsections 6(2) and 6(3) of the Act define the test to determine whether the
proposed mark is confusing. Therefore, the confusion test for such a mark must
operate within the limits of subsection 16(3).
[17]
As stated
by Justice O’Reilly in the decision below, paragraph 16(3)(a) provides
that “a person is not entitled to register a trade-mark for proposed use if, at
the time the application was filed, it was confusing with a trade-mark that had
been previously used or made known in Canada.” In contrast to the
aforementioned provisions, paragraph 16(3)(a) clearly confines the
confusion test to “the date of filing of the application” of the mark (reasons
for judgment at paragraph 7).
[18]
We are therefore of the view
that in an application for expungement grounded on paragraph 16(3)(a),
the relevant time to test for confusion is the date of filing of the
application for the trade-mark for which expungement is sought.
(2) Prior
case law
[19]
The
appellant cites Oshawa Holdings Ltd. v. Fjord Pacific Marine Industries Ltd.,
[1981] 36 N.R. 71 ("Oshawa") in support of the proposition
that likely confusion may exist despite the fact that the competing trade-marks
are not yet competing in the same geographic area.
[20]
In Oshawa, this Court held as follows:
[I]t is not
necessary . . . for there to be actual use of conflicting marks in the same
area, nor for there to be evidence of actual confusion. The test of ss. 2 and
ss. 3 of Section 6 is not what has happened in fact but what inference would
likely be drawn if the appellant and respondent did use the conflicting marks
and trade names in respect of the different classes of goods in the same area.
(At paragraph 11).
[21]
However,
there are two reasons why this quotation does not assist the appellant. First,
the Court actually went on to refuse the request for expungement, explicitly
considering the fact that the appellant and respondent were operating in two
different regions:
[T]here is a
substantial difference in situation when one considers the extent to which the
competing marks and names have become known. The respondent’s mark is well
known in the four provinces of Western Canada when used with pickled herring.
The appellant’s mark when used with butter and ice cream is well known only in
the immediate area surrounding Kitchener, Ontario. (At
paragraph 13).
[22]
Second,
the Court did not make any reference to s. 16 in its analysis. Specifically, no
mention was made of subsection 16(3), which is crucial to the decision in the
present case because, as has been said previously, it sets the date for the
test of confusion to be applied as the date of filing of the application. Since
it fails to interpret s. 16(3), the analysis in Oshawa cannot be
considered an authority on the temporal scope of a confusion analysis for the
purpose of an expungement proceeding. At the date of filing of the respondent’s
trade-mark, the appellant did not sell its product in the same market as the
respondent. This Court need not consider the appellant’s plans for expansion
after that date.
[23]
The
appellant also relied, in its oral argument, on Cochrane-Dunlop Hardware
Ltd. v. Capital Diversified Industries Ltd., [1976] 30 C.P.R. (2d) 176
(Ont. C.A.), There, the Ontario Court of Appeal found that subsection 6(2)
“does not seem … to preclude any reference to reasonably predictable future
developments,” adding further that “consideration of future events must be
limited strictly to possible expansion of present operations . . . ” (at paragraph
36). However, this was an infringement action, and as discussed above, the
material date for an infringement action may vary depending on
the specific facts and pleadings of each case. Therefore, Cochrane-Dunlop
does not assist in the analysis of an application for expungement with the temporal
restraints of paragraph 16(3)(a).
[24]
The
appellant further cites Mattel, Inc. v. 3894207 Canada Inc., 2006
SCC 22, [2006] 1 S.C.R. 772 at paragraph 53 for the proposition that “what is
at issue is what the registration would authorize the respondent to do, not
what the respondent happens to be doing at the moment.”
[25]
This
proposition does not assist the appellant. Mattel concerned an appeal of
a trade-mark opposition proceeding. There, the appellant argued that the
applications judge had erred by looking into the respondent’s operations
leading up to registration. Justice Binnie agreed that this was an improper
consideration: the relevant inquiry in an opposition proceeding is not whether
there had been confusion in the past, but whether there exists a likelihood of
confusion at the point of registration. The question can therefore be
accurately expressed as follows: what is at issue is what the registration
would authorize the respondent to do at the time of registration, not
what the respondent happened to be doing prior to registration. The
upshot of Mattel, therefore, is that the relevant time period for a
confusion analysis is the point of registration. In the case at bar, the
appellant submits that the relevant time period is the point of registration
and points subsequent. This is inconsistent with the reasoning in Mattel.
Mattel is therefore of no aid to the appellant, and Justice O’Reilly was
correct in his interpretation of the Act.
[26]
Although
subsections 6(2) and 6(3) of the Act use the expression “would be likely
to lead to the inference…”, the case law of this Court and the Federal Court has
explicitly defined the confusion test in the present tense: “is likely
to lead to the inference…” (emphasis added) (see Bohna v. Miss Universe,
Inc. (F.C.A.), [1994] F.C.J. No. 1642 at paragraph 9; United States Polo
Assn. v. Polo Ralph Laurent Corp., [2000] F.C.J. No. 1472 at paragraph 3; Alticor
Inc. v. Nutravite Pharmaceuticals Inc., [2004] F.C.J. No. 268 at paragraph
18). We are therefore of the view that section 6 of the Act constitutes a
hypothetical rather than a forward-thinking test.
(3) The French version of
the Act
[27]
The
French version of the introductory language of subsection 6(1) is also useful
with respect to limiting the scope of the test. While the English version reads “a
trade-mark or trade-name is confusing with another trade-mark or trade-name if
the use of the first mentioned trade-mark or trade-name would cause
confusion …”, the French version of the same subsection uses the present tense
of the verb ‘to cause’—“cause de la confusion” (emphasis added)—and not
the conditional “causerait de la confusion” (would cause confusion).
[28]
Similarly,
subsections 6(2) and (3) of the Act ask if, based on a state of affairs at the
time of registration, a mark or name would be confusing to a hypothetical
customer. On its face, therefore, this does not suggest, in either official
language, that the confusion analysis should look into the future.
[29]
In
his work on bilingual interpretation, Justice Bastarache wrote that “in
interpreting bilingual legislation, the goal is to seek out the shared meaning
between the two versions …” (see Michel Bastarache, et al., The Law of
Bilingual Interpretation, 1st ed. (Markham: LexisNexis Canada Inc., 2008) at 32). Along
the same vein, in R. v. Daoust, [2004] 1 S.C.R. 217 at paragraph 26, the
Supreme Court quoted the two-step analysis proposed by Professor Côté in The
Interpretation of Legislation in Canada, 3rd ed. (Scarborough, Ont.: Carswell,
2000) at page 324:
Unless otherwise
provided, differences between two official versions of the same enactment are
reconciled by educing the meaning common to both. Should this prove to be
impossible, or if the common meaning seems incompatible with the intention of
the legislature as indicated by the ordinary rules of interpretation, the
meaning arrived at by the ordinary rules should be retained.
[30]
The two
linguistic versions of subsection 6(1) have a common meaning and are
reconcilable. The word “would” in the English version implies a hypothetical
situation occurring in the present just as the language of the French version
is indicative of the legislator’s intention to ground the analysis in the
present.
[31]
Had
Parliament wished to require an analysis of the possibility of future
confusion, it could have used the word “will” instead of “would.” Unlike the
word “would,” the word “will” inquires whether, based on the same state of
affairs at the time of registration, a mark will likely be confusing at a time subsequent
to registration. Therefore, the fact that the appellant may have intended to
expand its operations—either into new cities or new markets—was correctly
disregarded by Justice O’Reilly.
[32]
Accordingly,
we are of the view that Justice O’Reilly was correct in his interpretation of
the phrase “would be likely.”
B. Did Justice O’Reilly commit methodological
errors in his confusion analysis?
[33]
The
appellant claims that Justice O’Reilly erred by improperly analyzing the
designs surrounding the mark, as opposed to only examining the words
themselves, and that Justice O’Reilly improperly analyzed the appellant’s and
respondent’s marks side-by-side as opposed to individually.
[34]
These too
are questions of law and are reviewable on a standard of correctness.
[35]
With
respect to the analysis of designs surrounding the marks, the appellant
provides no jurisprudential support for the proposition that this is an unacceptable
method of analysis. On the other hand, we refer the appellant to United
Artists Corp. v. Pink Panther Beauty Corp., [1998] 3 F.C. 534 (C.A.)
at paragraph 37 in which this Court specifically stated that “the ‘get-up,’ or
the way that a product is packaged, and as a consequence the way the mark is
presented to the public, is an important factor in determining whether
confusion is likely.” Absent any support for the appellant’s proposition, it
must fail.
[36]
With
respect to the alleged side-by-side analysis, while this is admittedly an
improper tool, the appellant has not demonstrated that Justice O’Reilly actually
engaged in such analysis. Instead, the appellant demonstrates that Dr. Michael
Mulvey, an expert witness whose evidence Justice O’Reilly accepted in part, may
have engaged in side-by-side analysis. This Court does not take a position on
the merits of Dr. Mulvey’s evidence. However, there is no basis for concluding
that Justice O’Reilly accepted Dr. Mulvey’s evidence uncritically, or that
Justice O’Reilly considered the two marks side-by-side in his own decision. Accordingly,
this claim must fail as well.
C. Did Justice O’Reilly err
in considering evidence with respect to the degree to which the mark was used
and in weighing expert evidence? and
D. Did Justice O’Reilly err in concluding on
the evidence that there was no confusion?
[37]
The
question of whether or not a judge, having entertained evidence, considered it
properly is subject to a high degree of deference. Such a finding will be
overturned only subject to a palpable and overriding error.
[38]
We see no
palpable and overriding error with respect to the manner in which Justice
O’Reilly considered and weighed evidence, and arrived at his conclusion. This
claim must therefore also fail.
Conclusion
[39]
The
appellant has failed to satisfy us that Justice O’Reilly incorrectly
interpreted the Act or that his analytical approach was flawed. We are further
unpersuaded of any palpable and overriding
error with respect to Justice O’Reilly’s consideration of
the evidence or his subsequent conclusions. Therefore, we propose to dismiss
this appeal with costs.
"J. Edgar Sexton"
"Johanne Trudel"
"I
agree
Carolyn Layden-Stevenson J.A."
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