Date: 20060428
Docket: T-1617-04
Citation: 2006 FC 538
Halifax, Nova Scotia, April 28, 2006
PRESENT: The Honourable Mr. Justice John A. O'Keefe
BETWEEN:
H-D MICHIGAN, INC.
Applicant
- and -
THE MPH GROUP INC.
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
O'KEEFE J.
[1] This is an appeal by H-D Michigan Inc. (H-D Michigan or the appellant) under subsection 56(1) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act) from a decision of the Trade-marks Opposition Board (the Registrar) which dismissed the appellant's opposition to the registration of the trade-mark HARLEYWOOD by MPH Group Inc. (MPH or the respondent).
[2] The appellant seeks:
1. an order allowing the appeal and setting aside the decision of the Registrar;
2. an order directing the Registrar to refuse the application for registration of the trade-mark HARLEYWOOD; and
3. costs of this appeal.
Background
[3] On October 15, 1997, MPH applied to register the trade-mark HARLEYWOOD (the proposed mark) based on proposed use in association with the services of the operation of a night club and in association with the wares of caps, sportshirts, sweat shirts, golf shirts, jackets, t-shirts, and mugs.
[4] On April 6, 1999, H-D Michigan filed a statement of opposition to the registration of the proposed mark on the grounds that it is confusing with H-D Michigan's trade-names and trade-marks. On May 7, 1999, MPH filed a counterstatement denying each ground of opposition.
[5] A hearing took place before the Registrar on November 24, 2003. By decision dated June 1, 2004, the Registrar rejected H-D Michigan's opposition to the registration of the proposed mark.
Reasons of the Registrar
[6] The Registrar considered a number of grounds of opposition. Those that are in contention on this appeal are as follows:
1. The proposed mark is not registrable under paragraph 12(1)(d) of the Act because it is confusing with H-D Michigan's registered trade-marks;
2. MPH is not the person entitled to register the proposed mark under subsection 16(3) of the Act because at the date of filing, it was confusing with H-D Michigan's previously used and made known trade-marks, and with its previously used trade-names HARLEY, HARLEY-DAVIDSON, and HARLEY-DAVIDSON MOTOR CYCLES; and
3. MPH should not be able to register the proposed mark as it is not distinctive, within the meaning of section 2 of the Act, of the proposed wares and services, nor is it adapted to distinguish them from those of H-D Michigan.
[7] Before the Registrar, H-D Michigan submitted certification of authenticity of its trade-marks and the affidavits of John R. Troll, Douglas R. Decent, Ross Wilson Danaher, Christine de Lint, and James Michael O'Hara. MPH submitted the affidavit of Rose Oppedisano.
[8] The Registrar considered whether H-D Michigan had used the trade-marks in association with the wares covered by MPH's application. The Registrar cited a number of weaknesses in the evidence tendered by H-D Michigan, including that H-D Michigan had not filed evidence of product use by retailers and other sales information with respect to the alleged sales of clothing, collectibles and memorabilia in Canada in association with H-D Michigan's trade-marks. Consequently, the Registrar found that the evidence fell short of establishing "use" within the meaning of section 4 of the Act, and that this was fatal to H-D Michigan's opposition on the grounds based on section 16 of the Act, insofar as the wares are concerned.
[9] The Registrar also considered the evidence that the trade-mark HARLEY-DAVIDSON has been used in association with the operation of restaurants in New York Cityand Las Vegas, under the name "Harley-Davidson Café". H-D Michigan had submitted evidence that there is a section of the Harley-Davidson Café in New York City that is referenced as "Harleywood", where people can have their picture taken on a Harley-Davidson motorcycle. The Registrar disregarded this evidence because prior use of the trade-mark HARLEYWOOD had not been raised by H-D Michigan as a ground of opposition (see Imperial Developments Ltd. v. Imperial Oil Ltd. (1984), 79 C.P.R. (2d) 12 (F.C.T.D.)).
[10] The Registrar stated that confusion was a key issue to the grounds of opposition. Hence, the Registrar considered the criteria enumerated in subsection 6(5) of the Act: (i) the inherent distinctiveness of the marks; (ii) the length of time that the marks have been in use; (iii) the nature of the wares, services or business; (iv) the nature of the trade; and (v) the degree of resemblance between the marks. The Registrar noted that the ground of opposition based on paragraph 12(1)(d) did not require evidence of use of H-D Michigan's registered trade-marks.
(i) Inherent Distinctiveness
[11] The Registrar found that H-D Michigan's trade-mark HARLEY-DAVIDSON had acquired some distinctiveness in association with motorcycles, but not with regard to other wares because there had not been "proper evidence" of the use of that trade-mark with regard to other wares.
[12] The Registrar also found that H-D Michigan's trade-marks lacked distinctiveness in respect of restaurant and bar services. H-D Michigan alleged that H-D Michigan licensed its wholly-owned subsidiary, Harley-Davidson Motor Company (Harley Davidson), to use the trade-marks HARLEY and HARLEY-DAVIDSON. It was also alleged that under its license, Harley-Davidson is authorized to sublicense the use of these trade-marks around the world, and in Canada, Harley-Davidson sublicensed these marks to Fred Deeley Imports Ltd. (Deeley). It was alleged that Deeley sub-licensed the trade-mark HARLEY to Mr. O'Hara for use in association with a restaurant named "Jim's Harley-Diner" located in Delta, British Columbia. However, the Registrar found that H-D Michigan had not tendered evidence that Deeley was authorized to enter into this sub-licence, or evidence of means established by the licensor to assure direct or indirect control of the character or quality of the services provided by Mr. O'Hara. The Registrar noted that Mr. O'Hara's exhibits displayed the HARLEY mark, but did not indicate the owner of those marks or that they are used under licence. Thus, the Registrar concluded that use of the HARLEY and HARLEY-DAVIDSON trade-marks was non-distinctive with regard to restaurant services because they were not being used in a manner that was protected by section 50 of the Act.
(ii) Length of Time Marks Have Been in Use
[13] H-D Michigan alleged that the HARLEY-DAVIDSON trade-mark was first used in the United Statesin 1903. The Registrar found that the length of time that the marks have been used clearly favours H-D Michigan.
(iii) & (iv) Nature of the Wares, Services or Business and Nature of the Trade
[14] The Registrar found that the services covered by the proposed mark were similar to those covered by H-D Michigan's registered trade-marks TMA Nos. 456,061 (the mark HARLEY for restaurant and bar services) and 455,834 (the mark HARLEY-DAVIDSON for restaurant and bar-services).
[15] The Registrar found that the wares covered by the proposed mark were similar to those covered by H-D Michigan's registered trade-marks TMA No. 28,944 and TMA Nos. 385,695, 286,289 and 286,290, all of which contain the words HARLEY-DAVIDSON and cover clothing and accessories.
(v) Degree of Resemblance
[16] The Registrar found that the proposed mark was visually and orally different from any of the registered trade-marks of H-D Michigan.
[17] Given the non-distinctiveness of H-D Michigan's trade-marks with respect to the wares and services covered by the proposed mark, the Registrar concluded that MPH had proven on the balance of probabilities that there would be no likelihood of confusion between the marks.
[18] The Registrar noted that if he were wrong on the issue of non-distinctiveness, he would have found a likelihood of confusion between the proposed mark and H-D Michigan's registered trade-mark No. TMA 456,051 for the mark HARLEY in association with restaurant services because there is sufficient similarity between those marks.
Issues
[19] The issues in this appeal are:
1. What is the appropriate standard of review?
2. Did the Registrar err in rejecting the appellant's opposition to the registration of the proposed mark by the respondent?
New Evidence
[20] Before the Federal Court, H-D Michigan submitted further evidence by filing the affidavits of Mick Cawthorn, Kevin Hampson, Bremner J. Green, and Linda A. Heban. MPH submitted further evidence by filing the affidavit of Anne Ford.
Applicant's New Evidence
[21] Mr. Cawthorn is the president and owner of Kane's Motor Cycle Shop Ltd. The Cawthorn affidavit stated that Deeley was licensed to use the HARLEY and HARLEY-DAVIDSON marks, and that Deeley had, with the consent of H-D Michigan, sub-licensed to Kane's Motor Cycle Shop Ltd. the right to use the HARLEY and HARLEY-DAVIDSON marks in the operation of a Harley-Davidson dealership and a restaurant and bar named "Kane's Harley Diner". That diner has been operating in Calgary since 1999. The affidavit stated that H-D Michigan maintains control of the use of the trade-marks by Kane's Motor Cycle Shop Ltd. The affidavit also included several photographs that show the use of the HARLEY and HARLEY-DAVIDSON trade-marks in conjunction with Kane's Harley Diner.
[22] Mr. Hampson is a law clerk employed by counsel for H-D Michigan. The Hampson affidavit included a copy of an online news article with the word HARLEYWOOD in the title. The article described Hollywood stars with an interest in Harley-Davidson motorcycles. The affidavit also included excerpts from the website of the Harley-Davidson Café in Las Vegas and online articles pertaining to Kane's Harley Diner.
[23] Mr. Green is the vice-president and general manager of Deeley. The Green affidavit stated that Deeley has distributed clothing to Harley-Davidson dealers across Canada. The affidavit included numerous excerpts of catalogues for apparel and accessories, and photographs of bags and packages for these items, all prominently displaying the HARLEY-DAVIDSON trade-marks. The affidavit further stated that Deeley had granted licences pertaining to the operation of Jim's Harley-Diner (which ceased operating in 2001) and Kane's Harley Diner. It stated that under the terms of the licenses, Deeley exercised control over the use of the trade-marks on behalf of H-D Michigan.
[24] Ms. Heban is the vice-president and chief trademark counsel for H-D Michigan. Ms. Heban's affidavit stated that Deeley is licensed to use the HARLEY and HARLEY-DAVIDSON trade-marks and that it in turn licences Harley-Davidson dealerships in Canada to use the HARLEY trade-marks. Ms. Heban stated that under the terms of these licences, H-D Michigan retains control over the quality and character of the goods and services that are sold in Canada in connection with the trade-marks. This affidavit also included statements and exhibits to the effect that Harley-Davidson is a very valuable brand.
Respondent's New Evidence
[25] MPH submitted the affidavit of Ms. Anne Ford, a legal assistant with counsel for MPH. Ms. Ford presented evidence that H-D Michigan's trade-mark registration No. TMA 456,051 for the mark HARLEY in association with restaurant and bar services was expunged on October 22, 2004 for failure to show use. MPH was the interested party who initiated these expungement proceedings. Ms. Ford also submitted evidence that an application by H-D Michigan for registration of the trade-mark HARLEY (application No. 0891624) in association with various clothing products, filed based on proposed use, was deemed abandoned on May 15, 2000.
[26] Ms. Ford's affidavit included several webpages which refer to places, wares, and services that include the name HARLEY and are not associated with H-D Michigan's wares or services.
Appellant's Submissions
[27] The appellant submitted that the primary issues are whether the respondent has established that the proposed mark has no reasonable likelihood of confusion with H-D Michigan's previously used HARLEY and HARLEY-DAVIDSON trade-marks and trade-names, and whether the respondent has established that the proposed mark is adapted to distinguish its proposed wares and services from those of the appellant.
Standard of Review
[28] The appellant submitted that it has filed further significant evidence, and thus the appropriate standard of review is the standard of correctness (see Dion Neckwear Ltd. v. Christian Dior, S.A., 2002 FCA 29 at paragraph 8).
Material Dates
[29] The appellant submitted, and the respondent agreed, that the material date for considering non-entitlement under subsection 16(3) is the date of filing of the application (October 15, 1997); for assessing distinctiveness under section 2 is the date of opposition (April 6, 1999); and for assessing confusion with a registered trade-mark under section 12 is the date of the Registrar's decision (June 1, 2004).
Confusion
[30] The appellant submitted that the onus is on the trade-mark applicant to establish on a balance of probabilities that there is no likelihood of confusion of its trade-mark with a previously used and registered trade-mark (see Miss Universe, Inc. v. Bohna (1994), [1995] 1 F.C. 614, 58 C.P.R. (3d) 381 at 387 (F.C.A.)).
[31] The appellant submitted that although bald assertions of use are insufficient to establish use of a trade-mark, assertions of facts showing use are sufficient (see Mantha & Associates v. Central Transport, Inc. (1994), 64 C.P.R. (3d) 354 (F.C.A.)). The appellant submitted that it has established use of its trade-marks through its evidence, which includes the manner that the trade-marks were used, sales figures and significant corroborative evidence. The new Heban and Green affidavits provide further facts showing use. The appellant submitted that the Registrar erred by disregarding the appellant's evidence of use.
[32] The appellant submitted that its HARLEY and HARLEY-DAVIDSON trade-marks have a substantial degree of inherent distinctiveness as they are not terms that are commonly used in either the restaurant or bar trade or the clothing trade. The appellant also submitted that these trade-marks have a substantial degree of acquired distinctiveness because of their continual, lengthy and extensive use in the marketplace, making them some of the world's most valuable and best known trade-marks.
[33] The appellant submitted that the Ford affidavit filed by the respondent is irrelevant because it provides evidence that is subsequent to the date of the Registrar's decision. The appellant submitted that the cancellation of its registered trade-mark No. TMA 456,051 for restaurant and bar services is also irrelevant because the Cawthorn and O'Hara affidavits provide sufficient evidence of use.
[34] The appellant submitted that confusion may occur whether or not the wares are of the same general class. In this case, given the appellant's well-known marks, it was submitted that it is likely that the public will assume that the respondent's wares and services are endorsed by the appellant.
[35] The appellant submitted that the word HARLEYWOOD inherently means "associated with Harley-Davidson". The appellant submitted that the use of the word HARLEY as the first part of the HARLEYWOOD mark is an appropriation of the appellant's trade-marks and that the addition of the generic suffix WOOD is insufficient to dispel the likelihood of confusion.
[36] The appellant submitted that the appellant's prior use of the HARLEYWOOD trade-mark in the operation of the Harley-Davidson Café should be considered as part of the "surrounding circumstances" criteria under subsection 6(5) if the Act. The appellant had tendered evidence that the Harley-Davidson Café was in business since prior to the filing of the respondent's trade-mark application. The appellant submitted that the Registrar erroneously ignored such evidence on the ground that reference to use of the word HARLEYWOOD was not included in the appellant's statement of opposition. However, a trade-mark need not be pleaded within the statement of opposition to be considered as part of the "surrounding circumstances" (see Premdor Inc. v. Alcan Aluminum Ltd. (1997), 84 C.P.R. (3d) 393 at 400 (Reg. T.M.)).
Non-distinctiveness
[37] The appellant submitted that the Registrar's finding that the HARLEY and HARLEY-DAVIDSON trade-marks were not distinctive, based on insufficient evidence of a licensed arrangement, was erroneous. The appellant submitted that use which is outside the scope of section 50 does not by itself render a mark non-distinctive. Distinctiveness is a question of fact to be assessed by determining what is the message to the public (see White Consolidated Industries, Inc. v. Beam of Canada Inc. (1991), 47 F.T.R. 172, 39 C.P.R. (3d) 94 (T.D.)). The appellant submitted that in any event, the new affidavits provide ample evidence that the HARLEY and HARLEY-DAVIDSON trade-marks were used under licence and subject to control by the appellant.
[38] Accordingly, the appellant submitted that the respondent has not shown that there was no reasonable likelihood of confusion between the marks, or that the proposed mark was adapted to distinguish its wares and services from those of the appellant.
Respondent's Submissions
Standard of Review
[39] The respondent submitted that the appellant has not filed any material new evidence, and thus the standard that should apply is reasonableness simpliciter.
Confusion and Distinctiveness
[40] The respondent submitted that the only relevant registered trade-mark of the appellant is No. TMA 456,051 for the trade-mark HARLEY for use in association with restaurant and bar services. That trade-mark has now been expunged. The respondent submitted that the expungement renders the appeal moot with regard to the restaurant and bar services (see Everlast World's Boxing Headquarters Corp. v. Amethyst Investment Group, Inc., 2004 FC 875, (2004) 33 C.P.R. (4th) 307).
[41] The respondent submitted that the new evidence offered by the appellant with regard to the licensing and control of the HARLEY and HARLEY-DAVIDSON trade-marks in the operation of diners in Delta, British Columbia and Calgary, Alberta, is immaterial because there is no evidence of licensing prior to the material dates, which are October 1997 for confusion under subsection 16(3), and April 6, 1999 for confusion under section 2.
[42] The respondent submitted that the appellant's HARLEY trade-marks are inherently weak, because Harley is a name and surname (paragraph 12(1)(a) of the Act).
[43] The respondent submitted that the appellant has no registration for just the term HARLEY for clothing, but the appellant does have registrations for the trade-mark HARLEY-DAVIDSON for clothing. The respondent submitted that the appellant has failed to produce a single exhibit showing use of the mark HARLEY itself on clothing, and that the appellant has in fact abandoned its application for the mark HARLEY for clothing. The respondent submitted that H-D Michigan's other trade-mark, HARLEY-DAVIDSON, is substantially different from the proposed mark HARLEYWOOD so as not to lead to a likelihood of confusion.
[44] The respondent submitted that the appellant has not alleged that it has any registrations for the use of the HARLEY mark in association with mugs, and that the appellant has failed to submit evidence of sales of any HARLEY trade-mark in association with mugs.
Analysis and Decision
[45] Issue 1
What is the appropriate standard of review?
The Registrar's decision is to be reviewed on a standard of reasonableness simpliciter (which is synonymous to "clearly wrong"). However, where additional evidence is adduced that would have materially affected the Registrar's findings of fact or exercise of discretion, this Court must come to its own conclusion as to the correctness of the Registrar's decision (see Dion Neckwear Ltd. v. Christian Dior, S.A., 2002 FCA 29 at paragraph 8).
[46] The appellant tendered new evidence that the HARLEY and HARLEY-DAVIDSON trade-marks have been licensed and used in connection with Kane's Harley-Diner which has been in operation in Calgary, Alberta since sometime in 1999. The appellant tendered further evidence concerning Jim's Harley-Diner in Delta, British Columbia. The appellant did not provide evidence that these restaurants were in operation at the date of filing of the application (October 15, 1997) which is the relevant date for assessing non-entitlement, or at the date of the opposition (April 6, 1999) which is the relevant date for assessing distinctiveness. Thus, it cannot be said that the new evidence concerning the restaurants would have materially affected the Registrar's findings of fact with respect to the grounds of opposition based on non-entitlement and non-distinctiveness. On the other hand, this new evidence is relevant to the issue of confusion under paragraph 12(1)(d), which is assessed at the date of the Registrar's decision. This new information would have been part of the "surrounding circumstances" to be considered under subsection 6(5) and would have had a material effect on the Registrar's findings of fact.
[47] The appellant submitted further evidence concerning the licensing arrangements and the degree of control that it exercises over the character and quality of the wares and services. The appellant also submitted evidence to establish use of its trade-marks for clothing and accessories, and for restaurant services in respect of the Harley-Davidson Café in New York and Las Vegas. While much of this evidence is simply repetitive of evidence that was already before the Registrar, the new evidence does provide specific examples of the wares and services being used or made known, as well as specific examples of control being exercised in the licensing arrangements. The new evidence shows wares and packages for the wares bearing the trade-marks, sales figures in Canada for the wares, and website articles referencing the Harley-Davidson Café and the mark HARLEYWOOD. This evidence addresses the inadequacies in the original evidence, which the Registrar had concluded fell short of establishing "use" within the meaning of section 4 of the Act. Thus, I would characterize this as evidence that would have materially affected the Registrar's findings of fact.
[48] The respondent tendered additional evidence before this Court in the form of Ms. Ford's affidavit. That affidavit establishes that on October 22, 2004, H-D Michigan's trade-mark registration no. TMA 456,051 for the mark HARLEY for use in association with restaurant and bar services was expunged for failure to show use. This evidence is significant to, and would have materially affected, the Registrar's assessment of confusion under paragraph 12(1)(d) (see Everlast World's Boxing Headquarters Corp. v. Amethyst Investment Group, Inc., 2004 FC 875).
[49] Further, Ms. Ford's affidavit establishes that on May 15, 2000, an application by H-D Michigan for registration of the trade-mark HARLEY (application no. 0891624) in association with various clothing products, filed based on proposed use, was deemed abandoned. This is an important fact because subsection 16(5) of the Act provides that the right of an applicant to secure registration of a registrable trade-mark is not affected by the previous use or making known of a confusing trade-mark if the confusing trade-mark was abandoned at the date of advertisement of the applicant's application. Here, the application for the proposed mark HARLEYWOOD was advertised on November 4, 1998, which precedes the date of abandonment of the trade-mark HARLEY for various clothing products. The Registrar did not consider subsection 16(5) in rendering its decision, as the parties did not raise the matter before the Registrar, nor did they raise it on appeal before this Court. However, in my opinion, the evidence with respect to the abandoned trade-mark application triggers the application of subsection 16(5) and is thus material to the issue of non-entitlement.
[50] Because the parties tendered new evidence that would have materially affected the Registrar's findings of fact, the standard of review that should apply is the standard of correctness.
[51] Issue 2
Did the Registrar err in rejecting the appellant's opposition to the registration of the proposed mark by the respondent?
The Registrar's grounds for rejecting the opposition, and which are on appeal before this Court, can be summarized under three headings:
1. Confusion under section 12;
2. Non-entitlement under section 16; and
3. Non-distinctiveness under section 2.
[52] I propose to deal with the first ground: confusion under section 12.
[53] After the Registrar issued its decision, H-D Michigan's trade-mark registration no. TMA 456,051 for the mark HARLEY for restaurant and bar services was expunged for failure to show use. Consequently, this trade-mark must no longer be considered to be confusing with the proposed mark in respect of the services of a night club, under paragraph 12(1)(d) of the Act.
[54] There remains H-D Michigan's registered trade-marks Nos. TMA 294,796 (the mark HARLEY for motorcycles), TMDA 28,944 (the mark HARLEY-DAVIDSON for motorcycles, motorcycle clothing and accessories), and TMA 455,834 (the mark HARLEY-DAVIDSON for restaurant and bar services). H-D Michigan owns other registered trade-marks for various motorcycles or motorcycle-related wares and services, but these are not as material to the assessment of confusion.
[55] I am satisfied based on the evidence before me that the appellant established that it has used its trade-marks.
[56] The material date for assessing confusion with a registered trade-mark pursuant to the Act is the date of the Registrar's decision.
[57] When determining whether trade-marks are confusing, reference must be made to section 6 of the Act. For ease of reference, the relevant portions of section 6 are reproduced:
6. (1) For the purposes of this Act, 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 with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.
(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.
. . .
(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.
I will now deal with each of the factors relating to confusion.
[58] Inherent distinctiveness of the trade-marks and the extent to which they have become known
I am of the opinion that the appellant's trade-marks are inherently distinctive. The respondent did not lead evidence to show that the applicant's HARLEY and HARLEY DAVIDSON trade-marks were used by others in association with wares such as restaurant and bar services or clothing and other goods such as mugs. The Canadian consumer would not see the marks as being commonly used in either the restaurant/bar trade or the merchandise trade.
[59] I am of the further view that the appellant's marks have a significant amount of acquired distinctiveness. The marks are well known because of their extensive and lengthy use in the market place. Approximately 34,000 Harley-Davidson motorcycles were sold in Canada between 1999 and 2002. These motorcycles are shipped in boxes which bear the applicant's trade-marks, Harley, Harley-Davidson and Harley Davidson Design. The Harley-Davidson trade-mark has been identified as one of the world's most valuable brands within the "Best Global Brands" survey conducted by Businessweek in 2001, 2002 and 2003. In each year since 1988, Fred Deeley Imports Limited (FDIL), a Canadian sub-licensee of the appellant, has distributed more than 10,000 copies of Harley-Davidson catalogues to retail dealers across Canada who then give these to customers and potential customers. Since 1988, officially licensed Harley-Davidson clothing and accessories have been sold in Canadaat major retailers such as Zellers, Sears, Mark's Work Warehouse, Wal-Mart, Toys "R" Us and other independent clothing stores. The Harley and Harley-Davidson trade-marks have also been used and displayed at Kane's Harley-Diner, a restaurant and bar operated by Kane's Motorcycle Shop Ltd., an authorized Harley-Davidson dealer. The restaurant is located across the street from the motorcycle dealership and the restaurant has operated in Calgary since 1999.
[60] On the other hand, the respondent's proposed mark has not been used in Canada.
[61] I agree with the appellant that the strength of the Harley mark is dominant. Paragraph 6(5)(a) operates in favour of the appellant.
[62] The length of time the trade-marks or trade names have been in use
The appellant's trade-marks have been in use in Canada since 1914 when the first authorized HARLEY-DAVIDSON dealership opened in Canada. The respondent's proposed trade-mark has not been used in Canada. The Federal Court of Appeal in United Artists Corp. v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 at paragraph 25, stated that a mark that has been in use for a long time, versus a newly owned mark, is presumed to have made a certain impression which must be given some weight. Paragraph 6(5)(b) favours the appellant.
[63] Nature of the wares, services or business
The respondent proposes to sell clothing and mugs and operate a night club. This is highly similar to the wares and services that the appellant is providing. This factor favours the appellant.
[64] The nature of the trade and the degree of resemblance between the trade-marks or trade names in appearance or sound or in the ideas suggested by them
The Federal Court of Appeal in United Artists, above, stated at paragraph 30:
Similar to the nature of the wares or services is the consideration of the nature of the trade in which those wares or services circulate. The risk of confusion is greater where the wares or services, though dissimilar, are distributed in the same type of stores or are of the same general category of goods. . . .
In the present case, the wares and services are similar and the nature of the trade will be the same, namely, clothing and restaurant and bar services to customers.
[65] The degree of resemblance between the trade-marks is noticeable. Both marks start with the word HARLEY. There is a difference in appearance and sound as the proposed "Harleywood" mark does have the word WOOD appended to HARLEY, but that is not determinative as the test is to look at the degrees of resemblance between the mark's appearance, sound and meaning. In the present case, the respondent has taken the applicant's HARLEY mark in its entirety. Additionally, it has been held that the first component of the mark is the most important for the purpose of considering whether there is a likelihood of confusion. Another principle is that while the marks must be assessed in their entirety (and not dissected for minute examination), it is still allowable to focus on particular features of the mark that may have a determinative influence on the public's perception of it (see United Artists, above, at page 23). Also, in my view, the addition of the word WOOD to HARLEY does not dispel the confusion. In Cartier Inc. v. Cartier Optical Ltd. (1988), 20 C.P.R. (3d) 68 (T.D.), Justice Dubé stated at page 75:
. . . The addition of the word "Lunettes" to "Cartier" does not really dispel the confusion. Fox wrote as follows in The Canadian Law of Trademarks and Unfair Competition, 3rd ed. (1972) at page 392:
No amount of added matter intended to show the true origin of the goods can affect the question, . . . Indeed, as indicated in a number of cases, the very fact that additions are made to a trade-mark by a defendant only serves to show that the defendant knew he was sailing close to the wind . . .
[66] I am of the view that the factors contained in paragraphs 6(5)(c) and (d) favour the appellant.
[67] All the surrounding circumstances
The appellant has since before the filing of the respondent's application used the trade-mark HARLEYWOOD in connection with the operation of the well-known Harley Davidson Café in New York City. There is a section of the Harley Davidson Café called "Harleywood" where people can see and have their picture taken on a Harley Davidson motorcycle. The hearing officer did not consider this evidence as part of the surrounding circumstances as it was not in the statement of opposition. This is an error as this evidence can still be part of the surrounding circumstances. The above evidence favours the appellant.
[68] Based on the fact that all of the factors favour the appellant, I will not deal with the determination of the weight to be given to each factor.
[69] In Miss Universe, Inc. v. Bohna (1994), [1995] 1 F.C. 614, the Federal Court of Appeal stated at paragraphs 10 to 11:
In determining whether there is a likelihood of confusion, the Court shall have regard to all the surrounding circumstances including those described in s. 6(5) above.
The onus is always upon an applicant for the registration of a trade-mark to establish that, on the balance of probabilities, there is no likelihood of confusion with a previously used and registered trade-mark.
[70] From my analysis above, I am not satisfied that the respondent has met its onus of establishing, on the balance of probabilities, that there is no likelihood of confusion with the appellant's marks Nos. TMA 294,796 (the mark HARLEY for motorcycles), TMDA 28,944 (the mark HARLEY-DAVIDSON for motorcycles, motorcycle clothing and accessories) and TMA 455,834 (the mark HARLEY-DAVIDSON for restaurant and bar services). Accordingly, the Registrar's decision is not correct and must be set aside. My conclusion is reinforced by the fact that the respondent has not suggested that it has any inherent reason for adopting a trade-mark that includes the HARLEY term.
[71] Because of my finding with respect to confusion, I need not deal with the remaining grounds of opposition.
[72] The appellant's appeal is allowed and the appellant shall have its costs of this appeal.
ORDER
[73] IT IS ORDERED that:
1. The appellant's appeal is allowed and the decision of the Registrar set aside.
2. The Registrar is directed to reject the respondent's application for registration of the trade-mark HARLEYWOOD.
3. The appellant shall have its costs of this appeal.
"John A. O'Keefe"
ANNEX
Relevant Statutory Provisions
The relevant sections of the Trade-marks Act, R.S.C. 1985, c. T-13 are as follows:
| 2. In this Act,
"distinctive", in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them;
. . .
"use", in relation to a trade-mark, means any use that by section 4 is deemed to be a use in association with wares or services;
4. (1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.
(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
(3) A trade-mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares.
5. A trade-mark is deemed to be made known in Canada by a person only if it is used by that person in a country of the Union, other than Canada, in association with wares or services, and
(a) the wares are distributed in association with it in Canada, or
(b) the wares or services are advertised in association with it in
(i) any printed publication circulated in Canada in the ordinary course of commerce among potential dealers in or users of the wares or services, or
(ii) radio broadcasts ordinarily received in Canada by potential dealers in or users of the wares or services,
and it has become well known in Canada by reason of the distribution or advertising.
6. (1) For the purposes of this Act, 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 with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.
(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.
(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.
(4) The use of a trade-name causes confusion with a trade-mark if the use of both the trade-name and trade-mark in the same area would be likely to lead to the inference that the wares or services associated with the business carried on under the trade-name and those associated with the trade-mark are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
(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.
12. (1) Subject to section 13, a trade-mark is registrable if it is not
(a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;
. . .
(d) confusing with a registered trade-mark;
(2) A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration.
16. (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with wares or services is entitled, subject to section 38, to secure its registration in respect of those wares or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with
(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;
(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or
(c) a trade-name that had been previously used in Canada by any other person.
. . .
(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;
(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or
(c) a trade-name that had been previously used in Canada by any other person.
. . .
(5) The right of an applicant to secure registration of a registrable trade-mark is not affected by the previous use or making known of a confusing trade-mark or trade-name by another person, if the confusing trade-mark or trade-name was abandoned at the date of advertisement of the applicant's application in accordance with section 37.
50. (1) For the purposes of this Act, if an entity is licensed by or with the authority of the owner of a trade-mark to use the trade-mark in a country and the owner has, under the licence, direct or indirect control of the character or quality of the wares or services, then the use, advertisement or display of the trade-mark in that country as or in a trade-mark, trade-name or otherwise by that entity has, and is deemed always to have had, the same effect as such a use, advertisement or display of the trade-mark in that country by the owner.
(2) For the purposes of this Act, to the extent that public notice is given of the fact that the use of a trade-mark is a licensed use and of the identity of the owner, it shall be presumed, unless the contrary is proven, that the use is licensed by the owner of the trade-mark and the character or quality of the wares or services is under the control of the owner.
. . .
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2. Les définitions qui suivent s'appliquent à la présente loi.
« distinctive » Relativement à une marque de commerce, celle qui distingue véritablement les marchandises ou services en liaison avec lesquels elle est employée par son propriétaire, des marchandises ou services d'autres propriétaires, ou qui est adaptée à les distinguer ainsi.
. . .
« emploi » ou « usage » À l'égard d'une marque de commerce, tout emploi qui, selon l'article 4, est réputé un emploi en liaison avec des marchandises ou services.
4. (1) Une marque de commerce est réputée employée en liaison avec des marchandises si, lors du transfert de la propriété ou de la possession de ces marchandises, dans la pratique normale du commerce, elle est apposée sur les marchandises mêmes ou sur les colis dans lesquels ces marchandises sont distribuées, ou si elle est, de toute autre manière, liée aux marchandises à tel point qu'avis de liaison est alors donné à la personne à qui la propriété ou possession est transférée.
(2) Une marque de commerce est réputée employée en liaison avec des services si elle est employée ou montrée dans l'exécution ou l'annonce de ces services.
(3) Une marque de commerce mise au Canada sur des marchandises ou sur les colis qui les contiennent est réputée, quand ces marchandises sont exportées du Canada, être employée dans ce pays en liaison avec ces marchandises.
5. Une personne est réputée faire connaître une marque de commerce au Canada seulement si elle l'emploie dans un pays de l'Union, autre que le Canada, en liaison avec des marchandises ou services, si, selon le cas:
a) ces marchandises sont distribuées en liaison avec cette marque au Canada;
b) ces marchandises ou services sont annoncés en liaison avec cette marque
(i) soit dans toute publication imprimée et mise en circulation au Canada dans la pratique ordinaire du commerce parmi les marchands ou usagers éventuels de ces marchandises ou services,
(ii) soit dans des émissions de radio ordinairement captées au Canada par des marchands ou usagers éventuels de ces marchandises ou services,
et si la marque est bien connue au Canada par suite de cette distribution ou annonce.
6. (1) Pour l'application de la présente loi, une marque de commerce ou un nom commercial crée de la confusion avec une autre marque de commerce ou un autre nom commercial si l'emploi de la marque de commerce ou du nom commercial en premier lieu mentionnés cause de la confusion avec la marque de commerce ou le nom commercial en dernier lieu mentionnés, de la manière et dans les circonstances décrites au présent article.
(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.
(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.
(4) L'emploi d'un nom commercial crée de la confusion avec une marque de commerce, lorsque l'emploi des deux dans la même région serait susceptible de faire conclure que les marchandises liées à l'entreprise poursuivie sous ce nom et les marchandises liées à cette marque sont fabriquées, vendues, données à bail ou louées, ou que les services liés à l'entreprise poursuivie sous ce nom et les services liés à cette marque sont loués ou exécutés, par la même personne, que ces marchandises ou services soient ou non de la même catégorie générale.
(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.
12. (1) Sous réserve de l'article 13, une marque de commerce est enregistrable sauf dans l'un ou l'autre des cas suivants:
a) elle est constituée d'un mot n'étant principalement que le nom ou le nom de famille d'un particulier vivant ou qui est décédé dans les trente années précédentes;
. . .
d) elle crée de la confusion avec une marque de commerce déposée;
(2) Une marque de commerce qui n'est pas enregistrable en raison de l'alinéa (1)a) ou b) peut être enregistrée si elle a été employée au Canada par le requérant ou son prédécesseur en titre de façon à être devenue distinctive à la date de la production d'une demande d'enregistrement la concernant.
16. (1) Tout requérant qui a produit une demande selon l'article 30 en vue de l'enregistrement d'une marque de commerce qui est enregistrable et que le requérant ou son prédécesseur en titre a employée ou fait connaître au Canada en liaison avec des marchandises ou services, a droit, sous réserve de l'article 38, d'en obtenir l'enregistrement à l'égard de ces marchandises ou services, à moins que, à la date où le requérant ou son prédécesseur en titre l'a en premier lieu ainsi employée ou révélée, elle n'ait créé de la confusion:
a) soit avec une marque de commerce antérieurement employée ou révélée au Canada par une autre personne;
b) soit avec une marque de commerce à l'égard de laquelle une demande d'enregistrement avait été antérieurement produite au Canada par une autre personne;
c) soit avec un nom commercial qui avait été antérieurement employé au Canada par une autre personne.
. . .
(3) Tout requérant qui a produit une demande selon l'article 30 en vue de l'enregistrement d'une marque de commerce projetée et enregistrable, a droit, sous réserve des articles 38 et 40, d'en obtenir l'enregistrement à l'égard des marchandises ou services spécifiés dans la demande, à moins que, à la date de production de la demande, elle n'ait créé de la confusion:
a) soit avec une marque de commerce antérieurement employée ou révélée au Canada par une autre personne;
b) soit avec une marque de commerce à l'égard de laquelle une demande d'enregistrement a été antérieurement produite au Canada par une autre personne;
c) soit avec un nom commercial antérieurement employé au Canada par une autre personne.
. . .
(5) Le droit, pour un requérant, d'obtenir l'enregistrement d'une marque de commerce enregistrable n'est pas atteint par l'emploi antérieur ou la révélation antérieure d'une marque de commerce ou d'un nom commercial créant de la confusion, par une autre personne, si cette marque de commerce ou ce nom commercial créant de la confusion a été abandonné à la date de l'annonce de la demande du requérant selon l'article 37.
50. (1) Pour l'application de la présente loi, si une licence d'emploi d'une marque de commerce est octroyée, pour un pays, à une entité par le propriétaire de la marque, ou avec son autorisation, et que celui-ci, aux termes de la licence, contrôle, directement ou indirectement, les caractéristiques ou la qualité des marchandises et services, l'emploi, la publicité ou l'exposition de la marque, dans ce pays, par cette entité comme marque de commerce, nom commercial - ou partie de ceux-ci - ou autrement ont le même effet et sont réputés avoir toujours eu le même effet que s'il s'agissait de ceux du propriétaire.
(2) Pour l'application de la présente loi, dans la mesure où un avis public a été donné quant à l'identité du propriétaire et au fait que l'emploi d'une marque de commerce fait l'objet d'une licence, cet emploi est réputé, sauf preuve contraire, avoir fait l'objet d'une licence du propriétaire, et le contrôle des caractéristiques ou de la qualité des marchandises et services est réputé, sauf preuve contraire, être celui du propriétaire.
. . .
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