Date: 19980302
Docket: T-1532-94
| IN THE MATTER OF Sections 56 and 59 of the Trade-marks Act, R.S., 1985, c. T-13 |
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| IN THE MATTER OF an Opposition by Canadian Olympic Association to Canadian Trade-Mark Application No. 612,272 for the trade-mark REPRESENTATION OF A MAN filed July 29, 1988 by Techniquip Limited |
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BETWEEN:
TECHNIQUIP LIMITED
Appellant,
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CANADIAN OLYMPIC ASSOCIATION
Respondent.
REASONS FOR JUDGMENT
JOYAL, J.
[1] This is an appeal, pursuant to sections 56 and 59 of the Trade-marks Act (the "Act"), from a decision of the Registrar of Trade-marks dated April 29, 1994, in which the Trade-marks Opposition Board (the "Board") refused the appellant's trade-mark application No. 612,272 for REPRESENTATION OF A MAN.
The Facts:
[2] On July 29, 1988, the appellant, Techniquip Limited, filed an application to register the trade-mark REPRESENTATION OF A MAN, based on the proposed use in Canada for:
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connectors for attaching a person to lifeline, safety belts and harnesses, safety blocks for arresting falls, fixed-length and retractable lanyards, emergency descent controllers, fall arresters, cable and rope grips, safety hooks and karabiners, shock absorbers for fall protection equipment, anchors for fall protection equipment, trollies for movable anchors for fall protection tripods and davits, ladder safety devices to connect a person to a ladder, confined entry and retrieval equipment for preventing the fall of a person inside a confined space and for facilitating rescue of such persons in the event of his or her incapacitation and; |
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[...] design and installation of custom fall protection systems, consulting services to fall protection systems. |
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[3] The application was advertised for opposition on January 18, 1989. The respondent, Canadian Olympic Association, filed a statement of opposition on April 21, 1989. Grounds for opposition were as follows:
| 1. the non-compliance by the appellant with section 30(1) of the Act since it was aware of the respondent's marks; |
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| 2. the appellant was not entitled to registration since it was not the proper applicant; |
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| 3. the appellant's trade-mark was not registrable, pursuant to sections 9(1)(n)(iii), 11 and 12(1)(e) of the Act, in regards to the 29 official marks of the respondent; |
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| 4. the appellant's trade-mark was not registrable, pursuant to sections 9(1)(n)(iii), 11 and 12(1)(e) of the Act, in regards to the 13 official marks of The Organizing Committee of the 1976 Olympic Games/Le Comité organisateur des jeux olympiques de 1976; and |
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| 5. the appellant's trade-mark was not distinctive in view of the respondent's own various trade-marks. |
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The Trade-marks Opposition Board's Decision:
[4] The Board dismissed the first, second and fifth grounds for opposition, since the respondent failed to file any evidence in support of its allegations.
[5] On the third and fourth grounds, the Board stated that the test to be applied is one of straight comparison of the marks in question, notwithstanding market considerations such as wares or services. The Board went on to state that if the respondent had been relying on only one official mark, these grounds would also have been dismissed. However, the respondent relied on a family of official marks. With some reluctance, the Board broadened the test for resemblance, as per Rothstein J.'s decision in Canadian Olympic Association v. Health Care Employees Union of Alberta1, and concluded that in view of certain similarities, the appellant's mark would be perceived as a member of the respondent's family of marks. The appellant's application was refused by the Board.
Issues:
[6] The appellant alleges that the Board erred in:
| 1. allowing the respondent to rely on its family of official marks; |
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| 2. ignoring the state of the marketplace and the Register as evidence; |
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| 3. not requiring that the respondent provide evidence of use of its family of marks; and |
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| 4. finding that the appellant had not met the onus to show its marks as registrable. |
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The Statute:
[7] The pertinent sections of the Act read as follows:
| 9. (1) No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,
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9. (1) Nul ne peut adopter à l'égard d'une entreprise, comme marque de commerce ou autrement, une marque composée de ce qui suit, ou dont la ressemblance est telle qu'on pourrait vraisemblablement la confondre avec ce qui suit:
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| (n) any badge, crest, emblem or mark
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(n) tout insigne, écusson, marque ou emblème:
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| (i) adopted or used by any of Her Majesty's Forces as defined in the National Defence Act, |
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| (i) adopté ou employé par l'une des forces de Sa Majesté telles que les définit la Loi sur la défense nationale, |
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| (ii) of any university, or |
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| (iii) adopted and used by any public authority, in Canada as an official mark for wares or services, |
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| (iii) adopté et employé par une autorité publique au Canada comme marque officielle pour des marchandises ou services, |
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| in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use;
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à l'égard duquel le registraire, sur la demande de Sa Majesté ou de l'université ou autorité publique, selon le cas, a donné un avis public d'adoption et emploi;
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| 11. No person shall use in connection with a business, as a trade-mark or otherwise, any mark adopted contrary to section 9 or 10 of this Act or section 13 or 14 of the Unfair Competition Act, chapter 274 of the Revised Statutes of Canada, 1952.
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11. Nul ne peut employer relativement à une entreprise, comme marque de commerce ou autrement, une marque adoptée contrairement à l'article 9 ou 10 de la présente loi ou contrairement à l'article 13 ou 14 de la Loi sur la concurrence déloyale, chapitre 274 des Statuts revisés du Canada de 1952.
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| 12. (1) Subject to section 13, a trade-mark is registrable if it is not
(e) a mark of which the adoption is prohibited by section 9 or 10
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12. (1) Sous réserve de l'article 13, une marque de commerce est enregistrable sauf dans l'un ou l'autre des cas suivants:
(e) elle est une marque dont l'article 9 ou 10 interdit l'adoption;
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The Marks:
[8] The respondent's family of marks consists of a squared black background with white stick-like figures on top. Each figure has a detached round head and an upper body portion detached from the lower portion. In the marks, all figures are in movement and engaged in a sporting activity. On every mark, extra lines help define which sport is practiced by the figures.
[9] The applicant's mark consists of a rounded black background with a white stick-like figure on top. The figure has a detached round head and its upper body portion is divided in four sections by what is obviously a harness. This figure is motionless in the pictogram.
Analysis:
1. Did the Board err in allowing the respondent to rely on its family of marks?
[10] It is not contested that the respondent is a "public authority" under the Act. This was confirmed in Registrar of Trade-marks v. Canadian Olympic Association2.
[11] The decision in The Queen v. Kruger3 set the standard test applicable under section 9(1)(n)(iii) of the Act. While comparing different sections of the Act, the Registrar concluded that protection under that particular section was in some respects broader than the confusion test, but in other respects, its resemblance test was narrower than the confusion test provided by section 6.
[12] The test under section 9(1)(n)(iii) is restricted to resemblance between the prohibited mark and the adopted mark. It is not a test of straight comparison, and if the opposed trade-mark is not identical to the mark relied upon by the opponent, then this Court must consider whether the applicant's trade-mark so nearly resembles as to be likely to be mistaken for one or more of the opponent's marks.
[13] In its decision in the case at bar, the Board expressed serious reservations concerning Rothstein J.'s decision in Canadian Olympic Association v. Health Care Employees Union of Alberta4 (the "Health Care decision"), in which the learned judge stated at p. 19:
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I am ... satisfied that when the owner of a family of marks objects to the registration of an allegedly similar mark, it is necessary to consider the characteristics of all the marks in the family to assess the degree of resemblance |
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However, in my opinion, a close and careful look is not the test to be applied [under section 9(1)(n)(iii)]. The question must be determined in the context of whether a person who, on first impression, knowing one mark only and having an imperfect recollection of it, would likely be deceived or confused. |
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The Board was of the opinion that His Lordship's reasoning extended without warrant the scope of protection offered by sections 9 and 12 of the Act.
[14] However, in my opinion, this decision leaves intact the test dictated earlier in Kruger, and the only extension introduced applies to the body of evidence on which a trial judge may rely when assessing the opposed marks under the resemblance test of section 9.
[15] In Big Sisters Association v. Big Brothers of Canada5, Gibson J. discussed at length the Health Care decision, and concluded that the decision therein is in line with the parameters set earlier in Kruger, although the wording of the test is different. Gibson J. systematically rejected the "straight comparison" test and adhered to the test of resemblance and imperfect recollection.
[16] I agree with Gibson J. and think that the test under section 9(1)(n)(iii) is whether a person, on a first impression, knowing the opponent's mark only and having an imperfect recollection of it, would likely be deceived or confused by the applicant's mark.
2. Did the Board err in ignoring the state of the marketplace as evidence?
[17] In this regard, it is clear, since Allied Corporation v. Canadian Olympic Association6, that the absence or similarity of services or wares between the parties is irrelevant under section 9(1)(n)(iii) of the Act.
| 3. Did the Board err in not requiring that the respondent provide evidence of use of its family of marks? |
[18] The common characteristics between registered marks and a mark offered for registration is a matter of some importance. The presence of marks on the Register, other than the one with which the comparison is being made, is one of the circumstances that the Registrar is required to take into account.
[19] It is a recognized principle that when considering the possibility of confusion between two marks, the Registrar must determine if the common element of the two marks is also contained in a number of other marks, since such a commonality tends to dissipate the risk of confusion and distinguish the compared trade-marks from each other by characteristics other than the common feature. In this respect, Harold G. Fox, in The Canadian Law of Trade-marks and Unfair Competition, states at p. 174-175:
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[unregistered and registered trade-marks] If those marks are all registered in the name of the proprietor, the presumption, when the application is before the Registrar, is that those marks form a series of marks used by one owner, thus amounting to a single conflicting registration, and that registration of the mark offered for registration ought prima facie to be refused. If, on the other hand, they are registered in the names of several different owners, the presumption is that the common characteristic is a common feature in the trade and therefore registration ought to be allowed. [...] When the question arises in opposition proceedings, the Registrar is not in a position to make any presumption as regards the surrounding circumstances. Before he can draw the suggested inference, based upon the use of other marks either in the applicant's or the opponent's favour, any such use must be established by evidence. |
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[20] In the Health Care decision, Rothstein J. acknowledged that when an owner of a family of marks objects to the registration of an allegedly similar mark, it is necessary to consider the characteristics of all the marks in that same family. In his reasons, His Lordship does not dismiss the requirement of the official mark owner to prove the existence of his family of marks, nor does he discuss the significance of common features owned by multiple owners. One must assume that in that case, these considerations were applied at the preliminary stage, and that the Canadian Olympic Association's symbols were presumed to exist as a family of marks when the matter reached the Court.
[21] In my opinion, in an opposition proceeding, the Board must establish, with regard to the evidence submitted, whether the opponent can or cannot rely on a family of marks. The opponent no longer benefits from the presumption of use, as in the preliminary stages before the Registrar, and therefore must file evidence in that respect.
[22] In the case at bar, the applicant submitted two affidavits which indicated that the characteristics of the opponent's trade-marks were common features and used by third-party owners. That evidence tends to negate any proprietorial significance otherwise attached to the opponent's alleged family of marks.
[23] In the Thibeault affidavit, the trade-mark researcher lists over 250 registrations for stick figures, featuring lines in the shape of a man, engaged in various activities, with or without the head appearing separate from the body. Some were registered as early as 1959, others as recently as 1989.
[24] Even more relevant, is the Elrifi affidavit, which lists hundreds of stick figure pictograms from telephone directories and newspapers, displaying lines in the shape of a person engaged in various activities. The owners of those marks are involved in businesses ranging from insurance to costume design. Others are local governments setting down traffic directions, shopping centres providing information to customers, or road gangs directing traffic.
[25] It is clear from the evidence submitted by the applicant that marks owned by a multitude of different owners share the common characteristics of the respondent's marks. Therefore, the stick-like figures representing a person in diverse activities should no longer, in isolation, constitute irrefutable protection for official trade-marks of the kind involved here.
[26] I believe that the Board erred when it failed to acknowledge the applicant's evidence in respect of the shared characteristics of the Respondent's marks. In other words, the state of the Register is, in the circumstances I have described, of material consideration.
Conclusion:
[27] The special category of "official" mark provides the owner thereof with a considerable degree of protection. Marks which have been granted this status are quite numerous. This protective cover is available to emblems, crests or flags adopted by the three levels of government in Canada, to the symbol of the Red Cross, and to other symbols as well. It is also available to any badge, crest or emblem of a defence force under the National Defence Act, as well as of the RCMP, of any university, or of any public authority for which public notice of adoption or use has been given (underline mine).
[28] In my view, the intent of section 9 is to remove all the kinds of marks as listed above from the field of trade or business. It is to preclude any person from capitalizing on any well known, respected public symbol and adopting it for his or her own wares or services. These emblems, badges or crests are associated with public institutions, not involved in trade or business, but which nevertheless are deemed to be invested with respectability, credibility and other civic virtues. Section 9, in a sense, ensures that these symbols do not become pawns of trade or proprietorship.
[29] However, some of these institutions, for example the respondent in this appeal, have a relatively open field under section 9(1)(n)(iii) in simply providing public notice of the adoption and use of any number of marks. In turn, these marks can be licensed for commercial purposes, and the lucrative fees earned therefrom used to fund various activities. The downside to this is that institutions are often forced to go after unauthorized users, large and small, local or regional, in order to protect the integrity of their marks and the interests of their licensees.
[30] This privileged position provided by section 9, however, varies with the various sub-paragraphs of section 9(1)(n). The comments of MacGuigan J.A. in Allied Corp. v. Canadian Olympic Association, supra, are clear on this, eg. section 9(1)(n)(i) speaks of "adopted or used" by Her Majesty's Forces, but section 9(1)(n)(iii) specifies "adopted and used". I interpret these statutory distinctions as narrowing somewhat the exclusivity of "public authority" marks as compared to others.
[31] I further interpret this provision as imposing on a public authority the burden of providing evidence of adoption and use whenever a case of conflict occurs. In the Allied Corp. case (supra), MacGuigan J.A., at p. 774, makes it quite clear that section 9(1)(n) "contains qualifying words not found in most of the other paragraphs", meaning that the paragraph is not necessarily an open-ended ticket to an exclusive trade-mark which might be kept in pectore, so to speak, and never used.
[32] In any event, an owner as in the case before me cannot simply rely on a family of marks to establish that an impugned mark consists of or so nearly resembles it as to be likely to be mistaken for it. This interpretation is in keeping with the usual requirements of the statute. It is especially germane in this case, where the Register contains some 250 registered marks consisting of stick figure pictograms genealogically of the same family as the respondent's marks and admitted for registration over close to 40 years. Making the field even more crowded are the exhibits in the Elrifi affidavit, illustrating hundreds of stick figure pictograms affixed to posts or standards throughout Canada.
[33] In the circumstance, it is proper to apply a narrower resemblance test under section 9(1)(n)(iii). The particularized elements in the respondent's marks, all of them using human figures in movement and engaged in sporting activities, cannot reasonably be ascribed to the design submitted by the appellant, which design shows an erect, motionless human figure, wearing what is obviously a harness.
[34] I should not attempt to develop any more doctrine than necessary in dealing with these singular circumstances. I can only conclude that the Registrar was wrong in refusing registration to the appellant. The appeal is accordingly allowed, the whole with costs.
L-Marcel Joyal
J U D G E
O T T A W A, Ontario
March 2, 1998.
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1 (1993), 46 C.P.R. (3d) 12 (F.C.T.D.).
2 (1982), 67 C.P.R. (2d) 59 (F.C.A.).
3 (1978, 44 C.P.R. (2d) 135.
4 (1993) 46 C.P.R. (3d) 12 (F.C.T.D.).
5 Court No. T-29-94, dated November 18, 1996.
6 [1990] 1 F.C. 769 (F.C.A.).
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