Fiesta Barbeques Ltd. v. General Housewares Corp., 2003 FC 1021

Date: 20030904

Docket: T-463-02

Citation: 2003 FC 1021

Ottawa, Ontario, this 4^th day of September, 2003

Present:           The Honourable Mr. Justice Russell                          

BETWEEN:

                                                    FIESTA BARBEQUES LIMITED

                                                                                                                                                       Applicant

                                                                              - and -

                                          GENERAL HOUSEWARES CORPORATION

                                                                                                                                                   Respondent

                                               REASONS FOR ORDER AND ORDER

Order Sought

[1]                 This is an appeal under section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the "Act") from a decision of the Registrar of Trade Marks (the "Registrar") dated January 18, 2002 (the "Decision") which, following opposition proceedings, refused the Canadian Trade-mark Application No. TMA 816,106 to register the trade-mark GRILL GEAR & Design (the "Subject Trade Mark") as filed by the Applicant.

[2]                 The Application was based upon the proposed use of the Subject Trade Mark in Canada in association with "barbeque accessories, namely barbeque cooking utensils, barbeque rotisseries and barbeque replacement parts."

[3]                 The Applicant seeks an Order setting aside the decision of the Registrar, an Order approving the registrability of the Subject Trade-Mark, and costs of these proceedings.

Grounds

[4]                 The Registrar decided that the words "GRILL GEAR", when sounded, are clearly descriptive of the wares covered in the Application contrary to provision 12(1)(b) of the Act. The fact that the Subject Trade Mark has a design to it, that includes a flame in the place of the letter "A", does not change the fact that, when the average consumer sounds out the Subject Trade Mark, it is offensive to 12(1)(b) of the Act. Furthermore, the Registrar found that the evidence did not establish that the Subject Trade Mark had become distinctive in Canada.

[5]                 The Applicant has filed fresh evidence that was not before the Registrar for the purposes of this appeal in the form of an affidavit of Mr. Patrick Minshall, the President of the Applicant.

[6]                 The Applicant submits that the appropriate standard of review is correctness when there is an error of law, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact, or where the finding was outside the scope of the expertise of the Registrar. Otherwise, the standard should be reasonableness simpliciter.

[7]                 The Applicant submits that the issue for consideration under 12(1)(b) of the Act is whether others would be deprived of something they already possess, namely the descriptive words for certain goods (See: Clarkson Gordon v. Registrar of Trade-Marks (1985), 5 C.P.R. (3d) 252 (F.C.T.D.) at pp.255-6; Aluminum Goods Ltd. v. Registrar of Trade-Marks (1954), 19 C.P.R. 93 at 101-103; Association of Professional Engineers of Ontario v. Registrar of Trade-Marks (1959), 31 C.P.R. 79 at 88 (Ex.Ct.). The Applicant argues that the fresh evidence before the Court indicates that the words "grill gear" were not in use by others to describe barbeque accessories. The Registrar's finding is also inconsistent with his other finding that "no evidence has been furnished by the opponent to show that there has been any commercial usage by third parties of the applicant's mark such that it has become recognized in Canada as designating barbeque cooking utensils, barbeque rotisseries or barbeque replacement parts."

[8]                 The Applicant also alleges that the Registrar erred in law in relying on the Applicant's disclaimers at page 6 of his decision. They were intended to be without prejudice as filed and were made in accordance with section 35 of the Act.

[9]                 The Registrar further erred, according to the Applicant, by finding that the Subject Trade Mark was descriptive. It is a design that incorporates the words "GRILL GEAR". The Subject Trade-Mark should have been considered in its entirety to determine whether it is descriptive. Parliament could not have intended that a fanciful design which merely contains a descriptive term should not be registrable. The Subject Trade-Mark must be more than merely suggestive of a meaning; it must be "clearly descriptive." Moreover, even if the Subject Trade-Mark has some meaning in relation to the wares, a mark is not necessarily "descriptive" for the purpose of s. 12(1)(b) unless that meaning relates to an intrinsic characteristic of the wares. (SeeRegistrar of Trade-Marks v. Provenzano (1978), 40 C.P.R. (2d) 288 (Fed. C.A.)).

[10]            The Applicant further submits that "90-100%" of the exhibits attached to the Krit affidavit made on behalf of the Respondent were inadmissible or of little material weight in assessing whether the term "Grill Gear" was in descriptive use in connection with barbeque accessories.

[11]            The Applicant submits, in addition and in the alternative, that the Registrar erred in stating that the material date with respect to s. 12(1)(b) is the date of the decision rather than the filing date of the Application. The Registrar relied on the decision of Lubrication Engineers Inc. v. Canadian Council of Professional Engineers (1992), 41 C.P.R. (3d) 243. The Applicant submits that the dicta in that case regarding the material date were obiter. Moreover Canadian Council of Professional Engineers, supra relies on dicta in Park Avenue Furniture Corp v. Wickes/Simmons Bedding Ltd (1991), 37 C.P.R. (3d) 413 (F.C.A.) at pp. 422-4, which also discusses the material date under s.12(1)(b) in obiter. Furthermore, the dicta in Park Avenue, supra, were in direct contradiction to the express wording of s.12(1)(e), s.9, s.10, s.13(1), s.12(2), s.12(1)(a) or (b) and s.16(3)(b) which support the material date as being the filing date.

[12]            In the further alternative, the Applicant submits that the dicta in Park Avenue, supra, are contrary to the decision of the Supreme Court of Canada in Lightning Fastener Co. v. Canadian Goodrich Co., [1932] 1 D.L.R. 297 affirming [1931] 2 D.L.R. 625 at 301-302. While it is admitted by the Applicant that this case was decided under the old Act, the Applicant submits that there is no material distinction between the old and new legislation in terms of relevant dates for assessing registrability.

[13]            The Applicant also submits that it makes more business sense that the relevant date under s. 12(1)(b) should be the date of filing, or the date of first use, rather than the decision date.

[14]            This case is distinguishable from the previous case relied upon by the Registrar concerning the word Mark GRILLGEAR where no evidence was filed by the Applicant.

[15]            Finally, the case of Lightning Fastener Co. Ltd., supra, clearly states that, in order to deny registration based on descriptive use, it must be shown that at the date of application the word was a descriptive name in current use. Sporadic evidence is not enough; the evidence must show "a general acceptance and a common use of the word for the purpose of describing the article itself." The Applicant says that the evidence in this case did not meet this threshold.

[16]            The Respondent has not filed a Notice of Appearance, has made no written submissions on this Application and did not appear at the hearing on June 4^th, 2003.

RELEVANT LEGISLATION:

Trade-marks Act, R.S.C. 1985, c. T-13

STANDARD OF REVIEW:

[17]      A finding for which no additional evidence is filed should be accorded considerable deference (Garbo Creations Inc. v. Harriet Brown & Co. (1999), 3 C.P.R. (4^th) 224 (T.D.) at 235. Hence, the standard of review where no significant additional evidence has been filed is one of "reasonableness". In such a case, the Court should only interfere where the decision was "clearly wrong" (Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (F.C.A.), at 168 and 181-182).

[18]      Where additional evidence is introduced, Evans J., in Garbo, supra, indicated that the appropriate standard to apply to the findings of fact to which the evidence relates is correctness:

23 The provision in subsection 56(5) allowing the parties to introduce additional evidence on the appeal may suggest a correctness standard on those findings of fact to which the evidence relates. However, it does not necessarily follow that the same standard should apply to the Registrar's findings on other facts.

24 Indeed, even when additional evidence is admitted on appeal, it still may be appropriate to ask whether the Registrar's decision was wrong in the light of that evidence, rather than how the appellate court would have decided the question if it had been before the court de novo. Of course, the more significant the additional evidence the greater the scope for the court to exercise its own independent judgment on the finding of fact in question.

ANALYSIS

A. 12(1)(b)

[19]       The Registrar found that the Applicant's GRILL GEAR & Design mark was contrary to section 12(1)(b) of the Act in that, when sounded, it was clearly descriptive or deceptively misdescriptive in the English language of the character or quality of the wares in association with which it was proposed to be used.

[20]       In coming to this conclusion, the Registrar relied upon and adopted the reasoning in General Housewares Corp. v. Fiesta Barbeques Ltd., 13 C.P.R. (4^th) 177, a related opposition to the Applicant's previous GRILLGEAR application in which Hearing Officer Bradbury had found GRILL GEAR contrary to 12(1)(b) because:

(a)      the Opponent had provided evidence to show that "others have used the term "grill gear" to describe barbecue equipment" even though the evidence was "not overwhelming";

(b)      the word "grill" is commonly understood to be analogous to "barbecue" and "gear" is generally understood to mean "equipment";

(c)      other traders in the barbecue industry would likely wish to use the word "grill gear" to describe their wares; and

(d)      the Applicant had not filed any evidence to satisfy the burden on it to show that its trade mark was not contrary to 12(1)(b).

[21]       In addition to adopting the reasons of Hearing Officer Bradbury, the Registrar also relied upon the fact that the Applicant, in its own catalogue, used the words "grill" and "gear" in a descriptive manner. The Registrar further concluded that "the applicant's recent disclaimer of the words GRILL and GEAR apart from its trade mark in its amended application" was consistent with the conclusion that the words were "clearly descriptive."

[22]       The Registrar also addressed the fact that the Applicant was seeking to register a design mark that includes the words "GRILL GEAR" and not just the words themselves. The Applicant argued that a design mark cannot be sounded in its entirety, but the Registrar concluded that "the average consumer of the applicant's wares would not sound the applicant's mark by reference to all the elements forming the mark." The rationale was that "a word mark which includes design features such as the applied for trade-mark would, in my view, be sounded by reference to the dominant words forming the mark."

[23]       The Registrar asserted that the material date for considering the s. 12(1)(b) ground was "the date of the decision." This is significant in this case because much of the evidence submitted by the Respondent, and which the Registrar agreed was "not overwhelming" in any event, involved instances of use of the "grill gear" that occurred after the filing date.

[24]       As the Applicant points out, there are several errors in the Registrar's decision. To begin with, the Registrar should not have placed reliance upon the Applicant's disclaimer of the words "GRILL" and "GEAR" to support a decision under s. 12(1)(b). Section 35 of the Act reads as follows:

[25]       Clearly, this provision does not allow a "without prejudice" disclaimer to affect "the applicant's rights then existing or thereafter arising in the disclaimed matter... ."

[26]       Also, in deciding that the material date for considering 12(1)(b) was "the date of the decision" (see, in this regard, The Canadian Council of Professional Engineers (1996) v. Lubrication Engineers, Inc., 41 C.P.R. (3d) 243 (F.C.A.)); the Registrar ignored the decision in Lightning Fastener Co. v. Canadian Goodrich Co., [1932] 1 D.L.R. 297, [1932] S.C.R. 189">[1932] S.C.R. 189 (delivered under previous legislation) and applied in Association of Professional Engineers v. Registrar of Trade-Marks (1959), 31 C.P.R. 79 (Ex. Ct.), at pp. 87-88 (delivered under the current version of the legislation), that the applicable date is the date of the application.

[27]       If these factors are taken into account, the Registrar's decision under s. 12(1)(b) is based upon nothing more than a few sporadic examples of the use of the words "grill gear" in the relevant publications cited by the Respondent in opposition proceedings, the Registrar's own conclusion that "grill" is commonly understood to be analogous with "barbecue" and "gear" means "equipment", and the somewhat speculative conclusion that other traders would likely wish to use "grill gear" to describe their wares.

[28]       Against this we have the additional evidence adduced by the Applicant in this application in the form of an affidavit of Mr. Patrick Minshall, the President of the Applicant, who confirms that none of the Applicant's competitors has ever employed the Subject Trade-Mark, "whether as a trade-mark for the subject wares, or as a term to merely identify or describe the inherent character or quality of the subject wares, in Canada, prior to the filing of the subject applications or at all," and that "the same applies outside Canada" and "neither the terms 'grill gear' or 'grillgear' have been used in the trade to designate or describe barbeque accessories."

[29]       Section 56(5) of the Act clearly allows this fresh evidence to be adduced in this application.

B. Distinctiveness

[30]       The Registrar also agreed with the opponent that the Subject Trade Mark was not distinctive "since the term 'grill gear' is clearly descriptive of the applicant's wares and is used by third parties and in the trade to designate or describe barbeque accessories." The Registrar reasoned as follows:

Since the paragraph 12(1)(b) ground was successful, and since the applicant's mark would, in my view, have been found to have been clearly descriptive when sounded as of the date of opposition, the material date for considering the final ground, it follows that opponent has met its evidential burden in relation to the final ground. Further, it is unclear from the Minshall affidavit as to the extent to which the applicant's mark had become known in Canada as of the date of opposition. As a result, the applicant has failed to meet the legal burden on it in respect of this ground. Thus, this ground of opposition is successful.

[31]       The problem already identified in relation to the 12(1)(b) ground and the new evidence filed by Mr. Minshall make it clear that the Registrar's decision on the lack of distinctiveness was also made in error and without the benefit of sufficient evidence of distinctiveness on the part of the Applicant.

[32]       I am mindful of the fact that the decision of the Registrar should not be set aside lightly and should be given considerable weight. However, taking into account the errors noted above and the new evidence filed with this application, it is not possible to speculate of what decision the Registrar would have made had these matters been correctly addressed and the new evidence available. As section 56(5) of the Act allows the Court to "exercise any discretion vested in the Registrar," the Court is at liberty to make its own decision.

[33]       There is no evidence before me of anything but extremely sporadic use of the terms "grill gear" to refer to barbecue equipment. There is no evidence that allowing this Subject Trade Mark would deprive traders of some right to describe their wares in a way they already do or might wish to do. Also, as a design mark, it is not accurate to say that, when sounded, it is either clearly descriptive or deceptively misdescriptive of the character or quality of the wares or services in association with which it is used or proposed to be used. At most, it is only the verbal component of the Subject Trade-Mark that could be sounded in this way.

[34]       In this case the verbal components of the Subject Trade-Mark and the flame motif have to be looked at as a whole and clearly give it sufficient distinctive elements to distance it from any terminology a trader might wish to use to describe wares of a similar kind.

[35]       In my opinion, the Subject Trade Mark is fairly analogous to the "KIDFITTER" kind of mark discussed in GWG Ltd. v. Registrar of Trade-Marks (1981), 55 C.P.R. 1 (2d) (Fed. T.D.), where two words are combined to make a coined word. In addition, in the present case, a design element is added. As discussed in GWG, supra, the word "clearly" has been introduced in 12(1)(b) of the Act to preserve the registrability of suggestive marks. The issue is not whether the Subject Trade Mark is descriptive or suggestive but whether it is "clearly descriptive." In my opinion, it is not.

[36]       Because the Court is making this decision based significantly upon affidavit evidence that was not before the Registrar, I decline to make any order as to costs.

                                                   ORDER

THIS COURT ORDERS THAT:

1. The appeal is allowed and the order of the Registrar of Trade Marks dated January 18, 2002 is set aside;

2. Trade Mark Application No. 816,106 is allowed;

3. No order is made as to costs.

                                                                                          "James Russell"                    

                                                                                                      J.F.C.C.