Date: 20040720
Docket: T-2112-99
Citation: 2004 FC 1011
Toronto, Ontario, July 20th, 2004
Present: The Honourable Mr. Justice O'Reilly
BETWEEN:
TRADITION FINE FOODS LTD.
Plaintiff
and
THE OSHAWA GROUP LIMITED, SOBEYS INC., ALIMENTATION BLANCHETTE
ET CYRENNE INC., MARCHÉ ALAIN LARIVIÈRE INC., MARCHÉ JIMMY INC.,
MARCHÉ RÉAL CHARTIER INC., 9063-8867 QUÉBEC INC. c.o.b.a.
MARCHÉ JULIEN, ARSENE GAUDREAULT INC., and 2959-1120 QUÉBEC INC.
c.o.b.a. GROSSISTE DE L'ENCAN
Defendants
REASONS FOR JUDGMENT AND JUDGMENT
[1] Mr. Peter Glowczewski, President of Tradition Fine Foods Ltd., is justifiably proud of his business success. He came to Canada from Poland in 1971. He incorporated his company in 1982 and began selling frozen and unbaked muffins and croissants in 1983. Sales started out slow: he grossed $15,000 in 1983. Twenty years later, his sales had increased more than a thousand-fold to $18.5 million. His product line has expanded considerably. He now employs 110 persons.
[2] Mr. Glowczewski registered the trade-mark "Tradition" in 1993, in respect of frozen, unbaked bakery products. In 1997, he registered a second trade-mark for "Tradition" in respect of goods that were baked and then frozen. In 1998, he registered a third trade-mark, a design enveloping his company name in a red oval.
[3] The defendants operate grocery stores. The plaintiff argues that the defendants infringed his trade-marks when they opened a number of stores called "Tradition Market Fresh Foods" in Ontario and Eastern Canada and "Les Marchés Tradition" in Quebec. Only the Quebec stores remain, the others having been renamed in 1999 (in Ontario) and 2002 (in Eastern Canada). The stores sell a wide variety of food products, including baked goods. Most of them have an in-store bakery. They use signage and graphics involving the word "Tradition".
[4] The plaintiff alleges that the defendants' use of the word "Tradition" infringes its trade-mark, is confusing to consumers and is detrimental to the goodwill he has built up over the past twenty years of business. The plaintiff has asked me for a declaration that the defendants have infringed its trade-mark and that the defendants' own trade-mark for "Les Marchés Tradition" is invalid. It seeks damages in the amount of $2 million from each of the defendants. It also asks for an injunction restraining the defendants from using the word "Tradition" and the name "Les Marchés Tradition".
[5] For their part, the defendants argue that their use of the word "Tradition" in their stores' names does not infringe the plaintiff's trade-mark. They also submit that there is little, if any, evidence that consumers are, or would likely be, confused by their co-existence with the plaintiff in the marketplace, or that the defendants' use of the word "Tradition" has caused any harm to the plaintiff. Further, they argue that the plaintiff's trade-marks are, in any case, invalid because they are not distinctive.
I. Issues
[6] The following are the issues that arise in these proceedings. All relevant enactments are set out in the attached Annex.
1. Does the defendants' use of the word "Tradition" in the names "Tradition Market Fresh Foods" and "Les Marchés Tradition" infringe the plaintiff's right to the exclusive use of its registered trade-mark according to s. 19 of the Trade-marks Act, R.S.C. 1985, c. T-13?
2. Does the defendants' use of the word "Tradition" in the names "Tradition Market Fresh Foods" and "Les Marchés Tradition" violate s. 7(b) and s. 20(1) of the Trade-marks Act to the extent that it causes confusion?
3. Has the defendants' use of the word "Tradition" in the names "Tradition Market Fresh Foods" and "Les Marchés Tradition" depreciated the goodwill associated with the plaintiff's registered trade-marks contrary to subs. 22(1) of the Trade-marks Act?
4. Are the plaintiff's registered trade-marks for the word "Tradition" invalid because they are not distinctive according to para. 18(1)(b) of the Trade-marks Act?
[7] Because of the manner in which I have decided the first two issues, it is unnecessary for me to decide Issue 4, which the defendants raised as a defence. I have found no infringement of the plaintiff's trade-mark and little risk of confusion between the wares of the plaintiff and of the defendants. The plaintiff offered no evidence of a depreciation of goodwill, so its argument under Issue 3 must fail.
II. Analysis
1. Does the defendants' use of the word "Tradition" in the names "Tradition Market Fresh Foods" and "Les Marchés Tradition" infringe the plaintiff's right to the exclusive use of its registered trade-mark according to s. 19 of the Trade-marks Act, R.S.C. 1985, c. T-13?
[8] By virtue of its registration of trade-marks for the word "Tradition", the plaintiff has the exclusive right to use that trade-mark in respect of certain wares. With its first trade-mark, the plaintiff obtained the right to exclusive use of the word "Tradition" in respect of "frozen bakery products, namely muffin, cake and cookie batters, croissants, danishes and other pastries". With its second trade-mark, the plaintiff's rights were extended to "baked goods, namely muffins, croissants, cookies, cakes and pastries".
[9] The plaintiff argues that the defendants have infringed its trade-mark by using the word "Tradition" in the name of its grocery stores, both in its signage and advertising, and by placing that word on bags and receipts used at the stores.
[10] The defendants use the names "Tradition Market Fresh Foods" and "Les Marchés Tradition" for its chain of stores. The names appear on the exterior and interior signs at the stores, in advertising flyers, on grocery bags and on sales receipts. Certainly, the word "Tradition" is the dominant element of the graphic design used for the stores. Indeed, employees of the defendants and consumers often use the word "Tradition" as a short-hand version of the stores' name. In some stores, the sales receipts say "Thank you for shopping Tradition".
[11] Even if I were to accept, as the plaintiff urges me to do, that, in effect, the defendants use the word "Tradition" for their stores, not the full names, I fail to see an infringement of the plaintiff's trade-mark. The defendants use the word "Tradition" as part of the name of a commercial grocery business which sells a vast array of food products. They do not use that word specifically in relation to bakery products. In fact, they do not sell bakery products with the word "Tradition" on them. True, in-store bakeries are an important part of the defendants' stores, but that in itself is certainly not enough to show infringement.
[12] The plaintiff also argues that it has the exclusive right to use the word "Tradition" in relation to retail sales of bakery products. However, I do not interpret the plaintiff's registrations as extending to all retail sales of bakery products in respect of which the word "Tradition" might be used. As will be discussed below, use of the word "Tradition" could arguably be confusing, but it does not, strictly speaking, offend the plaintiff's trade-marks for bakery products as protected under s. 19 of the Trade-marks Act.
[13] The defendants assert that their trade-mark for "Les Marchés Tradition" operates as a full defence to the plaintiff's argument about infringement. Unless the plaintiff can show that trade-mark to be invalid, they say, the defendants have an exclusive right to its use in respect of retail grocery store services. The plaintiff responds by arguing that the trade-mark, as it is used by the defendants, is confusing and, therefore, invalid. This argument merges with the second issue I must consider, so I will address it in that context.
[14] On Issue 1, I find that the plaintiff has not proved a violation of its trade-marks.
2. Does the defendants' use of the word "Tradition" in the names "Tradition Market Fresh Foods" and "Les Marchés Tradition" violate s. 7(b) and s. 20(1) of the Trade-marks Act to the extent that it causes confusion?
[15] In actions under ss. 7(b) and 20(1), the plaintiff must show confusion (or deception) on the part of the defendant. The plaintiff concentrated its arguments in this area.
[16] The Trade-marks Act provides that the rights of a trade-mark holder are infringed if a person uses a trade-mark that is likely to be confusing (s. 20(1)). The plaintiff argues that the defendants' use of the names "Tradition Market Fresh Foods" and "Les Marchés Tradition" is confusing, particularly in light of the prominence given to the word "Tradition" on signage and other graphic elements.
[17] The parties agree that to find confusion the Court must answer the following question affirmatively: If both trade-marks were used in the same area, would the average consumer likely infer that the wares of the two vendors actually have the same source? The average consumer is one who has only a vague or imperfect knowledge or recollection of one of trade-marks in issue. One should consider the consumer's first impression: Trade-marks Act, s. 6(2); Miss Universe, Inc. v. Bohna, [1994] F.C.J. No. 1642 (F.C.A.) (QL); United Artists Corp. v. Pink Panther Beauty Corp., [1998] F.C.J. No. 441 (F.C.A.) (QL); Polo Ralph Lauren Corp. v. United States Polo Association et al. (2000), 9 C.P.R. (4th) 51 (F.C.A.). According to s. 6(s) of the Trade-marks Act, the Court must answer this question with regard to all the surrounding circumstances, including the following factors:
(a) the inherent distinctiveness of the trade-marks and the extent to which they have become known;
(b) the length of time the trade-marks have been in use;
(c) the nature of the wares;
(d) the nature of the trade;
(e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them.
[18] In this case, in addition to its submissions on these factors, the plaintiff attempted to meet the test for confusion by presenting two forms of evidence. First, the plaintiff tendered evidence to show that consumers were actually confused as between the plaintiff's and the defendants' businesses, not just likely to be. Second, the plaintiff tendered expert evidence that purported to show that a significant percentage of consumers would infer that the plaintiff's products are made or sold by the defendants. Before considering the statutory factors set out above, I will first consider these two categories of evidence.
(a) Evidence of actual confusion
[19] Where the plaintiff can show actual confusion on the part of consumers, one may infer that consumers would likely be confused by the co-existence of the two trade-marks (Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd. et al., [1987] F.C.J. No. 245 (F.C.A.) (QL)). Still, the Court must make its own conclusion from the evidence (Walt Disney Productions v. Fantasyland Hotel Inc., [1994] A.J. No. 484 (QL); Melo's Food Centre Ltd. v. Borges Foods Ltd., [1996] F.C.J. No. 1441 (F.C.A.) (QL) ).
[20] Mr. Glowczewski became aware that the defendants were using the name "Tradition" when they opened a grocery store on Mount Pleasant Avenue in Toronto in 1997. The store was about five kilometres from his plant and retail outlet. He says that his company received a call from someone who wondered if it had opened a new store. He went to look. He saw a store under renovation which bore a sign which he believed was similar to his own trade-mark. He went inside, looked around and spoke to the store manager. He returned later after the store had opened and took photographs of the signage within it. The word "Tradition" appeared in several places.
[21] Mr. Glowczewski and his receptionist, Ms. Judy Morrison, say they received more phone calls and that they kept records of those calls. One caller asked if the plaintiff had opened a new store. Others said they wanted to contact the new store and were given the wrong number by Bell Canada, or had erred when consulting the directory. Some wanted to sell goods to the new store, find out the store hours or apply for a job.
[22] The defendants disputed the admissibility of this evidence on grounds of hearsay. However, I ruled the evidence admissible because the callers' statements were not being entered for the proof of their contents but simply to show that the calls were made and that the callers said what they said. Whether or not that amounts to evidence of confusion is for me to say.
[23] At its strongest, the evidence shows that a few callers wondered whether there was a connection between the plaintiff and the defendant's grocery stores. They did not assume or conclude that a connection existed. Others were simply given the wrong telephone number. This evidence does not satisfy me that consumers were actually confused as between the plaintiff's bakery business and the defendants' grocery stores. Nor does it satisfy me that consumers would likely infer a connection between the parties. This is different from the situation in Asbjorn, above, in which there was evidence that consumers had actually confused the products manufactured by the two litigants. Here, the evidence relating to misdirected calls may be relevant within the overall test for likelihood of confusion, but it does not amount to evidence of actual confusion: see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.). In addition, in the absence of evidence of actual confusion during a period of co-existence, one may infer that consumers would not be confused: Toys "R" Us (Canada) v. Manjel Inc. 2003 FCT 283, [2003] F.C.J. No. 398 (T.D.) (QL).
(b) Survey evidence
[24] The plaintiff commissioned a survey of consumers in the neighbourhoods surrounding a "Les Marchés Tradition" store in Montreal. A total of 202 persons were interviewed. Each was shown a product and asked "If you wanted to buy this product, at what store would you expect to find it?" The consumers were divided into three groups. The first group (140 persons) was shown a package of muffins bearing the plaintiff's trade-mark "Tradition". The second group (31 persons) was shown a similar package of muffins but the label carried a fictitious trade-mark called "Heritage". The third group (31 persons) was shown a tablecloth with the word "Tradition" on its packaging.
[25] Dr. Ruth Corbin, an expert in public opinion research, designed the survey and supervised its execution. She was qualified to give expert testimony on the methodology and results of the survey. Her written report was admitted into evidence to support the plaintiff's claims. Dr. Corbin found that 32% of the persons in the first group said that they would expect to find "Tradition" muffins at the "Tradition" store. (Almost all consumers referred to the store as the "Tradition" store, rather than "Les Marchés Tradition.") Only 6% of the members of the second group said they would expect to find the "Heritage" muffins at the "Tradition" store. No one in the third group expected to find the tablecloth at the "Tradition" store.
[26] The following are the conclusions Dr. Corbin drew from her survey, as set out in her written report:
A substantial number of consumers reach the inference that TRADITION muffins are made or sold by Les Marchés Tradition. It is reasonable to conclude that consumers draw the inference as a result of the use of the trademark TRADITION, and not as a result of guessing for other reasons, because:
· There was a significantly lower percentage of Tradition answers by the Heritage Group. This result demonstrates that people are not inclined to believe that any muffins can be found at Les Marchés Tradition.
· Only two respondents in the Heritage Group speculated that HERITAGE muffins would come from a store named Heritage. This result demonstrates that people are not inclined to merely guess that there is a store with a word in the name that is the same name as the muffins in front of them.
· No one associated the TRADITION tablecloth with Les Marchés Tradition. This result demonstrates that people are not inclined to believe that any product named Tradition related to serving of food can be found at Les Marchés Tradition.
The three bullet points above represent three possibilities, unrelated to the use of the word Tradition, for why people might have guessed "Tradition" or "Les Marchés Tradition" as the source of TRADITION muffins. Each of these possibilities is contradicted by the results obtained with the control conditions.
[27] These conclusions, I believe, may be paraphrased as follows: Many consumers (32%) believed that "Tradition"muffins would be sold at Les Marchés Tradition, which they referred to as the "Tradition" store. We know that some consumers named the "Tradition" store simply because it was a grocery store they were aware of - not because of a presumed connection based on the name on the label and the name of the store - since some (6%) said that the "Heritage" muffins could be found at the "Tradition" store. The remainder (26%) were not just guessing that "Tradition" muffins might be found at a store called "Tradition" because almost no one believed that "Heritage" muffins would be sold at a store called "Heritage". Further, they were not merely assuming that a food-related product with the word "Tradition" on it would be sold at Les Marchés Tradition, because they did not believe that the "Tradition" tablecloth would be found there. Accordingly, Dr. Corbin maintains that the consumers surveyed must have inferred a connection between the plaintiff's product and the defendants' stores. Other explanations are foreclosed by the control conditions she established.
[28] I am hesitant to second-guess Dr. Corbin's expertise, but I do not find the survey persuasive on the issue of confusion. To repeat, I must decide whether the average consumer would likely infer that the wares of the two vendors have the same source. It is the consumer's first impression that matters or, as Dr. Corbin put it, the person's "top-of-mind" response. But, as Dr. Corbin herself stated, mere guessing or word association would not be enough to show that consumers were drawing an inference. Some actual thought has to go into it, but not much. The problem is, I do not see how the control conditions set up by Dr. Corbin eliminate the possibility of guessing and word association.
[29] How do we know that the interviewees who mentioned the "Tradition" store were not just trying to guess the right answer or had the answer suggested to them by virtue of reading it on the label? How many of them actually inferred a relationship between the plaintiff and the defendants?
[30] I believe Dr. Corbin would answer these questions as follows. We know that people were not simply guessing that the "Tradition" muffins came from the "Tradition" store because they did not tend to guess that the "Heritage"muffins came from a store called "Heritage". But, for myself, I am not surprised that only a few consumers guessed that a fictitious product was sold at a non-existent store. This does tell us, in my view, whether consumers might simply guess that a product called "Tradition" was sold at the neighbourhood grocery called "Les Marchés Tradition". This possibility was contemplated by Dr. Corbin's second control group. Dr. Corbin would say, I believe, that since no one believed that the "Tradition" tablecloth would be sold at "Les Marchés Tradition", consumers in the first group must have been making an inference about the relationship between the plaintiff's bakery products and the "Tradition" store. They were not guessing, and did not have the answer suggested to them by the mere presence of the word "Tradition" on the product. They must have made a connection between the nature of the product and the characteristics of the defendants' stores. Again, however, I do not follow this reasoning. Almost no one believed that the tablecloth would be sold at any grocery store. Most interviewees thought they would find the tablecloth at Zeller's or Wal-Mart (21 out of 31). Only two people thought they might find it at Loblaws. No other grocery store was mentioned.
[31] This tells me that the second control group did not measure the possibility of guessing or word association, which was its purpose. When presented with a product that most people would not expect to find in a grocery store, it is not surprising that no one believed that it could be found at "Les Marchés Tradition", even though it said "Tradition" on it.
[32] The plaintiff argued that Dr. Corbin's Montreal survey replicated her findings from an earlier survey in Toronto after the "Tradition Market Fresh Foods" store opened there. True, the results are similar. However, the Toronto study did not include a second control group. Dr. Corbin acknowledged that for the Montreal survey she set out to address the possibility that the Toronto respondents had been guessing or engaging in word association. Given the design of the second control group in the Montreal survey (i.e. the tablecloth group), I do not find the similarity in results between the Toronto and Montreal surveys of any assistance.
[33] Other aspects of the survey suggest to me that respondents may simply having been guessing. Many of the people in the first group who thought that the "Tradition" muffins came from the "Tradition" store explained their answers by saying that the word "Tradition" was on the label or that "Tradition" was the nearest store. Few supposed that there was a connection between the product and the store. Indeed, almost all of them believed that "Tradition" muffins could be found elsewhere than at "Les Marchés Tradition". Only 8 persons in the first group believed that "Tradition" muffins were exclusive to the "Tradition" store (3 others thought they were exclusive to IGA, the previous owner of the "Les Marchés Tradition" store). This is reliable evidence of the kind of inference that might sustain a claim of confusion, but it is too little to persuade me that the average consumer would make that inference.
[34] The defendants challenged virtually every aspect of the methodology employed by Dr. Corbin, questioned her fidelity to professional standards and impugned her objectivity. I do not find it necessary to address any of these arguments, having considered the results of the survey on their face. While I find that the survey does not prove confusion, I do not question Dr. Corbin's expertise or professionalism. She testified in an objective, candid and straightforward manner before me.
[35] The plaintiff argued that an adverse inference could be drawn from the fact that the defendants did not produce their own survey or produce an expert witness to contradict the plaintiff's survey. It cited Cartier Inc. v. Cartier Optical Ltd./Lunettes Cartier Ltée, [1988] A.C.F. No. 266 (T.D.) (QL) in its favour. It also referred to an article jointly published by Dr. Corbin and counsel for the defendants in which the authors observe "the growing cynicism of Courts in general in dealing with parties who merely critique the survey evidence of others, without proffering their own alternative survey" (Ruth M. Corbin and Arthur Renaud, "What's Good for the Goose is Bad for the Gander: Why Confusion Surveys for Plaintiff and Defendant Should be Different" (2003), 16 I.P.J. 177, at p. 183). I interpret the Cartier case as no more than an example, perhaps, of the kind of cynicism observed by Dr. Corbin and Mr. Renaud. The case does not suggest that an adverse inference should be drawn from a defendant's failure to produce a survey or an expert. Justice Dubé simply noted the absence of such evidence and, in the circumstances of that case, accepted that the plaintiff's survey was valid and reliable. In my view, each case must be decided on the evidence before the Court and according to the burden of proof borne by the plaintiff.
[36] I will now consider the factors relating to the issue of confusion that are set out in s. 6(5) of the Trade-marks Act.
(c) Statutory factors
(i) the inherent distinctiveness of the trade-marks and the extent to which they have become known
[37] The defendants contend that the plaintiff's trade-mark is an ordinary, commonplace dictionary word that is used by many other food producers and vendors, lacks distinctivenness and is entitled to little protection. In the context of a claim of confusion, the question is not whether the plaintiff's trade-mark is entitled to protection but whether the distinctiveness of the trade-mark makes it likely that the average consumer would associate the plaintiff's goods with the defendants' stores.
[38] On this point, I must agree with the defendants. The plaintiff's trade-mark is a common word, suggestive of qualities worthy of respect and preservation, naturally associated with good food. This kind of trade-mark is less distinctive and generally merits less protection than unique trade-marks: Toys "R" Us (Canada) v. Manjel Inc., above; ITV Technologies, Inc. v. WIC Television Ltd., 2003 FC 1056, [2003] F.C.J. No. 1335 (T.D.) (QL). The evidence shows that the name "Tradition", or some close variation of it, is used by many other food producers who co-exist in the marketplace seemingly without confusion.
(ii) the length of time the trade-marks have been in use
[39] Mr. Glowczewski registered his first trade-mark in 1993, but his business has been using the Tradition name since 1983. The defendants adopted their trade-mark in 1997. There is no evidence of any confusion as between the two trade-marks or the two businesses during their years of co-existence, except for the telephone calls discussed above.
(iii) the nature of the wares
[40] The plaintiff's business is specialized. Its wares are confined to bakery products: muffins, croissants, danishes, cookies and cakes. The defendants' business is general. They do sell some bakery products, including goods baked on the premises of their 28 stores, but their wares extend to all of the food products and merchandise one would expect to find in a modern grocery store, sold under a myriad of brand names. In my view, the differences in their wares reduces the likelihood of confusion.
(iv) the nature of the trade
[41] The plaintiff's business is made up largely (60-70% and growing) of sales under a private label, meaning that it sells baked goods to retailers who put their own label on the product that the individual consumer buys. Some buyers - for example, hotels - put no label on the goods at all. The remainder of the plaintiff's business (30-40%) consists of wholesale sales to distributors, institutions, grocery stores and other retail outlets. The plaintiff's products are sold to those major buyers in bulk packaging under its trade-mark. The plaintiff's advertising is directed to institutional and corporate buyers. Almost half of the plaintiff's sales are in the United States.
[42] The defendants' business involves direct sales to individual consumers, all of whom are in Canada, indeed, at present, within the province of Quebec. The plaintiff has a small retail outlet in Toronto, with sales in the range of $80,000 a year.
[43] These differences in the respective business activities of the parties suggest little likelihood of confusion. It is unlikely that the plaintiff's products would be sold in the defendants' stores under its own trade-mark. Accordingly, the situation here is somewhat different than in the case of Maximum Nutrition Ltd. v. Dominion Stores Ltd. (1979), 59 C.P.R. (2d) 179 (T.M.O.B.). There, the plaintiff sold health foods under the trade-mark "Maximum" and the defendants proposed to use the name "Maximum" for a chain of supermarkets. The plaintiffs' goods were sold in the defendant's stores. The plaintiff successfully opposed the defendant's proposed trade-mark.
[44] If the plaintiff's goods were indeed sold in the defendants' stores under its trade-mark, some consumers might well infer that the plaintiff's wares were produced by the defendants. They might conclude that the plaintiff's muffins, for example, emerged from the defendants' in-store ovens. In this sense, the situation before me is somewhat different than in the case of Oshawa Holdings Ltd. v. Fjord Pacific Marine Industries Ltd., [1981] F.C.J. No. 112 (F.C.A.) (QL). There, the Court held that consumers would be unlikely to think that "Dutch Boy" grocery stores produced the jars of "Dutch Boy" pickled herring that were sold in those stores. However, I believe there is little likelihood of confusion on the facts before me, given the nature of the plaintiff's business.
(v) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them.
[45] There is a strong resemblance between the plaintiff's "Tradition" trade-mark and the defendants' trade-mark, as used, for "Les Marchés Tradition" and, previously, for "Tradition Market Fresh Foods". The defendants give prominence to the word "Tradition", increasing the possibility of confusion. However, the trade-marks are not identical and, on that basis, I would again distinguish the Maximum Nutrition case, cited above.
[46] The plaintiff argues that, in effect, the defendants are using the trade-mark "Tradition", not their registered trade-mark for "Les Marchés Tradition", given that the other words "Les Marchés" appear in much smaller script on the defendants' signage, advertising and other graphic elements. I agree that the defendants' use of their trade-mark emphasizes the word "Tradition" and, accordingly, that there is a similarity between the two marks. But I would not agree that the defendants are not actually using their registered trade-mark. In addition, I note that for somewhat descriptive trade-marks such as "Tradition", even small differences may be "sufficient to avert confusion": Office Cleaning Services Ltd. v. Westminster Window and Sign General Cleaners Ltd. (1946), 63 R.P.C. 39; Walt Disney Productions v. Fantasyland Hotel Inc., [1994] A.J. No. 484 (Alta. Q.B.) (QL).
[47] I accept that this factor may be the most important. Still, given the other evidence I have considered and the other statutory factors, including the major differences between the parties' enterprises, I am not persuaded that the average consumer would likely confuse them, notwithstanding the resemblance in their trade-marks.
3. Has the defendants' use of the word "Tradition" in the names "Tradition Market Fresh Foods" and "Les Marchés Tradition" depreciated the goodwill associated with the plaintiff's registered trade-marks contrary to subs. 22(1) of the Trade-marks Act?
[48] To make out a claim under s. 22(1), the plaintiff must show that consumers make a connection between the parties' trade-marks and, as a result, form a negative impression of the plaintiff or draw customers away from it: ITV Technologies, Inc., above, at para. 196; Clairol International Corp. and Clairol Inc. of Canada v. Thomas Supply & Equipment Co. Ltd., [1968] 2 Ex. C.R. 552 (QL).
[49] This aspect of the case was not argued with much vigour. As discussed above, there is no persuasive evidence that consumers infer a connection between the parties. Further, there is certainly no evidence showing that the plaintiff has suffered any loss of reputation or custom due to the activities of the defendants. Accordingly, the plaintiff has not made out a case under s. 22(1).
4. Are the plaintiff's registered trade-marks for the word "Tradition" invalid because they are not distinctive according to para. 18(1)(b) of the Trade-marks Act?
[50] In light of the manner in which I have decided the preceding issues, it is unnecessary to decide this question.
III. Conclusion
[51] For the above reasons, the plaintiff's claim is dismissed. The parties may make written submissions on the issue of costs within 20 days of this judgment.
JUDGMENT
THIS COURT'S JUDGMENT IS that:
1. The claim is dismissed.
2. The parties may make written submissions on the issue of costs within 20 days of this judgment.
"James W. O'Reilly"
J.F.C.
| Trade-marks Act, R.S.C. 1985, c. T-13
When mark or name confusing
6. (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.
What to be considered
(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.
Prohibitions
7. No person shall
...
(b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another;
When registration invalid
18. (1) The registration of a trade-mark is invalid if
... (b) the trade-mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced,
Rights conferred by registration
19. Subject to sections 21, 32 and 67, the registration of a trade-mark in respect of any wares or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those wares or services.
Infringement
20. (1) The right of the owner of a registered trade-mark to its exclusive use shall be deemed to be infringed by a person not entitled to its use under this Act who sells, distributes or advertises wares or services in association with a confusing trade-mark or trade-name, but no registration of a trade-mark prevents a person from making
(a) any bona fide use of his personal name as a trade-name, or
(b) any bona fide use, other than as a trade-mark,
(i) of the geographical name of his place of business, or
(ii) of any accurate description of the character or quality of his wares or services,
in such a manner as is not likely to have the effect of depreciating the value of the goodwill attaching to the trade-mark.
Depreciation of goodwill
22. (1) No person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.
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Loi sur les marques de commerce, L.R.C. 1985, ch. T-13
Quand une marque ou un nom crée de la confusion
6. (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.
Éléments d'appréciation
(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.
Interdictions
7. Nul ne peut_:
[...]
b) appeler l'attention du public sur ses marchandises, ses services ou son entreprise de manière à causer ou à vraisemblablement causer de la confusion au Canada, lorsqu'il a commencé à y appeler ainsi l'attention, entre ses marchandises, ses services ou son entreprise et ceux d'un autre;
Quand l'enregistrement est invalide
18. (1) L'enregistrement d'une marque de commerce est invalide dans les cas suivants_:
[...]
b) la marque de commerce n'est pas distinctive à l'époque où sont entamées les procédures contestant la validité de l'enregistrement;
Droits conférés par l'enregistrement
19. Sous réserve des articles 21, 32 et 67, l'enregistrement d'une marque de commerce à l'égard de marchandises ou services, sauf si son invalidité est démontrée, donne au propriétaire le droit exclusif à l'emploi de celle-ci, dans tout le Canada, en ce qui concerne ces marchandises ou services.
Violation
20. (1) Le droit du propriétaire d'une marque de commerce déposée à l'emploi exclusif de cette dernière est réputé être violé par une personne non admise à l'employer selon la présente loi et qui vend, distribue ou annonce des marchandises ou services en liaison avec une marque de commerce ou un nom commercial créant de la confusion. Toutefois, aucun enregistrement d'une marque de commerce ne peut empêcher une personne_:
a) d'utiliser de bonne foi son nom personnel comme nom commercial;
b) d'employer de bonne foi, autrement qu'à titre de marque de commerce_:
(i) soit le nom géographique de son siège d'affaires,
(ii) soit toute description exacte du genre ou de la qualité de ses marchandises ou services,
d'une manière non susceptible d'entraîner la diminution de la valeur de l'achalandage attaché à la marque de commerce.
Dépréciation de l'achalandage
22. (1) Nul ne peut employer une marque de commerce déposée par une autre personne d'une manière susceptible d'entraîner la diminution de la valeur de l'achalandage attaché à cette marque de commerce.
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FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-2112-99
STYLE OF CAUSE: TRADITION FINE FOODS LTD.
Plaintiff
and
THE OSHAWA GROUP LIMITED, SOBEYS INC., ALIMENTATION BLANCHETTEET CYRENNE INC., MARCHÉ ALAIN LARIVIÈRE INC., MARCHÉ JIMMY INC.,MARCHÉ RÉAL CHARTIER INC., 9063-8867 QUÉBEC INC. c.o.b.a. MARCHÉ JULIEN, ARSENE GAUDREAULT INC., and 2959-1120 QUÉBEC INC. c.o.b.a. GROSSISTE DE L'ENCAN
Defendants
PLACE OF HEARING: TORONTO, ONTARIO
DATE OF HEARING: FEBRUARY 20, 2004
REASONS FOR JUDGMENT
AND JUDGMENT BY: O'REILLY J.
DATED: JULY 20, 2004
APPEARANCES BY:
Mr. G. Piasetzski
Mr. J. Bujan FOR THE PLAINTIFF
Mr. A. B. Renaud
Ms. J. Chan FOR THE DEFENDANTS
SOLICITORS OF RECORD:
PIASETZKI & NENNIGER
Toronto, Ontario FOR THE PLAINTIFF
SIM, HUGHES, ASHTON & MCKAY L.L.P
Toronto, Ontario FOR THE DEFENDANTS
FEDERAL COURT
Date: 20040720
Docket: T-2112-99
BETWEEN:
TRADITION FINE FOODS LTD.
Plaintiff
and
THE OSHAWA GROUP LIMITED, SOBEYS INC., ALIMENTATION BLANCHETTEET CYRENNE INC., MARCHÉ ALAIN LARIVIÈRE INC., MARCHÉ JIMMY INC.,
MARCHÉ RÉAL CHARTIER INC., 9063-8867 QUÉBEC INC. c.o.b.a. MARCHÉ JULIEN, ARSENE GAUDREAULT INC., and 2959-1120 QUÉBEC INC. c.o.b.a. GROSSISTE DE L'ENCAN
Defendants
REASONS FOR JUDGMENT
AND JUDGMENT
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