Salomon Sa c. Tricot Exclusive Inc., 2001 FCT 842

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2001 FCT 842

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Date: 20010731

Docket: T-954-00

Neutral reference: 2001 FTC 842

BETWEEN:

SALOMON S.A.

Appellant

AND:

TRICOT EXCLUSIVE INC.

Respondent

REASONS FOR JUDGMENT

ROULEAU J.

[1] This is an appeal from a decision by the Registrar of Trade-Marks on March 31, 2001 dismissing the opposition by Salomon S.A. (hereinafter "the appellant") to registration application No. 805,808 of February 29, 1996 for the trade mark "SALMONE" by Tricot Exclusive Inc. (hereinafter "the respondent").

[2] The appellant is an artificial person under French law having its head office at 74996, Annecy, Cédex 9, France. It operates a business designing, manufacturing, marketing, distributing, promoting and selling sporting items.

[3] The appellant also does business through subsidiaries, branches and distribution agencies in several countries, including Canada, where it is represented by its subsidiary Salomon Canada Sports Ltée.

[4] The appellant's products and merchandise are sold around the world, including Canada, under the trade marks "SALOMON".

[5] As well as the fact that the "SALOMON" trade marks are registered in over 50 countries around the world, they are the subject of five registrations in Canada. The trade marks are registered in respect of the following wares:

TMA 191,611

(1) Ski equipment, namely, edges, bindings, antifriction sole plates and safety straps, and gauges for installing said ski bindings and antifriction sole plates.

(2) Ski boots, socks, boot parts and foot measures.

(3) Cross-country ski boots.

(4) Ski brakes, ski films, bags, ski bags, boot bags, traveller bags, ski hats, toques, caps, shirts, sweaters, turtleneck shirts, ski gloves, tools for servicing and repairing ski equipment namely jigs, drill bits, plugs, screw extractors, screwdrivers, screw shooters and glue.

[TRANSLATION]

TMA 267,837

(1) Ski and mountain down clothing, namely windbreakers, T-shirts, labels, kneepads, peaked caps, tuques and turtlenecks.

(2) Sport clothing and cross-country ski clothing, namely snowsuits, earmuffs, ski gloves, anoraks, straps, ear covers, headbands, bibs, pullovers, sweater shirts, one-piece sweatsuits, namely overalls, training suits, underwear, footwear, namely boots, shoes, slippers, ski or après-ski mountain boots, boot covers, socks, snow leggings, mittens, mitt covers, stockings and stocking covers.

(3) Ski equipment, especially edges, bindings, antifriction sole plates for skis and ski bindings, safety straps, measures for installing ski bindings and antifriction sole plates.

(4) Ski brakes, heel pieces, belts, racks, ski films, racks, demonstration platforms and models; ski measures, ski parts and releases; tools for repairing and maintaining ski equipment, namely jigs, drills and plugs, pegs, screwdrivers, screw extractors, borers, braces, glue, adjustment knives and keys, ski boring drills, bags, namely ski bags, boot bags, traveler bags, sport bags, knapsacks, fanny packs and clutch bags.

(5) Laces for ski boots, cords, arch supports, sleeve straps, inner boots, inner and outer soles, parts for ski boots and measures.

TMA 298,271

(1) Ski equipment, namely edges, bindings, antifriction sole plates, safety straps and measures for installing said bindings and antifriction sole plates.

(2) Ski brakes, heel pieces, belts, ski films, bags, namely ski bags, traveler bags, ski hats, tuques, shirts, sweaters, jackets, ski gloves, racks, tools for repairing and maintaining ski equipment, namely jigs, drills, and plugs, pegs, screwdrivers, screw extractors, borers, braces and glue.

(3) Footwear for downhill skiing, socks, cords, arch supports, sleeve straps, inner straps, inner and outer soles, footwear parts and gauges.

(4) Ski touring footwear.

(5) Bindings for ski touring and footwear covers for ski touring footwear.

TMA 348,589

Ski equipment, namely bindings, antifriction sole plates for skis and ski bindings, safety straps, measures for installing bindings and antifriction sole plates, ski brakes, belts, ski films; bags, namely ski bags, shoe bags, traveler bags; ski hats, tuques, shirts, sweaters, jackets, ski gloves; racks; tools for repairing and maintaining ski equipment, especially jigs, drill bits and plugs, pegs, screwdrivers, screw extractors, borers, braces and glues; footwear for downhill skiing, socks, cords, arch supports, sleeve straps, inner straps, inner and outer soles, parts for footwear and measures, namely micrometer screws, cursors, fastening catches, size and volume measures.

TMA 377,191

Promotion and advertising service, namely distribution of samples, prospectuses, promotional material (postcards, greeting cards, calendars), distribution of catalogues, products and parts, technical notices, sales pitches, various pamphlets, cassettes and videos; advertising and promotion service with distribution of catalogues, pamphlets, stickers, posters, promotional material; technical assistance service and after-sales service; educational and teaching services for all snow skiing techniques and training of retailers on setting, assembly and adjustment of bindings and setting and adjustment of ski footwear, sales techniques training; service of assistance to retailers who are the subject of claims by consumers; insurance service.

[6] The respondent has its head office at Place du Canada, bureau 900, Montréal, Quebec. It operates a business manufacturing and distributing clothing, footwear and various headwear.

[7] On February 29, 1996 the respondent applied to register the trade mark "SALMONE" for the following wares:

men's women's and children's clothing, namely, pants, trousers, shorts, bermuda shorts, shirts, sweatshirts, T-shirts, handkerchiefs, track suits, jumpsuits, overalls, cardigans, sweaters, jackets, blazers, suits, vests, coats, raincoats, scarves, socks, gloves, pyjamas and swimsuits; ladies' and children's skirts, dresses, blouses, pantsuits, pant dresses, halters, tank tops, shorts and housecoats; footwear, namely, men's, women's and children's shoes, slippers, socks and stockings; men's women's and children's caps, hats, toques and headbands.

[8] On February 14, 1997 the appellant filed a statement of opposition with the Registrar pursuant to paras. (a), (b) and (d) of s. 38(2) of the Trade-Marks Act, R.S.C. 1985, c. T-13 (hereinafter "the Act").

[9] In support of its opposition the appellant filed an affidavit signed by Robert Langlois, president of Salomon Canada Sports Ltée.

[10] The respondent filed an affidavit signed by Domenico Putorti, president of Tricot Exclusive Inc.

[11] Neither Mr. Langlois nor Mr. Putorti was cross-examined on their affidavits.

[12] In his decision of March 31, 2000 Myer Herzig, a member of the Opposition Board, acting for the Registrar pursuant to s. 63(3) of the Act, concluded that Mr. Langlois' evidence regarding business activities was inadmissible hearsay. He further concluded that the evidence regarding use of the "SALOMON" trade marks by Salomon Canada Sports Ltée was inadequate. He said the following:

Mr. Langlois' evidence pertains to the opponent's use of its mark "SALOMON" in Canada and around the world. I take it that Mr. Langlois, by referring to the singular mark SALOMON in his affidavit, is referring collectively (as I have done) to the seven marks relied on by the opponent in the statement of opposition (although he has not explicitely so stated). The applicant, in its written argument, alleges that Mr. Langlois' evidence is " ... fatally deficient and that it is of no use to the opponent ..." for several reasons. Firstly, the applicant notes that Mr. Langlois is President of Salomon Canada Sports Ltée and that there is no evidence explaining how Mr. Langlois is connected to opponent Salomon S.A. (other than Salomon Canada Sports Ltée being a subsidiary of the opponent):

Obviously, employees of the Opponent who have direct access to its books and records would have been in the best position to swear their own affidavits attesting to the Opponent's activities. Mr. Langlois is not an employee, an officer, a director or a shareholder of the Opponent. Furthermore, there is nothing in the record of these proceedings to the effect that Mr. Langlois had access to and personally verified the books and records of the Opponent in order to obtain information pertaining to the Opponent's activities. The Opponent does not explain why its own employees could not provide the Opposition Board with direct evidence of its activities nor why the Opponent chose to rely on the affidavit of the president of another corporation in the present proceedings.

Accordingly, the applicant submits that Mr. Langlois' evidence relating to the opponent's activities are "hearsay evidence of no probative value." I agree that Mr. Langlois' evidence concerning opponent's business activities is inadmissible hearsay for the reason that the opponent has not explained why (or even attempted to explain why) Mr. Langlois is in a position to testify about the opponent's activities: see Budget Rent A Car Int'l v. Discount Car & Truck Rentals (1997), 70 C.P.R. (3d) 411 at 414 (TMOB). Further, Mr. Langlois' evidence of the opponent's history and world-wide business activities are [sic] not particularly relevant to the opponent's rights in the trade-mark SALOMON in Canada. Therefore, such evidence would have been of little assistance to the opponent in any event.

Mr. Langlois also testifies as to his company's (that is, Salomon Canada Sports Ltée) use of the SALOMON mark in Canada. However, Mr. Langlois' evidence is uninformative as to whether his company is an importer of the opponent's wares (or a retailer or distributor), or whether SALOMON ski wares sold in Canada have been manufactured by the opponent in Canada or manufactured by some other party (possibly Salomon Canada Sports Ltée) under licence, or whether such licence conforms to Section 50 of the Act. Mr. Langlois' evidence regarding his company's use of the mark SALOMON is insufficient for me to conclude that such use of the mark SALOMON in Canada inures to the benefit of the opponent Salomon S.A. The mere fact that Salomon Canada Sports Ltée is a subsidiary of the opponent is not sufficient to draw such a conclusion. It is the responsibility of each party to prove all aspects of its case, and neither party should expect this Board to draw inferences convenient to fill in gaps in their evidence.

The opponent has also taken issue with the exhibit material attached to Mr. Langlois' affidavit for the following reason:

it is respectfully submitted that the evidence filed by the Opponent does not meet the requirements of the Federal Court Rules, 1998 and more particularly of Rule 80(3) which states that: "Where an affidavit referes [sic] to an exhibit, the exhibit shall be accurately identified by an endorsement on the exhibit or on a certificate attached to it, signed by the person before whom the affidavit is sworn." Since the exhibits filed with the Langlois affidavit were not properly identified by an endorsement signed by the Commissioner of Oaths before whom the Langlois affidavit was sworn, it is respectfully submitted that the said exhibits must be disregarded.

Again, I must agree with the applicant that the opponent' [sic] identification of the exhibit material is wholly deficient, and I have therefore not had regard to the exhibit material. Part of the exhibit material was comprised of copies of the opponent's trade-mark registrations pleaded under the second ground of opposition. Although the exhibit material is to be disregarded, nevertheless, the Registrar has discretion to check the trade-marks register, in the public interest, in order to confirm the existence of trade-mark registrations relied on by an opponent in its pleadings. I have done so and I have confirmed that the registrations pleaded by the opponent are extant and stand in the name of the opponent: see Quaker Oats of Canada Ltd. / La Compagnie Quaker Oats du Canada Ltée v. Menu Foods Ltd.(1986), 11 C.P.R. (3d) 410 (TMOB). Thus, I am able to conclude that the marks relied on by the opponent are in fact owned by the opponent.

[13] The member concluded that the evidence before him was clearly insufficient. He dismissed the appellant's opposition and arrived at the following conclusion:

As noted earlier, the second ground of opposition, based on Section 16(3)(a) of the Act, alleges that the applicant is not entitled to register the applied for mark SALMONE because, at the date of filing the application (February 29, 1996), the mark SALMONE was confusing with the opponent's mark SALOMON previously used and made known in Canada by the opponent in association with clothing. Sections 16(5) and 17(1) of the Act impose evidential burdens on an opponent who pleads that an applicant is not entitled to register a mark. Those burdens are to show that (i) the opponent has not abandoned the mark(s) it relies on as of the date of advertisement of the opposed mark and that (ii) the opponent has in fact used the mark(s) it relies on (or that use of the mark(s) by another party inures to the benefit of the opponent). The consequence of the above-mentioned statutory burdens is that an opponent pleading Section 16 of the Act as a ground of opposition cannot rely on third party use of a mark to support its ground of opposition alleging non-entitlement. As discussed earlier, I am satisfied that Mr. Langlois' evidence establishes that his company used the mark SALOMON in Canada in association with various ski wares. However, there is nothing in Mr. Langlois' evidence that explains how his company's use of the mark SALOMON inures to the benefit of the opponent. Nevertheless, having reviewed the opponent's trade-marks registrations, I might be prepared to find that the opponent did at one time use its mark SALOMON in Canada. In this regard, regn. no. 267,837 indicates that a declaration of use for the mark was filed in November 1981. However, condition (i), above, remains unsatisfied even if condition (ii), above, is satisfied. In this regard, the opponent has failed to demonstrate that it used its mark SALOMON in Canada between 1981 and December 25, 1996 (that is, the date of advertisement of the opposed mark SALMONE). Thus, the opponent has not demonstrated that it did not abandon its mark SALOMON in Canada as of December 25, 1996. Accordingly, the second ground of opposition need not be considered further and is therefore rejected.

The third ground of opposition, pursuant to Section 16(3)(c), alleges that the applied for mark SALMONE was confusing, at the date of filing the application, with the opponent's trade-names Salomon S.A., Salomon and Salomon Canada Sports Ltd.. There would not appear to be any merit to the opponent's reliance on the trade-name Salomon Canada Sports Ltd. as that name appears to identify a company other than the opponent namely, Mr. Langlois' company. With respect to the trade-names Salomon S.A. and Salomon, the statutory burdens imposed by Sections 16(5) and 17(1), previously discussed, apply similarly when an opponent relies on the use of its trade-name(s) in support of a ground of opposition alleging non-entitlement. I do not consider that Mr. Langlois' hearsay evidence establishes that the opponent has used its trade-names in Canada. Accordingly, the opponent has not met its evidential burdens to put the third ground of opposition into issue and the third ground is therefore rejected.

The last ground of opposition alleges that the applied for mark SALMONE is not distinctive of the applicant's wares in view of the opponent's use and making known of its famous marks and trade-names. Of course, it is not sufficient for an opponent to merely make allegations of fact in the statement of opposition; the opponent must evidence the facts which have been alleged in support of its ground of opposition. In the instant case, as discussed previously, Mr. Langlois' evidence is insufficient to establish that the opponent has not pleaded that the applied for mark SALMONE is not distinctive of the applicant's wares because of third party use of the mark SALOMON. Thus, use of the mark SALOMON by Salomon Canada Sports Ltée is irrelevant in this proceeding: see Imperial Developments Ltd. v. Imperial Oil Limited (1984), 79 C.P.R. (2d) at 19-21 (F.C.T.D.). As the opponent has not met its evidential burden to put the last ground of opposition in issue, it too is rejected.

In view of the foregoing, the opponent's opposition is rejected.

[14] The appellant filed a notice of appeal on May 30, 2000. In support of its appeal it filed the following additional evidence:

Affidavit of Jean-Luc Diard

Affidavit of Maryvonne Lazzarotto

Affidavit of Elke Laur

Affidavit of M. Sargisson

[15] The appellant relied on the following grounds to establish that the decision by the registrar was wrong in fact and in law, namely:

[TRANSLATION]

(1) registration application 805,808 is not in accordance with the requirements of s. 30 of the Act;

(2) the mark "SALMONE" is not registrable and creates confusion with the "SALOMON" trade marks registered and used by the appellant in Canada;

(3) the respondent is not the person entitled to register the trade mark "SALMONE";

(4) the mark "SALMONE" is not and cannot be distinctive as to the respondent's wares which are the subject of the application;

(5) the Registrar erred in fact and in law in the finding that the passages from the affidavit of Mr. Langlois, president of Salomon Canada Sports Ltée, regarding the activities of the opponent Salomon S.A. are hearsay;

(6) the Registrar also erred in fact and in law in assessing portions of Mr. Langlois' affidavit which clearly establish use by Salomon S.A. of its "SALOMON" trade marks in Canada;

(7) the Registrar also erred in fact and in law in dismissing Exhibits O-1 to O-19 of Mr. Langlois' affidavit;

(8) the Registrar also erred in fact and in law in assessing the entries in the Canadian Trade-marks Register and copies of registration certificates in Canada of the "SALOMON" marks filed in support of Mr. Langlois' affidavit as Exhibit O-6, which clearly establish use and user of the "SALOMON" marks by the appellant Salomon S.A., in particular the fact that Salomon Canada Sports Ltée, the appellant's Canadian subsidiary, is registered as the registered user of the "SALOMON" trade marks;

(9) the Registrar also erred in fact and in law in assessing the burden of proof upon the appellant as opponent and on the respondent as applicant for registration, as well as the general content of the factual evidence submitted by the appellant.

[16] As I observed in Cordon Bleu International Ltée v. Renaud Cointreau & Cie (June 9, 2000), T-964-93, T-966-93 and T-970-93 (F.C.T.D.), "the Federal Court is usually hesitant to substitute its own decision for that made by the Registrar unless there is in the record evidence that the Registrar did not consider". Further, when additional evidence is filed the Court will generally regard the case as if it were a trial de novo (see Glen-Warren Productions Ltd. v. Gertex Hosiery Ltd. (1990), 29 C.P.R. (3d ed) 7 (F.C.) and Molson Breweries, A Partnership v. John Labatt Ltée. (2000), 5 C.P.R. (4th ed.) 180 (F.C.A.).

[17] In the case at bar the evidence filed at the hearing before the Registrar, specially Mr. Langlois' affidavit, and the additional evidence filed in this Court establish use of the trade marks by the appellant in Canada and the trade marks "SALOMON" and "SALMONE" tend to create confusion, thus justifying the Court's intervention.

1. Use of trade mark by appellant in Canada

[18] As discussed in Philip Morris v. Imperial Tobacco (1987) 8 F.T.R. 310 (F.C.T.D.), at 315, the position and experience of a witness should be taken into account in assessing his evidence:

Counsel for the appellant also objects that the first affidavit of Mr. Bouchard is inadmissible by reason that the evidence of the Smoke Shoppe sale in Regina must be taken to have been based on hearsay, rather than firsthand knowledge.

. . . . .

The Bouchard affidavit is not replete with statements made on information and belief nor do the statements therein clearly manifest any flagrant lack of personal knowledge. Under the circumstances and from the fact that the alleged hearsay defect was not raised as a specific ground of appeal, it would be wrong, in my view, to treat the affidavit as being inadmissible. It seems to me on balance that Mr. Bouchard was manifestly in a position from the standpoint of his office and experience with the respondent "to know whereof he deposed": Union Electric Supply Co. Ltée. v. Registrar of Trademarks (1982), 63 C.P.R. (2d) 56, per Mahoney J., at pp. 59-60. In my opinion, the evidence in its entirety is sufficient to establish the sale of the four cartons of cigarettes to the retail tobacco outlet in Regina.

(My emphasis)

[19] Further, Rothstein J. (as he then was) noted the following in CIBA-Geigy Canada Ltée. v. Novopharm Ltée. et al. (1994), 83 F.T.R. 161 (F.C.T.D.), at 176:

Counsel for the plaintiff relies upon Smith, Kline & French Laboratories Ltée. v. Novopharm Ltée. et al. (1984), 53 N.R. 68; 79 C.P.R. (2d) 103 (F.C.A.). That case stands for the proposition that, in order to determine whether the facts deposed to by an affiant are within his or her personal knowledge or are based on information and belief, regard should be had to the affiant's office or qualifications and whether it is probable that a person holding such office or having such qualifications would, of his or her own knowledge, be aware of the particular facts. If such a probability is apparent on the face of the affidavit, its exhibits or the application to which it pertains, it may be admissible.

[20] In the case at bar, as the appellant maintained, the Registrar's decision was based essentially on questions relating to evidence of the use of the "SALOMON" trade marks in Canada by the appellant at the time the respondent applied to register the mark "SALMONE". In my opinion, however, the decision is not correct in law as the Registrar erred in concluding that Mr. Langlois' affidavit was partly hearsay and did not establish a link between the appellant Salomon S.A. and Salomon Canada Sports Ltée.

[21] The fact that Mr. Langlois was president of Salomon Canada Sports Ltée, a wholly-owned subsidiary of Salomon S.A. since September 19, 1975, which is associated with the latter by a distribution contract, is sufficient to make his affidavit not only admissible but also significant. Mr. Langlois in fact established that the subsidiary Salomon Canada Sports Ltée was using the "SALOMON" trade marks in association with various wares at the time the trade mark being opposed was published. Further, the Registrar conceded that the evidence showed that the Canadian subsidiary was using the trade marks in question. In particular, the Registrar said the following:

As discussed earlier, I am satisfied that Mr. Langlois' evidence establishes that his company uses the mark SALOMON in Canada in association with various ski wares.

[22] The Registrar went on to conclude, wrongly in my opinion, as follows:

However, there is nothing in Mr. Langlois' evidence that explains how his company's use of the mark SALOMON inures to the benefit of the opponent.

[23] The Register of Trade-marks, on which the Registrar relied, clearly indicates that Salomon Sports Canada Ltée is the registered user of the trade marks of Salomon S.A and so its use of the "SALOMON" trade marks would benefit the holder of the mark, namely Salomon S.A. Contrary to what the Registrar concluded, the evidence was that it was appropriate for Mr. Langlois, testifying as president of the Canadian subsidiary, to sign the affidavit supporting the opposition by Salomon S.A.

[24] That evidence is clearly sufficient to establish user of the trade mark. In Union Electric Supply Co. v. Registrar of Trade Marks, [1982] 2 F.C. (F.C.T.D.), 263, Mahoney J.A. noted the following at 264:

There is absolutely no justification in putting a trade mark owner to the expense and trouble of showing his use of the trade mark by evidentiary overkill when it can be readily proved in a simple, straightforward fashion. Use must be shown, not examples of all uses.

[25] Mr. Langlois was not cross-examined on his affidavit. As the appellant maintained, the fact that a witness who testifies was not cross-examined is not a basis for questioning or doubting the personal knowledge of the facts alleged by him or her (see Edelweiss Food Products Inc. v. World's Finest Chocolate Canada Ltée. (2000), 5 C.P.R. (4th ed.) 256.

[26] The supplementary evidence filed by the appellant in this Court clearly established its use of the trade marks in Canada. In particular, the affidavit by Jean-Luc Diard, general manager of Salomon S.A., contains inter alia the sales figures on the products manufactured by Salomon S.A. covered by the trade marks "SALOMON" and marketed, distributed and sold in Canada from 1988/89 to 1999. The affidavit by Julian Sargisson, consumer relations director of Salomon Canada Sports Ltée, established that Salomon S.A. exports to Canada various manufactured products such as alpine skis, bindings and footwear for Alpine and Nordic skiing, ski touring footwear, snowboards, clothing, gloves, headgear, head coverings, ski bags and footwear other than ski touring footwear, on which its "SALOMON" trade marks appear. The products are purchased by Salomon Canada Sports Ltée, which distributes them to retail stores that resell them to Canadian consumers. Mr. Sargisson's affidavit indicated the sales figures for Salomon Canada Sports Ltée in Canada for alpine skis, alpine ski bindings, alpine ski footwear, cross-country ski bindings, cross-country ski footwear, snowboards, snowboard bindings and footwear, ski touring footwear and other products distributed by Salomon Canada Sports Ltée and sold under the "SALOMON" marks for 1987 to 2000. This evidence of distribution by Salomon Canada Sports Ltée is undoubtedly a use of the "SALOMON" trade marks by Salomon S.A. (see Industrie Alimentari Molisane S.R.L. v. Distributions Rosalba J.D. Inc. (1995), 61 C.P.R. (3d ed) 149 (F.C.), at 153-154).

2. Two trade marks tend to confusion

[27] As the appellant has clearly established that the "SALOMON" trade marks were used in Canada at the time the Registrar's notice was issued, the question in the appeal at bar is whether the "SALMONE" trade mark tends to confusion with the "SALOMON" trade marks.

[28] As discussed in Miss Universe Inc. v. Bohna, [1995] F.C. 614 (C.A.), at 621, the applicable rules for deciding whether use of a trade mark creates confusion with another trade mark or trade name are as follows:

APPLICABLE PRINCIPLES

To decide whether the use of a trade mark or of a trade-name causes confusion with another trade mark or another trade-name, the Court must ask itself whether, as a matter of first impression on the minds of an ordinary person having a vague recollection of that other mark or name, the use of both marks or names in the same area in the same manner is likely to lead to the inference that the services associated with those marks or names are performed by the same person, whether or not the services are of the same general class.

In determining whether there is a likelihood of confusion, the Court shall have regard to all the surrounding circumstances, including those described in subsection 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.

The stronger the mark is, the greater the ambit of the protection it should be accorded and the more difficult it will be for an applicant to discharge the onus. As noted by Mahoney J. (as he then was) in Carson v. Reynolds, a trade mark may be:

... so generally identified with [a person] that its use in association with anything else, however remote from entertainment services, would be confusing in the sense that its use in both associations would be likely to lead to the inference that all the wares and services, whatever they might be, emanated from [that person].

Examples abound, in the jurisprudence respecting opposition to registration of trade marks, of the scope of protection to be afforded to strong marks. The same is true in infringement cases as well as in injunction cases where weaker marks have also successfully passed the test.

The factors enunciated in paragraphs 6(5)(a) to (e) need not be interpreted as having equal weight in all circumstances. Where, for example, a strong trade mark is measured against a proposed mark, criteria (c) and (d), i.e. the nature of the wares, services or business and the nature of the trade, are not particularly determinative.

. . . . .

For a likelihood of confusion to be found, it is not necessary that the parties operate in the same general field or industry, or that the services be of the same type or quality. Trade marks for wares and services of one quality intended for one class of purchasers may be confusing with trade marks for wares and services of a different type or quality, intended for a different class of purchasers.

[29] In assessing the existence of a reasonable risk of confusion between the trade marks "SALOMON" and "SALMONE", I am persuaded by the overwhelming evidence submitted by the appellant that the "SALOMON" marks are well-known in Canada in association with sporting items. The "SALOMON" trade marks are well-established marks used by Salomon S.A. in Canada from October 1957 to date. I am also persuaded that it would be assumed that wares listed in the respondent's application for registration are associated with the appellant.

[30] In my opinion, Salomon S.A. and Tricot Exclusive Inc. operate in the same activity sector, or operate in the same or at least very similar business areas, in respect of the sale of sporting goods, and in particular sports clothing, which are very similar. These wares have trade marks which visually and phonetically resemble each other, and this cannot but create confusion.

[31] The burden is on the respondent to establish the absence of a risk that registration of the "SALMONE" trade mark will create confusion in the minds of average consumers with the "SALOMON" trade marks. In view of the facts in the case at bar and the evidence filed by the parties, I consider that the respondent has not established the absence of such a risk.

[32] The appeal is accordingly allowed.

P. ROULEAU

JUDGE

OTTAWA, Ontario

July 31, 2001

Certified true translation

Suzanne M. Gauthier, LL.L. Trad. a.