Docket: T-1097-09
Citation: 2010 FC 1296
Ottawa, Ontario, December 16,
2010
PRESENT: The Honourable Madam Justice Simpson
BETWEEN:
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INTERACTIVE SPORTS
TECHNOLOGIES INC.
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Applicant
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and
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THE ATTORNEY GENERAL OF CANADA
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Respondent
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REASONS FOR JUDGMENT AND
JUDGMENT
[1]
Pursuant
to section 56 of the Trade-Marks Act, R.S.C. 1985, c. T-13 (the Act),
Interactive Sports Technologies Inc. (the Applicant) appeals a decision of the
Registrar of Trade-marks (the Registrar) dated May 15, 2009 wherein she
refused the Applicant’s application no. 1,277,334 (the Application) for the registration
of the trademark HIGH DEFINITION GOLF (the Mark).
[2]
The
Respondent has not made submissions and, although present, did not participate
in the hearing of the appeal.
BACKGROUND
[3]
The
Applicant is a manufacturer and vendor of golf simulators. They are advertised
as “the most realistic golf simulators in the world”. In addition to simulating
golf on several real-world golf courses, the simulator provides other services
including detailed analyses of the user’s swing and the ball’s trajectory.
[4]
The
Applicant filed the Application on October 18, 2005, on the basis of
proposed use in connection with the wares “golf simulators”. The Applicant has
been using the Mark in connection with its simulators since at least December
2005.
[5]
A
First Examiner’s Report in relation to the Mark was issued on April 11,
2006. It was brief, and concluded as follows:
The mark which is the subject of this
application is considered to be either clearly descriptive or deceptively
misdescriptive of the character of the wares in association with which it is
proposed to be used since it clearly indicates that the applicant’s golf
simulators are high definition golf simulators.
[6]
A
Second Examiner’s Report was issued on February 12, 2008. It was more
detailed and stated that the Mark “clearly describes, in a way that is easy to
understand, that the golf simulators are devices using high definition
technology to play virtual golf”. It concluded:
In view of the wide use of the expression
HIGH DEFINITION in the broadcasting industry, we consider that the average
consumer would react to the mark HIGH DEFINITION GOLF used with golf simulators
by thinking that the devices are golf simulators using high definition
technology.
THE DECISION
[7]
The
Registrar’s decision is dated May 15, 2009 (the Decision). She stated that
the issue was whether the Mark was clearly descriptive of the character of the
Applicant’s wares. She noted that the issue had to be considered from the point
of view of the average consumer or user of the wares, as a matter of first
impression. Further, she wrote that the Mark had to be considered as a whole
and not dissected.
[8]
The
Registrar referred to a definition of “HIGH DEFINITION” in the Merriam-Webster
Online Dictionary. It read: “...being or relating to an often digital
television system that has twice as many scan lines per frame as a conventional
system, a proportionally sharper image, and a wide-screen format”. In light of
this definition, the Registrar concluded that the ordinary Canadian dealer or
purchaser, faced with the Mark used in association with golf simulators, would
immediately conclude that the simulators used HIGH DEFINITION technology.
[9]
The
Registrar also noted that HIGH DEFINITION GOLF is a natural combination of
words that “other traders may wish to use to describe a feature, trait or
characteristic of their golf simulators” and referred to a case in the Supreme
Court of Canada which indicated that descriptive words cannot be appropriated
by a single party.
[10]
The
Registrar concluded that, because the Mark is clearly descriptive, paragraph
12(1)(b) of the Act rendered the Mark unregistrable pursuant to paragraph 37(1)(b)
of the Act.
THE NEW EVIDENCE
[11]
The
following is a description of the fresh evidence the Applicant filed on this
appeal pursuant to subsection 56(5) of the Act. The evidence is found in the
affidavit of Elenita Anastacio sworn on November 5, 2009 (the Anastacio
Affidavit):
(i)
Particulars
of trade-mark applications and registrations in the Canadian Trade-marks
Database belonging to various third parties. These documents incorporate the
words “high definition” and relate to the following wares and services: optometry,
laser eye surgery, etc.; eyeglasses; cosmetics; roofing shingles; fabrics and
hard surfaces containing camouflage patterns; laminates, laminate flooring and
furniture; hearing aids; lighting fixtures and light bulbs and stainless steel
flatware. I note that only one of the listed registrations deals with the use
of HIGH DEFINITION in the context of video screens. It is the May 2008
registration for “Living in HD” in association with electronics such as home
theatre systems, TVs and laptops;
(ii)
A
website of a third party distributor of products called virtual golf systems.
The site uses the phrase HIGH DEFINITION GOLF in its description of its video
presentations of golf courses;
(iii)
Archived
copies of the Applicant’s website, dating back to 2005, showing continuous use
of the Mark;
(iv)
Particulars
of trade-mark applications and registrations in the Canadian Trade-marks
Database belonging to other traders in golf simulators. None refer to high
definition;
(v)
Printouts
from the “Dictionary.com” website showing that there are no dictionary results
for HIGH DEFINITION and HIGH-DEFINITION in Merriam-Webster;
(vi)
Particulars
of the marks, High Resolution Vision, Bent Grass Golf, Homegolf and Ultimate
Golf.
[12]
The
Applicant submits that, given this new evidence, I should consider the matter de
novo. However, I will not proceed on this basis since I am not persuaded
that the new evidence is substantial and significant. In my view, it would not
have materially affected the Decision.
THE STANDARD OF REVIEW
[13]
In
Tradition Fine Foods Ltd. v. Groupe Tradition’l Inc., 2006 FC 858
at paragraph 53, Mr. Justice Edmond Blanchard concluded that the pragmatic
and functional analysis conducted by Mr. Justice Ian Binnie in the Supreme
Court of Canada in the Mattel case also applied when the Registrar
looked at distinctiveness. In Mattel, the Registrar had dealt with
confusion (See Mattel, Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 772,
2006 SCC 22). In both cases, reasonableness was selected as the standard
of review.
[14]
In my view, Justice Binnie’s analysis is apt in this case as well
and leads me to conclude that a Registrar’s decision about whether a proposed
mark is clearly descriptive should also be reviewed on a reasonableness
standard.
THE ISSUES AND
DISCUSSION
[15]
The
Applicant says that the Registrar failed to appreciate that HIGH DEFINITION has
a variety of meanings in the context of a golf simulator. For example, the
Applicant says that, as a matter of first impression, a golfer would understand
that the Mark conveys the idea that the simulator is a precision learning tool
in which a swing would be analyzed in detail. However, I have not been
persuaded that HIGH DEFINITION has multiple meanings. I think it was reasonable
for the Registrar to have concluded that the Mark referred to a golf simulator
that incorporated high definition technology in its video screen.
[16]
The
Applicant suggested that the marketing material before the Registrar showed
that, in fact, high definition technology was not always offered in its
simulator. However, my reading of that material which is found at page 23 of
the Applicant’s record, leads me to conclude that it was reasonable for the
Registrar to assume that the Applicant’s simulator used high definition technology
at all times.
[17]
I
have reached this conclusion because, under the heading HIGH DEFINITION GOLF,
the following language appears: “Our revolutionary image processing software
combines high resolution digital images and satellite data into a 3D model of a
golf course to produce a totally realistic indoor golf experience...” “High
Definition Golf ™ - It looks like the real thing! …HDTV compatible display
delivers…” As well, purchasers are offered either a domestic or a commercial
projector which is compatible with a HIGH DEFINITION television.
[18]
The
Applicant also said that the Registrar used the wrong test when she said in
paragraph 6 of the Decision that “The courts have recognized and held that
descriptive words are the property of all…” The statement is said to be fatal
to the Decision because the word “clearly” was not inserted before the word “descriptive”.
However, the Registrar began paragraph 4 of her Decision with the following
“The issue as to whether the Applicant’s trademark High Definition Golf is clearly
descriptive of the character or quality of the Applicant’s wares must be
considered…” I am therefore satisfied that she applied the correct test in
spite of her failure to include the word “clearly” in paragraph 6 of the
Decision.
[19]
The
Applicant said that the Registrar failed to provide a source for her definition
of HIGH DEFINITION and that her definition does not exist because, when a
website called Dictionary.com was searched, no such definition appeared on
Miriam Webster. However, as noted above in paragraph 8, the Registrar did
provide her source and it was not searched by the Applicant. The Miriam-Webster
online Dictionary does provide the Registrar’s definition.
[20]
The
Applicant said that there was no evidence provided by the Registrar to support
her finding of fact that HIGH DEFINITION GOLF is a natural combination that
other traders may wish to use. It submits that the evidence in the Anastacio
Affidavit shows that other simulator vendors have not yet used High Definition
in connection with their wares.
[21]
In
my view, the rationale for the Decision is set out in paragraph 5 and involves the
descriptive quality of the Mark. The subsequent comments about the Mark as a
natural combination, which other traders may wish to use, are simply the
Registrar’s observations. They are not findings of fact which underpin the
Decision. Accordingly, they do not require evidentiary support.
CONCLUSION
[22]
I
have concluded that the Decision is reasonable and that the appeal will therefore
be dismissed.
JUDGMENT
THIS COURT’S JUDGMENT
is that
this appeal is hereby dismissed.
“Sandra
J. Simpson”
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-1079-09
STYLE OF CAUSE: Interactive
Sports Technologies Inc. v. The Attorney General of Canada
PLACE OF
HEARING: Toronto, Ontario
DATE OF
HEARING: June
15, 2010
REASONS FOR JUDGMENT: SIMPSON
J.
DATED: December
16, 2010
APPEARANCES:
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Kenneth McKay
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FOR THE APPLICANT
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Abigal Browne
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FOR THE RESPONDENT
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SOLICITORS
OF RECORD:
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Sim Lowman Ashton & McKay LLP
Toronto, Ontario
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FOR THE APPLICANT
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Myles J.
Kirvan
Deputy
Attorney General of Canada
Toronto, Ontario
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FOR THE RESPONDENT
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