Date: 20100218
Docket: T-19-08
T-20-08
T-21-08
Citation: 2010 FC 180
Ottawa,
Ontario, February 18, 2010
PRESENT: The Honourable Mr. Justice Mandamin
BETWEEN:
THE FRIENDLY
STRANGER CORPORATION
Applicant
and
AVALON SUNSPLASH
LTD.
Respondent
REASONS FOR
JUDGMENT AND JUDGMENT
[1]
The Friendly Stranger Corporation appeals a
decision by Myer Herzig acting for the Registrar pursuant to delegated
authority as a member of the Trade-marks Opposition Board (the Registrar) made
November 8, 2007refusing the Appellant’s applications for trade-marks for:
a.
No. 1157428: FRIENDLY STRANGER CANNABIS CULTURE
SHOP & Design filed October 30, 2002
b.
No. 1171482: CANNABIS CULTURE SHOP & Design
filed March 17, 2003
c.
No. 1171481: CANNABIS CULTURE SHOP filed March
17, 2003
[2]
The Friendly Stranger sells products related to
hemp and marijuana, including rolling papers, pipes, books, t-shirts and other
wares and it operates The Friendly Stranger Cannabis Culture Shop in Toronto,
Ontario. It also maintains a website
at domain: www.friendlystranger.com.
[3]
Avalon Sunsplash Ltd. (the Opponent) filed
oppositions to the Appellant’s three applications on April 16, 2004 after the
applications were advertised for opposition purposes in the Trade-marks
Journal on February 18, 2004. The Opponent publishes a bimonthly magazine
initially called Cannabis Canada but rebranded as Cannabis Culture
in 1998. The Opponent operates a store in Vancouver,
British Columbia and maintains a website at the domain:
www.cannibisculture.com.
[4]
The Registrar refused applications No. 1171481
and no. 1171482 finding that, on the balance of probabilities, “the
distinctiveness of the Opponent’s mark was sufficient to negate the
distinctiveness of the applied for mark.” The Registrar also refused
application No. 1157428 finding the mark FRIENDLY STRANGER CANNABIS CULTURE
SHOP & design resembled the Opponent’s mark to a lesser degree, however
both parties targeted the same market and the balance of probabilities was
evenly balanced between finding for the Opponent and the Applicant.
[5]
The Appellant appeals the Registrar’s decision
pursuant to section 56 of the Trade-marks Act, R.S.C., 1985, c. T-13
(the Act). The Applicant has filed further evidence in support of its appeal.
The Opponent did not participate in the Appeal.
DECISION
UNDER APPEAL
[6]
The Registrar noted the application is based on
the Applicant’s use of the marks over a range of dates:
July 7,
1994 Earliest claimed use of services: store sales
September
7, 1994 Incorporation of The Friendly Stranger Corporation
January,
1995 Earliest use of mark in wares: matches
September,
1997 Earliest claim for internet sales
July,
2002 Latest use of mark in wares: collector tubes
[7]
The Registrar found the use of the mark CANNABIS
CULTURE SHOP & Design was equivalent to the use of the mark CANNABIS
CULTURE SHOP. The Registrar also found the evidence showed the Applicant
primarily uses the mark FRIENDLY STRANGER CANNABIS CULTURE SHOP & Design.
Although the ‘Friendly Stranger” was noticeably different in appearance and
spacing from the accompanying words “Cannabis Culture Shop’, the Registrar
decided the mark also qualifies as a use of CANNABIS CULTURE SHOP & Design
and CANNABIS CULTURE SHOP.
[8]
The Registrar noted the opposition, aside from
denying use of the marks in Canada,
contended the Applicant’s mark was not distinctive and has not distinguished
the wares and services of the Applicant from those of the Opponent and others.
[9]
The Registrar found the Opponent sells and
distributes magazines, books, clothing, posters, cigarette rolling papers which
bear the trade-marks CANNABIS CULTURE or CANNABIS CULTURE & Design. The
Opponent’s magazine was available though retail outlets across Canada
and its website operated since May 1998.
[10]
The Registrar found the Opponent distributed its
CANNABIS CULTURE magazine through the Applicant’s online store since October
1997 while the Applicant advertised in the Opponent’s magazine since 1998 but
stopped when the opposition was filed.
[11]
The Registrar noted the Applicant’s admission
that it could not claim use of the mark CANNABIS CULTURE SHOP before July 4,
1994. Further, the Registrar found the Applicant had provided little
quantitative evidence to indicate the use of the subject mark in association
with its wares.
[12]
The Registrar noted the Applicant had the onus
of showing its mark CANNABIS CULTURE SHOP distinguished its wares and services
from those of the Opponent. The Registrar determined the material time for this
issue is the date the opposition was filed; April 16, 2004. The Registrar wrote
“I am unable to conclude that the applicant had established a significant
reputation for its mark at the material date.”
[13]
The Registrar drew the same conclusion for the
Opponent’s mark. The Registrar decided, considering the contemporaneous use of
both parties’ marks in the same consumer market, that the Applicant had not met
the onus of proof to establish its mark CANNABIS CULTURE SHOP distinguishes the
Applicant’s wares and services from the wares and services of the Opponent.
[14]
The Registrar found application No. 1171482
CANNABIS CULTURE SHOP & Design to give rise to the same issues and outcome
as No. 1171481 CANNABIS CULTURE SHOP. The Registrar dismissed both
applications.
[15]
Finally, the Registrar decided there was less
resemblance between the Opponent’s mark and application No. 1157428 FRIENDLY
STRANGER CANNABIS CULTURE SHOP & Design, the parties nevertheless targeted
the same market. The Registrar found the reputation of the Opponent’s mark was
at least equal to, if not greater than the Applicant’s mark. The Applicant did
not meet its onus and application No. 1157428 FRIENDLY STRANGER CANNABIS
CULTURE SHOP & Design was also refused.
LEGISLATION
[16]
The relevant legislative provisions are:
Trade-marks Act,
R.S.C, 1985, c. T-13
|
2. In this
Act,
“distinctive”,
in relation to a trade-mark, means a trade-mark that actually distinguishes
the wares or services in association with which it is used by its owner from
the wares or services of others or is adapted so to distinguish them;
…
6. (1) For
the purposes of this Act, a trade-mark or trade-name is confusing with
another trade-mark or trade-name if the use of the first mentioned trade-mark
or trade-name would cause confusion with the last mentioned trade-mark or
trade-name in the manner and circumstances described in this section.
(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.
…
(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.
…
56. (1) An
appeal lies to the Federal Court from any decision of the Registrar under
this Act within two months from the date on which notice of the decision was
dispatched by the Registrar or within such further time as the Court may
allow, either before or after the expiration of the two months.
(5) On an
appeal under subsection (1), evidence in addition to that adduced before the
Registrar may be adduced and the Federal Court may exercise any discretion
vested in the Registrar.
|
2. Les
définitions qui suivent s’appliquent à la présente loi.
« distinctive »
Relativement à une marque de commerce, celle qui
distingue véritablement les marchandises ou services en liaison avec lesquels
elle est employée par son propriétaire, des marchandises ou services d’autres
propriétaires, ou qui est adaptée à les distinguer ainsi.
…
6. (1) Pour
l’application de la présente loi, une marque de commerce ou un nom commercial
crée de la confusion avec une autre marque de commerce ou un autre nom
commercial si l’emploi de la marque de commerce ou du nom commercial en
premier lieu mentionnés cause de la confusion avec la marque de commerce ou
le nom commercial en dernier lieu mentionnés, de la manière et dans les
circonstances décrites au présent article.
(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.
…
(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.
…
56. (1)
Appel de toute décision rendue par le registraire, sous le régime de la
présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui
suivent la date où le registraire a expédié l’avis de la décision ou dans tel
délai supplémentaire accordé par le tribunal, soit avant, soit après
l’expiration des deux mois.
(5) Lors de
l’appel, il peut être apporté une preuve en plus de celle qui a été
fournie devant le registraire, et le tribunal peut exercer toute discrétion
dont le registraire est investi.
|
STANDARD
OF REVIEW
[17]
In this appeal, the Applicant has submitted new
evidence as permitted by s. 56(5) of the Act. In Molson Breweries v.
John Labatt Ltd., [2000] 3 FC 145 (C.A.)
at 51, Justice Rothstein wrote:
Having regard to the
Registrar’s expertise, in the absence of additional evidence adduced in the
Trial Division, I am of the opinion that decisions of the Registrar, whether of
fact, law or discretion, within the area of his expertise, are to be reviewed
on a standard of reasonableness simplicitor. However, where additional
evidence is adduced in the Trial Division that would have materially affected
the Registrar’s findings of fact or the exercise of his discretion, the Trial
Division judge must come to his or her own conclusion as to the correctness of
the Registrar’s decision.
[18]
I am of the view the same applies in the case at
hand.
THE
ISSUE
[19]
The issues that are determinative of this
appeal are as follows:
a.
Would the new evidence submitted by the Applicant
on this appeal have materially affected the outcome of the opposition decision?
b.
Does the new evidence tip the balance of
probabilities in favour of the Applicant with respect to the distinctiveness of
its mark?
ANALYSIS
[20]
The Registrar found the Applicant established
some reputation for its mark CANNABIS CULTURE SHOP by the material date, April
16, 2004 but arrived at the same conclusion for the Opposition mark CANNABIS
CULTURE. The onus of proving that there is no confusion remains on the Applicant
on appeal.
[21]
Subsection 6(5) lists factors to consider in
assessing confusion between marks: inherent distinctiveness, the length of time
in use, the nature of the wares, services or business, the nature of the trade
and the degree of resemblance. The only difference between Applicant’s mark,
CANNABIS CULTURE SHOP, and the Opponent’s mark CANNABIS CULTURE is the use of
the word ‘shop’ which is not in itself inherently distinctive. Given the
resemblance of the marks and the similarity of the wares and services, the
Applicant’s additional evidence does not assist with applications No. 1171481
CANNABIS CULTURE SHOP & Design and No. 1171482 CANNABIS CULTURE SHOP since
the words themselves do not give rise to any notable distinctiveness as
compared to the Opposition’s mark CANNABIS CULTURE.
[22]
The Registrar’s findings of fact are reasonable
and the Applicant’s additional evidence would not have materially affected the
Registrar’s finding with respect to applications No. 1171481 and No. 1171482.
[23]
The Applicant’s additional evidence is of
material significance with respect to application No. 1157428. It provides
quantitative evidence that indicates the Applicant is a business on the rise known
under the name the ‘Friendly Stranger Cannabis Culture Shop’. The evidence
shifts the emphasis to the words ‘Friendly Stanger’ from’ Cannabis Culture
Shop’. It demonstrates the effect of the large and unique font that promotes
the words ‘Friendly Stranger’ over the smaller and more conventional font used
for the words ‘Cannabis Culture Shop’.
[24]
The new evidence assumes additional significance
when subsection 6(2) is considered. This section provides that
a trade-mark causes confusion with another trade-mark if the use of both
trade-marks in the same area would lead to the inference that the wares or
services associated with those trade-marks were marketed by the same person.
[25]
In the United Artists Corp v. Pink Panther
Beauty Corp., [1998] F.C.J. No. 441, Justice Linden wrote:
The question posed by
[subsection 6(2)] does not concern the confusion of marks, but confusion of
goods or services from one source as being from another source.
[26]
Although the wares of both parties are similar,
the marketplaces are very different. The principal marketplace for the Friendly
Stranger Cannabis Culture Shop is Toronto
where it has a strong presence. The marketplace for the Opponent is Vancouver.
Internet sales represent a small fraction of total sales compared to what is
sold in the stores. Finally, the domain names used by the parties are very different;
www.friendlystranger.com and www.cannabisculture.com are clearly distinct and
lead to different Internet addresses.
CONCLUSION
[27]
I conclude the Applicant’s new evidence would
have materially affected the outcome of the Registrar’s decision with respect
to Application No. 1157428 FRIENDLY STRANGER CANABIS CULTURE SHOP & Design.
The Court is permitted to take a fresh view of matters where significant new
evidence is submitted on appeal. AstraZeneca AB. V. Novopharm Ltd., [2002]
2 F.C. 148 (C.A.) pat paras. 25 to 28.
[28]
The new evidence tips the balance of
probabilities in favour of the Applicant with respect to the distinctiveness of
its trade-mark, FRIENDLY STRANGER CANNABIS CULTURE SHOP & Design.
[29]
The appeal of the opposition to application No.
1157428 is granted.
[30]
Given the Applicant’s divided success, I make no
order for costs.
JUDGMENT
THIS
COURT ORDERS that
1. The
appeal on application No. 1157428 is allowed.
2. The
Registrar’s decisions with respect to trademark applications No. 1171481 and
No. 1171482 stand.
3. There
are no costs to any party.
_________”Leonard S.
Mandamin”_______
Judge
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