Date:
20121221
Docket:
T-1645-11
Citation:
2012 FC 1539
Ottawa, Ontario,
December 21, 2012
PRESENT: The
Honourable Mr. Justice de Montigny
BETWEEN:
|
|
HAWKE & COMPANY OUTFITTERS
LLC
|
|
|
|
Applicant
|
|
and
|
|
|
RETAIL ROYALTY COMPANY AND
AMERICAN EAGLE OUTFITTERS, INC.
|
|
|
|
Respondents
|
|
|
|
|
REASONS FOR
JUDGMENT AND JUDGMENT
[1]
This
is an appeal, pursuant to s. 56 of the Trade-Marks Act, RSC, 1985, c
T-13 (the “Act”), of the decision rendered on August 10, 2011, by Ms.
Céline Tremblay (the “Officer”), a member of the Trade-Marks Opposition Board
(“TMOB” or the “Board”) acting on behalf of the Registrar of Trade-Marks (the
“Registrar”), refusing the Applicant’s proposed use Trade-mark Application for
the registration of its “HAWKE & CO. OUTFITTER” & bird design
trade-mark (the “applied-for mark” or the “Mark”, shown below) on the basis of
the Respondents’ Opposition thereto. The Officer rejected the Applicant’s
Trade-mark Application on the basis that the Applicant failed to establish that
there was no reasonable likelihood of confusion between the applied-for mark
and the Respondents’ previous use and making known in Canada of their “AMERICAN
EAGLE OUTFITTERS” & Design trade-mark (the “AEO & Design mark”, also
shown below) in association with clothing and retail clothing store services.
[2]
For
the reasons that follow, I have found that this appeal must be dismissed.
1. Background
[3]
Hawke
& Company Outfitters LLC (the “Applicant”) is a company engaged in the
manufacture, importation, sale and distribution of adult and children’s
outerwear and accessories, having its head office in New York, USA. It was incorporated in 2006.
[4]
Retail
Royalty Company (RRC) is a wholly-owned subsidiary of American Eagle
Outfitters, Inc. (AEO). RRC is the owner of a number of trade-marks that have
been used and registered or applied for, in Canada as well as internationally,
in connection with a wide range of wearing apparel, footwear, accessories, and
retail clothing store services. Together they are the Opponents and the
Respondents in the present appeal.
[5]
On
April 26, 2007, the Applicant filed application no. 1,345,073 for the
registration of the applied-for mark, “HAWKE & CO. OUTFITTER” & bird
design, based on proposed use for clothing, namely casual clothing, athletic
attire, business attire, children’s clothing, formal wear, lounge wear,
sleepwear, outdoor summer, spring, fall and winter wear, rainwear,
undergarments, swimwear, beachwear, socks, gloves, belts, footwear, namely
boots, shoes, sandals and slippers.
[6]
The
Trade-mark Application was advertised on April 2, 2008, and the Respondents
filed a Statement of Opposition on September 2, 2008, based on each of the
grounds of opposition set out in s. 38(3) of the Act. More
specifically, the grounds of opposition were as follows:
i. Paragraph
38(2)(a): The Application does not conform to the requirements of s. 30(e) of
the Act as the Applicant did not, in fact, intend to use the Mark in
Canada in association with all the wares.
ii. Paragraph
38(2)(b): The Mark is not registrable pursuant to s. 12(1)(d) of the Act
since it is confusing with the registered trade-mark AMERICAN EAGLE OUTFITTERS
owned by RRC for clothing and accessories and retail store services for
clothing and accessories.
iii.
Paragraph
38(2)(c): The Applicant is not the person entitled to registration of the Mark
pursuant to s. 16(3)(a) of the Act since it is confusing with the Respondents’
AEO & Design trade-mark that has been previously used and made known in
Canada in association with clothing and retail clothing store services. As
well, the Applicant is not the person entitled to registration of the Mark
pursuant to ss. 16(3)(a) and (b) of the Act since it is confusing with
the trade-marks of RRC identified in paragraph 7 of the Statement of
Opposition, previously used or made known in Canada and all the subject of
applications for registration filed by the Respondents (none of which were
abandoned at the date of advertisement of the Trade-mark Application). The
Respondents’ registered and applied-for marks include two eagle designs
(1,285,941 and 1,303,172, only one of which relates to clothing), three other
bird designs (1,341,663, 1,336,782 and 1,336,780, all of which relate to
clothing) and four AMERICAN EAGLE OUTFITTERS word marks (1,003,280, 1,303,171,
1,233,960 and 1,226,094, only one of which relates to clothing).
iv. Paragraph
38(2)(d): The applied-for mark is not distinctive nor is it adapted to
distinguish the wares of the Applicant from the wares and services of the
Respondents, particularly in view of the Respondents’ lengthy, extensive and
widespread use, promotion and advertisement of its above-noted trade-marks,
which it alleges have developed a significant reputation and goodwill in Canada.
[7]
On
December 15, 2008, the Applicant filed its Counterstatement, denying each
ground of Opposition set forth in paragraphs 3 to 8 of the Respondents’
Statement of Opposition.
[8]
In
support of their Opposition, the Respondents filed the affidavit of Rebecca
Gibbs, Chief Counsel-Intellectual Property with AEO (the “Gibbs Affidavit”).
In her affidavit, upon which she was not cross-examined, she testified to the
following:
• The
AMERICAN EAGLE OUTFITTERS trade-mark has been in continuous use since the
opening of the first AEO retail store in Canada, as evidenced by the internal
signage, point of sale materials, photographs, website excerpts, and
advertising samples (including direct mail, in-store and print) produced as
exhibits to the Gibbs Affidavit;
• The
five relevant versions of its trade-marks have each been filed, used or
registered prior to the filing of the Applicant’s applied-for mark;
•
Considerable evidence of use is also provided for the AEO & Design mark
since well prior to the filing of the Applicant’s applied-for mark;
• There
has been extensive, lengthy and wide-spread use in Canada of the individual
EAGLE Design trade-mark and the AMERICAN EAGLE OUTFITTERS word mark, within
close proximity of each other, on advertising, wearing apparel, footwear and
accessories, since well prior to the filing of the Applicant’s applied-for
mark;
•
As of the date of the Gibbs Affidavit, AEO stores had been operating in
Canada for over 8 years (since 2000), and there were 75 AEO retail stores in
operation across 9 Canadian provinces, all operated through a single subsidiary
(American Eagle Outfitters Canada Corporation, “AEO Canada”) that is licensed
by RRC to use its trade-marks;
• RRC
exercises strict control over the use, advertisement and display of each of the
trade-marks licensed to AEO Canada;
• Canadian
AEO stores’ annual sales ranged from over US$129 million to over US$280 million
from 2004 to 2008;
•
Wearing apparel, footwear and accessories have been purchased online by
Canadians since at least as early as 2003, and the Respondents’ AE.COM website,
which commenced operations in 1998, attracted in excess of 16 million “hits” by
Canadians from November 17, 2006 to March 14, 2009;
•
The total advertising expenses incurred by and in connection with the
Respondents’ Canadian operations are claimed to have exceeded US$3 million
dollars each year for the five years prior to the year the affidavit was sworn.
[9]
The
Applicant’s evidence before the TMOB included the affidavit of Aron Rosenberg.
Mr. Rosenberg is the President of the Applicant and his evidence can be
summarized as follows:
• The
Applicant has been in the business of manufacturing and importing clothing
since March 2006, has developed its own line of clothing under the label HAWKE
& CO. OUTFITTERS & Design that has become well-known in the United
States and is now known in Canada, and has been selling its products
continuously in Canada since as early as the Fall of 2007;
•
The Applicant is a company engaged in the manufacture, importation, sale
and distribution of adult and children’s outerwear and accessories;
• The
offices of the Applicant are located in New York City and Rahway, New Jersey, and employ approximately 20 employees;
•
Copies of invoices to Winners stores, copies of work sheets from Winners
for the Applicant’s goods, an extract from the Applicant’s catalogue with six
styles which bear the applied-for mark, and copies of photographs of clothing
items sold to Winners and bearing the applied-for mark on the labels,
constitute evidence of use of the applied-for mark;
•
The applied-for trade-mark is licensed to Daron Fashions Inc. and Daron
Fashions Group, which are associated companies with “Hawke Company” and are licensed
to sell its products, including those bearing the applied-for mark;
•
The Applicant’s approximate sales of wearing apparel in Canada amounted to US$11,220 in 2007, US$54,335 in 2008 and US$100,000 in 2009.
[10]
After
the filing of written arguments by the Applicant and by the Respondents on
November 18, 2009 and November 20, 2009, respectively, an oral hearing attended
by agents for both parties was held by telephone on April 11, 2011. As noted
above, the Officer’s decision granting the Respondents’ Opposition and refusing
the Applicant’s Application was rendered on August 10, 2011.
2. The impugned
decision
[11]
The
Officer first dealt with the burden of proof when dealing with an opposition to
registration. She stated that an opponent bears an initial evidential burden
to adduce sufficient admissible evidence to support the facts alleged in
support of each ground of opposition. The applicant then bears the legal onus
of establishing, on a balance of probabilities, that the application complies
with the requirements of the Act and the particular grounds of
opposition should not prevent registration of the mark.
[12]
The
Officer then considered the Opposition based on non-conformity with s. 30(e) of
the Act. She summarily dismissed this first ground of opposition, as
the Opponents did not discharge their evidential burden in that respect.
[13]
She
turned next to the remaining grounds of opposition, which all turned on the
issue of confusion between the parties’ marks. In addressing confusion, the
Officer first considered the two non-entitlement grounds of opposition based on
s. 16(3)(a) of the Act, the first based on the previous use and making
known in Canada of RRC’s AEO & Design mark in association with clothing and
retail clothing store services, and the second based on the previous use or
making known in Canada of RRC’s trade-marks identified at Schedule A of the
Officer’s decision. She concentrated her initial analysis on the AEO &
Design mark and made the following findings in that context.
[14]
First,
the Officer found that, based on a fair reading of the Gibbs Affidavit in its
entirety, the Opponents had discharged their burden of showing prior use and
non-abandonment of the AEO & Design mark in association with clothing and
retail clothing stores (based on hang tags, labels, photographs and advertising
specimens). The Officer notes that Ms. Gibbs does not specifically refer to
the AEO & Design mark, but she is satisfied that the evidence of use of the
EAGLE Design in combination with the words AMERICAN EAGLE OUTFITTERS, in most
instances displayed one above the other, amounts to use of the AEO & Design
mark as pleaded in the ground of opposition.
[15]
The
Opponents having discharged their initial burden of proof, the Officer next
considered whether the Applicant had discharged its burden to show that there
was no reasonable likelihood of confusion on a balance of probabilities.
Pursuant to ss. 38(2)(c) and 16(3), the material date in that respect is the
date of filing, i.e. April 26, 2007. The Officer summarized the test for
confusion, and stated that it is based on first impression and imperfect
recollection. In applying the test, the Registrar must have regard to all the
surrounding circumstances, including those specifically enumerated in s. 6(5)
of the Act, which factors need not be attributed equal weight. As she
pointed out, the likelihood of confusion is a question of probabilities and
surrounding circumstances based on the particular facts of a case.
[16]
The
Officer then went through all of the factors set out in s. 6(5) of the Act.
On the inherent distinctiveness of the trade-marks and the extent to which they
have become known (s. 6(5)(a)), the Officer found in favour of the Opponents.
Despite finding the word “outfitter” to be generic and being of the view that
the marks have roughly equivalent inherent distinctiveness, she was swayed by
the acquired distinctiveness of RRC’s mark (as evidenced by annual Canadian
sales and advertising expenses, along with the specimens of use produced and
the lack of any distinctiveness of the applied-for mark as of the material
date.
[17]
The
Officer also found that the length of time the parties’ marks had been in use
as of the material date (s. 6(5)(b)) favoured the Opponents.
[18]
There
was no debate between the parties that there is an overlap between the wares
associated with the parties’ trade-marks (s. 6(5)(c)). As for the nature of
the trade (s. 6(5)(d)), however, the Applicant argued that there was no overlap
as the Respondents’ wares are only sold in AMERICAN EAGLE OUTFITTERS retail
stores. Despite the fact that there was no evidence to that effect, the
Officer was prepared to infer from the Respondents’ evidence that their wares
are sold only in stores operated by the Respondents’ licensee (and on-line),
although she acknowledged that the Respondents are not prevented from selling
these wares in other stores as well. Be that as it may, she concluded that an
overlap between the nature of the trade exists since both parties provide their
wares by means of retail clothing stores.
[19]
Finally,
turning to the degree of resemblance between the trade-marks in appearance or
sound (s. 6(5)(e)), the Officer noted that this factor is often the most
crucial of the five. She concluded that there is a fair degree of resemblance
between the bird designs and between the ideas suggested by the parties’
marks. In arriving at that conclusion, the Officer found that:
• The
points of similarity between the parties’ marks are found in the word
“OUTFITTER” and in the design of a bird;
•
The word “OUTFITTER”, which cannot be said to be a highly distinctive
element, is nevertheless found as the last element of both marks and “there is
no evidence to conclude that such word, at the material date, was commonly
adopted as a component of trade-marks used in association with clothing and
accessories” (at paragraph 44 of the decision);
•
The Officer agreed with the Applicant’s argument that there exist
significant differences between the marks when sounded, but disagreed that
there are significant differences when viewed, stating:
For one thing, when considering the Mark in its
entirety, I find that the bird design is as striking as the words “HAWKE &
CO”. In other words, I disagree with the Applicant’s position that the words
“HAWKE & CO” are predominant in the Mark. Further, I find that the designs
of the bird in the parties’ marks show a fair degree of resemblance in that
they both depict the silhouette of a bird of prey with outstretched wings.
Also, I find that there is a fair degree of resemblance between the ideas
suggested by the parties’ marks.
(Decision, at para 46)
[20]
The
Officer also considered additional surrounding circumstances to determine the
likelihood of confusion. First, she addressed the Applicant’s assertion that
similar bird designs have been allowed to co-exist in the fashion industry, as
a result of which small differences are enough to distinguish the marks. The
Officer rejected that argument for lack of sufficient evidence to make any
inference about the state of the marketplace. The Applicant had filed examples
of some of the marks that had been allowed to co-exist on the register, but the
Officer disregarded these examples because state of the register evidence
should have been filed by way of affidavit or statutory declaration, and also
because in opposition proceedings the Registrar does not exercise his
discretion having regard to anything appearing on the register that is not
properly proved by evidence. That left only the print-outs of two
registrations owned by third parties filed as part of the Rosenberg affidavit.
[21]
The
Applicant had also argued that there was no evidence of any single incident of
confusion between the parties’ marks. The Officer found that no adverse
inference could be drawn from the lack of evidence of instances of confusion,
since there was no use of the applied-for mark in Canada prior to the material
date and, as such, the Opponents were under no obligation to submit evidence of
instances of actual confusion.
[22]
Finally,
the Officer considered the Respondents’ argument that RRC’s family of other bird
design trade-marks is an additional circumstance enhancing the likelihood of
confusion between the trade-marks at issue. This argument was dismissed, as
the Officer found that: (i) RRC’s bird design marks do not form a family since
there is no evidence of use or advertisement of the three non-eagle bird
designs (apart from use at the bottom of a few pages of the website); (ii) the
non-eagle designs differ substantially from the EAGLE Design mark; and (iii) in
any event, a family typically consists of more than two marks.
[23]
On
the basis of all the foregoing, the Officer concluded:
[52] In applying the test for confusion, I have
considered it as a matter of first impression and imperfect recollection. Weighing
all of the factors and their relative importance together, I arrive at the
conclusion that the probabilities of confusion between the marks at issue are
evenly balanced between a finding of confusion and of no confusion. As the
legal burden is on the Applicant to establish, on a balance of probabilities,
that the Mark was not confusing with the trade-mark AMERICAN EAGLE OUTFITTERS
& Design at the filing date of the application, I accept the first
non-entitlement ground of opposition based upon s. 16(3)(a) of the Act.
[53] Since I accept the first s. 16(3)(a) ground of
opposition, I see no need to address the second one based on the previous use
or making known in Canada of the trade-marks identified at Schedule A.
[24]
The
Officer then turned to the last ground of opposition, based on the lack of
distinctiveness of the applied-for mark. In order to meet their burden, the
Respondents needed to show that the relevant marks had become known
sufficiently as of the date their Statement of Opposition was filed (i.e.,
September 2, 2008) to negate the distinctiveness of the applied-for mark. The
Officer found that the Respondents failed to meet their initial burden with
respect to the three non-eagle bird marks given their failure to evidence use
of these marks. She was, however, satisfied that the AEO & Design mark had
become sufficiently known as of the material date to negate the distinctiveness
of the applied-for mark.
[25]
The
Respondents having discharged their initial burden with respect to the AEO
& Design mark, it was up to the Applicant to show that there was no
reasonable likelihood of confusion, on a balance of probabilities standard.
Since the difference in relevant dates did not substantially affect her
analysis of confusion from the first s. 16(3)(a) ground of opposition, the
Officer found that the Applicant had not discharged its onus to establish an
absence of confusion on a balance of probabilities. As she accepted the
non-distinctiveness ground of opposition based upon the AEO & Design mark, she
did not find it necessary to address the non-distinctiveness ground of
opposition based on RRC’s AMERICAN EAGLE OUTFITTERS and EAGLE Design marks.
[26]
Having
found in favour of the Respondents with respect to two grounds of opposition,
the Officer did not address the remaining grounds of opposition and refused the
application pursuant to s. 38(3) of the Act.
3. Issues
[27]
In
support of its Notice of Application, the Applicant has filed additional
evidence in the form of two affidavits. The first question to be determined,
therefore, is whether this evidence is sufficiently significant and probative
to materially affect the Board’s findings of fact or the discretion exercised.
If it is, the applicable standard will be correctness. If it is not, the
applicable standard will be that of reasonableness.
[28]
The
second question to be decided, obviously, is whether the Officer’s decision is
reasonable or correct, depending on the applicable standard of review.
4. Analysis
a)
The standard of review
[29]
It
has been noted that s. 56 of the Act is not a customary appeal
provision, pursuant to which an appellate court decides the appeal on the basis
of the record that was before the lower court. Subsection 56(5) allows for
additional evidence to be adduced before the Federal Court. Conversely,
neither is it an appeal de novo, where a case is decided exclusively on
the basis of the new record and without regard to the evidence introduced in
the first proceeding. On an appeal before the Federal Court pursuant to s. 56
of the Act, the parties may add to the evidence filed before the
Registrar but the Court is not to disregard the record created before the
Registrar.
[30]
The
parties are generally in agreement that in the absence of additional evidence
produced on appeal under s. 56 of the Act, the reasonableness standard
of review applies. They also agree that, when new evidence is submitted, it is
necessary to assess its significance and that if the additional evidence would
materially affect the Officer’s findings of fact or the exercise of its
discretion, then the correctness standard of review applies. This standard of
review was discussed and summarized by Justice Rothstein, writing for the
majority, in Molson Breweries v John Labatt Ltd, [2000] 3 FC 145, 5 CPR
(4th) at para 29:
I think the approach in Benson & Hedges v.
St. Regis and in McDonald’s Corp. v. Silcorp are consistent with the
modern approach to standard of review. Even though there is an express appeal
provision in the Trade-marks Act to the Federal Court, expertise on the
part of the Registrar has been recognized as requiring some deference. 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 his area of expertise,
are to be reviewed on a standard of reasonableness simpliciter.
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.
[31]
It
is well established that when additional evidence is filed, the test is “one of
quality, not quantity”: see Canadian Council of Professional Engineers v APA
– The Engineered Wood Assn, [2000] FCJ no 1027 (QL), 7 CPR (4th)
239 (FC) at para 36; Wrangler Apparel Corp v Timberland Co, 2005 FC 722
at para 7. Evidence that merely supplements or confirms earlier findings, or
which pertains to facts posterior to the relevant material date, will be
insufficient to displace the deferential standard of reasonableness.
[32]
As
previously mentioned, the Applicant filed two additional affidavits in support
of its Notice of Application. The first one was sworn by Celine Wong, a legal
secretary with the law firm Robinson Sheppard Shapiro LLP, the solicitors for
the Applicant. The second was sworn by Mr. Rosenberg, President of the
Applicant, and aims to offer clarifications in respect of his first affidavit.
[33]
Ms.
Wong conducted a search of the Canadian Trade-Marks Database and found the
following:
•
The Database includes the word “OUTFITTERS” in connection with 113
trade-marks, 42 of which are active trade-marks covering items of “wearing
apparel, clothing, footwear and retail and wholesale services relating to wearing
apparel, clothing and footwear”;
•
The Database includes the word “OUTFITTER” in connection with 21
trade-marks, 6 of which are active trade-marks covering items of “wearing
apparel, clothing, footwear and retail and wholesale services relating to
wearing apparel, clothing and footwear”;
•
The Database contains (at least) 378 trade-marks of record including a bird
design element, 42 of which are active trade-marks covering items of “wearing
apparel, clothing, footwear and retail and wholesale services relating to
wearing apparel, clothing and footwear”;
•
The Database contains (at least) 215 trade-marks of record containing an
eagle design element, 30 of which are active trade-marks covering items of
“wearing apparel, clothing, footwear and retail and wholesale services relating
to wearing apparel, clothing and footwear”.
[34]
Ms.
Wong also conducted a search of the Corporations Canada Database, which lists
45 incorporated companies (active or dissolved) that include the word
“OUTFITTERS” as an element of their corporate names, 17 of which are identified
as active federal incorporations, as well as 10 incorporated companies (active
or dissolved) that include the word “OUTFITTER” as an element of their
corporate names, 4 of which are identified as active federal incorporations.
[35]
Additionally,
Ms. Wong conducted a search of the Registraire des entreprises du
Québec
database (which provides information on all individuals and companies carrying
on business in Québec, regardless of their juridical character), and found 147
entities that include the word “OUTFITTERS”, 6 of which were still in force and
had activities related to clothing and footwear.
[36]
Finally,
Ms. Wong provided definitions of the word “OUTFITTER” from four dictionaries.
[37]
As
for the second affidavit from Mr. Rosenberg, it provides the following
additional evidence and clarification regarding his first affidavit:
•
Daron Fashions Inc. and Daron Fashions Group are both names for the same entity,
the parent company of the Applicant, and were at all relevant times the
distributor for clothing bearing the Applicant’s applied-for mark;
•
From 2007 to 2009, only men’s clothing bearing the applied-for mark was
sold to Winners by Daron Fashions Inc. on behalf of the Applicant;
•
Winners invoices issued by Daron Fashions Inc., produced in various
exhibits to the Second Rosenberg affidavit, were for men’s wool knit sweaters,
men’s full zip sweaters, men’s hoodie sweaters, men’s knit poly sweat jackets,
men’s woven poly jackets, men’s woven wool jackets, men’s MMF feather light
jackets, men’s cotton knit sweaters, and men’s full zip mock neck jackets, sold
and delivered to Winners, and which bore a woven label on which appeared the
applied-for Trade-Mark, as appears from copies of the photographs filed as
further exhibits to that second affidavit;
•
Exhibit 14 contains copies of seven invoices issued to Winners by Daron
Fashions Inc. in 2009, purportedly evidencing sales of men’s apparel totalling
US$150,675 by October 22, 2009;
•
Mr. Rosenberg alleges that all merchandise delivered to Winners in
connection with these seven invoices bore a woven label displaying the
applied-for mark. He also clarifies that only men’s clothing bearing the
applied-for mark was sold to Winners by Daron Fashions Inc. from 2007 to 2009,
contrary to his previous assertion that the Applicant sells clothes for women
and children as well.
[38]
I
do not think the information provided in the second Rosenberg Affidavit is
sufficiently significant or probative to have materially altered the Officer’s
findings for two primary reasons. First, the only truly new evidence produced in
the appendices to that affidavit is the group of seven invoices produced at
Exhibit 14, all of which relate to 2009, which is after the relevant material
dates for the consideration of confusion and distinctiveness under ss. 2 and 16
of the Act. Second, the remaining clarifications offered by Mr.
Rosenberg’s second affidavit either serve to correct erroneous statements made
in his first affidavit (which statements, if left uncorrected, would likely
have favoured the Applicant, including, for example, the assertion that from
2007 to 2009 the Applicant sold only men’s clothing bearing the applied-for
mark to Winners) or attempt to clarify evidence of use of the applied-for mark
in Canada, which is unnecessary in light of the fact that the Officer was
satisfied, “based on a fair reading of the Rosenberg affidavit as a whole”,
that the first affidavit established the use of the applied-for mark in Canada
since November 2007 in association with clothing (see para 29 of the decision).
[39]
I
am also of the view that the voluminous evidence produced in the appendices of
the Wong Affidavit is not of sufficient quality and significance to materially
alter the Officer’s decision. Counsel for the Applicant argued that this
affidavit addresses some of the Officer’s concerns, namely that: (i) there was
no evidence to conclude that the word “OUTFITTER” was commonly adopted as a
component of trade-marks used in association with clothing and accessories at
the material date; (ii) the Applicant had failed to provide any evidence
establishing that trade-marks involving the design of a bird are commonly
adopted and used in Canada in association with clothing and accessories; and (iii)
the Applicant’s submissions that similar bird designs have been allowed to
co-exist in the fashion industry was unsubstantiated by any proper evidence to
that effect. Unfortunately, the additional evidence found in the Wong
Affidavit falls short of addressing the Officer’s concerns and does not deal
with her most critical finding.
[40]
I
agree with the Respondents that a search of the Trade-marks Office Register is
not the best way to establish the state of the marketplace or the actual use of
a mark. The fact that a mark appears on the register does not show that it is
currently in use, was in use as of the relevant material dates, is used in
relation to wares or services similar to those of the parties, or the extent of
any such use: see Equinox Entertainment Ltd. v 54th Street
Holdings Sarl, 2011 TMOB 233, [2011] TMOB no 5233, 98 CPR (4th)
14 [Equinox Entertainment] at para 35 (TMOB).
[41]
The
corporate registry information produced by the Applicant is of even less
relevance, particularly in light of the failure of the Applicant to connect the
evidence to the nature of the wares or services offered by the parties and its
failure to provide any evidence of current use in the marketplace. In order to
draw any inference as to the state of the marketplace, more tangible evidence
is required, like the purchase of co-existing clothing, samples of current
advertising, annual sales of the wares associated with the mark, etc.
[42]
Moreover,
many of the trade-marks listed in the Wong Affidavit are deficient in one
respect or another and do not support the purpose for which they are appended
as exhibits. For example, the Affidavit overstates the number of supposedly
co-existing marks that include either the word “OUTFITTER” or “OUTFITTERS” as
some are not registered and others are not relevant either because they belong
to the Respondents, relate solely or primarily to outdoor outfitting, or do not
appear to be related to wares of the type sold by the parties. The same is
true for the trade-marks including a bird design or an eagle design element,
very few of which could be said to be potentially confusing with the parties’
designs and many of which are not registered in respect of retail wares similar
to those of the parties.
[43]
Indeed,
a careful review of the Wong Affidavit establishes that the combination of both
a bird design (not to mention an eagle design) and the word “OUTFITTER” or
“OUTFITTERS” is uncommon. There appears to be only three or four marks (see
Exhibits 10, 13, 17 and 45 of the Wong Affidavit) that include the combination
of both a bird and the word “OUTFITTER” or “OUTFITTERS”, and there is no
evidence provided to establish that these trade-marks were in use in Canada as
of any material date, or the extent of any such use. The parties’ marks are
the only ones that combine a silhouette of a bird with outstretched wings and
talons and the word “OUTFITTER” or “OUTFITTERS”.
[44]
The
exact number of similar marks needed to establish that an element of a mark was
commonly adopted as a component of trade-marks used in association with the
relevant wares or services at the material date is not clear and likely depends
on the facts of a given case. In Groupe Procycle Inc v Chrysler Group LLC,
2010 FC 918, 87 CPR (4th) 123 (FC) [Procycle], the Court
found that the Registrar’s conclusion that ten relevant registrations were
sufficient to draw inferences as to the state of the marketplace was based on
the case law and “not at all unreasonable” (at para 46). The Court also
accepted the relevance of Park Avenue Furniture Corp v Wickes/Simmons
Bedding Ltd, [1991] FCJ no 546, 37 CPR (3d) 413 (FCA), according to which
“seven relevant registered trade-marks are a sufficient basis from which to
draw conclusions about the state of the market in a state-of-the-register
analysis” (Procycle at para 46), but did not comment on the Registrar’s
conclusion that five registrations were insufficient to draw any inferences
about the state of the marketplace with respect to a separate mark (Procycle
at para 19).
[45]
In
Equinox Entertainment, above, at para 45, the TMOB found that the
coexistence on the register of six trade-marks owned by the opponent (all but
two of which were owned by different entities) was sufficient on its own to
limit the ambit of protection for each of the six marks and contributed to an
overall decrease in the likelihood of confusion with the applicant’s
applied-for mark. In Nature’s Source Inc v Natursource Inc, 2012 FC
917, 104 CPR (4th) 1, however, this Court
upheld the Board’s decision pursuant to which only phonetically equivalent
third party trade-marks were found to be relevant to the analysis and the four
instances of such marks filed in evidence were not sufficient to draw the
inference that “consumers would be accustomed to see such trade-marks in the
marketplace and distinguish among them” (at para 66).
[46]
In
light of the foregoing, I am unable to conclude that the evidence provided in
the Wong Affidavit would have materially altered the Officer’s findings.
Undoubtedly, the Officer’s finding that “the probabilities of confusion between
the marks at issue are evenly balanced between a finding of confusion and of no
confusion” (at para 52 of the decision) suggests that the production of any
additional evidence presented by the Applicant should be carefully considered
to the extent that it could tip the balance in its favour. The few marks on the
register that can be considered relevant for the purpose of establishing a probability
of confusion, however, are insufficient to conclude that the similar elements
of the parties’ marks were commonly adopted as a component of trade-marks used
in association with clothing and accessories at the material date. While there
may be a certain number of marks using the individual elements of a bird design
or the word “OUTFITTER” or “OUTFITTERS” in combination, there appears to be no
other trade-mark that includes the combination of a silhouette of a bird having
outstretched wings and these same words (with the exception, perhaps, of Tab
13, which clearly depicts a pelican in flight, as opposed to a bird of prey).
[47]
That
being the case, the Board’s decision is reviewable under the reasonableness
standard. When that standard applies, as recalled by the Supreme Court in Mattel,
Inc v 3894207 Canada Inc, 2006 SCC 22, [2006] 1 S.C.R. 772 [Mattel], the
question is whether the Board’s decision can withstand “a somewhat probing”
examination and is not “clearly wrong” (at para 40). Considering the expertise
possessed by members of the Board, who determine whether applied-for
trade-marks are confusing or not on a daily basis, their decisions ought not to
be set aside lightly. The Court’s role when reviewing a decision under the
reasonableness standard has been described as follows in Dunsmuir v New
Brunswick, 2008 SCC 9, [2008] 1 S.C.R. 190 at para 47:
Reasonableness
is a deferential standard animated by the principle that underlies the
development of the two previous standards of reasonableness: certain questions
that come before administrative tribunals do not lend themselves to one
specific, particular result. Instead, they may give rise to a number of
possible, reasonable conclusions. Tribunals have a margin of appreciation
within the range of acceptable and rational solutions. A court conducting a
review for reasonableness inquires into the qualities that make a decision
reasonable, referring both to the process of articulating the reasons and to
outcomes. In judicial review, reasonableness is concerned mostly with the
existence of justification, transparency and intelligibility within the
decision-making process. But it is also concerned with whether the decision
falls within a range of possible, acceptable outcomes which are defensible in
respect of the facts and law.
b) The
reasonableness of the Officer’s decision
[48]
As
suggested by the Respondents, it is important to keep in mind the role of a
trade-mark in the marketplace in undertaking a review of the Officer’s
decision:
Trade-marks in Canada are an important tool to
assist consumers and businesses. In the marketplace, a business marks its
wares or services as an indication of provenance. This allows consumers to
know, when they are considering a purchase, who stands behind those goods or
services. In this way, trade-marks provide a “shortcut to get consumers to
where they want to go”, per Binnie J. in Mattel, Inc. v 3894207
Canada Inc., 2006 SCC 22, [2006] 1 S.C.R. 772, at para. 21. Where the
trade-marks of different businesses are similar, a consumer may be unable to
discern which company stands behind the wares or services. Confusion between
trade-marks impairs the objective of providing consumers with a reliable
indication of the expected source of wares or services. […]
Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27, [2011]
2 SCR 387 [Masterpiece Inc] at para 1.
[49]
The
grounds of opposition upon which the Officer found in favour of the Respondents
all turn on the issue of confusion between the parties’ marks. The parties
generally agree as to the principles to be applied when considering the
existence of confusion under the grounds of opposition raised by the
Respondents, and have not argued that the Officer misdirected herself as to
these principles. They differ only as to how the law should be applied to the
case at hand.
[50]
The
Supreme Court has confirmed that the test of confusion to be applied is a
matter of first impression in the mind of a casual consumer somewhat in a
hurry, who does not pause to give the matter any detailed consideration or
scrutiny, nor to examine closely the similarities and differences between the
marks: see Veuve Clicquot Ponsardin v Boutique Cliquot Ltée, 2006
SCC 23, [2006] 1 S.C.R. 824, 49 CPR (4th) 401 [Veuve Clicquot]
at para 20.
[51]
In
applying the test for confusion, the Registrar must have regard to all of the
surrounding circumstances, including those specifically enumerated in s. 6(5)
of the Act, namely:
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, services or business;
d)
the
nature of the trade; and
e) the degree
of resemblance between the trade-marks in appearance or sound or in the ideas
suggested by them.
[52]
These
enumerated factors are not exhaustive, and need not be attributed equal weight:
Mattel, above, at para 54; Veuve Clicquot, above, at para 21.
Despite the fact that the degree of resemblance is the last factor listed in s.
6(5), the degree of resemblance is often the one factor likely to have the
greatest effect on the confusion analysis: see Masterpiece Inc, above,
at para 49. Indeed, the Supreme Court went so far as to say that the other
factors in s. 6(5) only become significant once the respective marks are found
to be identical or very similar to one another:
As Professor Vaver points out, if the marks or names
do not resemble one another, is it unlikely that even a strong finding on the
remaining factors would lead to a likelihood of confusion. The other factors
become significant only once the marks are found to be identical or very
similar (Vaver, at p. 532). As a result, it has been suggested that a
consideration of resemblance is where most confusion analyses should start (ibid.).
Masterpiece Inc, at para 49.
[53]
Having
carefully reviewed the Officer’s reasons, I am unable to conclude that any of
her conclusions with regard to the s. 6(5) factors clearly fall outside of the
range of possible, acceptable outcomes which are defensible in respect of the
facts and law. The Officer’s decision, while not the only possible conclusion
that could be drawn on the facts, is justifiable, transparent and intelligible.
[54]
Despite
the Applicant’s assertion to the contrary, I am unable to find that its
applied-for mark is inherently more distinctive than the Respondents’ AEO
marks. While the word “OUTFITTERS” can be said to be descriptive and has
properly been considered generic by the Officer, it cannot seriously be contended
that the word “AMERICAN” is any more descriptive of clothes than the word
“HAWKE”. Neither of the two marks, once stripped of the word “OUTFITTERS”, are
descriptive of clothing, and no one mark can therefore be said to be inherently
more distinctive than the other. Since the Applicant’s applied-for mark is
based upon proposed use, it clearly cannot have acquired any greater
distinctiveness at the material date, whereas the Gibbs Affidavit clearly shows
extensive use in Canada of the AEO & Design trade-mark. The Officer could
therefore reasonably come to the conclusion that the factor mentioned at s.
6(5)(a) of the Act favours the Respondents.
[55]
As
for the length of time the AEO & Design mark has been in use, it is true,
as argued by the Applicant, that there is nothing in the Gibbs Affidavit
establishing when that trade-mark was first used in association with wares or
services. It is equally obvious, however, that use in Canada had commenced prior to the filing of the Applicant’s proposed use trade-mark. To
that extent, the Member’s conclusion that this factor also favours the
Respondents was reasonable.
[56]
Counsel
for the Applicant tried to argue that there was insufficient evidence to
establish that the AEO & Design trade-mark had become known to a fair
extent at the material date. He pointed out, for example, that there is no way
to assess what portion of the sales or of the advertising expenses referred to
in the Gibbs Affidavit covered or related to wearing apparel, footwear and
accessories bearing the AEO & Design trade-mark, as opposed to the
“AMERICAN EAGLE OUTFITTERS” and/or the “EAGLE DESIGN” mark.
[57]
Counsel
also referred to the photographs of the Respondents’ retail stores located in Canada, which illustrate use of the trade-mark AMERICAN EAGLE OUTFITTERS on the exterior
signage, rather than use of the AEO & Design mark. The same would be true
of the internal signage and point of sale materials, which demonstrate the EAGLE
Design mark in the right hand corner and the AMERICAN EAGLE OUTFITTERS mark at
the bottom left hand corner.
[58]
The
Officer was clearly aware of these deficiencies, but nevertheless found that
there was sufficient evidence of use to establish the existence of an AEO &
Design mark. She stated, at paragraph 35 of her reasons:
Although Ms. Gibbs does not specifically refer to
the trade-mark AMERICAN EAGLE OUTFITTERS & Design, I note that hang tags,
labels and photographs of wearing apparel filed with her affidavit do display
the EAGLE Design in combination with the words AMERICAN EAGLE OUTFITTRS, as do
specimens of direct mail advertising and website pages. In most instances the
EAGLE Design is shown above the words AMERICAN EAGLE and the word OUTFITTERS is
shown below them. I am satisfied that such display amounts to use of the
trade-mark AMERICAN EAGLE OUTFITTERS & Design as pleaded in the ground of
opposition […].
[59]
The
Officer carefully considered and accepted the evidence provided by the
Respondents with respect to prior use of the AEO & Design mark. Ms. Gibbs
was not cross-examined, and the Applicant filed no additional evidence on this
point in this appeal. Having carefully reviewed the exhibits appended to Ms.
Gibbs’ affidavit, I am satisfied that the conclusion of the Officer on this
factor was not unreasonable.
[60]
As
for the nature of the wares (s. 6(5)(c)), it is indisputable that there is an
overlap between the wares associated with the parties’ respective trade-marks.
The applied-for mark is proposed to be used in connection with clothing and
footwear. The Gibbs Affidavit established that the Respondents have also used
their trade-mark in connection with clothing, footwear, accessories and related
store services. Indeed, this fact was not disputed by the Applicant, as noted
by the Officer. It was therefore reasonable to find that this factor also
favours the Respondents.
[61]
There
is also clearly an overlap between the nature of trade of the parties. On the
basis of the evidence that was before her, the Officer found it reasonable to
infer that the Respondents’ wares are sold only in stores operated by the
Respondents’ licensee (with the exception of on-line sales); however, that does
not detract from the fact that nothing prevents the Respondents from selling
their wares in other stores. Moreover, the parties’ wares are sold through the
same channels, i.e. retail clothing stores, and the fact that they are not
currently sold in the same stores is irrelevant for the purpose of determining
whether there is an overlap between the nature of the trade of the two parties.
[62]
That
brings me to the degree of resemblance between the trade-marks. As previously
mentioned, the degree of resemblance in appearance or sound or in the idea
suggested has the greatest effect on the confusion analysis: Masterpiece Inc,
above, at para 49; Home Hardware Stores Ltd v Ames True Temper Properties,
Inc., 2010 TMOB 213, [2010] TMOB no 5213, 89 CPR (4th) 442 at
para 34.
[63]
Counsel
for the Applicant contended that the word “outfitter” is a common dictionary
word and is commonly used in association with clothing and accessories, such
that the Officer erred in placing any significance on the fact that this word
is common to the relevant marks. Similarly, it was argued that both bird
designs and eagle designs are common elements of trade-marks used in Canada in association with clothing and accessories and, as such, the fact that a bird
design is found as an element of both of the parties’ marks should not serve to
render their respective marks similar to one another. As a result, the
Applicant submitted that the striking aspects of the parties’ respective marks
(“HAWKE & CO.” and “AMERICAN EAGLE”) bear no resemblance to one another,
and are therefore not confusingly similar with one another.
[64]
While
attractive at first sight, the Applicant’s reasoning is flawed and not in
keeping with the case law. It is well established, as noted by the Officer,
that when assessing the degree of resemblance between two marks, they should be
looked at in their entirety and not dissected into their components with
emphasis being placed on those elements which are common to both: British
Drug Houses, Ltd v Battle Pharmaceuticals, [1944] Ex CR 239, 4 CPR 48 at
60; Ultravite Laboratories Ltd v Whitehall Laboratories Ltd, [1965] SCR
734, 44 CPR 189 at 191-192. That being said, a dominant component in a mark
which affects the overall impression of an average consumer ought not to be
disregarded: Masterpiece Inc, above, at para 84.
[65]
The
Officer could reasonably reject the Applicant’s argument that the dominant or
most striking aspects of the respective marks were “HAWKE & CO” and
“AMERICAN EAGLE” for two reasons. First of all, the Officer found that there
was no evidence establishing that the word “OUTFITTER” or the design of a bird
were commonly adopted as components of trade-marks used in association with clothing
and accessories. Based on the evidence that was before her, it was a
conclusion that she could validly reach. Indeed, I have already indicated that
the supplementary affidavit filed by the Applicant before this Court would not
have had a material impact upon the Registrar’s decision. The Wong Affidavit
establishes that the combination of both a bird design and the word
“OUTFITTER/OUTFITTERS” is not common, and that the only marks that combine both
a silhouette of a bird of prey with outstretched wings and the word
“OUTFITTER/OUTFITTERS” are the respective marks of the Applicant and
Respondents.
[66]
Moreover,
the Supreme Court has recognized in Masterpiece Inc (above, at para 84)
that a common word with wide use in describing goods and services can sometimes
serve as the most distinctive and dominant component of a mark when it provides
the “content and punch” of the trade-mark. On that basis, the Officer could
reasonably focus on the word “OUTFITTER”, because it is the last element of
both marks, and on the bird designs, because they show a fair degree of
resemblance in that they both depict the silhouette of a bird of prey with
outstretched wings. While the Officer agreed that there are significant
differences between the trade-marks when sounded, she nevertheless determined
that there is a fair degree of resemblance between the marks when viewed, both
when considered as a whole and when considering their most striking elements.
In light of the expertise of the Board on those matters and of the significant
degree of deference owed to its decision, I conclude that its assessment as to
the degree of resemblance between the two marks should not be disturbed on
appeal before this Court.
Conclusion
[67]
The
Board applied the relevant jurisprudence, provided cogent and intelligible
reasons and came up with a decision that falls “within a range of possible,
acceptable outcomes which are defensible in respect of the facts and law”.
Accordingly, this appeal is dismissed, with costs.
JUDGMENT
THIS
COURT’S JUDGMENT is that the appeal is dismissed, with costs.
"Yves de
Montigny"
Email this Content