Date:
20120510
Docket:
T-711-11
Citation:
2012 FC 564
[UNREVISED ENGLISH CERTIFIED
TRANSLATION]
Ottawa, Ontario,
May 10, 2012
PRESENT: The
Honourable Mr. Justice de Montigny
BETWEEN:
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STEPHAN CLICHE
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Applicant
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and
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ATTORNEY GENERAL OF
CANADA
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Respondent
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REASONS FOR JUDGMENT
AND JUDGMENT
[1]
This
an appeal under section 56 of the Trade-marks Act, RSC 1985, c T-13 (the
Act) from a decision of the Registrar of Trade-marks (the Registrar) dated
March 3, 2011. In its decision, the Registrar rejected the trade-mark
registration “North America Trade”, on the basis that the proposed trade-mark
was clearly descriptive of the products or services offered.
I. Facts
[2]
The
applicant filed a trademark registration application for “North America Trade”
with the Registrar on April 27, 2007. The applicant described the proposed
services related to this trademark as “Reference service for information on
commerce between Canada and the United States”. This application received the number
1345342.
[3]
Between
October 24, 2007, and March 14, 2010, the Registrar and the applicant exchanged
several letters as to the admissibility of the proposed mark. The Registrar
made it clear to the applicant that the mark seemed, at first sight,
descriptive of the character of the services with which it was to be used. The
applicant replied by advancing several arguments that were also raised during
this appeal and that I will come back to in my analysis.
[4]
On
March 15, 2010, after making submissions three times in response to the concerns
expressed by the Registrar, the applicant wrote to the Registrar to request a
final decision in the matter.
[5]
On
March 3, 2011, the Registrar found that the mark could not be registered
because it provided a clear description of the proposed services, contrary to
paragraph 12(1)(b) of the Act.
II. Impugned
decision
[6]
In
its decision, the Registrar first pointed out that the question of whether the
applicant’s mark is clearly descriptive of the services he provides must be
assessed from the point of view of the ordinary purchaser of these services. In
order to determine this question, it is not proper to dissect the trademark
into its various components; rather, it must be considered in its entirety and
as a whole, by considering the consumer’s first impression.
[7]
Applying
this test, the Registrar found that the mark did not comply with paragraph 12(1)(b)
of the Act, essentially for the following reasons:
I am mindful that an expression like NORTH AMERICA
TRADE is a term which others would be likely to use in the normal course of
trade to describe “reference service for information on commerce between Canada
and the United States.” One of the most important purposes of paragraph
12(1)(b) of the Act is to protect the right of all traders to use apt
descriptive language. The courts have recognized and held that descriptive
words are the property of all and cannot be appropriated by one person for
their exclusive use. …
…
It is my position that the ordinary purchaser of the
applicant’s services, when faced with the subject application would immediately
conclude, as a matter of first impression that the applicant is providing
information on North America Trade.
Applicant’s Record,
Tab 2, pp. 8-9.
[8]
Since
the mark was found to be clearly descriptive and thus, not registrable, the
Registrar refused the applicant’s application in accordance with paragraph 37(1)(b)
of the Act.
III. Issue
[9]
This
appeal essentially raises the issue of whether the Registrar erred in finding
that the mark “North America Trade” is clearly descriptive.
IV. Analysis
[10]
Before
discussing the substance of the case, it is appropriate to first determine the
applicable standard of review. Subsection 56(5) of the Act provides that
evidence other than that submitted to the Registrar may be submitted to the
Court as part of an appeal based on subsection 56(1). When an applicant
uses this opportunity and the additional evidence submitted is significant and
meaningful, the Court is justified in drawing its own conclusions and is not
obliged to defer to the Registrar’s decision. However, in the absence of new
evidence, the reasonableness standard should be applied; the Court must
recognize the Registrar’s expertise and must show a certain degree of deference
to its findings of fact and law.
[11]
After
reviewing the relevant case law, my colleague Mandamin J. recently summed up
the state of the law on this issue in the following paragraph:
If, on the one hand, this evidence could not have
materially affected the Registrar’s decision, then the standard of the appeal
review is reasonableness. If, on the other hand, the evidence could have
materially affected the Registrar’s decision, then the appeal is de novo based
on the record before the Registrar as well as the new evidence and all findings
of fact, law and discretion are under consideration: Molson Breweries v John
Labatt Ltd.
Ontario Teachers’ Pension Plan Board v. Canada
(Attorney General), 2011
FC 58 at para 21, 382 FTR 237 (Ontario Teachers’ Pension Plan Board).
[12]
In
the present case, the applicant submitted two types of new evidence. First, he
submitted the affidavit of Maryse Cloutier. She testified that Mr. Cliche asked
her which wares or services might possibly be rendered under the name North
America Trade, to which she spontaneously stated that they could be
transportation, customs clearance, import-export services or similar
activities. The applicant also submitted his own affidavit, in which he
confirmed his intention of filing a new application of the mark North America
Trade relating to services different from and additional to those described in
the original application, i.e. legal services. This new evidence is not very meaningful
and would probably have had little impact on the Registrar’s decision. First,
the affidavit of Ms. Cloutier alone would not be viewed as reflecting the
opinion of the average consumer. Second, the affiant’s point of view is
inextricably flawed in that the question asked by the applicant is not
consistent with the applicable test for determining the descriptiveness of a
mark, as will be seen a little later. As for the applicant’s affidavit, it
cannot be assigned much weight as it rests on pure contingency.
[13]
The
applicant also tried to introduce into evidence improperly, i.e. without an
affidavit, computerized statements from the trademark database maintained by
the Canadian Intellectual Property Office, to show that suggestive marks
comparable to the mark at issue in this case had been registered by the
Registrar in the past. During the hearing, the applicant claimed that these
documents are in the public domain and he also relied on section 60 of the Federal
Courts Rules, SOR/98-106, to obtain leave to submit an affidavit at the
hearing so as to introduce these items into evidence. The respondent objected
to that and the Court accepted the documents with reservations. After giving
the matter some thought, it does not seem to me to be useful to address the
admissibility of the affidavit submitted in extremis by the applicant to
remedy the improper introduction of documents. Even assuming that this evidence
can be considered, it does not add anything new since the applicant already
raised this very argument before the Registrar.
[14]
Finally,
the applicant also inserted in his file the first few pages from a Google
search of the words “North America Trade”. Once again, these documents were not
introduced in the form of an affidavit and thus are not admissible as evidence.
Further, the applicant did not establish the relevance of this evidence.
[15]
Therefore,
the applicant not submitted any significant or meaningful new evidence and the
Registrar’s decision must therefore be reviewed on a standard of
reasonableness. Consequently, this Court will only intervene if the Registrar’s
decision does not fall within a range of possible, acceptable outcomes which
are defensible in respect of the facts and law (Dunsmuir v New-Brunswick,
2008 SCC 9, at para 47, [2008] 1 S.C.R. 190).
[16]
As
previously noted, paragraph 12(1)(b) of the Act provides that a trademark
cannot be registered if it provides a clear description of the character or
quality of the wares or services in association with which it is used. The
provision reads as follows:
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12. (1) Subject to
section 13, a trade-mark is registrable if it is not
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. .
(b)
whether depicted, written or sounded, either clearly descriptive or
deceptively misdescriptive in the English or French language of the character
or quality of the wares or services in association with which it is used or
proposed to be used or of the conditions of or the persons employed in their
production or of their place of origin;
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12. (1) Sous réserve de
l’article 13, une marque de commerce est enregistrable sauf dans l’un ou l’autre
des cas suivants :
[…]
b) qu’elle soit sous
forme graphique, écrite ou sonore, elle donne une description claire ou donne
une description fausse et trompeuse, en langue française ou anglaise, de la
nature ou de la qualité des marchandises ou services en liaison avec lesquels
elle est employée, ou à l’égard desquels on projette de l’employer, ou des
conditions de leur production, ou des personnes qui les produisent, ou du
lieu d’origine de ces marchandises ou services;
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[17]
The
applicant acknowledged that a clearly descriptive mark cannot be registered,
but argued that a distinction must be made between a clearly descriptive mark
and a suggestive mark. In this regard, he cited several decisions where the
registrability of the suggestive mark had been recognized, referring more to a
mark that makes subtle and indirect reference to the character or quality of a
product or service without describing it clearly.
[18]
This
argument by the applicant does not seem to be very useful and is, at most, a
diversion from the real issue to be determined. As the respondent pointed out,
the concept of “suggestive mark” is non-existent in the Act and the only
issue to be determined is whether the mark is clearly descriptive (or
deceptively misdescriptive) of the character or quality of the services in
association with which it is used. It does not matter whether the applicant
proves that his mark is suggestive. What must ultimately be established is that
the decision rendered by the Registrar as to the clearly descriptive character
of his mark is erroneous.
[19]
The
purpose sought by Parliament is that a person cannot give himself exclusive
right to the use of generic terms describing a category of wares or services,
to the detriment of other traders or manufacturers of similar wares or
services. This logic was aptly described by Rand J. in General Motors Corp v
Bellows, [1949] S.C.R. 678 (available on CanLII). Commenting on a rule adopted
under the authority of a previous version of the Act according to which an
expression or a word referring directly to the character or quality of wares may
nevertheless have been registered when it may have been shown that this word or
expression had acquired a secondary meaning through continued and extensive
use, the Justice wrote:
The rule quoted illustrates the conflict early
recognized by the courts before the subject matter came under legislation, i.e.
between the appropriation by a trader of a word within the range of language
that would ordinarily be used by traders to describe particular goods, and the
right of other traders in the normal carrying on of their business to employ
the same or similar words. In the technique of advertising, the more complex
and expensive the goods are, the greater the imaginative seeking by those
producing them for attractive and arresting words; but in fixing the limits of
legislative protection the courts must balance the conflicting interests and
avoid placing legitimate competition at an undue disadvantage in relation to
language that is common to all.
[20]
In
this case, the Registrar found that the mark “North America Trade” indeed has a
specified meaning. It does not consist of invented or rare words, or of a vague
reference to the quality or characteristics of a service, but rather of a mark
that is clearly descriptive of the services in association with which it is used,
namely, “Reference services for information on commerce between Canada and the
United States”.
[21]
There
is no disagreement between the parties about that a word or expression must be
considered as a matter of first impression that it creates in its entirety and
not dissected to conduct a meticulous analysis, isolating each word, in the
case of an expression. Where the applicant was mistaken, was when he submitted
that the person who must be concerned with the first impression is the person
of average intelligence, without any other qualification.
[22]
It
is well settled that the descriptiveness of a word or an expression must not be
assessed abstractly, but in association with the wares or services intended by
the proposed trademark. The mark must be considered from the point of view of
the consumer or average user of the wares or services it is associated with. In
other words, the test is to determine which first impression the word or
expression would have on the average retailer, consumer or user of the type of
wares or services the mark is associated with. A good example of this review is
in Mitel Corporation v Canada (Registrar of Trade Marks) (1984),
79 CPR (2d) 202, at p 208 (available on QL) (FCTD):
While the word “SUPER” is clearly laudatory and descriptive,
the word “SET” is not as close to the mark: that word, by itself, does not
necessarily focus the mind on a telephone set. The word “SET” awakens many and
diverse first impressions.
A reasonable man, reasonably conversant with
the English language, passing by a tennis court would normally relate the word “SET”
to the game of tennis. A customer in a furniture store would associate the word
“SET” with a bedroom set or a dining room set, depending on his intentions or
the area of the store that he is in. A person interested in the purchase of a
telephone might not call the equipment a “SET”. He would most likely, in common
parlance, call it a “telephone”. But in a telephone store, or glancing at
advertisements of telephone sales, a customer would probably link the mark “SUPERSET”
to the telephone sets on display and form the impression that the telephones
offered for sale are of a superior quality. Much as other people would link “SUPERWASH”
to garments that wash superbly well, or “SUPERSET” (in association with tools)
to tools that function in a superior way, or “SUPER-WEAVE” to superfine
textile. In short, the mark is not to be considered in isolation; it must be
perceived in connection with the wares to which it is associated.
[23]
That
is why it is not very important that the words “North America Trade” may
identify products or services that are each very different, as the applicant argued
(relying in particular on the affidavit of Ms. Cloutier). The words draw their
meaning from the context in which they are used. Therefore, the real issue is
not knowing what products or services may be covered by its expression “North
America Trade”, but rather to ask oneself whether the average consumer of
services identified as “Reference services for information on commerce between
Canada and the United States” could be, as a first impression, that the “North
America Trade” brand clearly describes these services.
[24]
On
this last issue, the Registrar answered in the affirmative:
It is my position that the ordinary purchaser of the
applicant’s services, when faced with the subject application would immediately
conclude, as a matter of first impression that the applicant is providing
information on North America Trade.
(Applicant’s
Record, Tab 2, p. 9.)
[25]
The
applicant did not persuade me that the Registrar erred in rendering its
decision. I think that it could have reasonably found that the registration of
the proposed mark gave the applicant an unfair advantage, authorizing the
exclusive use of an expression that is clearly descriptive of the services he
provides, to the detriment of his competitors working in the same field. Again,
the issue is not so much knowing whether this mark may be considered suggestive
and, in that sense, receiving little protection. From the time when a mark
clearly gives a description of the character or the quality of a service, it
cannot be registered.
[26]
The
applicant submitted that trade-marks as descriptive as those he proposes have
been registered in the past and gave a number of them as examples. However,
this argument cannot succeed for the following reasons.
[27]
Generally
speaking, it is irrelevant that a given mark may have been registered in the
past. Each application must be assessed on its intrinsic value, the proposed services
and its particular context. It must also be noted that the Registrar’s practices
and policies may change over the years.
[28]
This
being said, the Court has at times recognized in the past that, to determine
the descriptiveness of a trade-mark, the state of the Register may be taken
into account. For example, the following are the comments of Addy J. in Thomas
J. Lipton, Limited v Salada Foods Ltd (1979), [1980] 1 FC 740, at para 19
(available on QL) (FCTD):
It is true that, generally speaking, the state of
the Register is irrelevant and unacceptable as evidence in certain cases, for
instance to establish that, because a similar mark was granted previously, the
one under consideration should be granted. Each case must be judged on its
merits and in accordance with the evidence tendered. The state of the Register,
however, is perfectly admissible to establish other relevant facts such as in
the present case, where it is tendered for the purpose of showing that for over
sixty years the Registrar must have consistently found that the word “Lipton”
was distinctive since it was granted in trade marks. …
[29]
In
this case, the applicant referred to several trade-marks that did not contain
the expression “North America” or the word “Trade”. Therefore, these marks can
have no use in assessing the descriptiveness of the proposed mark.
[30]
As
for the other marks, which associate the expression “North America” or the word
“Trade” with other words, they do not seem to demonstrate a longstanding
practice of the Registrar. To conclude, as the applicant did, that these
examples demonstrate the registrability of a mark despite the suggestion of a
vague association with the products or services covered, I would need to know
more about the context in which these decisions were made. I am certainly not
able to conclude, on the basis of the evidence before me, that the Registrar’s
refusal to register the “North America Trade” mark would likely cause
inconsistency in the Register.
[31]
Even
supposing that some of the marks pointed out by the applicant may seem
suspicious, at least at first glance, the inferences that the applicant would
like to draw cannot be drawn. This Court has repeatedly held that the Registrar
is not required to perpetuate its past errors (Sherwin Williams Co v Canada (Commissioner
of Patents) (1937), Ex CR 205, at para 9, [1938] 1 DLR 318; John
Labatt Ltd v Carling Breweries Ltd (1974), 18 CPR (2d) 15, at paras 41-45
(available on QL) (CFTD); Wool Bureau of Canada Ltd v Canada (Registrar
of Trade Marks) (1978), 40 CPR (2d) 25, at para 14, [1978] 2 ACWS 286
(CFTD); Warnaco Inc v Canada (Attorney General) (2000), 5 CPR
(4th) 129, at para 30, 96 ACWS (3d) 659 (CFTD); Ontario Teachers’
Pension Plan Board, above, at paras 53, 59 and 81).
[32]
The
applicant also submitted that the Registrar had erred in failing to consider
his offer to disclaim. It is undeniable that disclaiming all the elements of a
trade-mark is not acceptable if the trade-mark in its entirety is not
registrable and does not contain any distinctive elements. Addy J made the
following comments on this topic in Ingle v Canada (Registrar of
Trade Marks) (1973), 12 CPR (2d) 75, at para 7 (available on QL)
(CFTD):
The Appellant ... also claims alternatively
that, as he has disclaimed the exclusive use of all of the words apart from the
mark, he has the right to have the mark itself registered. This might very well
be true if there were a mark or anything sufficiently peculiar in the form or
layout of either of the words or of any, of the letters to which a registration
might attack. But, the words themselves are spelt out in ordinary
everyday-blocks capital letters which are, of course, publici juris and there
is no peculiar design or peculiarity or distinguishing feature in the
appearance of any part of the words or letters which could be described as a
mark.
[33]
That
is precisely the situation here. The proposed mark consists solely of words. It
is does not have any particular design or distinctive feature. Therefore, the
mark will necessarily be without distinctive character once the words are
determined to be clearly distinctive. Disclaiming all of the descriptive words
of the mark cannot, in the circumstances, make this mark registrable.
[34]
Finally,
the applicant’s argument that the mark “North America Trade” is a distinctive
grammatical element is irrelevant and is insufficient to remove its
descriptiveness. Even if a generic and grammatically more correct wording
should have read “North American Trade” or “North America’s Trade”, the average
consumer of the type of services covered by the mark as written by the
applicant would not miss the link between the mark and the services.
[35]
For
all of these reasons, the application for judicial review is dismissed with
costs.
JUDGMENT
THE
COURT ORDERS AND ADJUDGES that the application for judicial
review is dismissed, with costs.
“Yves
de Montigny”
Certified true
translation
Catherine Jones,
Translator
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