Date: 20091124
Docket: T-1159-08
Citation: 2009 FC 1208
Montréal, Quebec, November 24, 2009
PRESENT: The Honourable Mr. Justice Mainville
BETWEEN:
ADVANCE
MAGAZINE PUBLISHERS, INC.
Applicant
and
WISE
GOURMET INC.
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1]
This case
concerns an appeal pursuant to section 56 of the Trade-marks Act (the
“Act”) from a decision dated May 20, 2008 (the “Decision”) of Jill W. Bradbury
acting for the Registrar of Trade-marks pursuant to delegated authority as a
member of the Trade-marks Opposition Board. I will refer to the decision maker
in this case as the “Registrar”. Pursuant to this Decision, the Registrar dismissed
the opposition of Advance Magazine Publishers (the “Applicant”) to the registration
as a trade-mark of WISE GOURMET by Wise Gourmet Inc. (the “Respondent”).
[2]
The
Applicant has submitted to the Federal Court new evidence in the form of two
lengthy affidavits which were not before the Registrar, as it is entitled to do
pursuant to paragraph 56(5) of the Act. Consequently, this case requires this
Court to examine the standard under which it must review the Decision of the
Registrar in light of the new evidence submitted.
Background
[3]
On
December 31, 2003, an application to register the mark WISE GOURMET was
submitted pursuant to the Act and was based on the use of that mark since as
early as January 2002. The proposed uses of the mark in Canada were stated to be in
association with various food products and food supplements as well as in
printed publications, namely cookbooks, newsletters, nutrition guides, food
recipes and periodicals relating to nutrition and food. Uses relating to
television and radio programming services as well as websites featuring health
and gourmet foods were also proposed, as were retail store services
specializing in health and gourmet foods and arranging and conducting travel
tours.
[4]
Following
advertisement of the application for opposition purposes, the Applicant filed a
statement of opposition on August 22, 2004 based on numerous grounds which are
for the most part premised on the Applicant’s view that the mark WISE GOURMET is
confusing with its trade-mark GOURMET and related trade-mark registered
pursuant to the Act under numbers 392,189 and 277,151. The Applicant also
argued that the application to register the mark WISE GOURMET was not in
compliance with the Act.
[5]
Various
affidavit evidence and arguments were submitted to the Registrar by both the
Applicant and the Respondent and an oral hearing was held before the Registrar
leading to the Decision.
The
Decision under appeal
[6]
The
Registrar dismissed the argument on non-use of the mark WISE GOURMET pursuant
to paragraph 30(b) of the Act on the basis that the opponent (in this appeal,
the Applicant) had not met its evidentiary burden. The Registrar further
dismissed the ground of opposition based on non-compliance with paragraph 30(i)
of the Act on the same basis.
[7]
The
remainder of the Decision dealt with various grounds of opposition premised on
confusion between the WISE GOURMET mark and the Applicant’s trade-mark GOURMET.
[8]
First, the
Registrar dismissed the grounds of opposition raised in relation to section 16
of the Act which provides that in order to secure the registration of a
trade-mark, it must not be confusing on the date of its first use, or as the
case may be, on the date of filing of the application, with a trade-mark that had been previously
used in Canada or made known in Canada by any other person. The Registrar held
that there was no evidence that the Applicant was using its trade-mark GOURMET
prior to the relevant dates (Decision, p. 5).
[9]
Second, the Registrar
applied the test for confusion to the remaining grounds of opposition to the
registration of the mark WISE GOURMET. For these purposes, the Registrar
applied the test of first impression and imperfect recollection to ascertain if
confusion existed.
[10]
The Registrar found
that the
mark WISE GOURMET and the GOURMET trade-mark were both not inherently
distinctive, since both indicate that the subject matter of the marks would be
of interest to lovers of food.
[11]
The
Registrar further found that there was insufficient evidence of the use or
promotion of the WISE GOURMET mark to conclude that it had become known to any
extent. In regard to the use of the trade-mark GOURMET, the Registrar made the
following conclusions of fact:
As the Opponent has not provided any
evidence concerning its use or promotion of GOURMET, I am unable to conclude
that the mark has become known to any meaningful extent. It is true that the
Applicant did provide some evidence of the use/promotion of the Opponent’s mark
[…], but there is no evidence of the extent to which Canadians may have been
exposed to the Opponent’s mark (Decision, p. 6).
[12]
On the
length of time each mark had been in use, the Registrar found that the
trade-mark GOURMET has been used in Canada
since at least 1957, although the Registrar assumed that use to be de
minimus.
[13]
The
Registrar found that the parties’ wares or services were related and overlapped.
Though little information had been provided concerning the parties’ channels of
trade, the Registrar deemed it reasonable to assume that these could overlap,
particularly with respect to publications.
[14]
Concerning
the degree of resemblance between both marks, the Registrar was of the view
that the first portion of a trade-mark was the most relevant for purposes of
distinction, and consequently concluded that “...although there is a fair
degree of resemblance between the marks, the word WISE does serve to distinguish
the Applicant’s Mark somewhat from the Opponent’s mark in appearance, sound and
idea suggested” (Decision, p.7).
[15]
The
Registrar was unable to make any meaningful inference about the state of the
marketplace in light of the lack of evidence provided. However the Registrar
noted that the Applicant had provided evidence of 740 books being offered for
sale from the Canadian online bookseller www.indigo-chapters.ca
which contained the word Gourmet in their title, including by way of
illustration “The Country Gourmet”, “Natural Gourmet”, “Microwave Gourmet”,
“Gourmet Traveller” and many other similar titles. Though the Registrar
accorded reduced weight to this evidence of third party publications, it
nevertheless played a supporting role in respect to the conclusion
independently reached by the Registrar, “…namely that, without evidence of
acquired reputation, the mark GOURMET should only be entitled to a very narrow
scope of protection due to its descriptive nature” (Decision, p.8).
[16]
The
Registrar thus concluded that on a balance of probabilities, confusion between
the marks was not likely. In particular, the Registrar concluded that the
average Canadian would not as a matter of first impression conclude that GOURMET
magazine and WISE GOURMET cookbooks, newsletters, nutrition guides, food
recipes, or periodicals relating to nutrition and food would share a common
source. In reaching this overall conclusion, the Registrar stressed the
following: “I have reached this overall conclusion because the common word
GOURMET is just that, a very common word, with a well-known descriptive
meaning. The Opponent has not evidenced that it has acquired a significant
reputation in its mark, and it is trite law that where a party adopts an
inherently weak mark, relatively small differences will suffice to distinguish
another’s mark” (Decision, pp. 8-9). This conclusion was also extended to the
registered trade-mark GOURMET Design.
[17]
Finally,
the Registrar rejected on technical grounds the opposition based on another
registration No. 576,562 for the GOURMET mark related to use on online magazines
and publications and for Internet website purposes.
[18]
In regard
to the non-distinctiveness ground of opposition, the Registrar rejected it for
lack of supporting evidence: “[i]n order to meet its initial burden with
respect to these grounds, the Opponent need only show that its marks were
“known to some extent at least” as of August 22, 2005. […] I find that the
Opponent has not met its initial burden and I therefore dismiss these grounds” (Decision,
pp. 9-10).
The
additional evidence
[19]
In this
appeal, the Applicant has submitted two lengthy affidavits for the purpose of
correcting the evidentiary deficiencies of its opposition noted by the Registrar
in the Decision.
[20]
One of the
affidavits is from a trade-mark associate of the trade-marks agent for the
Applicant, Marlye Monfiston, which explains an Internet search carried out on
December 3, 2008 from the Canadian online bookseller www.indigo-chapters.ca
for books offered for sale online and which contain the words “best of gourmet”
in their title. The results show that a variety of editions of the “Best of
Gourmet” book line of the Applicant were indeed being offered for sale over the
online book sales services of Indigo-Chapters on the search date.
[21]
The other
affidavit dated December 17, 2008 is from the New York City based Associate Publisher/Marketing of
Gourmet magazine, Susan Bornstein (the “Bornstein Affidavit”) and it contains
relevant information which was not before the Registrar. It runs for hundreds
of pages with its schedules. Though Ms. Bornstein appears to be occupying her
current position only since 2008, she has held a similar position in a related
Condé Nast magazine from 2000 to 2008. As a senior officer of Gourmet magazine
having access to its corporate records, I am of the view that she can validly
provide information concerning the records of that magazine and other relevant
information on past distribution and sales.
[22]
In this
Bornstein Affidavit, we learn that Gourmet magazine is published on a monthly
basis by the Applicant through its unincorporated division Condé Nast
Publications, and that this magazine is devoted to entertaining, food,
beverages, lifestyle, travel, restaurants and epicurean product reviews. The
Bornstein Affidavit states that Gourmet magazine has been distributed
continuously in Canada and the United
States since as
early as 1957.
[23]
The
Bornstein Affidavit contains important information concerning the circulation
of Gourmet magazine. The Bornstein Affidavit claims an average circulation well
in excess of 700,000 copies per month in the United States of America, and in excess of 20,000
copies per month in Canada. To support this claim, the
Bornstein Affidavit includes as Exhibit D the publisher’s unaudited statements
of circulation for the magazine disclosed to the Audit Bureau of Circulations
from June 2002 to June 2008. These unaudited statements tend to confirm these
circulation claims for the concerned period, including well over 20,000 copies
circulated per month in Canada, with sales in every
province.
[24]
The
Bornstein Affidavit also notes that the Applicant has published or has licensed
to publish the “Best of Gourmet” cookbook series from 1985 to 2007, as well as
other cookbooks bearing the mark “GOURMET” in their titles, such as the
“Gourmet Cookbook” published since the 1950’s.
[25]
The
Bornstein Affidavit states that by September 2007, 378,000 copies of the “Gourmet
Cookbook” were sold in North America whereas over 10,000 units and 30,000 units
of the “Best of Gourmet” cookbooks were sold in 2006 and 2007 respectively.
Sales figures relating to Canada alone are not set out in the
affidavit.
[26]
The
Bornstein Affidavit also provides information concerning various Internet
websites of the Applicant bearing the names www.gourmet.com and www.gourmetscoop.com
in which various articles and information pertaining to food and related
matters are posted. These websites are a vehicle for the Applicant to sell
advertisement placements to third parties.
[27]
The
Bornstein Affidavit also states that the Applicant promotes its magazine
through various means, including promotional and merchandizing events in
association with the GOURMET trade-mark, such as interactive seminars, fine
wine and cocktails tastings, chef demonstrations, etc. and it spends annually
on average in excess of two million dollars for such purposes. However, the
breakdown of this promotional spending between Canada and the USA is not set out in the
affidavit, leading to the inference that the promotional spending in Canada is at best proportional to
the Canadian circulation numbers for its magazine.
[28]
In this
case, substantial new evidence has been submitted to this Court by the
Applicant, evidence which negates many of the findings of the Registrar.
Indeed, the Applicant has presented convincing evidence that it has been using
its trade-mark GOURMET for many decades in Canada, and that this use has been extensive
throughout Canada. The new evidence shows
conclusively that its trade-mark GOURMET has been exposed in a significant way
to Canadian consumers for a long time, thus acquiring a certain reputation in Canada.
[29]
The Respondent
in this appeal did not challenge the new evidence nor did it make submissions
in this appeal. However, in a letter dated October 20, 2009 the Respondent
informed the Court that Gourmet magazine was ceasing publication after its
November 2009 issue. Since the Respondent did not copy the Applicant on this
letter, a copy of this was forwarded by the Court to the Applicant. At the
hearing of this appeal held in Toronto on October 28, 2009, the
Applicant stated that it was leaving it to the Court to decide on the
admissibility of the letter; furthermore counsel for the Applicant informed the
Court that his client did not deny the information contained in this letter.
[30]
Since
this letter from the Respondent was not submitted in affidavit form, there are
serious issues as to its admissibility as evidence in these proceedings. These
issues are compounded by the fact that the Respondent has not participated in
this appeal save by sending the aforementioned letter a few days prior to the
hearing without even forwarding it to the Applicant.
Position of the Parties
[31]
The
Applicant’s basic argument is that in light of the new evidence presented to
this Court, a reasonable likelihood of confusion exists between the mark WISE
GOURMET and its own registered trade-mark for GOURMET. It is the Respondent
which has the legal burden to establish that there is no reasonable likelihood
of confusion, but it has nevertheless decided not to challenge the new evidence
submitted by the Applicant. In light of the burden of proof which is on the
Respondent and the reasonable likelihood of confusion, the Applicant concludes
that the Respondent is not entitled to the registration of WISE GOURMET as a
trade-mark.
[32]
As noted
above, the Respondent did not participate in this appeal. The Respondent is
nevertheless entitled to have its position considered in appeal: Gill &
Jolliffe, Fox on Canadian Law of Trade-Marks and Unfair Competition,
Fourth Edition, at para. 6.8 (d.) at page 6-34.1 of the loose-leaf edition; Canadian
Schenley Distilleries Ltd. v. Canada’s Manitoba Distillery Ltd. (1975), 25 C.P.R. (2d) 1 at
pp. 4-5. I have therefore reviewed the material submitted by the Respondent
before the Registrar in the opposition proceedings, including the affidavits
and written arguments submitted on its behalf.
[33]
The
Respondent basically argued before the Registrar that there is no inherent
distinctiveness in the Applicant’s trade-mark GOURMET, which is a common word
in widespread use. It is further argued that the use of the word WISE in
association with GOURMET minimizes any resemblance between the two marks such
that there can be no likelihood of confusion between them.
Standard of review
[34]
In its recent
decision of Dunsmuir v. New
Brunswick, [2008] 1 S.C.R. 190 at para. 62, the
Supreme Court of Canada established a two-step process for determining
the standard of review: “[f]irst, courts ascertain whether the jurisprudence
has already determined in a satisfactory manner the degree of deference to be
accorded with regard to a particular category of question. Second, where
the first inquiry proves unfruitful, courts must proceed to an analysis of the
factors making it possible to identify the proper standard of review”. It is
therefore appropriate to first ascertain what the case law has determined as
the appropriate standard of review for appeals under section 56 of the Act.
[35]
Pre-Dunsmuir,
the applicable standard of review for appeals of this type, where the principal
issue at stake is a likelihood of confusion, had been extensively canvassed by
the Supreme Court of Canada in Mattel, Inc. v. 3894207 Canada Inc.,
[2006] 1 S.C.R. 772, (2006) 49 C.P.R. (4th) 321 [Mattel]. In
that decision, where new evidence had been adduced before the Federal Court but
not found relevant, the applicable standard of review was determined to be
reasonableness simpliciter (at para. 40):
Given,
in particular, the expertise of the Board, and the “weighing up” nature of the
mandate imposed by s. 6 of the Act, I am of the view that despite the
grant of a full right of appeal the appropriate standard of review is
reasonableness. The Board’s discretion does not command the high
deference due, for example, to the exercise by a Minister of a discretion,
where the standard typically is patent unreasonableness (e.g. C.U.P.E.
v. Ontario (Minister of Labour), [2003] 1 S.C.R. 539, 2003 SCC 29, at para.
157), nor should the Board be held to a standard of correctness, as it would be
on the determination of an extricable question of law of general importance (Chieu
v. Canada (Minister of Citizenship and Immigration), [2002] 1 S.C.R. 84,
2002 SCC 3, at para. 26). The intermediate standard
(reasonableness) means, as Iacobucci J. pointed out in Ryan, at
para. 46, that “[a] court will often be forced to accept that a decision is
reasonable even if it is unlikely that the court would have reasoned or decided
as the tribunal did.” The question is whether the Board’s decision is
supported by reasons that can withstand “a somewhat probing” examination and is
not “clearly wrong”: Southam, at paras. 56 and 60.
[36]
Though the
question was not directly at issue in the Mattel decision, Justice
Binnie noted that a different standard of review would apply in the event fresh
and relevant evidence was adduced in appeal before the Federal Court (at para. 35
in part):
Where
fresh evidence is admitted, it may, depending on its nature, put quite a
different light on the record that was before the Board, and thus require the
applications judge to proceed more by way of a fresh hearing on an extended
record than a simple appeal (Philip Morris Inc. v. Imperial Tobacco Ltd.
(No. 1) (1987), 17 C.P.R. (3d) 289 (F.C.A.)). Section 56 suggests a
legislative intent that there be a full reconsideration not only of legal
points but also of issues of fact and mixed fact and law, including the
likelihood of confusion. See generally Molson Breweries v. John Labatt
Ltd., [2000] 3 F.C. 145 (C.A.), at paras. 46-51; Novopharm Ltd. v. Bayer
Inc. (2000), 9 C.P.R. (4th) 304 (F.C.A.), at para. 4, and Garbo
Creations Inc. v. Harriet Brown & Co. (1999), 3 C.P.R. (4th) 224
(F.C.T.D.).
[37]
In the
decision of the Federal Court of Appeal Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (C.A.), (2000) 5
C.P.R. (4th) 180, [2000] F.C.J. No. 159 (QL) cited approvingly by
Justice Binnie in Mattel, Justice Rothstein (as he then was) stated the
following (at para. 46 and 51):
Because of the opportunity to adduce additional evidence, section
56 is not a customary appeal provision in which an appellate court decides the
appeal on the basis of the record before the court whose decision is being
appealed. A customary appeal is not precluded if no additional evidence is
adduced, but it is not restricted in that manner. Nor is the appeal a
"trial de novo" in the strict sense of that term. The normal use of
that term is in reference to a trial in which an entirely new record is
created, as if there had been no trial in the first instance. Indeed, in a
trial de novo, the case is to be decided only on the new record and without
regard to the evidence adduced in prior proceedings.
[…]
I think the approach in Benson & Hedges v. St. Regis and in
McDonald 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. [emphasis added]
[38]
In Maison Cousin (1980) Inc.
v. Cousins Submarines Inc., 2006 FCA 409, (2006) 60 C.P.R. (4th)
369, [2006] F.C.J. No. 1968 (QL) [Maison Cousin], which was decided
after the Mattel decision, the Federal Court of Appeal called for a de
novo review in appeal where substantial new relevant evidence is adduced
before the Federal Court (at para. 4 and 7):
The appellant appealed this decision before the Federal Court.
Alerted by the comments of the Registrar's delegate about the flimsy evidence
it had in support of its opposition, the appellant invoked its right under
subsection 56(5) to supplement the evidence on record. It submitted new
evidence. The judge analyzed this new evidence on the basis of the standard of
review. He concluded that it was sufficiently significant and probative and
that he had to apply the standard of correctness. In doing so, the judge unduly
restricted his discretion to intervene, in our view, because having noted the
significance and probative value of the new evidence, he was no longer called
on to review the decision of the registrar's delegate, but rather to decide the
issue on the merits based on the evidence before him.
[…]
The judge deciding the issue de novo
may intervene without having to identify any error committed by the delegate
and is not obliged to defer to the delegate's decision. The judge must decide
the issue on the basis of the evidence before him or her and the applicable
legal principles.
[39]
The
approach in Maison Cousin has subsequently been followed in many
decisions: Shell Canada Ltd. v. P.T. Sari Incofood Corp., 2008 FCA 279, (2008)
68 C.P.R. (4th) 390, [2008] F.C.J. No. 1320 at para. 22; Canadian Tire Corp. v. Accessoires
d’autos Nordiques Inc., 2007 FCA 367, (2007) 62 C.P.R, (4th) 436 at para.
30; Curb v.
Smart & Biggar,
2009 FC 47, (2009) 72 C.P.R. (4th) 176, [2009] F.C.J. No. 85 (QL) at
para. 7; Vêtement Multi-Wear Inc. v. Riches, Mckenzie & Herbert LLP,
2008 FC 1237, (2008) 73 C.P.R. (4th) 3, [2008] F.C.J. No. 1602 at
paras. 12 to 16; Guido Berlucchi & C. S.r.l. v. Brouilette Kosie Prince,
2007 FC 245, (2007) 56 C.P.R. (4th) 401, [2007] F.C.J. No. 319 at
para. 24.
[40]
This
review of the case law has
proven fruitful to determine the standard of review, and consequently I need
not proceed to a further standard of review analysis.
[41]
In this
case, the findings of the Registrar concerning the issue of confusion have been
largely negated in light of the new relevant, and in this case significant,
evidence submitted by the Applicant. Though there is nothing in the record
suggesting that the findings of the Registrar were inappropriate on the issue
of confusion insofar as only the evidence before the Registrar is taken into
account, the depth and significance of the new evidence submitted by the
Applicant is such that a new determination on a de novo or fresh basis
is required.
[42]
Indeed, the
grounds of opposition based on section 16 of the Act were dismissed by the
Registrar on the basis the Applicant had failed to establish use of its mark
GOURMET in Canada prior to the filing date of the application by the Respondent
for WISE GOURMET and prior to the Respondent’s claimed date of first use of
WISE GOURMET (page 5 of the Decision). This finding can no longer be supported
in light of the new evidence submitted.
[43]
As
concerns the core test for confusion taking into account the factors specifically
enumerated in the Act, the Registrar dismissed the grounds of opposition
principally on the grounds that “…the Opponent has not provided any evidence
concerning its use or promotion of GOURMET” (Decision, p. 6), “…there is no
evidence of the extent to which Canadians may have been exposed to the
Opponent’s mark” (Ibid), “…such use [of the opponent’s mark] is assumed
to be only de minimus” (Ibid), “[v]ery little information has
been provided concerning the parties channels of trade…” (Ibid), ‘[t]he
Opponent has not evidenced that it has acquired a significant reputation in its
mark…” (Decision, p. 8), “[t]he Opponent did not establish that it has acquired
any substantial reputation in association with GOURMET with respect to these
registered services [web services]” (Decision, p. 9), etc. These findings can
no longer be supported in light of the new evidence submitted.
[44]
Consequently,
I will proceed with this appeal on a de novo or fresh basis on the issues
raised by this appeal, particularly the issue of confusion, being understood
that the evidence already submitted before the Registrar is also part of the
record before me and is to be taken into account.
[45]
Though I
will be proceeding on a de novo or fresh basis, the Registrar’s findings
on those issues which remain unaffected by the new evidence presented on appeal
still deserve some deference, and I will be referring to such findings where
appropriate.
The test for confusion
[46]
Paragraph
12(1)(d) and subsections 16(1) and (3) of the Act state that a trade-mark (or,
in the case of subsection 16(3) of the Act, a proposed trade-mark) may be
registered if it is not confusing with a registered trade-mark or with a
trade-mark that has been previously used in Canada or made known in Canada by
any other person. The statutory test for confusion is set out in subsections
6(2) and (5) of the Act:
|
(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 trademarks 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.
|
(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.
|
[47]
In Mattel,
supra at para. 54, the Supreme Court of Canada noted that all
surrounding circumstances must be taken into account. The enumerated factors in
subsection 6(5) are not exhaustive and different circumstances will be given
different weight in a context specific assessment, see: Gainers Inc. v. Marchildon (1996), 66
C.P.R. (3d) 308 (F.C.T.D.) as cited in Mattel,
ibid.
Moreover, the Supreme Court of Canada also noted that the onus is on the Applicant
for the trade-mark registration (here the Respondent) to show on a balance of
probabilities that there is no likelihood of confusion, Mattel, supra
at para. 54.
[48]
What must
be considered is the “first impression in the mind of a casual consumer
somewhat in a hurry” who has an “imperfect recollection” of another trade-mark,
see: Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, [2006] 1 S.C.R.
824, (2006) 49 C.P.R. (4th) 401 at para. 20. The perspective from
which the likelihood of confusion is to be measured is that of a
mythical consumer dubbed by the Supreme Court of Canada as the “casual consumer
somewhat in a hurry” and extensively described in Mattel, supra at paras.
56 to 58. The principal question is whether the “ordinary casual consumers
somewhat in a hurry are likely to be deceived about the origin of the wares or
services” (Mattel, supra at para. 58).
Application of the statutory test
(1)
The
inherent distinctiveness of the trade-marks and the extent to which they have
become known
[49]
I agree
with the Registrar that neither the GOURMET trade-mark nor the Respondent’s mark
WISE GOURMET is inherently distinctive. Both refer to the commonly used word
“gourmet” that is defined as follows in the second edition of the Canadian
Oxford Dictionary: “noun a connoisseur of good food, having a discerning
palate. attributive adjective 1 (of food) of very high quality, suitable
for refined tastes. 2 of, relating to, or suitable for a gourmet”. The use of
the word “gourmet” is relatively common in relation to food products, and as
such neither mark shows any particular originality or imagination which would
provide it with some inherent distinctiveness.
[50]
I also
agree with the Registrar that there is insufficient evidence of the use and
promotion of the Respondent’s mark WISE GOURMET to conclude that it has become
known to any significant extent.
[51]
Indeed the
principal evidence of use submitted by the Respondent before the Registrar
consisted of an affidavit dated April 6, 2006 from Tom Abols who carried out
various Internet searches on behalf of the Respondent’s representatives (the
“Abols Affidavit”). This affidavit refers to a search on the Internet website www.wanttoknownow.com
indicating reference to “Wise Gourmet” in relation to cooking classes and
educational tours. The Abols Affidavit also notes an Internet search on the Internet
website of Western Web published by the students’ council of the University of Western Ontario on which “Wise Gourmet” is
referred to in relation to a speaking engagement relating to nutrition. Though
this evidence does demonstrate some use of the mark WISE GOURMET, it is far
from demonstrating that this mark has become known to any significant extent.
[52]
Concerning
the Applicant’s trade-mark GOURMET, however, the new evidence submitted in this
appeal and described above shows conclusively that it has been used throughout Canada for many decades. The new
evidence also shows conclusively that the trade-mark GOURMET has been exposed
in a significant way to Canadian consumers for a long time, thus acquiring a
certain reputation in Canada. I do not however find that
the Applicant’s trade-mark GOURMET is “famous” since it does not meet the
immediate trade-mark recognition required to make out such a claim.
[53]
Though the
Applicant is not entitled to fence in the use of the word “gourmet” or
appropriate it over a wide area, see: Mattel, supra at para. 75, I accept
that through use over time GOURMET has acquired a secondary meaning associated
with the Applicant’s magazine, and on that account has achieved some
distinctiveness in the magazine publishing world as well as some limited
recognition in Canada associated with the “Best of
Gourmet” cookbooks and web information services related to food.
(2) The length of time
the trade-marks have been in use
[54]
The new
evidence submitted in appeal clearly shows that the Applicant’s trade-mark
GOURMET has been widely used in Canada
for many decades in relation to the magazine and, for a lesser period of time
in relation to the “Best of Gourmet” cookbook series.
[55]
On the
other hand, the Respondent’s mark WISE GOURMET has only been in use for a few
years. Indeed the Respondent’s “Revised application for the registration of a
trade-mark” dated October 26, 2004 asserts use in Canada in association with arranging and
conducting cooking classes only since January 2002. The written argument made
before the Registrar on behalf of the Respondent dated February 7, 2006 asserts
at para. 15 use “in association with at least certain of the Wares and Services
since at least February 2006.”
(3) The nature of the wares, services
or business
[56]
Even with a
limited evidentiary record, the Registrar found that the two parties’ wares and
services were related and overlapped in some respects. The new evidence
submitted in appeal greatly reinforces this conclusion.
[57]
The
Respondent declares in its “Revised application for the registration of a trade-mark”
dated October 26, 2004 that it has used the mark WISE GOURMET in association
with “arranging and conducting cooking classes”, and that it intends to use it
in association with a large list of food products and beverages as well as in
association with “printed publications, namely cookbooks, newsletters,
nutrition guides, food recipes, periodicals relating to nutrition and foods”.
The Respondent also declares its intention to use this mark in respect to
various services such as “television and radio programming services; providing
access to a website featuring health and gourmet foods, recipes and nutritional
information; retail store services specializing in health and gourmet foods;
arranging and conducting travel tours”.
[58]
In its
trade-mark registrations 392,189 and 277,151, the Applicant’s declared use of
its trade-mark GOURMET is stated to be “[m]agazines”.
[59]
In its
trade-mark registration 576,562, the Applicant declared use related to “[o]n
line magazines and publications distributed in electronic format via the internet;
operating an internet website which allows consumers to subscribe to the
consumer magazines and allows advertisers to promote their goods and services
via the internet”. The Registrar rejected on technical grounds the Applicant’s
paragraph 12(1)(d) ground of opposition based on its trade-mark registration
576,562. I find no reason to disturb the Registrar’s finding in regard to this
technical issue. Consequently, no consideration of trade-mark 576,562 has been taken
into account in this appeal in regard to paragraph 12(1)(d) grounds of
opposition.
[60]
In any
event, the Bornstein affidavit contains sufficient factual elements
demonstrating that the Applicant has used as a trade-mark GOURMET in relation
to online magazines and publications via the Internet and has operated an Internet
website which allows consumers to subscribe to the consumer magazines and
allows advertisers to promote their goods and services via the Internet. The
Bornstein affidavit also shows that this Internet and web use precedes that of
the Respondent’s use of its mark WISE GOURMET.
[61]
In the
Bornstein Affidavit, the use of the GOURMET trade-mark is also stated to extend
to other wares and services such as cookbooks and recipe books (paras. 3, 10
and 11 of the affidavit), and merchandizing events such as interactive
seminars, fine wine and cocktails tastings, cooking, chef demonstrations and
book signings, exclusive dinners, private cooking classes, wine and culinary
week-ends (para. 17 of the affidavit), as well as information and educational
services in the field of nutrition, nutritional advice, healthy eating and
lifestyle (para. 19 of the affidavit).
[62]
There is
therefore a broad overlap in the wares and services which both marks seek to
identify. Both seek to market products and services related to food. Though the
wares and services are not all identical, they are broadly comparable and
basically seek to service the same markets and consumers.
(4) The nature of the trade
[63]
The
Respondent has provided little information on its channels of trade, but
indicates that publications and periodicals, the Internet and radio and
television are either used or contemplated to be used.
[64]
The
Applicant’s channels of trade are clearly set out in the Bornstein Affidavit
and include the magazine, publications, the Internet and television.
[65]
In the
present case, not only are the wares and services broadly overlapping, but the
channels of trade are largely similar.
(5) The degree of resemblance
between the trade-marks in appearance or sound or in the ideas suggested by
them
[66]
The
Registrar found that there was a fair degree of resemblance between both
trade-marks since the Respondent had incorporated the Applicant’s GOURMET
trade-mark in its entirety into its WISE GOURMET mark. However, on the basis of
the principle that the first portion of a trade-mark is the most relevant for
the purposes of distinction, the Registrar found that the word WISE does serve
to distinguish both trade-marks in appearance, sound and idea suggested.
[67]
Though it
is true that the word “wise” does serve to distinguish both marks to some
degree in appearance and sound, the idea suggested by both marks is nevertheless
similar. The determinative word in the mark WISE GOURMET is the noun “gourmet” rather
than its adjective “wise”. Both marks consequently do resemble each other, and
could be difficult to distinguish in appearance to a casual observer,
particularly if the get-up of WISE GOURMET is made such as to emphasise the
latter word.
(6) Other surrounding circumstances
[68]
The
Respondent had presented evidence before the Registrar concerning the existence
of one other “gourmet” mark on the trade-marks register, namely the trade-mark
THE SURREAL GOURMET registered in relation to aprons and T-shirts as well as
cookbooks, calendars and posters and for entertainment services in the nature
of ongoing television programs in the field of cooking and culinary arts. The
Registrar found this insufficient to enable to make any meaningful inference
about the state of the marketplace (Decision, p. 7).
[69]
In
addition, through the Abols Affidavit, the Respondent provided evidence of
hundreds of books offered for sale by the online bookseller www.indigo-chapters.ca
which contain the word “gourmet” in their titles, including “Gourmet Barbecue”,
“Vegetarian Gourmet Cookery” “Gourmet Ireland”,
“Gourmet Sweets”, “The Natural Gourmet”, etc. This evidence certainly tends to
demonstrate both that the word “gourmet” is commonly used in the cookbook publishing
business, and that it is in common use.
[70]
As noted
above, in a letter submitted a few days before the hearing, the Respondent
represented that the Applicant was ceasing to publish its Gourmet magazine
after its November 2009 edition, thus consequently ceasing to use its
trade-mark GOURMET in association with the wares or services for which it is
registered in Canada, namely for magazines. I have decided not to accept into
evidence this letter and the fact that it attempts to place before the Court.
However, in the event I am found to have erred in this regard, I will proceed
to explain why this fact would not affect the outcome of this case even if it
was deemed part of the evidence.
[71]
In its
recently released decision of Masterpiece Inc. v. Alavida Lifestyles Inc.,
2009 FCA 290, [2009] F.C.J. No. 1263 (QL), the Federal Court of Appeal has provided
new guidance concerning the temporal parameters within which the confusion
analysis is to be assessed. In that decision, the temporal parameters were stated
to be as follows: a) the material date for determining confusion with an
existing mark under paragraph 12(1)(d) of the Act is the date of the
disposition of the matter (Ibid. at para. 12); b) the material date for
assessing confusion in actions for infringement under section 20 of the Act,
though normally the time of the hearing, may vary depending on the specific
facts and pleadings of each case (Ibid. at para. 13); c) the relevant
date on which to assess the likelihood of confusion under paragraph 16(1)(a) of
the Act is the Respondent’s first use of the trade-mark (Ibid. at para.
14); and, d) the relevant date on which to assess the likelihood of confusion
under subsection 16(3) of the Act is the date of the filing of the application
for registration (Ibid. at paras. 15 to 18).
[72]
Consequently,
the end of publication of GOURMET magazine would not be a relevant fact to take
into account for the purposes of these proceedings. Indeed, for the purposes of
paragraph 12(1)(d) of the Act, the relevant date would be either the date of
the disposition of the matter by the Registrar or by this Court, though some
controversy still exists as to this latter date of disposition by this Court, see:
Park Avenue Furniture Corp. v. Wickes-Simmons Bedding Ltd., (FCA) (1991)
37 C.P.R. (3d) 413, [1991] F.C.J. No. 546 (QL) and Gill & Jolliffe, Fox
on Canadian Law of Trade-Marks and Unfair Competition, Fourth Edition, at para.
6.7 (d.1) found at pages 6-20.7 and 6-20.8 of the loose-leaf edition. In any
event, at either date Gourmet magazine was in circulation in Canada.
[73]
For the
purposes of paragraph 16(1)(a) or of subsection 16(3) of the Act, the material
dates of the confusion analysis are the date of first use by the Applicant for
registration, or as the case may be, the date of filing of the registration
application. At both these dates, the new evidence submitted by the Applicant
conclusively shows that GOURMET magazine was widely circulated in Canada.
Conclusion
[74]
It is incumbent on
the Respondent to
show on a balance of probabilities that there is no likelihood of confusion.
The Respondent was successful in this regard before the Registrar.
[75]
However,
the new relevant and substantial evidence submitted by the Applicant has
resulted in a reconsideration of the question of confusion between GOURMET and
WISE GOURMET on a de novo or fresh basis. The Respondent has chosen not
to challenge this new evidence or to participate in this appeal. Since the
Respondent bears the onus to show that there is no likelihood of confusion in
this case, it has failed to do so in light of the new evidence submitted.
[76]
Though
the GOURMET trade-mark is not inherently distinctive, its use over time by the
Applicant has allowed it to gain a certain reputation in Canada related to its
magazine and associated wares and services. Though the word “gourmet” is in
common usage in regard to food and related products and services, the Applicant
has demonstrated that its trade-mark GOURMET has become well known in Canada through its
magazine. Furthermore, the GOURMET trade-mark has been in use for a long time
in Canada while the
Respondent’s mark is a new entrant in the market. Taking into account that the
nature of the wares and services and that the trade related to both marks overlap
to a considerable degree, the fact that there is a fair degree of resemblance
between both marks, and the absence of any evidence or submissions by the
Respondent to challenge the new evidence submitted in this appeal by the
Applicant, I find on a balance of probabilities that there is a likelihood of
confusion between the Respondent’s mark WISE GOURMET and the registered
trade-mark GOURMET.
[77]
As
a consequence thereof, the appeal shall be granted.
[78]
In
light of the particular circumstances, this is not a case for costs.
JUDGMENT
THIS COURT
ORDERS AND ADJUDGES that:
1. The appeal is granted;
2. Application no. 1,202,570
under the Trade-marks Act for the trade-mark WISE GOURMET is refused.
“Robert
Mainville”
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