Dockets: T-1640-10
T-1641-10
Citation: 2011 FC 1397
BETWEEN:
|
|
MÖVENPICK HOLDING AG
|
|
|
|
Applicant
|
|
and
|
|
|
EXXON MOBIL CORPORATION AND ATTORNEY
GENERAL OF CANADA (REGISTRAR OF TRADE-MARKS)
|
|
|
|
Respondents
|
|
|
|
|
REASONS FOR JUDGMENTS
HARRINGTON J.
[1] A customer
pulls into an Esso gas station to fill up. While there, he or she takes
advantage of the adjacent Marché Express to run in and buy a loaf of
bread, a litre of milk, baby diapers, the newspaper and a hot coffee and muffin
to go. Is it likely that such a person would think that the same people were
behind both the Marché Express convenience stores and the Marché restaurants?
[2] This is but
one of three legal points being pursued by Mövenpick in this appeal from a
decision on behalf of the Registrar of Trade-marks dismissing its opposition to
Exxon Mobil’s application to register “Marché Express” word and design
for use in association with “convenience store and fast-food services offered
at gasoline stations.”
[3] The member of
the Trade-marks Opposition Board of the Canadian Intellectual Property Office
who was designated by the Registrar to hear the case (hereinafter the “Registrar”):
a. decided that
the marks were not clearly descriptive of “convenience stores” or “dépanneurs”.
b. decided that
the marks were not confusing with the Mövenpick’s “Marché” trade-mark for use
in association with the operation of restaurants; and
c. did not
disturb Exxon Mobil’s submission that the marks had been in use from
19 July 2001.
[4] Both parties
have taken advantage of section 56 of the Trade-marks Act to adduce additional
evidence which was not before the Registrar.
ISSUES
[5] This appeal
gives rise to the following issues:
a. the standard
of review;
b. the
reasonableness of the Registrar’s decision in light of the evidence before her;
c. the
assessment of new evidence; and
d. furthermore,
as the evidence is not exhaustive, the burden of proof permeates throughout .
[6] Mövenpick
need only succeed on one of its three grounds of appeal in order to have the
Registrar’s decisions set aside. Nothing turns on the application for the
design. It all turns on the word mark.
[7] As in any
case, there is an initial burden on the party who wishes to change the status
quo. The burden is on Exxon Mobil (hereinafter referred to as “Esso”, the
name under which their gasoline stations are branded) to persuade the Registrar
that it is entitled to have its trade-marks “Marché Express” word and design
registered. If it succeeds, and there is no opposition, the registration would follow
in the normal course. However, in the event of opposition, as here, if a prima
facie case has been made out, an evidential burden falls upon Mövenpick to adduce
sufficient evidence to rebut Esso’s case, i.e. to persuade the Registrar
that its grounds of opposition are sustainable. Once all the evidence is in, if
the Registrar is unable to reach a conclusion, the application must be rejected
(John Labatt Ltd v Molson Co (1990), 30 CPR (3d) 293, 36 FTR 70 (FC),
aff'd (1992) 42 CPR (3d) 495, 144 NR 318 (FCA)).
[8] In the
absence of new evidence, the standard of review on an appeal from a decision of
a Registrar is reasonableness (Mattel, Inc v 3894207 Canada Inc, 2006
SCC 22, [2006] 1 S.C.R. 772 at paragraphs 36 and 37; and Dunsmuir v New
Brunswick, 2008 SCC 9, [2008] 1 S.C.R. 190).
[9] As regards
new evidence, as stated by Mr. Justice Binnie in Mattel, above, at
paragraph 37:
37 […]
Reception of new evidence, of course, might (depending on its content)
undermine the factual substratum of the Board’s decision and thus rob the
decision of the value of the Board’s expertise. However, the power of the
applications judge to receive and consider fresh evidence does not, in and of
itself, eliminate the Board’s expertise as a relevant consideration: Lamb
v. Canadian Reserve Oil & Gas Ltd., [1977] 1 S.C.R. 517, at pp. 527-28.
[10]
The
Court must determine whether the new evidence is material, or merely shores up
the decision under appeal. If material, the Registrar’s decision must be
reviewed in light of all the evidence, both new and old, and the Court must
come to its own conclusion. In Shell Canada Ltd v P.T.
Sari Incofood Corp, 2008 FCA 279, 380 NR 317, Mr. Justice Marc Noël explained
it as follows:
[22] With
respect to the first issue i.e., the standard of review, the question which the
Federal Court Judge had to address is whether the new evidence adduced before
him would have materially affected the Registrar’s findings of fact or the
exercise of her discretion (John Labatt Ltd., supra). If so, the
task of the Federal Court Judge was to reassess the decision of the Registrar
on the basis of the whole of the evidence and draw his own conclusion (Canadian
Tire Corp. v. Accessoires d'autos Nordiques Inc., 2007 FCA 367, 62 C.P.R.
(4th) 436 (at para. 30)) […]
John Labatt Ltd. refers to Molson Breweries v John Labatt
Ltd, [2000] 3 FC 145, 5 CPR (4th) 180 (FCA).
[11]
The
points of appeal shall be considered in the sequence in which they were argued,
both in the light of the evidence before the Registrar and the totality of
evidence now before me.
[12]
Esso’s
case, in brief, is that it has been operating convenience store and fast-food
services since July 2001 under the brand name “Marché Express”. Sixty-some stores
are operated in Quebec, and one in Ottawa. Elsewhere the brand
name “On the Run” is used. Although perhaps not as well-known as the Pink
Panther or Barbie Dolls (two cases which deal with famous trade-marks),
nevertheless through sales and advertising “Marché Express” is well-known.
[13]
Mövenpick’s
position is that “Marché Express” is descriptive of the service Esso offers, i.e.
“convenience stores” and so cannot be registered under the Trade-marks Act.
It is also confusing with its own well-known “Marché” trade-mark used in
association with the operation of restaurants. Finally the evidence offered by
Esso as to the date the trade-mark was first used is unsatisfactory.
TIMELINE
[14]
As
different issues relate to different dates, I consider a basic timeline to be
helpful:
a.
May
1992: the opening of the first Mövenpick “Marché” restaurant in Toronto;
b.
1
December 1994: filing date for registration of the “Marché” trade-mark; the
services offered being the operation of restaurants;
c.
12
July 1996: registration date of “Marché”;
d.
18
July 2001: the opening of the first “Marché Express” in St-Hubert, a Montréal
suburb;
e.
4
December 2001: Esso filed its application to register “Marché Express” word and
design, based on use in Canada since 19 July 2001;
f.
17
September 2003: advertisement of the application for opposition purposes in the
Trade-mark Journal, with the right to the exclusive use of the words
“Marché” and “Express” disclaimed separately apart from the trade-mark;
g.
16
November 2004: Mövenpick filed a statement of opposition; and
h.
3
August 2010: the Registrar’s decision dismissing the opposition.
[15]
To
turn now to the three grounds of opposition pursued in this appeal.
CLEARLY DESCRIPTIVE
[16]
A
trade-mark must not clearly describe the character or quality of the services
in which it is or will be used. For instance, one could not register as
stand-alone trade-marks, “restaurant”, “convenience store” or “dépanneur”, as
those are the very services being offered by traders in the marketplace.
[17]
Section
12(1)(b) of the Act provides that a trade-mark is registrable if it is not:
|
(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;
|
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;
|
[18]
The
Registrar held, quite correctly, that the date against which to assess whether
“Marché Express” was clearly descriptive of “convenience stores” was the date
on which the application was filed, 4 December 2001 (Fiesta Barbeques Ltd v
General Housewares Corp, 2003 FC 1021, 28 CPR (4th) 60).
[19]
She
had a great deal of evidence before her of widespread use of the word “Marché”
in association with convenience stores, or as most would say in Quebec,
“dépanneurs”. Some of these marks were registered, some were not. Registrations
also covered grocery stores, retail food stores and restaurant and catering
services.
[20]
The
Registrar was of the view that the proposed mark could not be said to be
clearly descriptive in the English language of convenience stores. Mövenpick
focused more on French definitions. One of the definitions of “marché” in Le
Petit Robert was “[l]ieu public de vente de biens et de services”, while
“express” was defined as “qui assure un déplacement ou un service rapide.” The evidence before her
established that the word “marché” was used by many other traders to describe
“convenience stores” but that the combined words did not have a precise meaning
with respect to the character of convenience store services. There was no
evidence of use of “Marché Express” by other traders in the marketplace. She
was of the view that at most the mark suggested ease of purchasing items at a
convenience store which could save consumers some time. She concluded that the
mark was not clearly descriptive in either in the French or English language.
[21]
In
my opinion, the Registrar’s decision, on the evidence before her, was
reasonable.
CLEARLY DESCRIPTIVE –
NEW EVIDENCE
[22]
Both
sides provided further evidence of the use of the word “marché”. It certainly
has a wide use and is by no means limited to convenience stores. The word is
commonly used in association with grocery stores and, indeed, market places at
large, i.e. Marché Métro, Marché Loblaws Design, Marché Richelieu &
Dessin, Place de Marché (operation of doctors’ offices, restaurant and café
services, retail stores, grocery area within a retail store, etc.).
[23]
Both
sides produced affidavits from linguists, who were cross-examined. Their
evidence relates to both the clearly descriptive and confusion aspects of the
case. In my opinion, they add little to the debate and would not have persuaded
the Registrar to change her mind. In this case, where the objective is to assess
the meaning of the words “marché express” in the French language as perceived
on first impression by the reasonable everyday user of the services, expert
evidence which mainly consists of a discussion of rules of grammar, semantics
and linguistic constructions regarding the interpretation of these words is unnecessary
and not particularly helpful.
[24]
Mövenpick
also relies on the new evidence of Esso’s marketing expert, Alain D’Astous, who
in cross-examination on his affidavit applied Gestalt principles to interpret
the meaning of “Marché Express”. However, for the same reasons given with
respect to the evidence of the linguists, I do not consider this evidence
helpful.
[25]
However,
Mövenpick has unearthed some use of “Marché Express” by third parties and also
relies upon the results of a survey carried out on behalf of Esso by Robert
Klein, a market researcher. Esso produced this survey of over 2,000 consumers
in Toronto, Ottawa, and Montreal to demonstrate that
there was no likelihood of confusion. Mövenpick asserts that the survey is
faulty in that regard, but that it does establish that “Marché Express” is
clearly descriptive of the service.
[26]
Mövenpick
highlights the answers given by some of the survey participants who were of the
view that “Marché Express” referred to a “convenience store”, “dépanneur”, “to
me it is like the combination of restaurant and variety store”, “un genre de
dépanneur où on trouve les produits de base, lait, pain”, “c’est un endroit où
on peut se procurer rapidement les produits essentiels ou de dernières minutes,
etc. Of
particular interest was “à cause du nom ça dit tout”.
[27]
In
my view, this new evidence merely shores up the Registrar’s decision. She accepted
that the word “marché” was used by other traders to describe convenience stores.
However the mark applied for was not solely the word “marché” but the combined
words “Marché Express”, which is not a linguistic construction which flows naturally
in the French language. She was of the view that these combined words did not
have a precise meaning with respect to the character of convenience store
services. She concluded that the mark was merely suggestive of the result
liable to be produced as opposed to being intrinsically linked to the services
themselves.
[28]
This
finding was completely consistent with the case law. Section 12(1)(b) of the
Act prohibits a mark from being clearly descriptive. (My emphasis.) The word
“marché”, the French version of the English “market” has a broad meaning which,
when combined with “express”, is not limited to “convenience stores” or
“dépanneurs”.
[29]
The
word “clearly” has been held to mean “easy to understand, self-evident or plain”
and specifically preserves the registrability of suggestive trade-marks. The
Act only prohibits the registration of marks that are clearly
descriptive. Courts have consistently recognized that a trade-mark is
registrable even though it is suggestive or even descriptive. Courts also permit
the skilful allusion to a characteristic of the associated wares or services (Kelly
Gill & R. Scott Jolliffe, Fox on Canadian Law of Trade-marks and Unfair
Competition, 4th ed (Toronto: Carswell, 2002) at 5-26; Canadian Innovatch
Inc v Burnbrae Farms Ltd (2004), 31 CPR (4th) 151 at 158, [2003] TMOB No 79
(QL); GWG Ltd v Canada (Registrar of Trade Marks) (1981), 55 CPR (2d) 1
at 7, 9 ACWS (2d) 68 (FC); Thomas J Lipton Ltd v Salada Foods Ltd (No 3),
[1980] 1 FC 740 at 743, [1979] 3 ACWS 431).
[30]
Through
shear determination Mövenpick has found some possible use of “Marché Express”
by third parties. However, the dates are vague and the evidence is far from
satisfactory.
[31]
There
is, or was, a “Marché Express” dépanneur in St-Lambert, Quebec. That is the name used on a cash register
receipt. However the name on the storefront is “Alimentation Diana Dépanneur”.
There is also a “Dépanneur Marché Express 2000” although it is not clear
whether a store was ever operated under that name. Furthermore, there was a
“Marché Express Tabagie et Dépanneur Enr.” and finally “Au Vieux Duluth Marché
Express”. If “Marché Express” says it all, why use the word “dépanneur”? One
could just as easily have said “Au Vieux Duluth Dépanneur”.
[32]
Again,
I am of the view that there is nothing in this new evidence which would have
persuaded the Registrar to change her mind. If I am wrong, however, considering
the evidence as a whole, I am of the view that “Marché Express” is not and was
not at any time clearly descriptive of the services which were or which could
have been offered at Esso gasoline stations.
CONFUSION
[33]
The
goal of the Trade-marks Act is to prevent confusion in the marketplace. The
Supreme Court has reminded us that “the legal purpose of trade-marks continues
(in terms of s. 2 of the Trade-marks Act, R.S.C. 1985, c. T-13) to be
their use by the owner “to distinguish wares or services manufactured, sold,
leased, hired or performed by him from those manufactured, sold, leased, hired
or performed by others”. It is a guarantee of origin and inferentially, an
assurance to the consumer that the quality will be what he or she has come to
associate with a particular trade-mark…” (Mattel, above, per Binnie J.
at para 2).
[34]
Earlier
this year in Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27,
[2011] 2 S.C.R. 387, in speaking for the Court, Mr. Justice Rothstein said at
paragraph 1:
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. […]
[35]
In
this appeal, Mövenpick seeks a declaration that “Marché Express”, when used in
association “with fast-food services offered at gasoline stations” is confusing
with its registered trade-mark “Marché” for use in association with the
“operation of restaurant”. Note that it breaks down Esso’s application which is
for “convenience store and fast-food services offered at gasoline stations”,
not simply “fast-food services”. I shall return to this point.
[36]
Before
the Registrar, Mövenpick argued that “Marché Express” is confusing within the
meaning of both sections 12 and 16 of the Act. It is confusing within the
meaning of section 12(1)(d) with a registered trade-mark, and confusing within
section 16(1)(a) and (c) as with marks previously used in Canada by Mövenpick,
and confusing with a trade-name that had been previously used in Canada. However, the section
16 grounds were not seriously pursued in this appeal, and lack an evidentiary
basis in any event.
[37]
In Masterpiece,
Mr. Justice Rothstein described the confusion test as follows:
[40] At
the outset of this confusion analysis, it is useful to bear in mind the test
for confusion under the Trade-marks Act. In Veuve Clicquot
Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23, [2006] 1 S.C.R. 824, Binnie
J. restated the traditional approach, at para. 20, in the following words:
The test to be applied is a matter of first impression in the
mind of a casual consumer somewhat in a hurry who sees the [mark], at a time
when he or she has no more than an imperfect recollection of the [prior]
trade-marks, and does not pause to give the matter any detailed consideration
or scrutiny, nor to examine closely the similarities and differences between
the marks.
[38]
The
following paragraph in Masterpiece served as the basis for the opening
paragraph in this set of reasons:
[41] In
this case, the question is whether, as a matter of first impression, the
“casual consumer somewhat in a hurry” who sees the Alavida trade-mark, when
that consumer has no more than an imperfect recollection of any one of the
Masterpiece Inc. trade-marks or trade-name, would be likely to be confused;
that is, that this consumer would be likely to think that Alavida was the same
source of retirement residence services as Masterpiece Inc.
[39]
Some
caution must be exercised in drawing upon Veuve Clicquot, Mattel
and Masterpiece. The first two dealt with what can only be called
famous trade-marks. Neither Esso nor Mövenpick suggests that “Marché Express”
and “Marché” are as famous as Veuve Clicquot champagne or Barbie Dolls. In Masterpiece,
an expungement action, the confusion was between an unregistered trade-mark
which had been in use and a mark subsequently registered on the basis of
proposed use. In other words, the analysis was under section 16 of the Act, not
section 12.
[40]
Nevertheless,
the test for confusion, no matter the form of the dispute, is set out in
section 6 of the Act. It is important to bear in mind that the wares and
services need not be of the same general class.
[41]
The
key is section 6(5) which provides:
|
(5) In determining whether trade-marks or trade-names are
confusing, the court or the Registrar, as the case may be, shall have regard
to all the surrounding circumstances including
(a) the
inherent distinctiveness of the trade-marks or trade-names and the extent to
which they have become known;
(b) the
length of time the trade-marks or trade-names have been in use;
(c) the
nature of the wares, services or business;
(d) the
nature of the trade; and
(e) the
degree of resemblance between the trade-marks or trade-names in appearance or
sound or in the ideas suggested by them.
|
(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.
|
[42]
The
five sub-sections are not exhaustive of surrounding circumstances.
[43]
The
Registrar was obviously very cognizant of the test for confusion. She found
that Mövenpick’s mark possessed some measure of inherent distinctiveness when
used in association with “operation of restaurant”. She was of the view that
“Marché Express” possessed less inherent distinctiveness as “Marché” was highly
suggestive of the services. She went on, however, to say that the extent to
which the marks have become known may increase their distinctiveness. Based on
Esso’s evidence, including sales and advertising figures, she was satisfied
that “Marché Express” had become known to a certain extent.
[44]
On
the other hand, she found the evidence of Mövenpick’s corporate witness, Robert
Staub, to be vague and tenuous. There was ambiguity in that sales records
related to five Mövenpick trade-marks and it was impossible to determine which
were actually being used. She concluded that she was unable to determine the
extent to which the “Marché” mark had become known in Canada.
[45]
As
to the length of time each trade-mark had been in use, she was satisfied with
Esso’s evidence of use since 2001. Although Mövenpick’s registration was based
on use since May 1992, in the absence of evidence the mark was actually used,
the claim date of first registration did not give rise to an inference of
significant continuing use. She also made mention of the fact that Mövenpick’s
licensee had filed for creditor protection.
[46]
Turning
to sections 6(5) (c) and (d), the nature of the services or business, and the
nature of the trade, she relied on cases prior to Masterpiece, which
also held that it is the use proposed in the application and registration that
govern, and not actual use. She satisfied paragraph 56 of Masterpiece which
states that “[w]here a court is called upon to decide if there is a likelihood
of confusion between that registered trade-mark and any registered or
previously used unregistered trade-marks, the analysis should address the
proposed trade-mark for which the registration was ultimately obtained.”
However, as per paragraph 59 of Masterpiece, “[a]ctual use is not
irrelevant, but it should not be considered to the exclusion of potential uses
within the registration.”
[47]
The
evidence before her established that the “Marché Express” convenience stores at
gasoline stations sold a variety of items such as cigarettes, candy bars and
salty snacks, and offered fast-food items such as sandwiches, donuts, coffee
and soft drinks. She thought it unlikely that the parties’ trades would overlap
because “as I understand it, the Applicant’s services are not fast-food
restaurant services, but rather convenience stores at gasoline stations where
limited food items are sold.” However, Mövenpick’s statement of service did not
include any limitation and nothing would prevent it from operating fast-food
restaurants at gasoline stations. In such case, there could be a potential
overlap between Esso’s fast-food services and Mövenpick’s restaurant services.
[48]
With
respect to section 6(5)(e), she found there was a similarity in appearance in
that both shared the common component “Marché”, but that the word “Express”
differentiated the marks when sounded and in the ideas suggested by them.
[49]
A
surrounding circumstance she considered was the state of the Register and
evidence of examples of businesses using the word “Marché” alone or as a
component.
[50]
She
concluded that the term “Marché” was commonly used in the food trade industry
signifying that consumers were accustomed to seeing the word in the
marketplace. She said: “Where a trader uses as its trade-mark an ordinary word
which is common to the trade, it cannot expect to hold a wide ambit of
protection. In such cases relatively small differences between the marks will
suffice to distinguish them.” Therefore, she dismissed the opposition based on
section 12(1)(d) of the Act.
[51]
Again,
based on the evidence before her, I am of the view that the Registrar
understood the law and applied it to the facts of the case. The issue is to be
determined as of the date of her disposition (Tradition Fine Foods Ltd v
Groupe Tradition'l Inc, 2006 FC 858 at para 15, 51 CPR (4th) 342; Park
Avenue Furniture Corp v Wickes/Simmons Bedding Ltd (1991), 37 CPR
(3d) 413 at 422, 130 NR 223 (FCA)). The fact that “Marché” is commonly used in
the food industry causes customers to pay more attention to other features of
the mark (Kellogg Salada Canada Inc v Maximum Nutrition Ltd (1992), 43
CPR (3d) 349 at 359-60, 145 NR 131 (FCA)).
CONFUSION – NEW EVIDENCE
[52]
A
good deal of the new evidence was more of the same, i.e. review of
telephone directories, trade-mark registrations and in-the-field photographs of
various establishments. There is nothing in that evidence which would, in my
opinion, have affected the Registrar’s opinion. The same holds true with
respect to the linguists. They could hardly be considered casual consumers
somewhat in a hurry. Their evidence is not helpful to this Court and would not
have been helpful to the Registrar. Although Mövenpick relied on its own
marketing expert in its written submissions, it stated during the hearing that
it was not relying thereon as regards confusion.
[53]
Mövenpick
called Afzal Hamid, Mövenpick’s current controller, and previously the director
of internal audit at Mövenpick’s Canadian licensee, Richtree Markets Inc. He
dealt with the Registrar’s criticism of the evidence of Robert Staub by
attempting to break down financial records among the five Mövenpick trade-marks
which were before her, and by providing some evidence of the use of the
“Marché” trade-mark on a stand-alone basis, as opposed to other Mövenpick
trade-marks such as “Restaurant Marché”.
[54]
Had
this evidence been before her, the Registrar could not have said, as she did, “[i]t
follows that in the absence of supporting documentary evidence of use of the
Opponent’s mark, I am unable to determine the extent to which the Opponent’s
relevant “Marché” mark has become known in Canada.” To that extent, I must
assess the new evidence.
[55]
Esso
provided evidence from Ryan Levins, convenience retailing manager of Imperial
Oil, a licensee of Exxon Mobil. Although the thrust was to shore up earlier
evidence that the marks had been used at Esso gasoline stations since 19 July
2001, he also provided facts and figures as to the extent to which “Marché
Express” had become known, primarily in the Quebec market. Mr. Hamid’s evidence cannot
be considered without also taking into account Mr. Levins’.
[56]
As
mentioned earlier, Esso also provided new evidence by Robert Klein, a market
researcher, in the form of a survey of over 2,000 consumers in Toronto, Ottawa, and Montreal. The results indicate
that there is no likelihood of confusion between Esso’s “Marché Express” and
Mövenpick’s “Marché”. Mövenpick has not moved to have the affidavit struck
because it relies upon it to support its “clearly descriptive of the services”
submissions, but criticizes the methodology when it comes to its value to the
Court in determining the likelihood of confusion. I will discuss Mr. Klein’s
evidence later on.
[57]
As
stated in Masterpiece, in analyzing the various factors in section 6(5)
of the Act in determining the likelihood of confusion, it is often better to first
consider section 6(5)(e), the degree of resemblance. I see nothing in the new
evidence which would have affected the Registrar’s opinion. Although the first
word in a trade-mark may well be more important than others, in this case
“Marché” is a weak mark because of its broad-based use, and therefore consumers
are more likely to pick up on slight differences. In this case, as stated by
the Registrar, “[t]he word EXPRESS differentiates the marks when sounded and
the idea suggested by them.”
[58]
Turning
now to section 6(5)(a), there is no new evidence with respect to the inherent
distinctiveness of the trade-marks. As to the extent they have become known,
based on the totality of the evidence, I can only conclude that Mövenpick’s
“Marché” has become known to a certain extent. I am of the view, however, that
“Marché Express” is much better known. There have only been a handful of
“Marché” restaurants in operation sporadically. There are far more “Marché
Express” stores, the sales therein are far greater and they have been heavily
advertised. One need only mention the “Marché Express” signage on the hockey
boards at the Bell Centre in Montreal, from where Montreal Canadiens hockey games are telecast.
Again, I do not think the new evidence would have affected the Registrar’s
decision, in that circumstance, or with respect to the length of time the
trade-marks have been in use. While Mr. Hamid may well have provided better
evidence as to the length of time the “Marché” trade-mark has been in use in Canada, I find the evidence
insufficient.
[59]
Like
the Registrar, I will consider the nature of the wares, services or business,
and the nature of the trade, together.
[60]
Mövenpick
acknowledges that at the present time there is no actual confusion between the
marks. While the test is the likelihood of confusion rather than actual
confusion, this is a factor to be considered (Mattel at para 89; Masterpiece
at para 59).
[61]
Mövenpick
submits that the services actually offered at the “Marché Express” stores are
convenience store services, not fast-food services. There are no watertight
compartments differentiating convenience stores from fast-food services, from
fast-food restaurants, from restaurants. Basing itself on Masterpiece,
which requires consideration of the proposed use of the trade-mark according to
its terms, rather than by its actual use, Esso could easily open up fast-food
restaurants, just as Mövenpick could open fast-food restaurants at gasoline
stations.
[62]
There
is a registered trade-mark which could be invoked to support the proposition
that the fast-food services offered at the “Marché Express” stores fall within
the rubric of convenience stores, so that the reference to such services in the
application is mere surplusage. The registration for “Marché Mainway &
Design”, owned by Irving Oil Marketing G.P., describes the services on offer as
including gas bar, carwash, petroleum products, “retail convenience store
services” and “retail convenience store services, namely, fast-food services
and take-out food services.” In its submissions before the Registrar, Mövenpick
said that the nature of the services offered by the parties overlap “to the
extent that [Esso] has not excluded “restaurant services” from its statement of
services…” It suggested before me that the potential confusion could be avoided
by striking “and fast-food” from the description of services offered.
[63]
I
disagree. A trade-mark does not operate in restraint of trade. The law does not
require a party to act within the four corners of the services covered by its
trade-mark. In addition, the Registrar was alive and sensitive to potential
overlapping. Nevertheless, she did not cut down the proposed services on the
basis of confusion. Both the Mattel and Masterpiece cases
referred to the earlier decision of the Supreme Court in Benson & Hedges
(Canada) Ltd v St. Regis Tobacco Corp, [1969] S.C.R. 192, where the
Court held at page 200:
In
my view the Registrar’s decision on the question of whether or not a trade mark
is confusing should be given great weight and the conclusion of an official
whose daily task involves the reaching of conclusions on this and kindred
matters under the Act should not be set aside lightly […]
[64]
There
is no precise template to be followed in applying for registration of a
trade-mark. The applicant has considerable literary freedom. Esso, like Irving, could have chosen to
define convenience store services as including fast-food services. It did not
and was not taken to task by the Registrar, who has a wealth of experience. I
see no reason why I should act any differently.
[65]
In
my opinion, the Klein survey, whether or not the methodology used was
reasonable, would not have affected the Registrar’s decision. It showed
insignificant confusion which, if relevant, could only be used to bolster the
Registrar’s opinion. What it shows, together with evidence filed by Esso before
the Registrar, and the evidence filed on behalf of Mövenpick, is that it is
difficult, if not impossible, for a consumer to see “Marché Express” signage
without at the same time seeing an Esso sign, and for a patron at a Mövenpick
restaurant to see “Marché” without at the same time seeing “Mövenpick”.
SURROUNDING CIRCUMSTANCES
[66]
The
Registrar had considered the state of the Register. As mentioned above, the new
evidence is simply more of the same and does not change anything.
[67]
Another
circumstance in the new evidence, which simply bolsters the Registrar’s
decision, is that investigators hired by Mövenpick have stated that within
“Marché Express dépanneurs” there may also be the iconic “Tim Hortons”. For
instance Yves Lefebvre had visited four “Marché Express dépanneurs” which he
calls, as I would, “Esso/Marché Express dépanneurs”. He recalled that each
location had a Tim Hortons counter which was separate both in name and in the
uniforms worn by the staff. One could not pay for merchandise from the “Marché
Express dépanneur” at the the Tim Hortons counter, or vice versa. This fact is
useful in determining the probable type of business or trade intended by Esso
rather than all possible trades that might be encompassed (McDonald’s Corp v
Coffee Hut Stores Ltd (1996), 68 CPR (3d) 168, 199 NR 106 (FCA). If
Mövenpick opened up Marché donut and bake shops at gasoline stations, it would,
at least in some locales, be competing with Tim Hortons, not Marché Express.
[68]
Another
related circumstance, while not conclusive, is that the “Marché Express”
services are provided in association with gasoline stations, while Mövenpick
restaurants are downtown establishments (Hermes S.A. v Fletcher Golf
Enterprises Ltd (1984), 78 CPR (2d) 134 at page 146, 24 ACWS (2d) 396 (FC)).
Commercial context is a relevant factor.
[69]
To
conclude on this “confusion” analysis, the only new evidence which is material
is that of Mr. Hamid who has provided some evidence of use of the “Marché”
trade-mark in Canada. However, when weighed
against the Esso evidence, the Registrar would not have been persuaded to
change her mind. However, if I am wrong on that point, in assessing all the
evidence pertaining to surrounding circumstances, including those specifically
enumerated in section 6(5) of the Act, I find there is no likelihood of
confusion, in that the mythical consumer would not likely think that “Marché
Express” and “Marché” services came from the same source.
DATE OF FIRST USE
[70]
Section
30(b) of the Act requires an application to state the date from which the
trade-mark was used in Canada. The only evidence before the Registrar
was an affidavit from Barry Murphy, Mr. Levins’ predecessor as Imperial oil’s
convenience retailing manager. He was not personally present at the first
“Marché Express” when it opened on 18 July 2001. Rather, he relied on business
information to state the date of first use, the number of “Marché Express”
stores in Quebec at the date
of his affidavit, total sales, and details of moneys spent in advertising.
[71]
Mövenpick
led no evidence of its own.
[72]
The
Registrar was of the view that Mövenpick was entitled to rely upon Esso’s own
evidence, but it had to show that that evidence was clearly inconsistent with
the claim as set forth in the application (Labatt Brewing Co v
Molson Breweries, a Partnership (1996), 68 CPR (3d) 216, 113 FTR 39 (FC); York
Barbell Holdings Ltd v ICON Health & Fitness Inc, 13 CPR (4th) 156,
[2001] TMOB No 55 (QL)).
[73]
She
was satisfied that Mövenpick did not raise any doubt about the veracity of
Esso’s application.
DATE OF FIRST USE – NEW EVIDENCE
[74]
As
mentioned above, Esso filed an affidavit from Ryan Levins, who had succeeded
Mr. Murphy as convenience retailing manager at Imperial Oil. Unlike Mr. Murphy,
he was cross-examined. Again, Mövenpick did not lead evidence of its own.
[75]
I am
once more of the view that the new evidence on this point merely shores up what
was before the Registrar when she made her reasonable decision. If there is any
doubt, however, Mr. Levins produced a milestone report showing that the store
in St-Hubert had opened 18 July 2001, sales records and Esso’s annual report
for 2001, which specifically refers to the opening of “Marché Express” and “On
the Run” company-owned stores. Mövenpick has not succeeded in raising doubt
about the veracity of Esso’s claimed date of first use.
[76]
Mövenpick
argues that the Murphy and Levins affidavits are in violation of Rule 81 of the
Federal Court Rules, and cannot be acted upon by this Court since it is
unclear which facts are based on personal knowledge and which ones are gathered
from business records. Esso, on the other hand, submits that its evidence is
entirely consistent with its claim that “Marché Express” has been used in Canada since 19
July 2001, and its corporate records constitute unchallenged business record
evidence, admissible under s. 30 of the Canada Evidence Act.
[77]
I
am not convinced by Mövenpick’s argument. This Court is now invited to step
into the Registrar’s shoes, and the rules of evidence must therefore reflect
those to which the Trade-marks Opposition Board must adhere. To borrow the
words of Mr. Justice Décary in Austin Nichols & Co v Cinnabon Inc,
[1998] 4 FC 569, [1998] FCJ No 1352 (QL):
13 The role of the court sitting
in appeal of a decision of the Registrar is made abundantly clear by the last
words of subsection 56(5). In giving the Court the same discretion as that
"vested in the Registrar", Parliament has recognized that the Court
sitting in appeal is expected to be able to decide the issues as if they were
tried for the first time before the Court. This, in my view, suggests that a
registered owner has in appeal the same opportunity to file evidence he had
before the Registrar.
[78]
Canadian
courts have held that administrative tribunals are not restricted by the rules
of evidence applicable to court proceedings. As explained by Mr. Justice
Sopinka in Prassad v Canada (Minister of Employment
& Immigration), [1989] 1 S.C.R. 560, at paragraph 46: “As a general
rule, these tribunals are considered to be masters in their own house. In the
absence of specific rules laid down by statute or regulation, they control
their own procedures subject to the proviso that they comply with the rules of
fairness and, where they exercise judicial or quasi-judicial functions, the
rules of natural justice.”
[79]
The
Federal Court of Appeal has also touched upon this issue in Canadian
Recording Industry Assn. v Society of Composers, Authors & Music Publishers
of Canada, 2010 FCA 322, 413 NR 176. Mr. Justice Pelletier wrote at
paragraph 20:
20 In any event, the Board is
not a court; it is an administrative tribunal. While many tribunals have
specific exemptions from the obligation to comply with the rules of evidence,
there is authority that even in the absence of such a provision, they are not
bound, for example, to comply with the rule against hearsay evidence. […]
See also the Alberta Court of Appeal’s
decision in Alberta (Workers’ Compensation Board) v Alberta (Workers’
Compensation Board Appeals Commission), 2005 ABCA 276, [2005]
AJ No 1012 (QL) at paragraphs 63 and 64.
[80]
In
the circumstances, it was not necessary for Esso to give a notice of intention
to use business records as required by the Canada Evidence Act. While
the Murphy affidavit contained hearsay, the registrar was satisfied it had
probative value, and I agree with her.
[81]
Section
56(5) of the Trade-marks Act, which allows parties to adduce new
evidence, provides that the Federal Court may exercise any discretion vested in
the Registrar. Thus, if it is necessary to consider the Levins affidavit on
this point at all, in my discretion I accept it and am satisfied that Esso has
used “Marché Express” in association with “convenience store and fast-food
services offered at gasoline stations.”
COSTS
[82]
Costs
are in favour of Esso. If the parties cannot reach an agreement, they shall so
inform the Federal Court Registry within 30 days hereof. In such case, a
conference call will be arranged to work out a protocol.
[83]
As the
Attorney General, of behalf of the Registrar, did not participate in these
appeals, he shall neither be burdened with nor be awarded costs.
[84]
A
copy of these reasons for judgments shall be placed in both court docket numbers
T-1640-10 and T-1641-10.
“Sean Harrington”
Vancouver, British Columbia
December
1, 2011
Email this Content