Date: 20080929
Docket: T-2012-07
Citation: 2008 FC 1082
Ottawa, Ontario, September 29, 2008
PRESENT: The Honourable Mr. Justice Lemieux
BETWEEN:
MATOL
BIOTECH LABORATORIES LTD.
Applicant
and
JURAK
HOLDINGS LTD.
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1]
Matol
Biotech Laboratories Ltd. (Matol) attempted, by application filed with the Canadian
Intellectual Property Office (CIPO) on February 5, 1999, to register
KARL JURAK as a Trade-mark (the Mark) under the Trade-marks Act (the Act)
in association with minerals and vitamins for therapeutic purposes (the Wares).
It was successfully opposed in its endeavour by Jurak Holdings Ltd. (Holdings)
principally on the grounds the Mark was not registrable under paragraph
12(1)(a) and had not become distinctive under subsection 12(2) of the Act.
Those provisions read:
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12. (1) Subject to section 13, a trade-mark
is registrable if it is not
(a) a word that is primarily merely the name or the
surname of an individual who is living or has died within the preceding
thirty years;
…
(2) A trade-mark that is not registrable by
reason of paragraph (1)(a) or (b) is registrable if it has been so used in
Canada by the applicant or his predecessor in title as to have become
distinctive at the date of filing an application for its registration. [Emphasis
mine.]
|
|
12. (1)
Sous réserve de l’article 13, une marque de commerce est enregistrable
sauf dans l’un ou l’autre des cas suivants :
a) elle est constituée d’un mot
n’étant principalement que le nom ou le nom de famille d’un particulier
vivant ou qui est décédé dans les trente années précédentes;
…
(2) Une
marque de commerce qui n’est pas enregistrable en raison de l’alinéa (1)a) ou
b) peut être enregistrée si elle a été employée au Canada par le requérant ou
son prédécesseur en titre de façon à être devenue distinctive à la date de la
production d’une demande d’enregistrement la concernant. [Je souligne.]
|
[2]
Matol
appeals, pursuant to section 56 of the Act, the September 14,
2007 decision of Jean Carrière, member of the Trade-marks Opposition Board (the
tribunal). Matol took advantage of subsection 56(5) of the Act by filing
three pieces of evidence which were not before the tribunal. Holdings did not file
any additional or fresh evidence.
[3]
This
appeal gives rise to two issues. First, whether the tribunal erred when it
found Holdings had met its initial evidentiary burden before it shifted to
Matol the evidentiary burden. Second, whether, based on the new evidence before
me, the Mark whose first use was said to be October 31, 1994 in
association with the Wares had become distinctive so as to claim the benefit of
subsection 12(2) of the Act.
[4]
Both
Matol and Holdings substantially agree the jurisprudence is settled on the test
to be applied for the purpose of interpreting paragraph 12(1)(a) of the Act.
That test, derived from the jurisprudence, (Canada (Registrar of Trade Marks
v. Coles Book Stores Ltd.), [1974] S.C.R. 438; Gerhard Horn Investments Ltd. v.
Registrar of Trade Marks (1983), 73 C.P.R. (2d) 23 and Standard Oil
Company v. the Registrar of Trade Marks, [1968] 2 Ex.C.R. 523) is:
1)
The
first and foremost condition is whether the Mark is the name or surname of a living
individual or an individual who has recently died;
2)
If the answer to
the first question is affirmative,
then the Registrar must determine if in the mind of the average Canadian
consumer the Mark is “primarily merely” a name or surname rather than something
else. [Emphasis mine.]
[5]
The
parties do not disagree that the first part of the test was met by the evidence,
i.e. the Mark is the name of an individual who died in 1993.
[6]
The
parties are also in agreement on the standard of review of the tribunal’s
decision. It is set out by Justice Binnie in Mattel, Inc. v. 3894207 Canada
Inc., [2006] 1 S.C.R. 772, at paragraphs 40 and 41 which read:
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 Inc., at para. 60.
41 The
foregoing analysis of the proper standard of review is consistent with the
jurisprudence of the Federal Court of Appeal: see in particular Molson v.
Labatt, per Rothstein J.A., at para. 51; Novopharm Ltd., per
Strayer J.A., at para. 4; Polo Ralph Lauren Corp. v. United States Polo
Assn. (2000), 9 C.P.R. (4th) 51, per Malone J.A., at para. 13, and
Isaac J.A., at para. 10; Christian Dior, S.A. v. Dion Neckwear Ltd.,
[2002] 3 F.C. 405, 2002 FCA 29 per Décary J.A., at para. 8, and Purafil,
Inc. v. Purafil Canada Ltd. (2004), 31 C.P.R. (4th) 345, 2004 FC 522, per
MacKay D.J., at para. 5.
[7]
In Mattel,
Justice Binnie referred to, with approval, Justice Rothstein’s decision when he
was a member of the Federal Court of Appeal, in Molson Breweries v. John
Labatt, [2000] 3 F.C. 145 at paragraph 51 (Molson/Labatt) which focused
on the impact new evidence on appeal might have on the standard of review:
51 I
think the approach in Benson & Hedges and McDonald's Corp. 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 mine.]
[8]
I
take it from these two cases, the standard of review has been settled (see Dunsmuir
v. New
Brunswick,
2008 SCC 9, at paragraph 62). That standard is reasonableness. The Federal
Court of Appeal confirmed this standard of review in its post Dunsmuir
decision in Scott Paper Limited v. Smart & Biggar et al, 65 C.P.R.
(4th) 303, at paragraph 11 (Scott Paper).
[9]
In
Dunsmuir, Justices Bastarache and LeBel provided guidance on the
parameters of a reasonable decision:
47 Reasonableness is a deferential
standard animated by the principle that underlies the development of the two
previous standards of reasonableness: certain questions that come before
administrative tribunals do not lend themselves to one specific, particular
result. Instead, they may give rise to a number of possible, reasonable
conclusions. Tribunals have a margin of appreciation within the range of
acceptable and rational solutions. A court conducting a review for
reasonableness inquires into the qualities that make a decision reasonable,
referring both to the process of articulating the reasons and to outcomes. In
judicial review, reasonableness is concerned mostly with the existence of
justification, transparency and intelligibility within the decision-making
process. But it is also concerned with whether the decision falls within a
range of possible, acceptable outcomes which are defensible in respect of the
facts and law.
…
49 Deference in the context of the
reasonableness standard therefore implies that courts will give due
consideration to the determinations of decision makers. As Mullan explains, a
policy of deference "recognizes the reality that, in many instances, those
working day to day in the implementation of frequently complex administrative
schemes have or will develop a considerable degree of expertise or field
sensitivity to the imperatives and nuances of the legislative regime": D.
J. Mullan, "Establishing the Standard of Review: The Struggle for
Complexity?" (2004), 17 C.J.A.L.P. 59, at p. 93. In short, deference
requires respect for the legislative choices to leave some matters in the hands
of administrative decision makers, for the processes and determinations that
draw on particular expertise and experiences, and for the different roles of
the courts and administrative bodies within the Canadian constitutional system.
…
53 Where the question is one of fact,
discretion or policy, deference will usually apply automatically (Canada
(Attorney General) v. Mossop, [1993] 1 S.C.R. 554, at pp. 599-600; Dr. Q, at
para. 29; Suresh, at paras. 29-30). We believe that the same standard must
apply to the review of questions where the legal and factual issues are
intertwined with and cannot be readily separated.
[10]
This
jurisprudence is also clear that where questions of fact are involved, the
tribunal enjoys on those questions considerable deference as expressed by
Parliament in paragraph 18.1(4)(d) of the Federal Courts Act which
provides a decision may be set aside if the tribunal “based its decision or order
on an erroneous finding of fact that it made in a perverse or capricious manner
or without regard for the material before it” (see also Mugesera v. Canada
(Minister of Citizenship and Immigration), [2005] 2 S.C.R. 100, at
paragraphs 37 and 38.)
Facts
[11]
After
Matol filed its application to register the Mark on February 5, 1999, Matol was
met with an office action in which the Examiner raised a number of questions
including whether the Mark was barred from registration on account of section
12(1)(a) of the Act. It was in this context Matol filed with the
Examiner the affidavit of Robert Bolduc, a co-founder and president of Matol, dated
March 16, 2001, with Exhibits RB-1, RB-2 and RB-3 claiming the benefit of
subsection 12(2) of the Act.
[12]
In
that affidavit, Robert Bolduc explained that:
1) The
Applicant, incorporated in March 1986, is a subsidiary of Matol Botanical
International Ltd. (Botanical); the Applicant is the holder of all Canadian
trade-mark registrations owned by Botanical which is the producer and marketer
of the Wares in Canada;
2) The principal
product marketed by Botanical is a mineral supplement in liquid form sold in Canada under the
trade-mark MATOL. This mineral supplement was discovered by Dr. Karl Jurak.
3) Since October
31, 1994, the mineral supplement and other herbal products have been marketed
in Canada under the
trade-mark Matol in association with the trade-mark KARL JURAK;
4) Botanical’s
products are not marketed in retail stores in Canada; rather they
are sold by direct sales to Canadian consumers through Matol distributors.
[13]
The
Examiner withdrew her objection based on section 12(1)(a) on June 6, 2001
apparently on the basis of a new Office practice without providing any further
details.
[14]
Before
and subsequent to the filing of the application for the registration of the
Mark, the parties to this appeal (Matol as applicant and Holdings as opponent)
were involved in related opposition proceedings before the CIPO as follows:
· Application
by Matol on December 5, 1997 to register the trade-mark KARL JURAK 1904-1993 &
Design; the design is a likeness of Dr. Jurak’s face. This registration was allowed
by member Carrière on December 14, 2007;
· Application
by Matol on February 5, 1999 to register the trade-mark KARL JURAK
1904-1993 which was allowed by member Carrière on December 14, 2007;
· Application
in December 23, 1998 by Matol to register the proposed trade-mark JURAK in
connection with a number of wide-ranging wares and services. This registration
was allowed on March 3, 2006 by another member of the Trade-Marks
Opposition Board.
[15]
On
October
3, 2001,
Holdings filed a statement of opposition to Matol’s application to register the
trade-mark KARL JURAK. That opposition was supported by the affidavit of
Anthony Carl Jurak who was cross-examined. Anthony Carl Jurak is the President
of Holdings since its incorporation on January 1, 1998 and the Chairman and
Chief Executive Officer of Jurak Corporation World Wide Inc. since its
incorporation in November 1997, of which Holdings is the majority shareholder.
He is the son of Karl Jurak. He was a co-founder of Botanical and the company’s
original Chairman from 1984 to 1991 when he became Co-chairman with Robert
Bolduc and Sam Kalenuik. He left Botanical in 1997. Holdings markets its wares
in Canada and the United States under the trade-mark JURAK CLASSIC. One of
those wares is his father’s original whole body tonic formulation. Holdings
raised four grounds of opposition:
· Non
compliance with the requirements of section 30(i) of the Act in that
“the Applicant could not have been satisfied that it was entitled to use the
Mark as it had knowledge that Karl Jurak is primarily merely the name of a
famous individual who died within the preceding thirty years. Holdings
submitted the Mark is not registrable and is incapable of functioning as a
trade-mark;
· Non
compliance with section 30(b) of the Act as the Applicant has not used
the Mark in Canada since
October 31, 1994 in association with the wares;
· The Mark is
non registrable pursuant to section 12(1)(a) of the Act for the same
reasons as it mentioned in its section 30(i) ground of opposition adding:
“Furthermore, although there may be less than 25 entries for the name Karl
Jurak in Canadian telephone directories, evidence will show that the name is
that of a famous individual.” Counsel added a comment that Matol’s application
was not saved by the Practice Notice of August 16, 2000 “which the Examiner
appears to have relied on in this manner”;
· The Mark is
not distinctive in that it is not adapted to distinguish the Applicant’s wares
from the wares or services of others as the Mark is primarily the name of a
famous individual. Counsel added: “The Applicant’s section 12(2) evidence does
not show use of the name Karl Jurak as a trade-mark and does not support
a finding that the Mark has become distinctive at the date of the filing of the
application.
[16]
On
April 2, 2002, Matol filed its Counter Statement to the Opposition
generally denying the validity of the grounds invoked by Holdings.
[17]
On
May 1, 2002, Holdings filed an Amended Statement of Opposition to
delete reference to Matol’s section 12(2) evidence and to the Practice Notice.
[18]
On
November 4, 2002, Holdings filed its evidence in the opposition proceedings namely
the affidavit of Anthony Carl Jurak with Exhibits; the affidavit of Arlene E. Siderius
with Exhibits and the affidavit of Glenn A. Berg with Exhibits.
[19]
On
April 29, 2004, Matol filed its evidence, in support of the application,
the affidavit of Robert Bolduc dated April 29, 2004 and the affidavit of
Jennifer Petras.
[20]
On
July
18, 2005,
Matol filed its written argument. It pointed out that non compliance with
section 12(1)(a) was Holdings’ primary grounds of opposition, namely, the Mark
is a word that is primarily merely the name or surname of an individual who has
died in the preceding thirty years. Matol wrote of Holdings’ theory: “Because
Jurak is a very rare surname, it cannot be “primarily merely” a surname unless
a given individual bearing this surname is “well-known” or famous. Therefore
this is what the opponent is alleging.”
[21]
Matol
also submitted “Karl Jurak is not a famous individual in the minds of the
average Canadians” for a number of reasons including the fact that “the vast
majority of Canadian consumers don’t know Karl Jurak and his diverse accomplishments
because the products are distributed only by independent distributors.
There is no general publicity for the sale of these products”. Matol concluded
its submission on this point by stating “in reality, there is no evidence of
Karl Jurak receiving any attention in Canada” concluding that the
Mark was registrable having regard to the provisions of 12(1)(a) of the Act.
In terms of distinctiveness, Matol argued “this is really the same
argument as that made in respect of section 12(1)(a), we therefore reiterate
our arguments above”. Matol submitted Holdings had an initial evidentiary
burden to establish some facts to support its allegation on non registrability
and there was no sufficient evidence to support its burden.
[22]
Holdings
filed its written reply on November 18, 2005. On the section
12(1)(a) issue, Holdings referred to the CIPO’s Practice Notice of August 16, 2002. It argued, based
on a reading of that Practice Notice, the Mark was not registrable. It stated
the Practice Notice provided in part “the Examiner will only object to an
application on the basis of section 12(1)(a) if there are at least 25 entries
of the name in Canadian telephone directories”. Holdings wrote: “We concede
that, in this case, no evidence has been filed showing that there are at least
25 entries for KARL JURAK in Canadian telephone directories.” Holdings
pointed out, however, the Practice Notice provided “if research discloses the
Mark consists of the name or surname of a famous individual an objection may
be raised notwithstanding the existence of less than 25 entries ….”.
Holdings then argued the evidence showed KARL JURAK is the name of a famous
individual.
The tribunal’s decision
[23]
For
the purposes of this appeal, I will limit my consideration of the tribunal’s
decision to its discussion of the issue of Holdings’ evidential burden in the
context of the section 12(1)(a) issue of non registrability on the basis
the Mark is “primarily merely the name of an individual who died within the
last thirty years” and the subsection 12(2) issue of acquired
distinctiveness. Holdings did not cross-appeal in this Court the two other
grounds of opposition which it had raised in its statement of opposition,
namely, the Matol’s non compliance with sections 30(i) and 30(b) of the Act
but which the tribunal ruled Holdings had not established.
[24]
In
terms of burden, the tribunal stated:
The legal burden is upon the Applicant to
show that its application complies with the provisions of the Act, but there
is however an initial evidential onus on the Opponent to adduce sufficient
admissible evidence from which it could reasonably be concluded that the facts
alleged to support each ground of opposition exist. Once this initial onus is
met, the Applicant still has to prove, on a balance of probabilities, that the
particular grounds of opposition should not prevent the registration of the
Mark. [See Joseph E. Seagram & Sons Ltd. et al v. Seagram Real
Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330; John Labatt Ltd. v.
Molson Companies Ltd., 30 C.P.R. (3d) 293 and Wrangler Apparel Corp. v.
The Timberland Company, [2005] FC 722.] [Emphasis mine.]
[25]
As
to the relevant dates for the analysis of the registrability of the Mark under
section 12(1)(a) of the Act, the tribunal stated:
- Registrability of the Mark under s.
12(1)(a) of the Act: also the filing date of the application; [See Calvin
Klein Trademark Trust v. Wertex Hosiery Inc. (2005), 41 C.P.R. (4th)
552]
[26]
For
distinctiveness, he ruled:
- Distinctiveness of the
Mark: the filing date of the statement of opposition is generally accepted
as the relevant date (October 3, 2001). [See Andres Wines Ltd. and E
& J Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.) and Metro-Goldwyn-Meyer
Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)]
(a) The section 12(1)(a) issue
[27]
The
tribunal began its discussion of this issue by stating the focus was on whether
the Mark, KARL JURAK, is a word “primarily merely” the name or surname of an
individual who has died in the past 30 years stating that the bulk of the
evidence filed in the proceeding before it related to this issue.
[28]
Based
on that evidence, the tribunal ruled there was no doubt there was an individual
by the name of KARL JURAK who died in 1993. It then referred to the Practice
Note, issued by the Registrar on August 16, 2000, providing some guidelines on
the application of section 12(1)(a) which, in his view, were not binding on the
Registrar at the decision stage of an opposition in contrast to the examination
stage.
[29]
The
tribunal then set out the test, developed from the jurisprudence, on the
application of section 12(1)(a) of the Act set out in paragraph 4 of
these reasons which for convenience I repeat here:
1)
The first and
foremost condition is whether the Mark is the name or surname of a living
individual or an individual who has recently died;
2)
If the answer to the
first question is affirmative, then the Registrar must determine if in the mind
of the average Canadian consumer the Mark is "primarily merely" a
name or surname rather than something else.
[30]
The
tribunal ruled, as noted, the first part of the test had been met and
therefore the question before him was whether the average consumer would
consider the Mark, KARL JURAK, as “primarily merely” the name of an individual
“or something else”. [Emphasis mine.]
[31]
The
tribunal commented Holdings had filed much material to establish that KARL
JURAK was a famous person having determined the name Jurak was not found
at least 25 times in Canadian telephone directories characterizing, in these
circumstances, the argument of Holdings that if the Mark is the name of a
famous person, the average Canadian consumer would automatically consider the
Mark as “primarily merely” the name or surname of a person.
[32]
After
summarizing the evidence before him, the tribunal ruled:
With all due respect for the late Dr. Karl Jurak I do not
think that the evidence described above is sufficient to conclude that he was a
famous person known to the average Canadian consumer. He might be known in Tulsa, Oklahoma or even in San
Antonio, Texas in view of
the centres opened in these cities by The Foundation but there is no
evidence that enables me to conclude that his fame in the United States is of such a magnitude that it spilled
over in Canada. His whole body tonic might have been
popular in the 1950's but there is no evidence that such popularity carried
over the relevant dates such that Canadians when confronted with the name Karl
Jurak would immediately associate the late Dr. Karl Jurak to such product. The
Canadian sales figures provided were not of a magnitude that they would
infer an association amongst the Canadian consumers between such trade-mark and
the late Karl Jurak. [Emphasis mine.]
[33]
Mr.
Carrière then added and concluded:
Having concluded that
the evidence filed falls short of establishing that the Mark is recognized in
Canada as the name of a famous person, I do not think that such conclusion
puts an end to the test applicable when s. 12(1)(a) is raised as a ground of
opposition. In fact s. 12(1)(a) of the Act does not require the individual to
be famous in order for the prohibition to apply. Evidence that a name would
appear at least 25 times in Canadian telephone directories only gives an
indication that such name could be viewed by the average Canadian consumer as a
name of an individual. The absence of such proof is not fatal to an opposition
based on s. 12(1)(a). In our case there is no evidence that JURAK has any other
meaning.
The burden is on the Applicant to show that the Mark is
registrable despite the prohibition under s. 12(1)(a). There is no evidence
that would demonstrate that the combination of the given name KARL with the
surname JURAK would
have in the minds of the average Canadian consumer of the Wares any other
meaning than the Wares originate from an individual by the name of Karl Jurak.
Given that there is evidence that Karl Jurak was an
individual who has died during the preceding thirty years and the Mark would be
viewed in the mind of the average Canadian consumer as "primarily merely"
as a name, I conclude
that the Mark is not registrable as prohibited under the provisions of s.
12(1)(a) of the Act. [Emphasis mine.]
(b) The subsection
12(2) issue and the separate distinctiveness ruling
[34]
The
record indicates that Holdings raised as a ground for opposition that the Mark
KARL JURAK was not distinctive in that it is not adapted to distinguish the
Applicant’s wares from others being primarily the name of a famous person. On
the other hand, Matol claimed the benefit of subsection 12(2) which overrides the
deficiency on account of 12(1)(a), if at the date of the application (February
5, 1999), the trade-mark which is applied for registration “has been so used in
Canada as to have become
distinctive”. As a result, two different issues related to distinctiveness
arose.
[35]
The
tribunal, in its ruling, only dealt with the issue of distinctiveness raised by
Holdings as a ground for opposition. It did not dealt with Matol’s subsection
12(2) claim because the material which it had filed with the Examiner,
namely Robert Bolduc’s March 16, 2001 affidavit was not part of the
opposition file, thus finding Matol’s evidence did not address the issue the
Mark had acquired distinctiveness at the relevant time under subsection 12(2)
of the Act.
[36]
To
tribunal confined its remarks to the issue of distinctiveness raised by
Holdings and for this purpose considered Robert Bolduc’s affidavit dated April
24, 2004. The tribunal stated Matol had the legal onus to “show
that its mark is adapted to distinguish or actually distinguishes its wares from
that of the Opponent throughout Canada” and concluded “there is no evidence in
the file to that effect.”
[37]
Of
Mr. Bolduc’s April
24, 2004
affidavit, the tribunal found:
Mr. Bolduc states in his affidavit that the Mark has been
used as an associated mark with the trade-mark MATOL. The evidence described
above falls short from establishing that the Mark has been used in Canada prior
to the relevant date, namely October 3, 2001, in such a way that it does serve
to distinguish the Applicant's Wares from the wares and services of others. As an example the Applicant failed to
provide the annual sales figures from 1994 to 2002. The only reference to sales
in Mr. Bolduc's affidavit is with respect to 2003. As noted earlier some of the
containers bearing the trade-mark MATOL filed by Mr. Jurak and allegedly used
by the Applicant since 1994 do not have any reference to the Mark. Therefore it
is impossible to ascertain the percentage of the sales of the Wares in 2003
associated with the Mark as opposed to the trade-mark MATOL alone, even if such
evidence was relevant. [Emphasis mine.]
[38]
The
tribunal observed “that
the Applicant did not rely on the provisions of section 12(2) of the Act
in its counter statement or in its written arguments”, stating, as noted, “the
evidence filed by the Applicant at the examination stage to claim the benefit
of section 12(2) of the Act does not form part of the opposition file”
citing Molson Breweries, A Partnership v. The Registrar of Trade-marks (1992),
41 C.P.R. (3d) 234, expressing the view “the Applicant's evidence does not
address the issue that the Mark would have acquired distinctiveness at the
relevant date”.
[39]
Mr.
Carrière concluded as follows on this point:
As
the Mark consists primarily merely the name of an individual who has died
within the last thirty years and in the absence of evidence that would prove
that the Mark acquired distinctiveness at the relevant date, I conclude
that the Mark could not served to distinguish the Wares from the wares and
services of others. The fourth ground of opposition is therefore maintained.
Analysis
(a) The standard of review
[40]
This
issue has been previously addressed in these reasons. The standard of review is
reasonableness.
(b) The new evidence on appeal
[41]
As
authorized by subsection 56(5) of the Act, Matol through the affidavit
of Robert Bolduc dated November 7, 2007, filed the following pieces of evidence
not before the tribunal:
1) The affidavit
of Robert Bolduc, dated March 16, 2001, filed with Examiner Hélène Gaudreau
the same day, for the purpose of claiming the benefit of section 12(2) of the Act;
2) The search
results from the internet site of Canada 411 showing that the name JURAK is
found in only 22 times in Canadian telephone directories; and
3) A copy of a
search report, on Google’s internet site, showing that the name JURAK is
defined, according to Wikipedia, in English to mean “a Shisha pipe, also known
as hookah, water pipe or argileh, is a smoking pipe.
(c) The applicable jurisprudence
(1) On the section 12(1)(a) issue of non
registrability
[42]
The
tribunal correctly relied upon the following decisions as the leading cases on
the issue of non-registrability of a trade-mark on account of its being
“primarily merely the name or surname of an individual” in section 12(1)(a) of
the Act (in French “… constituée d’un mot n’étant principalement que
le nom ou le nom de famille d’un particulier …” were:
· The Supreme
Court of Canada’s decision in Canada (Registrar of Trade Marks)
v. Coles Book Stores Limited, [1974] S.C.R. 438 (Coles);
· The Exchequer
Court of Canada’s decision in Standard Oil Co. v. the Registrar of Trade
Marks, [1968] 2 Ex.C.R. 523 (Standard Oil);
· Gerhard Horn
Investments Ltd. v. Registrar of Trade Marks, [1983] 2 F.C. 878 (Gerhard
Horn).
[43]
In
terms of analysis of the case at hand, I would add to this list Justice Cattanach’s
decision in Galanos v. Canada (Registrar of Trade Marks) (1982), 69
C.P.R. (2d) 144 (Galanos), as well as his decision in Elder’s
Beverages (1975) Ltd. v. Canada (Registrar of Trade Marks), [1979] 2 F.C.
735 (Elder’s).
[44]
In
Coles, the contest was between a word readily recognizable as a surname
(Coles) and the dictionary meanings of the word “cole” which was rare and
largely obsolete. Justice Judson, on behalf of the Supreme Court of Canada,
noted that section 12(1)(a) of the Act was added by Parliament in 1952,
wording which was copied from U.S. legislation enacted in 1946. Justice Judson
stated that it was “essential to any inquiry into registrability must now begin with
the new words themselves.” He wrote:
“They are common English words. Is the
primary (chief) (principal) (first in importance) meaning of the word merely
(only) (nothing more than) a surname?”
[45]
Referring
to U.S.
jurisprudence, he said the inquiry was a search for the dominant (principal)
characteristic of the trade-mark and that if that dominant characteristic was
to be found in a surname, it was excluded from registration, i.e. primarily
merely a surname.
[46]
Applying
the test of what would be the response of the general public to the word sought
to be registered which he acknowledged was derived from Jackett P.’s decision
in Standard Oil, he concluded:
In the case at bar, the evidence clearly
establishes that "Coles" is a surname that is well-known to the
general public of Canada. On the other hand, the
dictionary meanings of the word "cole" and in its plural form
"coles", particularly as found in the Oxford English Dictionary, are
largely obsolete. A customer in need of a cabbage does not ask for a "cole".
The only common use of the word that I can think of is in the word
"coleslaw". The inference I draw from the evidence concerning the
dictionary definitions of the word "cole" is that it is a word of
rare, if not obsolete, usage and would be little known to the general public of
Canada. I do not agree with the
conclusion of the learned Judge of the Exchequer Court that the principal character
of the word "Coles" is "equally that of a surname and of a
dictionary word in the English language." My only possible conclusion in
this case is that a person in Canada of ordinary intelligence and of ordinary education in
English or French would immediately respond to the trade mark "Coles"
by thinking of it as a surname and would not be likely to know that
"Coles" has a dictionary meaning. [Emphasis mine.]
[47]
In
Standard Oil, the conflict was between the word applied for registration
for proposed use being the acronym (coined) word FIOR which had no dictionary
meaning (being the first letters of the words “fluid iron ore reduction”) and
the rare surname FIOR for a number of individuals (1 in Montreal, 9 in Toronto,
3 in Los Angeles, 2 in San Francisco and one in Indiana).
[48]
Mr.
Justice Jackett, as President of the Exchequer Court, after noting that for
trade-mark purposes “there are at least three classes of "words", viz,
dictionary words, names, and invented words”, stated that he was satisfied the
evidence before him established “FIOR is a word that is the surname of an
individual who is living”, adding however, “the further question to be decided
is, whether "FIOR" is "primarily merely" such a word.” He
found that it had been established by affidavit filed with the Court that the
trade-mark was a word invented by the Company for use as its trade-mark. The
President ruled “it follows that FIOR is not “merely” the surname of a living
person because it has existence as a word invented … for trade-mark
purposes. He then wrote:
The next stage in considering the problem of
applying section 12(1)(a) to the word "FIOR" is to consider whether
"FIOR" is "primarily" the surname of a living person (Note
that the French version uses the word "principalement" where the
English version uses "primarily".) In other words, is the chief,
main or principal character of "FIOR" that of a surname or is it principally
or equally a word invented to be used as a trade mark?
and stated the test as being:
The
test, for the purposes of section 12(1)(a) is not, in my view, the reaction of
either of these classes of persons [the persons with the surname FIOR or Standard
Oil’s trade mark advisor who coined that word]. The test must be what, in
the opinion of the respondent or the Court, as the case may be, would be the
response of the general public of Canada to the word. My conclusion is that a person in Canada
of ordinary intelligence and of ordinary education in English or French would
be just as likely, if not more likely, to respond to the word by thinking of it
as a brand or mark of some business as to respond to it by thinking of some
family of people (that is, by thinking of it as being the surname of one or
more individuals). Indeed, I doubt very much whether such a person would
respond to the word by thinking of there being an individual having it as a
surname at all.
I
am, therefore, of the view that it is probably not "primarily" a word
that is a surname of an individual at all, but it is certainly not primarily
"merely" such a word.
I
have probably been influenced in coming to the conclusion that I have expressed
as to how the word "primarily" in section 12(1)(a) should be applied
by the fact that applying the provision solely by reference to the existence of
a dictionary meaning of a proposed trade mark would make practically every
invented word vulnerable to attack as a proposed trade mark by anyone assiduous
enough to pursue his searches for its use as a surname somewhere in the world
(or, indeed, in a country such as Canada even if the search were restricted to
Canada). I cannot believe that section 12(1)(a) was intended virtually to
eliminate the creation of new words for purposes of proposed trade marks.
[Emphasis mine.]
[49]
In
the Gerhard Horn, the contest for the registration of trade-mark MARIO
PECCI, a name where there was no evidence of a living individual with that name
(a fictitious or imaginary name), but where there was evidence of at least two
individuals residing in Canada bearing the surname “Pecci”. A further
search indicated one telephone directory listing of the surname PECCI in New
York and in Paris and ten in the telephone directories of Rome and Florence.
[50]
Justice
Cattanach determined there was no impediment under section 12(1)(a) of the Act
to the registrability of a fictitious person because the section focussed on
the crucial word “individual” in the context of a person who was living or had
died within the last thirty years. The problem occurred when “by chance
the fictitious name coined by the applicant for registration thereof coincides
with such a person”.
[51]
According to Justice Cattanach, this is where to Coles/Standard
Oil test came into play a test to determine whether “a word sought to be
used as a trade mark is "primarily merely" the name or surname of an
individual (which means a real person as contrasted to an imaginary one) or
something else such as a dictionary word, an invented or coined word or the
brand or mark of some business”. [Emphasis mine.]
[52]
In the case before him, Justice Cattanach was of the view the
Registrar (through the examiner) had erred by embarking on an analysis of what
would the average Canadian would think of the proposed name. The Registrar had
to find first the condition precedent to this exercise – the existence of an
individual bearing the name of the trade-mark.
[53]
Finally, he ruled that the discovery of one living question in Canada with the surname
Pecci “was not the question here” because the trade-mark sought to be
registered was not the surname Pecci but MARCO PECCI concluding “the name
cannot be the name of an individual if there be no such person”.
[54]
In Elder’s, the trade-mark sought to be registered was
ELDER’S, the evidence showing of substantial significance ELDER is both the
surname of individuals and also it had several dictionary meanings. In this
context, Justice Cattanach applying the reaction of the average Canadian test
found that such person “would not assign to the word "elder" a
more dominant characteristic either as a surname or as a dictionary word”.
As a result, the proposed Mark was registrable because it was not primarily the
name or surname of an individual.
[55]
In Galanos, a 1982 decision of Justice Cattanach, the
trade-mark applied for was GALANOS, a word which was the surname of the
applicant for registration (Mr. James G. Galanos). The evidence showed a search
of telephone directories that there were 3 listings in Toronto and two in Montreal. In terms
of dictionary meaning, there was none in the English and French dictionaries
but the English-Spanish dictionary defined “galano” as tasteful or elegant. The
census figures indicated there were over 23,000 residents in Canada whose
mother tongue was Spanish. The Applicant, in that case, conceded Galanos was
the name of an individual but argued the word was not primarily merely a
surname because of its rarity in Canada and the
fact the word had meaning in the Spanish language.
[56]
Justice Cattanach referred to the three categories of words
identified by Jackett P. in the Standard Oil case (dictionary words,
names and invented words) and expressed the view that unknown foreign words may
be another category. Based on the evidence before him, he stated Galanos is a
surname but not a widely known one and is meaningless in English or French. He
held being meaningless “does have a significance” – being a foreign word
without meaning in English or French “it is a coined, fancy or invented word
sought to be used as a trade-mark”. He concluded such would be the
likely thinking of the average Canadian reacting to the word Galanos.
[57]
I cite a more recent case that of Mario Valentino S.p.A. v.
Valint N.V. (1999), 4 C.P.R. (4th) 1, a decision of my colleague
Justice Campbell who dismissed an appeal from a refusal by the Registrar under
section 12(1)(a) of the Act to register as trade-marks MARIO VALENTINO,
the name of a deceased designer. Justice Campbell applied the two part test set
out by Cattanach J. in Gerhard Horn. In the case before him, the
Registrar after finding Mario Valentino was the name of a recently deceased
person had stated:
Since there is no other likely
connotation for these words, and nothing was filed which would suggest an
alternative meaning, it appears that the average consumer would view the mark
as being primarily merely the surname of an individual who is living or has
died in the past thirty years. The onus is on the applicant to show otherwise
and they have failed to do so.
[58]
Justice
Campbell found no error in the Registrar’s analysis.
(2) On the subsection 12(2) acquired
distinctiveness issue
[59]
The
leading case in this area is the Molson/Labatt case cited above, leave
to appeal denied by the Supreme Court of Canada, in which Justice Rothstein,
then a member of the Federal Court of Appeal, wrote the reasons for the
majority. In that case, Molson had sought to register the trade-mark EXPORT for
use in association with brewed alcoholic beverages. Subsection 12(2) was
engaged. Labatt opposed the registration on the basis the Mark was either
clearly descriptive or deceptively misdescriptive of the character and quality
of brewed alcoholic beverages and on the basis that it was not distinctive.
[60]
This
case is instructive on a number of points related to subsection 12(2) of the Act;
the first one being that the relevant date for determining distinctiveness
under this provision is at the date of the filing of the application for its registration,
here February 5, 1999.
[61]
Second,
Justice Rothstein discussed the question of standard of proof under subsection
12(2) in the context of the previous jurisprudence which often referred to a
“heavy onus” in an application under subsection 12(2) of the Act.
[62]
He
wrote the following at paragraph 53 of his reasons:
53
Although no case suggests otherwise, I think it is
salutary to confirm that the standard of proof under subsection 12(2), as in
other civil proceedings, is proof on a balance of probabilities. The term
"heavy onus" would appear to be directed to the exceptional aspect of
subsection 12(2). Subsection 12(2) is an exception to non-registrability of a
trade-mark under paragraph 12(1)(a) or (b). In this case, Molson concedes that
the term "Export" was clearly descriptive of a quality of beer.
However, because of its long use in Canada by Molson--since 1903--it is said to
have become distinctive, that is, that its original descriptive connotation had
been subordinated in the minds of the public in relation to Molson's
"Export" beer product, such that its secondary or distinctive meaning
will dominate21. It is because subsection 12(2)
is an exception to non-registrability of clearly descriptive terms, that an
applicant must provide evidence on an issue that does not arise when a
trade-mark has not been a clearly descriptive term. In this case, evidence must
be adduced that long use has caused a descriptive word in association with beer
to have become distinctive of the Molson's beer product. If such evidence is
provided, it is to be assessed on a balance of probabilities. There is no onus
beyond the onus of addressing and satisfying the requirement of subsection
12(2).
[63]
He
concluded at paragraph 54 by stating “Accordingly, what
the applicant under subsection 12(2) must show is that the trade-mark it seeks
to register, although it may be descriptive, has acquired a dominant
secondary or distinctive meaning in relation to the wares or services of the
applicant.” [Emphasis mine.]
[64]
Justice
Rothstein then assessed the decision of the trial judge who had allowed the
appeal from a decision of the Registrar of Trade-marks that the applied for
trade-mark was not registrable. One of the findings at trial was that MOLSON is
in effect “a house mark” and that EXPORT is a brand of beer sold by Molson. The
trial judge had observed that all of the labels of the Molson family contain
the house mark “Molson” in conjunction with the brand names: CANADIAN, GOLDEN
or EXPORT.
[65]
On
appeal before the trial judge, Molson had filed additional or fresh evidence
not before the Registrar, in particular Molson sales and advertising figures
which in part caused the judge to allow the appeal. Justice Rothstein observed
at paragraph 79 as follows:
79 By
contrast, in the present case, the evidence is that the word "Export"
never appears alone but only in conjunction with the word "Molson" or
"Molson's" on bottles or cartons32. On the bottles, the
words "Molson" or "Molson's" and "Export" are of
the same size and of the same appearance. Therefore, I do not see how extensive
sales or advertising expenditures prove that the word "Export" alone
is distinctive of Molson's beer. I have no doubt that the term "Molson
Export" is distinctive but here Molson is attempting to separate the two
words by calling Molson a "house-mark" and "Export" a
"trade-mark". I fail to see the significance of the distinction. In
all the advertising evidence, the effort is to present the words "Molson
Export" and not "Export" alone.
[66]
He
concluded at paragraph 81:
81 As
I have said, I have no difficulty accepting that the words "Molson
Export" are distinctive of a Molson product. However, the evidence does
not lead to the conclusion that the term "Export" of itself is
distinctive of the product.
d) Discussion and
conclusions
(1) The strength of the
additional evidence
[67]
In
my view, the additional evidence, with one exception to be discussed in the
context of the section 12(2) issue, produced on appeal by Matol
is not of sufficient materiality to affect the findings of fact made by the
Registrar and, consequently, is insufficient to displace the standard of
reasonableness (see Wrangler Apparel Corp. v. Timberland Co., at
paragraphs 4 and 7, a decision of my colleague Justice Snider reported at 2005
FC 722 (Wrangler).
[68]
The
search results from Canada 411 is merely supplements already in the record (see
Wrangler, at paragraph 7); the dictionary definition in Persian of jurak
as a hookah would have no impact on the average Canadian consumer as that term
is not found in English or French dictionaries. In support of its allegation
that Matol has continuously used the Mark KARL JURAK since 1994, Matol filed
the affidavit of Robert Bolduc dated April 24, 2004 with Exhibit RB-1
being invoices from Botanical to various distributors and Exhibit RB-2 being a
photocopy of a bottle of the mineral supplement featuring the trade-mark Matol
underneath which was printed the phrase “Karl Jurak formula”.
[69]
The
tribunal was satisfied the evidence was sufficient for purposes or dismissing
Holdings’ objection in the section 30(b) ground. However the tribunal found Mr.
Bolduc’s evidence wanting on the issue of distinctiveness and ruled that there
was an absence of evidence that the Mark had distinctiveness at the relevant
date. The tribunal concluded the Mark Karl Jurak did not serve to distinguish the
wares from the wares and services of others and maintained Holdings’s
opposition on that ground.
(2) The burden of proof issue
[70]
Counsel
for Matol argues Holdings did not discharge its initial evidentiary burden and
the tribunal erred in so finding. He points to the Practice Guidelines of April
26, 2000 which provide, subject to a person being famous, an examiner does not
pursue a section 12(1)(a) objection unless a search of Canadian telephone
directories reveals more than 25 listed names which is not the
case with the surname JURAK and it was also the case the tribunal found Dr.
Karl Jurak not to be a famous person in Canada.
[71]
Counsel
for Matol argues that, in the context of these two findings, it was Holdings’
burden to establish in a preliminary way why the average Canadian consumer
would consider that such a rare and uncommon name as Karl Jurak was primarily
merely the name of an individual.
[72]
I
agree with counsel for Matol that Holdings had an initial evidentiary burden
but one was limited to the first part of the two part test set out in Gerhard Horn, that is, Holdings had
to show Karl Jurak was an individual who died within the last 30 years. It
discharged that evidentiary burden through the affidavit of Anthony Carl Jurak,
a finding which was not contested in this Court.
[73]
Matol’s
counsel would impose a further evidentiary burden on Holdings to adduce
evidence demonstrating the average Canadian would think that the trade-mark
applied for was primarily merely the name of an individual who died within thirty
years. With respect, I disagree. It was Matol’s evidentiary and legal burden to
demonstrate that the words Karl Jurak sought for trade-mark registration were something
else than the name of an individual who had died within the last thirty
years, a fact which Holdings had established.
[74]
This
was also the ruling made by the tribunal. It stated:
·
The
legal burden is upon the applicant to show that its application complies with
the provisions of the Act;
·
However,
there is an initial evidential onus on Holdings to adduce sufficient admissible
evidence from which it could reasonably be concluded that the facts alleged
to support each ground of opposition exists;
·
Once
this initial onus was met, Matol still “has to prove, on a balance of
probabilities, that the particular grounds of opposition should not prevent the
registration of the Mark”.
[75]
With
particular reference to section 12(1)(a), the tribunal ruled:
·
Evidence
that a name would appear at least 25 times in Canadian telephone directories
only gives an indication that such a name could be viewed by the average
Canadian consumer as a name of an individual;
·
Absence
of such proof is not fatal to an opposition based on section 12(1)(a);
·
The
burden was on Matol to show that the Mark was registrable despite the
prohibition under section 12(1)(a);
·
There
was no evidence that would demonstrate that the combination of the given name
of KARL with the surname JURAK would have in the minds of the average consumer
of the wares any other meaning than the wares originate from an individual by
the name KARL JURAK i.e. would be viewed “primarily merely” as a name.
[76]
The
tribunal cited three authorities in support of his finding on the evidentiary
burden. In my opinion, the cases he relied on support his analysis. The principal
authority is a decision of Justice McNair in John Labatt Ltd. v. Molson Co.
(1990), 30 C.P.R. (3d) 293 where the Registrar had framed the evidential burden
on an Opponent in opposition proceeding much in the same way as member Carrière
did here “that where the opponent relies on allegations of fact in support of
its grounds of opposition there is an evidentiary burden to prove those
allegations”.
[77]
Justice
McNair agreed with this allocation of evidentiary burdens where he wrote at
paragraph 11.
Considering
only the decision under appeal, I am unable to agree that it was wrongly made.
The jurisprudence is clear that where an applicant's compliance with paragraph
29(b) of the Trade Marks Act is in issue there is a legal burden on the
applicant to show compliance, and an evidentiary burden on the opponent to lead
evidence in support of the allegations of non-compliance pleaded by him. The
evidential burden is the burden of adducing sufficient evidence to persuade the
trier of fact that the alleged facts are true: see Sopinka and Lederman, The
Law of Evidence in Civil Cases [Butterworths], pp. 395-401; Cross On
Evidence [Butterworths], 6th ed., pp. 107-08; Phipson On Evidence,
13th ed., para. 44-03; McCormick On Evidence [Hornbook Series, West
Publishing Co.], 3rd ed., pp. 946-48; and Thayer, Preliminary Treatise on
Evidence at the Common Law (1898), ch. 9.
[78]
Justice
McNair relied upon Sopinka and Lederman’s first edition of The Law of
Evidence in Civil Cases. An examination of that text at the pages cited by
Justice McNair shows the authors were concerned with burdens of proof where it
is stated the ultimate burden of proof is allocated on the basic premise that
such onus is always on the person who asserts a proposition of fact which is
not self evident.
[79]
In
the case at hand, it was Matol who had to assert and establish the Mark was not
primarily merely the name of an individual but something else. On the basic
principles discussed above, that burden rightfully fell on Matol which did not
discharge it.
[80]
The
case of Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd.
was a case at the Trademark Opposition Board stage (1984), 3 C.P.R. (3d)
325. Paragraph 5 of that case is much to the same effect as stated by Justice
McNair.
[81]
This
point of view is endorsed in Fox on Trade-Marks and Unfair Competition, 3rd
Edition at pages 5-18/5-19 referring to the Gerhard Horn case states:
Under the first branch of the test, there
is an evidential burden, on the opponent in the case of an opposition to show
that there are individuals or families which have the name in question. This
has been shown by entries in phone books in several cities. This evidence is
not determinative of the issue, however, since there is a second step of the
analysis.
[Emphasis mine.]
[82]
For
these reasons, I find no error in the tribunal assessment of the initial
burden.
(3) The subsection 12(2) issue
[83]
In
assessing whether Matol, on a balance of probabilities, has demonstrated the
trade-mark KARL JURAK has been so used in Canada by Matol “as to have become
distinctive at February 5, 1999, the date of the application for its
registration, I have examined the totality of the evidence before me which
includes the three Bolduc affidavits, upon which there was no cross-examination
in the record, and the three affidavits submitted by Holdings including Anthony
Carl Jurak’s cross-examination. This evidence must be assessed against relevant
statutory provisions and the applicable jurisprudence particularly the teachings
in Molson/Labatt. “Use” and “distinctive” are defined in the Act as
follows:
|
2. In this Act,
…
distinctive"
, in relation to a trade-mark, means a trade-mark that actually distinguishes
the wares or services in association with which it is used by its owner from
the wares or services of others or is adapted so to distinguish them;
…
"use"
, in relation to a trade-mark, means any use that by section 4 is deemed to
be a use in association with wares or services;
…
4. (1) A
trade-mark is deemed to be used in association with wares if, at the time of
the transfer of the property in or possession of the wares, in the normal
course of trade, it is marked on the wares themselves or on the packages
in which they are distributed or it is in any other manner so associated
with the wares that notice of the association is then given to the person to
whom the property or possession is transferred.
(2) A
trade-mark is deemed to be used in association with services if it is used or
displayed in the performance or advertising of those services.
(3) A
trade-mark that is marked in Canada on wares or on the packages in which they
are contained is, when the wares are exported from Canada, deemed to be used
in Canada in association with those wares.
|
|
2.
Les définitions qui suivent s’appliquent à la présente loi.
…
«distinctive
» Relativement à une marque de commerce, celle qui distingue véritablement
les marchandises ou services en liaison avec lesquels elle est employée par
son propriétaire, des marchandises ou services d’autres propriétaires, ou qui
est adaptée à les distinguer ainsi.
«emploi
» ou «usage » À l’égard d’une marque de commerce, tout emploi qui, selon
l’article 4, est réputé un emploi en liaison avec des marchandises ou
services.
…
4.
(1) Une marque de commerce est réputée employée en liaison avec des
marchandises si, lors du transfert de la propriété ou de la possession de ces
marchandises, dans la pratique normale du commerce, elle est apposée sur
les marchandises mêmes ou sur les colis dans lesquels ces marchandises sont
distribuées, ou si elle est, de toute autre manière, liée aux
marchandises à tel point qu’avis de liaison est alors donné à la personne à
qui la propriété ou possession est transférée.
(2)
Une marque de commerce est réputée employée en liaison avec des services si
elle est employée ou montrée dans l’exécution ou l’annonce de ces services.
(3)
Une marque de commerce mise au Canada sur des marchandises ou sur les colis
qui les contiennent est réputée, quand ces marchandises sont exportées du
Canada, être employée dans ce pays en liaison avec ces marchandises.
|
[84]
I
conclude that the evidence does not show use in Canada by Matol in
the Mark KARL JURAK had become distinctive at February 5,
1999
for the following reasons.
[85]
First,
the totality of the evidence is unclear if, when and to what extent the Mark
KARL JURAK was associated with the Mark MATOL on Matol’s premier product – its
bottle of the liquid mineral supplement. Reference is made to Mr. Jurak’s
November 2002 affidavit, Exhibits GG-1 to GG-3 where in some cases the Matol bottle
contains no reference to KARL JURAK and in other cases mentions his name as the
inventor in the story of the product exhibited on the label at the back of the bottle.
This latter depiction is also found in Mr. Bolduc’s 2001 affidavit –
Exhibit RB-1.
[86]
These
Exhibits are to be contrasted with Mr. Bolduc’s 2004 affidavit – Exhibit RB-2
which the tribunal had before it, but preferred Mr. Jurak’s Exhibits GG-1 to
GG-3 to conclude that some of the Matol bottles marketed between 1994
and 2002 had no reference at all to Karl Jurak and ruled it was impossible to
ascertain the percentage of sales associated with the Mark as opposed to the
trade-mark Matol and this could not support Matol’s burden to show
distinctiveness. Mr. Bolduc’s November 2007 affidavit did not address these findings
or evidence at all and, in my view, this failure is fatal to its subsection 12(2)
claim.
[87]
The
trade-mark situation, which prevailed in this case, is somewhat similar to that
which was before Justice Rothstein in Molson/Labatt: the existence of a house
mark here MATOL and a trade-mark “KARL JURAK”. Even assuming, which is not the
case, that KARL JURAK always appeared in conjunction with MATOL and both are
the same size and appearance which is also not the case, the sales and
publicity figures put forward by Matol would not prove that the Mark KARL JURAK
is distinctive (see paragraph 79 of Labatt/Molson).
[88]
Third,
reliance on Mr. Bolduc’s 2001 affidavit, which came to the Court via Mr.
Bolduc’s November 2007 affidavit, is problematic because that version, as
pointed out by counsel for Holdings, is considerably at variance with the
versions of his 2001 affidavit which were before the Examiner and before the
tribunal. The discrepancies could not be explained by counsel for the
applicant.
[89]
I
agree with counsel for Holdings that where on the back of the Matol bottle, the
name Karl Jurak appears it did not function.
[90]
According
to Molson/Labatt, Matol’s evidence had to show the trade-mark it was seeking to
register had acquired a dominant secondary or distinctive meaning in
relation to Matol’s wares. In my opinion, after examining all of the evidence,
this evidence is lacking with the result Matol has not made out a case for the
benefit it claims under subsection 12(2) of the Act.
[91]
I
close by briefly addressing two issues raised by Matol. In his written
memorandum, Matol argued that the tribunal erred when it ruled the registration
of KARL JURAK as a trade-mark violated section 12(1)(a). He made his argument
on the rarity of the word JURAK and the secondary meaning of that word. That
argument is easily dismissed because the trade-mark applied for is not JURAK
but KARL JURAK and it was on this basis the tribunal found a violation of
section 12(1)(a), a finding which cannot be said to be unreasonable given the
evidentiary record.
[92]
Finally,
there is no substance to the argument the tribunal’s reasons were not adequate.
These reasons were clearly expressed with both parties knowing exactly why the tribunal
reached the conclusion it did and on what basis.
[93]
For
all of these reasons, this appeal is dismissed with costs.
JUDGMENT
THIS COURT
ORDERS AND ADJUDGES that this appeal is dismissed with
costs.
“François Lemieux”
________________________________
Judge
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