Date: 20130205
Docket: T-734-10
Citation: 2013
FC 124
Toronto, Ontario,
February 5, 2013
PRESENT: The
Honourable Mr. Justice Hughes
BETWEEN:
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THE GOVERNOR AND COMPANY OF
ADVENTURERS OF ENGLAND TRADING
INTO HUDSON'S BAY, ALSO KNOWN
AS
HUDSON'S BAY COMPANY
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Applicant
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and
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BEYMEN MAGAZACILIK ANONIM
SIRKETI
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Respondent
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REASONS FOR JUDGMENT
AND JUDGMENT
[1]
This
is an appeal taken under the provisions of section 56 of the Trade-Marks Act,
RSC 1985, c. T-13, from a decision of a Member of the Trade-Marks Opposition
Board dated the 24th day of February 2010, wherein the opposition
made by the Applicant Hudson’s Bay to the application made by the Respondent,
application number 1,230,186, to register a trade-mark indexed as BEYMEN CLUB
B, was rejected.
[2]
For
the reasons that follow I will allow the appeal in part; some of the wares and
services will be removed from the application.
THE APPLICATION
[3]
Particulars
of the trade-mark sought to be registered in application 1,230,186 include the
following:
Applicant: Beymen
Magazacilik Anonim Sirketi
of Istanbul, Turkey
The application
was assigned to the above entity from the original applicant.
Boyner Holding
Anonim Sirketi
of Istanbul, Turkey
Filing
Date: 14
September, 2004
The application
was filed on the basis of proposed use in Canada; therefore, this filing
date becomes important for some of the considerations at issue.
Trade-mark: The
trade-mark is described for indexing purposes as CLUB BEYMEN CLUB B
but is a combination of words and design as follows:
Wares
and Services: Registration is sought in respect of a vast
array of wares and services, in particular:
WARES:
(1) Processed or unprocessed leather and hides;
artificial leather, leather for lining; goods made of leather, imitations of
leather or other materials and not included in other classes, namely hand bags,
sport bags, briefcases, umbrellas, canes, walking sticks, wallets, travelling
trunks and suitcases, portfolio, sling bags for carrying infants, infant
carriers, trunks and boxes of leather for kids, cases for cheque book, card
cases, empty toilet bags, empty instrument bags, purses, backpacks, shopping
and school bags; parasols, whips, harness, saddlery, saddle straps and stirrup
leathers; gut for making sausages; artificial guts for making sausages, salami;
furniture for bedrooms, for kitchens, for dining rooms, for living rooms;
display stands and showcases; filing cabinet; medicine cabinets; draughtsman's
tables; writing desks; dinner wagons; deck chairs; vice benches not of metal;
work benches; counters, chests; post boxes; towel dispensers, fixed, not of
metal; bed mattresses, spring mattresses, air mattresses and pillows not for
medical purposes, hydrostatic beds not for medical purposes, sleeping bags for
camping, camping beds, sea beds; mirrors; beehives, artificial wax combs, wax
comb foundations; infant seats, infant carriers, playpens for babies, cradles,
infant walkers; registration plates not of metal for vehicles, signboards,
boards of plastic or wood; wood casks, barrels and drums; fluid covers; boxes;
containers for transportation, chests, transport pallets; plastic package
covers; plastic casks, barrels and drums, depots, boxes; picture frames,
mouldings for picture frames, picture frame brackets; curtain hook and eye,
curtain rings, curtain hooks, curtain rods; goods made of wood and substitutes
of wood or synthetic material, handles and buttons for pots & pans; clothes
pins; bottle caps not of metal, corks for bottles, cork bands; rivets, nails,
screws, pins, cable and pipe clips not of metal; costume stands, covers for
clothes; goods of art made by wood, wax, bees wax, plastic or/and plaster,
included in this class, namely sculptures, statues, bibelots, busts,
mannequins, decorative wall plaques, stuffed animals; baskets; bakers
breadbaskets, wicker basket, fishing baskets; pet kennels, nesting boxes for
household pets, pet cushions; portable ladders of wood or plastic, movable
ladders; pulleys and bobbins of wood or plastic to wrap up; valves not of
metal, taps for casks not of metal; identity cards, identification bracelets,
identity plates not of metal; armatures for window and doors not of metal,
locks; parts and fittings for furniture not of metal, namely rails for drawers,
furniture casters; curtains; bamboo curtains, bead curtains for decoration;
clothing made of cotton, tricot, jean, leather, namely skirts, sweatshirts,
T-shirts, camisoles, underwear, pants, shorts, bermudas, skirts, dresses,
robes, nightwear, socks, jackets, coats, jumpers, ascots, ties, bow ties,
stoles, shawls, scarves, boas (necklets), gloves; footwear, namely shoes,
boots, half-boots, rain boots, ski boots, special sporting/gymnastic shoes,
sandals, slippers, lace boots, sports shoes and studs for sports shoes, shoe
parts namely heelpieces, heels, footwear uppers; headgear, namely caps, hats,
berets, skull caps, hoods, knit hats, rain hats, bandannas, headbands
(clothing), clothing for babies: babies' diapers of textile, babies' napkins of
textile, layettes (clothing), innerwear for babies, nylon diapers, bibs (except
paper); ties, neckties, mufflers, neck scarves, shawls, scarves, sarong,
collars for dresses, bandannas, maniples, muffs, wristbands, head bands; belts,
suspenders, braces for clothing, garters.
SERVICES:
(1) Advertising wares and services for others;
business management services; business intermediary services for the sale and
purchase of goods and services; auction services; classified advertising
services; mail order sales; retail department store services; retail sale of
clothing, cosmetics, food, home entertainment electronics, house wares,
jewellery, lingerie, sporting goods and toys by means of a global computer
network, namely Internet; promoting the sale of goods and services for others
through the distribution of printed material and promotional contests, by
providing coupon programs pertaining to a line of food products, by providing
advertising space in a periodical; business information services; business
information services; on-line retail department stores services; retail
convenience stores services; on-line retail convenience stores; computerized
on-line ordering featuring general merchandise and general consumer goods;
providing an on-line commercial information directory; providing a searchable
database in the field of business information available via a global computer
network; dissemination of advertising for others via an on-line electronic
communications network; providing a searchable on-line database featuring goods
and services of others in the field of finances, insurance, banking, real
estate and vehicles; providing a searchable on-line advertising guide featuring
the goods and service of other on-line vendors; database management services;
computer services, namely, providing directories for telephone numbers,
business addresses, electronic mail addresses, network home page addresses,
addresses and telephone number of people, places and organizations; providing
multiple user access to a global computer network; electronic transmission of
data and documents concerning personal and professional information via
computer terminals; providing an interactive database featuring an
automatically updating travel planner; providing an interactive database
featuring automatically updating address book, personal planner, data reminder
and alumni and professional group links all via a global computer network;
providing temporary use of on-line non-downloadable software for event
scheduling and for managing, viewing and editing address books and other
personal and professional contact information; computer services, namely,
providing search engines for locating information, resources, and the websites
of others on a global computer network; providing a wide range of general
interest information via a global computer network; providing electronic
greeting cards via a global computer network; insurance service; accident,
life, fire, health and marine insurance underwriting, insurance investigation,
actuarial, insurance consultancy; financial and monetary business management;
banking, financial management, financial analysis, financial sponsorship,
financial information, factoring, leasing, issuance of credit cards for
shopping by instalment, exchanging money; real estate affairs, real estate
brokers, apartment house management, services; real estate appraisal services;
antique money appraisal, antique appraisal, jewellery appraisal, stamp
appraisal, art appraisal; customs brokerage.
[4]
The
application was examined by an Examiner in the Trade-Marks Office.
Clarification was sought in respect of the description of some of the wares. In
a report dated 16 March, 2005, the examiner requested that the word BEYMEN be
translated into English or French. In response dated July 12, 2005, the
applicant’s trade-mark agents advised that BEYMEN is a coined word and does not
have any translation into English or French.
[5]
The
Examiner allowed the application to be advertised for Opposition. It was
advertised on 21 September, 2005, whereupon it was opposed by Hudson’s Bay, the
Applicant in this appeal.
THE OPPOSITION
[6]
Hudson’s
Bay opposed the application for registration, raising the following grounds in
its Statement of Opposition dated 5th day of January, 2006:
2. The grounds of opposition are as follows:
a) Pursuant to Sections
38(2)(b) and 12(1)(d) of the Trade-marks Act, the said trade-mark is not
registerable in that it is confusing with the opponent’s registered
trade-marks, namely:
(Forty-one registered trade-marks were listed, all
owned by Hudson’s Bay, all of which were or contained the words Bay or The Bay
or Baie or La Baie, including Bay Club, for a wide variety of wares such as
those found in a retail department store and services such as that of a retail
department store.)
b) Pursuant to Sections
38(2)(c) and 16(3)(a) of the Trade-marks Act, the applicant is not the person
entitled to registration of the trade-mark in that as of the filing date of the
application, namely, September 14, 2004, the said trade-mark was confusing with
the opponent’s trade-marks, namely:
(The same forty-one registered trade-marks were
listed)
c) Pursuant to Section
38(2)(a) of the Trade-marks Act, the application does not conform to the
requirements of Section 30 of the Trade-marks Act in that the applicant could
not have been satisfied that it is entitled to use the trade-mark in Canada for
the wares and services set out in the application therefor, in view of the
prior adoption, use and registration by the opponent of its trade-marks as set
out in paragraphs 2(a) and (b) above.
d) Pursuant to Section
38(2)(d) of the Trade-marks Act, the said trade-mark is not distinctive of the
applicant’s wares and services, nor is it adapted to distinguish the
applicant’s wares and services from those of the opponent, for the reasons set
out in paragraphs 2(a), (b) and (c) above.
[7]
The
applicant filed a Counter-Statement simply denying these allegations.
[8]
Hudson’s
Bay filed copies of the forty-one registrations as evidence, but filed no other
evidence.
[9]
The
applicant (Respondent in these proceedings) filed as its evidence an affidavit
of a law student, Dinu, to which was attached, as exhibits, a print out of
information from the Trade-Marks Office web site as to seventy-eight registered
trade-marks, all owned by persons other than Hudson’s Bay or the applicant. All
of these registered trade-marks included BAY in some form. There was no
cross-examination upon this affidavit.
[10]
Only
Hudson’s Bay filed a written argument. Only Hudson’s Bay appeared and made
argument, through Counsel, at an oral hearing.
THE
OPPOSITION MEMBER’S DECISION
[11]
On
February 24, 2010, a Member of the Trade-Marks Opposition Board gave a written
decision rejecting the Opposition.
[12]
The
Member found, and I agree, that regardless how many of the grounds for
opposition may be couched, they are premised on the likelihood of confusion
between the trade-mark sought to be registered and a variety of Hudson’s Bay’s registered trade-marks. The date for making such a determination was held to
be the date of the Member’s decision, February 24, 2010.
[13]
The
Member correctly noted that Hudson’s Bay had not submitted any evidence as to
actual use by it, or advertisement by it, of any of its registered trade-marks
that it had put in issue. The Member also noted that the applicant had put in
no evidence as to its promotion or use of the trade-mark sought to be
registered.
[14]
The
Member analyzed the evidence having regard to the provisions of subsection 6(5)
of the Trade-Marks Act and concluded; particularly in the absence of
evidence as to use or promotion by either party that:
conclusion re likelihood of confusion
48 When applying the test for confusion, it
is the totality of the circumstances that will dictate how each consideration
must be treated. I have considered that it is a matter of first impression and
imperfect recollection. I have also had regard to all the surrounding
circumstances including those enumerated in s. 6(5) of the Act. The basic issue
to be decided is whether a consumer who has a general and not precise
recollection of the Opponent’s Marks will, upon seeing the Applicant’s Mark be
likely to think that the parties’ wares and services originate from a common
source. I conclude that the Applicant has satisfied its onus to show that on a
balance of probabilities there is no reasonable likelihood of confusion between
the Mark in association with the applied-for wares and services and the
Opponent’s Marks. This is primarily because of the Mark’s inherent
distinctiveness and the differences existing between the parties’ marks which
outweigh the other factors in the present circumstances.
[15]
The
Member dismissed the grounds of opposition based on section 16(3)(a) of the Trade-Marks
Act since no evidence of previous use or making known by Hudson’s Bay of
the various registered trade-marks had been provided.
[16]
Further,
the Member dismissed the grounds of opposition based on subsection 38(2)(a) of
the Trade-Marks Act on the basis that such a ground should only succeed
in exceptional circumstances.
[17]
Lastly,
the Member dismissed the grounds of opposition based on subsection 38(2)(d)of
the Trade-Marks Act in that Hudson’s Bay filed no evidence to show that
its trade-mark had become sufficiently well known to negate the distinctiveness
of the trade-mark as applied for.
THE APPEAL
[18]
Hudson’s
Bay has appealed to this Court from the Member’s decision under the provisions
of section 56 of the Trade-Marks Act. In accordance with the Federal
Courts Rules, SOR/98-106, Rule 300(d), such appeals are to be proceeded
with as an application.
[19]
In
the Notice of Application, Hudson’s Bay has raised the following grounds of
appeal, stating that the Registrar (Member) erred in finding that:
a. as to the Section
38(2)(b) and Section 12(1)(d) of the Trade-marks Act (“the Act”) issue that the
Respondent has satisfied its onus on the balance of probabilities that there is
no reasonable likelihood of confusion between the Respondent’s trade-mark and
that of the Applicant;
b. as to the Section
38(2)(c)and Section 16(3)(a) of the Act issue that the Applicant failed to meet
its initial burden and by dismissing this ground;
c. as to the Section
38(2)(a) and Section 30(i) of the Act that that ground should be dismissed; and
d. as to the Section
38(2)(d) and Section 2 ground that the Applicant had failed to show that its
marks relied upon had become sufficiently known so as to negate the
distinctiveness of the Respondent’s mark.
[20]
Subsection
56(5) of the Trade-Marks Act is unusual in that it provides that, in
addition to any evidence that was adduced in the Opposition proceedings,
further evidence may be adduced on appeal and the Federal Court may exercise
any discretion vested in the Registrar.
[21]
In
this case, Hudson’s Bay has provided further evidence by way of two affidavits.
The first is the affidavit of Patrick Dickinson, Senior Vice President,
Marketing, of Hudson’s Bay, sworn April 15, 2012. The second is the affidavit
of Anthony Benevides, a law clerk in Hudson’s Bay’s solicitors’ office, sworn
June 7, 2012. There was no cross-examination upon either affidavit.
[22]
The
Dickinson affidavit, paragraph 2, attests that Hudson’s Bay is one of Canada’s leading fashion retailers with approximately 92 stores across the country; with
flagship stores located in larger cities. He testified that for the last 30
years The Bay has continuously advertised its services across Canada through an extensive circular delivery program to homes and businesses. He further
testified that over 50 million dollars has been spent by The Bay on printed
publications which have been circulated in Canada annually since the year 2000,
and that between 10 and 25 million dollars has been spent by The Bay on
television, radio and outdoor advertising annually since the year 2000. Samples
of the print and broadcast materials were provided which display some of the
sorts of wares offered for sale by it in Canada.
[23]
The
Benevides affidavit addresses many of the registered trade-marks put in
evidence by the applicant in Opposition proceedings. Of those seventy-eight
registrations, twenty-two had been removed from the register, or amended, as a
result of removal proceedings instituted by Hudson’s Bay or by failure to
renew. Other removal proceedings are ongoing.
[24]
The
Respondent has filed no evidence in this appeal, nor has the Respondent filed
any written argument nor has the Respondent appeared at the hearing of the
appeal.
[25]
The
nature and quality of this new evidence is important. If it is significant and
addresses evidence not before the Board, then this Court is entitled, under the
provisions of subsection 56(5) of the Trade-Marks Act, to consider the
matter de novo.
[26]
I
repeat what Justice Manson wrote recently in CEG License Inc v Joey Tomato’s
(Canada) Inc, 2012 FC 1541 at paragraphs 14 to 16:
14 Given new evidence was filed by the opponent
in this matter that was not before the Opposition Board, the Court has an
unfettered discretion to consider the matter and come to its own conclusion as
to the correctness of the Board's decision, if the new evidence is significant
and would materially affect the underlying decision: (Bojangles' International,
LLC v Bojangles Café Ltd, 2006 FC 657 [Bojangles]; Mattel, Inc v 3894207 Canada
Inc, 2006 SCC 22 at paras 35, 37)
15 However, where no new significant evidence is
added on appeal, the standard of review is reasonableness simpliciter (Molson
Breweries v John Labatt Ltd, [2000] F.C.J. No. 159, [2000] 3 FC 145; Novopharm
Ltd v AstraZeneca AB, 2001 FCA 296).
16 Thus, the real question for consideration by
the Court is the nature and quality of the new evidence, and whether it
materally affects the decision below, so that the standard is correctness, or
whether the new evidence is not significant and would not materally affect the
decision below, such that the standard of review is reasonableness and
considerable deference should be given to the decision below (Telus Corp v
Orange Personal Communications Services Ltd, 2005 FC 590 at 397; aff'd 2006 FCA
6 (FCA)).
[27]
I
am satisfied that the evidence of Dickenson provides evidence as to use and
advertising of the various THE BAY and LA BAIE trade-marks by Hudson’s Bay in
Canada, and that the affidavit of Benevides significantly impacts upon the
evidence of the law student filed by the applicant with the Board.
[28]
In
considering the matter de novo I will use the date of my decision as the
date for determining the issue of confusion just as the Member determined that
the date of her decision was the relevant date for this purpose, since there
has been significant new evidence put before me on this appeal, the date of my
determination should be the relevant date.
[29]
Since
the date of the Member’s decision, February 24, 2010, there has been an
important decision released by the Supreme Court of Canada, Masterpiece Inc.
v Alavida Lifestyles Inc., [2011] 2 S.C.R. 387 (Masterpiece) as well as
other decisions including the decision of Justice Harrington of this Court in Movenpick
Holding AG v Exxon Mobil Corporation, 2011 FC 1397 (Movenpick).
[30]
Given
the significant new evidence and significant new jurisprudence it is clear that
the matter must be addressed by this Court de novo.
BURDEN
[31]
The
initial burden rests upon a party seeking to register a trade-mark to persuade
the Registrar that the trade-mark is registrable. If the registrar is as
persuaded, the application is advertised for opposition. A party seeking to
oppose the registration of the trade-mark bears the evidential burden to
persuade the Registrar that the grounds of opposition are sustainable and
preclude registration of the trade-mark.
[32]
I
repeat what Justice Harrington wrote at paragraph 7 of Movenpick:
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 Movenpick 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)).
[33]
Thus,
on this appeal, the burden rests upon The Bay to persuade the Court, on the
evidence and pertinent jurisprudence, that the grounds that it asserts in
opposing the registration of the trade-marks at issue, are sustainable.
CONFUSION
[34]
The
essential issue is whether the use by The Bay of its registered trade-marks
which include the words BAY or BAIE alone or in combination with other words or
designs, registered for a variety of wares and services, essentially the
services associated with a department store and wares sold in such stores, is
likely to be confusing with the trade-mark sought to be registered here.
[35]
I
find that the essential part of the trade-mark sought to be registered is the
word BEYMEN. The rest of the trade-mark adds little to this word. The part
likely to be remembered by the average consumer is BEYMEN.
[36]
Thus
the issue is that of likelihood of confusion between BAY or BAIE and BEYMEN.
The Trade-Marks Act, section 6, in particular subsection 6(2) and 6(5)
provide the framework within which confusion is to be considered. I repeat what
Justice Harrington wrote at paragraphs 40 to 42 of Movenpick:
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.
[37]
The
approach to the issue of confusion has been established by the Supreme Court of
Canada in Masterpiece, it is a matter of first impression in the mind of
a casual consumer, somewhat in a hearing, with an imperfect recollection, and
without close examination. I repeat what Justice Rothstein, for the Court,
wrote at paragraph 40:
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.
Binnie J. referred with approval to the words of Pigeon J. in Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp., [1969] S.C.R. 192,
at p. 202, to contrast with what is not to be done - a careful examination of competing
marks or a side by side comparison.
[38]
In
the same decision Justice Rothstein instructed as to how the trade-mark should
be considered. The Court should not tease out each portion of the mark, a mark
must be considered as a whole, as a matter of first impression. The dominant
portion which affects the overall impression of the average consumer should not
be ignored.
[39]
He
wrote at paragraphs 83 and 84:
83 Neither
an expert, nor a court, should tease out and analyze each portion of a mark
alone. Rather, it should consider the mark as it is encountered by the consumer
- as a whole, and as a matter of first impression. In Ultravite Laboratories Ltd. v. Whitehall Laboratories Ltd., [1965] S.C.R. 734,
Spence J., in deciding whether the words "DANDRESS" and
"RESDAN" for removal of dandruff were confusing, succinctly made the
point, at pp. 737-38: "[T]he test to be applied is with the average person
who goes into the market and not one skilled in semantics."
84 However,
considering a trade-mark as a whole does not mean that a dominant component in
a mark which would affect the overall impression [page421] of an average
consumer should be ignored: see esure
Insurance Ltd. v. Direct Line Insurance plc, 2008 EWCA Civ 842,
[2008] R.P.C. 34, at para. 45, per Arden L.J. This is
because, while the consumer looks at the mark as a whole, some aspect of the
mark may be particularly striking. That will be because that aspect is the most
distinctive part of the whole trade-mark. In this case, contrary to the view of
the expert, the most distinctive and dominant component of the marks in issue
is in all cases the word "Masterpiece" because it provides the
content and punch of the trade-mark. The word "Living" is bland by
comparison.
[40]
In
the present case the Court must consider the dominant characteristics of the
relevant marks which is whether BAY or BAIE would be likely to be confused by
the average consumer of department store wares and services with BEYMEN, given
an imperfect recollection.
[41]
The
nature of the confusion has been established long ago by the Supreme Court of
Canada in Benson & Hedges (Canada) Ltd. v St. Regis Tobacco Corp.,
[1969] S.C.R. 192 where Ritchie J. for the majority wrote at page 196:
I have underlined the words “would be likely to lead
to the inference” as it appears to me to be clear that in opposing an
application for registration, the holder of a trade mark which is already
registered is not required to show that the “mark” which is the subject of the
application is the same or nearly the same as the registered mark, it being
enough if it be shown that the use of this mark would be likely to lead to the
inference that wares associated with it and those associated with the
registered trade mark were produced by the same company.
[42]
Thus
the test for confusion is not that the “average consumer” confuses one for
the other, rather, it is that the average consumer is likely to infer that one
is produced by the other. In other words it is not substitutional error
but relationship error.
[43]
In
the present case I am deliberately avoiding a slavish conformity to section
6(5) of the Trade-Marks Act, these provisions are guidelines and not a
rigorous formula to be followed in every case:
i.
The
Bay’s trade-marks BAY and BAIE have a long history of substantial use and
advertising throughout Canada. BEYMEN has none.
ii.
In
many instances the wares and services are closely related and in some cases
identical.
iii.
Phonetically
and visually BAY or BAIE and BEYMEN are very close. A logical inference is that
BEYMEN is a menswear branch of the BAY.
iv.
There
have been no instances of actual confusion. BEYMEN filed no evidence that it
has ever been on the Canadian market.
v.
In
the Opposition proceedings the Respondent (trade-mark applicant) filed some
evidence. It was a computer print and taken by a stagiaire in the Respondent’s
agent’s office of what apparently was posted on the Canadian Trade-Marks Office
website as to registered trade-marks which included the word BAY or the like.
This evidence is of limited value. The affidavit of Benevides shows that a good
portion of these registrations have been abandoned or removed from the
register. There is no evidence as to the use, or extent of use of any of them.
I afford this evidence of little weight (see e.g. Del Monte Corp. v Welch
Foods Inc. (1992), 44 CPR (3d ) 205 per Strayer J. at paras
9-10) .
[44]
I
am satisfied that, given the jurisprudence, the average consumer, somewhat in a
hurry, with imperfect recollection would be likely to be confused in thinking
that BEYMEN was in some way connected with The Bay and its BAY trade-marks in
respect of department store services and like services and wares sold in such
stores including those listed in The Bay’s trade-mark registrations and
illustrated in the new evidence filed with this Court.
[45]
I
have the sense that the wares and services as extensively listed in the
application at issue reflect wares and services as listed have been derived
from some sort of classification system, whether Turkish or international.
Unfortunately, Canada has not yet adopted a classification system for wares and
services. Canada still uses the old fashioned individual itemization system for
each of the wares and services for which registration is sought.
[46]
In
the present case the Court must endeavour to sort out, from the large number of
wares and services listed in the application, those in respect of which
confusion with BAY or BAIE is likely. In this regard I am grateful to the
assistance and candour of Applicant’s Counsel as well as the resources of the
Court. As a result I have determined that only the following wares and services
should remain in the application at issue:
WARES: (1)
Processed or unprocessed leather and hides; artificial leather, leather for
lining; whips, harness, saddlery, saddle straps and stirrup leathers; gut for
making sausages; artificial guts for making sausages, salami; beehives,
artificial wax combs, wax comb foundations; registration plates not of metal
for vehicles, wood casks, barrels and drums; fluid covers; transport pallets;
plastic package covers; pulleys and bobbins of wood or plastic to wrap up;
valves not of metal, taps for casks not of metal; identity cards,
identification bracelets, identity plates not of metal.
SERVICES: Business
management services; business intermediary services for the sale and purchase
of goods and services; auction services; classified advertising services; by
providing coupon programs pertaining to a line of food products, by providing
advertising space in a periodical; business information services; business
information services; providing an on-line commercial information directory;
providing a searchable database in the field of business information available
via a global computer network; providing a searchable on-line database
featuring goods and services of others in the field of finances, insurance,
banking, real estate and vehicles; providing a searchable on-line advertising
guide featuring the goods and service of other on-line vendors; database
management services; computer services, namely, providing directories for
telephone numbers, business addresses, electronic mail addresses, network home
page addresses, addresses and telephone number of people, places and
organizations; providing multiple user access to a global computer network;
electronic transmission of data and documents concerning personal and
professional information via computer terminals; providing an interactive
database featuring an automatically updating travel planner; providing an
interactive database featuring automatically updating address book, personal
planner, data reminder and alumni and professional group links all via a global
computer network; providing temporary use of on-line non-downloadable software
for event scheduling and for managing, viewing and editing address books and
other personal and professional contact information; computer services, namely,
providing search engines for locating information, resources, and the websites
of others on a global computer network; providing a wide range of general
interest information via a global computer network; providing electronic
greeting cards via a global computer network; insurance service; accident,
life, fire, health and marine insurance underwriting, insurance investigation,
actuarial, insurance consultancy; financial and monetary business management;
banking, financial management, financial analysis, financial sponsorship,
financial information, factoring, leasing, exchanging money; real estate
affairs, real estate brokers, apartment house management, services; real estate
appraisal services; antique money appraisal, antique appraisal, jewellery
appraisal, stamp appraisal, art appraisal; customs brokerage.
[47]
Therefore,
I will allow the appeal in part and return the application to the Trade-marks
Office for further processing there, including the request for and reception o
any statement as to use in Canada restricted to the wares and services as set
out above.
[48]
I
will not award costs. The Bay has been successful in part only. It has
furnished evidence in appeal which could have been provided in the Opposition
proceeding. The Respondent has taken no active role in the appeal. It is
located in Turkey and there is no evidence that it has assets in Canada, costs may be unrecoverable in any event.
JUDGMENT
FOR
THE REASONS PROVIDED:
THIS COURT’S
JUDGMENT is that:
1.
The
appeal is allowed in part;
2.
Trade-mark
application no. 1,230,186 is returned to the Trade-Marks Office for further
processing with the wares and services restricted to the following:
WARES: (1)
Processed or unprocessed leather and hides; artificial leather, leather for
lining; whips, harness, saddlery, saddle straps and stirrup leathers; gut for
making sausages; artificial guts for making sausages, salami; beehives,
artificial wax combs, wax comb foundations; registration plates not of metal
for vehicles, wood casks, barrels and drums; fluid covers; transport pallets;
plastic package covers; pulleys and bobbins of wood or plastic to wrap up;
valves not of metal, taps for casks not of metal; identity cards, identification
bracelets, identity plates not of metal.
SERVICES: Business
management services; business intermediary services for the sale and purchase
of goods and services; auction services; classified advertising services; by
providing coupon programs pertaining to a line of food products, by providing
advertising space in a periodical; business information services; business
information services; providing an on-line commercial information directory;
providing a searchable database in the field of business information available
via a global computer network; providing a searchable on-line database
featuring goods and services of others in the field of finances, insurance,
banking, real estate and vehicles; providing a searchable on-line advertising
guide featuring the goods and service of other on-line vendors; database
management services; computer services, namely, providing directories for
telephone numbers, business addresses, electronic mail addresses, network home
page addresses, addresses and telephone number of people, places and
organizations; providing multiple user access to a global computer network;
electronic transmission of data and documents concerning personal and
professional information via computer terminals; providing an interactive database
featuring an automatically updating travel planner; providing an interactive
database featuring automatically updating address book, personal planner, data
reminder and alumni and professional group links all via a global computer
network; providing temporary use of on-line non-downloadable software for event
scheduling and for managing, viewing and editing address books and other
personal and professional contact information; computer services, namely,
providing search engines for locating information, resources, and the websites
of others on a global computer network; providing a wide range of general
interest information via a global computer network; providing electronic
greeting cards via a global computer network; insurance service; accident,
life, fire, health and marine insurance underwriting, insurance investigation,
actuarial, insurance consultancy; financial and monetary business management;
banking, financial management, financial analysis, financial sponsorship,
financial information, factoring, leasing, exchanging money; real estate
affairs, real estate brokers, apartment house management, services; real estate
appraisal services; antique money appraisal, antique appraisal, jewellery
appraisal, stamp appraisal, art appraisal; customs brokerage.
3.
No
costs are allowed.
“Roger
T. Hughes”
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