Date:
20130426
Dockets: T-1621-12
T-1622-12
Citation:
2013 FC 424
Toronto, Ontario,
April 26, 2013
PRESENT: The
Honourable Mr. Justice Campbell
BETWEEN:
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BACKRACK INC.
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Applicant
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and
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STK, LLC
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Respondent
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REASONS FOR ORDER
AND ORDER
I. Introduction
[1]
The
Applicant is a manufacturer of truck accessories in Canada, and the Respondent
is a competitive manufacturer in the United States. Under appeal pursuant to
subsection 56(1) of the Trade-marks Act, RSC 1985, c T-13 (the Act)
is a decision of the Registrar of Trade-marks’ delegate (the Registrar) dated
May 3, 2012 in which, as a result of the Respondent’s opposition, the
registration of the following two separate marks filed by the Applicant were
rejected: the trade-mark BACKRACK associated with the wares (Mark #1) and the
trade-mark BACKRACK and Design based on use in association with the wares (Mark
#2). In the decision under appeal the Registrar found that “there was no
significant difference between the two opposition proceedings” and, thus, the
fate of the application with respect to Mark #1 “will also be the fate” of the
application with respect to Mark #2 (Decision, para 9).
[2]
Further,
while the Registrar’s rejection of the two applications for registration are
presently being appealed in separate Applications, because of the
inter-relationship of the rejections as found by the Registrar, both
Applications will be concluded with this single set of reasons and orders based
thereon.
[3]
The
Respondent has not participated in the present appeals. As a result, the
Applicant’s arguments on appeal are unanswered.
II. The
Registration Proceedings
[4]
The
application for registration of Mark #1, being Canadian Trade-Mark Application
No. 1,380,622, was filed on January 24, 2008 for the trade-mark BACKRACK based
on use in Canada since at least 1989 in association with the following wares
and services:
Pick-up truck racks,
namely, headache racks designed to protect the cab and mount a variety of
accessories, namely, light, antenna and toolbox brackets.
Distribution services
in the filed of automotive parts.
[5]
The
application for registration of Mark #2, being Canadian Trade-Mark Application
1,388,234, was filed on February 13, 2008 for the trade-mark BACKRACK and
Design based on use of the trade-mark in Canada since at least February 1994 in
association with the same wares and services as stated for Mark #1. Mark #2
consists of a drawing and the following description: “The mark consists of the
words BACK RACK as applied to a pick-up truck rack as shown in the drawing.”
III. The
Challenge to the Registrar’s Decision
[6]
With
respect to the Applicant’s services, the Registrar allowed the
registration of both Marks. With respect to the Applicant’s wares, the
Registrar rejected the Respondent’s opposition on all but two grounds:
i.
Each
Mark was “clearly descriptive” with respect to wares pursuant to s. 12(1)(b) of
the Act; and
ii.
Each
Mark was not distinctive of the Applicant’s wares pursuant to s. 2 of the Act.
In the present Applications the Applicant
argues that the Registrar’s findings with respect to both grounds are incorrect
or otherwise unreasonable.
A. The
Registrar’s Finding Pursuant to s. 12(1)(b) of the Act
[7]
The
Registrar’s line of reasoning in reaching the finding that Mark #1 is clearly
descriptive with respect to wares is found in paragraphs 13 to 15, and 22 to 27
of the decision:
The applied for wares
in the present case are comprised of "pick-up truck racks, namely,
headache racks designed to protect the cab and mount a variety of accessories,
namely, light, antenna and toolbox brackets." The evidence shows that a
headache rack is an accessory for pickup trucks that protects the rear window
of the cab. The headache rack is located on the front of the truck bed behind
the cab. It can also be used to secure cargo or accessories thereto.
The issue as to
whether the Mark is clearly descriptive or deceptively misdescriptive [sic] of
the character or quality of the wares must be considered from the point of view
of the average purchaser of the wares. Further, "character" means a
feature, trait or characteristic of the wares and "clearly" means
"easy to understand, self-evident or plain" [see Drackett Co of
Canada Ltd v American Home Products Corp (1968), 55 CPR 29 (Ex Ct) at 34]. The
Mark must not be dissected into its component elements and carefully analyzed
but must be considered in its entirety as a matter of immediate impression
[see Wool Bureau of Canada Ltd v Registrar of Trade Marks (1978), 40 CPR
(2d) 25 (FCTD) at 27-8; Atlantic Promotions Inc v Registrar of Trade Marks (1984),
2 CPR (3d) 183 (FCTD) at 186]. Finally, the purpose of the prohibition in
section 12(1)(b) is to prevent any single trader from monopolizing a term that
is clearly descriptive or common to the trade, thereby placing legitimate
traders at a disadvantage [Canadian Parking Equipment Ltd v Canada
(Registrar of Trade-marks) (1990), 34 CPR (3d) 154 (FCTD) at para. 15].
It is also important
to note that the fact that a particular combination of words does not appear in
any dictionary does not prevent a trade-mark from being found to be clearly
descriptive. If each portion of a mark has a well-known meaning in English or
French, it may be that the resultant combination would be contrary to section
12(1)(b) of the Act [see Oshawa Group Ltd v Canada (Registrar of Trade-Marks)
(1980), 46 CPR (2d) 145 (FCTD) at 149].
[…]
The question therefore
remains whether, on first impression, BACKRACK describes, in a manner that is
easy to understand, a certain characteristic of the Applicant's wares.
I agree with the
Applicant that the meaning of the term BACKRACK on its own, is not
self-evident. Further, there is no evidence of any dictionary definition for
the term "backrack" as one word.
The issue, however, is
whether the Mark is clearly descriptive of the character or quality of the
applied for wares. The applied for wares are pick-up track racks, namely
headache racks designed to protect the cab and mount a variety of accessories,
namely, light, antenna and toolbox brackets. The evidence shows that the
headache racks are designed to be installed at the back of the cab of the
pick-up truck.
In view that the
applied for wares are identified as a type of rack, the word "rack"
is clearly descriptive of the applied for wares. The question therefore
becomes whether the addition of the word "back" renders the Mark as a
whole not clearly descriptive. One must ask the question "what as a
matter of first impression does BACKRACK tell the relevant consumer about the
Applicant's headache racks"? Does the term "BACKRACK" as a whole
clearly describe a feature or characteristic material to the wares?
The evidence shows
that the Applicant's headache racks are designed to be installed at the back of
the cab of the pick-up truck. In fact, the evidence of Mr. Jayne is that the
Applicant was compelled by law in February 1994 to implement a design change to
its headache rack to clear the area in the rear window where a new brake light
was now required to be placed on pickup trucks. As a result, all BACKRACK
headache racks have since split the coined term BACKRACK into two portions in
order to provide the legally mandated space for the brake light as shown in the
BACKRACK and Design mark (…).
The location of the
wares on the back of the cab of a pick-up truck is therefore critical to the
function of the wares. As a result, I find that the term BACKRACK is a
self-evident description of a feature, trait or characteristic of the
Applicant's headache racks (i.e. it clearly describes the Applicant's rack as
one for the back of the cab of one's pick-up truck). I also find that the term
BACKRACK and Design, when sounded, is clearly descriptive of a characteristic
of the Applicant's headache racks for similar reasons. The section 12(1)(b) ground of
opposition is therefore successful with respect to the wares for both of the
applied for marks.
[8]
In
my opinion, the Registrar was correct in law that in considering whether Mark
#1 is descriptive, the Mark must not be dissected into its component elements
and carefully analyzed, but must be considered in its entirety as a matter of
immediate impression. Further, I find no error in the Registrar’s key finding
of fact that the meaning of the term BACKRACK, on its own, is not self-evident.
However, in my opinion the Registrar’s reasons cited above clearly reveal a
level of dissection of Mark #1 into its component elements warned against by
the Registrar in the very same process of analysis. It is well accepted in law
that a s. 12(1)(b) analysis requires that a mark be considered in its entirety
as a matter of immediate impression from the position of everyday users of the
wares. In my view, the Registrar’s analysis went beyond this level of analysis,
thus rendering the s. 12(1)(b) finding unreasonable.
B. The
Registrar’s Finding Pursuant to s. 2 of the Act
[9]
At
paragraph 50 of the Decision, the Registrar concluded as follows:
A trade-mark that is
clearly descriptive of its associated wares is prima facie not
distinctive.
Hence, based on my finding under section 12(1)(b) ground of opposition, the
distinctiveness ground of opposition also succeeds with respect to the applied
for wares for both of the applied for marks.
[Emphasis added]
The Applicant characterizes the
Registrar’s finding as a misstatement of the law because s. 12(2) of the Act
makes it clear that a trade-mark that is not registrable by reason of s.
12(1)(b) is registrable if it has been so used in Canada by an applicant so as
to become distinctive at the date of filing of an application for its registration.
In my opinion, the Registrar’s finding does not correctly reflect the
provisions of the Act.
[10]
In
addition, even if paragraph 50 of the Decision is correct in law, the
Registrar’s finding that the distinctiveness ground of opposition succeeds is
not based on an analysis of the evidence. In the decision rendered, the
Registrar did not address the Applicant’s evidence regarding the extensive and
exclusive use of Mark #1 across Canada since at least 1989 and Mark #2 since at
least 1994. Thus, because the Registrar did not consider the evidence of
acquired distinctiveness submitted by the Applicant, I find that the conclusion
on distinctiveness is unreasonable.
C. Conclusion
[11]
As
a result, I grant the appeals with respect the Registrar’s findings on the two
impugned grounds of opposition. However, I accept the Registrar’s remaining
findings not challenged in the present appeals.
IV. De
novo Analysis
[12]
Because
I have found that the Registrar’s decision is unreasonable, on a de novo consideration
of the evidence, I find that the Applicant is fully successful on the present
appeals.
[13]
In
my opinion, Marks #1 and #2 are not descriptive of the Applicant’s wares because
the term BACKRACK, on its own, as a matter of first impression, is not
self-evident and is amenable to a number of other meanings beyond pick-up truck
racks.
[14]
I
further find that the Marks #1 and #2 have acquired distinctiveness in Canada
as of the relevant filing dates in association with the Applicant’s wares on
the basis of the evidence supplied by the Applicant as described in paragraph
10 above.
[15]
As
a result, I find that Mark #1 and Mark #2 are registrable.
ORDER
THIS
COURT ORDERS that:
1. The appeals are allowed;
2. Canadian Trade-Mark
Application No. 1,380,622 is approved for registration;
3. Canadian Trade-Mark
Application No. 1,388,234 is approved for registration; and
4. I make no order as to
costs.
“Douglas R. Campbell”
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