Date:
20130710
Docket:
T-228-13
Citation: 2013
FC 774
Toronto, Ontario, July 10, 2013
PRESENT: The
Honourable Mr. Justice Hughes
BETWEEN:
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TONG G. CHEAH
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Applicant
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and
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MCDONALD'S CORPORATION, AND
MCDONALD'S RESTAURANTS OF CANADA
LIMITED
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Respondents
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REASONS FOR
JUDGMENT AND JUDGMENT
[1]
This
is an appeal from a decision of a Member of the Trade-marks Opposition Board
dated July 26, 2012 (cited as 2012 TMOB 138) respecting application No.
1,334,814 to register the word MACDIMSUM for a large number of food and drink
items. The Member refused the registration of that application. For the reasons
that follow, I will dismiss this appeal with costs; thus, upholding the
Member’s decision.
THE APPLICATION
[2]
The
Appellant in these proceedings, an individual named Tong G. Cheah, filed an
application with the Canadian Trade-marks Office on July 2, 2007 to register
the word MACDIMSUM for a vast number of food and drink items; largely, prepared
food and drinks of the sort that one might find in a Chinese or other Oriental
restaurant. This application, given No 1,334,814, was based on proposed use in Canada. There is no evidence as to any actual use of this trade-mark in Canada. The transcript of the cross-examination of Mr. Cheah indicates that he has not yet
finalized any plans as to use, whether it be in a restaurant or fast food
court, or whatever.
[3]
It
must be remembered that the application is simply for a word, MACDIMSUM, and
not for that word in any particular type style; nor for that word in
combination with any other word or design; thus, the Opposition Board and the
Court cannot constrain itself into thinking that any potential use in a
particular type style, or in combination with any particular design, will serve
to avoid or minimize confusion.
[4]
Being
a proposed use application, the Board and the Court must remain open to the
fact that the trade-mark could potentially be used in any type style, and in
combination with any words or design, and in any trade environment as may present
itself from time to time.
THE OPPOSITION
[5]
The
registration of the trade-mark was opposed by the Respondents in this appeal,
whom I will collectively refer to as McDonald’s. The opposition was framed
based on a number of grounds, all of which can be summarized as being that the
trade-mark sought to be registered is confusing, with a large number of
trade-marks referred to as a “family” of trade-marks registered and used by
McDonald’s in Canada in association with foods and drinks and restaurant
services. These are referred to in argument as the MC plus food item, or MAC
plus food item, marks. It is argued that the public does not distinguish
between MC and MAC for this purpose. I have no evidence before me that would
serve to disabuse me of that conclusion.
[6]
The
Opponents, McDonald’s, filed the evidence of three persons in support of its
Opposition. The affidavit of Herbert McPhail, sworn June 4, 2009, attested to a
number of Canadian registered trade-marks owned by McDonald’s. They were some
four score in number, all including MC or MAC; most with a food-related word
following, such as MAC FRIES or MC CHICKEN. The Affidavit of Hope Bagozzi,
Director, National Marketing for McDonald’s Restaurants of Canada Limited,
attested to the use and advertising in Canada of the various MC and MAC
trade-marks under licence from McDonald’s Corporation by that Canadian entity.
Sales have exceeded $2 billion in the previous five years. The final affidavit
is that of Chuck Chakrapani, a survey expert. He conducted surveys in which
members of the Canadian public were shown a card bearing the word MACDIMSUM,
and, in another survey, different persons were shown a card bearing the word
MAZDIMSUM. They were asked various questions. The results led Chakrapani to the
conclusion that a statistically significant proportion of consumers would
identify McDonald’s as the source of certain listed food products (as those
listed in the application at issue) with the name MACDIMSUM. He reached other
conclusions, as well.
[7]
None
of the McDonald’s affiants were cross-examined.
[8]
The
Applicant (the Appellant herein) Tong G. Cheah, filed his own affidavit in
support of his application. He did not file any other affidavit.
THE DECISION
UNDER APPEAL
[9]
The
Member’s decision dated July 26, 2013 correctly placed the onus on the
Applicant Cheah to show that the trade-mark was registrable having regard to
the issues raised by the Opponent McDonald’s. The issue was reduced to that of
the likelihood of confusion as of various dates, depending on the precise issue.
The differences in those dates are immaterial to the issues here.
[10]
The
Member correctly stated the test for confusion at paragraph 19 of his Reasons :
TEST FOR CONFUSION
[19] The test for confusion is one of first
impression and imperfect recollection. Factors to be considered, in making an
assessment as to whether two marks are confusing are “all the surrounding
circumstances including” those specifically mentioned in s.6(5)(a) to s.6(5)(d)
of the Act: the inherent distinctiveness of the marks and the extent to which
they have become known; the length of tine each has been in use; the nature of
the wares, services or business; the nature of the trade; the degree of
resemblance in appearance or sound of the marks or in the ideas suggested by
them. This list is not exhaustive and all relevant factors are to be
considered. Further, all factors do not necessarily have equal weight as the
weight to be given to each depends on the circumstances: see Gainers Inc. v.
Tammy L. Marchildon and the Registrar of Trade-marks (1996), 66 C.P.R.93d) 308
(F.C.T.D.). However, as noted by Mr. Justice Rothstein in Masterpiece Inc. v.
Alavida Lifestyles Inc. (2011), 92 C.P.R.(4th) 361 (S.C.C.),
although the degree of resemblance is the last factor cited in s.6(5), it is
the statutory factor that is often likely to have the greatest effect in
deciding the issue of confusion.
[11]
The
Member then made reference to McDonald’s Corporation v Chung-Kee Noodle Shop
Ltd, 2008 CanLII 88318, a decision of another Member of the Opposition Board,
in which McDonald’s successfully opposed the registration of the word MCNOODLE
for a variety of food items.
[12]
The
Member summarized his findings as to confusion at paragraph 21 of his Reasons,
and his disposition at paragraph 22, as follows:
[21] Similarly, in the instant case, (i) the
opponents’ evidence has established that their mark MACDONALD’S is very well
known, if not famous, in Canada in association with restaurant food and
services, (ii) the applied-for mark cannot be said to be a strong mark because
it is dominated by the non-distinctive element DIMSUM and the applicant has not
established any reputation for its mark MACDIMSUM at any material time, (iii)
the length of time that the marks in issue have been in use favours the
opponents, (iv) the parties’ wares are similar and the applicant admitted at
cross-examination that it is his intention to serve the wares specified in the
application in a restaurant environment, (v) the parties’ marks are prefixed by
the phonetic equivalents MC and MAC and the opponents have established a family
of trade-marks which include the prefixes MC and MAC for food products, (vi)
the opponents’ evidence shows that they continuously create, use, advertise and
promote marks comprised of the prefix MC followed by the name of a food
product. Further, in the instant case, the opponents’ survey evidence supports
the opponents’ contention that a significant portion of the population would
believe that the applicant’s wares sold under the mark MACDIMSUM originate with
the opponents.
DISPOSITION
[22] In view of the evidence presented by the
opponents, and applying the same reasoning as was applied in Chung-Kee Noodle
Shop Ltd., above, I find that at all material times the applicant has not met
the legal onus on it to show, on a balance of probabilities, that there is no
reasonable likelihood of confusion between the applied-for mark MACDIMSUM and
the opponents’ mark MCDONALD’S. Accordingly, the opponent succeeds on the
second, third and fourth grounds of opposition. It is therefore not necessary
to consider the remaining grounds.
[13]
It
should be noted that the Applicant Cheah represented himself in the Opposition
proceeding. Likewise, he represented himself in the appeal before me.
[14]
Cheah
has appealed to this Court from this decision.
NEW EVIDENCE ON
APPEAL
[15]
In
an unusual provision, section 56(5) of the Trade-marks Act, RSC 1985, c.
T-13, permits the filing of additional evidence on an appeal such as this. In
the present case, the Appellant (Applicant) Cheah filed a further affidavit of
his own. That affidavit comprises a collection of newspaper articles and other
materials, largely concerning the use of MAC and the like in countries beyond Canada, and references to articles by legal scholars. It also includes correspondence between
Cheah and the solicitors for McDonald’s. I conclude that Cheah has not filed
anything in this affidavit that has a material bearing on this appeal.
[16]
McDonald’s
has filed a further affidavit on this appeal; namely, the further affidavit of
Hope Bagozzi, sworn March 21, 2013. This affidavit attests to the continuing
use of the MC and MAC trade-marks by McDonald’s in Canada, including in
association with food products that some may consider Oriental. I conclude that
this further evidence has no material bearing on this appeal.
[17]
At
the hearing before me, the Appellant (Applicant Cheah) who represented himself,
endeavoured to refer to and file yet further material, which he said comprised
evidence that may be useful. I refused to accept this material; it was tendered
too late. The Appellant had already been granted on extension of time to file
evidence on the appeal. That resulted in Cheah’s further affidavit referred to
previously. No notice had been given that yet further evidence would be
tendered at the hearing. The time for filing new evidence has passed.
STANDARD OF
REVIEW
[18]
The
standard of review of a Member’s decision in Opposition proceedings is well
known. I accept the Reasons of Justice Phelan of this Court in his decision in
the recent case of San Miguel Brewing International Limited v Molson Canada
2005, 2013 FC 156, at paragraphs 22 to 24:
22 The standard of review is affected by the
type of new evidence (if any) filed on the appeal in accordance with s 56(5) of
the Trade-marks Act. In the absence of new evidence, the standard of review is
reasonableness (Groupe Procycle Inc v Chrysler Group LLC, 2010 FC 918, 377 FTR
17).
23 However, where new evidence is filed, it will
cause the standard of review to be correctness where that new evidence is
substantial and significant. Mere regurgitation or supplements of prior
evidence would generally be insufficient to alter the standard of review (Vivat
Holdings Ltd v Levi Strauss & Co, 2005 FC 707 at para 27, 276 FTR 40).
24 As summarized by K Gill and R S Jolliffe in
Fox on Canadian Law of Trade-marks and Unfair Competition, 4th ed, loose-leaf,
(Toronto: Thomson Carswell, 2002), at 6-48 [Fox]: "[t]he mere filing of
new evidence on appeal does not necessarily lower the standard of appeal to one
of correctness. The quality of the new evidence must be considered. The
question is to the extent to which the additional evidence has a probative
significance that extends beyond the material that was before the Board."
Fox goes on to write: "[w]here the new
evidence adds nothing of significance and is merely repetitive of existing
evidence without enhancing its cogency, the standard of review will be whether
the Registrar's decision was clearly wrong. In such cases, the presence of the
newly filed evidence will not affect the standard of review applied by the
Court on the appeal."
I accept those statements as reflective of the
law in Canada.
[19]
In
the case before me there has been new evidence filed on appeal, but I have
concluded that the evidence has no material effect on the decision under
review, or the issues decided herein. Therefore, I will consider whether the
decision is reasonable, bearing in mind that the onus rests on the Appellant
(Applicant) Cheah to demonstrate that the mark is registrable.
ISSUES
[20]
The
Appellant (Applicant Cheah) has raised several issues on this appeal.
Unfortunately, he has represented himself throughout these proceedings and
these issues are often obscure or not well defined. From his written material
and his argument before me, I discern that the Appellant wishes to raise the
following issues:
1.
Was
the Member correct in determining that MACDIMSUM was likely to be confusing
with the McDonald’s “family” of trade-marks, including the prefix MC or MAC
together with a food product?
2.
Was
the survey evidence flawed or improperly relied upon?
3.
Were
the Appellant’s section 15 Charter rights violated?
4.
Is
the prefix MAC or MC so diluted that any person is free to use it in a
trade-mark in Canada?
5.
Is
the Appellant (Applicant) being bullied?
ISSUE #1 Was the
Member correct in determining that MACDIMSUM was likely to be confusing with
the McDonald’s “family” of trade-marks, including the prefix MC or MAC together
with a food product?
[21]
The
Member reviewed the evidence and applied the correct test as to confusion. The
decision is reasonable.
[22]
I
agree that there are other cases in this Court and in the Court of Appeal such
as McDonald’s Corp v Silcorp Ltd (1987), 24 CPR (3d) 207 (FC), 41 CPR
(3d) 67 (FCA), and McDonald’s Corp v Coffee Hut Stores Ltd (1996), 55
CPR 463 (FC), 68 CPR (3d) 168 (FCA), where McDonald’s failed in respect of MAC
for convenience stores or MCBEAN for coffee business to preclude those uses.
This illustrates that the evidence as to use or intended use is critical to any
decision such as this.
[23]
In
this case, the Applicant Cheah presented very little in respect of probative
evidence, and McDonald’s presented a great deal. I find that, on the evidence,
the Member’s decision as to confusion was reasonable.
ISSUE
#2 Was
the survey evidence flawed or improperly relied upon?
[24]
In
the present case, the affidavit evidence of Chakrapani respecting certain
surveys he conducted was filed by McDonald’s. Cheah filed no survey evidence,
nor did he file any expert evidence criticizing the manner in which Chakrapani
conducted his surveys, nor the conclusions that he had reached.
[25]
The
Member at paragraphs 11 and 12 of his Reasons, found that he had no reason to
doubt the reliability of the survey. I agree. At paragraph 21 of his Reasons,
which has been set out above, the Member found that the survey “supports” his
conclusions as to confusion. In other words, the survey was not the principal
reason upon which the Member arrived at his conclusion as to confusion.
[26]
The
Court has been suspect as to the growing use of and reliance upon surveys in
proceedings such as this. The remarks of Rothstein J, in the Supreme Court of
Canada decision in Masterpiece Inc v Alavida Lifestyles Inc, [2011] 2
SCR 387 at paragraphs 78 to 101, stating that survey evidence should be used
with caution and not supplant the role of the judge, are apt.
[27]
Nonetheless,
in this case, the manner in which the Member used the survey evidence in this
case cannot be faulted.
ISSUE #3 Were
the Appellant’s section 15 Charter rights violated?
[28]
This
argument appears to have been raised for the first time on appeal and should be
disregarded, as new issues such as this cannot be raised on appeal.
[29]
In
any event, the Appellant has provided no factual basis to support his claim, nor
has he identified any particular law said to offend the Charter; nor has
he demonstrated how the law is alleged to be discriminatory. These conditions,
as stated by the Supreme Court of Canada in Ermineskin Indian Band v Canada [2009] 1 S.C.R. 222, especially at paragraph 188, have not been met.
ISSUE #4 Is the
prefix MAC or MC so diluted that any person is free to use it in a trade-mark
in Canada?
[30]
The
Appellant bases this argument largely upon the “evidence” that he filed
respecting the alleged use by third parties of MC or MAC in foreign countries.
Not only is this evidence hearsay, and therefore of little or no probative
value, but it does not relate to Canada. If “dilution” is being argued, it must
be based on sound evidence of dilution in Canada.
[31]
This
argument is unsupported on the evidence.
ISSUE #5 Is
the Appellant (Applicant) being bullied?
[32]
The
Appellant, in reply at the hearing before me, asserted that he was being
bullied by McDonald’s. I find no evidence to support this allegation. Quite the
contrary; McDonald’s and its Counsel have behaved extremely properly and
courteously in the proceedings before me.
[33]
I
believe that a hint of the Appellant’s true motivations in seeking to register
MACDIMSUM is shown in correspondence from him to McDonald’s lawyers, which
Cheah filed as part of the evidence on the appeal. His letter dated March 17,
2008, at the last page, states that:
“…we can together perhaps explore the possibilities
of a global MACDIMSUM partnership”.
[34]
I
find no merit in the allegation of bullying.
CONCLUSION AND
COSTS
[35]
In
conclusion, I find that the Member was correct in his decision as far as the
law is concerned, and came to a reasonable decision upon the evidence before
him. The new evidence filed on appeal makes no material difference. I will
dismiss the appeal.
[36]
As
to costs, the Respondents McDonald’s are successful and entitled to costs. They
prepared the bulk of the materials used in the appeal, even though it was
Cheah’s obligation to do so. I will allow costs fixed at $6,000.00.
JUDGMENT
FOR
THE REASONS PROVIDED:
THIS COURT
ADJUDGES that:
1.
The
appeal is dismissed; and
2.
The
Respondents are entitled to costs to be paid by the Appellant fixed in the sum
of $6,000.00.
"Roger T.
Hughes"
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