Docket:
T-276-13
Citation: 2014 FC 140
Ottawa, Ontario, February 11, 2014
PRESENT: The Honourable Mr. Justice Boivin
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BETWEEN:
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SK CORPORATION
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Applicant
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and
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SAFETY-KLEEN SYSTEMS, INC.
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Respondent
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REASONS FOR JUDGMENT AND JUDGMENT
[1]
This is an appeal by the SK Corporation
(applicant) pursuant to section 56 of the Trade-Marks Act, RSC 1985, c
T-13 (the “Act”) of a decision rendered by Mr. Jean Carrière, the Registrar of
Trade-marks Opposition Board (the Registrar) dated December 3, 2012 in respect
of the applicant’s application No. 1,273,765. Safety-Kleen Systems Inc. is the
respondent in this appeal.
[2]
The Registrar rendered a split decision in which
the application for registration of the applied-for trade-mark SK with a
butterfly design submitted by the applicant (see below) was rejected with
respect of the overlapping wares and the undefined wares. However, the
application was allowed with respect to non-overlapping wares and the services
covered in the application.
[3]
The Registrar was satisfied that, based on the
evidence, there is no risk of confusion between the applicant’s applied-for
mark and the respondent’s trade-mark for non-overlapping wares and all the
services. However, the Registrar found potential confusion with other overlapping
or undefined wares.
[4]
The applicant’s filed trade-mark is illustrated
as follows:
[5]
The respondent Safety-Kleen’s trade-marks are
illustrated as follows:
Registration
No. 517,866 Registration No. 516,956
[6]
The associated wares and services for both the
applicant’s and the respondent’s trade-marks are reproduced in Appendix A and
B.
[7]
The trade-mark identified by the Registrar to be
the closest to the applicant’s applied-for mark is SK Logo (Registration No.
517,866) 
and, as such, the analysis was
restricted to a comparison between the applicant’s applied-for mark (illustrated
at paragraph 4) and this Safety Kleen mark.
Background
[8]
The applicant filed its Trade-mark application
No. 1,273,765 on September 28, 2005 which was later amended on April 9, 2009.
The application covers a broad range of chemical products as well as cable
television broadcasting and cellular communications services. The application
was advertised for opposition purposes pursuant to the Act on February 20,
2008. On March 27, 2008, the respondent filed a statement of opposition (which
was forwarded to the Registrar on April 21, 2008) opposing the registration of
the application. On June 15, 2010, the applicant filed a counter statement
denying all grounds of opposition. Both parties filed evidence before the Board
and the evidence was subject to cross-examination. The applicant filed evidence
from Lynda Palmer (Trade-mark Searcher) and D. Jill Roberts (Assistant Bailiff
with Cease Bailiff Services Inc.). The respondent filed evidence from Jennifer
Stecyk (Trade-mark Searcher with Osler, Hoskin & Harcourt LLP) and Greg
Clark (Vice-President – Marketing of Safety-Kleen) (two (2) affidavits for Mr. Clark: February 11, 2009 and October
23, 2009)
Registrar’s
decision
[9]
The Registrar rendered a split decision, dated
December 3, 2012. The Registrar rejected the opposition and accepted the
application in association with non-overlapping wares – i.e. all the services
covered in the application and with a number of wares included in the statement
of wares. The application was refused in association with overlapping and
undefined wares. The Registrar based his conclusion on the fact that the
overlapping and undefined wares of the applicant are very similar in nature to
those of the respondent and the parties’ trade-marks are identical
phonetically.
[10]
The use of different design portion was not
sufficient for the Registrar to negate any likelihood of confusion between the applicant’s
applied-for mark and the respondent’s trade-mark in so far as the “overlapping
wares” are concerned. The lack of information on the “undefined wares” lead the
Registrar to conclude as well, for those same reasons, that the applicant did
not discharge its legal onus to prove that there is no likelihood of confusion.
[11]
The Registrar recalled that (i) the respondent (opponent)
bears an initial evidential burden to adduce sufficient admissible evidence to
support the facts alleged in support of each ground of opposition and (ii) the
applicant then bears the legal onus of establishing, on a balance of
probabilities, that the application complies with the requirements of the Act
and the particular grounds of opposition should not prevent registration of the
mark.
[12]
The Registrar checked the Register for the respondent’s
two (2) trade-marks and confirmed that the registrations are in existence.
Thus, the Registrar concluded that the respondent met its initial burden. The
material date for establishing registrability/confusion under s 38(2)(b)/12(1)(d)
is the Registrar’s decision date (December 3, 2012).
[13]
The Registrar stated that, in applying the test
for confusion outlined in s 6(2) of the Act, all surrounding circumstances,
including those specifically enumerated in s 6(5) of the Act and
mentioned that these factors need not be attributed equal weight (Clorox Co.
v Sears Canada Inc. (FCTD), [1992] 2 FC 579, 41 CPR (3d) 483
(FCTD) and also Gainers Inc. v
Marchildon (FCTD), [1996] FCJ No
297 (QL), 66 CPR (3d) 308).
[14]
The Registrar referred as well to the decision
of the Supreme Court of Canada in Veuve Clicquot Ponsardin v Boutiques
Cliquot Ltée, 2006 SCC 23, [2006] 1 S.C.R. 824, and Mattel, Inc v 3894207
Canada Inc., [2006] 1 S.C.R. 772 where Justice Binnie provided
direction on the assessment of the criteria enumerated under s 6(5) in order to
determine if there is a likelihood of confusion between two (2) trade-marks.
Inherent
distinctiveness of the trade-marks and extent to which they have become known
[15]
The Registrar found that both the applicant’s and
the respondent’s trade-marks have some degree of distinctiveness because of
their respective design portion and that no mark is stronger than the other.
The Registrar provided a brief summary of the evidence of Mr. Clark and
concluded that the evidence presented shows that there is use of the
respondent’s trade-mark since at least 2007 and no use of the applicant’s
trade-mark. As such, the Registrar concluded that this first criterion favors
the respondent.
Length of time in use
[16]
The Registrar found that, based on the evidence,
the respondent’s mark has been in use for much longer.
Nature of the wares, services or
business / Nature of the trade
[17]
The Registrar found that there was no overlap
between the applicant’s services and the respondent’s wares.
[18]
However, there was an overlap between some of the
applicant’s wares and the respondent’s wares. The overlapping wares are as
follows:
antifreeze solution,
brake solution, catalysts for treating engine exhaust, fluids for hydraulic
circuits, power steering fluid, refrigerants and solvent, transmission fluid
(the “overlapping wares”).
[19]
There were also some wares that the Registrar did
not understand as he believed they were described in technical or chemical
terms and no evidence of their meaning was provided by the applicant. These were
considered as well to be overlapping:
diethyl malonate,
disopropyl malonate, diketene, dimethyl malonate, dimethyl terephtalate,
dimethyl formamide, dimethyllamine, epichlohydrine, ethoxylate, ethylene,
ethylene amines, ethylene glycol, ethylene oxide, ethylene vinyl acetate, fatty
amine, formic acid, fumed silica, furfuryl alcohol, hypochlorite of soda,
isopropyl alcohol, methyl chloride, methyl metal acrylate, methylamine
derivatives, methylene chloride, neopentyl glycol, photoresist, polycrystalline
silicone, polyethylene terephthalate, polymethylmeta acrylate, polypropylene,
polypropylene resins, polytetrafluoro ethylene, polyvinyl butyral film,
polyvinyl chloride, potassium sorbate, propylene, purified terephthalic acids,
sodium carboxymethyl cellulose styrene monomer, terephthalic acids, tetramethyl
ammonium chloride, tetramethyl ammonium hydroxide, toluene, trimethylamine
hydrochloric acid (the “undefined wares”).
[20]
The remaining wares were considered by the
Registrar to be non-overlapping wares:
ammonia, anti-corrosive contact spray, chemicals used in industry,
namely: caustic soda for industrial purposes; chemical preparations for the
manufacture of paints; fertilizer, fire extinguishing compositions for fighting
fires; melamine, microorganism cultures for use in industry, science,
agriculture, horticulture and forestry, plasticizer, polyester, polyethylene,
polyethylene resins, semi-processed synthetic resins, silicones, surface-active
chemical agents, synthetic resins, unprocessed acrylic resins, unprocessed
artificial resins, unprocessed epoxy resins, unprocessed plastics, unprocessed
synthetic resins, urea, urethane resins, UV chemical stabilizer, vulcanization
accelerators, water treatment compositions for human use to inhibit scaling,
phosphate formation and corrosion (the “non-overlapping wares”)
Degree
of resemblance
[21]
The Registrar referred to the Supreme Court of
Canada’s decision in Masterpiece Inc. v Alavida Lifestyles Inc., 2011
SCC 27, [2011] 2 S.C.R. 387 [Masterpiece] where the Court decided
that the most important factor among those listed under s 6(5) of the Act is
often the degree of resemblance between the two (2) marks.
[22]
The Registrar found that the respondent’s
trade-mark and the applicant’s applied-for mark are identical phonetically but
there is no resemblance between them.
[23]
The Registrar analysed as well the additional
surrounding circumstances regarding the state of the Register and the
coexistence of the parties’ trade-marks in the United States.
Other grounds of opposition
[24]
The material date for establishing
entitlement/confusion under s 38(2)(c)/16(3)(a), 16(3)(b),
16(3)(c) is the application date (September 28, 2005). The Registrar
mentioned that the respondent (opponent) has the initial burden to prove that
it has used or made known its trade-marks SK and SK Logo in Canada prior to the filing of the application by the applicant. The respondent (opponent)
admits that the trade-marks have not been used in Canada in association with
some overlapping wares (power steering, transmission fluids and motor oil). As
such, the Registrar concluded that the overlapping wares for which the SK
trade-marks were not used will be excluded from the basket of wares for the
entitlement analysis. This, the Registrar found, would lead to a less favourable
analysis than the registrability analysis, discussed earlier. This ground of
opposition was thus not analysed by the Registrar.
[25]
The material date for establishing
distinctiveness under s 38(2)(d) is the filing date for the statement of
opposition (March 27, 2008). The Registrar mentioned that the respondent (opponent)
has the initial burden to prove that the SK trade-marks have become
sufficiently known in Canada on March 27, 2008 so to negate the distinctiveness
of the mark. Again, as concluded by the Registrar in the entitlement ground of
opposition, there has been no use of the respondent’s (opponent’s) trade-marks
in Canada in association with some overlapping wares (power steering,
transmission fluids and motor oil). This ground of opposition was not analysed
in details for the same reasons as in the ground of entitlement.
The appeal
[26]
On February 11, 2013, the applicant filed a
Notice of Application for an appeal of the Registrar’s decision requesting that
the decision of the Registrar regarding the overlapping and undefined wares be set
aside.
Evidence filed in
support of the appeal
[27]
The applicant filed four (4) additional
affidavits of D. Jill Roberts and an affidavit of Janice Kelland and submits
that this additional evidence was provided to address issues raised by the
Registrar. The applicant argues that this additional evidence provides facts
which, had they been before the Registrar, would have required further
consideration and possibly altered the decision.
[28]
The respondent did not file any additional
affidavits but cross-examined both Ms. Roberts and Ms. Kelland.
Issues
[29]
This case raises the following issues:
1. What is the standard of review?
2. Would the additional evidence filed in this Court have
materially affected the Registrar’s findings?
3. Was the Registrar’s decision
reasonable?
1. What is the standard of review?
[30]
The parties are in agreement that, in the
absence of additional evidence produced on appeal under s 56 of the Act, the
reasonableness standard of review applies. They also agree that, when new
evidence is submitted, it is necessary to assess its significance. If the
additional evidence would materially affect the Registrar’s findings of fact or
the exercise of its discretion, then the correctness standard of review applies
and the application would be considered de novo. The Court recalls the
observations of Justice Rothstein JA (as he then was) for the majority at
paragraph 51 in Molson Breweries v John Labatt Ltd (C.A.), [2000] 3 FC
145, 252 NR 91, regarding the standard of review:
[51] I think
the approach in Benson & Hedges and in 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
added]
[31]
Therefore, the first issue
that the Court will consider is whether the additional evidence filed by the
applicant “would have materially affected the Registrar’s findings of fact or
the exercise of his discretion”.
2. Would the additional evidence filed in this
Court have materially affected the Registrar’s findings?
[32]
The applicant filed additional evidence and
alleges that, had this information been provided to the Registrar at the
hearing, its decision would have been materially different. The applicant
therefore submits that the standard of review should be that of correctness as
per the Supreme Court of Canada decision in Dunsmuir v New-Brunswick,
2008 SCC 9 at para 47, [2008] 1 S.C.R. 190 [Dunsmuir].
[33]
The Court recalls that the test for considering
additional evidence is one of quality not of quantity. Upon reading the
affidavits submitted by the applicant, the Court finds the following:
•
Ms. Roberts’ affidavit # 1(March 15, 2013) is
based on a reading of a website and does not contain new evidence;
•
Ms. Roberts’ affidavit # 2(March 18, 2013) introduces
updated results of a state of the Register search which was before the
Registrar. The respondent’s SK Logo remains the closest visually, phonetically
and in idea to the applied-for mark. The Court does not find that this is new
information;
•
In her affidavit # 3 (March 21, 2013), Ms.
Roberts provides information from the websites display the names of various
entities such as SK Energy, SK Global Chemical, SK Global Chemical Co., and SK
Lubricants but there is no explanation as to why this evidence should be
regarded as relevant. The presentation document found on the internet cannot be
afforded much weight. More importantly, there is no evidence provided on the
use of the trade-mark SK & Design by the applicant in association with any
of the wares or services covered by the application;
•
Although Ms. Roberts’s affidavit #4 (March 22,
2013) provides definition of the chemicals listed under the “undefined wares”
from chemical dictionaries, internet sources and encyclopaedias, it is not
exhaustive and fails to provide clarity and understanding with respect to the undefined
wares. The ambiguity remains;
•
Ms. Kelland’s affidavit (March 22, 2013) does
not remove the ambiguity surrounding the use of the undefined wares and there
remains an issue as to whether she can qualify as a fact witness as opposed to
an expert witness.
[34]
Upon reading the applicant’s additional affidavits,
this Court is of the opinion that the new evidence adduced by the applicant is
not sufficiently significant or reliable in light of the whole of the evidence.
Accordingly, it would not have materially affected the Registrar’s decision (Bojangles’
International, LLC et al v Bojangles Café Ltd., 2006 FC 657 at para 15, 48
CPR (4th) 427; see also Wrangler Apparel Corp v The Timberland Co.,
2005 FC 722 at paras 7 & 9, 41 CPR (4th) 223). The standard of review
is therefore that of reasonableness.
3) Was the Registrar’s decision reasonable?
[35]
From the outset, it is important to keep in mind
the role of a trade-mark in the marketplace in undertaking a review of the
Registrar’s decision:
[1] Trade-marks in Canada are an important tool to assist consumers and businesses. In the marketplace, a
business marks its wares or services as an indication of provenance. This
allows consumers to know, when they are considering a purchase, who stands
behind those goods or services. In this way, trade-marks provide a
"shortcut to get consumers to where they want to go", per Binnie J.
in Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22, [2006] 1 S.C.R.
772, at para. 21. Where the trade-marks of different businesses are similar, a
consumer may be unable to discern which company stands behind the wares or
services. Confusion between trade-marks impairs the objective of providing
consumers with a reliable indication of the expected source of wares or
services. …
[Masterpiece,
above at para 1]
[36]
Where a reasonableness standard is to be
applied, the question is whether the decision can withstand “a somewhat
probing” examination and is not “clearly wrong” (Mattel, above at 341).
[37]
The Court’s role when reviewing a decision under
the reasonableness standard is described in Dunsmuir, above at para 47,
as follows:
[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.
[38]
In the case at bar, the Court recalls that the
Registrar dealt with the following wares: non-overlapping, overlapping and,
undefined. It was reasonable for the Registrar to find that, with respect to
the undefined wares, he was left in a state of doubt as to the likelihood of
confusion which he resolved against the applicant and refused the application
for the undefined wares. The Registrar thus drew a negative inference and
assumed that there was overlap in the nature of the undefined wares.
[39]
Before this Court, the parties’ arguments
focused on the issue of confusion. Both parties agree that there is no
resemblance between the applicant’s mark and that of the respondent. They also
agree that the length of time in use (paragraph 6(5)(b) of the Act) is a
factor favouring the respondent, as the respondent had used its trade-mark in Canada prior to the date of application.
[40]
A closer look at the applicant’s mark and the
respondent’s mark indicates that, other than the letters S and K, – which would
constitute weak marks – , there is no visual similarity between the applicant’s
applied-for SK mark and the respondent’s SK trade-mark.
[41]
However, although both marks do not look alike
they are identical phonetically: “SK”. This important aspect was outlined by
the Registrar in his decision at para 36 and 37:
[36] In its
judgment in Masterpiece Inc. v Alavida Lifestyles Inc et al 2011 SCC 27,
the Supreme Court of Canada has clearly indicated that the most important
factor amongst those listed under section 6(5) of the Act is often the degree
of resemblance between the marks.
[37] The Mark and
the SK Logo trade-mark are identical phonetically. However they do not look
alike. The Opponent dominant feature of its SK Logo trade-mark is the letter S
while there is no dominant feature in the Mark. The Mark is comprised of two
equal features namely the letters “SK” and a butterfly design.
[42]
The Registrar therefore found that “the use of a
different design portion is not sufficient to negate any likelihood of
confusion between the Mark [applicant’s mark] and the Opponent’s trade-mark SK
Logo [respondent’s mark] in so far as the Overlapping wares are concerned”
(Registrar’s decision at para 47).
[43]
The applicant submits that oral similarities
should not overcome differences with respect to overlapping and undefined wares
and the Registrar erred in finding otherwise. The Court cannot agree.
[44]
The applicant argued that overlapping wares –
with a strong emphasis on solvents – belong to a different industry, a
different channel of trade, they are allegedly only used by sophisticated
professional users in the performance of services; they are not bought at a
store but only online and through a service call. Therefore, the applicant
submits that this makes those solvents different from the respondent’s and as
such non-overlapping. Again, the Court finds that there is no evidence to
support these allegations. What is clear is that solvents are also overlapping
wares and that the nature of the applicant’s business remains undefined. Hence,
the phonetic aspect is important given the issue of overlapping wares in the
present case. It was thus reasonable for the Registrar to find that there would
be likelihood of confusion regarding the overlapping wares because the marks
are identical phonetically – i.e. “SK”. The argument that the respective
products of the parties are directed to sophisticated business clients is not
supported by evidence. The Court cannot find that the products of the parties
are necessarily always purchased by a sophisticated agent holding a PhD in
chemistry.
[45]
The applicant also submitted that when one calls
the respondent’s outlets in Canada, the phone is answered “Safety-Kleen” and
not “SK”. The consequence, for the applicant, is that it completely dissipates
the confusion of oral similarities. The Court recalls that the applicant’s
argument relying on a survey has to be considered with caution (Masterpiece,
above at para 93). In the case at bar, and on the basis of the evidence, the
Court is not satisfied that the survey relied upon by the applicant is both
reliable and valid (R v Mohan, [1994] 2 S.C.R. 9 at para 45). As such, it
carries little probative value.
[46]
It was also submitted to the Court that a number
of registered trade-marks which include the letters SK covering wares and
services overlap with those covered in the respondent’s registered trade-marks.
However, the state of the Trade-mark Register demonstrates that other SK marks
either have other letters in them as part of an acronym or do not relate to the
wares at issue (e.g. SK & DESIGN; SKF & DESIGN; SKW BIOSYSTEMS DESIGN;
SK8 and DESIGN – Applicant’s record, vol. 7. p 1644-45).
[47]
Finally, the applicant submits that the
trade-marks of both parties in the United States have coexisted on the Register
for a number of years. The applicant further argues that recent jurisprudence
has held that long standing co-existence on the U.S. Register can be considered
in addressing the issue of the likelihood of confusion in Canada. Evidence of a long standing co-existence on the U.S. Register (e.g. 13 years) has
been found to favour a finding of non-confusion between the trade-marks (McCallum
Industries Ltd v HJ Heinz Co. Australia Ltd., 2011 FC 1216, 97 CPR (4th)
283). However, in the case at bar, there is no evidence regarding the context
surrounding the actual co-existence of both marks in the United States which, in turn, could support a comparison with the present case.
[48]
For all of these reasons, the Court is satisfied
that the Registrar considered all relevant factors and came to a reasonable
conclusion (Dunsmuir, above; Newfoundland and Labrador Nurses’
Union v Newfoundland and Labrador (Treasury Board), 2011 SCC 62, [2011] 3
SCR 708).
APPENDIX
B
Safety-Kleen’s Registration No. 517, 866
WARES:
(1) Mechanical parts washers, including
washers for cleaning components of automobiles, aircraft, industrial and
agricultural machines and parts thereof used in manufacturing, service and
repair facilities, and brushes, filters and replacement parts for such parts
washers; cleaning and degreasing solvents for parts washing machines used in
service, maintenance and repair and manufacturing, and cleaning emusions and
solvents used in immersion type cleaners for cleaning carburettors and other
automotive, marine and agricultural vehicle parts.
(2) Automotive fluids and motor oil, including
automotive oils, heavy duty motor oil, non-detergent motor oil, motor oil for
severe service, diesel truck motor oil, tractor motor oil, high performance
motor oil, two cycle motor oil, and refined motor oil; multi-purpose gear oil, snowmobile
oil, red chain oil, transmission fluid, multi-purpose grease, hydraulic oil,
oil for hydraulic jacks, power steering fluid, undercoating oil for prevention
of rust corrosion, automatic transmission fluids, industrial oils and universal
tractor fluids; anti-freeze, ethylene glycol, anti-freeze windshield washer
liquid.
(3) Refined motor oil.
SERVICES:
(1) Cleaning and recycling services, namely,
the leasing of mechanical parts washers used in service, maintenance, repair
and manufacturing facilities, providing solvent for such washers, periodically
collecting, cleaning and replacing such solvent and the maintenance of such
mecahnical parts washers
Safety-Kleen’s Registration No. 516,956
WARES:
(1) Mechanical parts washers, including
washers for cleaning components of automobiles, aircraft, industrial and
agricultural machines and parts thereof used in manufacturing, service and
repair facilities, and brushes, filters and replacement parts for such parts
washers.
(2) Cleaning and degreasing solvents for parts
washing machines used in service, maintenance and repair and manufacturing, and
cleaning emusions and solvents used in immersion type cleaners for cleaning
carburettors and other automotive, marine and agricultural vehicle parts.
(3) Automotive fluids and motor oil, including
automotive oils, heavy duty motor oil, non-detergent motor oil, motor oil for
severe service, diesel truck motor oil, tractor motor oil, high performance
motor oil, two cycle motor oil, and re-refined motor oil; multi-purpose gear
oil, snowmobile oil, red chain oil, transmission fluid, multi-purpose grease,
hydraultic oil, oil for hydrulic jacks, power steering fluid, undercoating oil
for prevention of rust corrosion, automatic transmission fluids, industrial
oils and universal tractor fluids; anti-freeze, ethylene glycol, anti-freeze
windshield wash liquid.
(4) Refined motor oil.
SERVICES:
(1)
Cleaning and recycling services, namely, the
leasing of mechanical parts washers, used in service, maintenance, repair and
manufacturing facilities, providing solvent for such apparatus, periodically
collecting, cleaning and replacing such solvent and the maintenance of such
mechanical parts washers.
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