Date:
20140128
Docket:
T-2242-12
Citation:
2014 FC 37
Ottawa, Ontario,
January 28, 2014
PRESENT: The
Honourable Madam Justice McVeigh
BETWEEN:
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BRIDGESTONE CORPORATION
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Applicant
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and
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CAMPAGNOLO S.R.L.
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Respondent
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AMENDED REASONS
FOR JUDGMENT AND JUDGMENT
[1]
This
is an appeal pursuant to section 56 of the Trade-marks Act, RSC 1985, c
T-13 [the Act] of a decision by a member of the Trade-marks Opposition Board [the
Board] dated September 26, 2012. The Board rejected the grounds of opposition
advanced by the Applicant [Bridgestone] and allowed the trade-mark of the
Respondent [Campagnolo].
I.
Background
[2]
Bridgestone
Corporation is a multinational Japanese manufacturer, primarily known for its
automotive products. It does not produce bicycle products for sale in Canada.
[3]
Campagnolo
is an Italian manufacturer of track and competitive road racing bicycle parts
and accessories such as breaks and gears.
[4]
Potenza is a
city in the Southern Italian region and is the capital of the Province of Potenza and the Basilicata region.
[5]
On
April 18, 2007, Campagnolo filed a Canadian application (No. 1343755)
for
the trade-mark POTENZA [the Campagnolo POTENZA trade-mark] based upon its
proposed use of the mark in Canada in association with the following wares:
Bicycle
parts and accessories, namely, pedals, hubs quick release devices and hubs
comprising said devices, rear derailleurs, front derailleurs, crank arms, gear
wheels and gear wheels assemblies, crank arms with gear wheels, sprockets,
sprocket assemblies, transmission chains, drive or control means for front
derailleurs or rear derailleurs (mechanic and electronic), cable guide, knobs
and control levers, shafts and bearings for crank arms and for pedals, head
sets for steering assemblies and bearings and bushings thereof, cables and
casings, fastening clamps, bottom brackets, bottom bracket assemblies, and
cycle computers to detect, monitor and display functioning and performance
data, but not including tires, brakes, wheels, rims and spokes.
It was advertised for opposition
purposes on February 17, 2010.
[6]
On
April 16, 2010, Bridgestone filed a statement of opposition to Campagnolo’s
application, pursuant to paragraphs 38(1)(a), 38(1)(b), (38(1)(c), and 38(1)(d)
of the Act. Bridgestone relies on two of its trade-marks, POTENZA (TMA
268,271), registered on April 16, 1982, and based on use in Canada since
February 12, 1982, in association with tires, tubes and wheels; and POTENZA
RE92 (TMA 380,498), registered on February 22, 1991, and based on use in Canada
in association with tires and inner tubes since November 28, 1988 [the
Bridgestone POTENZA trade-marks].
[7]
The
statement of opposition argued that the Campagnolo POTENZA trade-mark would be confusing
with the Bridgestone POTENZA trade-marks, and consequently, not registrable
pursuant to paragraphs 12(1)(d) and 16(3)(a) of the Act. Bridgestone’s
statement of opposition also claimed that the application did not conform to
section 30 of the Act.
[8]
Bridgestone’s
argument regarding the likelihood of confusion is rooted in the factors
described in subsection 6(5) of the Act. Specifically, Bridgestone claims that
there is a strong likelihood of confusion, given the resemblance between the trade-marks,
the inherent distinctiveness of the Bridgestone POTENZA trade-marks, the length
of time the Bridgestone POTENZA trade-marks have been in use and the similar
channels of trade in which the trade-marked wares could be sold.
[9]
Campagnolo
on July 16, 2010, filed a Counterstatement in support of their application to
register the trade mark and in response to the Statement of Opposition dated April
16, 2010.
[10]
Bridgestone
filed two affidavits, one from the secretary of the law firm (Carla Edwards)
and the other from the Director of Intellectual Property for Bridgestone (Eiji
Mineki), as well as certified copies of the Bridgestone POTENZA trade-marks.
[11]
Carla
Edwards’ affidavit attached as Exhibits A-C are internet search results from a
search of the Canadian Tire website based on the terms “car tires”, “bicycle
tires” and “bicycle accessories”. The affidavit attached as Exhibits D and E
the search results from a search of the Costco Canada website, using the search
terms “bicycle accessories” and “automobile tires”. Bridgestone submitted this
as evidence that Canadian Tire and Costco sell both car tires, bicycle tires
and bicycle accessories. The decision maker gave this evidence little weight as
it was sworn by a secretary of Bridgestone’s solicitors and “goes directly to
the question of the likelihood of confusion between the parties’ marks, and
specifically the channels of trade ” in addition to being of limited
evidentiary value.
[12]
Eiji
Mineki who is located in Tokyo in his affidavit states that various editions of
POTENZA automotive tires have been sold in Canada since February, 1982. In the
years 2000 to 2010, Bridgestone has sold in Canada 4,345,361.00 POTENZA marked
tires. Over three million (3,112,295) POTENZA RE92 marked tires have sold in Canada in the years 1997 to 2010. Bridgestone has spent more than $64,000 in advertising
products (magazines) bearing the POTENZA and POTENZA RE92 marks since 1982.
[13]
Campagnolo
filed a Counterstatement on July 19, 2010, which includes affidavits by the
President of the Great Western Bicycle Company, Paul Haym, and by the
Vice-President of Cycles Marinoni Inc., Paola Marinoni.
[14]
Great
Western Bicycle Company is located in Vancouver and is a distributor of
European and North American bikes, bike parts, accessories, clothing and
lubricants. This company is a distributor in Canada for Campagnolo’s high-end
components for racing bikes since 1995. Included in the affidavit are printouts
of other specialty bicycle shops and high-end sporting goods stores they
distribute such products to.
[15]
Cycles
Marinoni Inc is a 30 year old Quebec company that is manufacturer, distributor and
retail store of racing bikes and related components. The affiant has extensive
knowledge of Campagnolo’s products and where they are sold in Canada and the bike industry in general. The high-end components for racing bikes are sold
exclusively in Canada to specialty bicycle shops and high-end sporting goods
stores and none of them are sold in the same stores as motor vehicle parts.
[16]
The
Marinoni and Haym affidavit evidence is that the Campagnolo products are
only sold in high-end bicycle retailers and sporting stores and not in stores
that sell motor vehicle parts.
[17]
The
affiants were not cross examined and no oral hearing was held by the Board.
[18]
For
the following reasons, I find this appeal must be dismissed.
II. Issues
[19]
The
issues raised in this appeal are as follows:
A. Does
the new evidence submitted warrant the standard of review of correctness?
B. Was
the Registrar's conclusion there was no reasonable likelihood of confusion
reasonable?
III. Standard of Review
[20]
The
standard of review for appeals pursuant to section 56 of the Act is
reasonableness, unless after an examination of its significance and probative
value, new evidence filed would have materially affected the board's decision,
in which case the appropriate standard of review is correctness (Molson
Breweries v John Labatt Ltd, [2000] FCJ No 159, at para 51; Bojangles'
International, LLC v Bojangles Café Ltd, 2006 FC 657, at para 10).
IV. Analysis
C. Does the
New Evidence Submitted Warrant the Standard of Review of Correctness?
[21]
In
support of this appeal, Bridgestone submitted certified copies of other
trade-marks and filed four new affidavits. The affiants are Cindy Shattler,
Robert Gilpin, Shantelle Garrick, and Kazuto Maehara. Bridgestone claims that
this evidence would have materially affected the Board's decision.
[22]
Cindy
Shattler's affidavit presents evidence via internet searches and a record of
telephone calls to bicycle retailers to show that bicycle accessories and
components are sold by the same company in the same channels of trade.
[23]
Campagnolo
submitted that this affidavit is inadmissible hearsay and does little more than
assert that bicycle accessories and components can be sold by the same company.
Bridgestone argues that it is not opinion evidence and does not address any
controversial issues.
[24]
I
take issue with Bridgestone arguing on one hand that this affidavit is material
evidence for the purpose of the standard of review, while suggesting on the
other that the evidence is not controversial or material that goes to the heart
of the matter for purposes of its admissibility. Bridgestone cannot have it
both ways. Further, Bridgestone was unable to explain when asked why this
evidence was not provided to the Board.
[25]
These
inconsistencies notwithstanding, this affidavit does not help resolve the
question of whether automotive products from Bridgestone making use of the
Bridgestone POTENZA trade-marks and bicycle products from Campagnolo are sold
in the same channels of trade, so I find this affidavit would not affect the Board's
decision in a material way.
[26]
Robert
Gilpin's affidavit aims to show that some retail chains sell both bicycle
parts, accessories and automobile products. The affiant attended Canadian Tire
and Walmart to examine their product lines. Campagnolo submits that, like the
Shattler affidavit, this evidence provides little that would materially affect
the Board's decision with regards to channels of trade, as it only shows large
retail chains sell both automobile and bicycle components.
[27]
I
agree with Campagnolo. The
evidence of Paul
Haym, and Paola Marinoni that
was before the Board establishes that the Respondent sells high-end bicycle
components in association with the Campagnolo POTENZA trade-mark, but only in specialty
high-end bicycle and sporting goods stores. The Gilpin affidavit does not
contradict that evidence and so would not have materially affected the
Registrar’s decision.
[28]
Shantelle
Garrick’s affidavit includes information she obtained from the Michelin website
which shows that Michelin specifically sells tires for bicycles and automobiles
and for the general proposition that tire companies can sell both. Campagnolo
argues that this information may be inadmissible. They submit it is
inadmissible as her employer is unknown and the information was obtained from a
telephone call to Michelin’s customer service centre and a single website in
respect of which there is no evidence that Canadians have viewed. Campagnolo
further submits that even if the affidavit is admissible, it fails to show
whether it is common in the trade for companies to sell both automobile and
bicycle tires; whether these products are sold through the same channels of
trade; or how it relates to Campagnolo’s proposed use of its Campagnolo POTENZA
trade-mark and Bridgestone’s use of the Bridgestone POTENZA trade-marks for
automotive products. I agree that this affidavit is merely repetitive of
similar evidence that was already before the Board and therefore would not have
materially affected the decision (Vivat Holdings Limited v Levi Strauss
& Co (2005), 41 CPR (4th) 8 (FCTD), at para 27).
[29]
The
Board found at paragraph 30 of the decision that even if there is evidence that
retailers commonly sell both car tires and bicycle accessories, “the probable type
of trade intended by the Applicant would be specialty bike shops and high end
sporting good stores which would not likely to sell tires and accessories for
motor vehicles.”
[30]
Kazuto
Maehara’s affidavit gives evidence that Bridgestone sells motorcycle tires and
tubes in Canada under the trade-marks of BATTLAX, EXEDRA and SPITFIRE. The
evidence is that Bridgestone’s Japanese subsidiary sells bicycle tire
components and accessories in Japan under the trade-mark of ANCHOR. Bridgestone’s
position is that they are not restricted to selling car tires in association
with the Bridgestone POTENZA trade-marks as registered and are not restricted
to the wares they currently sell in Canada.
[31]
Campagnolo
argues that this evidence is repetitive of evidence filed in the Opposition application
contained in the affidavit of Eiji Mineki. They submit that the evidence does
not suggest that bicycle tires or accessories are sold by Bridgestone in Canada under the Bridgestone POTENZA trade-mark in Canada.
[32]
I
find the affidavit of Kazuto Maehara adds nothing of significant probative
value such that it would materially affect the Board’s decision that in Canada, the parties sell distinctive wares, in different channels of trade, with no
overlap.
[33]
Bridgestone’s
other new evidence was nine certified trade-mark registrations (including the Bridgestone
POTENZA trade-marks already before the Board) and one application. This
evidence was filed to show that it is common for manufacturers to use the same
trade-marks for automobile tires and bicycle products. Of the seven newly-filed
trade-mark registrations, only two expressly cover tires for both automobiles
and bicycles. Bridgestone suggests to the court that if a consumer at
Canadian Tire saw a tire bearing a POTENZA trade-mark in the same store as bike
parts bearing a POTENZA trade-mark, they would likely be confused.
[34]
However,
I find that the small number of registrations filed is insufficient to establish
that such a practice is common and does not materially add to what was already
before the Board (the Bridgestone POTENZA trade-marks) (Kellogg Salada
Canada Inc v Maximum Nutrition Ltd (1992), 43 CPR (3d) 349 (FCA)) . Nor do
I agree that the additional registrations filed establish that the traders are
known to have used the same trade-mark for automobiles, or bicycles as it was
too small of a representation.
[35]
I
find that none of Bridgestone’s new evidence makes a substantial difference to
its case and is merely supplementing the evidence that was before the Board. Accordingly,
for the reasons above I find that none of these affidavits materially affect
the Board's decision, nor do they materially change the evidence before the
Board which established that in Canada, the parties sell distinctive wares in
different trade channels with no overlap.
[36]
The
standard of review is therefore reasonableness.
B. Was
the Registrar's Conclusion there was No Reasonable Likelihood of Confusion
Reasonable?
[37]
The
onus of establishing on a balance of probabilities that the application meets
the requirements of the act is initially on Campagnolo, then the evidentiary
burden switches to Bridgestone to “…lead evidence in support of the allegations
of non-compliance pleaded by him. The evidential burden is the burden of
adducing sufficient evidence to persuade the trier of fact that the alleged
facts are true…” (John Labatt Ltd v Molson Co, [1990] FCJ No 533 (FCTD),
at page 4; Christian Dior, SA v Dion Neckwear Ltd, 2002 FCA 29).
[38]
The
Board found that Bridgestone satisfied the initial burden, as the registrations
were in good standing.
Test
for confusion
[39]
A
trade-mark is registrable if it is not confusing with a registered trade-mark
(s. 12 of the Act).
[40]
A
consumer is “casual consumer somewhat in a hurry” (Mattel Inc v 3894207
Canada Inc, 2006 SCC 22, at para 58; Veuve Clicquot Ponsardin v Boutique
Cliquot Ltée, 2006 SCC 23, at para 20).
[41]
The
Registrar is to consider all the circumstances including the enumerated factors
in subsection 6(5). The factors do not need to be given equal weight and they
are not exhaustive. The factors are as follows:
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What
to be considered
(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.
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Éléments
d’appréciation
(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.
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[42]
Bridgestone
submits that it would be “difficult to imagine” wares more similar than the
wares sold by Bridgestone and the wares in Campagnolo's POTENZA trade-mark
application. Bridgestone argues that the first impression of a consumer would
be confusion and that Campagnolo has not filed any evidence to show otherwise.
Bridgestone’s main opposition was based on section 12(1)(d) of the Act - that
there would be a likelihood of confusion between Campagnolo’s POTENZA trade-mark
and Bridgestone’s POTENZA trade-marks.
[43]
The
Board found in favour of Bridgestone with regard to the factors described in
paragraphs 6(5)(a), (b) and (e) of the Act, but noted that these factors were
not determinative. These factors are not disputed in this application.
[44]
The
Board found that the trade-marks are identical in sound and appearance, and given
this high degree of resemblance, paragraph 6(5)(e) of the Act weighs in favour
of Bridgestone’s position. Likewise, the Board found in favour of Bridgestone
with regard to paragraph 6(5)(a), which is the inherent distinctiveness of the
trade-marks or trade-names and the extent to which they have become known. The Board
found that Bridgestone had registered based on use the trade-mark POTENZA in Canada since February 12, 1982 and POTENZA RE92 since November 28,
1988. The Board also acknowledged that Bridgestone had spent more than
$64,000 on advertising products and that they have sold more than 5 million POTENZA
tires and more than 3 million POTENZA RE92 brand tires in Canada since 1997. In
contrast, the Board found that there was no evidence that the Campagnolo
POTENZA trade-mark had been used or was known in Canada. For those
reasons the Board held in favour of Bridgestone on paragraph 6(5)(b) of the
Act: the length of time the trade-marks or trade-names have been in use.
[45]
The
Board was clearly aware of the factors that favoured Bridgestone and took them
into consideration. On
the standard of reasonableness, it is not up to this Court to re-weigh the evidence or substitute its views for that of the Board.
Paragraphs 6(5)(c)
and (d): nature of the wares and nature of the trade
[46]
The
crux of this appeal is the Board’s confusion analysis with respect to the
factors found at paragraphs 6(5)(c) and 6(5)(d) of the Act. These factors led
to the Board’s rejection of Bridgestone’s opposition.
[47]
Bridgestone
argues the Board’s confusion analysis in paragraphs 6(5)(c) and (d) make this decision
reviewable for the following reasons.
[48]
First,
because the similarity of the wares would favour a finding for Bridgestone.
[49]
Second,
Bridgestone submits confusion is likely because its wares could be sold through
the same channels of trade as Campagnolo’s. Its position is that because the
Campagnolo application did not include limitations as to intended channels of
trade, confusion would result. Thus, Bridgestone submits that while Campagnolo
currently only sells their wares at specialty high-end stores, there is nothing
to stop Campagnolo from selling in the same stores that currently sell
Bridgestone tires in the future.
Nature of the
Wares
[50]
Bridgestone
used the Campagnolo 2009 Range Catalogue [2009 catalogue] and Index to show
that Campagnolo does sell wheel technology and braking systems using the SKELETON
trade-mark. Further, Bridgestone submits that it does not matter that tires,
brakes, wheels, rims and spokes are excluded from Campagnolo’s trade-mark, as
an ordinary consumer will not see the difference and Campagnolo has the burden
to show there would not likely be confusion, and they have not done so.
[51]
Only
portions of the 2009 catalogue were filed and what was filed is not sufficient
evidence to support Bridgestone’s argument.
[52]
Campagnolo
suggests that the descriptions of the trade-marks is sufficient to find the trade-marks
would not be confusing as the Bridgestone trade-marks cover tires, inner tubes,
wheels and Campagnolo trade-mark explicitly excludes tires, brakes, wheels,
rims and spokes. Further, Campagnolo argues that Bridgestone does not sell or
distribute racing bicycles or components in Canada or anywhere else in
association with Bridgestone POTENZA trade-marks.
Channels of
Trade
[53]
Bridgestone
says their registrations show they can sell bike tires and wheels in the same
channel of trade, and that Campagnolo has provided no evidence to the contrary.
The burden is on Campagnolo and Bridgestone submits that it has not been met.
Bridgestone argues that the only evidence Campagnolo has provided pertains to
current distribution practices, and not their future plans. Bridgestone submits
that just because Campagnolo currently sells high-end bicycle components in
specialty stores does not mean they will not market a cheaper line in big box
stores in the future, as there is no channel of trade restriction in Campagnolo’s
registration. Bridgestone argues that the Registrar erred by only examining the
present channels of trade and it should have looked at what channels may be
used in the future.
[54]
Bridgestone
relies on the case of Mr. Submarine Ltd v Amandista Investments Ltd (1987), 19
CPR (3d) 3 (FCA) [Mr. Submarine], for the proposition that
confusion must be examined prospectively. Mr. Submarine was an
infringement case dealing with the trade-mark used by a Mr. Subs’n Pizza and
Mr. 29 Min Dubs’n Pizza operating in Dartmouth, Nova Scotia since 1975, which
concentrated on a telephone ordering system with pizza being 75 % of the
business’ sales. Mr. Submarine did have one franchise in the Halifax area. The passage referred to at the hearing is found at page 8 of the decision. I
do not think that the passage was meant to extrapolate that in Opposition proceedings
the Board must examine all wares and conceivable places where such wares could
be sold in order to determine confusion. Mr. Submarine was an
infringement case and this passage was confirming that Mr. Submarine was not
confined to only the parts of Canada where it had franchises and only to sell
sandwiches the way they currently sold them.
[55]
Further
clarification was given recently by the Federal Court of Appeal in Movenpick
Holdings AG v Exxon Mobil Corp, 2013 FCA 6, at para 6, where the Court cited
with approval the Registrar’s comments: “The parties’ respective statements of
services must be read with a view to determining the probable type of business
or trade intended by the parties rather than all possible trades that might be
encompassed by the wording (see McDonald’s Corp v. Coffee Hut Stores Ltd.
(1994), 55 C.P.R. (3d) 463 (FCTD)”.
[56]
I
find that the Registrar followed the instructions of the Court of Appeal by considering
all of the predictable and usual channels of trade in which products would be
sold in rather than all hypothetical channels.
[57]
The
Registrar held at paragraphs 28-30:
28-In the present case, the
Applicant’s wares comprise parts and accessories for bicycles and the
Opponent’s wares comprise tires, tubes, inner tubes and wheels for automobiles.
In my view, the Applicant’s bicycle parts and accessories are fundamentally
different from the Opponent’s tires, tubes, inner tubes and wheels. I also consider
it important to note that the applied for wares specifically exclude tires,
brakes, wheels, rims and spokes.”
29- With respect to the parties’
channels of trade, the Applicant has filed as its evidence the affidavits of
Paul Haym and Paolo Marinoni, officers of two Canadian bicycle retailers, one
from Vancouver and one from Quebec. Both affiants state that their stores have
acted as distributors in Canada for the Applicant for many years, and the
Applicant’s products, including high end components for racing bikes such as
derailleurs, cranksets, sprockets and braking systems, are distributed and sold
in Canada to specialty bike shops and high-end sporting goods stores.
30- The Opponent argues that its
evidence shows that Canadian Tire and Costco sell both car ties, bicycle tires
and bicycle accessories. As noted above, however, I have given little weight to
this evidence. Even if I could give full consideration to this evidence, the
Applicant’s evidence shows that the probable type of trade intended by the
Applicant would be specialty bike shops and high-end sporting goods stores
which would not likely sell tires and accessories for motor vehicles.
[58]
Further
I find that the level of sophistication of the Campagnolo purchasers of these
racing bicycle components are likely to know the difference between a
Campagnolo and Bridgestone bicycle tire if Bridgestone were to eventually sell
bicycle tires in Canada. The decision maker had evidence in the affidavit
material of Paul Haym and Paolo Marinoni that confirmed that no one had
contacted their businesses for products manufactured by Bridgestone.
[59]
For
these reasons I find that Bridgestone’s argument found at paragraph 55 of this
decision must fail.
[60]
The
applicable standard of reasonableness in this context was examined by Justice Yves
de Montigny in Hawke & Company Outfitters LLC v Retail Royalty Co,
2012 FC 1539, at para 47:
…When the standard applies, as
recalled by the Supreme Court in Mattel Inc. v. 3894207 Canada Inc. 2006
SCC 22, [2006] 1 S.C.R. 772 [Mattel}, the question is whether the Board’s decision
can withstand “a somewhat probing” examination and is not “clearly wrong” (at
par 40). Considering the expertise possessed by members of the Board, who
determine whether applied-for trade-marks are confusing or not on a daily
basis, their decisions ought not to be set aside lightly. The Court’s role when
reviewing a decision under the reasonableness standard has been described as
follows in Dunsmuir v. New Brunswick, 2008 SCC 9, [2008] 1 S.C.R. 190 at
para 47:
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
[61]
After
careful review I find that the Board’s decision was detailed and reasonable.
The Board found the nature of the respective wares were fundamentally distinct.
Moreover, the Board found the channels of trade would not likely overlap, as
the evidence of the specialized nature of Campagnolo’s POTENZA products, even
if sold by the same retailer, would not be sold in the same department. Consequently,
the Board found the likelihood of confusion was very low or nonexistent.
Other Grounds of
Opposition
[62]
Bridgestone
argued that the differences in material dates turn on the likelihood of
confusion between the Campagnolo POTENZA trade-mark and the Bridgestone POTENZA
trade-marks.
[63]
The
Board found that “the differences in the material dates do not have any
significant impact on the determination of the issue of confusion between the
trade-marks of the parties.” At the hearing Bridgestone argued that the
relevant date is the date of this decision but had no jurisprudence to support
this assertion. I find the decision maker’s decision regarding material dates
was supportable and reasonable.
[64]
Another
ground of opposition dismissed by the Board related to a claim by Bridgestone
that Campagnolo had not met its obligations under section 30(i) of the Act. The
Board dismissed it on the basis that such a claim will only succeed in the case
of a complete section 30(i) statement where there is evidence of bad faith on
the part of a trade-mark applicant. The Board found no such bad faith. The Board’s
dismissal of this argument was reasonable as there was no evidence of bad faith
on the part of Campagnolo.
[65]
In
conclusion, I am not persuaded that the Board erred. The Board’s reasoning was
justifiable, transparent and intelligible and its decision clearly falls within
a range of possible and acceptable outcomes. The appeal is dismissed.
[66]
The
Parties by agreement filed what the amount of costs should be if awarded.
JUDGMENT
THIS COURT’S
JUDGMENT is that:
1. Appeal dismissed;
2. Costs
awarded to the Respondent Campagnolo S.R.L. in the amount as agreed on by the
parties, in the amount of $7,000.00 including disbursements payable forthwith.
"Glennys L.
McVeigh"
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