Dockets:
T-1664-11
T-1665-11
Citation: 2014 FC 223
Ottawa, Ontario, March 6, 2014
PRESENT: The Honourable Mr. Justice de Montigny
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BETWEEN:
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LONDON DRUGS LIMITED
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Applicant
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and
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INTERNATIONAL CLOTHIERS INC.
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Respondent
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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 two decisions rendered by the
Trade-marks Opposition Board (the “Board”) of the Canadian Intellectual
Property Office (“CIPO”) as a delegate of the Registrar of Trade-marks, dated
July 26, 2011 and rendered by Ms Andrea Flewelling (the “Officer”) in respect
of application numbers 1,280,468 and 1,280,469 (the “Trade-mark Applications”).
Factual
background
[2]
On November 22, 2005, International Clothiers
Inc. (“INC”, the “Respondent”) filed Canadian Trade-mark Application Nos
1,280,468 and 1,280,469, both for the trade-mark SMITH & BARNES LONDON.
These Applications were filed on the basis of proposed use in association with
“retail clothing store services; retail department store services” (Application
No 1,280,468 – the “Services” Application) and with a wide variety of wares
(Application No 1,280,469 – the “Wares” Application) that can be categorized as
follows: clothing, ladies’ accessories (hats, gloves, hair clips, jewellery,
etc.), soft goods (handbags, purses, wallets, briefcases), housewares
(cookware, giftware, dinnerware), kitchen accessories, home furnishing
(furniture, bedding, pillows, towels, etc.). The full list of wares is included
in Appendix A.
[3]
The Services Application was advertised in the
Canadian Trade-marks Journal on October 17, 2007. An erratum was
published on November 7, 2007 correcting an error with the advertisement which
had wrongly included disclaimers for the words SMITH and BARNES. The Applicant
filed a Statement of Opposition on December 17, 2007. As for the Wares
Application, it was advertised on January 9, 2008 and the Applicant filed its
Statement of Opposition on February 5, 2008.
[4]
The Applicant is a well-known Canadian drugstore
and retailer of general merchandise in Western Canada. The grounds of
opposition for both Applications can be summarized as follows:
•
The
trade-mark SMITH & BARNES LONDON is not registrable pursuant to paragraphs
38(2)(b) and 12(1)(d) of the Act, because it is confusing with the
Applicant’s trade-mark registrations covering a wide range of wares and
services listed in Appendix B below;
•
The
Respondent is not the person entitled to registration of the trade-mark SMITH
and BARNES pursuant to paragraph 38(2)(c) of the Act, because at the
date of filing of the Application:
-
the
applied-for Mark was confusing with the Applicant’s marks which had previously
been used in Canada for the goods and services set out in Appendix B and other
goods and services which are of the same type as the services and wares
including the sale of clothing and clothing accessories, the clothing and
clothing accessories, housewares, jewellery and home furnishings (paragraph
16(3)(a));
-
the
applied-for Mark was confusing with the trade-mark applications previously
filed by the Applicant which were pending at the date of advertisement of the
application for the Mark, details of which are set out in Appendix C of these
reasons (paragraph 16(3)(b)):
i.
LONDON DEPARTMENT STORES –
1,095,092 – filed March 6, 2001
ii.LONDON PREMIERE –
1,247,283 – filed February 15, 2005
iii.
LONDON
GOURMET – 1,204,476 – filed January 28, 2004
iv.
– 1,204,845 – filed
February 2, 2004
-
the
applied-for Mark was confusing with the Applicant’s trade names LONDON, LONDON
DRUGS and LONDON DRUGS LIMITED (the “Applicant’s Trade Names”) which had
previously been used by the Applicant in Canada (paragraph 16(3)(c))
•
The
trade-mark is not distinctive nor is it adapted to distinguish the wares and
services of the Applicant from the wares and services of the Respondent,
pursuant to paragraph 38(2)(d) and section 2 of the Act.
[5]
In support of its opposition, the Applicant filed
with the Board two affidavits (one for each application) of Grant Ball (General
Manager, General Merchandise), sworn on September 17, 2008. Mr Ball was not
cross-examined on his affidavits. In his affidavits, Mr Ball alleges the
following:
•
The Applicant is a leading Canadian drugstore
and retailer of general merchandise, including but not limited to clothing,
footwear, fashion accessories, cosmetics, health & beauty aids,
photographic products, photographic development services, housewares,
furniture, food, electronic equipment, audio-visual equipment, computers,
stationery, books, magazines, jewellery, watches and optical products;
•
The Applicant has been in operation since
approximately 1946 and has used the LONDON DRUGS trade-mark in association with
the operation of a drugstore and the operation of a department store since
approximately 1977. This is evidenced by the sample advertising flyers attached
to the affidavits, the first of which is from 1977;
•
As of the date of swearing his affidavits, the
Applicant operates 69 stores in Canada, specifically 25 in British Columbia, 20
in Alberta, 3 in Saskatchewan and 1 in Manitoba. Flyers were provided in cities
in which the Applicant operates;
•
There is substantial use in Canada of the Applicant’s marks in association with various wares and services;
•
On average, approximately three-quarters of a
million transactions take place at the retail locations each week;
•
In the last 5 years, the total volume of goods
sold using the trade-marks related to the Services Application have been well
in excess of 150 million unit annually. Annual gross sales from 2003-2007 have
been in excess of $1 billion;
•
In the last 5 years, the total volume of goods
sold using the trade-marks related to the Wares Application have been well in
excess of 7 million unit annually. Annual gross sales from 2004-2007 have been
in excess of $50 million;
•
The Applicant has spent in excess of $50 million
on advertising expenditures, including the flyers mentioned previously;
•
The Applicant advertises its services on its
website (a copy of which was attached to the Ball affidavits) and the number of
hits to the website have been in excess of 2, 4, 6 and 8 million respectively
in the years 2004 to 2007.
[6]
The Respondent filed the affidavit of Gay Owens,
a trade-mark searcher hired by the Respondent’s agent. She states that on
January 14, 2009, she conducted a State of the Register search for trade-marks
including the word “London” in the field of “clothing, housewares, home
furnishings, retail clothing store services and/or department store services”.
Her search revealed that there were over 50 trade-mark registrations for wares
including clothing and/or accessories, headwear, footwear, leather goods, etc.
which included the word “London” in the field of “clothing, housewares, home
furnishings, retail clothing store services and/or department store services”.
The impugned
decision
[7]
In both of his decisions dated July 26, 2011,
the Officer first addressed the onus and the material dates. The Officer
found that an opponent bears an initial evidential burden to adduce sufficient
admissible evidence to support the facts alleged in support of each ground of
opposition. An applicant then bears the legal onus of establishing, on a
balance of probabilities, that the application complies with the requirements
of the Act and that the particular grounds of opposition should not prevent
registration of the mark. The Officer determined that this onus is
applicable to all grounds of opposition.
[8]
The Officer also established the following
material dates. With respect to the first ground of opposition
(registrability/confusion), the material date is that of the Officer's
decision. With respect to the second, third and fourth grounds (entitlement to
register/confusion), the material date is the application filing date. Finally,
the material date for the last ground of opposition (distinctiveness) is the
date when the Statement of Opposition was filed.
[9]
In addressing the first ground of opposition,
the Officer focused her analysis on the trade-mark LONDON DRUGS (TMA311,269)
covering the following services “operation of a drugstore and the operation of
a department store”, as she found it to be representative of the Applicant’s marks.
The Officer also determined that only three of the Applicant’s marks cover
limited wares which overlap with the applied-for Marks of the Respondent:
LONDON GOLD MINE (TMA370,629), LONDON DRUGS JEWELLERY (TMA300,627) and LONDON
PREMIERE & DESIGN (TMA581,005). The question, therefore, was whether or not
there is confusion between these marks and the Respondent’s applied-for Mark.
[10]
The Officer stated that the test for confusion
is one of first impression and imperfect recollection. She summarized subsection
6(2) of the Act and indicated that in applying the test for confusion,
the Registrar must have regard to all the surrounding circumstances, including
those specifically enumerated in subsection 6(5) of the Act. She added
that in most instances, the degree of resemblance between the trade-marks in
appearance or sound or in the ideas suggested is the dominant factor.
[11]
Starting with the degree of resemblance, the
Officer found that there is no similarity between the SMITH and BARNES elements
of the trade-mark SMITH & BARNES LONDON and the DRUGS element of the Applicant’s
LONDON DRUGS trade-mark in either appearance or sound. The Officer left aside
the word “London” because it possesses little inherent distinctiveness due to
its geographical connotation. She further found that, aside from the inclusion
of the place name “London”, there is no similarity in the ideas suggested by
both trade-marks (drugs for LONDON DRUGS and two individuals by the names of
SMITH and BARNES for the trade-mark SMITH & BARNES LONDON). Ultimately, the
Officer concluded that the fact that both trade-marks share the word LONDON is not sufficient to find that the parties’ trade-marks share any significant
degree of resemblance in either appearance, sound or ideas suggested.
[12]
The Officer then analysed the remaining factors
and found the following. With respect to paragraph 6(5)(a) (inherent
distinctiveness/acquired distinctiveness), she found that the word LONDON present in both parties’ marks is a geographic designation which, as such, is not
inherently distinctive. SMITH and BARNES similarly possess little inherent
distinctiveness by virtue of their surname significance. DRUGS is also
descriptive of the nature of the Applicant’s services and thus possesses little
inherent distinctiveness. The same is true of the words GOLD MINE and DRUGS
JEWELLERY in the first two of the Applicant’s marks covering wares, as they are
suggestive of the associated jewellery wares. As for the word PREMIERE, it does
not add either to the inherent distinctiveness of the mark LONDON PREMIERE
& Design. As a result, the Officer found that neither of the parties’ marks
is inherently strong, and that even small differences will accordingly be
sufficient to distinguish between them.
[13]
Nevertheless, a trade-mark can have an acquired
distinctiveness depending on the extent to which this trade-mark has become
known. The Respondent did not file any evidence directed to the use of its
applied-for trade-mark, and the Officer was therefore unable to conclude as to
the extent to which that Mark has become known. The Applicant, on the other
hand, has filed significant evidence of use and was able to establish a
significant reputation for the LONDON DRUGS trade-mark in Canada. Based on the evidence submitted by the Applicant, in particular the Ball Affidavits,
the Officer was satisfied that the LONDON DRUGS trade-mark had established a
significant reputation in Canada in association with the claimed services. With
respect to the Applicant’s registrations for relevant wares, the Officer noted
significant deficiencies in the evidence, including the fact that the use of
the marks in advertising does not qualify as use of the marks in association
with wares, and the absence of detailed sales figures for each of the relevant
categories of wares.
[14]
In the end, the Officer agreed with the Respondent
that, “regardless of the extent to which parties’ marks may have become known,
the inherent distinctiveness of the marks remains a relevant surrounding
circumstance that must be considered in the analysis of the likelihood of
confusion between trade-marks” (at para 41 of the “Services” decision and para
45 of the “Wares” decision). The Officer also concluded that the reputation of
the Applicant does not extend to the word LONDON but only to the mark itself:
While I agree that a
common word, like “London”, can develop strong secondary meaning through
extensive use as a trade-mark, it is important to note that, in the context of
this opposition proceeding, the Opponent’s reputation extends only to the
Opponent’s Marks, not to the word “London” by itself. Through its submissions,
the Opponent is essentially attempting to claim a monopoly over the word
“London”. While I agree that the Opponent has developed an extensive reputation
for the Opponent’s Marks, it has not acquired a reputation for the word “London”
by itself sufficient to take it outside of its common meaning. It is important
to note that each of the Opponent’s Marks include other elements which serve to
create substantial differences between the parties’ marks, as discussed above
in the analysis of the s. 6(5)(e) factor.
“Services” Decision,
para 42.
[15]
As for the length of time each mark has been in
use (paragraph 6(5)(b)), the Officer found that this factor favoured the
Applicant as of the material date. While the Respondent has not filed any evidence
directed to the use of its proposed Mark subsequent to the filing of his applications
on November 22, 2005, the Applicant has provided extensive evidence
establishing the use of its LONDON DRUGS trade-mark in association with the
operation of a drugstore and the operation of a department store since
approximately 1977. However, there is no evidence of significant and continuous
use of the LONDON GOLD MINE, LONDON DRUGS JEWELLERY and LONDON PREMIERE
trade-marks.
[16]
With respect to the nature of the wares and
services (paragraph 6(5)(c)), the Officer’s starting point is the Respondent’s
statement of services and wares as defined in its applications versus the
Applicant’s registered wares and services. She found that there is direct
overlap between the parties’ services in the form of department store services,
and some similarity between the Respondent’s “retail clothing store services”
and the Applicant’s “retail department store services”. As for the wares, the
Officer found that there is also some similarity between the Respondent’s wares
and the Applicant’s “retail department store services”, on the basis of the
evidence provided by the Respondent that it sells small leather goods,
clothing, headwear, footwear, accessories, housewares and home furnishings in
its retail stores. Yet, the majority of these goods are third-party branded
products that may or may not display other trade-marks, and therefore it does
not constitute use of the Applicant’s marks in association with these products
in accordance with subsection 4(1) of the Act. Finally, the Officer was
also of the view that there is some overlap in the nature of the parties’ wares
with respect to the trade-marks LONDON GOLD MINE, LONDON DRUGS JEWELLERY, and
LONDON PREMIERE & DESIGN.
[17]
Concerning the nature of the trade (paragraph 6(5)(d)),
the Officer noted that neither the Applicant’s registrations nor the
Respondent’s applications includes any restriction on the channels of trade.
She found, therefore, that the channels of trade associated with the Respondent’s
Mark and the Applicant’s marks could overlap given the direct overlap in the
parties’ wares and services.
[18]
The Officer also looked at some additional
surrounding circumstances. With respect to the State of the Register, the
Officer held that, in view of the number of co-existing LONDON marks disclosed
by the Owens affidavit (over 50 trade-mark registrations for wares including
clothing and/or accessories/headwear/footwear/leather goods/etc.), this factor
favoured the Respondent in connection with the Wares Application. On the other
hand, as few (only three) co-existing LONDON marks were found within the store
services field, the Officer found that this did not favour the Respondent in
relation to the Services Application.
[19]
The second surrounding circumstance considered
by the Officer is the Applicant’s alleged family of LONDON trade-marks. The
Officer found that the Applicant has succeeded in establishing its ownership of
a family of the following four trade-marks: LONDON DRUGS, LONDON PREMIERE, LONDON
GOURMET and LONDON HOME. She noted that a family of four “London” trade-marks
is insufficient to overcome the fact that the word “London” possesses little
inherent distinctiveness and is a geographical word for which the Applicant has
not established sufficient reputation therein. She added that the additional
elements or these marks are common words which are suggestive of the
Applicant’s wares and services and thus possess little inherent
distinctiveness.
[20]
On the basis of all these factors and surrounding
circumstances, the Officer was satisfied that the Respondent had discharged its
burden of showing, on a balance of probabilities, that there is no reasonable
likelihood of confusion between the applied-for Mark and the Applicant’s marks.
[21]
The Officer then addressed the non-entitlement
arguments presented by the Applicant. The Officer acknowledged that the
Applicant had provided sufficient evidence of use of its trade-marks and of its
pending applications to satisfy its evidential burden with respect to each of
these three grounds of opposition. Based on her previous finding that there is
no likelihood of confusion between the parties’ trade-marks, and given that the
different material dates do not materially affect her conclusion in that
respect, she dismissed these non-entitlement grounds.
[22]
As for the non-distinctiveness ground, the
Officer was satisfied that the Applicant had provided sufficient evidence to
support a finding that one or more of its marks had become known sufficiently
to negate the distinctiveness of the proposed Mark as at the date of filing the
Statement of Opposition. Again, this ground was nevertheless dismissed because
of the Officer’s prior finding that the proposed Mark is not confusing with the
Applicant’s marks.
New evidence
[23]
Additional affidavit evidence was filed by both
parties as a result of the Notices of Application for an appeal of the TMOB
decisions. The Applicant filed the affidavit of Robert Felix (General Manager
and Business Unit Manager General Merchandise). The Respondent filed three
additional affidavits, that of Jessica Koper (private investigator employed by
CKR Global Investigations), of Gay Owens and of Pamela Tuchlin (law clerk at
Smart & Biggar). The Applicant cross-examined Jessica Koper on her
affidavit.
- The
Felix Affidavit
[24]
In his affidavit, Mr Felix provides an updated
list of trade-mark registrations and applications which are owned by London
Drugs in Canada. The trade-marks LONDON PREMIERE, LONDON GOURMET and LONDON
GOURMET & Design, which were pending at the time of the Ball Affidavits (see
Appendix C), have since been registered with the Canadian Trade-marks Office,
while applications for the trade-marks LONDON ORCHARDS, LONDON LOOK, and LONDON
PLANTATION were filed based on proposed use after the Ball Affidavits. It is
also stated that London Drugs owns registrations and applications that were not
included in the Ball Affidavits.
[25]
Mr Felix then focuses on a selection of the
LONDON Marks and their associated products and services, and sets out a general
description and/or examples of the types of products sold by London Drugs
within various categories. He then provides a breakdown of the number of units
and overall sales for each category of goods sold by London Drugs. He gives the
specific locations of London Drugs’ stores, and attaches copies of photographs
of exterior signage and of various departments within these stores. He also
reiterates and updates the figures already given in the Ball Affidavits with
respect to the annual advertising budget, the flyers circulation and the number
of annual visits to the London Drugs website. Copies of newspaper articles from
2000 to 2011 with London Drugs as the headline of the story are also attached
as exhibits to the affidavit.
[26]
Mr Felix also attaches to his affidavit copies
of photographs, packaging and/or labels of representative products sold in
association with the LONDON DRUGS brand in various categories of wares. He also
provides the annual sales for selected categories of goods sold by London Drugs
in association with its private label LONDON DRUGS and LONDON DRUGS &
Design. The products imported by London Drugs are tracked separately from their
ordinary private label products and are not included in the sales figures
mentioned above. The majority of the LONDON imports are sold with LONDON DRUGS
marked either on a sticker attached to the product packaging or on the hand tag
physically attached to the product.
[27]
Finally, the Felix Affidavit provides copies of
photographs, packaging and/or labels of representative products and services
sold in association with the selection of the LONDON marks referred to above.
It also provides the volume and gross sales of products or services annually
for the past ten years or so. Mr Felix concludes that, to his knowledge, the
Applicant is the only general merchandise retailer in Western Canada using the
name LONDON in association with a wide variety of products and services, and
the only retail department store using LONDON as a trade-mark in association
with services. He believes that the use of LONDON in SMITH & BARNES LONDON
by a competitor will lead the public to believe or at least question whether
the Respondent’s products and services are affiliated with the Applicant.
- The
Koper Affidavit and cross-examination
[28]
On June 12, 2012, counsel for the Respondent
instructed CKR Global Investigations to examine the state of the marketplace in
Canada for third party uses of business and corporate names that include the
word “LONDON”, in particular those businesses in the fields of clothing and
accessories, home furnishings and housewares. Ms Koper searched the yellow
pages website, the Registraire des Entreprises du Québec website and did a
NUANSsearch of corporations and registered business having the name LONDON in
their business or corporate names. She also followed up with further searches
to obtain information on the status and the nature of these businesses. She
found 46 businesses and corporate names of active businesses that include the
word LONDON in the fields of clothing and accessories, home furnishings and/or housewares.
[29]
On cross-examination, Ms Koper confirmed that
she did not have personal knowledge of whether all the businesses identified in
her affidavit were active at the time she swore her affidavit, nor did she have
personal knowledge of what they sold, when they commenced business and what
their volume of sales were. She did not visit or make a purchase from any of
the businesses listed in her affidavit or even look at the store in Google
Streetview; she only knows about what the businesses sell from viewing the
website or looking at the categories they were in on the Canada 411 listings.
She was not aware either of the signage used at these businesses, or whether
any of them were actually using a trade name that includes the word LONDON,
with a few exceptions when the stores answered the phone.
- The
2012 Owens Affidavit
[30]
On June 11, 2012, Ms Owens conducted another
computer-assisted State of the Register search using the CDNameSearch Corp
system for the purpose of locating active trade-mark registrations and
applications containing the word LONDON in the field of clothing, housewares,
home furnishings, retail clothing store services and/or department store
services. This evidence essentially replaces her previous affidavit filed in
2009 before the Board as part of the opposition. In this new affidavit, there
are 134 trade-marks listed containing the word LONDON, of which there are 102
registrations. It appears that none of them relate to retail department store
services (in 2009, three were found). Only two relate to a retail clothing
business (AQUASCUTUM OF LONDON and AQUASCUTUM OF LONDON, ENGLAND) and one
relates to a retail footwear store (SACHA LONDON). The affidavit also
establishes that there are numerous co-existing registrations in Canada (more
than what was found in 2009) which include the word LONDON within the field of
clothing, accessories, soft goods, housewares and home furnishings. For
example, with respect to housewares, three related registrations were found and
another three relate to home furnishing (in 2009, none were found). It also
appears that the word LONDON has been disclaimed in many registrations.
- The
Tuchlin Affidavit
[31]
The Affidavit of Pamela Tuchlin provides copies
of corporation profile reports and business name reports for entities in Canada
that include the word LONDON in their corporate and business names.
Thirty-seven (37) businesses with the word LONDON in their trade names were
found, thirty-three (33) of which were in Ontario, one (1) in Quebec, two (2)
in Nova Scotia and one (1) incorporated federally. Most of those were canvassed
by Ms Koper’s investigation.
Issues
[32]
The issues to be resolved in this appeal are the
following:
a) What
is the applicable standard of review?
b) Depending on the applicable
standard of review, was the Officer’s decision reasonable / correct?
Analysis
a) The standard of review
[33]
It is settled law that, in the absence of
additional evidence produced on appeal under section 56 of the Act, the
reasonableness standard of review applies. It is also well established that
when new evidence is submitted, it is necessary to assess the significance and
probative value of such evidence. Where the new evidence adduced is
sufficiently significant and probative, to the point that it would have
materially affected the Board’s findings of fact or the discretion exercised,
the standard of review to be applied is correctness. As Mr Justice Rothstein
stated (writing for the majority of the Federal Court of Appeal) in Molson
Breweries v John Labatt Ltd (2000), 5 CPR(4th) 180, [2000] 3 FC 145, at
para 51:
I think the approach
in Benson & Hedges v. St. Regis and in McDonald’s Corp. v.
Silcorp 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.
[34]
That decision has been explicitly endorsed by
the Supreme Court in Mattel Inc v 3894207 Canada Inc, [2006] 1 S.C.R. 772,
at para 41 [Mattel], and it is therefore clear that this Court has an
unfettered discretion to come to its own conclusion as to the correctness of
the Board’s decision if new evidence has been filed that is significant and
would materially affect the Registrar’s decision: see Telus Corp v Orange
Personal Personal Communications Services Ltd, 2005 FC 590, at para 397; Bojangles’
International, LLC v Bojangles Café Ltd, 2006 FC 657, at paras 9-10; CEG
License Inc v Joey Tomato’s (Canada) Inc, 2012 FC 1541, at para 14-16.
[35]
Having considered all of the affidavits filed
before this Court, and bearing in mind that the test is one of quality, not of
quantity (Wrangler Apparel Corp v The Timberland Company, 2005 FC 722,
at paras 7-9), I am of the opinion that the new evidence is not of such
significance that it would have materially affected the Officer’s findings of
fact or the exercise of her discretion.
[36]
At the hearing, counsel for the Respondent
readily conceded that the Koper and Tuchlin affidavits do not have much weight
and would not be sufficient to call for the application of the correctness
test. There was no evidence relating to the state of the marketplace before the
Officer, who relied instead on the information presented in relation to the State
of the Register. While the Respondent attempted to address this deficiency with
the Koper Affidavit, its shortcomings undermine much of its weight. She was not
questioned on many of the businesses referred to in her affidavit, but the fact
remains that she did not know about the existence or the nature of a large
number of the businesses that she identified. Even if, as submitted by the
Respondent, 16 of the 46 businesses that include the word LONDON in their names
were confirmed by Ms Koper as being active, it is far from clear that this
would be sufficient to draw any conclusion as to the state of the marketplace.
We do not know what these businesses sell, when they commenced business, what
their volume of sales, what their reputation is, etc. Moreover, many of these
businesses appear to operate in the area of London, Ontario, and the use of LONDON in their names obviously refers to their geographic location more so than to a
trade-mark.
[37]
The same is true, to a large extent, of the
Tuchlin Affidavit. Much like the businesses referred to in the Koper Affidavit,
we do not know the field of business for any of the entities referred to in her
affidavit, and whether they are still active. Moreover, the vast majority of
these businesses were already canvassed by Ms Koper in her investigation.
[38]
As for the second Owens Affidavit, it is
essentially an updated version of the first one filed before the Officer. It
suggests that, just as in 2009, there are still three relevant registrations
for retail clothing store services and/or department store services, a number
that was considered by the Officer to be insufficient to infer anything
regarding the state of the marketplace. It also adds to a vast number of
registrations relating to clothing, soft goods and accessories, three
registrations for home furnishings and three others for housewares. The Officer
rejected the Applicant’s argument that the absence of registration for housewares
or home furnishings and only three relevant registrations for retail clothing
store services and/or department store services did not permit the Opposition
Board to make any inferences as to the actual use of any of these trade-marks
in the Canadian marketplace for these wares and services. Clearly, the addition
of registrations for housewares and home furnishings would only reinforce his
finding that the extensive use of the word “LONDON” for clothing, accessories,
leather goods, etc. serves to decrease the likelihood of confusion between the parties’
marks.
[39]
There remains the Felix Affidavit. It will be
recalled that the Officer, in his decision on the Wares Application, indicated
that the only evidence of use of the Applicant’s LONDON trade-marks on relevant
wares, shown in the Ball Affidavits, is in respect of the trade-marks LONDON
DRUGS, LONDON DRUGS & Design, and LONDON PREMIERE & Design. In
addition, the Officer agreed with the Respondent’s position that the Ball
Affidavits did not provide detailed sales figures for each category of wares
sold in association with the Applicant’s trade-marks, such that the Applicant’s
overall sales may have taken place in categories that do not overlap with the
wares of the Respondent. Finally, the Officer also concluded in both of his
decisions that the Applicant had only shown use of four members of the family
of LONDON trade-marks: LONDON DRUGS, LONDON PREMIERE, LONDON GOURMET, and
LONDON HOME.
[40]
I do not find that this affidavit would have
radically changed the Board’s decision. Counsel for the Applicant submitted
that the evidence of use of the Applicant’s LONDON trade-marks is greatly
expanded upon in the Felix Affidavit, with a detailed breakdown of sales by
different departments. I note, first of all, that some of the new evidence
relates to trade-marks that were not even relied upon or pleaded within the
Applicant’s Statements of Opposition. More importantly, this new evidence does
not substantially address the main grounds upon which the Board’s decision rests.
The Officer was aware of the many trade-marks owned by the Applicant and that
they are widely used over a broad range of products. Adding more trade-marks to
the mix and providing more evidence of their use in relation to even more
products would not have altered his view that LONDON possesses little
distinctiveness due to its geographical connotation, or that there is no
similarity between the SMITH and BARNES elements of the Respondent’s Mark and
the DRUGS element of the Applicant’s LONDON DRUGS trade-mark in either
appearances or sound.
[41]
For those reasons, I am of the view that the
Court must consider the merits of these applications on a standard of
reasonableness. As a result, the issue to be decided is whether the Board’s
decision falls within a range of possible, acceptable outcomes that are
defensible with respect to the facts and the law.
b) Was
the Officer’s decision reasonable?
- Registrability
[42]
As will be recalled, the first ground of
opposition raised by the Applicant is that the Mark SMITH & BARNES LONDON
is not registrable pursuant to paragraph 38(2)(b) and paragraph 12(1)(d) of the
Act because it is confusing with its own trade-mark registrations. These
provisions read as follows:
|
Grounds
38 (2) A statement of opposition may be
based on any of the following grounds:
(…)
(b) that the trade-mark is not
registrable;
|
Motifs
38 (2) Cette opposition peut être fondée
sur l’un des motifs suivants :
(…)
b) la marque de commerce n’est pas
enregistrable;
|
|
When trade-mark registrable
12. (1) Subject to section 13, a
trade-mark is registrable if it is not
(…)
(d) confusing with a registered
trade-mark;
|
Marque de commerce enregistrable
12. (1) Sous réserve de l’article 13, une
marque de commerce est enregistrable sauf dans l’un ou l’autre des cas
suivants :
(…)
d) elle crée de la confusion avec une
marque de commerce déposée;
|
[43]
Subsection 6(2) of the Act expands on
what is meant by a trade-mark that is “confusing with a registered trade-mark”,
for the purposes of paragraph 12(1)(d). In considering the issue of “likelihood
of confusion”, regard must be had to all the surrounding circumstances,
including the factors itemised in subsection 6(5) of the Act:
|
When mark or name confusing
(…)
Idem
6 (2) The use of a trade-mark causes
confusion with another trade-mark if the use of both trade-marks in the same
area would be likely to lead to the inference that the wares or services
associated with those trade-marks are manufactured, sold, leased, hired or
performed by the same person, whether or not the wares or services are of the
same general class.
(…)
What to be considered
6 (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.
|
Quand une marque ou un nom crée de la
confusion
(…)
Idem
6 (2) L’emploi d’une marque de commerce crée
de la confusion avec une autre marque de commerce lorsque l’emploi des deux
marques de commerce dans la même région serait susceptible de faire conclure
que les marchandises liées à ces marques de commerce sont fabriquées,
vendues, données à bail ou louées, ou que les services liés à ces marques
sont loués ou exécutés, par la même personne, que ces marchandises ou ces
services soient ou non de la même catégorie générale.
(…)
Éléments d’appréciation
6 (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.
|
[44]
In Mattel at paras 56-57, the Supreme
Court recognized that confusion is to be considered from the perspective “…of
the average person endowed with average intelligence acting with ordinary
caution” and that “we owe the average consumer a certain amount of credit” and
that “one must not proceed on the assumption that the prospective customers or
members of the public generally are completely devoid of intelligence or of
normal powers of recollection or are totally unaware or uninformed as to what
goes on around them”.
[45]
The Officer correctly identified the governing
legal principles, and the only issue in this appeal is therefore the reasonableness
of his assessment of the facts in light of these principles. I shall therefore
turn to each of the factors set out in subsection 6(5) with a view to determine
if the conclusions reached by the Officer can be supported by the evidence
filed by the parties.
a) Inherent
distinctiveness and extent known (paragraph 6(5)(a))
[46]
Counsel for the Applicant submitted that the
Officer erred in finding that the trade-mark LONDON DRUGS has little inherent
distinctiveness. Counsel submitted that a trade-mark incorporating a geographic
designation may be distinctive where it is used in association with wares and
services that have no pre-existing connection to that geographic designation.
It is only where a geographic designation is used in relation to wares or services
for which that area is renowned, and merely seeks to capitalize on the existing
public association between the two, that the resultant trade-mark will have
little inherent distinctiveness.
[47]
I agree with the Respondent that such an
argument stems from a fundamental misconception and misunderstanding of paragraph
6(5)(a) of the Act and of the very notion of distinctiveness. The
distinctiveness of a mark has to do with its originality, uniqueness and
inventiveness, not with the absence of deception. As stated by this Court in ITV
Technologies Inc v WIC Television Ltd, 2003 FC 1056 (aff’d 2005 FCA 96) at
paras 119-121:
The inherent
distinctiveness of a mark refers to its originality. A mark that is composed of
a unique or invented name, such that it can only refer to one thing, will
possess more inherent distinctiveness than a word that is commonly used in the
trade.
It is well
established that the stronger the mark is, the greater ambit of protection it
will be accorded (Miss Universe, Inc., supra). In Carson v
Reynolds, [1980] 2 F.C. 685, 49 C.P.R.(2d) 57 (F.C.T.D.), Mahoney J. noted
at page 691 that a trade-mark may be:
…so
generally identified with [a person] that its use in association with anything
else, however remote from entertainment services, would be confusing in the
sense that its use in both associations would be likely to lead to the
inference that all the wares and services, whatever they might be, emanated
from [that person].
By contrast, weak
marks will be accorded less protection. In General Motors Corp. v Bellows,
[1949] S.C.R. 678, 10 C.P.R. 101, the Supreme Court of Canada stated at page 691:
[…]
where a party has reached inside the common trade vocabulary for a word mark
and seeks to prevent competitors from doing the same thing, the range of
protection to be given him should be more limited than in the case of an
invented or unique or non-descriptive word […]
See also: Fox on
Canadian Law of Trade-marks and Unfair Competition, 4th ed,
Volume 1 (Carswell 2002), pp 8-26 to 8-28.
[48]
Contrary to the Applicant’s submission, there is
no logical link between the fact that a trade-mark is not deceptive and the
fact that it will have some inherent distinctiveness. These are two different
concepts, and they are indeed dealt with in two separate paragraphs of subsection
6(5) of the Act. The cases relied upon by the Applicant in support of
its thesis were tellingly argued on the basis of paragraph 12(1)(b) of the Act,
and not of paragraph 12(1)(d): see Gainers Inc v Hygrade Food Products
Corporation (1995), 63 CPR (3d) 265 (TMOB); Institut National des
Appellations d’Origine v Pepperidge Farm, Incorporated (1997), 84 CPR (3d)
540 (TMOB); Institut National des Appellations d’Origine v Chock Full O’Nuts
Corp (2000), 9 CPR (4th) 394 (TMOB); Bata Industries Limited
v Seychelles Inc (1993), 48 CPR (3d) 414 (TMOB); Cabel Hall Citrus
Limited v Latchman, 2009 CanLII 90399 (TMOB); Guyana Sugar Corporation v
Bedessee Imports Ltd 2011 TMOB 102.
[49]
This Court has consistently held that geographic
designations, such as names, surnames, initials, descriptive terms and common
symbols are not inherently distinctive and should not be accorded a high degree
of protection unless, of course, they have acquired distinctiveness over time.
Nobody can claim a monopoly on a geographic name, especially when it is as well
known as LONDON. The best known case in that respect is California
Fashions Industries v Reitmans (1991), 38 CPR (3d) 439. In that case, the
parties had registered trade-marks including the words “St. Tropez” for use in
association with the sale of women’s clothing (SAINT TROPEZ WEST for the
applicant and CLUB ST-TROPEZ & Design for the respondent). The applicant,
having discovered the later registration of the respondent’s mark, claimed that
it was confusingly similar and therefore unregistrable. Dealing with this
issue, Justice Cullen stated, at pp 444-445:
As pointed out by the
respondent, St. Tropez is a geographic location in the south of France and I
agree that it is accepted that St. Tropez is just such a geographic location.
Further, geographic locations are not inherently distinctive and consequently
do not deserve a wide ambit of protection. Although the applicant made the
point that St. Tropez is associated with elegance, exclusivity and designer
clothes, no real contention was put forth that “Saint Tropez West” had lost its
primary meaning by use or otherwise and had acquired a secondary meaning nor has
any evidence led to support such a contention. The jurisprudence is clear that
normally geographically descriptive words cannot be registered unless they have
acquired a secondary graphic name or meaning or have become distinctive of the
wares or services…
[50]
I fail to see how Justice Cullen’s finding that
geographic locations are not inherently distinctive can be said to be an
“obiter”, or that his finding that the marks were not highly distinctive was
predicated on the association between St Tropez and fashion. In any event, subsequent
cases from this Court and from the Court of Appeal have confirmed that geographical
names are not inherently distinctive, even when associated with wares and
services that are not typically associated with that area: see Cushman &
Wakefield, Inc v Wakefield Realty Corp (2004), 35 CPR (4th) 460, at para
42, aff’d (2004), 37 CPR (4th) 212, at para 6; Prince Edward Island Mutual
Insurance v Insurance Co of Prince Edward Island (1999), 86 CPR (3d) 342,
at paras 32-33. In a similar fashion, other members of the Opposition Board
have also recognized the weakness of the Applicant’s LONDON trade-marks: London
Drugs Limited v Coty Deutschland GmbH, 2012 TMOB 193, at para 25; Home
Hardware Stores Limited v London Drugs Limited, 2012 TMOB 107, at para 14.
[51]
I am therefore of the view that the Officer did
not err in coming to the conclusion that the Applicant’s LONDON DRUGS
trade-mark is inherently weak. He correctly applied the relevant case law and
his finding is most certainly reasonable.
[52]
Counsel for the Applicant also submitted that
the Officer erred by not giving enough weight to the acquired distinctiveness
of its marks. According to the Applicant, the significant reputation acquired
by its marks and the overwhelming evidence in that respect should have made
immaterial any weakness in inherent distinctiveness.
[53]
This argument must be rejected for two reasons.
First of all, I agree with the Officer that the inherent distinctiveness of a
mark must be considered and cannot be ignored in the analysis of the likelihood
of confusion even in those cases where an originally weak mark has subsequently
acquired a significant reputation. Paragraph 6(5)(a) of the Act quite
clearly refers to both inherent and acquired distinctiveness, and there is no
authority in support of the proposition that the inherent distinctiveness of a
mark becomes irrelevant once it has acquired a reputation. Both of these
circumstances must be balanced when determining whether trade-marks or
trade-names are confusing. That being the case, it is not for this Court to
reweigh the evidence; when reviewing a decision on a standard of
reasonableness, the role of the Court is not to substitute its views for that
of the decision maker, but to examine “whether the decision falls within
a range of possible, acceptable outcomes which are defensible in respect of the
facts and law”: Dunsmuir v New Brunswick, 2008 SCC 9, at para 47.
b) Length of time the marks
have been in use (paragraph 6(5)(b))
Nature of the wares (paragraph
6(5)(c))
Nature
of the trade (paragraph 6(5)(d))
[54]
The Officer found that each of these three
factors favoured the Applicant. The new evidence submitted before this Court
somehow reinforces such findings, but does not dramatically alter the weight to
be given to these factors in the overall balancing of all the surrounding
circumstances called for by subsection 6(5) of the Act.
- The
degree of resemblance (paragraph 6(5)(e))
[55]
The Officer properly relied on the recent
decision of the Supreme Court of Canada in Masterpiece Inc v Alavida
Lifestyles Inc, 2011 SCC 27 [Masterpiece] for the proposition that
the most important factor to be considered is the last one enumerated at subsection
6(5) of the Act. At para 49 of that decision, the Supreme Court stated:
[…] the degree of
resemblance, although the last factor listed in s. 6(5), is the statutory
factor that is often likely to have the greatest effect on the confusion
analysis. […] if the marks or names do not resemble one another, it is unlikely
that even a strong finding on the remaining factors would lead to a likelihood
of confusion. The other factors become significant only once the marks are
found to be identical or very similar […] As a result, it has been suggested
that a consideration of resemblance is where most confusion analyses should
start […]
[56]
This is precisely what the Officer did. She
found that, aside from the inclusion of the place name “London” in both the
Applicant’s and the Respondent’s marks, there is no similarity in either
appearance, sound or ideas suggested. When the marks are considered as a whole,
the mere fact that they both contain the non-distinctive word “London” was not sufficient to find that they share any significant degree of similarity.
[57]
There is no single method or recipe to assess
the degree of resemblance between two marks. It has been held that the first
word is important for purposes of distinctiveness: see Conde Nast
Publications Inc v Union des éditions modernes (1979), 46 CPR (2d) 183, at
p 188 (FC). In Masterpiece at para 64, the Supreme Court added that
while this may be true in some cases, the preferable approach is to first
consider “whether there is an aspect of the trade-mark that is particularly
striking or unique”. While the average customer’s attention will no
doubt be drawn by the dominant component of a mark, that consumer will also
look at the mark as a whole.
[58]
Counsel for the Applicant would have the Court
reverse this finding on the ground that the Officer failed to take into
consideration the fact that the word “LONDON” is the most striking and unique
aspect of the Applicant’s family of LONDON marks, and that LONDON is also the
word that catches the attention of the consumer in the Respondent’s trade-mark
SMITH & BARNES LONDON.
[59]
It is not at all obvious that the word LONDON, a geographical name with little distinctiveness, is the most striking feature of
the Applicant’s mark. It is even less obvious that such is the case when
considering the Respondent’s Mark. There is no evidence to show that an average
consumer will be immediately drawn to the word LONDON when looking at the marks
LONDON DRUGS or SMITH & BARNES LONDON to such an extent that he or she will
almost entirely forget about the other words of these marks, all the more so
since it is the first word in the Applicant’s mark and the last in the
Respondent’s Mark.
[60]
It cannot be disputed that the likeness or unlikeness
between trade-marks is at least in part intuitive. In the case at bar, it can
hardly be said that LONDON DRUGS and SMITH & BARNES LONDON are so similar
that they are confusing. It is well established that where marks possess little
or no inherent distinctiveness, as in the present case, small differences will
serve to distinguish marks. Considering the total absence of similarity in
appearance, sound or meaning between the parties’ respective trade-marks, it
was perfectly reasonable for the Officer to conclude that the parties’ marks do
not resemble each other to any significant extent. As the Supreme Court stated
in Mattel (at para 25), the Board is only required to deal with
potential sources of confusion that, in its view, have about them an “air of
reality”. This is clearly not the case here.
- Other
surrounding circumstances
[61]
It is beyond dispute that a family of
trade-marks is a factor to be considered when assessing the likelihood of
confusion, as it may prompt a consumer to believe more easily that an
applied-for mark containing a common feature comes from the same source as the
goods covered by the family of marks: Molnlycke Aktiebolag v Kimberly-Clark
of Canada Ltd (1982), 61 CPR (2d) 42 (FC); Mission Pharmacal Co v
Ciba-Geigy Canada Ltd (1990), 30 CPR (3d) 101 (FC).
[62]
In the case at bar, the Officer found that the
Applicant had only succeeded in establishing ownership of a family of four
trade-marks (LONDON DRUGS, LONDON PREMIERE, LONDON GOURMET and LONDON HOME). He
noted that for each of these marks, the additional elements are common words
which are suggestive of the Applicant’s wares and services and therefore
possess little inherent distinctiveness. As a result, he found that the
Applicant’s ownership of these marks was insufficient to overcome the little
inherent distinctiveness of the word “London”. Much the same can be said of the
new evidence submitted by the Applicant before this Court.
[63]
To overcome the Officer’s finding, the Applicant
filed the Felix Affidavit which contains evidence with respect to the use of
the trade-marks LONDON DRUGS and LONDON DRUGS & Design for retail clothing
and department store services, as well as the use of the trade-marks LONDON
GOURMET and LONDON GOURMET & Design, LONDON HOME and LONDON HOME &
Design, LONDON LIGHTS, LONDON LOOK, LONDON NATURALS and LONDON NATURALS &
Design, LONDON ORCHARDS, LONDON PLANTATION, LONDON PREMIERE and LONDON PREMIERE
& Design, LONDON CUSTOMWORKS and LONDON SPA for a wide variety of products
and services.
[64]
First, I note that most of the above-mentioned
trade-marks were not mentioned in the Applicant’s Statements of Opposition.
While they may nevertheless be considered as part of the surrounding
circumstances, it would have been more appropriate to have referred to them in
the Statement of Opposition. The Officer can certainly not be blamed for not
having taken them into consideration.
[65]
More importantly, the additional elements for
all of the marks now relied upon by the Applicant (Lights, Look, Naturals,
Orchards, Plantation, Customworks, Spa) are all common words, and they are as
suggestive of the Applicant’s wares as are the words “Home” and “Gourmet”
considered by the Officer. As such, they are equally insufficient to overcome
the weak inherent distinctiveness of the word “London”. Moreover, the evidence
shows that trade-marks that include the word “London” are used and registered
by others in Canada, especially in connection with clothing wares and apparel.
[66]
I am therefore unable to find that the
Applicant’s ownership of a family of “London” trade-marks, even expanded, is
sufficient to counter the low degree of inherent distinctiveness of the word “London”. The new evidence submitted by the Applicant is not of such compelling weight to
materially affect the reasoning of the Officer and does not warrant a reversal
of his decision. The Applicant’s trade-marks, whether considered separately or
collectively, all used the same geographical designation in the same pattern
and with a descriptive word. There is no resemblance between LONDON DRUGS and
SMITH & BARNES LONDON, and the mere fact that there is a so-called family
of LONDON trade-marks (irrespective of the size of this family) would not lead
a consumer to believe more easily that the Respondent’s trade-mark is part of
that family because of the common word LONDON.
[67]
Counsel for the Applicant also relied on the new
evidence submitted before this Court (especially the 2012 Owens Affidavit) to
contend that the State of the Register and the state of the marketplace favour
the Applicant. There appears to be only three third-party registrations that
include the word LONDON in association with retail clothing and department
store services.
[68]
The Officer was well aware that the evidence
with respect to the State of the Register will only be relevant insofar as one
can make inferences from it about the state of the marketplace. Such inferences
can only be drawn where large numbers of relevant registrations are located: Ports
International Ltd v Dunlop Ltd (1992), 41 CPR (3d) 432; Kellogg Salada
Canada Inc v Maximum Nutrition Ltd (1992), 43 CPR (3d) 349, at 359 (FCA); Welch
Foods Inc v Del Monte Corp (1992), 44 CPR (3d) 205, at 209 (FC); In-Touch
Network Systems Inc v 01 Communique Laboratory Inc (2007)), 63 CPR (4th)
224, at 233 (TMOB).
[69]
The Officer established that the few co-existing
LONDON marks found within the store services field did not favour the
Respondent in relation to the Services Application. However, the Officer found
that this factor favoured the Respondent in view of the many co-existing LONDON marks in connection with the Wares Application. The additional evidence filed
before this Court supports the reasonableness of the Board’s conclusions as it
reveals the existence of more LONDON marks only in connection with the Wares
Application. I agree with the Respondent that, as a result, there is no basis
for judicial intervention arising from the Officer’s conclusions in relation to
the State of the Register and the State of the Marketplace.
[70]
Finally, the Applicant submitted that the Board
erred by restricting its likelihood of confusion analysis to only one
trade-mark (LONDON DRUGS) with respect to the Services Application, and to only
four of the Applicant’s registrations (LONDON DRUGS, LONDON GOLD MINE, LONDON
DRUGS JEWELLERY and LONDON PREMIERE & Design) with respect to the Wares Application.
[71]
This argument has clearly no merit. If anything,
the Applicant’s other trade-marks are even more dissimilar to the trade-mark
SMITH & BARNES LONDON than LONDON DRUGS. It is obvious that there is even
less similarity in appearance, sound or meaning between LONDON GOLD MINE,
LONDON DRUGS JEWELLERY and LONDON PREMIERE & Design, on the one hand, and
SMITH & BARNES LONDON, on the other, and therefore less likelihood of
confusion.
[72]
In those circumstances, it was perfectly
reasonable for the Board to assess the likelihood of confusion between the
trade-mark SMITH & BARNES LONDON and the trade-mark of the Applicant that
is most similar to it. If SMITH & BARNES LONDON is not likely to cause confusion
with LONDON DRUGS, it is even less likely that it will cause confusion with
trade-marks that are less similar to it, and there was therefore no need for
the Officer to proceed to that exercise: Masterpiece, at para 61.
[73]
The Officer also rejected the non-entitlement
grounds of opposition (based on paragraphs 38(2)(c) and 16(3)(a),(b) and (c) of
the Act) and the ground of opposition based on distinctiveness (section 2
and paragraph 38(2)(d) of the Act), on the grounds that the different
material dates that apply to these grounds of opposition do not materially
affect her conclusion with respect to the confusion issue. I agree with the
Officer, for the reasons already given above, that none of the new evidence
submitted before this Court would be sufficient to change the Officer’s
conclusion. The Officer’s finding was clearly reasonable, and the supplementary
affidavits filed in this appeal are not of such material impact as to alter her
reasoning.
[74]
For all of the above reasons, the appeal is
dismissed with costs.
Appendix
A
Ladies’,
men’s and children’s clothing, namely, suits, jackets, skirts, pants, dresses,
coats, blouses, t-shirts, halter tops, tank tops, sweaters, sweater jackets,
pullovers, cardigans, sweatsuits, swimwear, jeans; intimate apparel, namely,
lingerie, pantyhose, hosiery, sleepwear, nightgowns, pajamas, robes, underwear,
foundations, bras, camisoles; ladies’ accessories, namely, hats, gloves,
jewellery, socks, hair clips, scarves, handbags, belts; small leather goods,
namely, wallets, purses, key chains, briefcases and eyeglass cases; housewares,
namely, flatware, cookware, glassware, giftware and table top items, namely:
dinnerware made of porcelain, fine or bone china, pottery or stoneware, coffee
mugs, café au lait cups, espresso cups, beverage glassware, wine glasses,
martini glasses, serving plates and platters, vegetable bowls, salad bowls,
butter dishes, cream and sugar sets, sugar bowls, gravy boats, salt and pepper
shakers, egg cups, ice cream dishes, onion soup bowls, pitchers, hors d’oeuvre
plates, butter warmers, butter cups, tea and coffee pots, eating utensils
(namely forks, knives, spoons, chop sticks, seafood forks, lobster tongs,
cocktail forks, butter knives), cooking pots, stock pots, pans, skillets,
roasting pans, crock pots, casserole dishes, woks, rice cookers, baking sheets,
baking pans, muffin tins, pie plates and servers, quiche dishes, soufflé
dishes, waffle irons, fondue sets, fondue plates, fondue forks, burners and
ignition fuel in liquid or solid form for fondues, ramekins, tureens,
colanders, rolling pins, cake plates and servers, milk frothers, paper towel
holders, utensil holders, spoon rests, trivets, tongs, peelers, rotary cheese
graters, rolling mincers, food slicers, graters, corers, zesters, pizza wheels,
spaghetti measurers, cheese plates, grapefruit trimmers, lemon squeezers, pie
servers, jar openers, ice cream scoops, kitchen knives, bottle openers, can openers,
scissors, candy thermometers, oven thermometers, garlic presses, turners,
spatulas, cooking spoons, cooking forks, ladles, spoon rests, skimmers,
strainers, corkscrews, spaghetti servers, potato mashers, whisks, measuring
cups, measuring spoons, spice racks, canister sets, cookie jars, bread boxes,
cutlery trays, jams jars, coaster sets, cheese boards, cutting boards, carving
boards, lazy Susans, condiment sets, cookbooks, cookbook holders, wine racks,
kitchen clocks, napkin holders, knife blocks, banana holders, nut crackers with
picks, salad sets, chip and dip sets, dish racks, fruit bowls; home
furnishings, namely: furniture for the kitchen, bedroom, bathroom, living room,
dining room, rec room, office and outdoors, bedding, sheets, pillow cases,
duvet covers, comforter covers, bed skirts, bedspreads, afghans, decorative
pillow covers, pillow shams, pillows, mattress pads, mattress covers, quilts,
quilt covers, duvets, hand and bath towels, wash cloths, bath mats and window
treatments (the Wares).
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