Docket: T-343-14
Citation:
2015 FC 566
Toronto, Ontario, April 30, 2015
PRESENT: The Honourable Mr. Justice Campbell
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BETWEEN:
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1104559 ONTARIO LTD.
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Applicant
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and
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HOME HARDWARE STORES LIMITED
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Respondent
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ORDER AND REASONS
[1]
The present Application is an appeal under
subsection 56(1) of the Trade-marks Act, RSC 1985, c T-13 (the Act)
of a decision of the Registrar of Trade-marks’ delegate (the Registrar) dated
December 4, 2013, in which, upon receiving written argument and conducting a
hearing in which both the Applicant and Respondent participated, the Registrar
refused the Applicant’s application No. 1,494,108 to register the trade-mark
Home Team & Design (the Mark) in association with the following services:
sales and installation of exterior residential and commercial products, namely,
windows, doors, patio doors, storm doors, eavestroughs, siding, garage doors,
awnings, sunrooms, screen rooms, skylights, decks and railings.
[2]
The refusal was based on the Respondent’s ground
of opposition that the Applicant had not complied with s. 30(b) of the Act
because it had not used the Mark in association with the services named in the
application since the claimed date of first use, being February 1, 2004, and
the filing date of the Applicant’s application, being August 31, 2010 when it
was filed in the name of Van Dolder’s Home Team Inc., the Applicant’s
predecessor-in-title.
[3]
The sole ground in the present appeal is whether
the Registrar’s refusal pursuant to s.30(b) is reasonable.
[4]
With respect to the onus of proof on the
application for registration, the Registrar made the following finding at
paragraph 10 of the decision:
The Applicant bears the legal onus of
establishing, on a balance of probabilities, that its application complies with
the requirements of the Act. There is, however, an initial burden on the
Opponent to adduce sufficient admissible evidence from which it could
reasonably be concluded that the facts alleged to support each ground of
opposition exist [see John Labatt Ltd v Molson Companies Ltd (1990), 30
CPR (3d) 293 (FClD) at 298 and Dion Neckwear Ltd v Christian Dior, SA
(2002), 20 CPR (4th) 155 (FCA)].
[5]
The Applicant did not file evidence before the
Registrar in support of the registration of the Mark.
[6]
To discharge its onus with respect to the s.
30(b) ground of opposition, the Respondent relied on evidence found as a result
of an internet search of the Applicant’s predecessor-in-title website. The
Registrar describes this process in paragraphs 27 to 33 of the decision:
Ms. Iveson is a student-at-law employed by
the agent for the Opponent's law firm. Ms. Iveson states in paragraph 3 of her
affidavit that she was instructed by an associate in her firm to visit and
print the front page of the "Van Dolder's Home Team" website located
at www.vandolders.com, as well as pages from various other sections of
the website.
There was some discussion at the hearing
regarding the fact that no evidence has been filed to show that the Applicant
is in fact the owner of the website. However, I note that the contact
information which appears on the various website print-outs attached as
exhibits to Ms. Iveson's affidavit shows the same address which appears as the
Applicant's registered corporate address in the corporate search results which
were attached as Exhibits 'D" and "F" of the Som affdavit, In
view of this, I find it reasonable to conclude that the website which was
visited by Ms. Iveson was that of the Applicant.
In addition, the Applicant objected to the
admissibility of Ms. Iveson's affidavit on the basis that it was sworn by an
employee of the agent for the Opponent and relates to a point of substance and
controversy in these proceedings. The Applicant submits that the agent for the
Opponent cannot be both a "counsel machine" and an "evidence
machine". By contrast, the Opponent submits that the Iveson affidavit is
admissible as it does not comprise any contentious opinion type evidence.
The Federal Court of Appeal has made it
clear that “it is not good practice for a law firm to cause its employees to
act as investigators for the purpose of having them later give opinion evidence
on the most crucial issues in the case" [see Cross-Canada Auto Body
Supply (Windsor) Ltd v Hyundai Auto Canada 206 FCA 133 (CanLll) at para 4,
(2006), 53 CPR (4th) 286 (FCA)].
The Court is less clear on how solely
non-opinion evidence furnished by a firm's employee should be treated. However,
it does state that "it is improper for a solicitor to compromise his
independence by acting in a proceeding in which a member of his firm has given
affidavit evidence on a point of substance" [Cross-Canada, supra,
at para 7].
In the present case, I agree with the
Applicant that the Iveson affidavit relates to a contentious issue (i.e.
whether or not the Applicant has used the Mark as alleged it its application).
However, I also agree with the Opponent that Ms. Iveson has not provided what
may be considered to be opinion type evidence of the sort that was adduced in Cross-Canada.
Ms. Iveson has essentially visited the
Applicant's website and located and printed instances of the Mark or variations
thereof as they would have appeared at the time of swearing of her affidavit
and historically. The parameters of the searches which she conducted are very
clearly set out in paragraphs 3(i)-3(vi) and 4 of her affidavit. In view of
this, I am prepared to consider her affidavit and I will therefore now go on to
consider whether it is sufficient for the Opponent to meet its burden in
relation to the section 30(b) ground of opposition, either alone or in
combination with the other evidence which the Opponent has put forward.
[7]
Cogent findings made by the Registrar upon
considering the evidence are stated at paragraphs 43 to 53 of the decision are
as follows:
In paragraphs 14 and 15 of her affidavit,
Ms. Iveson confirms that she was unable to locate any instances of the Mark in
any historical version of the Applicant's website [see paras 14 and 15]. A
review of Exhibit "F" shows variations of the Mark, all of which
feature the words "Van Dolder's" as an integral part of the Mark,
sometimes in combination with other elements such as the words ''kitchen and
bath" or "custom exteriors" below in a banner design.
In paragraph 16, Ms. Iveson states that she
was also instructed to access and print the front page of the Applicant's
website dating back to 2001. A print-out of the front page is attached as
Exhibit "G". Another version of the Mark is displayed. In particular,
the Mark is enclosed in an oval design and the words "Van Dolder's"
appear as an integral part of the Mark.
The information contained within paragraphs
13 to 16 and Exhibits "F" and 'G" is historical in nature and is
dated prior to the material date. I am therefore prepared to consider this
evidence.
During the hearing, the Opponent argued that
the versions of the Mark shown in the Iveson affidavit differ substantially
from the version of the Mark which has been applied for and therefore cannot be
considered to be permissible variations. I have reproduced some examples of how
the Mark appears on the Applicant's website below: [Design omitted]
I agree with the Opponent that the versions
of the Mark as used on the Applicant's website do not constitute use of the
Mark. The use of a trade-mark in combination with additional words or features
can constitute use of a mark if the public as a matter of first impression
would perceive the trade-mark as being used. This is a question of fact which
is dependent on whether the trade-mark stands out from the additional material
and whether the trade-mark remains recognizable [see Nightingale Interloc
Ltd v Prodesign Ltd (1984), 2 CPR (3d) 535 at 538 and Promafil Canada
Ltée v Munsingwear Inc (1992),44 CPR (3d) 59 (FCA)].
In the present case, I am of the view that
the trade-mark does not stand out from the additional matter in such a way that
it remains recognizable. The words ''Van Dolder's" form a relatively
distinctive and integral part of Mark, which in my view changes the identity of
the Mark.
I am aware of the fact that Internet
searches are generally considered to be hearsay and cannot be relied upon for
the truth of their contents. However, evidence of this nature has been accepted
in situations where the affiant him or herself conducts the searches, where it
is difficult for the opponent to find any other evidence to meet its burden,
and where the applicant has the opportunity to reply to the evidence, as is the
case in the present proceedings [see Effigi Inc v HEI Branded Apparel
Limited, Inc 2010 1MOB 160]. Moreover, I note that evidence produced by the
Wayback Machine indicating the state of web sites in the past has been found to
be generally reliable [see Candrug Health Solutions Inc v Thorkelson
(2007), 60 CPR (4th) 35 (FC); reversed on other grounds 64 CPR (4th) 431
(FCA)].
Although the absence of any use of the Mark
on the Applicant's website at the relevant date does not support a categorical
conclusion that the Mark was not in use, in my view, it is sufficient to cast
doubt on the Applicant's statement in its application that it had used the Mark
in association with its services since the claimed date. I therefore find that
the Opponent has met the light initial burden upon it in respect of the issue
of non-conformance with section 30 (b) of the Act
I note that at the hearing, the Opponent
submitted that even if the versions of the Mark as shown in the Iveson
affidavit were acceptable and considered to constitute use of the Mark, the
evidence also suggests that the Mark was in use by an entity other than the
Applicant and that use of the Mark commenced prior to the claimed date of first
use in the application. The Opponent takes that position that this is
problematic in view of the fact that the Applicant's predecessor only came into
existence on the claimed date of first use and no predecessors-in-title have
been named in the application. In view of my finding with respect to the
Opponent's initial burden, I do not consider it necessary to consider these
other issues.
Since I have found that the Opponent has met
its initial burden the onus shifts to the Applicant to demonstrate on a balance
of probabilities that it has complied with the requirements of section 30(b) of
the Act. The Applicant has not filed any evidence which can positively
establish its claimed date of first use. I must therefore conclude that the
onus on the part of the Applicant has not been met.
Accordingly, the section 30(b) ground of
opposition is successful.
[8]
It is common ground that the question on the
present appeal is whether the Registrar’s findings are reasonable. The test is
that stated in Dunsmuir v New Brunswick [2008] 1 S.C.R. 190, paragraph
47 as follows:
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 inquiries 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.
In the present appeal, Counsel for the
Applicant makes the same arguments rejected by the Registrar with respect to
the propriety of the internet search, who performed it, and whether the
contents of the search relate to a contentious issue in the proceedings.
Counsel for the Applicant also argues that, on the issue of whether prior use
of the Mark in combination with the words ''Van
Dolder's" constitutes use of the Mark for the purpose of the
application, the Registrar was required to base her analysis on evidence.
[9]
I find no error in principle in the Registrar’s
decision. In my opinion, the findings made are reasonable: they are very
intelligible, transparent, and supported by fact and law. I agree with Counsel
for the Respondent that, as a member of an expert tribunal, the Registrar was
entitled to apply her own expertise in concluding on the issue of use. In my
opinion, this assessment was reasonably performed.
[10]
As a result, I dismiss the present appeal.
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