Docket: T-1971-13
Citation:
2015 FC 1083
Ottawa, Ontario, September 16, 2015
PRESENT: The
Honourable Madam Justice Gagné
|
BETWEEN:
|
|
CONSTELLATION
BRANDS INC., CONSTELLATION BRANDS QUÉBEC INC., CONSTELLATION BRANDS CANADA
INC., SUMAC RIDGE ESTATE WINERY LTD., AND FRANCISCAN WINEYARDS INC.
|
|
Applicants
|
|
and
|
|
DOMAINES
PINNACLE INC.
|
|
Respondent
|
JUDGMENT AND REASONS
[1]
This is an appeal of a decision rendered by the
Trade-marks Opposition Board, whereby it rejected the statement of opposition
brought under section 38 of the Trade-marks Act, RSC 1985, c T-13 [Act],
by Constellation Brands Inc., Constellation Brands Québec Inc., Constellation
Brands Canada Inc., Sumac Ridge Estate Winery Ltd., and Franciscan Vineyards
Inc. [Applicants]. The Board was of the view that there was no reasonable
likelihood of confusion between the Applicants’ trade-marks and DOMAINE
PINNACLE & DESIGN [Word & Design Mark] - the subject of the application
for registration by Domaines Pinnacle Inc.
[2]
The Applicants essentially argue that the Board
erred in fact and law with respect to the test of confusion pursuant to
subsection 6(5) of the Act. They particularly take issue with the overarching
application of the test and a number of legal principles misapplied or ignored
in relation to the following subsection 6(5) factors: (i) the degree of
resemblance; (ii) additional surrounding circumstances; and (iii) the
distinctiveness of the trade-marks and the extent to which they have become
known. The Applicants also submit fresh evidence and argue this Court should
consider this matter de novo.
[3]
After the parties’ file was perfected but before
the hearing, this Court issued its decision in Restaurants la Pizzaiolle Inc
v Pizzaiolo Restaurants Inc, 2015 FC 240 [Pizzaiolle]. The
Applicants argue that it is determinative of this case, whereas the Respondent
contends it should not be followed.
[4]
I am of the view that the Applicants’ best
argument hinges on the issue of whether the Board erred in failing to consider
the registered word mark according to its terms rather than resorting to actual
use, in the degree of resemblance analysis.
[5]
For the reasons discussed below, the appeal will
be granted.
I.
Background
[6]
Franciscan Vineyards Inc. [Franciscan] is a
winery. It does business under a number of different trade names including “Estancia Estates”, and is located in Soledad Monterey
County California. It produces and bottles wine sold in Canada and the United
States and does so in association with the trade-mark PINNAC LES (TMA 683,119,
registered on March 7, 2007) [Applicants’ Word Mark PINNACLES] and PINNACLES
RANCHES. The marks PINNACLE (without an “s”) has
also been used by another Applicant, Sumac Ridge Estate Winery Ltd [Sumac
Ridge] located in British Columbia, under a licence agreement. The PINNACLES
Registration has been used in Canada since 1993.
[7]
The Respondent is a family owned business that
has specialized in the making of ice cider since 2000. The Word & Design
Mark has been used in association with apple-based alcoholic beverages since
2001. The Respondent has distributed and marketed its products in Canada and
worldwide using different channels and distributors.
[8]
On June 3, 2004 (amended July 13, 2005), the
Respondent filed with the Board its application No. 1,219,008 to register the
Work & Design Mark, as mentioned, DOMAINE PINNACLE & DESIGN, in
association with the following wares:
Wares (1): Apple-based
alcoholic beverages,
Wares (2): Apple-based non-alcoholic
products, namely, sparkling and non-sparkling juice, sparkling sweet cider,
beverage, purees, compotes, jellies, jams, candies, pies, sauces, baby foods
and cereals.
[9]
The subject of the application shows the Word
& Design Mark as follows:
[10]
On August 5, 2008, the Applicants filed a
statement of opposition which was rejected by the Board on September 16, 2013.
II.
The Board’s Decision
[11]
The Applicants raised several grounds of
opposition but the Board was of the view that the non-registrability ground of
opposition under s. 38(2)(b) of the Act was determinative of the
opposition. Essentially the issue was framed as whether the Word & Design
Mark is confusing with the Applicants’ trade-mark or word mark PINNACLES. The
Board member concluded that the Respondent discharged its burden of showing, on
a balance of probabilities, that there was no reasonable likelihood of
confusion. She noted that the applied-for Wares (1) and the Applicants’ wines “travel through the same, or overlapping channels of trade
and both belong to the same industry” but nevertheless concluded that
overall, the remaining factors tipped the balance of probabilities in favour of
the Respondent.
[12]
The Board first interpreted the test for
confusion under subsection 6(2) of the Act:
- As concerning confusion of wares or
services from one source as being from another source, rather than confusion
between the trade-marks themselves;
- As being one of first impression and
imperfect recollection; “the point of view of the average consumer having a
general and not a precise recollection of the earlier mark”. Thus, the
trade-marks should be looked at in their totality and assessed for their effect
on the average consumer as a whole rather than dissected or subjected to
microscopic analysis (quoting from Pernod Ricard v Molson Breweries,
[1992] FCJ No. 706);
- In applying the test, all the surrounding
circumstances, including those factors listed in subsection 6(5), must be
considered;
- As the list stipulated under subsection
6(5) is not exhaustive, additional surrounding circumstances are to be
considered;
- As the factors are not necessarily
attributed legal weight, the weight given to each depends on the circumstances;
and that
- Regard should be given to the following
decisions: Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 [Mattel]; Veuve
Clicquot Ponsardin v Boutiques Cliquot Ltée [2006] and Masterpiece Inc v
Alavida Lifestyles Inc, 2011 SCC 27 [Masterpiece].
[13]
The Board then went on to consider each of the
factors under subsection 6(5) along with additional surrounding circumstances.
A.
Inherent distinctiveness of the trade-marks and
extent to which they have become known
[14]
The Board found that the “inherent distinctiveness and acquired distinctiveness”
of the trade-marks favoured the Respondent, after comparing the sales figures
and marketing expenses for Sumac’s PINNACLE brand of wines provided through the
Howard affidavit to those provided by the Respondent through the Crawford
affidavit.
[15]
The Board’s analysis begins with the conclusion:
“I assess the inherent distinctiveness of the
trade-marks at issue as about the same and relatively weak”. The
analysis continues:
Indeed, both trade-marks are made up of the
dictionary word “pinnacle” that is defined as the highest point, the
culmination, a summit or a tall pointed formation, such as a mountain peak.
Accordingly, the trade-marks, when considered in the context of the wares at
issue, may evoke a summum and so they arguably have a laudatory connotation.
Likewise, they may evoke a geographical connotation, especially the Mark owing
to the preceding word DOMAINE.
[16]
Before the Board, the Applicants submitted that
the question of geographical significance was irrelevant in assessing the
inherent distinctiveness of the parties’ trade-marks because there was no
evidence that the average consumer of the wares at issue would be aware of the
two specific geological formations. For the Applicants, PINNACLES was arbitrary
and original to them; the Mark was distinctive only to the extent that it
adopted the common word PINNACLES.
[17]
The Board sided with the Respondent because the
evidence on the record established the geographical connotation of the word
PINNACLE. The Board member added: “I do not mean to say
by this that the parties’ trade-marks are clearly descriptive of the place of
origin of the wares at issue. Rather, I believe such evidence supports my previous
finding as to the weak inherent distinctiveness of the parties’ marks”.
[18]
The Board then went on to discuss the
concept of inherent distinctiveness in the context of the confusion analysis
and cited Fox on Canadian Law of Trade-marks and Unfair Competition: “Marks that do not have much inherent distinctiveness, such
as APPLE, BEAUTY or MASTERPIECE, deserve less of an ambit of protection than
coined words. These marks are weak due to their common use in everyday
language…This aspect… of the confusion analysis takes into consideration the
ability of the ordinary consumer to be able to discriminate between marks that
have a common element that is non-distinctive.”
[19]
As regards the extent to which the trade-marks
at issue have become known, the Board was satisfied by the Crawford Affidavit
that the Respondent established continuous and extensive use of the Mark in
Canada in association with Wares (1) dating back to the year 2001. The
Applicants’ evidence, meanwhile, established the sales of the Respondent’s ice
cider under the Mark at the same Société des Alcool du Québec (SAQ) retail
outlets as the Applicants sold its Estancia Estates PINNACLES wine.
[20]
When considering the assertions of use of the
PINNACLES trade-mark by Franciscan, the Board was not prepared to accept the
PINNACLES RANCHES label (as shown on Exhibit 6, submitted in evidence), on each
bottle of wine sold in Canada, as constituting use of the PINNACLES trade-mark
as registered per se. Relying on Canada (Registrar of Trade
Marks) v Cie Internationale pour l’informatique CII Honeywell Bull SA,
[1985] 1 FC 406 (FCA), the Board concluded that the overall impression created
by the mark, as registered, was lost, because the trade-mark as used is made up
of the words PINNACLES and RANCHES which were equally dominant. The public as a
matter of first impression would not perceive the trade-mark used as being the
registered trade-mark.
[21]
On the other hand, the Board agreed with the
Applicants that when it came to Sumac Ridge Estate Winery Ltd.’s deviation
between PINNACLE and PINNACLES, it was only a minor deviation and thus
constituted use of the Applicants’ Word Trade-Mark.
B.
Length of time the trade-marks have been in use
[22]
The Board concluded that overall, the second
factor favoured the Applicants with respect to Wares (1) and (2). However, the
Board found the significance of this factor to be reduced with respect to Wares
(1) because both trade-marks have been used for a considerable length of time.
[23]
The Board was satisfied that PINNACLES was used
in Canada through the Franciscan’s licensee Sumac dating back to 1997.
[24]
The Respondent’s Mark showed use of the Mark in
association with Wares (1) dating back to 2001.
C.
Nature of the wares, services or business; and
d) Nature of the trade
[25]
Treating both c) and d) factors
together, the Board concluded that they favoured the Applicants in as far as
applied-for Wares (1) were concerned. However, as regards applied-for Wares
(2), the Board concluded that the c) and d) factors favoured the
Respondent.
[26]
Comparing the statement of wares in Franciscan’s
registration to the Respondent’s statement of wares, it was clear to the Board
that the Applicant’s wine and the Respondent’s applied-for Wares (1) fall under
the category of alcoholic beverages. However, as to the first part of the applied-for
Wares (2), the “apple-based non-alcoholic products
namely, sparkling and non-sparkling juice, sparkling sweet cider, beverage”,
the Board found they are not part of the same industry as the Applicant’s wine.
As for the second part of Wares (2), the “apple-based
non-alcoholic products” namely, “purees,
compotes, jellies, jams, candies, pies, sauces, baby foods and cereals”,
the Board found they were “clearly different”
than wine and thus it was reasonable to infer that corresponding channels of
trade would differ.
D.
Degree of resemblance between the trade-marks in
appearance or sound or in the ideas suggested by them
[27]
The Board did not explicitly express whether
factor e) favoured the Applicants or the Respondent; however, it seems
that the visual aspect was determinative, and thus in favour of the Respondent.
The analysis can be broken down as follows:
- There was a fair degree of resemblance between the parties’
marks since the word PINNACLE is the dominant element of the Word &
Design Mark;
- This conclusion did not change even though the Word &
Design Mark included the word DOMAINE and a fanciful element made up of a
snow flake superimposed on an apple; the word PINNACLE remained the most
distinctive element when considering the mark phonetically;
- Visually speaking, however, the marks suggested different
ideas; the apple element in the Word & Design Mark suggests the idea
of apple-based products while the snowflake element suggests the idea of
cold and winter; in contrast, the PINNACLES of the Applicants’ suggests
the idea of a plurality of summits.
E.
Additional surrounding circumstances
[28]
Contrary to other submissions made by the
Applicants and relying on Christian Dior SA v Dion Neckwear Ltd [Dion
Neckwear Ltd] , 2002 FCA 29, the Board member was only prepared to accord
weight to one additional surrounding circumstance, which she viewed as
favouring the Respondent: absence of actual confusion amidst coexistence. Since
at least 2001, there was an absence of confusion between the parties’
trade-marks despite their having been used and having coexisted in the Canadian
marketplace; the evidence was based on concurrent use in provincial liquor
commissions, and the fact that both parties participated in the same
competitions for their products. Relying on the case law, the Board noted that
the “lack of actual confusion” was a factor which the courts have found to be
of significance when determining the likelihood of confusion.
III.
Issues
[29]
This appeal raises the following issues:
- What is the standard of review – is the new evidence filed
mainly by the Applicants important and significant?
- Did the Board commit a reviewable error in determining whether
the Respondent’s Word and Design Mark, DOMAINE PINNACLE & DESIGN, is
likely to be confusing with the Applicants’ registered Word Marks
PINNACLES and PINNACLE? If the Court should instead assess this appeal de
novo, the question is rather whether such confusion is likely to
occur?
IV.
Analysis
A.
Standard of review
[30]
New evidence may be submitted on appeal under
subsection 56(1) of the Act; however, the question remains: would this fresh
evidence have materially affected the Board’s findings of fact, or its exercise
of discretion? The answer to this question determines the standard of review
this Court must apply in this appeal. If answered in the affirmative, a de
novo review will take place and it is not an option to send the matter back
for redetermination. However, if the Applicants have not adduced new evidence
or if they have and such evidence would not have materially affected the decision
of the Board, the standard of review is reasonableness (Mattel, above at
paras 35, 37, 40-41; Telus Corp v Orange Personal Communications Services
Ltd, 2005 FC 590 at paras 22 and 41, aff’d 2006 FCA 6; Molson Breweries
v John Labatt Ltd, [2000] 3 FC 145, [2000] FCJ No 159 at para 51).
[31]
I note at the outset, filed before the Board
were the following three most substantive pieces of evidence: affidavits sworn
by (i) Mr. Fondiller, who, among several titles, is the Senior Vice President
and General Counsel and Secretary of Franciscan; (ii) Mr. Howard, the Senior
Vice-President of Marketing, English Canada for Vincor International and (iii)
Mr. Crawford, Founder and President of the Respondent. The following exhibits
supported those affidavits:
- Exhibit ICC 2 and the Cross-examination of Mr. Crawford
containing admissions he made in writing or orally concerning confusion
and resemblance of the marks (tab 6);
ii.
The addition of paragraph 37 to Mr. Fondiller’s
Affidavit, in which he cross-references Exhibit-13, a Statement of Claim filed
by the Respondents purporting to contain contradicting statements in another
matter before the Federal Court in file T-290-13, on the predominant element of
Respondent’s trade-mark and actual confusion with the word “Pinnacle” (tab 3);
- The addition of paragraphs 33-36 to Mr. Fondiller’s Affidavit
and Exhibits 11 and 12, pertaining to settlement discussions between the
parties to this appeal (tab 3);
- 21 affidavits of various Canadian consumers touching on their
geographical knowledge of “Pinnacles national
monument or park” in California and “Mont
Pinacle” in Québec (tab 5);
- The addition of the examination of Mr. Crawford and Exhibits
U-1 – U 2 and Exhibit ICC 3 regarding sales-related evidence concerning
the geographic presence of the Respondent’s product and evidence of actual
use of the Respondent’s trade-mark on the market (tab 6);
[32]
In order to determine if the fresh evidence
would have materially affected the Board’s decision, the Court must consider
the nature and quality of the new evidence, taking into account its
significance, probative value and reliability (Bojangles’ International LLC
v Bojangles Café Ltd, 2006 FC 657 at para 10). The new evidence must not be
repetitive or supplementary but must enhance cogency (Vivat Holdings Ltd v Levi
Strauss & Co, 2005 FC 707 at para 27), which means that the test for
new evidence is one of quality and not quantity (Hawke & Co Outfitters
LLC v Retail Royalty Co, 2012 FC 1539 at para 31).
[33]
I have reviewed the evidence and find that the
Applicants’ have failed to convince me that in terms of quality, it is of such
probative value that it would have materially changed the Board’s analysis and
thus, its decision.
[34]
With respect to items i), ii) and iii) above,
the alleged admissions made by Mr. Crawford that should the Applicants use
PINNACLES is association with ice wine, it would lead to confusion, have little
probative value. In looking at the entire evidence, it appears that Mr.
Crawford has taken contradictory positions depending on the context. When he
was protecting his mark against a third party who used it in association with
vodka, confusion was likely (this Court recently homologated a transaction
between the parties in Domaine Pinnacle Inc v Beam Suntory Inc, 2015 FC
680). Confusion was unlikely when he first discussed coexistence with the
Applicants. It became likely again when he discussed a potential license that
he would have granted to the Applicants for the use of the Word Mark PINNACLES,
after having allegedly bought it from the Applicants (a motion to homologate
that transaction is pending before the Québec Superior Court). In other words,
these so-called admissions have to be interpreted in their context and that
context seems to be years of litigation and settlement discussions, not only
between the parties involved in this file but between the Respondent and a
third party. The same could be said about the distribution agreement that was
entered into by the Respondent and Vincor Québec, a member of the Applicants’
group of companies. The admissions and distribution agreement merely reflect
business strategies and decisions. Without the entire context, these documents
and admissions have little probative value and, in my view, would not have had
a significant impact on the Board’s decision. As to Mr. Crawford’s admission
that PINNACLE constituted the dominant feature of the Respondent’s mark, it
would not have added anything to the file as it is a conclusion that the Board
had reached without it.
[35]
As to the 21 affidavits of individuals
who do not know where the Pinnacle Monument in California or Mont Pinacle in
Québec are located (item iv), they have no probative value. It appears that
these individuals were not duly sworn and were mostly selected by the
Applicants amongst acquaintances. They do not represent the average consumer in
Canada. This is not a scientific survey as those discussed by Justice Rothstein
at paragraphs 94 to 97 of Masterpiece, above.
[36]
Finally, in terms of the sales-related evidence
concerning the geographic presence of the Respondent’s product and evidence of
actual use of the Respondent’s trade-mark on the market (item v), it is seldom
cited in the written submissions of the Applicants in asserting errors
purportedly committed by the Board. First, even though the Respondent’s sales
were largely concentrated in the province of Québec, the sales made outside
Québec, and specifically in British Columbia, were still more important than
those of the Applicants. The same can be said for marketing expenses. Second,
as to the Respondent’s actual use of its mark on the market, the focus should
be the terms of the application and what the registration would authorize the
Respondent to do, not what the Respondent happens to be doing at the moment (Mattel,
above). I have trouble seeing how those elements would have materially changed
the outcome of the decision.
B.
Reasonable likelihood of confusion between
the Design Mark and the Opponents’ word trade-marks
[37]
I am of the view that the determinative issue in
this appeal is the error made by the Board in its determination of the degree
of resemblance between the marks, along with the impact that error had on the
Board’s “global analysis” of the factors under
the confusion test.
[38]
The Applicants challenge the final result based
on the way the Board balanced the various factors. Also, citing Masterpiece,
they say that if one takes into account how a “fair
degree of resemblance” is the most influential factor in the analysis,
the balance should have tilted toward confusion.
[39]
In Masterpiece, the Supreme Court of
Canada found that Justice O’Reilly erred in his analysis of the degree of
resemblance between Alavida’s registered word mark, “MASTERPIECE
LIVING”, and Masterpiece Inc.’s unregistered word marks “MASTERPIECE” and “MASTERPIECE
LIVING” (at paras 11-12). The relevant part of Justice O’Reilly’s
decision is as follows:
[46] There is obviously a degree of
resemblance as between Masterpiece Inc.'s trade-name and marks and Alavida's
registered mark for "Masterpiece Living". However, as part of the
overall circumstances, I note that Alavida's use of "Masterpiece
Living" has been in the nature of a slogan accompanying its corporate
identity. By contrast, Masterpiece Inc. uses "Masterpiece" to
identify the company itself, along with various other words and phrases of far
lesser prominence, alongside a distinctive butterfly logo. These differences
help reduce the likelihood of confusion.
[40]
It appears that the registered word marks were
used in various ways and these various uses justified the “weaker” degree of resemblance. The Supreme Court
found this was an error and specified that the registered word mark, having
bare words, could be presented in many ways under the registration. For
example, nothing would prevent the trade-mark owner from altering the
advertising to highlight a word, giving it more prominence, or changing the
font or style of lettering. As held by the Supreme Court, “single use [does] not reflect the entire scope of exclusive
rights that were granted to Alavida under its registration …[a]ctual use is not
irrelevant, but it should not be considered to the exclusion of potential uses
within the registration” (at paras 53 and 59).
[41]
At the hearing, the Applicants strongly relied
on the recent decision of the Court in Pizzaiolle, above, which, they
argue, reinforces their position as it stands for the proposition that Justice
Rothstein’s finding in Masterpiece - that the Board should consider all
the potential uses permitted by a registration, not just the actual use, and
that Masterpiece is not limited to word marks. In Pizzaiolle,
Justice LeBlanc found that the word mark LA PIZZAIOLLE (or its variant
PIZZAIOLLE) granted its owner the right to use the mark in any way, shape or
form it wishes, including with the same style of lettering, the same green oval
design and the same GOURMET PIZZA description next to it, as the respondent’s
applied-for word & design mark.
[42]
Even though Justice LeBlanc seems to be leaving
the door open to some distinction between symbols and distinctive designs, on
one hand, and lettering, colour and design or graphic, on the other hand (para
74 of Pizzaiolle), I don’t think the Act supports such a distinction. A
trade-mark is either a word mark, a design mark or a word & design mark. If
the teaching in Masterpiece is to be understood as applying not just to
word marks but also to word & design marks, it would thus apply to all of
them.
[43]
Upon review of the jurisprudence, contrary to
the assertion of the Respondent, I find that as long as the confusion analysis
uses a registered word mark as the basis for the analysis, the teaching of Masterpiece,
on the question of potential uses included in a registration is
particularly pertinent and not distinguishable. It makes no difference that the
applied-for mark is a word & design mark. I find that in the circumstances
of this case, it is even more significant because the Board’s analysis of this
factor hinges on the visual element and the ideas suggested. The Board should
have taken into account that the registered word mark PINNACLE could have had a
different style of lettering, colour or design which would have suggested, for
example, the “idea of cold and winter”,
similarly to the applied-for Design & Word Mark DOMAINE PINNACLE &
DESIGN.
V.
Conclusion
[44]
For all of the foregoing reasons, the appeal
will be granted, the decision will be quashed and the file will be remitted
back to a different member of the Board for reconsideration
Email this Content