Docket: T-1482-14
Citation:
2015 FC 443
Ottawa, Ontario, April 10, 2015
PRESENT: The
Honourable Mr. Justice Manson
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BETWEEN:
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ADIDAS AG
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Applicant
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and
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GLOBE
INTERNATIONAL NOMINEES PTY LTD
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Respondent
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JUDGMENT AND REASONS
TABLE OF CONTENTS
I. Background. 2
II. Issues. 5
III. Standard
of Review.. 5
A. What is the
appropriate standard of review?. 5
B. Did the
Registrar err by failing to properly consider the degree of resemblance and
evidence of how the parties’ trademarks appear on footwear?. 8
C. Did the
Registrar err in failing to properly consider the fame and notoriety of the
adidas’ 3-Stripes Marks or assessing the degree of resemblance and likelihood
of confusion?. 8
(1) Applicant’s
Evidence. 8
(a) Stephen
Ralph. 8
(2) Respondent’s
Evidence. 12
(a) Lillian
Shneidman. 12
(b) Elenita
Anastascio. 12
(3) New
Evidence of the Applicant 13
(a) Eshleen
Panatch. 13
IV. Analysis. 14
A. Did the
Registrar fail to consider how the fame and notoriety of the adidas’ 3-Stripes
Design would affect the perspective of the average consumer in assessing the
likelihood of confusion?. 20
(1) Distinctiveness. 21
[1]
This is a section 56 Appeal of the April 25,
2014 decision of the Registrar of Trademarks rejecting the Applicant’s
oppositions to applications 1,407,596 and 1,407,601, respectively the Left
Stripe Design & Right Stripe Design [the Respondent’s Trademarks or the Globe
Stripe Designs]:
[2]
On August 18, 2008, the Respondent, Globe
International Nominees Pty Ltd [Globe] filed applications for the above
trademarks based on the following grounds:
a)
registration and use of the marks in Australia
with: footwear, namely, shoes, skateboard shoes, casual shoes, athletic shoes,
beach shoes, thonged and strapped sandals, sneakers, boots, slippers;
b)
use of the marks in Canada since at least as
early as June 2008 with: footwear, namely, shoes, skateboard shoes, casual
shoes, athletic shoes, beach shoes, thonged and strapped sandals, sneakers,
boots, slippers;
c)
proposed used of the marks in Canada with: athletic
bags, backpacks, book bags, duffel bags, gym bags, school bags, tote bags,
beach bags, handbags, trunks and travelling bags, leather and imitations of
leather, purses, wallets, satchels, brief cases, attache cases, key cases,
umbrellas; clothing, namely singlets, T-shirts, socks, jeans, trousers,
sweatshirts, pullovers, vests, tanktops, tops, shirts, pants, skirts, shorts,
sweaters, coats, jackets, pyjamas, dressing gowns, bathrobes, underwear, belts
for clothing, gloves, scarves, neckties; headgear, namely hats, beanies, caps
and sun visors; skateboards, skateboard wheels sold both separately and as a
unit, hardware and parts therefor, namely, trucks, bearings, mounting hardware,
decks, grip tape, and riser pads; waterskis; surf skis; skis; edges of skis;
scrapers for skis; seal skin coverings for skis; ski bindings; sole coverings
for skis; wax for skis; surfboards; body boards; wake boards, snow boards,
sleighs, sailboards, harness for sailboards, masts for sailboards, paragliders,
ice skates, roller skates, hockey sticks, protection padding for parts of
sports suits, elbow guards, knee guards, knee guards, shin guards, punching
bags, rackets, strings for rackets, stationary exercise bicycles, balls for
games, bats for games, kites, kite reels, play articles for swimming pools,
board games, hand held electronic games, parlour games.
[3]
The Registrar:
a)
summarily dismissed the section 30 grounds of
opposition, as not being supported on the evidence;
b)
agreed with the Applicant that in considering
the factors concerning likelihood of confusion, as found in subsection 6(5) of
the Trademarks Act [the Act], factors 6(a) through 6(d) favoured adidas;
and
c)
rejected the grounds of non-entitlement,
confusion with a registered trademark and non-distinctiveness, essentially on
the basis of no likelihood of confusion due to dissimilarity under subsection
6(e) of the Act.
[4]
The Applicant seeks to set aside the decisions
of the Registrar, and have the Respondent’s applications refused, on the basis
that the Registrar erred in refusing the oppositions to the Respondent’s Trademarks:
a)
in dismissing the grounds of opposition under
section 30 of the Act;
b)
in rejecting the section 12 ground of
opposition;
c)
in rejecting the section 16 grounds of
opposition; and
d)
in rejecting the non-distinctiveness ground of
opposition.
[5]
The Registrar found that there was
"dissimilarity in the overall appearance of the Marks”. The Applicant
argues that the Registrar did not properly consider the overall degree of
resemblance between the parties’ marks by failing to give full and proper
consideration of how the marks appear on footwear, which is how the average
consumer actually sees the Applicant’s and Respondent’s trademarks in use.
Moreover, the Applicant states that the Registrar was clearly wrong in applying
the law relating to famous marks in the confusion analysis.
[6]
The Applicant is not pursuing the section 30
ground of appeal challenge and the parties accept that the Trademarks
Opposition Board’s [TMOB] findings of fact in respect of the factors relating
to likelihood of confusion favor the Applicant, insofar as sections 6(5)(a) to
6(5)(d) of the Act are concerned.
[7]
It is admitted by the Applicant that the key
issue in considering non-entitlement under section 16 of the Act, confusion
under section 12(1)(d) of the Act, and non-distinctiveness under section 2 of
the Act, rests in deciding whether there is a likelihood of confusion. While
different material dates apply for each ground (discussed below), the confusion
analysis under section 6(5)(e) of the Act is the same.
[8]
The Applicant filed new evidence in the form of
an affidavit from Eshleen Panatch on this appeal, showing how the Respondent’s
trademarks are used on footwear in Canada as of July, 2014, as well as showing
the parties’ respective channels of trade and target consumers. However, that
evidence is subsequent to the relevant dates for determining the issue of
likelihood of confusion for any of the grounds of opposition.
[9]
The Respondent did not file any additional
evidence.
[10]
The substantive question at the heart of this
appeal is whether the degree of resemblance between the parties’ trademarks is
such that there is a likelihood of confusion between them?
[11]
The issues in the present appeal are as follows:
- What is
the appropriate standard of review?
- Did the
Registrar err in the section 6(5)(e) analysis of confusion and her
assessment of the degree of resemblance between the parties’ trademarks,
in:
- failing
to consider how the trademarks appear on the wares themselves (footwear)
and how that would impact the matter of first impression of the
trademarks on the average consumer; and
- failing to properly consider how the
fame and notoriety of adidas’ 3-Stripes trademarks would affect the
perspective of the average consumer in assessing the likelihood of
confusion?
[12]
For the reasons that follow, I dismiss the
appeal.
[13]
The parties are agreed on how the standard of
review should be determined, but not how it should be applied. The appropriate
standard of review of an appeal made under section 56 of the Act depends on
whether or not new evidence has been filed that would have materially affected
the Registrar’s decision. Where such evidence has been filed, the standard of
review of the Registrar’s decision is correctness. Where such evidence has not
been filed, the Registrar’s decision is to be reviewed on a standard of
reasonableness (Molson Breweries v John Labatt Ltd, [2000] 2 FC 145 at
para 51).
[14]
As stated by Justice Layden-Stevenson in Vivat
Holdings Ltd v Levi Strauss & Co, 2005 FC 707 at page 17:
…the new evidence must be sufficiently
substantial and significant. If the additional evidence does not go beyond what
was in substance already before the board and adds nothing of probative
significance, but merely supplements or is merely repetitive of existing
evidence, then a less deferential standard is not warranted. The test is one of
quality, not quantity.
[15]
In this case, I do not find that the new
evidence filed is material and would have affected the Registrar’s decision.
The evidence in the Panatch Affidavit relates to Globe’s and adidas’ footwear
bearing the parties’ respective design marks purchased from retail stores in
the Vancouver area in 2014. However, the same type of evidence of shoes sold by
both Globe and adidas was considered by the Registrar:
a)
evidence in the form of website printouts of
various webpages from websites offering Globe’s shoes bearing the Stripe
Designs for sale was included in the Second Anastacio Affidavit; and
b)
representative images of footwear, apparel and
accessories bearing the 3-Stripes Design, as sold in Canada since 2005, were
before the Registrar in the Ralph Affidavit, Exhibit 7 (para 19).
[16]
adidas argues that this evidence would have
materially affected the Registrar’s findings of fact or the exercise of her
discretion given that it highlights important visual cues that must be
considered in assessing the overall degree of visual resemblance, such as
proportion, angle, placement and degree of contrast of the marks on the
footwear. While I agree that these visual cues may be relevant, I do not agree
that they would have materially affected the Registrar’s decision.
[17]
As stated by the Registrar at para 51 of the
decision:
The Opponent
submits that screenshots of the Applicant’s footwear attached as Exhibit “E” of
the Supplemental Anastacio affidavit suggest that both parties’ marks are
positioned in a similar manner on footwear, which serves to further emphasize
the similarities between the parties’ marks. The said screenshots pertain to
websites purported to show the sale of the Applicant’s footwear in foreign
markets, not in Canada. As noted, there is no evidence of use of the Marks in
Canada in association with any of the applied for wares, including footwear.
Accordingly, I do not consider this to be a significant surrounding
circumstance in the present case. Even if I were to accept these screenshots as
representative of the manner in which the Marks are applied to the Applicant’s
footwear sold in Canada, it would not alter the outcome of my overall confusion
analysis, as I do not find there to be a sufficient degree of resemblance
between the Opponent’s 3-Stripes Design and the Marks for there to be a
likelihood of confusion.
[18]
Moreover, the evidence in the Panatch Affidavit
was obtained in July of 2014, and as such falls outside of the range of
relevant dates of assessment of the grounds of opposition at issue in this
appeal:
a)
S. 12(1)(d) registrability – relevant date is
the Registrar’s decision (April 25, 2014);
b)
S. 16(1) entitlement – relevant date is the
alleged date of first use of the 3-Stripes Design (June 2008);
c)
S. 16(3) entitlement – relevant date is the date
of filing of the Applications (February 18, 2008 for Left Stripe Design and
August 18, 2008 for the Right Stripe Design); and
d)
S.2 distinctiveness – relevant date is the date
of filing of the statement of opposition (April 30, 2010).
[19]
The result is that the appropriate standard of
review is reasonableness. However, even if I was to find that the new evidence
was material, thus justifying the standard of correctness to be applied, I find
that the Registrar’s decision was both reasonable and correct.
[20]
The material dates for this opposition are set
out in paragraph 17 above.
[21]
While the evidence before the Registrar covered
goods bearing adidas’ 3-Stripes Design beyond footwear, the Applicant limits
this application to the issue of resemblance and likelihood of confusion on
footwear only.
[22]
The Applicant bears the legal onus of
establishing, on a balance of probabilities, that each of its applications
complies with the requirements of the Act. However, there is an initial
evidential 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 (John Labatt Ltd v Molson Companies Ltd (1990),
30 CPR (3d) 293 at 298).
[23]
Mr. Ralph has been the President of adidas
Canada Limited since May 12, 2008, and has been employed by them in various
capacities since 1989. adidas Canada is a wholly-owned subsidiary of adidas AG
[adidas], and is the exclusive licensee and authorized distributor of adidas
brand merchandise in Canada.
[24]
adidas is the owner of numerous trademark
applications and registrations for the 3-Stripes Design worldwide. This list
includes the following Canadian trademark registrations [the 3-Stripes Marks]:
- TMA161,856;
- TMA307,373;
- TMA757,178
- TMA770,670
- TMA770,551
- TMA680,728
- TMA680,723
- TMA757,203
- TMA757,177
- TMA194,221
- TMA117,725
- TMA186,434
- TMA531,944
[25]
The Registrar specifically referred to the
3-Stripes Mark registration TMA770,551 as representative of the adidas
3-Stripes Marks to compare to the Respondent’s Stripe Designs:
[26]
The Applicant characterizes the adidas family of
trademarks as including the 3-Stripes Marks shown in four of adidas’ Canadian
trademark registrations:
[27]
The adidas 3-Stripes Design is well-known, if
not famous, in Canada and internationally.
[28]
The 3-Stripes Design consists of three equally
spaced parallel stripes. On footwear it is placed on the upper; this design
first appeared in Canada as early as 1954. The 3-Stripes Design has also been
used on apparel and accessories since the 1960’s, and first appeared on
clothing in Canada as early as 1967. These products are distributed to many
third party retailers throughout Canada, as well as being available for sale in
nineteen adidas stores, and online at www.shopadidas.ca, since 2005.
[29]
The 3-Stripes Design has been consistently
emphasized through adidas’ advertising and promotional materials, and used to
identify the brand at considerable expense. Mr. Ralph opined that most of
adidas’ advertising expenditures in Canada relate specifically to those that
feature the 3-Stripes Design, though he admitted it is difficult to estimate
exactly how much.
[30]
adidas has used the following strategies to
promote the 3-Stripes Design: print media; Canadian magazines and publications;
advertisements on transit shelters, buses, billboards, television commercials;
website ads; digital media promotion; showroom designs; the adiZone program;
and retail space design. They have also sponsored major sporting events, teams
(both amateur and professional), individual athletes, and Olympic national
teams and committees. adidas products have appeared in many mainstream films
and music videos, as well as been a significant presence at the Olympic Games
since 1928. It is Mr. Ralph’s opinion that the 3-Stripes Design is the
cornerstone of adidas’ brand identity worldwide.
[31]
Mr. Ralph included tables of the annual net
sales of adidas footwear, apparel and accessories from the www.shopadidas.ca
website from 2005-2009 in his affidavit, a “substantial portion” of which bore
the 3-Stripes Marks. He also included the annual net sales of adidas footwear
in Canada from 2001-2009, the “vast majority” of which bear the 3-Stripes
Marks. He further included the annual net sales of adidas apparel in Canada
from 2001-2009, more than half of which represent the sale of products bearing
the 3-Stripes Marks. Finally, he included the annual net sales of adidas
accessories in Canada from 2001-2009 a “substantial portion” of which represent
sales of products bearing the 3-Stripes Marks.
[32]
There is no question that adidas has established
a very well-known, if not famous, reputation in the 3-Stripes Design as applied
to footwear in Canada.
[33]
Ms. Shneidman is a private investigator at
King-Reed & Associates Inc., who was retained by counsel for the Applicant,
to make purchases of various athletic shoes incorporating stripes on their
designs.
[34]
Ms. Shneidman attended at Payless Shoe Store at
Hillcrest Mall in Richmond Hill, Ontario on May 14, 2011. She purchased one
pair of Champion brand shoes and one pair of State Street brand shoes. On the
same day she also purchased one pair of Puma brand shoes and one pair of K
Swiss brand shoes at the Foot Locker in the same mall. She also attended at the
Zellers there and purchased one pair of SporTek brand shoes, and one pair of
Reebok brand shoes.
[35]
On May 16, 2011, Ms. Shneidman attended at
Hammer Skateboard store in Toronto, Ontario and purchased one pair of Lakai
brand shoes and one pair of DVS brand shoes. On that same day, she attended at
the Bay in Hillcrest Mall and purchased one pair of Timberland brand shoes and
one pair of Skechers brand shoes.
[36]
Ms. Anastascio has been a trademark searcher for
Sim & McBurney for over twenty years. On May 26, 2011, she conducted
searches of Canadian online retail websites that sell athletic shoes. She
included with her affidavit printouts from www.footlocker.ca,
www.sportcheck.ca, www.a51.ca, and www.sportinglife.ca portraying athletic
shoes that include stripes on the design of their uppers.
[37]
On November 2, 2011, she also conducted a search
in the following locations:
- the
Canadian Trademarks Office online database for application numbers
1,407,569 and 1,407,601;
- the
Australian Trademarks Office online search system for trademark numbers
1224825, 1224826, 638734, 764139, 924921, and 1120119;
- the OHIM CTM Online database for
trademark numbers 0977286, 0977287, 005271572, 0033517646;
- the US Patent and Trademark Office
database for trademark numbers 3728522, 3731547, 1815956, 1833868,
2278589, 2179796, 2411802, 2999646, 3029129, 3029135.
[38]
Ms. Anastascio personally printed off the full
particulars of the marks she found at each of the above locations and included
them as exhibits to her affidavit.
[39]
On November 2, 2011, she conducted a search of
particular URLs which linked to pages advertising athletic shoes incorporating
stripes into the design of their uppers.
[40]
Ms. Panatch was an articling student with
Gowling Lafleur Henderson LLP. On July 3, 2014, Ms. Panatch reviewed the
website at www.globe.tv and called the stores listed in the Vancouver area to
investigate if they carried the Globe Destroyer, Encore, or Pulse models. The
latter two models appear on the website, but the Destroyer does not.
[41]
Many of the stores phoned by Ms. Panatch were no
longer in business and the remainder did not carry the requested models. She
proceeded to call other skateboard stores in and around Vancouver, eventually
reaching Journeys in Richmond Centre, and Sequence Board Supply in Squamish on
July 3, 2014. Journeys informed her that they had a Globe Encore model shoe,
and Sequence had a Globe Pulse model shoe. Ms. Panatch attended at Journeys
that same day and purchased a pair of Globe Encore shoes and adidas Seeley
model shoes.
[42]
On July 7, 2014, she attended at Sequence Board
Supply and purchased a pair of Globe Pulse shoes. On July 16, 2014, Ms. Panatch
reviewed the website of Area 51, an online skateboard store, and purchased a
pair of Globe Pulse model shoes and adidas Lucas model shoes.
[43]
The Applicant invites the Court to find that the
Registrar specifically erred in her analysis of the degree of resemblance and
likelihood of confusion between adidas’ 3-Stripes Marks as applied to footwear
and the Respondent’s Stripe Designs as applied to footwear:
- the Registrar failed to conduct a “first
impression” analysis of “the average hurried consumer having an imperfect
recollection of the Opponent’s mark who might encounter the trademark of
the application in association with the applicant’s wares in the
marketplace”; (in other words, on footwear in the marketplace, not as
shown in the Respondent’s applications) instead, the Registrar conducted a
detailed comparison of the parties’ trademarks in the abstract. While she
acknowledged screen shots showing the Respondent’s marks on footwear, she
failed to consider the degree of resemblance on the basis of an imperfect
recollection of the adidas 3-Stripes Marks and the average consumer’s
first impression of the Globe marks;
- the Registrar, while properly stating the
test for confusion that should be applied, did not do so in the context of
the fame and notoriety of the adidas 3-Stripes Marks and how it would
affect the perspective of the average consumer.
[44]
The Applicant makes a novel argument, by
inviting the Court to find that as one of the surrounding circumstances in
determining the degree of resemblance and likelihood of confusion under section
6(5)(e) of the Act, for purposes of registrability of a trademark, I should:
(i) compare the Globe Stripe Designs, as visually seen by the average consumer
on the footwear in the marketplace (and not shown in the abstract as in the
trademark applications), and (ii) have regard for a heightened mental and
visual association of the dominant, repetitive pattern of stripes, running
diagonally down the side of adidas’ footwear, in the mid foot of the side of
the shoe, to (iii) find an overall degree of resemblance likely to lead to
confusion in consumers.
[45]
As stated by Justice Rothstein of the Supreme
Court of Canada in Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27
at para 49:
…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…
[46]
The parties are agreed as to the test for
likelihood of confusion under section 6(2) of the Act:
The test to be applied is a matter of first
impression in the mind of a casual consumer somewhat in a hurry who sees the
name Cliquot on the respondents' storefront or invoice, at a time when he or
she has no more than an imperfect recollection of the VEUVE CLICQUOT
trade-marks, and does not pause to give the matter any detailed consideration
or scrutiny, nor to examine closely the similarities and differences between
the marks…
Veuve Clicquot
Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23
[47]
It was also agreed that while the Respondent’s
evidence of use of third party stripe design trademarks on footwear in the
Canadian marketplace may have impacted and perhaps limited the scope of
protection and distinctiveness for the adidas 3-Stripes Marks on footwear in this
country, the Registrar was correct in discounting that evidence, (i) as being
hearsay, (ii) without evidence of Canadians having visited or purchased
footwear from the websites relied upon (Anastacio Affidavits), or (iii)
evidence of duration or extent of sales of footwear bearing stripe designs in
Canada by third parties (Shneidman Affidavit). Moreover, some of the designs on
footwear purchased by Ms. Shneidman were not relevant due to high levels of
dissimilarity (Puma, Reebok and Timberland).
[48]
I agree that the state of marketplace evidence
in Canada of the Respondent was not a significant surrounding circumstance in
determining likelihood of confusion or distinctiveness in this case.
[49]
I also find that evidence of use of the Globe
Stripe Designs on footwear in foreign countries is not relevant in making a
decision on likelihood of confusion in this case, except to the extent that the
Registrar considered screenshots of the Globe footwear in Exhibit “E” of the
Supplemental Anastacio Affidavit, in her review of the manner in which the
Globe Stripe Designs may be applied to footwear in Canada (para 51 of her
decision).
[50]
Both parties relied on the decision in British
Drug Houses, Ltd v Battle Pharmaceuticals (1944), 4 CPR 48 [British Drug
Houses].
[51]
The Applicant refers to a quote from Brett L.J.
in British Drug Houses, above, at p 56:
there is nothing in the statute to prevent
the trade-mark which is registered from being used in any colour. Therefore, it
seems to me that the proper construction is that where a trade-mark is
registered, it is not merely the outline or design as printed in the
advertisement in black, or black and white, which is to be protected, but that
which is to be protected is the trade-mark as it may be used or will be used in
the ordinary course of trade, that is, in any colour.
to support the argument that the Court
should not merely look at a trademark in a registration or application when
considering confusion, but should consider how the trademark is actually used
in the ordinary course of trade.
[52]
However, Thorson P. goes on to say in the next
line:
It follows from this statement that the mark
must be divorced from any particular use that may be made of it and should be
considered in relation to any normal and ordinary use
[53]
This position is consistent with the
Respondent’s reliance on this same case, for the proposition that it is not
proper to consider surrounding circumstances in the context of degree of
resemblance and likelihood of confusion, when deciding registrability of a
trademark, in light of registered or unregistered trademarks asserted against
that registrability. As Thorson P. stated at page 55:
From this statement it follows, I think,
that the Court must not allow its consideration of the main issue, namely,
whether there is a likelihood of confusion in the minds of dealers or users as
a result of the use of the mark in dispute, to be deflected by taking
irrelevant matters into account. The respondent filed samples of the bottles in
which the respective preparations of the parties are sold. These differ
somewhat in shape and there are differences in the labels. The Court is not
concerned with the bottles in which the preparations are sold or the labels on
them but with the trade marks under which they are put out. It is the effect of
the trade marks, and not of the bottles or labels, that must be considered. If
the use of the marks on the wares is likely to result in confusion as to the
wares, differences in the bottles or labels might serve to lessen the confusion
but do not eliminate it. Differences in the bottles or labels cannot turn
similar trade marks into dissimilar ones. Such differences have nothing to do
with the issue before the Court, for there is no reason why either party
should continue the use of the present bottles or labels and nothing to prevent
either of them from changing the present shape of the bottles or form of the
labels. Neither the bottle nor the label is part of the trade mark. The
protection given by the registration extends to any normal use of the trade mark
and is not confined to any particular use of it such as its use with a
particular shape of bottle or on a particular form of label.
(emphasis added)
[54]
Accordingly, while I agree with the Applicant
that the marks should be considered as they are seen in actual, ordinary use,
the “visual cues”, aside from the marks being used on footwear, are not
relevant to the determination of likelihood of confusion in the context of
registrability of a trademark.
[55]
The appropriate question to be answered, in my
opinion, is simply whether the public will likely be confused, not whether one
party may gain and the other lose, as a result of the two parties using their
respective marks in the marketplace. More importantly, will the average
consumer, as a matter of first impression in seeing the proposed Globe Stripe Designs
on footwear, in the absence of the adidas 3-Stripes Marks, and only in view of
his or her general recollection of what the nature of the adidas 3-Stripes
Marks on footwear is, be liable to be deceived and think the Globe Stripe Designs
are the adidas 3-Stripes Marks, of which he or she has only this general
recollection.
[56]
In my opinion, the Registrar was reasonable, and
in fact correct, in finding that based on the evidence before her, there was
sufficient difference between adidas’ 3-Stripes Marks and the Globe Stripe
Designs to find no likelihood of confusion.
[57]
She reasonably assessed the marks in their
totality, bearing in mind those striking or unique features of each mark in the
overall design, rather than its individual components.
[58]
The fact that she referred to the screenshots of
the Respondent’s footwear in foreign markets to consider the representative
manner in which the Globe Stripe Designs would be applied to the Respondent’s
footwear in Canada negates the Applicant’s argument that she failed to consider
the application of the Globe Stripe Designs to footwear, and makes the new
evidence of Ms. Panatch immaterial to the outcome of the Registrar’s decision.
[59]
In any event, I find that the impact of the overall
visual representation of the Globe footwear and adidas footwear in Court at the
hearing, and the screenshots viewed by the Registrar, is essentially the same.
It was both reasonable and correct for the Registrar to find sufficient
dissimilarity between the 3-Stripes Marks, as applied to footwear, and the
Globe Stripe Designs, as applied to footwear, to decide there is no likelihood
of confusion.
[60]
Further, while the marks should be considered as
they are or may be seen in actual, ordinary use in the Canadian marketplace,
they should not be merely viewed as side by side samples presented in Court.
Yet that is exactly what the Applicant achieved in presenting the exhibits to
the Panatch Affidavit to me (Fox on Canadian Law of Trademarks and Unfair
Competition, vol 1, K Gill, ed, 4th (Toronto, Carswell 2002) pages 8-53).
[61]
The Registrar reasonably and correctly
considered the notoriety and fame of the adidas’ 3-Stripes Marks at paragraphs
52 and 53 of her decision. Notwithstanding that fame and notoriety, I agree
with the Registrar that adidas’ scope of protection for its 3-Stripes Marks
does not result in a finding of a likelihood of confusion with the Globe Stripe
Designs. The Registrar’s reference to the Globe Stripe Designs as being a
“single stripe with a geometric design”, or as “an oblique serrated strip
parallel to an undefined geometric plane figure, reminiscent of a rotated
trapezoid with a concave base”, is not, in my opinion, a detailed minute
comparative description of the Globe Stripe Designs, but a characterization to
put them in context in her decision.
[62]
The description may seem more in line with the
archaic language used in industrial design descriptions, but nevertheless, is a
fair and reasonable view of the Globe Stripe Designs in reviewing the issue of
likelihood of confusion between the parties’ respective trademarks in light of
adidas’ fame and notoriety for their 3-Stripes Marks on footwear.
[63]
Fame and notoriety associated with a trademark
can be a double-edged sword for a trademark owner. On the one hand, an enhanced
reputation may provide the owner with extended protection for the trademark
beyond goods and/or services covered by a registration for the marks when the
relevant public is likely to believe that the use of that mark, or a similar
mark, on those other goods and/or services indicates that they probably emanate
from the same source.
[64]
On the other hand, when a trademark becomes so
well known or famous that the public is so familiar with it and readily
identifies that trademark as used in the marketplace on goods and/or services,
it may be that even as a matter of first impression, any differences between
the well-known mark and another party’s trademark, as used on the same or
similar goods and/or services, may serve to more easily distinguish the other
party’s trademark and reduce any likelihood of confusion.
[65]
Given my findings on likelihood of confusion
above, I also find that the Registrar’s decision that the Applicant has
discharged its burden of showing, on a balance of probabilities, that there is
no reasonable likelihood of confusion between its Globe Stripe Designs and
adidas’ 3-Stripes Design in association with footwear and that the Respondent’s
Globe Stripe Designs are and were distinctive as of the date of filing of the
Statement of Opposition.
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