Docket: T-2-15
Citation:
2016 FC 738
[UNREVISED ENGLISH CERTIFIED TRANSLATION]
Ottawa, Ontario, June 30, 2016
PRESENT: The Honourable
Madam Justice Tremblay-Lamer
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BETWEEN:
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JULIA WINE INC.
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Applicant
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and
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LES MARQUES
METRO, S.E.N.C., ALSO KNOWN AS LES MARQUES METRO/METRO BRANDS S.E.N.C.
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Respondent
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REASONS FOR JUDGMENT AND JUDGMENT
I.
Nature of the Matter
[1]
This is an appeal from a decision of the
Registrar of Trademarks at the Canadian Intellectual Property Office under
subsection 56(1) of the Trade-marks Act, RSC 1985, c T-13 (the
Act). The Registrar rejected the application to register the trademark “Irresistibles” filed by the applicant after the
respondent filed a statement of opposition.
II.
The Facts
[2]
The applicant, Julia Wine inc., is a Quebec
company that sells affordable wines at retailers such as Costco and
Couche-Tard. The respondent, Les Marques Metro / Metro Brands S.E.N.C., is a
Canadian food distribution company that has its head office in Quebec and
operates hundreds of stores in Quebec and Ontario.
[3]
On August 19, 2009, the applicant filed
registration application #1448753 for the “Irresistibles”
trademark (the Mark) based on the planned use of the Mark in connection with
wines.
[4]
On March 7, 2011, the respondent filed a
statement of opposition based on the likelihood of confusion between the Mark
and one or more “Irresistibles” trademarks owned
by the respondent and having been used by it or its predecessor in title, Métro
Richelieu, and on the application’s compliance with section 30 of the Act.
[5]
On October 28, 2014, the Registrar allowed
the respondent’s statement of opposition.
III.
Decision
[6]
The Registrar found that the respondent had
discharged its initial burden with regard to the Mark’s non-distinctiveness by
proving that its “Irresistibles” mark and its
derivatives were known well enough in Canada on the date on which the statement
of opposition was filed, and that it was up to the applicant to prove, on a
balance of probabilities, that there was no risk of confusion between the Mark
and the respondent’s marks.
[7]
She then reviewed each of the factors stated in
subsection 6(5) of the Act and found that there was a risk of confusion.
With regard to the degree of resemblance between the two marks, she noted that
they were identical and that, consequently, the remaining factors had to be
closely reviewed because they took on greater significance.
[8]
With regard to the Mark’s distinctiveness, the
Registrar agreed that it had a relatively low degree of inherent
distinctiveness because it was a common adjective, but that the extent to which
the respondent’s mark had become known clearly favoured the respondent. The
respondent had submitted into evidence documents to the effect that it had
started using a version of its mark around 2002 in connection with various food
products and that it had decided on the final version, “Irresistibles,”
in September 2007. Since then, the respondent’s mark was used for about
1100 food products in 370 stores, mainly in Quebec and Ontario, for
sales since October 2003 totalling over $940 million. In addition, since 2011,
almost 6.5 million flyers advertising “Irresistibles”
products were distributed in Canada. Given this analysis, the period during
which the trademark had been in use favoured the respondent.
[9]
The Registrar dismissed the applicant’s argument
to the effect that wine was a type of ware that was distinct from the
respondent’s products. She noted that the respondent’s mark extended to fruit
juices, non-alcoholic beverages, sauces, and marinades and that the fact that
wines could be considered a natural extension of this range of products
marketed by the respondent could not be excluded, given the continuous
expansion of its private-label products. She also pointed out that wines were
sold in the respondent’s stores and that the applicant’s products could use the
same distribution channels as the respondent’s products. She also noted that
the applicant’s representatives had approached the respondent’s representatives
about distributing wines bearing the Mark in Metro and Metro Plus food stores.
The Registrar therefore allowed this ground of opposition because the
respondent’s mark was known substantially in Ontario and Quebec, which
strengthens the distinctiveness of the respondent’s “Irresistibles”
mark.
[10]
She also allowed the ground of opposition based
on paragraph 30(i) of the Act. Noting that such a ground of
opposition could be allowed only in exceptional cases (e.g. bad faith) and that
the relevant date to assess the circumstances with regard to this ground was
that on which the application for registration was filed, she agreed with the
respondent that it was difficult to explain that the applicant had, on the same
day, filed applications to register—in connection with wine—marks identical to
three private labels registered in connection with a wide range of food
products. Given that the applicant failed to explain itself on this issue, the
Registrar found that it did not discharge its burden of proving that it was
satisfied that it was entitled to use the Mark at the time the application for
registration was filed.
[11]
Having allowed two of the respondent’s grounds
of opposition, the Registrar did not find it necessary to address any further
such grounds.
IV.
Issues
[12]
There are three issues:
1.
What standard of review applies to the issues?
2.
Did the Registrar err on the confusion issue?
3.
Did the Registrar err in allowing the ground of
opposition based on paragraph 30(i) of the Act?
V.
Relevant Provisions
[13]
The relevant provisions are
subsections 6(2), 6(5) and paragraph 30(i) of the Act,
reproduced in the appendix.
VI.
The Parties’ Positions
A.
The applicant
[14]
The applicant submits that the respondent’s
private label has only a low degree of inherent distinctiveness and therefore
warrants only limited protection. It maintains that alcoholic beverages differ
from beverages sold in grocery stores and that Société Anonyme des
Eaux Minérales d’Evian, S.A. v. Marcon, [2010] TMOB No. 5083 [Evian],
Heineken Brouwerijen B.V. v. Marcon, [2012] TMOB No. 5164 [Heineken]
and MHCS v. Marcon, [2012] TMOB No. 5195 [Dom Pérignon]
do not apply because the marks’ reputation in connection with the beverages in
these decisions was such that it transcended their products. The respondent’s
mark is not associated with beverages of all types in the same way. In its
history, the respondent has marketed only one private-label alcoholic beverage
(a beer whose sales were discontinued in 2006), showing the respondent’s
lack of interest in selling alcoholic beverages.
[15]
It also notes that the Registrar should have
considered the fact that the respondent’s private-label products are marketed
only in its own food stores and that this private label itself is not
registered. The products therefore do not share the same distribution channels.
In addition, consumers who shop at other food stores would not make connections
between its products and the respondent’s because the respondent’s mark has no
reputation in these other establishments. The Registrar’s finding on this issue
was therefore not reasonable.
[16]
The applicant argues that the Registrar’s
finding based on paragraph 30(i) of the Act is also not reasonable.
The mere filing of three applications for registration for everyday words
cannot constitute bad faith, even though these marks are unregistered private
labels. The situation differs from that in the cases involving Mr. Marcon,
who tried to register over 15 known marks. The applicant also notes that
the respondent itself unsuccessfully tried to register its mark. This case does
not involve exceptional circumstances like the ones stated in paragraph 30(i)
of the Act.
B.
The respondent
[17]
The respondent maintains that the Registrar
committed no error that could warrant the Court’s intervention because the
decision is justified, transparent and intelligible and falls within a range of
possible, acceptable outcomes which are defensible in respect of the facts and
the law. It reiterates that the applicant had the sole burden of proving that
the Mark was distinctive throughout Canada and did not cause any confusion. The
Registrar correctly conducted the analysis by applying the test of the first
impression of a casual consumer somewhat in a hurry. Despite having a low
degree of inherent distinctiveness, its private label has acquired significant
distinctiveness through its use. In addition, the marks are identical and its
private label was used in connection with beverages such as fruit juices and
non-alcoholic drinks. The concept of natural extension therefore reasonably
lent itself to the analysis in this case.
[18]
The respondent submits that it is wrong to
consider the reasonableness of the decision based solely on the distribution
channels factor and that consumers may not be aware that its products are
distributed only in its own stores. In addition, the evidence shows that the
applicant intended to distribute wines bearing the Mark at issue in Metro and
Metro Plus food stores, which differentiates this case from Hayabusa
Fightwear Inc. v. Suzuki Motor Corporation, 2014 FC 784 [Hayabusa].
[19]
The respondent submits that the Registrar’s
finding on the ground of opposition based on paragraph 30(i) was
reasonable because the applicant’s filing, on the same day, of applications for
registration in connection with wines identical to three well-known private
labels used for a wide range of food products is difficult to explain. It
claims that the application for registration at issue was filed to take
advantage of its private label’s goodwill and notes that there are only three
major food store chains in Quebec. The applicant filed applications for
registration for each of its private labels on the same day, but provided no
explanations regarding this before the Registrar. It therefore did not
discharge its burden of proving that it believed that it had the right to
register the Mark.
VII.
Analysis
A.
What standard of review applies to the issues?
[20]
It is well established that the Registrar’s
decisions are to be reviewed on a standard of reasonableness unless additional
evidence that could have been vital to the Registrar’s findings is filed before
the Court (Molson Breweries v. John Labatt Ltd. [2000] 3 FCR 145
(FCA), at paragraph 29; United Grain Growers Ltd. v. Michener, 2001 FCA 66,
at paragraph 8). When the Court reviews a decision on a standard of
reasonableness, it shall intervene only when the decision is not transparent,
justified and intelligible and does not fall within a range of possible,
acceptable outcomes which are defensible in respect of the facts and the law.
The Supreme Court stated that deference in the context of the reasonableness
standard requires respect for the legislative choices to leave some matters in
the hands of administrative decision makers who have particular expertise and
experience (Dunsmuir v. New Brunswick, 2008 SCC 9, at
paragraphs 47–49 [Dunsmuir]).
[21]
With regard to the ground based on the
likelihood of confusion, the parties acknowledge that the standard of
reasonableness applies.
[22]
However, with regard to the ground based on paragraph 30(i)
of the Act, the applicant claims that the standard of correctness applies
whereas the respondent maintains that the applicable standard is that of
reasonableness.
[23]
The applicant’s submission rests on the
additional evidence filed in this case—evidence that, had it been before the
Registrar, would have had a major impact on her decision. In its memorandum,
the respondent opposed the admissibility of part of this additional evidence
(the affidavits supporting Hélène Vallée’s statutory declaration). Although
these affidavits are admissible, they have low probative value given that their
affiants cannot be cross-examined (594872 Ontario Inc. v. Canada, [1992]
FCJ No. 253; Zaman v. Canada (Minister of Citizenship and
Immigration), [1997] FCJ No. 646, 131 FTR 54).
[24]
After having reviewed the additional evidence at
issue, I note that it consists of applications for registration filed by the
respondent for its private label and of proceedings instituted by various
parties to which it had to respond.
[25]
I note from the outset that most of the
documents produced are after the material date in this case (August 19,
2009), the filing date of the application for registration (Cerverceria
Modelo, S.A. de C.V. v. Marcon, [2008] TMOB No. 131 [Cerverceria
Modelo],
at paragraphs 25 and 28).
[26]
With regard to the statement in the letter dated
December 11, 2013, to the effect that the respondent’s “Irresistibles” mark has a relatively low degree of
inherent distinctiveness, this fact was acknowledged by the Registrar in her
decision.
[27]
As for the statements in this letter with regard
to the distribution channels, I agree with the respondent. These
representations were made in a separate record containing facts that differ
from those in this case.
[28]
The fact that the respondent itself tried to
register its private label despite the presence of other “Irresistibles” products on the market has no effect
on the applicant’s alleged good or bad faith. This case includes distinctive
elements, including the extent of the respondent’s operations and evidence of
business proposals from the applicant regarding use of the respondent’s mark;
the impact of these elements is not affected by the additional evidence. There
is no need to apply the standard of correctness.
[29]
The applicable standard of review is therefore
that of reasonableness. As Mr. Justice de Montigny stated
in Hawke & Company Outfitters LLC v. Retail Royalty Company, 2012 FC 1539,
at paragraph 31:
It is well established that when additional
evidence is filed, the test is “one of quality, not quantity”: see Canadian
Council of Professional Engineers v APA – The Engineered Wood Assn, [2000]
FCJ no 1027 (QL), 7 CPR (4th) 239 (FC) at para 36; Wrangler
Apparel Corp v Timberland Co, 2005 FC 722 at para 7.
Evidence that merely supplements or confirms earlier findings, or which
pertains to facts posterior to the relevant material date, will be insufficient
to displace the deferential standard of reasonableness.
B.
Did the Registrar err on the confusion issue?
[30]
Confusion between two trademarks is defined in
subsection 6(2) of the Act:
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 goods or services associated with
those trade-marks are manufactured, sold, leased, hired or performed by the
same person, whether or not the goods or services are of the same general
class.
[31]
To determine whether the trademarks cause
confusion, the Court or the Registrar must consider all of the circumstances
of the case, including the criteria set out in subsection 6(5) of the
Act:
(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 goods, 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.
[32]
Once the party opposing the registration of a
proposed mark has discharged its initial burden (i.e. establishing that its own
mark has become known sufficiently in Canada to negate the distinctiveness of
the proposed mark), it is up to the other party to prove that there is no risk
of confusion between the opposing party’s mark and the proposed mark (Bojangles’
International, LLC v. Bojangles Café Ltd., 2006 FC 657, at
paragraph 29).
[33]
The test of assessment is that of the casual
consumer somewhat in a hurry, possessed of an average memory with its usual
imperfections; if ordinary casual consumers somewhat in a hurry are likely to
be deceived about the origin of the wares or services, then the statutory test
is met (Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22, at
paragraphs 56–58).
[34]
The applicant uses mainly paragraphs 6(5)(a)
and 6(5)(c) of the Act to support its argument; it maintains that the
Mark has a low degree of inherent distinctiveness and that the nature of the
goods and their distribution channels are distinct enough not to cause
confusion.
(i)
The Mark’s inherent distinctiveness
[35]
The applicant makes much of the Mark’s low
degree of inherent distinctiveness and claims that the respondent’s private
label has only a low degree of protection for that reason. The respondent does
not dispute that the word “irresistibles” is
common and, in itself, not distinctive. However, the applicant errs by not
considering the second part of paragraph 6(5)(a), i.e., the extent
to which the mark has become known.
[36]
It has been established in case law that a mark
with a low degree of inherent distinctiveness can still acquire a high degree
of distinctiveness through the use made of it:
Where a mark does not have inherent
distinctiveness, it may still acquire distinctiveness through continual use in
the marketplace. To establish this acquired distinctiveness, it must be shown
that the mark has become known to consumers as originating from one particular
source. In Cartier, Inc. v. Cartier Optical Ltd./Lunettes Cartier Ltée,
Dubé J. found that the Cartier name, being merely a surname, had little
inherent distinctiveness, but, nevertheless, it had acquired a great deal of
distinctiveness through publicity. Likewise in Coca-Cola Ltd. v. Fisher
Trading Co., the Judge found that the word “Cola” in script form had become
so famous that it had acquired a very special secondary meaning distinctive of
the beverage and was, therefore, worthy of protection.
(Pink Panther Beauty Corp. v. United
Artists Corp. [1998] 3 FC 534, at paragraph 24).
[37]
The Registrar’s decision takes into account the
abundant evidence submitted by the respondent to prove its mark’s acquired
distinctiveness (e.g. the mark’s sales, sample flyers and packaging, and copies
of reviews of “Irresistibles” products by food
critics). The Registrar found that:
[47] [translation]
In light of the sales and the advertising carried out through millions of
flyers distributed every week in Quebec and Ontario, submitted into evidence by
Mr. Cournoyer, I find it reasonable to conclude that the Opponent’s IRRESISTIBLES
mark is very well established in Canada and has become known substantially, at
the very least in Quebec and Ontario. As a result, this recognition strengthens
the distinctiveness of the Opponent’s IRRESISTIBLES mark.
[48] [translation]
Consequently, my overall assessment of this first factor, which is a
combination of the acquired and inherent distinctiveness of the marks at issue,
clearly favours the Opponent.
[38]
Given the evidence in the record, it was
therefore not unreasonable for the Registrar to find that the respondent’s mark
had acquired distinctiveness.
(ii)
The parties’ products
[39]
The applicant points out that there are still major
distinctions to be made between various food products when the likelihood of
confusion is assessed in this regard; the Registrar allegedly failed to take
this into account in her analysis.
[40]
According to the applicant, the respondent’s “Irresistibles” mark is associated with various food
products that differ from wines. To support its argument, it cites Boulangerie
Canada Bread, Ltée v. Beverages Brands (UK) Ltd., [2012] TMOB No. 5011,
in which the Registrar differentiated a vodka-based alcoholic beverage
containing the word “POM” from the well-known “POM” cereal products in Canada. The applicant also
disputes the applicability of the Registrar’s decisions in Evian, Heineken
and Dom Pérignon because in each of these cases, the mark at issue was
world famous in the beverage industry. The concept of the natural extension of
the mark was therefore appropriate in those cases. However, the “Irresistibles” mark is not that famous for beverages
in Canada.
[41]
In my view, the applicant is unduly limiting the
concept of natural extension by failing to acknowledge a very important fact:
the respondent’s private label extends to over 1000 products of all kinds,
including juices, sparkling water, sparkling juices, wine vinegars, and so on.
Although it was unreasonable to consider that a mark like “POM,” solely limited to all types of breads, could
suddenly extend to alcoholic beverages, the same is not true for the respondent’s
mark, which the evidence shows has rapidly expanded into all types of food
products. The respondent’s private label covers a range of products so wide
that its extension to a range of wines is reasonably conceivable. The
respondent’s predecessor, Metro Richelieu, also marketed a beer under the “Irresistibles” mark, which clearly illustrates the
concept of natural extension, as stated by the Registrar. To maintain that
discontinuing this product shows a lack of interest in the alcoholic beverages
industry on the respondent’s part is purely speculative and not supported by
the evidence in the record.
[42]
In addition, I note, as the Registrar did, that
the concept of natural extension or connection has often been retained despite
the products’ not sharing the same intrinsic nature (Evian, Heineken, Dom
Pérignon, Sobeys Capital Inc. v. Julia Wine Inc., [2014] TMOB No. 5034).
[43]
The Registrar’s finding on this issue is
reasonable because it falls within a range of possible, acceptable outcomes
which are defensible in respect of the facts and the law (Dunsmuir).
(iii)
Distribution channels
[44]
According to the applicant, the Registrar should
have considered that the specific distribution channels for the respondent’s
products consisted in its own food stores, which should have eliminated any
likelihood of confusion. It maintains that the Registrar’s failure to take this
circumstance into account is unreasonable. The applicant bases its arguments
largely on Hayabusa. In this case, de Montigny J. ruled that the
Registrar’s decision was not reasonable because “the
fact that it is virtually impossible to find these wares in the same channels
of trade should have been determinative.” (at paragraph 51). The
absence of overlap between the channels of trade used by the parties in this
case made it difficult to imagine that there could be a likelihood of confusion
between the marks at issue.
[45]
However, in Hayabusa, Hayabusa’s wares
were available only through trade fairs, combat schools, and retailers
specialized in mixed martial arts accessories and clothing, whereas Hayabusa
products from Suzuki were available only at its authorized retailers. Those
were therefore two very specific markets that targeted different consumers.
[46]
However, the facts of this case are totally
different. First, as the Registrar noted, although the respondent does not sell
wines under its “Irresistibles” private label,
the respondent’s evidence clearly establishes that wines are sold in its
supermarkets. In addition, several flyers promote “Irresistibles”
products and wines on the same page. Without evidence to the contrary, the fact
that the applicant’s wines could be sold in the same types of supermarkets as
the respondent’s cannot be excluded.
[47]
It is telling that the president of the
applicant approached the respondent in 2010 to discuss the possibility of
distributing its products bearing the Mark at issue in Metro and Metro Plus
stores; this confirms the applicant’s intention for its products to share the
same distribution channels.
[48]
The average consumer who is familiar with the
respondent’s private label could also see the applicant’s wines bearing the
Mark in convenience stores or in big-box stores such as Costco. The consumer
could believe that it is one of the respondent’s products, and that the
respondent has entered into an agreement with these independent third parties.
Although the parties are well aware that the “Irresistibles”
mark is one of the respondent’s private labels that is sold only in Metro and
Metro Plus supermarkets, this is not necessarily the case for the consumer in a
hurry (T. Eaton Co. Ltd. v. Viking Umwelttechnik Gesellschaft m.B.H.,
[1998] TMOB No. 77, at paragraph 9).
[49]
In my view, there are no other reasons for the
applicant to want to use the Mark except to benefit from the reputation
acquired by the respondent’s “Irresistibles”
private label over the years.
[50]
The Registrar determined that the respondent’s “Irresistibles” mark has become known substantially in
Quebec and Ontario. This recognition, combined with the fact that it is used
with over 1000 varied products sold in grocery stores, could lead the
consumer to make a mental connection between the applicant’s wines and the
respondent’s products.
[51]
It was based on her expertise and her experience
in the field that the Registrar found that the applicant did not discharge its
ultimate burden of establishing, on a balance of probabilities, that there was
no risk of confusion between the applicant’s and the respondent’s respective
marks.
[52]
In the circumstances, nothing indicates that the
Registrar’s decision on this issue does not fall within a range of possible,
acceptable outcomes which are defensible in respect of the facts and the law.
C.
Did the Registrar err in allowing the ground of
opposition based on paragraph 30(i) of the Act?
[53]
Paragraph 30(i) of the Act requires
that an applicant for the registration of a trade-mark file with the Registrar
a statement that the applicant is satisfied that he is entitled to use the
trade-mark in Canada in association with the goods or services described in the
application. Both parties acknowledge that a ground of opposition based on this
paragraph should only succeed in exceptional cases, such as when there is
evidence of bad faith on the part of the applicant (Cerverceria Modelo).
[54]
In support of its position, the respondent
submitted three affidavits: from Mr. Cournoyer, Director of Design and
Packaging at Metro; Ms. Patenaude, Director of National Procurement at
Metro Richelieu; and Mr. Charron, Vice-President of National Procurement,
Grocery and Corporate Brands at Metro Richelieu. Mr. Cournoyer’s affidavit
describes the food market in Quebec and Ontario and notes that there are only
three major chains: that of the respondent, Loblaws and Sobeys. Each one
markets its products under its own private label: “Irresistibles,”
“President’s Choice” and “Compliments,” respectively. Ms. Patenaude’s and
Mr. Charron’s affidavits discuss their meetings with the applicant’s
representative, who suggested marketing “Irresistibles”
wine solely in the respondent’s stores to potentially assign it the Mark and to
allow it to take advantage of an alleged loophole in Quebec legislation
regarding the sale of wine in grocery stores. The applicant’s representative
also told Ms. Patenaude that he had made the same proposal to the Loblaws
and Sobeys representatives.
[55]
The respondent also submitted into evidence
three applications for registration filed on August 19, 2009, by the
applicant for the “Irresistibles,” “President’s Choice” and “Compliments”
marks.
[56]
The Registrar determined that the respondent had
discharged its initial burden as set out in paragraph 30(i) and
that it was up to the applicant to prove that it believed that it was entitled
to register the Mark. Yet the applicant submitted no evidence and provided no
explanations before the Registrar. However, it was in the best position to
defend its actions because it had personal knowledge of its state of mind when
it filed its application for registration (Cerverceria Modelo).
[57]
It was therefore reasonable for the Registrar to
find it difficult to explain that the applicant had, on the same day, filed
applications to register—in connection with wine—marks identical to three
well-known private labels used in connection with a wide range of food
products. I also note that, contrary to what the applicant stated at the
hearing, this case is similar to the cases involving Mr. Marcon. Although
the number of applications for registration was not as high as in the Marcon
cases, that is simply because there are only three major grocery store chains
in the region targeted by the applicant. It tried to register the marks owned
by the three chains in question.
[58]
The applicant also makes much of the fact that
the respondent’s “Irresistibles” mark is not
registered, contrary to what was stated in the Registrar’s decision. It
maintains that because the respondent does not own the word “irresistibles,” the applicant had the right to file
an application for registration in connection with a product that differs from
those sold by the respondent.
[59]
In my view, the applicant misunderstands the
distinction made by the Federal Court of Appeal and the Supreme Court of Canada
between a registered mark and an unregistered mark in Marlboro Canada Ltd.
v. Philip Morris Products S.A., 2012 FCA 201 [Marlboro]
and in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27.
In Marlboro, Madam Justice Gauthier notes the following:
[55] Justice Marshall Rothstein,
writing for the Court made it very clear that, when considering the degree of
resemblance between marks, the approach differed depending on whether they were
registered or not.
[56] For unregistered marks, a court
should only consider the manner in which they have actually been used. However,
for registered marks, a court must consider the trade-mark registration
according to its terms to reflect the entire scope of the rights granted under
the latter.
[60]
This in no way supports the applicant’s position
because the respondent showed that it used its mark on a wide range of food
products and beverages. It is difficult to imagine that the applicant was not
aware of the use that the respondent was making of its mark, given its
establishment and its broad circulation. In this regard, I echo the words of
the Registrar in Cerverceria Modelo:
[translation]
I do not know of any decisions that describe the concept of “bad
faith” in the context of paragraph 30(i). Although I am not sure
whether this concept applies in this case, I wonder how a reasonable person
would be satisfied that he or she was entitled to file applications to register
more than 18 undoubtedly well-known trademarks in connection with apparently
related goods and/or services. I also wonder about the intention that prompts
an applicant to do so. In my view, an applicant’s attempt to benefit from
the established reputation of a significant number of well-known marks should
be the type of situation that paragraph 30(i) aims to prevent.
[Emphasis added.]
[61]
Consequently, I am satisfied that the Registrar’s
decision based on paragraph 30(i) of the Act is reasonable.
VIII.
Conclusion
[62]
As stated previously, the Registrar has specific
expertise in trademarks.
[63]
In this case, her analysis is meticulous and
detailed and her reasoning is supported by knowledge of the case law that is
relevant to the issues raised in this case. The findings on confusion between
the marks and on compliance of the application for registration with paragraph 30(i)
of the Act are based on the evidence and fall within a range of possible,
acceptable outcomes. The Court cannot intervene if there are no errors in fact
or in law because her decision meets all of the reasonableness criteria defined
in the case law.
[64]
I conclude by reiterating the following passage
from the Supreme Court’s finding in Dunsmuir:
[49] Deference in the context of the
reasonableness standard therefore implies that courts will give due
consideration to the determinations of decision makers. As Mullan explains, a
policy of deference “recognizes the reality that, in many instances, those
working day to day in the implementation of frequently complex administrative
schemes have or will develop a considerable degree of expertise or field
sensitivity to the imperatives and nuances of the legislative regime”: D. J. Mullan,
“Establishing the Standard of Review: The Struggle for Complexity?” (2004), 17 C.J.A.L.P. 59,
at p. 93. . . .
[65]
The appeal is therefore dismissed with costs.
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