Docket: T-221-15
Citation:
2015 FC 1257
Ottawa, Ontario, November 6, 2015
PRESENT: The
Honourable Madam Justice McDonald
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BETWEEN:
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TIGER CALCIUM
SERVICES INC.
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Applicant
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and
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COMPASS
MINERALS CANADA CORP.
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Respondent
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JUDGMENT AND REASONS
I.
Introduction
[1]
This is an appeal pursuant to section 56 of the Trade‑marks
Act (the Act) by the Applicant, Tiger Calcium Services Inc. (Tiger)
from a decision of the Trade‑marks Opposition Board (TMOB) dated December
17, 2014 rejecting their opposition to the registration of the trade‑mark
ENVIRO‑GUARD owned by the Respondent, Compass Minerals Canada Corp
(Compass).
[2]
On May 25, 2010, Sifto Canada Corp (now Compass)
filed an application for the trade‑mark ENVIRO‑GUARD. The proposed
use of this trade‑mark in Canada was in association with wares for “de‑icing and ice prevention preparations for roadways
and sidewalks and other paved surfaces”.
[3]
On January 10, 2011, Tiger filed a Statement of
Opposition opposing the Respondent’s ENVIRO‑GUARD trademark application
based on the proposed use of the trade‑marks in Canada. Tiger raised five
grounds of opposition outlined by the TMOB as follows:
1. The proposed trade-mark is not
registrable in view of Sections 30 and 38(2) of the Trade-marks Act in that the
Application does not comply with the statutory application requirements. In
particular, contrary to Section 30(a), the applied‑for wares are not
defined in ordinary commercial terms.
2. The proposed trade-mark is not
registrable in view of Section 30 and 38(2) of the Act, in that the Application
does not comply with the statutory application requirements. In particular,
contrary to Section 30(i), the Applicant could not have been satisfied on the
day it applied for the proposed trade-mark, namely May 25, 2010, that it was
entitled to use the proposed trade-mark in Canada in association with the wares
set out in the Application, in light of the prior use and making known by the
Opponent and/or its licensees of its trade-marks identified or referred to in
the Statement of Opposition.
3. The proposed trade-mark is not
registrable in view of Section 30 and 38(2) of the Act, in that the Application
does not comply with the statutory application requirements. In particular,
contrary to Section 12(1)(d), the proposed trade-mark is confusing with the
registered trade-marks CLEAR GUARD, (registration number TMA780,782) ROAD GUARD
PLUS, (registration number TMA781,908) NANUK ENVIRO NON/CHLORIDE (registration
number TMA589,398) which are in good standing and have been and continue to be
used in Canada.
4. The proposed trade-mark is not
registrable in view of Sections 16(3)(a), 16(3)(b), 16(3)(c) and 38(2)(c) of
the Act, in that the Applicant is not the person entitled to registration of
the proposed trade-mark. In particular, as of the date on which the Applicant
filed the Application, namely May 25, 2010, and at all material times, the
proposed trade-mark was confusing with, or likely to be confusing with, the
trade-marks identified or referred to above as previously used and made known
in Canada by the Opponent and/or its licensees.
5. The proposed trade-mark is not
registrable in view of Section 38(2)(d) of the Act, as the proposed trade-mark
is not, and at all material times has not been and could not be, distinctive of
the wares of the Applicant. In particular, the trade-marks identified or
referred to . . . above which have been previously used and made known by the
Opponent and-or its licensees in Canada in association with a liquid de-icer.
Therefore, having regard to Section 2 of the Act, the proposed trade-mark -
being confused with, or likely to be confusing with, the trade-marks of the
Opponent previously used and made known in Canada by the Opponent and/or its
licensees - is not adapted to and does not distinguish the wares of the
Applicant from the wares of the Opponent.
[4]
On March 8, 2011, Compass filed a Counter‑statement
denying the allegations in the Statement of Opposition.
[5]
Before the TMOB, Tiger relied upon the
affidavits of Richard Kolodziej, CFO of Tiger sworn to on July 6, 2011 and June
5, 2013.
[6]
Compass relied on the affidavit of Karen
Cardinell, an assistant who conducted trade‑mark searches sworn on August
3, 2013, and an affidavit of Ken Johnston, the Director of Sales of Compass,
sworn on August 2, 2013.
[7]
Mr. Kolodziej and Mr. Johnston were cross
examined on their affidavits. The transcripts of the cross examinations formed
part of the record before the TMOB.
[8]
The TMOB received written arguments from the
parties and an oral hearing was conducted on September 29, 2014.
II.
Decision of the TMOB
[9]
On December 17, 2014 the TMOB issued a decision
rejecting Tiger’s opposition to the registration on the following grounds:
[38] Having regard to the above, and
considering in particular that the parties’ marks are relatively weak marks,
that the parties’ channels of trade are different, and that the parties’ marks
are more different than alike in each of the three facets of resemblance, I
find that, at all material times, the marks in issue are not confusing.
[10]
The TMOB dismissed grounds 1 and 2 of Tiger’s
opposition, and identified “confusion” as the
main issue to be determined. The Board correctly defined the test for confusion
as follows:
[32] The test for confusion is one of
first impression and imperfect recollection. Factors to be considered, in
making an assessment as to whether two marks are confusing, are “all the
surrounding circumstances including” those specifically mentioned in section
6(5)(a) to section 6(5)(e) of the Act: the inherent distinctiveness of
the marks and the extent to which they have become known; the length of time
each has been in use; the nature of the wares, services or business; the nature
of the trade; the degree of resemblance in appearance or sound of the marks or
in the ideas suggested by them. This list is not exhaustive and all relevant
factors are to be considered. Further, all factors do not necessarily have
equal weight as the weight to be given to each depends on the circumstances:
see Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks
(1996), 66 CPR (3d) 308 (FCTD). However, as noted by Mr. Justice Rothstein in Masterpiece
Inc. v. Alavida Lifestyles Inc. (2011), 92 CPR (4th ) 361 (SCC), although
the degree of resemblance is the last factor cited in section 6(5), it is the
statutory factor that is often likely to have the greatest effect in deciding
the issue of confusion.
[11]
The TMOB then conducted an analysis of each of
the five factors for confusion outlined in s 6(5) of the Act and found
the following:
First Factor - Inherent and Acquired
Distinctiveness.
[33] The applied-for mark ENVIRO-GUARD
does not possess a high degree of inherent distinctiveness as the first
component of the mark would be perceived as a truncation of the word
“environment” and the second component is a commonly used dictionary word. The
mark as a whole suggests either that the applicant’s protect is environmentally
friendly or that the consumer will be protected against the environment by
using the applicant’s product. Ms. Cardinell’s evidence underscores the non‑distinctive
nature of the component ENVIRO. The applied-for mark is therefore a relatively
weak mark. Similarly, the opponent’s marks CLEAR GUARD and ROAD GUARD PLUS are
relatively weak marks because they are composed of commonly used dictionary
words and suggestive of the protective nature of the opponent’s wares. The
opponent’s mark NANUK ENVIRO NON/CHLORIDE is also a relatively weak mark as the
first component would be perceived as a masculine Inuit name and the last
component is descriptive of the opponent’s wares. Thus, the inherent
distinctiveness of the marks in issue favours neither party.
[34] The opponent’s marks CLEAR GUARD
and ROAD GUARD PLUS had acquired a fair reputation as of the earliest material
date May 25, 2010, and continued to acquire distinctiveness thereafter. There
is no evidence to indicate that the opponent’s mark NANUK ENVIRO NON/CHLORIDE
had acquired any more than a minimal degree of distinctiveness at any material
time. The subject application for ENVIRO‑GUARD is based on proposed use
and therefore the applicant cannot claim any distinctiveness for its mark as of
the earliest material date. However, the applicant’s mark began to acquire some
distinctiveness through sales and advertising beginning in November 2010. The
acquired distinctiveness of the parties’ mark favours the opponent at all
material times. Nevertheless, the advantage to the opponent is significantly
lessened given that the opponent has established a reputation for its marks
with large scale institutional buyers rather than with consumers in the retail
market.
Second Factor - Length of Time the Parties’
Marks have been in Use
[35] The second factor favours the
opponent as the evidence indicates that the opponent was using its marks CLEAR
GUARD and ROAD GUARD PLUS since about 2003, while the applicant did not begin
to use its mark ENVIRO-GUARD until late 2010.
Third and Fourth Factors - The Nature of the
Parties’ Wares and Channels of Trade
[36] The nature of the parties’ wares
is essentially the same, which favours the opponent. However, as discussed
earlier, the parties’ channels of trade are distinct with, at best, minimal
overlap, which favours the applicant. The third and fourth factors, considered
together, balance each other and therefore favour neither party.
Fifth Factor - Resemblance between the
Parties’ Marks
[37] Given that the first part of a
mark is the more important for the purposes of distinction, I find that the
parties’ marks are more different than alike visually, in sounding and in ideas
suggested: see Conde Nast Publications Inc. v. Union Des Editions Modernes
(1979) 26 CPR(2d) 183 at 188 (FCTD). The fifth and most important factor
therefore favours the applicant. Additionally, there is a principle of
trade-mark law that further favours the applicant namely, that comparatively
small differences may suffice to distinguish between “weak” marks, that is,
between marks of low inherent distinctiveness (see GSW Ltd. v. Great West
Steel Industries Ltd. (1975) 22 CPR (2d) 154 (FCTD)) - particularly when
the opponent has not presented any evidence of acquired distinctiveness for its
marks so as to entitle the opponent’s marks to a broadened scope of protection.
III.
Relevant Legislation
[12]
The full text of the relevant provisions of the Act
are attached as an Appendix to these reasons.
IV.
Issues
[13]
The following issues are raised in this
Application:
a.
the appropriate standard of review;
b.
whether the TMOB erred on the issue of
confusion; and
c.
whether the TMOB was wrong to reject the
opposition and permit the ENIVRO‑GUARD mark to proceed to registration.
V.
Discussion
A.
The Appropriate Standard of Review
[14]
In accordance with subsection 56(5) of the Act,
additional evidence was filed with the Court by both parties. This evidence is
to be assessed for materiality, specifically what, if any, impact it would have
had on the decision of the TMOB. The standard of review on ppeals from the TMOB
was addressed in detail in Molson Breweries v John Labatt Ltd, [2000] 3
FC 145, [2000] FCJ No 159 [Molson], and accepted by the Supreme Court of
Canada in Mattel USA Inc v 3894207 Canada Inc, 2006 SCC 22, [2006] 1 SCR
772 [Mattel]. In Molson, Justice Rothstein explained:
47 On an appeal under section 56, the
record created before the Registrar forms the basis of the evidence before the
Trial Division judge hearing the appeal, which evidence may be added to by the
parties. Thus, although the term trial de novo has come into frequent
usage in describing a section 56 appeal, the term is not an entirely accurate
description of the nature of such an appeal. That an appeal under section 56 is
not a trial de novo in the strict sense of the term was noted by McNair J. in Philip
Morris Inc. v. Imperial Tobacco Ltd.
51 …Even though there is an express
appeal provision in the Trade-marks Act to the Federal Court, expertise
on the part of the Registrar has been recognized as requiring some deference.
Having regard to the Registrar's expertise, in the absence of additional
evidence adduced in the Trial Division, I am of the opinion that decisions of
the Registrar, whether of fact, law or discretion, within his area of
expertise, are to be reviewed on a standard of reasonableness simpliciter.
However, where additional evidence is adduced in the Trial Division that would
have materially affected the Registrar's findings of fact or the exercise of
his discretion, the Trial Division judge must come to his or her own conclusion
as to the correctness of the Registrar's decision.
(1)
The Applicant’s additional evidence and position
[15]
The Applicant submits that the additional
evidence filed in this appeal warrants a trial de novo using the
standard of correctness, and argues that the new evidence would have materially
changed the findings of the TMOB with respect to confusion. They assert that
the additional evidence establishes that the parties are direct competitors
with overlapping channels of trade, and proves that that ROAD GUARD and CLEAR
GUARD marks are not weak marks as found by the TMOB.
[16]
The Applicant argues that four pieces of new
evidence support this position: (1) evidence of the use of the Applicant’s
CLEAR GUARD mark in packaged format for re‑sale consumers; (2) evidence
of use of the unregistered trade‑mark COAL GUARD; (3) evidence of the
distinctiveness of the GUARD marks enjoyed by the Applicant; (4) evidence
showing the non‑distinctiveness of the proposed mark.
[17]
This evidence was entered by way of an affidavit
and exhibits sworn by Shilo Sazwan, Chief Operating Officer of Tiger, on March
17, 2015. Mr. Sazwan was cross examined on his affidavits; the resulting
transcripts as well as the accompanying exhibits form part of the record before
this court.
[18]
Mr. Sazwan’s evidence can be summarized as
follows:
•
Tiger is the largest manufacturer of calcium
chloride products in Western Canada and one of the largest manufactures of natural
calcium chloride in North America.
•
Tiger products are used for dust control, road
stabilization, de‑icing and anti‑icing, oilfield drilling fluids
and mine water suppression.
•
Tiger has been in operation for over 50 years
with a head office in Nisku, Alberta. Tiger is concerned with the use and
registration of the ENVIRO‑GUARD mark by the Respondent as it is likely
to cause confusion in the marketplace for de‑icing and anti‑icing
products.
•
Both Tiger and Compass sell to the bulk
(highway) and packaged (retail) markets.
•
Tiger customers include municipalities and
governments, road maintenance firms, wholesalers and “home
improvement” retailers in Canada and primarily in western Canada.
•
Tiger owns the trademarks CLEAR GUARD, ROAD
GUARD PLUS, NANUK ENVIRO NON/CHLORIDE AND COAL GUARD.CLEAR GUARD, ROAD GUARD
PLUS, and NANUK ENVIRO NON/CHLORIDE are all registered in association with anti‑icing
and de‑icing in Canada.
•
COAL GUARD is used in association with coal
freeze proofing and dust control.
•
CLEAR GUARD is a liquid anti‑icer and de‑icer
sold in bulk and packaged formats.
•
CLEAR GUARD possesses environmental qualities.
•
ROAD GUARD PLUS is a liquid de‑icer sold
in truckload and 1 ton loads.
•
ROAD GUARD PLUS possesses environmental
qualities.
[19]
The Applicant also filed an affidavit with
exhibits sworn to by Lindsay Earnshaw on March 6, 2015. Ms. Earnshaw conducted
trademark searches of the Canadian Trademark Database which revealed the
following:
•
There are 405 marks that contain the term “guard” or “gard” in
class 1 (industry chemicals).
•
8 of the 405 marks were registered in
association with de‑icing, de‑icers, ice melters, road salt [or]
salt blends.2 of the 8 marks are owned by Tiger.
•
3 of the 8 marks (including ENVIRO‑GUARD)
are owned by Compass.
(2)
The Respondent’s additional evidence and
position
[20]
The Respondent also filed additional evidence.
The affidavit with exhibits of Ken Johnston, Director of Sales at Compass,
sworn to on April 20, 2015, was filed confirming his previous affidavit of
August 2, 2012. Mr. Johnston was cross examined on his affidavit, and the
transcripts and the accompanying exhibits form part of the record before this
court. The highlights from this evidence are:
•
Compass (previously Sifto) provides salt and
other minerals to consumers throughout Canada which includes mined rock salt
for highway and consumer de‑icing.
•
ENVIRO‑GUARD is sold to residential
customers in retail channels including hardware stores, grocery stores and big
box retailers.
•
ENVIRO‑GUARD is too expensive for highway
use and is not sold in any bulk format.
•
ENVIRO‑GUARD has been sold as a
residential de‑icing product since November 2010.
•
ENVIRO‑GUARD is sold in 5.44 kg jugs, 10
kg and 20 kg bags and 20 kg pails.
[21]
The Respondent contends that the Applicant’s new
evidence is irrelevant, has no‑probative significance, and would have no
material effect on the TMOB’s findings. They maintain that the test to
determine probative value is “quality, not quantity”.
Evidence that simply supplements or confirms earlier findings is not sufficient
to warrant the standard of correctness. As such, the Respondent submits that
the correct standard of review is reasonableness.
[22]
Given the consideration of the evidence and
reasons articulated in the TMOB decision, the Respondent submits that the
Board’s findings should not be disturbed.
[23]
I agree with the Respondent. While the
additional evidence is voluminous, it is largely repetitive of the original
record, and would not have materially changed the findings of the TMOB.
Accordingly, the appropriate standard of review is reasonableness.
B.
Did the TMOB err on the issue of confusion
(1)
Confusion Analysis
[24]
As noted above, the five factors outlined in s
6(5) of the Act which must be considered when determining whether trade‑marks
are confusing are: (a) the inherent distinctiveness of the trade‑marks
and the extent to which they have become known; (b) the length of time the
trade‑marks 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 in appearance, sound or in the ideas suggested by
them.
[25]
The TMOB appropriately referenced the confusion
analysis outlined by the Supreme Court of Canada in Masterpiece Theatre v
Alavida Lifestyles Inc, 2011 SCC 27,[2011] 2 S.C.R. 387 [Masterpiece]:
[40] At the outset of this confusion
analysis, it is useful to bear in mind the test for confusion under the Trade-marks
Act . In Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006
SCC 23, [2006] 1 S.C.R. 824, Binnie J. restated the traditional approach, at
para. 20, in the following words:
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 [mark], at a time when he or she has no more than an imperfect recollection
of the [prior] 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.
Binnie J. referred with approval to the
words of Pigeon J. in Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco
Corp., [1969] S.C.R. 192, at p. 202, to contrast with what is not to be
done — a careful examination of competing marks or a side by side comparison.
(2)
Channels of Trade
[26]
The Applicant asserts that had the TMOB
considered the new evidence they would have come to a different conclusion on
the issue of confusion. Specifically, they argue that the Board would have
found the parties to be direct competitors with overlapping channels of trade.
[27]
The Applicant relies on Mr. Sazwan’s affidavit
to establish that their customer UFA Cooperative is a “well‑known
chain of gas stations, farm supply/home improvement stores with numerous
locations throughout Alberta”, making them direct competitors with
Compass in the consumer market. Invoices of sales of CLEAR GUARD to UFA were
added to the record before the Court.
[28]
The evidence of the sale of CLEAR GUARD to
retail consumers was considered by the TMOB, and while there were no invoices
of sales to UFA Cooperative before the TMOB, the TMOB acknowledged at paragraph
21 of its decision that “a small portion of the
opponents sales are to retail consumers”.
[29]
The affidavit of Mr. Swazan of March 17, 2015,
states that sales of ROAD GUARD PLUS and CLEAR GUARD products have exceeded 25
million dollars since 2005. He also noted that sales and promotional expenses
have exceeded 2 million dollars since 2002. This is offered as evidence of the
wide scope of the use of Tiger’s trademarks in western Canada and beyond.
[30]
There is no evidence, however, of the breakdown
of these sales figures between Tiger’s various products or the various channels
of trade in which they are sold. Furthermore, this additional evidence does not
provide “new evidence” to support sales of CLEAR
GUARD in retail channels for the relevant dates in their opposition– May 25,
2010 (date of filing) and January 11, 2011 (non‑entitlement and non‑distinctiveness).
[31]
On cross examination on his March 17, 2015
affidavit, Mr. Swazan confirmed that there were no sales figures or invoices
provided for the NANUK ENVIRO NON‑CHLORIDE product even though this is
listed in the Statement of Objection.
[32]
The only “new” evidence
of the sale of CLEAR GUARD in retail outlets are two invoices from UFA
Cooperative. This is not sufficient proof to establish a retail channel of
trade. Further still, this evidence is consistent with the findings of the TMOB
referenced above.
[33]
I therefore conclude that the additional
evidence with respect to sales and channels of trade would not have had a
material impact on the TMOB’s finding that the parties do not occupy the same
channels of trade.
(3)
Distinctiveness
[34]
On the issue of distinctiveness, the TMOB
concluded that the marks for both Tiger and Compass were weak and therefore the
inherent distinctiveness of the marks favoured neither party.
[35]
The only common element between the marks is the
word GUARD. In the case of NANUK ENVIRO NON/CHLORIDE the word ENVIRO is common.
[36]
No evidence of sales for NANUK ENVIRO
NON/CHLORIDE was before the TMOB or a part of the additional evidence before
this court.
[37]
The words CLEAR, ROAD, COAL and NANUK are the
predominant word elements of Tiger’s marks. As such, they are distinguishable
from the word ENVIRO in appearance, sound and suggested concepts.
[38]
The TMOB was correct in its assertion at
paragraph 37 of the decision, that the first part of the mark is the most
relevant for the purpose of determining distinction.
[39]
In that regard, once the marks for both CLEAR
GUARD and ROAD GUARD are stripped of the word GUARD neither of the first words “CLEAR” or “ROAD” are
descriptive of de‑icing products.
[40]
Tiger argued that the distinctiveness of the
word “GUARD” should be considered. However, the
state of the register evidence shows that marks containing “GUARD” or “GARD” are
common: see above, Affidavit of Ms. Earnshaw at para 19.
[41]
The additional evidence does not support the
distinctiveness of Tiger’s marks. Rather, it confirms the conclusion of the
TMOB that the marks are weak.
(4)
Issues outside the Statement of Objection
[42]
Tiger argues that the evidence of the use of
COAL GUARD is a relevant consideration in the confusion analysis.
[43]
Tiger suggests that a family of trademarks
analysis favours Tiger when the use of COAL GUARD is considered. However,
evidence with regard to the use of COAL GUARD was not plead in the Statement of
Opposition, nor was it raised at the TMOB.
[44]
The court in Procter & Gamble Inc v.
Colgate-Palmolive Canada Inc, 2010 FC 231, at paragraph 26, 364 FTR 288, was
clear that while new evidence can be considered in these applications, there is
no jurisdiction to consider new issues not raised before the TMOB.
[45]
I therefore find that the evidence with respect
to COAL GUARD is a new issue. It was not raised in the Statement of Opposition
or before the TMOB. As such, it is inappropriate for this court to consider
this evidence or its impact.
C.
Was the TMOB wrong to reject the opposition and
permit the ENIVRO‑GUARD mark to proceed to registration?
[46]
Given the expertise of the TMOB, they are owed
significant deference on review. This principle was articulated by the Supreme
Court of Canada in Mattel, above, as follows:
36 The determination of the
likelihood of confusion requires an expertise that is possessed by the Board
(which performs such assessments day in and day out) in greater measure than is
typical of judges. This calls for some judicial deference to the Board’s
determination …
37 What this means in practice is
that the decision of the registrar or Board “should not be set aside lightly
considering the expertise of those who regularly make such determinations”: McDonald’s
Corp. v. Silcorp Ltd. (1989), 24 C.P.R. (3d) 207 (F.C.T.D.), at p. 210,
aff’d (1992), 41 C.P.R. (3d) 67 (F.C.A.). Reception of new evidence, of course,
might (depending on its content) undermine the factual substratum of the
Board’s decision and thus rob the decision of the value of the Board’s
expertise. However, the power of the applications judge to receive and consider
fresh evidence does not, in and of itself, eliminate the Board’s expertise as a
relevant consideration: Lamb v. Canadian Reserve Oil & Gas Ltd.,
[1977] 1 S.C.R. 517, at pp. 527-28.
[47]
The deference owed to the TMOB is in keeping
with the direction from the Supreme Court of Canada in Dunsmuir v New
Brunswick, 2008 SCC 9 at paras 48‑50, [2008] 1 S.C.R. 190.
[48]
As indicated above, I find that the additional
evidence of the Applicant Tiger is not new evidence which would have had a
material impact on the decision of the TMOB. As a result, the findings of the
Board with respect to each ground for opposition ought to be assessed on a
standard of reasonableness. The conclusions reached by the Board for each
ground are well reasoned and supported by the evidence, and as such, owed
deference by this court.
VI.
Conclusion
[49]
The Applicant Tiger has raised a number of other
issues in this application. Nevertheless, in light of my finding with respect
to the weight of the new evidence there is no need to address them. The
consideration of the evidence and reasons articulated in the TMOB decision were
reasonable. For all these reasons, the present application is dismissed.
VII.
Costs
[50] In view of the result, the
Respondent shall have their disbursements in the amount of $1500.00, and be
awarded costs in the amount of $1500.00
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