Date: 20000210
Docket: A-739-98
CORAM:
LÉTOURNEAU J.A.
NOËL J.A.
MALONE J.A.
IN THE MATTER OF Section 57 of the
Trade-marks Act RSC 1985, c. T-13, and an
Opposition by the Walt Disney Company to
Application No. 578,215 for the trade-mark
FANTASYLAND HOTEL filed by
Fantasyland Holdings Inc.
BETWEEN:
DISNEY ENTERPRISES INC.
(formerly THE WALT DISNEY COMPANY)
Appellant
FANTASYLAND HOLDINGS INC. and
REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR JUDGMENT
(Delivered from the Bench at Ottawa, Ontario on
Wednesday, February 9, 2000)
MALONE J.A.
[1] This is an appeal by Disney Enterprises Inc. ("the appellant") from an order of the Trial Division dismissing its appeal from a June 18, 1997 decision of a Trade-Marks Hearing Officer. In that decision, the Hearing Officer permitted Fantasyland Holdings Inc. ("the respondent") to register the words FANTASYLAND HOTEL as a trade-mark with respect to hotels, restaurants and hospitality wares and services.
[2] The issue before the Trial Division turned on the effect of the decision of Dea J. in the Court of Queen's Bench of Alberta on the application by the respondent to register the words FANTASYLAND HOTEL (HOTEL disclaimed) for the above noted wares and services.1 Specifically, did the finding of confusion made by that court bind the Hearing Officer in opposition proceedings under the Trade-marks Act?
[3] Assuming without deciding that res judicata and issue estoppel may apply in a trade-mark opposition hearing where the basis of the opposition is confusion, we are satisfied that Campbell J. made no error when he concluded that the principle of issue estoppel did not apply in the circumstances of this case. The proceedings before the Trade-Marks Opposition Board did not involve the "same question" as the one upon which Dea J., confirmed by the Alberta Court of Appeal, adjudicated. While the application for registration of a trade-mark made by the respondent was to register the words "FANTASYLAND HOTEL" with respect to the hotel adjacent to the West Edmonton Mall, the issue before Dea J. in an action for passing-off related to the use of the word "Fantasyland" in respect of the amusement park at the said mall. In our view, the goods and services in the passing-off action were sufficiently different from those at issue in the opposition proceedings so as not to give rise to a determination of the"same question" in the two sets of proceedings.
[4] The appellant abandoned before the Trial Division its appeal against the finding of the Hearing Officer that there was no confusion between the respondent's wares and services applied to hotels and restaurants and those that the appellant provides pursuant to the operation of its amusement parks under the name Fantasyland at its Disneyland resorts. Therefore, this conclusion of the Hearing Officer is not in issue before us notwithstanding the appellant's attempt to re-litigate it. It would be unfair and prejudicial to the respondent if the appellant was entitled to challenge it at this late stage. In fact, an argument as to possible confusion of the wares arises in this appeal only in the context of the applicability of the issue estoppel principle. We have already concluded that Campbell J. was right in finding that the opposition proceedings did not involve the "same question" as in the passing-off action. It was quite proper for him in determining the applicability of issue estoppel, to consider all the circumstances, including the fact that the appellant used the name "Fantasyland" for amusement parks but not hotels as well as the difference or lack of confusion in the wares and services (hotels, restaurants and hospitality v. amusement parks) provided by the parties.
[5] The appellant submitted in its factum that the principle of comity requires that an administrative tribunal like the Trade-Marks Opposition Board give full faith and credit to the decisions of other tribunals or courts of competent jurisdiction, provided that the same parties and issues were before the other adjudicative body.2 This submission merely begs the question of whether or not it was the same issues that were previously litigated. As it was properly found that the issues were not the same and, therefore, neither res judicata nor issue estoppel applied, the administrative tribunal was under no duty or requirement to treat as binding the findings of the Alberta court in the amusement park decision.
[6] The appellant also submitted that if this trade-mark registration was confirmed a future expansion of the services and wares under the trade-mark would lead to confusion. It was urged that this is inevitable as the rights confirmed by registration are not confined to present business areas or practices.3 This court has already decided in Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd.4 that in opposition proceedings an assessment of the surrounding circumstances relative to confusion should take place effective as of the date of the Hearing Officer's decision. Any concerns about future confusion and possible future breaches, either of the Alberta injunctions or the parameters of the trade-mark as registered, can be addressed by the courts if and when they arise.
[7] For these reasons, the appeal will be dismissed. The respondent will be awarded its costs on this appeal. The order below relating to costs will not be disturbed.
J.A.
Date: 20000210
Docket: A-739-98
CORAM:
LÉTOURNEAU J.A.
NOËL J.A.
MALONE J.A.
IN THE MATTER OF Section 57 of the
Trade-marks Act RSC 1985, c. T-13, and an
Opposition by the Walt Disney Company to
Application No. 578,215 for the trade-mark
FANTASYLAND HOTEL filed by
Fantasyland Holdings Inc.
BETWEEN:
DISNEY ENTERPRISES INC.
(formerly THE WALT DISNEY COMPANY)
Appellant
FANTASYLAND HOLDINGS INC. and
REGISTRAR OF TRADE-MARKS
Respondents
Heard at Ottawa, Ontario, on Wednesday, February 9, 2000.
Judgment rendered from the Bench at Ottawa, Ontario, on February 9, 2000.
REASONS FOR JUDGMENT OF THE COURT BY: MALONE J.A.
__________________
1 Walt Disney Productions v. Triple Five Corporation et al. (1992), 43 C.P.R. (3d) 321 (Alta. Q.B.); (1994), 53 C.P.R. (3d) 129 (Alta. C.A.).
2 Morguard Investments Ltd. v. De Savoye, [1990] 3 S.C.R. 1077, at pp. 1095-1108.
3 Mr. Submarine Ltd v. Amandista Investments Ltd. (1987) 19 C.P.R. (3d) 3 at p. 12 (F.C.A.)
4 (1991) 37 C.P.R. (3d) 413 at p. 422 (F.C.A.)
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