Date: 20130528
Docket: A-18-12
Citation: 2013 FCA 137
CORAM: PELLETIER
J.A.
GAUTHIER
J.A.
WEBB
J.A.
BETWEEN:
MONSTER CABLE PRODUCTS,
INC.
Appellant
and
MONSTER DADDY, LLC
Respondent
REASONS FOR JUDGMENT
GAUTHIER J.A.
[1]
This
is an appeal from the decision of Campbell J. of the Federal Court (the Judge)
(2012 FC 1260) rejecting, in part, Monster Cable Products Inc.’s (Monster
Cable) appeal from the decision of the Registrar of trade-marks (2010 TMOB
212), who
rejected, in part, Monster Cable’s Opposition to Monster Daddy LLC’s (Monster
Daddy) application for the trade-mark MONSTER based on the proposed use of
various wares described at paragraph 1 of the Judge’s reasons.
[2]
Monster
Cable filed as new evidence before the Judge a supplementary affidavit from Mr.
Tognotti (Monster
Cable’s General Counsel and Vice-President) in support of its Opposition in
respect of the wares described in Monster Daddy’s application not already excluded
by the Registrar. Its main position was that such evidence could have materially
affected the Registrar’s findings in respect of confusion and lack of
distinctiveness. Thus, Monster Cable submits that the Judge should have decided
these issues de novo.
[3]
The
Judge did not agree that such new evidence could have materially affected the
Registrar’s findings, except in relation to “all purpose disinfecting and
sanitizing preparations”, where he found that the new evidence did support a
finding of likelihood of confusion with the common law use of Monster Cable’s
mark in association with cleaning products. Thus, he noted that in respect of
the other proposed wares, he could only intervene if the Registrar’s decision
was unreasonable. He dismissed Monster Cable’s appeal regarding the following
wares: “adhesives
for general industrial and commercial use; chemicals for use in the manufacture
of cleaning solutions; vehicle waxes; automotive lubricants and oils”.
[4]
On
appeals of decisions made pursuant to subsection 56(1) of the Trade-marks
Act, R.S.C. 1985, c. T-13 (the Act), the role of this Court is to
determine if the judge properly identified and applied the standard of review.
There is no dispute that the Judge properly identified the standard as
reasonableness. He also correctly stated that he could only review an issue de
novo if the new evidence produced by Master Cable could have materially
affected the Registrar’s findings in that respect. This Court has already
determined that the question of the materiality of new evidence is a question
of mixed fact and law and that the Judge’s findings will stand in the absence
of a palpable and overriding error or an extricable error of law (Spirits
International B.V. v. BCF S.E.N.C.R.L., 2012 FCA 131, at paragraph 12).
[5]
Monster
Cable also argues that the Registrar failed to properly consider that the
burden remained on Monster Daddy at all times to establish that there was no
likelihood of confusion and that the mark could be distinctive of its wares. In
Monster Cable’s view, the Judge should have recognized this and, in its view,
he made the same mistake as the Registrar.
[6]
However,
Monster Cable acknowledged that the Registrar properly described where the burden
of proof lay in the Opposition proceeding (see paragraphs 7, 36 and 41 of the
decision). In my view, what Monster Cable is disputing is the weight given to
its evidence. This is clear when one considers that Monster Cable also says
that the Registrar and the Judge should have drawn a negative inference against
Monster Daddy since Monster Daddy did not participate in the hearing before the
Judge or before this Court and filed a brief affidavit and written submissions
before the Registrar in answer to its Opposition. Monster Cable says that if
such an inference had been drawn, the only conclusion that could be reached is
that there is a lack of distinctiveness and a likelihood of confusion in
respect of all the wares enumerated in the application.
[7]
First,
I note that this last point (negative inference) does not appear to have been
raised before the Judge and that neither of the alleged errors referred to
above are listed in the Notice of Appeal filed before this Court. In any event,
the Judge could not simply substitute his own assessment of the evidence to
that of the Registrar. His role in the applicable standard of reasonableness is
limited to determining whether, on the basis of the evidentiary record before
him, the Registrar’s decision falls within a “range of possible, acceptable
outcomes which are defensible in respect of the facts and law" (Dunsmuir
v. New Brunswick, 2008 SCC 9, at paragraph 47).
[8]
Turning
now to the new evidence and the arguments in respect of each of the remaining
wares (see paragraph 3 above), I start with “vehicle waxes and automotive
lubricants and oils”. Having carefully examined the record, I cannot find any
new evidence in relation to this. All the relevant registrations were before
the Registrar. The only paragraph in the supplementary affidavit relevant to
Monster Cable’s argument which mentions the word “car” is paragraph 2. It is
identical to the first sentence of paragraph 2 in the affidavit that was before
the Registrar. Thus, the Judge did not err in finding that the standard
applicable to findings in respect of those wares is reasonableness.
[9]
Monster
Cable submits that both the Registrar and the Judge ignored the fact that the wares
in their two 2006 registrations included automotive and marine electrical power
components, as well as automotive and marine mobile phone equipment. Decision
makers are presumed to have considered all the evidence before them (Housen
v. Nikolaisen, 2002 SCC 33, at paragraph 46). Moreover, in this case, it is
clear that the Registrar carefully considered the 2006 registrations, given
that he lists in his non exhaustive summary found at paragraph 38 of his reasons
mobile phone equipment and electric power equipment such as “surge protectors”,
which wares are only mentioned in the 2006 registrations in reference to marine
and automotive components. I have not been persuaded that any of the
Registrar’s findings in respect of those wares are unreasonable.
[10]
In
respect of “chemicals for use in the manufacture of cleaning solutions”, the
new evidence consists of a statement by Mr. Tognotti that Monster Cable
manufactures the cleaning solutions it sells, and that this, in and of itself,
could have affected the Registrar’s conclusion that there was no likelihood of
confusion between the above-mentioned wares and Monster Cable’s common law use
of its marks in association with cleaning products for electronic devices. In
Monster Cable’s view, this new evidence would also have affected the
distinctiveness of Monster Daddy’s mark in association with those wares. I
cannot agree.
[11]
I
note that Monster Cable confirmed at the hearing that its common law use does
not extend to such chemicals. Moreover, it appears to me that the argument in
this respect in fact highlights the point that consumers or buyers of such
chemicals are not the consumers of electronic products to whom Monster Cable
sells its own cleaning solutions. This would support, to some extent, the
Registrar’s findings in respect of confusion and distinctiveness in association
with those wares.
[12]
This
brings me to the last wares: “adhesive for general, industrial and commercial
use”. The relevant new evidence is a statement by Mr. Tognotti that Monster
Cable sells some kits which would include some adhesive components. To support
this assertion, Mr. Tognotti included some extracts from the company’s website.
The first and only extract where reference to adhesives is made is the one
relating to a wall cable management system kit. The features of the kit do not
include a reference to adhesive components. However, in the upper right hand
corner of the extract, one can read that the system is used to hide cables
(already owned or bought separately) for an uncluttered look. It is noted that the
system “attaches easily to walls with safe non-permanent adhesive or with
standard screws”.
[13]
Monster
Cable’s trade-mark would appear on the packaging only. Monster Cable recognizes
that such management system is not part of the enumerated wares in its
registration, including the accessories described therein. It views such wares
as natural extensions (complimentary wares) of the registered wares.
[14]
The
link to Monster Daddy’s proposed “adhesives for general industrial and
commercial use” is so tenuous that I cannot agree that this evidence could have
materially affected any of the Registrar’s findings in respect of such wares. I
certainly cannot conclude that the Judge made a palpable and overriding error in
his assessment of this evidence.
[15]
Finally,
I have also not been persuaded that any of the Registrar’s findings regarding all
those wares were not open to him, having regard to the record before him.
[16]
Despite
Monster Cable’s counsel’s able submissions, I have not been persuaded that this
Court’s intervention is warranted. I would dismiss the appeal.
“Johanne Gauthier”
“I
agree
J.D. Denis Pelletier”
“I
agree
Wyman W. Webb”
FEDERAL COURT OF
APPEAL
NAMES OF COUNSEL AND
SOLICITORS OF RECORD
DOCKET: A-18-12
APPEAL
FROM AN ORDER OF THE HONOURABLE MR. JUSTICE DOUGLAS CAMPBELL DATED OCTOBER 30,
2012, DOCKET NO. T-257-11
STYLE OF CAUSE: MONSTER CABLE
PRODUCTS, INC. v. MONSTER DADDY, LLC
PLACE OF HEARING: Toronto, Ontario
DATE OF HEARING: May
22, 2013
REASONS FOR JUDGMENT
BY: GAUTHIER
J.A.
CONCURRED IN BY: PELLETIER
J.A.
WEBB J.A.
DATED: May 28, 2013
APPEARANCES:
|
Kenneth
D. McKay
|
FOR
THE APPELLANT
|
|
No
Appearance
|
FOR
THE RESPONDENT
|
SOLICITORS
OF RECORD:
|
Sim
Lowman Ashton & McKay LLP
Toronto, Ontario
|
FOR THE APPELLANT
|
|
N/A
|
FOR THE RESPONDENT
|
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