Date: 20111208
Docket: A-464-10
Citation:
2011 FCA 342
CORAM: NOËL J.A.
PELLETIER J.A.
TRUDEL J.A.
BETWEEN:
NAUTILUS PLUS INC.
Appellant
and
CENTRES STOP INC.
Respondent
REASONS FOR JUDGMENT
NOËL
J.A.
[1]
This is an appeal from
a decision rendered by Justice Harrington of the Federal Court (the Federal
Court judge), dismissing the appeal of Nautilus Plus Inc. (the appellant) on
the basis that the delegate of the Registrar of Trade-marks (the Registrar) had
been correct in refusing the application for registration of the trade-mark
STOP DIETE filed by the appellant under the Trade-marks Act, R.S.C.,
1985, c. T-13 (the Act).
BACKGROUND
[2]
The appellant filed its
application for registration in July 2005. The application was based on
proposed use in association with nutrition programs, “namely nutritional
recommendations for active people” (Registrar’s decision, at paragraph 1).
[3]
Centres Stop Inc. (the
respondent) opposed the application, filing six grounds of opposition. The
Registrar allowed two of these grounds. He concluded that STOP DIETE was
confusing with the respondent’s trade-marks, namely STOP POIDS and STOP WEIGHT,
and that, moreover, the proposed mark was not distinctive.
[4]
The matter was appealed
before the Federal Court, and both parties exercised their right to file
additional evidence. The Federal Court judge examined the new evidence and
concluded that it did not have the effect of undermining the factual basis of
the Registrar’s decision, which was otherwise reasonable.
[5]
The present appeal
ensued.
[6]
In support of its
appeal, the appellant argues that the new evidence filed before the Federal
Court judge was capable of altering the conclusion reached by the Registrar and
that, consequently, the standard of correctness applied (Mattel, Inc. v.
3894207 Canada Inc., 2006 SCC 22, [2006] 1 S.C.R. 772, at
paragraphs 36 and 37 [Mattel]; Shell Canada Limited and P.T.
Sari Incofood Corporation, 2008 FCA 279, 380 N.R. 317, at
paragraph 27). Alternatively, it submits that the Registrar’s decision was
unreasonable and that the Federal Court judge erred in concluding the contrary.
ANALYSIS AND DECISION
[7]
The Registrar first
found that the businesses operated by the parties and the services offered in
association with the trade-marks in question were of the same nature (Registrar’s
reasons, at paragraphs 35 and 45), findings that are not challenged in the
present appeal. He then examined whether there was a likelihood of confusion
between the marks in question. In the course of his analysis, the Registrar
rejected the appellant’s argument that the meanings of the marks at issue were
different (Registrar’s reasons, at paragraph 37) :
I cannot agree with the [appellant]. The word “STOP” means to cause
something to cease. When juxtaposed with the word “WEIGHT” or the French
equivalent “POIDS”, the idea suggested is that of ceasing to gain weight. I
concede that the combination of the words “STOP” and “DIETE” may seem strange
at face value, but the idea of a diet is to lose or maintain weight. I conclude
that, overall, the marks suggest a similar idea and that they also resemble
each other visually and phonetically because of the word “STOP”.
[Emphasis added.]
[8]
Before the Federal
Court judge, the appellant introduced into evidence several definitions of the
word “diète”, including that found in the Multidictionnaire de la langue française (the Multidictionnaire), published in Montréal in 2005. According
to that definition, the word “diète” means:
[translation] A dietary
regimen prescribed by a physician. A liquid diet. A low-salt, iron-rich diet. Not
to be confused with a weight-loss program.
[9]
According to the
appellant, the definition found in this work, published in the same year as the
application for registration was filed, provides the exact meaning of the word “diète”.
It demonstrates that the mark STOP DIETE suggests avoiding dietary regimens
prescribed by a physician and is not to be associated with a weight-loss diet. According
to the appellant’s submission, the Registrar would not have concluded that
there was a likelihood of confusion if this definition had been brought to his
attention.
[10]
With respect, the
Federal Court judge correctly rejected this argument. The Multidictionnaire definition must be
considered in light of the other definitions of the word “diète” and in
consideration of spoken language (reasons, at paragraphs 31 and 32). In
that respect, the appellant’s definition, which associates the word “diète”
with a dietary regimen prescribed by a physician, undoubtedly reflects proper
usage in the French language. However, the aside following this definition, [translation] “Not to be confused with a
weight-loss program”, indicates another use that does associate the word “diète”
with a weight-loss program. This meaning is consistent with the English word “diet”,
which can be associated with weight control (Concise Canadian Oxford
Dictionary, Oxford University Press Canada, 2005). It is useful to note in this regard that the word DIETE, as it
appears on the proposed mark, is found in neither English nor French, since it
is spelled differently from “diet” in English and does not have a grave accent
as it would in French, and is preceded by the word STOP, a word used in both
French and English. I would add here that consideration must be given to the
fact that the target audience, given the geographic area where the marks are
likely to be used, presumably has functional knowledge of both English and
French (Mattel, at paragraph 58).
[11]
In that context, it was
entirely open to the Federal Court judge, after careful consideration of the
new evidence, to find that the word DIETE, as it appears on the mark, evokes a
weight-loss program (reasons, at paragraph 33). It follows that the new
evidence was of no consequence.
[12]
Having correctly
assessed the impact of the new evidence introduced before him, the Federal
Court judge concluded that the Registrar’s decision was otherwise reasonable. The
appellant, in challenging this conclusion, relies on the fact that the marks at
issue have very little inherent distinctiveness. In such circumstances, it
points out correctly that small differences can be sufficient to distinguish
them (Kellogg Salada Canada Inc. v. Canada (Registrar of Trade Marks),
[1992] 3 F.C. 442, at page 436).
[13]
According to the
appellant, the Federal Court judge’s finding on the meaning of the appellant’s
mark, when juxtaposed with the Registrar’s finding, demonstrates that such a difference
exists. It places particular emphasis on the Registrar’s view that the idea
suggested is that of “ceasing to gain weight” and the Federal Court judge’s
statement that the underlying concept is to “stop going on diets; it doesn’t
work” (reasons, at paragraph 33).
[14]
With respect, this is
only a superficial difference. While I acknowledge that the Federal Court judge
could have expressed himself differently, the idea he is attempting to convey
is obviously that it is not necessary to follow a weight-loss program to lose
weight. His agreement, in the previous sentence, with the meaning accepted by
the Registrar cannot be explained otherwise. In my opinion, both the Registrar’s
and the Federal Court judge’s findings on the idea suggested by the mark STOP
DIETE are the same, namely the idea that is expressed literally by the STOP
POIDS and STOP WEIGHT marks.
[15]
Lastly, the appellant
contends that the Federal Court judge applied the wrong legal test in holding
that there was a “possibility” of confusion rather than a “likelihood”. The
appellant is relying on the fact that the Federal Court judge, in the course of
the French version of his reasons, on two occasions referred to a “possibilité” of confusion rather than a “probabilité” (reasons, at paragraphs 28 and 38). In
my opinion, this is an accident, since the Federal Court judge referred to the
correct test elsewhere in his reasons (see paragraphs 2, 13, 17, 18, 29,
34 and 37). I would add that, in any event, the evidence allowed the Registrar
to conclude that there was a likelihood of confusion between the appellant’s
mark and those of the respondent.
[16]
The respondent asked
that it be awarded costs on a solicitor-client basis. There is no reason to
grant this request.
[17]
I would dismiss the
appeal with costs.
“Marc Noël”
“I agree.
J.D. Denis Pelletier J.A.”
“I agree.
Johanne Trudel J.A.”
Certified true translation
Johanna Kratz
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