Date: 20061214
Docket: A-53-06
Citation: 2006 FCA 409
CORAM
: LÉTOURNEAU J.A.
NADON
J.A.
PELLETIER
J.A.
BETWEEN:
MAISON COUSIN (1980) INC.
Appellant
and
COUSINS SUBMARINES INC.
Respondent
REASONS FOR JUDGMENT OF THE
COURT
(Delivered from the bench at Montréal, Quebec, on
December 14, 2006)
PELLETIER J.A.
[1]
We
are of the opinion that intervention is warranted in this case.
[2]
The
appellant Maison Cousin (1980) Inc. (the appellant) is appealing a decision of
Mr. Justice Simon Noël of the Federal Court (“the judge”) presiding
pursuant to section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the
Act), on appeal of a decision of the delegate of the Registrar of Trade-marks.
This decision allowed, in part, the application for registration made by the
respondent Cousins Submarines Inc. (the “respondent”) for the “Cousins” trade-mark,
in spite of the appellant’s opposition.
[3]
The
respondent had filed an application for the registration of the “Cousins”
trade-mark in association with “sandwiches, namely,
submarine sandwiches; beverages, namely, carbonated beverages, coffee, milk and
ice tea” and with
“restaurant services”. The appellant filed its opposition to the registration
of this trade-mark pursuant to section 38 of the Act. The Registrar’s delegate
ruled in favour of the respondent, in part, dismissing the appellant’s
opposition, except with respect to submarine sandwiches as products likely to
be sold in connection with the trade-mark claimed, namely, “Cousins”.
[4]
The
appellant appealed this decision before the Federal Court. Alerted by the
comments of the Registrar’s delegate about the flimsy evidence it had in
support of its opposition, the appellant invoked its right under subsection
56(5) to supplement the evidence on record. It submitted new evidence. The
judge analyzed this new evidence on the basis of the standard of review. He
concluded that it was sufficiently significant and probative and that he had to
apply the standard of correctness. In doing so, the judge unduly restricted his
discretion to intervene, in our view, because having noted the significance and
probative value of the new evidence, he was no longer called on to review the
decision of the registrar’s delegate, but rather to decide the issue on the
merits based on the evidence before him.
[5]
This
is clear from subsection 56(5) of the Act, a provision which, in exceptional
cases, allows new evidence to be submitted as of right on an appeal against a Registrar’s
decision:
|
56(5) On an appeal under subsection (1), evidence in addition to
that adduced before the Registrar may be adduced and the Federal Court may
exercise any discretion vested in the Registrar.
|
56(5) Lors de l’appel, il peut être apporté une preuve en plus de
celle qui a été fournie devant le registraire, et le tribunal peut exercer
toute discrétion dont le registraire est investi.
|
[6]
This
is the interpretation given to this provision by Mr. Justice Evans in Garbo
Group Inc. v. Harriet Brown & Co., [1999] F.C.J. No. 1763 (F.C.) at
paragraph 38, when he wrote the following:
[38] . . . The
more substantial the additional evidence, the closer the appellate Court may
come to making the finding of fact for itself.
[7]
The
judge deciding the issue de novo may intervene without having to
identify any error committed by the delegate and is not obliged to defer to the
delegate’s decision. The judge must decide the issue on the basis of the
evidence before him or her and the applicable legal principles.
[8]
However,
in the case at bar, we are of the opinion that the judge was mistaken on the
issue of the likelihood of confusion. The appellant based its opposition on
three distinct grounds with a common factor, namely, confusion between its
trade-marks and the one claimed by the respondent. An analysis of the
likelihood of confusion must take into account the factors set out in
subsection 6(5) of the Act. These factors include the nature of the wares
associated with the trade‑marks in question and the nature of the trade. The
judge concluded that “the
fact that the wares sold by each company are essentially very different reduces
the risk of confusion” (paragraph 41 of the judge’s reasons). He came
back to this point later on in the same paragraph when he wrote the following:
[41] Having received, on the one hand, the
description of the products sold under the applicant’s trade-marks and the
relevant evidence, and on the other hand, the description of the proposed use
of the COUSINS mark by the respondent, I conclude that the types of wares sold
are, with the exception of the submarine sandwiches, completely different.
[9]
Likewise,
the judge concluded that the products in question were not sold through the
same commercial networks or in the same types of establishment, since the
appellant’s products were sold in convenience and grocery stores, while those
of the respondent were sold in their restaurants.
[10]
In
any case, the judge concluded that these distinctions favoured the respondent.
[11]
With
respect, we are of the opinion that the judge’s conclusions on these two
related points are incorrect. As far as the products themselves are concerned,
the judge did not explain the reasoning by which he came to the conclusion that
the products in question, especially the breads, desserts, cold cuts and
sandwiches, on one hand, and submarine sandwiches and drinks, on the other hand,
are so distinct from each other as to rule out any possibility of confusion.
These are all food products which are very similar and which are commonly found
in the same vicinity.
[12]
Moreover,
even if one could say that there is a distinction between these products, the
distinction is not sufficient to eliminate any possibility of confusion.
Subsection 6(2) of the Act provides for the possibility of confusion even if
the products in question are not of the same general class.
6(2) 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 wares or services
associated with those trade-marks are manufactured, sold, leased, hired or
performed by the same person, whether or not the wares or services are of
the same general class. [Emphasis
added.]
[13]
In
Mattel Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 772, at
paragraph 65, the Supreme Court noted that Parliament’s intent was not to
require that the wares or services belong to the same class:
[65] . . . On the contrary, the
point of the legislative addition of the words “whether or not the wares or
services are of the same general class” conveyed Parliament’s intent that not only
need there be no “resemblance” to the specific wares or services, but the wares
or services marketed by the opponent under its mark and the wares or
services marketed by the applicant under its applied-for mark need not
even be of the same general class.
[14]
The
judge ignored this distinction. Furthermore, we are of the opinion that the
products in question were not sufficiently distinct from each other to
eliminate any possibility of confusion, and even if they were distinct, that
fact in itself does not lead to the conclusion that there was no confusion.
[15]
As
far as the nature of the trade is concerned, the judge was wrong to compare the
respondent’s present way of operating with that of the appellant. The
respondent is still entitled to change its distribution networks and sell its
products in the same convenience stores or other establishments as the
appellant. Its application for registration does not in any way restrict its
scope of operations with respect to the distribution of its products. The judge
not only had to consider what the respondent was doing, but also what it could
do, considering the lack of restrictions in the registration of its trade-mark:
Mattel, supra, at paragraph 53.
[16]
The
judge was also mistaken on the issue of the distinctiveness of the trade-marks
in question, which is a factor that carries considerable weight in the
assessment of the possibility of confusion.
[17]
He
was of the opinion that the two trade-marks were distinctive. As far as the
appellant is concerned, this distinctiveness is acquired and not inherent. Section
12 of the Act prohibits a trade-mark that is “a word
that is primarily merely the name or the surname of an individual who is living
or has died within the preceding thirty years”. According
to the Registrar, the combination of the word “Maison” with a family name
simply lets it be understood that this is a family business. The distinct
character of the appellant’s trade-mark comes from its use in the Quebec
market since 1921 in connection with food products. Therefore, the judge was
not wrong in acknowledging the distinctiveness of the appellant’s “Maison
Cousin” trade-mark.
[18]
However,
the “Cousins” trade-mark has no distinctiveness, inherent or acquired. In
itself, “Cousins” may be a family name or may denote a family relationship. In
either case, it has no inherent distinctiveness. The evidence showed that the
“Cousins” mark had never been used in Canada or advertised in this
country. Therefore, it does not have an acquired distinctiveness. This means
that the appellant’s “Maison Cousin” trade-mark, given its acquired distinctiveness,
was entitled to a certain degree of protection, which the judge did not grant
it. This measure of protection weighs against registration of the “Cousins”
mark.
[19]
With
regard to the connection between the “Cousins” mark and restaurant services,
which the Registrar’s delegate and the judge did not address, we note that
nothing prevents the appellant from using its trade-mark in the restaurant
industry. In fact, according to the affidavit of Mr. Samson, it already does
so in fast-food counters in convenience and grocery stores. The presence of
products bearing the “Cousins” mark in this context could only cause confusion.
[20]
With
regard to the standard of review applicable to us, we are sitting on an appeal against
a trial decision of a judge of the Federal Court. Our approach is based on the
principles stated in Housen v. Nikolaisen, [2002] 2 S.C.R. 235. We may
intervene only if there are palpable and overriding errors of
fact or of mixed fact and law, or if there are errors of law.
[21]
We
are satisfied that the errors of law and the palpable and overriding errors with
respect to questions of mixed law and fact made by the judge demand our
intervention.
[22]
Accordingly,
the appeal will be allowed, the decision of the Federal Court judge will be set
aside and, to render the judgment which should have been rendered, the appeal against
the decision of the Registrar’s delegate will be allowed, as will the
opposition to the application for registration bearing number 813,812 for the
“Cousins” mark. The Registrar of Trade-marks will be ordered to reject said
application for registration.
“J.D. Denis Pelletier”
Certified
true translation
Michael
Palles
Email this Content