Docket: T-226-16
Citation:
2017 FC 38
Ottawa, Ontario, January 11, 2017
PRESENT: The
Honourable Madam Justice Simpson
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BETWEEN:
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SCHWAN’S IP,
LLC
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Applicant
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and
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SOBEYS WEST
INC.
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Respondent
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JUDGMENT AND REASONS
[1]
This is an appeal pursuant to section 56 of the Trade-marks
Act, RSC, 1985, c T-13 [the Act] which is brought by way of application
pursuant to rule 300(d) of the Federal Courts Rules, SOR/98-106.
[2]
The appeal is from a decision of a Member of the
Trade-marks Opposition Board [the Registrar] dated October 29, 2015 [the
Decision], in which she refused Trade-mark Application No. 1, 448, 719 [the
Application] made by Schwan’s IP, LLC for the trade-mark EDWARDS & Design
[the Schwan’s Mark].
I.
The Parties
[3]
The Applicant Schwan’s IP, LLC [Schwan’s IP] is
the company which owns the Schwan’s Mark. Schwan’s Consumer Brands [SCB]
currently markets the Schwan’s products in the United States [US]. Both Schwan’s
IP and SCB are subsidiaries of a private company based in Minnesota called The
Schwan Food Company. All three companies are incorporated in the US.
[4]
The Respondent, Sobeys West Inc., [Sobeys]
opposed the registration of the Schwan’s Mark. Sobeys is a national retail
grocery store operator with 215 stores across Canada. It is the owner of the
trade-mark for the word EDWARDS [the Sobeys’ Mark]. Canada Safeway Ltd. [Safeway]
was the original opponent and owner of the Sobeys’ Mark. After Safeway was
purchased by Sobeys, it took an assignment of the Sobeys’ Mark and replaced
Safeway as the opponent in this application.
II.
The Trade-marks & the Wares
[5]
The Schwan’s Mark is:
[6]
Schwan’s IP seeks registration for the
following:
1.
Baked foods – namely pies based on registration
and use in the US; and
2.
Dessert Products – namely pies, apple crisp,
cream pies, cheesecakes, brownies, cakes and cobblers based on proposed use in
Canada.
[7]
The Trade-mark Application does not indicate
whether these goods are fresh or frozen. In my view, both categories are
therefore included in the Application.
[8]
Sobeys’ Mark is:
[9]
Sobeys’ Mark is for coffee and coffee filters. EDWARDS
coffee is sold in all Sobeys’ stores but not in any other locations.
III.
The Material Dates
[10]
The Material Dates before the Registrar were:
•
With regard to sections 30 and 16(2)(a) and 16(3)(a)
of the Act, the filing date of the Application was August 19, 2009;
•
With regard to section 12(1)(d) of the Act, the
date of the Registrar’s Decision was October 29, 2015;
•
With regard to section 2 of the Act, the date of
filing the Opposition was June 27, 2011.
IV.
The Evidence Before the Registrar
[11]
Safeway filed affidavits in opposition made by:
•
Generosa Castiglione – Trade-marks Searcher – exhibited
registration for and assignment of the Sobeys’ Mark;
•
Julie Léger – Professional Researcher –exhibited
internet websites showing coffee and baked goods served together. Her affidavit
was found inadmissible for the truth of its contents;
•
David Pullar – Director of Consumer Brands at
Safeway – provided evidence regarding the use and promotion of the Sobeys’
Mark.
[12]
Schwan’s IP filed the following affidavits:
•
Hallee Eileen Lauriola – legal assistant – provided
print outs of LCBO, Google, 411 and other search results;
•
Sandro Romeo – Trade-marks Research Analyst –
state of the Register;
•
Caroline D’Amours – Trade-marks Research Analyst
– “how common” search.
[13]
Safeway filed the following affidavits in Reply:
•
Jamie-Lynn Kraft – articling student – 411
search;
•
Nick Todorovic and Jane Buckingham – the Registrar
found these affidavits inadmissible as improper reply.
V.
Sobeys’ Opposition
[14]
In its Opposition, Sobeys alleged that the
Schwan’s Mark is confusing with the Sobeys’ Mark under sections 12(1)(d), 16(2)(a)
and 16(3)(a) of the Act and that, contrary to section 2 of the Act, the
Schwan’s Mark is not distinctive. There were other grounds of opposition under
section 30 of the Act but the Registrar’s rejection of those grounds was
not appealed.
VI.
The Registrar’s Decision
[15]
The Registrar allowed Sobeys’ opposition on the
issues of confusion and distinctiveness and refused the Application to register
the Schwan’s Mark.
[16]
It is noteworthy that Schwan’s IP did not
provide an affidavit which described its use or promotion of the Schwan’s Mark.
This allowed the Registrar to conclude at paragraph 31 of the Decision that “there is no evidence of use of the Mark by the Applicant in
Canada or that it has acquired any distinctiveness in Canada […].”
[17]
In contrast, the Registrar found that David
Pullar’s affidavit showed a history of use of the Sobeys’ Mark since at least
1988.
[18]
Dealing with the other factors listed in subsection
6(5) of the Act, the Registrar concluded that:
Re: subsection 6(5)(a)
Inherent Distinctiveness and Extent Known
[19]
Neither mark is inherently strong as both are
common surnames. However, the design element (the pie server) in the Schwan’s
Mark gives it slightly more inherent distinctiveness than the Sobeys’ Mark.
[20]
As noted above, there was substantial evidence
to show that the Sobeys’ Mark had become known and no such evidence for the
Schwan’s Mark.
Re: subsection 6(5)(b) Length of Time in Use
[21]
The Sobeys mark had a long history of use. There
was no evidence of use of the Schwan’s Mark in Canada.
Re: subsection 6(5)(c) Nature of the Goods
[22]
Although the goods are intrinsically different,
the evidence shows that they may be served together. Hence, they are related.
In reaching this conclusion, the Registrar relied on Cheung Bakery Products
Ltd v Saint Honore Cake Shop Ltd, 2011 TMOB 94 at paras 114 and 128-129 [Cheung].
In Cheung the Registrar considered the nature of the goods and concluded
that the Opponent’s bakery products were related to the Applicant’s wares,
which included coffee, because they could be used together.
Re: subsection 6(5)(d) Nature of the Trade
[23]
Schwan’s and Sobey’s goods can be sold in
supermarkets; therefore, the Schwan’s Mark could be used where the Sobeys’ Mark
is in use.
Re: subsection 6(5)(e)
Degree of Resemblance
[24]
At paragraph 36 of the Decision the Registrar
concluded that:
[36] This factor favours the Opponent.
There is high degree of resemblance in appearance and sound suggested by the
marks in view of the presence of the word EDWARDS in both trade-marks. The
addition of stylized lettering, background and the image of a pie server do not
significantly diminish the degree of resemblance in appearance or sounded since
they simply emphasize the word EDWARDS which remains the dominant element of
the Mark. Further, the ideas suggested by both trade-marks is similar, products
which are connected to someone with the surname EDWARDS.
A.
Other Circumstances
i)
The State of the Register and the Marketplace
[25]
The Registrar considered the state of the
register and marketplace evidence in the Romeo, Lauriola and D’Amours affidavits
filed by Schwan’s IP to support its submission that variations of the EDWARDS
name were common in Canada in association with food and beverages.
[26]
The Romeo affidavit included a “how common” search of the Canadian Trade-marks
Register for all registered or applied-for trade-marks including EDWARD, EDWARDS
and EDWARD’S for all food and beverage products in Canada. The closest matches
are shown in Group 1, which includes only the Sobey’s and Schwan’s Marks. This
means that they are the only marks which use Edward, Edwards or Edward’s alone
for food or beverage products. Accordingly the Registrar found at
paragraph 39 of the Decision that there was an “insufficient
number of trade-marks to conclude that EDWARD or EDWARDS is widely used on its
own in the food and beverage field such that the average Canadian consumer is
accustomed to distinguishing these marks”.
[27]
The Romeo affidavit also included domain names
using EDWARD, EDWARDS and EDWARD’S. However, the Registrar found them irrelevant
as there was no evidence that the webpages had been viewed in Canada.
[28]
The D’Amours affidavit also showed the results
of a “how common” search for the words EDWARD,
EDWARDS and EDWARD’S in association with food and beverage products and
services. However, the Registrar found the results broad and imprecise.
[29]
Lastly, the Lauriola affidavit showed:
•
websites from the food and beverage field which
all showed PRINCE EDWARD as part of the trade-marks;
•
Google searches showing Prince Edward Island;
•
LCBO searches; and
•
Canada 411 searches which included names used
for women’s clothing and financial services.
[30]
All this evidence led the Registrar to conclude at
paragraphs 43 and 44 that the word EDWARDS is incorporated in many names but is
not used on its own. As well, there was no evidence that other trade-names or
trade-marks had acquired significant reputations.
ii)
Use with liqueur and iii) not a house brand
[31]
The Registrar accepted that Sobeys had not used
Edwards as a house brand. The Registrar declined to admit the Léger affidavit,
which showed that coffee and liqueur are sometimes combined, for the truth of
its contents. The Registrar held that neither the lack of Edwards house brand coffee
nor consumers’ potential awareness that coffee and liqueur are sometimes mixed
supported an inference that consumers are able to distinguish between Schwan’s
and Sobey’s products.
VII.
The Conclusion about Confusion under 12(1)(d) of
the Act
[32]
The Registrar concluded at paragraph 47 of the
Decision:
[47] I find that the Applicant has not
established, on a balance of probabilities, that confusion is not likely
between the Mark and the Opponent’s registered trade-mark EDWARDS as of today’s
date. I reach this conclusion because while EDWARDS is not the type of mark
that is typically afforded a broad scope of protection, only the Opponent has
acquired a reputation in association with its Mark as of today’s date, the
Opponent Sobeys West Inc. or its predecessor in title Canada Safeway Limited
has a long history of use from at least 1988, the parties goods may be served
together and sold at grocery stores (even if not at the same stores or the same
section of stores specifically) and the Mark is highly similar in appearance,
sound and idea suggested to the Opponent’s trade-mark. As stated in Beverley
Bedding & Upholstery Co v Regal Bedding & Upholstery Ltd (1980), 47 CPR
(2d) 145 at 149 (FCTD), “Realistically appraised it is the degree of
resemblance between trade marks in appearance, sound or in ideas suggested by
them that is the most crucial factor, in most instances, and is the dominant
factor and other factors play a subservient role in the over-all surrounding
circumstances.”
VIII.
The Conclusion about Confusion under 16(2) and
(3) of the Act
[33]
The Registrar decided that, notwithstanding the difference
in material dates under sections 16 and 12 of the Act, her conclusion was
unchanged.
IX.
The Conclusion on Distinctiveness
[34]
Based on the Pullar affidavit, the Registrar
found that the Sobeys’ Mark had become sufficiently known by June 27, 2011 to
negate the distinctiveness of the Schwan’s Mark. Then the Registrar found that
Schwan’s IP had not met its onus to show that the Schwan’s Mark was unlikely to
create confusion with the Sobeys’ Mark. Accordingly, it would not serve to
distinguish Schwan’s IP’s goods from those of Sobeys.
X.
The Standard of Review on this Appeal
[35]
The normal rule is that a Registrar’s decision
is to be reviewed on a reasonableness standard. However, the normal rule does
not apply if new evidence filed on appeal pursuant to section 56 of the Act
would have materially affected the Registrar’s decision (see: Eclectic Edge
Inc v Gildan Apparel (Canada) LP, 2015 FC 1332 [Eclectic Edge]).
[36]
In this case, eight new affidavits have been
filed [collectively, the New Evidence]. Accordingly the initial task is to
review them to determine whether they would have materially affected the
Decision. Sobeys says that the New Evidence is not material and Schwan’s IP
argues the opposite position.
XI.
The New Evidence and its Materiality
[37]
At paragraph 43 of Eclectic Edge, Mr.
Justice Gascon provides authorities and describes the approach to be taken to
materiality. It can be summarized as follows:
•
To what extent does the New Evidence have substantial
probative value beyond the evidence that was before the Registrar?
•
Does the New Evidence add something of significance
or is it merely repetitive?
•
Quality not quantity should be determinative.
[38]
With these principles in mind, I turn to the New
Evidence from Schwan’s IP.
A.
The Perez Affidavit
[39]
Mr. Perez is the former Senior Director of
International Sales for SCB and is currently retained as its consultant.
[40]
The Perez affidavit provides information about
the US market and register. Since 2001, the US version of the Schwan’s Mark [Schwan’s
US Mark] which includes the pie server, was used on products sold to Safeway in
the US [US Safeway].
[41]
The US version of the Sobeys’ Mark [Sobeys’ US
Mark] was used by US Safeway until it expired in 1996.
[42]
Further, for two or three years in the US, a
trademark owned by Schwan’s IP which is similar to Schwan’s US Mark (but lacks
the pie server), [the Similar Schwan’s US Mark] had a registration and use which
overlapped with US Safeway’s registration and use of the Sobeys’ US Mark. There
were also other EDWARDS word marks which were registered when the Sobeys’ US
Mark was on the register but the extent of the overlap is not described.
[43]
In Mr. Perez’s experience, there was never any
confusion in the US between the source of the Schwan’s and US Safeway goods. As
well, US Safeway did not oppose Schwan’s IP’s registration of the Similar Schwan’s
US Mark.
[44]
Mr. Perez also deposed that between mid-2010 and
2014, SCB sold frozen baked goods and frozen dessert products in Canada to a
variety of food retailers, who only sold them in the frozen food freezer
sections of their stores. Canada Safeway was not listed as a purchaser. Sobeys
purchased the products but this occurred before it bought Canada Safeway and
acquired the Sobeys’ Mark.
[45]
On cross-examination, it was revealed that only
frozen pies were sold in Canada and that a decision was made to exit the
Canadian market in 2014.
[46]
Mr. Perez stated that sales in Canada had totalled
“hundreds of thousands of dollars”.
[47]
The Perez affidavit made it clear that all
Schwan’s products are frozen and counsel for Schwan’s IP asked that if I allow
the appeal, I notify the Registrar that the trade-mark Application should be
amended to show that all the goods are frozen.
[48]
Mr. Perez testified that there was no confusion
in Canada or any concerns expressed by consumers or more sophisticated
wholesale purchasers about the likelihood of confusion in Canada between the
Schwan’s and Sobeys’ Marks.
[49]
The Schwan Food Company and its subsidiaries
operate websites showing products bearing the Schwan’s US Mark. The sites are
available in Canada and Mr. Perez says they are accessed by Canadians and that
there have been no complaints or inquiries suggesting or arising from
confusion.
[50]
Mr. Perez also testified that thousands of
flyers promoting the frozen pies would have been distributed by retailers in
Canada but no examples were provided to show whether the Schwan’s Mark
appeared. Mr. Perez also said in cross-examination that “millions” had been spent on promotion.
[51]
Schwan’s IP says that this evidence about use
and co-existence in the US in the market and on the Register and about sales
and promotion in Canada together with the lack of any evidence of confusion in
either country would have materially affected the Registrar’s findings.
Schwan’s IP says she would have concluded that the degree of resemblance
between the marks, which was her main concern, was less important because the
resemblance was not in fact causing confusion.
[52]
Sobeys’ position is that the Perez affidavit is
not probative because it asserts vague generalities and is misleading. For
example, Mr. Perez deposed that “hundreds of thousands of
dollars of sales of these goods and dessert products bearing the EDWARDS DESIGN
mark have been made in Canada.” However, on cross-examination he
acknowledged that only frozen pies had been sold in Canada and he provided no
sales figures. He also deposed that thousands of flyers promoting baked goods
and dessert products bearing the EDWARDS DESIGN mark would have been
distributed in Canada and said on cross-examination that “millions” had been spent on promotion. However, no
promotional material was produced.
B.
Conclusions about the Perez Affidavit
[53]
The Perez affidavit’s description of sales in
the United States and the sale of frozen pies in Canada from 2010 to 2014 had
the potential to materially affect the finding that the Sobeys’ and Schwan’s
Marks were confusing. However, for the reasons which follow, I have concluded that
the evidence about the US and Canadian sales is, in fact, not material.
[54]
In paragraphs 8-10 of his affidavit, Mr. Perez
says that both the Schwan’s US Mark and the Sobeys’ US Mark were in use in the
US. This may be so but the use did not overlap. US Safeway’s Mark expired on
September 30, 1996 and there was no evidence that US Safeway continued to use
its unregistered mark in the US after 1996. The Schwan Food Company did not begin
to use its Schwan’s US Mark until 2001. In these circumstances, I have
concluded that the Registrar would not have relied on this evidence and the
lack of complaints to conclude that there was no confusion.
[55]
Similarly, I have determined that two to three
years co-existence of the Similar Schwan’s US Mark and other Schwan’s EDWARDS
word marks with the Sobeys’ US Mark on the Register and in use in the US is not
probative because the period of coexistence is relatively short. Further, the
state of a foreign Register is not relevant (see: Emilio Pucci International
BV v El Corte Ingles, SA, 2011 TMOB 32 at paragraphs 67-68; Novartis AG
v Satisloh AG, 2016 COMC 158 at paragraph 83).
[56]
Turning to the sales in Canada, an examination
of the exhibits attached to Mr. Perez’s affidavit shows that sales began in the
fall of 2010 and ended at the end of 2013. There are therefore approximately three
years of sales, not four as the Perez affidavit suggests. As well, these sales
all postdate the material date of August 19, 2009 which applies to sections
16(2)(a) and 16)3)(a) of the Act. This means that this evidence has no bearing
on the Registrar’s finding that under those sections the Marks are confusing.
[57]
For the following reasons, I have concluded that
the Registrar would have found the evidence about the use and promotion the
Schwan’s Mark in Canada weak and somewhat unreliable:
•
the period of use was approximately three
years. It was overstated by a full year in the Perez affidavit;
•
the products sold in Canada were misdescribed in
the Perez affidavit to include a variety of desserts and baked goods when, in
fact, only pies were sold in Canada;
•
there was no documentary evidence to support the
alleged “hundreds of thousands” in sales; and
•
there was no documentary evidence to support the
alleged “millions” in promotion.
[58]
Accordingly, in view of the tendency towards
hyperbole in the Perez affidavit, it is reasonable to conclude that sales
volumes were modest and promotion was limited. When this is contrasted with
the use of the Sobeys’ Mark in Canada since 1998 and the promotion it received,
I am satisfied that the evidence about the lack of retail consumer and
wholesale purchaser confusion in Canada over a relatively short period would
not have altered the Registrar’s conclusions.
[59]
I now turn to the allegation that US Safeway did
not oppose the registration of the Similar Schwan’s US Mark in 2001. There is
no information about why this decision was made by US Safeway but I am asked to
infer that it didn’t oppose the registration because it did not consider the
Similar Schwan’s US Mark to be confusing. I am not prepared to draw this
inference because US Safeway had let the Sobeys’ US Mark expire five years
earlier and there is no evidence that its use continued. In these
circumstances, it is possible that US Safeway simply had no interest in
opposing the registration of the Similar Schwan’s US Mark.
[60]
The Perez affidavit also introduced the fact
that the Schwan’s Mark was used for frozen goods that would all be sold in the
freezer section of a supermarket. However, I am not persuaded that this fact
would have materially affected the Registrar because in her Decision at
paragraph 47, she acknowledged, in reaching her conclusion about confusion,
that coffee and Schwan’s goods might not be sold in the same stores or in the
same sections of stores. Further, her finding that coffee and dessert are
related goods would not change simply because the desserts are frozen.
[61]
For the purposes of Section 2 of the Act, the
material date is June 27, 2011. This means that some frozen pies bearing the
Schwan’s Mark would have been sold in Canada for eight months before this
date. There is no information about the packaging used or the promotional
efforts undertaken by retailers in this period. In my view, this insubstantial
evidence would not have materially affected the Decision.
[62]
The Registrar noted at paragraph 31 of the
Decision that there was no evidence that websites which referenced the Schwan’s
Mark had been viewed by Canadians.
[63]
The Perez affidavit addresses this point. He
states that there are a number of websites which reference the Schwan’s Mark
and which are accessible to and viewed by Canadians. However, he provides only
one web address and he gives no indication of the number of Canadians who have
viewed the sites or an explanation about how he knows the nationality of those
who visit the sites. In my view, this evidence is too vague to be probative.
C.
The Affidavit of Hannah Biesterfeld
[64]
Ms. Biesterfeld was an articling student who was
asked on behalf of Schwan’s IP to conduct online searches for EDWARD, EDWARDS
and EDWARD’S products or companies which bear those trade names and which have
been active in Canada. Her findings about the state of the market include the
following:
•
Edward & Sons - food products are available
through amazon.ca and have been sold at the Big Carrot store in Toronto for at
least three years;
•
Edwards Flower Shop – Mattawa, Ontario – since
1962 has sold gift baskets which can include coffee;
•
Edwards Farm Store – Innisfil, Ontario – sells
local products – honey and milk;
•
Edwards Family Organics – sells meat in the
Kitchener/Waterloo area;
•
Laurigan & Edwards – wine merchants
•
Luis Felipe Edwards – wine
•
Merry Edwards – wine
•
Edwards 1920 – a Toronto restaurant
•
Edward Pub & Restaurant – in Quebec City
•
T. Edwards Confectionary – candy and nuts in
Regina
•
Charles Edward Stuart’s Liqueur - Drambuie
[65]
There is no doubt that the Registrar understood
the import of the “state of the market”
evidence. She said at paragraphs 43 to 45:
43. I am prepared to accord some
weight to the Lauriola and D’Amours evidence as it seems clear that third
parties are active under trade-names or use trade-marks that incorporate the
word EDWARD in the general field that the parties operate within. Similar, to
Mr. Romeo’s evidence, however, many of the trade-marks located include EDWARD
or EDWARDS as part of expressions such as Prince Edward Island or King Edward.
Further, there is no evidence that any of these third party trade-names or
trade-marks has acquired a significant reputation in the marketplace.
44. As I understand it, the Applicant
wishes me to conclude from the state of the register and marketplace evidence
that EDWARD and EDWARDS trade-marks are so common in Canada, that the
Opponent’s trade-mark should only be granted a very narrow scope of
protection. I agree that the Opponent ought not to be able to prevent use of
any trade-mark including EDWARDS. However, the state of the register and
marketplace evidence does not allow me to conclude that consumers are used to
distinguishing such highly similar trade-marks (consisting of EDWARDS on its
own whether in a stylized format or not) in the food and beverage field since
there is not sufficient examples of use of trade-marks consisting of EDWARD or
EDWARDS or a variant without additional elements that evoke ideas different
than that of the Mark or the trade-mark EDWARDS.
45. The Applicant has also filed
evidence that there are various liqueur and wine brands including the EDWARD or
EDWARDS components including PRINCE CHARLES EDWARD brand drambuie (Romeo
affidavit, SR-1) and submits that Ms. Léger’s evidence shows that coffee and liqueurs
are sometimes served as part of the same beverage (see, for example, Léger
affidavit, Exhibit I2). Although I have found Ms. Léger’s evidence inadmissible
for the truth of its contents, I will comment that even if I accepted that the
ordinary consumer is aware of these brands and recipes including coffee and
liqueurs, I do not find that this results in an inference that consumers will
be able to distinguish between the Mark and the Opponent’s trade-mark EDWARDS
in association with the respective goods of the parties.
[66]
In my view, the Biesterfeld affidavit does not
substantiate that any of the third-party names or marks therein have acquired a
significant reputation. For this reason, it would not have materially affected
the Decision.
[67]
The last two affidavits filed on behalf of
Schwan’s IP deal with the state of the Register. Both Mr. Romeo and Ms.
D’Amours are employed by Thomson CompuMark as Trade-marks Research Analysts.
Their search results are combined as exhibits to their affidavits. Similar
evidence was before the Registrar. This evidence, in my view, would not have
materially affected the Registrar’s Decision because it demonstrates what the
Registrar had already seen, as described above in paragraph 26, which is that EDWARDS
is not used alone in relation to food and beverages except by Sobeys and
Schwan’s.
[68]
The affidavit of Bruce Bowman provides the first
evidence from Sobeys. The Registrar only had evidence from David Pullar of
Safeway. Mr. Bowman is Vice-President, Legal. He deposed that EDWARDS is not a
Sobeys’ house brand and is not used on any other products sold at Sobeys’
stores. He also provided updated information on types of coffee blends, sales
figures, promotional activity and labelling. Sales have reduced in the last 10
years but I find nothing that would have materially affected the Registrar’s
conclusion that the Sobeys’ Mark has a substantial reputation.
[69]
Schwan’s IP says that the affidavits of Jane
Buckingham and Barbara Gallagher should be considered inadmissible or given no
weight because the evidence was not assembled with reference to a material
date. As well, in the case of Ms. Gallagher, her work and work product was
significantly controlled by counsel and was not the result of independent
research. Jane Buckingham’s work was said to not be related to the issues.
[70]
In my view, the two searches by Jane Buckingham,
who is a trade-marks searcher at the Gowlings law firm, are relevant. They
demonstrate that coffee and desserts are related goods. However, in my view,
this work would not have materially affected the Registrar’s finding that
coffee and desserts are related. It would simply have reinforced the finding.
[71]
Barbara Gallagher is a law clerk at Gowlings who
was provided with direction by counsel about which websites to visit. Her work
also related to the relation between coffee and dessert and, in my view, would
not have materially affected the Registrar’s finding on this topic.
[72]
Jessica Smith was a student-at-law employed by
Gowlings. She was assigned the enviable task of purchasing coffee and fresh
baked goods at various supermarkets to show that they are related products.
However, her evidence is not particularly relevant now that only frozen baked
goods are at issue.
[73]
In my view, for the above reasons, none of the
New Evidence would have materially affected the Decision.
XII.
Is the Decision reasonable?
[74]
I am mindful of the Supreme Court of Canada’s
definition of reasonableness in Dunsmuir v New Brunswick, 2008 SCC 9,
[2008] 1 S.C.R. 190, where the Court said at paragraph 47:
[47] Reasonableness is a deferential
standard animated by the principle that underlies the development of the two
previous standards of reasonableness: certain questions that come before
administrative tribunals do not lend themselves to one specific, particular
result. Instead, they may give rise to a number of possible, reasonable
conclusions. Tribunals have a margin of appreciation within the range of
acceptable and rational solutions. A court conducting a review for
reasonableness inquires into the qualities that make a decision reasonable,
referring both to the process of articulating the reasons and to outcomes. In
judicial review, reasonableness is concerned mostly with the existence of
justification, transparency and intelligibility within the decision-making process.
But it is also concerned with whether the decision falls within a range of
possible, acceptable outcomes which are defensible in respect of the facts and
law.
[75]
The Registrar used the correct material dates,
understood the nature of the goods and their use, made no factual errors and
correctly stated the applicable legal tests. In particular, I have concluded
that her focus on the resemblance between the marks and her conclusions about
distinctiveness were reasonable. She reasonably relied on the long history of
use of the Sobey’s Marks. I have also concluded that it was reasonable for the
Registrar to have relied on Cheung to conclude that the goods were
related.
[76]
The Registrar found that the high degree of
resemblance between the marks in “appearance, sound and
idea” was important. She made reference to caselaw that said that this
factor is often the most crucial or dominant one (see paragraph 32, above).
Caselaw also makes clear that the factors in the confusion analysis need not be
given equal weight (see: Mattel USA Inc v 3894207 Canada Inc, 2006 SCC
22, Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27). Therefore,
it was open to the Registrar to afford relatively more weight to the degree of
resemblance. In my view the Decision was reasonable.
[77]
For all these reasons the appeal will be
dismissed.
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