Docket: T-1911-16
Citation: 2018 FC 258
[ENGLISH TRANSLATION]
Ottawa, Ontario, March 6, 2018
PRESENT: The Honourable Mr. Justice LeBlanc
| BETWEEN:
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| HOLDING BENJAMIN AND EDMOND DE ROTHSCHILD, PREGNY ANONYME
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| Applicant
|
| and
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| ATTORNEY GENERAL OF CANADA
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| Respondent
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JUDGMENT AND REASONS
I. Introduction
[1] The applicant, a Swiss limited liability company, seeks to register the trade-mark “EDMOND DE ROTHSCHILD” on the basis of a proposed use in Canada in relation to the financial services [Proposed Trade-mark]. The Registrar of Trade-marks [Registrar] is against this, believing that this trade-mark is not registerable under paragraph 12(1)(d) of the Trade-marks Act, RSC 1985, c. T-13 [the Act], since it is likely to create confusion with the registered trade-mark “ROTHSCHILD” [Registered Trade-mark].
[2] As permitted by section 56 of the Act, the applicant is appealing the Registrar’s decision. It invites the Court to review the file de novo with the evidence filed through its appeal, i.e. an affidavit signed by two of its representatives to which is attached an agreement made in the form of a “Consent Letter” between it and the Registered Trade-mark holder, Rothschild Continuation Holdings AG, regarding the use of the Proposed Trade-mark in Canada.
[3] For the reasons that follow, the appeal is dismissed.
II. Background
[4] The applicant filed its application to register the Proposed Trade-mark on June 15, 2010. During the first review of said application in October 2010, the Registrar spoke with the applicant concerning his objection to the registration of the Proposed Trade-mark. He cited the likelihood of confusion with the Registered Trade-mark, but also with the registered trade-mark “NM ROTHSCHILD & SONS LIMITED”. This part of the objection was nevertheless eventually withdrawn, the Registrar ultimately being satisfied that the visual differences between the Proposed Trade-mark and that trade-mark, specifically due to the drawing that formed part of said trade-mark that considerably reduced the likelihood of confusion.
[5] In its response to the first review report, the applicant stated that the Registered Trade-mark benefitted from a limited protection mainly for the reason that no fewer than 23 trade-marks appearing in the Canadian Trade-marks Register [Register] contained the word “ROTHSCHILD”, that the phonetic and semantic differences between the Registered Trade-mark (ROTHSCHILD) and the Proposed Trade-mark (EDMOND DE ROTHSCHILD) were enough to distinguish them, and that the Registered trade-mark holder could not claim a monopoly on the word “ROTHSCHILD”.
[6] In a second review report dated September 13, 2011, the Registrar maintained his objection to the registration of the Proposed Trade-mark, believing that a consumer possessing an imperfect recollection of the Registered Trade-mark would be likely to find that the services associated with the Proposed Trade-mark are offered by the same individual as those associated with the Registered Trade-mark, given the degree of resemblance between both trade-marks and the similarity of the associated services.
[7] On September 12, 2012, the applicant requested that the Registrar reconsider his decision, which he nonetheless refused to do on the grounds that the applicant did not bring any fresh argument to support its position.
[8] On September 9, 2016, the Registrar confirmed her dismissal of the application to register the Proposed Trade-mark, saying that it is not registrable under paragraph 12(1)(d) of the Act. The Registrar’s decision can be summarized as followed:
a)To determine if there is a likelihood of confusion between two trade-marks, it is important to take into consideration all the surrounding circumstances, including those specified in subsection 6(5) of the Act, and [translation] “to put oneself in the place of someone who would know the registered trade-mark and who would then see the applicant’s trade-mark, but through a phenomenon of imperfect recollection, would end up mistaking one trade-mark for the other”
or believe that “the respective trade-mark services come from the same source”
;
b)It is also important to consider the trade-marks in question [translation] “in their entirety and not by separating each element to focus on those that could be different”
;
c)The Proposed Trade-mark and the Registered Trade-mark both consist only of words and have no visual elements serving to distinguish them; despite the differences between the words that compose them, the applicant appropriated the Registered Trade-mark in its entirety; following some of its own decisions, this type of appropriation often has the effect of creating confusion, despite adding words or additional graphic elements;
d)The presence of more than 20 registered trade-marks containing the word “ROTHSCHILD” in the Register is not conclusive, since these trade-marks contain additional elements, such as first names and drawings, and co-exist in fields of activity different from that in which the applicant works, i.e. real estate, banking and finances. Furthermore, there is no evidence showing the co-existence of trademarks in Canada that contain the word “ROTHSCHILD” in the real estate, banking and financial sector.
e)Even if we accept that the Registered Trade-mark holder cannot claim a monopoly on the expression “ROTHSCHILD”, the Registrar nonetheless has the right to protect the rights of the Registered Trade-mark by applying the appropriate test set out in paragraph 12(1)(d) of the Act; as the Proposed Trade-mark only has three elements, in which the last is entirely identical to the Registered Trade-mark, an individual who has an imperfect recollection of the Registered Trade-mark would then be likely to find that the goods and services associated with the Proposed Trade-mark are offered by the same person [translation] “given that the services and the nature of the business are similar and that the degree of resemblance between the trade-marks is highly similar.”
[9] As previously mentioned, the applicant claims that with the fresh evidence at hand, the Registrar would not have arrived at the same finding because this evidence shows that (i) the Registered Trade-mark holder consents to said Trade-mark co-existing with the Proposed Trade-mark on the Canadian market; (ii) said Trade-marks already co-exist in other markets, including in Europe, in fields related to the financial services without there being cases of confusion; and (iii) the term “ROTHSCHILD” is used by various independent corporations in Canada in the wine sector, and the trade-marks containing this term co-exist.
[10] Consequently, it believes that the Court must itself proceed to the likelihood of confusion assessment stated in subsection 6(5) of the Act and draw its own conclusions from this exercise without any deference for those of the Registrar.
[11] For her part, the Attorney General says she has no specific interest in the issue. However, at the end of an assessment of the relevance of the fresh evidence, the standard of review and the legal test suitable for the likelihood of confusion analysis, she argues that the Court is open to find that the Registrar’s decision falls within the acceptable and rational solutions in respect of the facts of the case and of law.
III. Issues
[12] In my view, this appeal raises the following two questions:
a)In light of the evidence provided by the applicant to support this appeal, what is the standard of review that applies to the Registrar’s decision?
b)In light of the applicable standard of review, does the Registrar’s decision justify the Court’s intervention?
IV. Analysis
A. Standard of review
[13] As a general rule, when the Registrar deals with questions of fact and law that are within his expertise, as in this case, the applicable standard of review for his decisions is reasonableness. (Cyprus (Commerce and Industry) v. Producteurs laitiers du Canada, 2010 FC 719 at para 28, 393 FTR 1 [Producteurs laitiers du Canada]; Spirits International B.V. v. BCF S.E.N.C.R.L., 2012 FCA 131 at para 10; Molson Breweries v. John Labatt Ltd., [2000] 3 FC 145 (FCA) at para 51, 180 FTR 99 [John Labatt Ltd.]; Restaurants La Pizzaiolle Inc. v. Pizzailol Restaurants Inc., 2015 FC 240 at para 41).
[14] Following this standard of review, the Court will only intervene if the Registrar’s decision is “clearly wrong”
(Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22 at para 40, [2006] 1 S.C.R. 772 [Mattel]; Playboy Enterprises Inc. v. Germain (1979), 43 CPR (2d) 271 at p 274 (FCA); Producteurs laitiers du Canada at para 28). Seen from the perspective of Dunsmuir v. New-Brunswick, 2008 SCC 9, [2008] 1 S.C.R. 190 [Dunsmuir], this means that the Court must show deference to the findings made by the Registrar and that it will consequently only intervene if they are not justified, transparent or intelligible, or even do not fall within the range of possible, acceptable outcomes which are defensible in respect of the facts and law (Dunsmuir at para 47; see also: Hawke & Company Outfitters LLC v. Retail Royalty Company, 2012 FC 1539 at para 47 [Hawke & Company Outfitters]).
[15] However, as subsection 56(5) of the Act provides, when additional evidence is filed as part of an appeal from the Registrar’s decision, the Court is therefore empowered to exercise any discretion vested in the Registrar. In such a case, the Court may come to its own conclusions and will apply the standard of correctness to the Registrar’s decision (Producteurs laitiers du Canada at para 28).
[16] Nonetheless, before exercising the powers given to it in subsection 56(5) of the Act, the Court must be satisfied that the fresh evidence submitted by the parties is substantial and adds to what was submitted before the Registrar. In other words, the Court must be convinced that this fresh evidence could have resulted in changing the Registrar’s findings, if he had the opportunity to consider it. In this sense, fresh evidence, which merely repeats what was already adduced to the Registrar and would not enhance the probative value of the evidence, are not enough to overcome the deferential standard of reasonableness of the Registrar’s findings (Producteurs laitiers du Canada at para 28; John Labatt Ltd. at para 51). Therefore, when fresh elements of evidence are adduced, the test “is one of quality, not quantity”
(Canadian Council of Professional Engineers v. Apa – The Engineered Wood Assn., [2000] FCH No. 1027 (QL), 7 CPR (4th) 239 (FC) at para 36; Wrangler Apparel Corp. v. Timberland Co., 2005 FC 722; Hawke & Company Outfitters at para 31).
[17] What about this case?
[18] The applicant argues that the fresh evidence responds broadly to the concerns raised by the Registrar. On the one hand, its claims that the Registered Trade-mark holder’s consent to use the Proposed Trade-mark in Canada responds to the Registrar’s concerns that she must protect the rights of the Registered Trade-mark in Canada. On the other hand, the evidence of the two trade-marks’ co-existence in the field of financial services in other markets, including Europe, without there being any cases of confusion, responds to the Registrar’s concerns that the trade-marks that co-exist in the Register and that contain the term “ROTHSCHILD”, do not solely consist of the term “ROTHSCHILD” and co-exist in fields of activity different from that of the applicant.
[19] I am not persuaded by this argument.
[20] First, the Registered trade-mark holder’s consent to use the Proposed trade-mark in Canada only has a limited value, at best. This consent is founded on the conviction of the Consent Letter signatories that there is [translation] “an absence of a likelihood of confusion between the trade-marks in the minds of the public, given that “Edmond De” is the dominant element of the trade-mark “EDMOND DE ROTHSCHILD” held by Edmond de Rothschild”
.
[21] This general statement, with a mixed connotation of facts and law, would not be able to bind the Registrar whose mission, as rightly emphasized by the Attorney General, is not only to protect trade-mark holders’ commercial advantage, but also just as importantly, to protect the public consumer.
[22] In fact, Canada’s trade-mark regime has two major goals that are useful both to consumers and to businesses. On one hand, it is useful to trade-mark holders because it helps maintain a balance between free competition and fair competition by focusing on the principles of fairness in commercial activities, thereby allowing traders to distinguish their merchandise and services from those of their competitors. On the other hand, it is also useful to consumers because it allows them to provide a reliable indication of the expected source of wares or services used. Therefore, this regime offers a guarantee of origin—an assurance of quality—that the consumer comes to associate with a specific trade-mark (Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27 at para 1, [2011] 2 S.C.R. 387 [Masterpiece]; Mattel at para 21). As further emphasized by the Supreme Court of Canada in Mattel, “it is, in that sense, consumer protection legislation”
(Mattel at para 2).
[23] In short, the view of the applicant and the Registered Trade-mark holder regarding the likelihood of confusion of the two trade-marks in question on the Canadian market, which is furthermore expressed in the most general of terms, could not reasonably be considered as reflecting the average consumer’s point of view. Yet, it is in from the perspective of the average customer that the likelihood of confusion must be assessed here in Canada, and it is precisely up to the Registrar, as the officer in charge of reviewing applications to register trade-marks, to make this judgment first (Masterpiece at para 40; Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23 [Veuve Clicquot], at para 20, [2006] 1 S.C.R. 824; Miss Universe, Inc. v. Bohna, [1995] 1 FC 614 (QL) [Miss Universe] at para 9).
[24] The two decisions cited by the applicant to support its position concerning the impact that the Consent Letter could have on the standard of review to apply in this case are of no help to it in the circumstances of this matter. On the one hand, the order in Dell Computer Corp. v. Latitude Communications Inc., 2003 FCT 629 [Dell Computer] is very succinct and was issued in the context of an unopposed appeal from the Registrar’s decision regarding a third party’s objection to the registration of the trade-mark in question. I agree with the Attorney General to say that, in terms of the concerns I just stated, we cannot infer from that order that the registered trade-mark holder’s consent to the registration of a competing proposed trade-mark is vital regarding the decision that the Registrar must make concerning the review of the application for registration.
[25] Regarding the judgment in Micro Focus (IP) Limited v. Information Builders Inc., 2014 FC 632 [Micro Focus], I note that contrary to the case at hand, the fresh evidence shows that the parties operated their businesses in different areas, that the trade-mark for which the registration was in question had acquired a distinctiveness and a reputation in Canada, as it was frequently and continuously used in Canada since the late 1980s, and that there was no real confusion between the trade-marks in question (“MICRO FOCUS” and “FOCUS”) during the cohabitation period.
[26] The co-existence agreement signed by the Micro Focus parties—obviously before the issues regarding the application for registration—therefore did not reflect the state of affairs. This is not the case here, where the Consent Letter was strictly signed for the purposes of the appeal and where there is no evidence that the Proposed Trade-mark was used in Canada before the application to register said trade-mark. Furthermore, as was the case in Dell Computer, the appeal from the Registrar’s decision was not contested, neither in writing or orally, by the FOCUS trade-mark holder.
[27] I therefore find that if it had been before the Registrar, the co-existence agreement for both trade-marks in question in this case, such as it appears in the Consent Letter, would not have a determining effect on her decision.
[28] I arrive at the same finding regarding the evidence, as it still appears in the Consent Letter, that the trade-marks co-exist in other markets, such as Europe, without there being any confusion. In my view, this evidence suffers from the same deficiencies as in Interstate Brands Company – Licensing Co. v. Becker Milk Co., 81 CPR (3d) 270 [Interstate FC] (upheld on appeal: Interstate Brands Company – Licensing Co. v. Becker Milk Co., 5 CPR (4th) 573 [Interstate FCA]), in that it is incomplete and therefore too vague and unspecific.
[29] As the Federal Court of Appeal has recalled in Interstate FCA, the lack of confusion between the trade-marks given outside Canada means that there was no reasonable likelihood of confusion between the same trade-marks in Canada (Interstate FCA at para 10; also see Fournier Pharma Inc. v. Warner Lambert Canada Inc., 82 CPR (3d) 493 at para 9; 153 FTR 277 [Fournier]). As emphasized by the Attorney General, the market condition, the trade channels used by the trade-mark holders in question, the type of services offered, the legal test applicable to establish the likelihood of confusion can all vary from country to country. The Consent Letter is silent on this point.
[30] Evidence on how trade-marks are used in other jurisdictions could be relevant for determining whether there is a likelihood of confusion (Fournier at para 10). However, this is not the type of evidence submitted by the applicant, who might I recall was content with a general statement regarding the lack of confusion [translation] “in other markets, such as Europe”
in the field of financial services. The type of evidence filed by the applicant will normally be used to confirm a likelihood of confusion analysis that would tend to show that there is a lack of likelihood of confusion (Weetabix of Canada Ltd. v. Kellogg Canada Inc., 2002 FCT 724 at paras 52–53). Conversely, if this analysis tends to show a likelihood of confusion here in Canada, proving that there is a lack of confusion overseas is not enough to reverse this finding.
[31] It is also possible that the trade-mark holders were not informed of the existence of cases of confusion. In Interstate FCA, the Court deemed that evidence of a lack of confusion filed in that case at the appeal stage was not enough to allow for inferences to be drawn regarding the likelihood of confusion here in Canada, since this evidence did not show the presence of any mechanism, in the affiant’s offices, that could facilitate the notification of cases of confusion (Interstate FCA at para 10; Interstate FC at para 34).
[32] Lastly, the evidence relating to the presence of the Register of Trade-marks used in the wine sector and including the word “ROTHSCHILD” is not fresh evidence, since the applicant submitted excerpts from the Register supporting the trade-marks including the term “ROTHSCHILD” to the Registrar in April 2011 in response to his objection to registering the Proposed Trade-mark’s. In the vast majority of cases, these trade-marks are related to the wine sector. As seen above, this evidence and the associated arguments were considered by the Registrar.
[33] In short, the applicant has not satisfied me that the evidence it filed to support this appeal justify applying the standard for correctness to the Registrar’s decision. Accordingly, we must ask whether the Registrar’s decision satisfies the standards for reasonableness.
B. Is the Registrar’s decision reasonable?
[34] Following the standard of reasonableness, the Court must show a certain deference to the Registrar’s findings of fact and mixed findings of fact and law, since she has a certain expertise regarding the issues under her jurisdiction (Mattel at paras 36–37; Producteurs laitiers du Canada at para 28).
[35] I repeat that following the standard of review, the Court will only intervene if the Registrar’s decision is “clearly wrong”
or even, as seen from the Dunsmuir perspective, if they are not justifiable, transparent or intelligible, or do not fall within the range of possible, acceptable outcomes which are defensible in respect of the facts and law.
[36] Paragraph 12(1)(d) of the Act prohibits the registration of a trade-mark if it is “confusing with a registered trade-mark”
. When dealing with an application to register a trade-mark, the Registrar must reject it if he is convinced that the trade-mark is not registrable under paragraph 37(1)(b) of the Act.
[37] Under subsection 6(2) of the Act, 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 goods or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.
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[…] lorsque l’emploi des deux marques de commerce dans la même région serait susceptible de faire conclure que les produits liés à ces marques de commerce sont fabriqués, vendus, donnés à bail ou loués, ou que les services liés à ces marques sont loués ou exécutés, par la même personne, que ces produits ou ces services soient ou non de la même catégorie générale.
|
[38] As I already had the opportunity to mention this as well, the concept of likelihood of confusion is based on average consumers and their first impression of the trade-marks in question. Thus, to determine whether there is a likelihood of confusion in this case, the Registrar had to question whether the first impression in the mind of an average, somewhat hurried consumer who sees the Proposed Trade-mark is likely to give the impression, at a time when the consumer has no more than an imperfect recollection of the trade-mark, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the trade-marks, that the merchandise or services associated with those trade-marks are manufactured, sold or provided, as applicable, by the same person (Veuve Clicquot at para 20; Masterpiece at para 40; Miss Universe at para 9).
[39] I recall once again that this first impression test requires an overall review of the trade-marks in question and not a meticulous review or a side-by-side comparison of said trade-marks (Veuve Clicquot at para 20; Masterpiece at para 40; Miss Universe at para 10).
[40] Subsection 6(5) of the Act states that in determining whether a trade-name is confusing with another, the Registrar “shall have regard to all the surrounding circumstances”
, including:
| (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
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a) le caractère distinctif inhérent des ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus;
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| (b) the length of time the trade-marks or trade-names have been in use;
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b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage;
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| (c) the nature of the goods, services or business;
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c) le genre de produits, services ou entreprises;
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| (d) the nature of the trade; and
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d) la nature du commerce;
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| (e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
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e) le degré de ressemblance entre les marques de commerce ou les noms commerciaux dans la présentation ou le son, ou dans les idées qu’ils suggèrent.
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[41] The applicant does not claim—and in my view, it is right to not do so—that the Registrar poorly outlined the analytical framework for the concept of likelihood of confusion. If we disregard the circumstances other than those stated in subsection 6(5) of the Act, which are related to the fresh evidence that I have already set aside, since it would not have had a determinative effect on the Registrar’s decision and, as a result, has not been taken into account in the review of the reasonableness of said decision, the applicant essentially blames the Registrar for having misapplied two factors: that of the inherent distinctiveness of the trade-marks in question and that of the degree of resemblance. On this, it essentially recalls what it claimed before the Registrar. I also note that it does not discuss the other factors set out in said subsection, i.e. the extent to which the trade-marks in question have became known; the length of time they have been in use; the nature of the goods, services or business associated with them and the nature of the trade.
[42] Regarding the first factor, it claims that like the term “ROTHSCHILD”, which is the sole similarity between the trade-marks in question, only possess a poor inherent distinctiveness and consequently, only receives a poor degree of protection, the presence of minor distinctions between said trade-marks, such as the first name, in this case, “EDMOND DE”, is enough to avoid a likelihood of confusion.
[43] As for the factor associated with the degree of resemblance, the applicant claims that despite the presence of the common term “ROTHSCHILD”, the trade-marks in question present noticeable visual, phonetic and semantic differences, specifically when we take into account the first segment of the Proposed Trade-mark (EDMOND DE), which is not found in the Registered Trade-mark. Once again, due to the poor degree of protection of the term “ROTHSCHILD”, it claims that the presence of these differences reinforces the distinctions between the trade-marks and as a result, reduces the likelihood of confusion.
[44] The Registrar considered these arguments but did not accept them. When considering her decision as a whole, what seems to be paramount in the eyes of the Registrar is the fact that the trade-marks in questions both solely consist of words without any visual element to help distinguish them while they are destined to co-exist in the same market, and that they will be the only ones to do so with the term “ROTHSCHILD” in common, which further constitutes the entirety of the Registered Trade-mark.
[45] The Registrar also considered the applicant’s argument based on the presence of more than 20 registered trade-marks containing the word “ROTHSCHILD” in the Register. As we have seen, she did not find it conclusive because these trade-marks co-exist, in most cases, in fields of activity different from those in which the applicant and the Registered Trade-mark holder operate.
[46] The Registrar therefore said that she was satisfied that an average consumer who has an imperfect recollection of the Registered Trade-mark would be likely to find that the goods and services associated with the Proposed trade-mark are offered by the same person [translation] “given that the services and the nature of the business are similar and that the degree of resemblance between the trade-marks is highly similar.”
[47] My role here is not to determine whether I made a finding other than the one made by the Registrar. It is rather to decide whether the finding that the Registrar made falls within the range of possible, acceptable outcomes in respect of the facts before her and the law. The analysis of the likelihood of confusion that the Registrar conducted appears complete to me and the resulting findings are reasonable. I therefore do not see the need to intervene.
[48] I would add that the presence of a common element between both trade-marks can effectively have a significant impact on the issue of likelihood of confusion, specifically when these trade-marks are used in the same market, as is the case here (Eclectic Edge Inc. v. Victoria’s Secret Stores Brand Management, Inc., 2015 FC 453 at para 81; Kellogg Salada Canada Inc. v. Canada (Registrar of Trade Marks), [1992] FCJ No 562 at p 358). This impact will be mitigated when the common element of the trade-marks in question is suggestive of the goods and services in question, which is not the case here, as the term “ROTHSCHILD” does not suggest in any way the field of financial services. In such a context, which is not ours, differences, even minor ones, between competing trade-marks will serve to distinguish them (Assurant, Inc. v. Assurancia, Inc., 2018 FC 121 at para 47; Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 CPR (3d) 349 (FCA) at para 12; Ultravite Laboratories Ltd. v. Whitehall Laboratories Ltd., [1965] S.C.R. 734 at p 737, citing Sealy Sleep Products Ltd. v. Simpson’s-Sears Ltd (1960), 33 CPR 129 at p 136).
[49] My conclusion would be similar if I had proceeded de novo with the analysis of the likelihood of confusion between the trade-marks in question in light of the evidence filed in support of this appeal, evidence whose quality and probative value appeared very limited to me, as I have already emphasized. I do not believe that the mere presence of a first name before the common term for both trade-marks, “ROTHSCHILD”, which refers to a last name, while said trade-marks would compete in the same market and that they would be the only ones to share this common term, would be enough to bring the average consumer who has an imperfect recollection of the Registered Trade-mark to think that the goods and services associated with both trade-marks come from two distinct sources.
[50] The applicant’s appeal is therefore dismissed with costs.
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