Date: 20060105
Docket: T-422-05
Citation: 2006 FC 2
Ottawa, Ontario, January 5, 2006
PRESENT: THE HONOURABLE MR. JUSTICE SIMON NOËL
BETWEEN:
MAISON
COUSIN (1980) INC.
Applicant
and
COUSINS
SUBMARINES INC.
REGISTRAR OF
TRADE-MARKS
Respondents
REASONS
FOR ORDER AND ORDER
[1]
The
applicant Maison Cousin (1980) Inc. filed in this Court an appeal under
section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 (TMA) of a
decision by Jean Carrière, Member of the Trade-marks Opposition Board
(Registrar). In his decision dated January 4, 2005, the Registrar allowed
in part the opposition dated October 20, 1998 (statement of opposition) of
the applicant Maison Cousin (1980) Inc. to the application of the respondent
Cousins Submarines (respondent) dated May 29, 1996 (no. 813812). The
respondent's application related to the trade-mark COUSINS in association with
(submarine) sandwiches, various beverages (milk, coffee and ice tea) and
restaurant services. The Registrar found in his decision that only the
(submarine) sandwiches could not be registered under the trade-mark COUSINS.
[2]
The
applicant holds the following marks, which form the basis of the opposition and
the application for judicial review (for coherence and clarity, I will
designate each mark along with its registration number in parentheses and its
registration date in brackets): MAISON COUSIN & DESIGN (TMA 130,985)
[May 10, 1963], MAISON COUSIN 1921 & DESIGN (TMA 523,147)
[February 15, 2000], MAISON COUSIN & CIE & DESIGN (TMA 576,779)
[March 3, 2003], MAISON COUSIN & CO & DESIGN (TMA 576,780)
[March 3, 2003] and MAISON COUSIN (TMA 580,508) [May 2, 2003].
[3]
The
applicant seeks the following from the Court:
1. allow the application for
judicial review;
2. amend the statement of
opposition to include the marks MAISON COUSIN (TMA 580,508) [May 2, 2003],
MAISON COUSIN & CIE & DESIGN (TMA 576,779) [March 3, 2003]
and MAISON COUSIN & CO & DESIGN (TMA 576,780) [March 3, 2003],
which were registered after this statement was filed;
3. set aside the Registrar's
decision in light of his findings dismissing in part the statement of
opposition;
4. allow the applicant's
opposition;
5. order that the applicant's
application no. 813812 be refused and that the necessary entries be made in the
Trade-marks Register.
[4]
The
respondent failed to appear within the 10-day period provided for in the Federal
Court Rules, 1998, SOR/98-106. Counsel for the Registrar filed in
the court record a letter informing the applicant that she would not file a
record, nor would she attend or participate in the hearing. The hearing was
held in the absence of the respondents.
ISSUES
[5]
The issues
are the following:
1. What is the appropriate
standard of review for this appeal under section 56 of the TMA, in
light of the new evidence?
2. Did the Registrar err in fact
and in law in the interpretation and application of paragraph 12(1)(d)
TMA?
3. Did the Registrar err in fact
and in law in the interpretation and application of subsection 16(3) TMA?
4. Did the Registrar err in fact
and in law in interpreting the definition of the distinctive nature of a
trade-mark within the meaning of section 2 TMA?
FINDINGS
[6]
For the
reasons that follow, questions 2, 3 and 4 are answered in the negative.
FACTUAL BACKGROUND
[7]
The
applicant owns the following trade-marks (I have indicated the wares that are sold
under each of the marks, as they appear on the registration certificates):
- For
the MAISON COUSIN & DESIGN mark (TMA 130,985) [May 10, 1963]: "French
bread, Canadian bread, crusty bread, whole wheat bread, diet bread, rolls,
raisin bread, and all types of bread, of all descriptions and all forms in all
cases";
- For
the MAISON COUSIN 1921 & DESIGN mark (TMA 523,147)
[February 15, 2000]: "French bread, Canadian bread, crusty
bread, whole wheat bread, diet bread, rolls, raisin bread, and all types of bread,
of all descriptions and all forms in all cases; French pastries and cakes of
all types, for all occasions, sandwich rolls, croissants, salad loaves, dry
petit fours, diet loaves, pies of all types, buns of all types, puff pastries,
wedding cakes; frozen precooked bread, cheese bread, cookies of all
sorts";
- For
the MAISON COUSIN & CIE & DESIGN mark (TMA 576,779)
[March 3, 2003]: "(1) Bread, frozen precooked bread, frozen raw
bread dough, viennoiseries, croissants, dry petit fours,
pies, buns, puff pastries, cookies, galettes, muffins. (2) French pastries, wedding
cakes and cakes of all types";
- For
the MAISON COUSIN & CO & DESIGN mark (TMA 576,780)
[March 3, 2003]: "(1) French pastries, wedding cakes and cakes
of all types (2) Bread, frozen precooked bread, viennoiseries, croissants, dry petit fours,
pies, buns, puff pastries, cookies, galettes, muffins";
- For
the MAISON COUSIN mark (TMA 580,508) [May 2, 2003]: "Bread of
all types, French pastries and cakes of all types, sandwich rolls, croissants,
dry petit fours, pies of all types, buns of all types, puff pastries, tiered
cakes, cookies of all types; cooked meats and meat pâtés of all types, garlic
sausage, galantines, potted meats, salamis, meat in slices, tiered cakes for
buffets, salads, sandwiches, and all deli items including frozen dishes; candy
and chocolate of all types".
In brief, the applicant essentially sells, under the mark
that it has owned since the 1960s, various varieties of bread, pastries, deli
items, desserts and sandwiches. Under the marks registered more recently, the
applicant sells the same types of products.
[8]
On May 29,
1996, the respondent filed an application to register the trade-mark COUSINS
(Application no. 813,812). As filed, the application describes the associated
wares as follows:
Sandwiches,
namely, submarine sandwiches; beverages, namely, carbonated beverages, coffee,
milk and ice tea.
The registration of the
COUSINS trade-mark describes the associated wares as follows:
Sandwiches,
namely,
submarine sandwiches; beverages.
[9]
On October
20, 1998, the applicant filed with the Registrar a statement of opposition
against the registration of the COUSINS trade-mark. The statement was based on
the following grounds:
- The Mark is
not registrable having regard to Subsection 2(1)(d) [TMA] because it is
confusing with the Opponent’s (the applicant in this case) registered
trade-mark [MAISON COUSIN & DESIGN (TMA 130,985) [May 10, 1963]] [...] in
association with [the associated products] (ground of opposition #1);
- The Applicant
(the respondent in this case) is not the person entitled to the registration of
the Mark having regard to Subsection 16(3)(a) of the [TMA], because it is
confusing with the Opponent's previously used trade-mark [MAISON COUSIN &
DESIGN (TMA 130,985) [May 10, 1963]], [...] in association with the
Opponent's Products and with the trade-mark [MAISON COUSIN 1921 & DESIGN
(TMA 523,147) [February 15, 2000]], [...] used since at least as early as
May 1987 in association with [the associated products] (ground of
opposition #2);
- The
Applicant's alleged Mark is not distinctive of the Applicant's Wares and
Services and has not been adapted to distinguish the Applicant's Wares and
Services from the wares of the Opponent. The Opponent has used its [MAISON COUSIN
& DESIGN (TMA 130,985) [May 10, 1963]] and [MAISON COUSIN 1921
& DESIGN (TMA 523,147) [February 15, 2000]] marks as
trade-marks in Canada for several years in association with the Opponent's
Products [...] (ground of opposition #3).
DECISION UNDER APPEAL
[11]
The
Registrar noted first, citing several of the exhibits in the docket, that the
evidence of use of those two trade-marks was limited and not particularly
convincing, finding no evidence of the length of time they had been in use or
the extent to which they had become known. The Registrar then reviewed each of
the criteria set out in subsection 6(5) TMA in order to determine whether
the trade-marks MAISON COUSIN & DESIGN (TMA 130,985)
[May 10, 1963] and MAISON COUSIN 1921 & DESIGN (TMA 523,147)
[February 15, 2000] are confusing with the applied-for mark.
[12]
The
Registrar determined the applicable burden of proof, stating that the initial
evidential burden was on the Opponent (the applicant), but that the burden then
shifted to the Applicant (the respondent), who had to prove that the grounds of
opposition should not prevent registration of the mark.
[13]
The
Registrar then found that the material dates were as follows:
- For
considering the issue of non-entitlement [subsection 16(3) TMA]
(ground of opposition #2): the filing date of the application
(May 29, 1996);
- For
assessing the issue of distinctiveness [section 2 and
paragraph 38(2)(d)] (ground of opposition #3): the filing date
of the statement of opposition (October 20, 1998)
- For
the issue of registrability (12(1)(d) TMA) (ground of
opposition #1): the date of the Registrar's decision
(January 4, 2005)
The Registrar added that these dates were not a factor in
his decision.
[14]
The
Registrar then reviewed, in light of the jurisprudence, each of the criteria
set out in subsection 6(5) TMA to determine whether the trade-marks MAISON
COUSIN & DESIGN (TMA 130,985) [May 10, 1963] and MAISON
COUSIN 1921 & DESIGN (TMA 523,147) [February 15, 2000] were
confusing with the applied-for mark (COUSINS (no. 813812)). The relevant
subsection of the TMA reads as follows:
|
6.
(5) In determining whether trade-marks or trade-names are confusing, the
court or the Registrar, as the case may be, shall have regard to all the
surrounding circumstances including
|
6.
5) En décidant si des marques de commerce ou des noms commerciaux créent de
la confusion, le tribunal ou le registraire, selon le cas, tient compte de
toutes les circonstances de l’espèce, y compris :
|
|
(a)
the inherent distinctiveness of the trade-marks or trade-names and the extent
to which they have become known;
|
a) le caractère distinctif inhérent des marques
de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus
connus;
|
|
(b)
the length of time the trade-marks or trade-names have been in use;
|
b) la période pendant laquelle les marques de
commerce ou noms commerciaux ont été en usage;
|
|
(c)
the nature of the wares, services or business;
|
c) le genre de marchandises, services ou
entreprises;
|
|
(d)
the nature of the trade; and
|
d) la nature du commerce;
|
|
(e)
the degree of resemblance between the trade-marks or trade-names in
appearance or sound or in the ideas suggested by them.
|
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.
|
[15]
The
Registrar found that the factor in paragraph (a) favoured the Opponent
insofar as the MAISON COUSIN 1921 & DESIGN mark (TMA 523,147)
[February 15, 2000] was concerned. However, he found that there was
insufficient evidence to reach the same conclusion with respect to the MAISON
COUSIN & DESIGN mark (TMA 130,985) [May 10, 1963].
[16]
Analyzing
the factor in paragraph (b), the Registrar wrote the following:
There is no
evidence of use of the Mark in Canada by the Applicant while there is some
limited evidence of use of the COUSIN1921 DESIGN [MAISON COUSIN 1921 &
DESIGN (TMA 523,147) [February 15, 2000]] in association with
bread. This factor does favour the Opponent.
[17]
The
Registrar then turned to the factors in paragraphs (c) and (d).
He noted that there was "an overlap between submarine sandwiches on
one hand and sandwiches on the other hand. There is also an overlap between submarine
sandwiches and bread."
As for the channels of trade, the Registrar noted that the respondent's
submarine sandwiches could eventually be sold in the same places as the
applicant's. He also found, on the issue of non-registrability,
(subsection 16(3)), that there was no evidence of use of the MAISON COUSIN
& DESIGN mark (TMA 130,985) [May 10, 1963] and that he was
therefore not obliged to consider whether the products sold under that mark
were likely to cause confusion.
[18]
The
Registrar then addressed the caselaw applicable to paragraph (e)
and assessed each trade-mark on the basis of its appearance, sound, and the
ideas suggested by it. His findings on that point favoured neither party.
[19]
As for the
other factors (the list in subsection 6(5) TMA is not exhaustive), the
Registrar was not prepared to consider the fact that no instances of
confusion had been raised in the United States, given the absence of evidence
of use of the trade-marks MAISON COUSIN & DESIGN (TMA 130,985)
[May 10, 1963] and MAISON COUSIN 1921 & DESIGN (TMA 523,147)
[February 15, 2000]. He also declined to consider the use of the
words MAISON COUSIN on the grounds that it would amount to allowing the
Opponent to do indirectly what it was not allowed to do directly, given that it
had not amended its opposition statement as it had been entitled to do.
[20]
Having
reviewed the evidence before him, the Registrar dismissed grounds of
opposition #2 and #3, noting that the Opponent (the applicant in
this case) had not discharged its initial burden of proof. As for ground of
opposition #1, the Registrar found that the burden of proof that was
initially on the Opponent had been reversed, and that the Applicant had not
reversed it burden with respect to the registration of its mark (COUSINS (no.
813812)) in the case of the sandwiches, namely the submarine sandwiches. The
Registrar therefore dismissed the opposition insofar as the other wares and
services were concerned.
ANALYSIS
1. Standard of review
[21]
The
Federal Court of Appeal set out the standard of
review for decisions of the Registrar in Molson Breweries v. John Labatt
Ltd., [2000] 3 F.C. 145; [2000] F.C.J. No. 159 (F.C.A.).
Rothstein J.A. summarizes the principles governing the standard of review
at paragraph 51 of his reasons:
I think the
approach in Benson & Hedges and McDonald's Corp. are
consistent with the modern approach to standard of review. Even though there is
an express appeal provision in the Trade-marks Act to the Federal Court,
expertise on the part of the Registrar has been recognized as requiring some
deference. Having regard to the Registrar's expertise, in the absence of
additional evidence adduced in the Trial Division, I am of the opinion that
decisions of the Registrar, whether of fact, law or discretion, within his area
of expertise, are to be reviewed on a standard of reasonableness simpliciter.
However, where additional evidence is adduced in the Trial Division that would
have materially affected the Registrar's findings of fact or the exercise of
his discretion, the Trial Division judge must come to his or her own conclusion
as to the correctness of the Registrar's decision.
[22]
That case
was followed by the Federal Court and the Federal Court of Appeal (see e.g.
Novopharm Ltd. v. Bayer, (2000) 264 N.R. 384; [2000] F.C.J. No. 1864
(F.C.A.), at paragraph 4; Metro-Goldwyn Meyer Inc. v. Stargate
Connections Inc., 2004 F.C. 1185, [2004] F.C.J. No. 1422 (F.C.), at
paragraph 5). Normally, the appropriate standard of review for decisions
of the Board is that of reasonableness simpliciter. However, when
additional evidence is adduced, it is necessary to assess its significance and
probative value.
[23]
The
approach taken by Mactavish J. in Telus Corp. v. Orange Personal
Communications Services Ltd., 2005 F.C. 590; [2005] F.C.J. No. 722 (F.C.)
is appropriate here. In that case, Mactavish J. was inspired by the
comments of Evans J. in Garbo Group Inc. v. Harriet Brown & Co.,
(1999) 176 F.T.R. 80; (1999) 23 Admin. L.R. (3d) 153; [1999] F.C.J. No. 1763
(C.F.), at paragraphs 37 to 39.
As for the
impact on the standard of review of the filing of additional evidence on an
issue at the appeal, much will depend on the extent to which the additional
evidence has a probative significance that extends beyond the material that was
before the Registrar. If it adds nothing of significance, but is merely
repetitive of existing evidence without enhancing its cogency, its presence
should not affect the standard of review applied by the Court on the appeal.
If, on the
other hand, the additional evidence goes beyond what was in substance already
before the Registrar, then the Court should ask whether, in the light of that
material, the Registrar reached the wrong decision on the issue to which that
evidence relates and, perhaps, on the ultimate decision as well. The more
substantial the additional evidence, the closer the appellate Court may come to
making the finding of fact for itself.
[24]
If the
evidence is sufficiently significant and probative, the standard of review
becomes that of correctness. Otherwise, the standard remains that of
reasonableness simpliciter.
[25]
The
applicant submits that the affidavit of Laurent Samson, the applicant’s
director of marketing, constitutes new, significant and probative evidence
justifying the application of the standard of correctness, since the affidavit
[translation] "tends to show
that the trade-marks [MAISON COUSIN & DESIGN (TMA 130,985)
[May 10, 1963], MAISON COUSIN (TMA 580,508) [May 2, 2003],
MAISON COUSIN 1921 & DESIGN (TMA 523,147) [February 15, 2000],
MAISON COUSIN & CIE & DESIGN (TMA 576,779) [March 3, 2003]
and MAISON COUSIN & CO & DESIGN (TMA 576,780)
[March 3, 2003]] of the applicant have been known and used for
several years in association with bakery products and services at the relevant dates."
[26]
Having
examined all the new evidence, I believe that correctness is the appropriate
standard to apply. The new evidence introduces 3 new trade-marks, and
Mr. Samson’s affidavit provides much more substantial evidence of use of
the applicant’s trade-marks than that which had been available to the
Registrar.
2. Paragraph 12(1)(d)
of the TMA
[27]
The
applicant raises several arguments against the Registrar’s conclusions
concerning paragraph 12(1)(d) of the TMA. That paragraph reads as
follows:
|
12.
(1) Subject to section 13, a trade-mark is registrable if it is not
|
12.
(1) Sous réserve de l’article 13, une marque de commerce est
enregistrable sauf dans l’un ou l’autre des cas suivants :
|
|
[...]
|
[...]
|
|
(d)
confusing with a registered trade-mark;
|
d) elle crée de la confusion avec une marque de
commerce déposée;
|
[28]
First I
will review each of the grounds of opposition based on this section, and then I
will analyze the factors set out in the TMA.
i) The relevant
marks
[29]
First, it
is submitted that the Registrar erred in not considering part of the evidence.
More specifically, it is alleged that the Registrar contradicted himself by
first refusing to consider the evidence concerning the MAISON COUSIN 1921 &
DESIGN mark (TMA 523,147) [February 15, 2000] and then saying at the
end of the decision that he had considered it. The passage in which the
Registrar claims to have considered the two marks is the following, at
page 11:
My conclusion
is based on my findings discussed above with respect to the nature of the wares
and the trade as well as the degree of resemblance in sound between the Mark
and the word portion of the [MAISON COUSIN & DESIGN (TMA 130,985)
[May 10, 1963]] and [MAISON COUSIN 1921 & DESIGN (TMA 523,147)
[February 15, 2000] marks.
[30]
The
Registrar’s decision is indeed self-contradictory on that point. The Registrar
was bound to bring up to date the grounds of opposition whose wording excluded
the MAISON COUSIN 1921 & DESIGN mark (TMA 523,147)
[February 15, 2000], which was registered long after the date the
statement of opposition was filed. However, this strikes me as being a minor
error, since in many places in the decision, it is clear that the Registrar did
review the evidence related to the two marks, despite his initial statement
that he would not do so. The decision, taken as a whole, convinces me that the
evidence concerning the MAISON COUSIN 1921 & DESIGN mark (TMA 523,147)
[February 15, 2000] was considered. The Registrar therefore only
committed a small error in stating at the outset that he would disregard the
evidence, since his decision demonstrates that he did indeed take it into
consideration.
ii) The burden of
proof
[31]
The
applicant also claims that the initial burden of proof had been wrongly
attributed to it. It nevertheless cites in its factum the following passage
from Redsand Inc. v. Dylex Ltd., 74 C.P.R. (3d) 373 (F.C.):
In an
opposition proceeding, prior to considering the specific grounds of opposition,
the opponent to registration, in this case the appellant, is under an initial evidentiary
burden to adduce evidence from which it may reasonably be concluded that the
facts alleged to support the grounds of opposition exist.
[32]
According
to that passage, the Opponent has the initial burden of proof. This is exactly
what the Registrar writes in his decision at page 6:
The legal
burden is upon the Applicant to show that its application complies with the
provisions of Section 30 of the Act, but there is however an initial evidential
burden on the Opponent to establish the facts relied upon by it in support of
such grounds of opposition. Once this initial burden is met, it shifts to the
Applicant who must prove that the particular grounds of opposition should not
prevent registration of the Mark.
[33]
The
Registrar and the applicant therefore agree about the burden of proof: an
initial burden of proof lies with the Opponent (to establish the facts relied
upon), but they also agree that the real burden of proof is on the person
applying for the registration of a mark. In my opinion, there is no basis for
having two burdens of proof. There is only one burden of proof, and it lies
with the person applying for the registration of a mark. The caselaw on this
point absolutely confirms this. In Miss Universe Inc. v. Bonha, [1995] 1
F.C. 614, at paragraph 14 (F.C.A.), Décary J.A. writes:
The onus is
always upon an applicant for the registration of a trade-mark to establish
that, on the balance of probabilities, there is no likelihood of confusion with
a previously used and registered trade-mark.
[34]
That does
not mean that the Opponent just sits back and waits for the applicant for the
registration of a trade-mark to supply the evidence. The Opponent must also
present evidence to help the Registrar make a determination about each of the
factors set out in subsection 6(5) TMA: that is the ultimate goal of an
opposition procedure based on confusion. The Registrar is entitled to draw
conclusions in the absence of evidence of the use of a mark or of the length of
time of such use. In this case, regarding ground of opposition #1, the
Registrar found that the Opponent had met its initial burden of proof and had
succeeded in reversing the burden, which meant that it was now up to the
Applicant to prove that "there is no reasonable likelihood of confusion".
With respect to submarines, the Registrar found that the Applicant had not
provided sufficient evidence to meet its burden of proof, which shows that the
burden of proof was correctly applied for that ground of opposition. It is true
that he should have avoided using the term "burden" to describe the
opponent’s obligation to present evidence and should have stuck to weighing the
respective evidence of each party. However, that was only a minor error, given
that in the impugned decision, the Registrar was guided by subsection 6(5)
TMA when he compared the marks at issue, having considered all the evidence.
iii) The
relevant evidence
[35]
The
applicant also alleges that the Registrar erred in evaluating the evidence
before him, on the basis that several exhibits demonstrating the use of the
trade-marks MAISON COUSIN & DESIGN (TMA 130,985) [May 10, 1963]
and MAISON COUSIN 1921 & DESIGN (TMA 523,147)
[February 15, 2000] had not been taken into consideration. The TMA
defines use of a trade-mark as follows:
|
2.
|
2.
|
|
[...]
|
[...]
|
|
"use",
in relation to a trade-mark, means any use that by section 4 is deemed
to be a use in association with wares or services
|
« emploi »
ou « usage » À l’égard d’une marque de commerce, tout emploi qui,
selon l’article 4, est réputé un emploi en liaison avec des marchandises
ou services.
|
|
[...]
|
[...]
|
|
4.
(1) A trade-mark is deemed to be used in association with wares if, at the
time of the transfer of the property in or possession of the wares, in the
normal course of trade, it is marked on the wares themselves or on the
packages in which they are distributed or it is in any other manner so
associated with the wares that notice of the association is then given to the
person to whom the property or possession is transferred.
|
4.
(1) Une marque de commerce est réputée employée en liaison avec des
marchandises si, lors du transfert de la propriété ou de la possession de ces
marchandises, dans la pratique normale du commerce, elle est apposée sur les
marchandises mêmes ou sur les colis dans lesquels ces marchandises sont
distribuées, ou si elle est, de toute autre manière, liée aux marchandises à
tel point qu’avis de liaison est alors donné à la personne à qui la propriété
ou possession est transférée.
|
|
(2)
A trade-mark is deemed to be used in association with services if it is used
or displayed in the performance or advertising of those services.
|
(2)
Une marque de commerce est réputée employée en liaison avec des services si
elle est employée ou montrée dans l’exécution ou l’annonce de ces services.
|
|
(3)
A trade-mark that is marked in Canada on wares or on the packages in which
they are contained is, when the wares are exported from Canada, deemed to be
used in Canada in association with those wares.
|
(3)
Une marque de commerce mise au Canada sur des marchandises ou sur les colis
qui les contiennent est réputée, quand ces marchandises sont exportées du
Canada, être employée dans ce pays en liaison avec ces marchandises.
|
[36]
Accordingly,
to be considered by the Registrar, the Opponent’s evidence had to satisfy those
criteria on the relevant date. That date, as regards ground of opposition #1,
is the date of registration or of refusal of registration, in this case
January 4, 2005. So wrote Desjardins J.A. in Park Avenue
Furniture Corp. v. Wickes/Simmons Bedding Ltd., [1991] F.C.J. No. 546:
In an
opposition to registrability, the view adopted by Heald J.A. in Oshawa appears
to me to be the most logical one. I find no fallacy in the possibility of an
update of the situation by the parties when the issue is whether statutory
recognition should be given to a mark. It is important, it would seem to me,
that the decision of the Registrar or the court be taken on an accurate state
of the record. Registrability should be decided at the date of registration or
at the date of refusal of registration.
[37]
The
applicant refers to ample evidence available to the Registrar demonstrating the
use of the mark prior to the relevant date. It claims that the Registrar did
not take it into consideration. In my opinion, the Registrar did consider it
but deliberately chose not to attribute much weight to it. At page 4, he
writes:
The only
exhibits that bear the [MAISON COUSIN & DESIGN mark (TMA 130,985)
[May 10, 1963]] are copies of two different letterheads. There are
however minor differences between the design appearing on each letterhead and
the [MAISON COUSIN & DESIGN mark (TMA 130,985) [May 10, 1963]].
In any event, trade-marks appearing on letterhead do not constitute prior use
of a registered trade-mark in association with wares. There has been no
packaging or labels bearing the [MAISON COUSIN & DESIGN mark (TMA 130,985)
[May 10, 1963]] mark filed in the record. As such I have no evidence
of use of the [MAISON COUSIN & DESIGN mark (TMA 130,985) [May 10, 1963]]
in association with any of the Opponent’s Products.
Exhibit MD-5
consists of samples of packaging of various types of bread. Two of them,
"two cheeses bread" and "Raisin bread" bear the MAISON
COUSIN 1921 & DESIGN mark (TMA 523,147) [February 15, 2000]. .
The other samples bear either the circle design feature of the MAISON COUSIN
1921 & DESIGN mark (TMA 523,147) [February 15, 2000], or the
stylized inscription of MAISON COUSIN appearing on the MAISON COUSIN 1921 &
DESIGN trade-mark (TMA 523,147) [February 15, 2000], which use
of these modified versions of the Opponent’s trade-marks have not been alleged
by the Opponent in support of its grounds of opposition. We have no information
as to during which period of time the pertinent samples were used in Canada and
to what extent.
Samples of
advertising material were filed as Exhibit MD-4. This material is of little
assistance to the Opponent as no date of use of such material was provided and
the marks appearing on them are, in most instances, different than the [MAISON
COUSIN & DESIGN (TMA 130,985) [May 10, 1963]] and the MAISON
COUSIN 1921 & DESIGN (TMA 523,147) [February 15, 2000]
trade-marks.
This excerpt shows that the whole of the evidence dated
prior to January 4, 2005, was considered. The Registrar therefore committed
no error on this point.
iv) Detailed
analysis of the factors in subsection 6(5) TMA
[38]
Under
subsection 6(5) TMA, a likelihood of confusion is sufficient to prevent
the registration of a mark (Pink Panther Beauty Corp., [1998] 3 F.C.
534; [1998] F.C.J. No. 441 (F.C.A.)). The existence of a likelihood of
confusion is a matter of first impression. The factors in subsection 6(5)
are used to guide the judge in his or her analysis. In Miss Universe Inc. v.
Bohna, [1995] 1 F.C. 614; [1994] F.C.J. No. 1642 (F.C.A.), Décary J.A.
explained how the likelihood of confusion between trade-marks should be
evaluated:
To decide
whether the use of a trade-mark or of a trade-name causes confusion with
another trade-mark or another trade-name, the Court must ask itself whether, as
a matter of first impression on the minds of an ordinary person having a vague
recollection of that other mark or name, the use of both marks or names in the
same area in the same manner is likely to lead to the inference that the services
associated with those marks or names are performed by the same person, whether
or not the services are of the same general class.
In
determining whether there is a likelihood of confusion, the Court shall have
regard to all the surrounding circumstances, including those described in
subsection 6(5) above.
[39]
The
distinctiveness of a mark may be inherent or acquired. The inherent
distinctiveness of a mark refers to its originality. Thus, a mark that is
composed of a unique or invented name, such that it can only refer to one
thing, will possess more inherent distinctiveness than a word that is commonly
used in the trade (ITV Technologies, Inc. v. WIC Television Ltd., 2003
F.C. 1056; [2003] F.C.A. No. 1335 (F.C.), at paragraph 119). A mark that is
only descriptive of the wares will be afforded less protection (Pink Panther
Beauty, supra, at paragraph 23). In this case, the marks of both the
applicant and the respondent have inherent distinctiveness. It is true that all
of the marks use the word COUSIN. However, the applied-for mark is distinct in
that it is shorter and is not preceded by the word MAISON. Acquired
distinctiveness (the extent to which the mark has become known) refers to the
mark’s reputation. Evidence of the strength of a mark can be the basis for
according greater protection to that mark (Miss Universe Inc. v. Bonha, supra,
at paragraphs 12 and 13). The evidence provided by the applicant of
the reputation of its marks is insufficient to justify extensive protection.
[40]
The length
of time the respective marks have been in use clearly favours the applicant.
According to Mr. Samson’s uncontradicted affidavit, the trade-marks MAISON
COUSIN & DESIGN (TMA 130,985) [May 10, 1963] and MAISON
COUSIN 1921 & DESIGN (TMA 523,147) [February 15, 2000] have
been used and attached to the applicant’s products since their registration
date. As for the respondent’s mark, it has only been registered in the United
States since August 18, 1981. This factor therefore favours the
applicant.
[41]
The
applicant challenges the Registrar’s conclusions concerning the factors set out
in paragraphs 6(5)(c) and (d). It claims that
[translation]
the
Registrar’s finding does not protect consumers from the confusion that could
arise with respect to the source of the wares [other than the submarine
sandwiches], and that such a finding does not take the realities of the
marketplace into consideration, in the sense that the Applicant and the
respondent Cousins Submarines both offer a range of food products.
My analysis is different from that of the applicant. With
the exception of the submarine sandwiches, the types of products offered by the
applicant and the respondent are different. The fact that the wares sold by
each company are essentially very different reduces the risk of confusion. In Tradition
Fine Foods Ltd. v. Oshawa Group Ltd. [2004] F.C.J. No. 1244, aff’d 2005 FCA
342, O’Reilly J. of this Court had before him facts similar to the facts
in this case. That case involved an application based on several provisions of
the TMA, including the issue of confusion under section 20 TMA. The
applicant operated several bakeries, while the respondent operated grocery
stores that sold, among other products, baked goods. Analyzing the factors set
out in the TMA, the judge writes the following at paragraph 40:
The
plaintiff's business is specialized. Its wares are confined to bakery products:
muffins, croissants, danishes, cookies and cakes. The defendants' business is
general. They do sell some bakery products, including goods baked on the premises
of their 28 stores, but their wares extend to all of the food products and
merchandise one would expect to find in a modern grocery store, sold under a
myriad of brand names. In my view, the differences in their wares reduces the
likelihood of confusion.
In my opinion, these facts resemble the facts in this case,
in the sense that O’Reilly J. was able to make a clear distinction between
the types of food products sold by the parties, even though the products sold
by one were included in the products sold by the other. That reasoning is
applicable here. The fact that the general types of food products sold by the
parties are different reduces the risk of confusion. 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. This factor therefore favours the respondent.
[42]
The same
goes for the nature of the trade. The products are not sold in the same type of
establishment. In the case of the applicant’s products, they are sold in
convenience stores and grocery stores, as can be seen by the photographs of the
points of sale in support of Mr. Samson’s affidavit. The same affidavit
states that [translation] "Maison Cousin has
opened, over the years, stores in Montréal and the surrounding area under the
banner of Maison cousin, specifically in downtown Montréal, Square Victoria,
Square Westmount and in the Rockland Shopping Centre." The applicant’s
products are therefore sold in convenience stores, grocery stores and
"shops" ["magasins" in the French version], while
the respondent’s products are sold in restaurants. This factor favours the
respondent, because the fact that the nature of the trade and the points of
sale are not of the same types reduces the risk of confusion.
[43]
The degree
of resemblance between the marks at issue also seems to me, although to a
lesser extent, to favour the respondent. Visually, the applicant’s marks are
composed of several words, while the applicant’s mark is composed of only a
single word. The sound is also different, for the same reason.
[44]
Finally, because
the list of factors in subsection 6(5) is not exhaustive, I may consider
other factors. The logos of each mark are very different, which I believe
reduces the risk of confusion even further.
[45]
Having
considered all of the factors while bearing in mind the appropriate standard of
review and burden of proof, I find that there is no cause to review the
Registrar’s conclusion. Even though some factors favour the applicant, the
first-impression test and the factors analyzed as a whole are more favourable to
the respondent. The Federal Court of Appeal recently reiterated, in Tradition
Fine Foods Ltd. v. Oshawa Group Ltd. [2004] F.C.J. No. 1244, at paragraph
10, that the issue of confusion, in general, can be stated in the following
terms:
The parties
agreed at trial that to find confusion the court must answer the following
question affirmatively; "If both trade-marks were used in the same area,
would the average consumer likely infer that the wares of the two vendors
actually have the same source?" This same question has been commonly used
in trade-mark cases. (See British Drug Houses Ltd. v. Battle Pharmaceuticals,
(1944), 4 CPR 48 (Ex. Ct.); Miss Universe, Inc. v. Bohna, (1994), 58
C.P.R. (3d) 381 (F.C.A.); and Polo Ralph Lauren Corp. v. United States Polo
Association et al., (2000), 9 C.P.R. (4th ) 51 (F.C.A.).)
In my opinion, the average consumer is unlikely to believe
that the products connected with the applicant’s trade-marks come from the same
source as the respondent’s products. That is the substantive question, and the
Registrar answered it correctly. It is true that the burden of proof lay with
the respondent, and that the latter did not appear. Nevertheless, the evidence
available to the Registrar was sufficient to come to this conclusion, even if
the new evidence is taken into account.
2.
Subsection 16(3) of the TMA
|
16.
(3) Any applicant who has filed an application in accordance with
section 30 for registration of a proposed trade-mark that is registrable
is entitled, subject to sections 38 and 40, to secure its registration
in respect of the wares or services specified in the application, unless at
the date of filing of the application it was confusing with
|
16.
(3) Tout requérant qui a produit une demande selon l’article 30 en vue
de l’enregistrement d’une marque de commerce projetée et enregistrable, a
droit, sous réserve des articles 38 et 40, d’en obtenir l’enregistrement
à l’égard des marchandises ou services spécifiés dans la demande, à moins
que, à la date de production de la demande, elle n’ait créé de la
confusion :
|
|
(a)
a trade-mark that had been previously used in Canada or made known in Canada
by any other person;
|
a) soit avec une marque de commerce
antérieurement employée ou révélée au Canada par une autre personne;
|
|
(b)
a trade-mark in respect of which an application for registration had been
previously filed in Canada by any other person; or
|
b) soit avec une marque de commerce à l’égard
de laquelle une demande d’enregistrement a été antérieurement produite au
Canada par une autre personne;
|
|
(c)
a trade-name that had been previously used in Canada by any other person.
|
c) soit avec un nom commercial antérieurement
employé au Canada par une autre personne.
|
[47]
For the
above-mentioned reasons, there is no risk of confusion between the applicant’s
marks, taking into consideration all the evidence at the date of the
Registrar’s decision, except with respect to submarine sandwiches. There is no
error in the Registrar’s reasons on that point, since on the date the
application was filed, the evidence was essentially the same. In essence, the
wares are different, the points of sale are different, the sound of the marks
is different and the logos used do not resemble each other. The average
consumer would therefore not be fooled, regardless of the date considered.
[48]
The
applicant raised the fact that the Registrar committed minor errors in the
description and weighing of the evidence. However, those errors are not so
serious as to call into question the overall weight that the Registrar assigned
to the evidence.
3. Section 2 and
paragraph 38(2)(d) TMA
[49]
The
applicant submits that the Registrar erred in his interpretation of
section 2 TMA. The Registrar’s decision on ground of opposition #3 is
therefore challenged. Section 2 TMA reads as follows:
|
2.
|
2.
|
|
[...]
|
[...]
|
|
"distinctive",
in relation to a trade-mark, means a trade-mark that actually distinguishes
the wares or services in association with which it is used by its owner from
the wares or services of others or is adapted so to distinguish them;
|
« distinctive »
Relativement à une marque de commerce, celle qui distingue véritablement les
marchandises ou services en liaison avec lesquels elle est employée par son
propriétaire, des marchandises ou services d’autres propriétaires, ou qui est
adaptée à les distinguer ainsi.
|
|
[...]
|
[...]
|
[50]
In Havana House Cigar & Tobacco
Merchants Ltd. v. Skyway Cigar Store, (1998) 147 F.T.R. 54; [1998] F.C.J.
No. 678 (F.C.), rev’d for other reasons by (1999) 251 N.R. 215; [1999] F.C.J.
No. 1749 (F.C.A), Teitelbaum J. wrote:
As set out in
Philip Morris Inc. v. Imperial Tobacco Ltd. (1985), 7 C.P.R. (3d) 254
(F.C.T.D.), aff'd (1987), 17 C.P.R. (3d) 237 (F.C.A.), aff'd (1987), 17 C.P.R.
(3d) 287 (F.C.A.), three conditions must be met to prove distinctiveness (at
page 270 (F.C.T.D.)):
(1) that a
mark and a product (or ware) be associated; (2) that the "owner" uses
this association between the mark and his product and is manufacturing and
selling his product; and, (3) that this association enables the owner of the
mark to distinguish his product from that of others.
The question
of distinctiveness is a question of fact with the test being whether a clear
message has been given to the public that the wares with which the trademark is
associated and used are the wares of the trade-mark owner and not those of
another party.
[51]
In this
case, the COUSINS mark is associated with the applicant’s products or wares.
Also, the owner uses the association, manufactures and sells the product, and
that association enables the owner to distinguish his product from that of
other manufacturer. The comments made on this point on the issue of confusion
are partly applicable here, since the issues of confusion and distinctiveness
are similar; in both cases, it is the perceived or apparent source of the
products that is at issue.
[52]
In this
case, the respondent has made it clear to the public that the wares with which
its trade-mark is associated are its own and not those of somebody else. For
the reasons described above, the fact that the Registrar erred in imposing a
"burden" on the shoulders of the applicant is but a minor error.
CONCLUSIONS
ORDER
THIS COURT ORDERS that:
- The appeal be
dismissed.
Certified
true translation
Francie
Gow
Email this Content