Date: 20061023
Docket: T-205-06
Citation: 2006
FC 1261
Toronto, Ontario, October 23, 2006
PRESENT: The Honourable Mr. Justice Hughes
BETWEEN:
CITY OPTICAL HOLDINGS INC.
Applicant
and
THE UNITED STATES SHOE
CORPORATION
Respondent
REASONS FOR ORDER AND ORDER
[1]
This is an
appeal from a decision of the Opposition Board for the Registrar of Trade-marks
dated December 6, 2005 wherein an application to register as a trade-mark the words
THE INVINCIBLES filed by the Applicant as number 893,847, was refused. The
appeal was brought by way of an Application under Rule 300(d) of this Court. This
particular application was made by way of summary judgment which, it appears, a
Registry officer had suggested as appropriate. Since the proceeding is
unopposed, the Respondent having stated by letter that it does not wish to
appear to contest the matter and the Registrar of Trade-marks having filed a
similar letter, I permitted the matter to proceed in this fashion.
[2]
The
trade-mark as applied for was based on proposed use for the words THE
INVINCIBLES in association with:
1.
impact
resistant polycarbonate eyeglass lenses.
2.
corrective,
protective and/or anti-glare eyewear and lenses; namely, replacement lenses,
earstems, frames, nose pieces and foam strips.
3.
cases
especially adapted for corrective, protective and/or anti-glare eyewear.
[3]
The
Respondent opposed the application on the basis of its prior registration of
the trade-mark INVISIBLES for “opthalmic (sic) lenses”.
[4]
The
Hearing Officer reviewed the evidence and considered in particular the criteria
set out in section 6(5) of the Trade-Marks Act, R.S.C. 1985, c. T-13. He
concluded at pages 6 and 7 of his Reasons:
It is apparent from the above discussion
of section 6(5) that some factors strongly favour the opponent’s submission that
there is reasonable likelihood of confusion between the marks in issue, while
other factors strongly support the applicant’s submission that there is no
reasonable likelihood of confusion. In weighing all of the factors and their
relative importance together, I have arrived at the conclusion that, at all
material times, the reasonable likelihood of confusion between the marks in
issue balances evenly with no reasonable likelihood of confusion. As I am
unable to arrive at a determinative conclusion, and as the onus is on the
applicant to show, on a balance of probabilities, that there would be no
reasonable likelihood of confusion, I must find against the applicant.
[5]
As
provided for by section 56 of the Trade-Marks Act supra the
Applicant has filed further evidence on this appeal. This evidence demonstrates
that there are meaningful differences between the wares, that there is no
evidence as to actual confusion between the wares bearing the trade-marks at
issue since the Applicant commenced use of its trade-mark and, that there are
differences in the channels of trade in which the wares are advertised and
sold. The Court is permitted to take a fresh view of matters where meaningful
new evidence is submitted on appeal (AstraZeneca AB. Novopharm Ltd.,
[2002] 2 F.C. 148 (C.A.) at paras. 25 to 33).
[6]
The new
evidence is meaningful and serves to tip the balance, found to be even by the
Opposition Board, in favour of the Applicant.
[7]
Accordingly,
the appeal will be allowed, the Opposition is rejected, with no costs to any
party.
ORDER
For the foregoing Reasons;
THIS COURT ORDERS that
1.
The appeal
is allowed;
2.
The
Opposition to trade-mark application number 893,847 is rejected;
3.
There are
no costs to any party.
“Roger
T. Hughes”
Email this Content