Baylor University v. Hudson'S Bay Co., docket T-2590-97

Date: 19981215

Docket: T-2590-97

IN THE MATTER OF Sections 38, 56 and 59

of the Trade Marks Act; and

IN THE MATTER OF an appeal from the decision

of the Registrar of Trade Marks in an opposition to

Application No. 711,942 for the trade mark BAYLOR

BETWEEN:

     BAYLOR UNIVERSITY,

     Appellant,

     - and -

     THE GOVERNOR AND COMPANY OF

     ADVENTURERS TRADING INTO

     HUDSON'S BAY

     commonly called HUDSON'S BAY COMPANY, and

     THE REGISTRAR OF TRADE MARKS,

     Respondents.

     REASONS FOR JUDGMENT

MULDOON, J.

[1]      The Registrar of Trade Marks, on September 29, 1997, refused, in part, the appellant's Canadian trade mark application no. 711,942 for the mark BAYLOR. That application was opposed by the corporate respondent. The appellant has appealed the Registrar's refusal to this Court, pursuant to sections 56 and 59 of the Trade Marks Act, R.S.C. 1985, Chap. T-10. The corporate respondent (hereinafter: the respondent, or The Bay) still opposes the appellant's initiative to obtain full registration of its proposed trade mark, but the Registrar takes no part in these proceedings.

[2]      There is some difference in the parties' respective assertions of material facts, and therefore so alleged in the evidence upon which the Registrar made the decision from which this appeal is taken. The appellant filed an application to register the proposed trade mark BAYLOR in Canada on August 31, 1992. The application comprehended two kinds of enterprises, services and wares:

1. Services in the area of conducting college-level courses and organizing college sports events; and

2. Wares, being clothing, namely: sweaters, sweatshirts, sweatpants, T-shirts, shorts, jackets, hats and shirts.

[3]      The appellant's trade mark application was amended on April 6, 1995, in order to specify that the wares were to be, and the proposed mark was to be used in association with, "collegiate merchandise", that is, "merchandise that displays the name or mark of a college or university in a way that is prominently visible while the merchandise is in use", presumably meaning: while being worn.

[4]      The respondent lodged a statement of opposition with the Registrar's office on July 16, 1993, and amended it on March 29, 1995. The respondent recite a list of its own previously registered trade marks, which apart from the design, evince the words: BAYCREST, BAY CLUB, BAYMART, BAY RIDER, BAY SPORT, THE BAY in association with a wide range of clothing encompassing all kinds of the appellant's wares. The Bay alleged that the appellant's proposed trade mark fails to comply with or offends against the Act's following paragraphs 12(1)(d), 16(3)(a), 16(3)(c), 30(i), 38(2)(a), (b), (c) and (d), and section 2, "by reason * * * that the [proposed] trade mark does not actually distinguish the wares and services in association with which it is intended to be used by the [appellant] from the wares and services of others, including" those of the respondent. The grounds of opposition provided by and in the above cited statutory provisions are those of lack of distinctiveness and confusion.

[5]      The appellant, on November 22, 1993, filed a "counter statement" [sic] in which it contradicted the respondent's opposition statement on all grounds and points.

[6]      The appellant, in support of its application filed L. Jane Sarjeant's affidavit, sworn February 1, 1995. (Appellant's Record [AR], vol. 2, tab 15). She performed a search of the CD-ROM (compact disk - read only memory) data base, compiled directly from the records of the Canadian Trade Marks Office, which stores information including: trade marks, status, registrations (number & date), applications (assigned number & date), owner, international class and wares and/or services. She drew out 95 examples of the prefix and word "bay", including of course, the respondent's. Mark Koch exhibited "97 hits" with his affidavit sworn July 5, 1995.

[7]      The Opposition Board's Chairman in his impugned decision dealt quite correctly with the Sarjeant evidence, citing inter alia the jurisprudence expressed in Del Monte Corporation v. Welch Foods Inc., 44 C.P.R. (3d) 205 (F.C.T.D.) and Kellogg Salada v. Canada and Maximum Nutrition, [1992] 3 F.C. 442, 43 C.P.R. (3d) 349 (F.C/A), except to note that there were also two more pending applications for the proposed trade marks BAY-TO-BAY, which included the element BAY as the initial element of the proposed mark to be applied to clothing. The applicant's evidence under paragraph 6(5)(d) of the Act, "the nature of the trade" may be inferred to be abounding in the word or mark in question, if the state of the register abound in it.

[8]      In the Kellogg judgment above mentioned, Mr. Justice Stone wrote on behalf of the unanimous Court of Appeal panel:

[Counsel for the appellant] cites several additional cases in the Trial Division and in this Court in which evidence of user appears to have been drawn exclusively from the state of the register: Andres Wines Ltd. v. Canadian Marketing International Ltd., [1987] 2 F.C. 159 (T.D.), at pages 162-163; and on appeal (1988), 22 C.P.R. (3d) 289 (F.C.A.), at page 290; Laurentide Chemicals Inc. v. Les Marchands Deco Inc. (1985), 7 C.P.R. (3d) 357 (F.C.T.d.), at pages 359-360; Esprit de Corp v. S.C. Johnson & Co. (1986), 11 C.I.P.R. 192 (F.C.T.D.); Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.), at pages 427-428. Most of all, he relies on Pepsi Cola, supra, and Coca-Cola, supra. In Pepsi Cola, at page 33, it appears that the evidence of user consisted of a number of registrations of trade marks and trade names in some form of the word "cola". At that same page, the Court viewed these registrations "as some evidence of the general adoption of the word in names for different beverages or tonics". That view appears to have found favour with the Privy Council when the case reached it by way of final appeal. At page 661 of Coca-Cola, Lord Russell of Killowen stated:

The defendant put in evidence a series of 22 trade marks registered in Canada from time to time during a period of 29 years, viz., from 1902 to 1930, in connection with beverages. They include the mark of the plaintiff and the registered mark of the defendant. The other 20 marks consist of two or more words or a compound word, but always containing the word "Cola" or "Kola" . . . Their Lordships agree with the Supreme Court in attributing weight to these registrations as showing that the word Cola . . . had been adopted in Canada as an item in the naming of different beverages.

(F.C. at p. 452)

In the case at bar the respondent Bay's trade marks far outnumber any other owner's in regard to marks with BAY therein - prefix, within, or suffix. Trade marks found for clothing with the initial element BAY, apart from the respondent's numbered only two registered trade marks BAYARD and BAYSIDE and three pending applications, two for BAY-TO-BAY and one for BAYOU, in which the BAY prefix is pronounced "Bigh", in English. So, the chairman was right to conclude that "no meaningful inferences can be drawn from [the Sarjeant and Koch] evidence concerning the state of the market place.

[9]      The general, almost impressionistic view of the market place's state was described by Douglas E. Warrington in his affidavit sworn on November 27, 1997, (about two months after the chairman's impugned refusal of registration) and filed initially in this Court. According to the Appeal Division's decision in the Kellogg case supra, such evidence is to be received and weighed on appeal in this Court. Stone, J.A. referred to Park Avenue Furniture Corp. cited supra and the review by Madam Justice Desjardins therein of "the cases including that of Oshawa Group Ltd. v. Creative Resources Co. Ltd. (1982) 61 C.P.R. (2d) 29 (F.C/A)" at p. 453 (F.C.). The reasons expressed by Mr. Justice Stone, then continued (on p. 454, F.C.):

The result here is that all of the evidence filed in the Trial Division must be considered in determining the issue of confusion.

Ergo, Mr. Warrington's evidence must be received and considered. It bears, sooner or later on the ultimate issue: Is the mark for which registration is sought confusing with the opponent's - the Bay's - trade marks?

[10]      Mr. Warrington's company is, and has been since 1985, exclusive licensing agent in Canada for some U.S. colleges, including Baylor University. He swears that annual Canadian retail sales of "collegiate" merchandise licensed by his company annually "has [sic] averaged well over $10 million Can. for the" five years preceding November 27, 1997. Mr. Warrington goes on to swear to the following:

4.      Collegiate merchandise sold in Canada is primarily clothing, particularly sweatshirts, t-shirts, jackets and caps. The name or other trade mark of the college is always displayed in a way that is prominently visible. The licensed trade mark is thus incorporated into the design of the garment or other piece of merchandise. The name or other licensed trade mark of the college is never in my experience merely displayed on a label in the manner of a conventional manufacturer's or retailer's trade mark.

5.      In my experience, the great increase in the popularity of U.S. collegiate merchandise is directly attributable to the increased popularity in Canada of U.S. college athletics, and the increase in media coverage in Canada of U.S. college athletics. I have particularly noted that Canadian sales levels for licensed merchandise bearing the names and trade marks of a particular U.S. college depends on the success of its football team and/or its men's basketball team.

6.      In my experience U.S. collegiate merchandise is purchased and worn in Canada primarily by males in the age category from 15 to 40 years old. Such purchasers are fully aware of the association between the licensed trade marks and the college who owns the trade mark. Whether the purchase of collegiate merchandise shows fan support for an athletic team of a particular college, or whether the display of the name or other mark of the college in the design of the item is more simply a fashion statement, sales of collegiate marketing are team driven.

7.      Canadian sales of collegiate merchandise bearing the trade marks of Baylor University have been limited over recent years. However, Baylor University is nevertheless a well known school and important in my company's licensing program. Baylor University has in the past had a very successful football team, and I am confident that a renewed era of success of its football team would lead to increased sales of licensed Baylor University merchandise in Canada.

(vol. 6, AR, tab 6, p. 1097)

[11]      Now, judges are expected - in a true adversary system - to confine themselves to the evidence presented, but not to be blind and deaf naïfs. This evidence is not wholly plausible consisting largely, as it does, of puffery and speculation. It is not plausible, to this judge, that many Canadians, except a small minority of sports fanatics, know anything of Baylor University, at Waco, deep in the heart of Texas. Bereft of the designation, "University" even fewer would know the true signification of "Baylor", except perhaps to confuse it for a designation of the watches sold by People's Jewellers, and for the Hudson's Bay Company, or for a member of the family of trade names, Baycrest, Baymart, Bay Sport etc. That Baylor University "is a well known school" may be true in the cities of the U.S. states surrounding Texas, but even in sophisticated Toronto and Montréal it is unlikely, let alone in a myriad of Canadian towns and cities such as St. John's, Fredericton, Charlottetown, Québec, Ottawa, Peterborough, Thunder Bay, Brandon, Weyburn, Medicine Hat, Calgary or Victoria to choose a few at random. The appellant has not shown such familiarity, at any rate. Mr. Warrington confidently expresses "no doubt that there is no [sic - any?] likelihood of confusion whatsoever between the trade mark BAYLOR of Baylor University as used * * *", but the word alone, without the apposition "University" so lacks distinction in Canada as to be good only, or largely, for confusion with the respondent's many, already historically famous marks. Mr. Warrington's last assertion in his paragraph 8, is not only speculative (what more can one do in this field?), but it is also not plausible.

[12]      In terms of the Baylor watches being brought into the Bay's Calgary store for repairs, warranty service and refunds, as recounted by Sandra J. Rick in her affidavit sworn on June 17, 1994:

3.      The first time an individual spoke to me about having a "BAYLOR" watch repaired or requested a refund therefor, which was the first time I saw a watch bearing the trade mark "BAYLOR", I assumed from the trade mark "BAYLOR" that the watch was a current or former product of The Bay, with which I was unfamiliar. I telephoned the Watches and Jewellery Department at The Bay in downtown Calgary and asked if the salesperson I spoke with was familiar with a watch sold by The Bay under the trade mark "BAYLOR". The salesperson had never heard of such a watch. I then inquired of my floor manager whether the watch was a current product of The Bay, or from a discontinued line of watches sold by The Bay. I was informed that it was not. Neither the floor manager nor the salesperson at The Bay in downtown Calgary knew the source of the "BAYLOR" watch. I informed the individual who asked about the watch that it was not a product of The Bay. The customer left the store appearing to me to be displeased.

4.      For several months after the events described in paragraph 3, whenever an individual asked me about a repair to, or refund for, a "BAYLOR" watch, I informed that individual that it was not a produce of The Bay. I subsequently discovered that the watches in question originated from Peoples Jewellers Limited.

5.      In many instances, I observed that the individuals seeking the repair of a "BAYLOR" watch or a refund therefor expressed surprise that the "BAYLOR" watch was not a product of The Bay, and often pointed to the "BAY" portion of the name of the watch.

6.      I would estimate that I personally received, between approximately July of 1989 and January of 1991, an average of one request every two weeks from individuals bringing watches bearing the trade mark "BAYLOR" into The Bay South Centre for repair or refund by The Bay.

7.      As a salesperson in the women's wear department of The Bay, I am frequently asked, by customers, for The Bay's clothing in-store brand bearing labels such as BAY CLUB. Based on my experience with the "BAYLOR" watches, I would expect that any clothing marked with a "BAYLOR" trade mark could lead to same type of confusion - i.e. customers could well be confused into believing that "BAYLOR" was a brand label of The Bay for clothing.

In terms of that ultimate issue of confusion, Ms. Rick's evidence is pertinent, credible and telling. Her speculation in her paragraph 7 is fact-based and plausible. Her evidence is virtually fatal to the appellant's application and appeal. When the chairman and this Court were and are presented with such a vivid factual proof of confusion, what else matters?

[13]      Those instances of actual confusion reported by Ms. Rick involving BAYLOR watches were not challenged by cross-examination, and so the chairman rightly attributed weight to her evidence in opposition, and this Court finds it to be of irresistible significance among all the evidence laid before the Court on appeal.

[14]      Mr. Justice Denault of this Court gathered some astute jurisprudence in his judgment in Pernod Ricard v. Molson Breweries (1992) 44 C.P.R. (3d) 359 at p. 370, thus:

Although the marks are not to be dissected when determining matters of confusion, it has been held that the first portion of a trade mark is the most relevant for purposes of distinction: Molson Companies Ltd. v. John Labatt Ltd. (1990), 28 C.P.R. (3d) 457 at p. 461, 32 F.T.R. 152, 19 A.C.W.S. (3d) 1369 (F.C.T.D.); Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R.(2d) 183 (F.C.T.D.) at p. 188. I believe the following words of President Thorson in the case of British Drug Houses Ltd. v. Battle Pharmaceuticals (1944), 4 C.P.R. 48 at pp. 57-8, [1944] 4 D.L.R. 577, [1944] Ex. C.R. 239 (Ex. Ct.), to be particularly useful in explaining why attention should be drawn to the first portion of the appellant's mark in this case:

. . . the Court should rather seek to put itself in the position of a person who has only a general and not a precise recollection of the earlier mark and then sees the later mark by itself; if such a person would be likely to think that the goods on which the later mark appears are put out by the same people as the goods sold under the mark of which he has only such a recollection, the Court may properly conclude that the marks are similar.

[15]      Based on Ms. Rick's evidence, unchallenged on cross-examination, the Court may properly conclude, and does conclude, that the appellant's proposed mark and the respondent's marks are similar, and that the proposed trade mark will cause confusion. Of course, that conclusion would not and does not emanate from a trade mark such as BAYLOR UNIVERSITY which promptly takes one's mind off BAYCREST, BAYMART, THE BAY and the respondent's others. Ms. Rick's evidence shows not merely that the similarity could cause confusion, but that it, in fact, has caused confusion. It matters not that Baylor watches may not be associated with the applicant or its line of merchandise, the word Baylor is objectively identical and causes confusion with the respondent's lines of trade marked goods whether associated with wrist watches or the appellant's lines of goods. Real, actual confusion was proved by the respondent.

[16]      The respondent also asserts, and the Court confirms, the principle that a famous mark will be entitled to strong protection against infringement under the Trade Marks Act. The evidence is clear, and also, it is a notorious historical fact, of which this Court can take judicial notice that the Governor and Company of Adventurers of England Trading Into Hudson's Bay, also known as the Hudson's Bay Company has been doing business as fur traders and general merchants in Canada since long before Confederation, having been chartered on May 2, 1670 by King Charles II. The Company was the lawful proprietor of the domain of Rupertsland which became the North West Territories of Canada, out of which Manitoba was established in 1870. "The Bay" can be rightly held to be famous in Canada, but it might well be virtually unknown in Texas.

[17]      Here is a passage penned by Mr. Justice Dubé in Glen-Warren Productions Ltd. v. Gertex Hosiery Ltd. (1990) 29 C.P.R. (3d) 7 at p. 13 (F.C.T.D.):

Therefore, I must conclude that Hosiery has not discharged the legal burden upon it of establishing that its trade mark MISS CANADA is really distinctive of its wares: Spar Aerospace Ltd. v. Plasticart Ltd. (1986), 12 C.P.R. (3d) 468 at p. 471 (T.M.O.B.); Wedgwood PLC v. Thera Holdings Ltd. (1987), 18 C.P.R. (3d) 201 at pp. 205-6 (T.M.O.B.); (T.M.O.B.); McDonald's Corp. v. Clem Saila Inc. (1989), 24 C.P.R. 93d) 400 at p. 403 (T.M.B.O.); Gretzky v. Fortin (1989), 24 C.P.R. (3d) 283 at p. 284, 20 C.I.P.R. 87 (T.M.O.B.), and Vancouver Professional Soccer Ltd. v. Richmond Breweries Ltd. (1987), 14 C.P.R. (3d) 429 at pp. 431-2 (T.M.O.B.).

*** *** ***

In the instant case, Glen-Warren is in an especially strong position. The additional evidence provided by the third Anisman affidavit establishes it has, over the years, made contractual arrangements with hosiery dealers, with whom Hosiery could be in direct competition, to advertise panty-hose using the trade mark MISS CANADA together with their products' names.

Furthermore, as the Miss Canada pageants have been nationally televised, reaching audiences of up to 3,000,000 viewers in some years, it is more than likely that some of these viewers might associate the sale of women's undergarments under the trade mark MISS CANADA with the Miss Canada pageant seen on their television screen. In my view, the evidence shows clearly that MISS CANADA is a famous trade mark in association with the pageant that bears its name and therefore entitled to broad protection: Leaf Confections Ltd. v. Maple Leaf Gardens Ltd. (1986), 12 C.P.R. (3d) 511, 10 C.I.P.R. 267, 7 F.T.R. 72 (F.C.T.D.).

So it must also be with the respondent's trade marks.

[18]      The appellant's counsel stated that the jurisprudence upon which the appellant most heavily relied is the Appeal Division's judgment (a split, 2 to 1 decision) in United Artists Corp. v. Pink Panther Beauty Corp. (1998) 225 N.R. 82. This case, in both the majority and the dissenting reasons, is as highly useful as a primer on the subject of trade marks, so well considered, researched and written are both sets of reasons. It is the way of these matters however that the majority's decision survives as the Court's authentic voice, and it is the one to which counsel referred.

[19]      The appellant's counsel emphasized in particular the majority's paragraphs [36] and [37] introducing the topic of "all the surrounding circumstances" as the "overriding general consideration, being developed in paragraph [37], at p. 94, thus:

[37] One important circumstance is the presentation of the trademark [sic] in the context of the product itself. The "get-up", or the way that a product is packaged, and as a consequence the way the mark is presented to the public, is an important factor in determining whether confusion is likely. In Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd. et al. [(1986), 9 C.P.R. (3d) 341 (F.C.T.D.); aff'd on this point [1987] 3 F.C. 544 (C.A.)], the plaintiff used the trade mark SINGSILDA in association with fishing lures. It used a distinctive package and get-up for its product. The Trial Judge found that a similar type of get-up contributed greatly to the likelihood of confusion between that mark and the defendant's NORSE SILDA mark. He found this to be a relevant surrounding circumstance under subsection 6(5).

[20]      In this matter there is no evidence about "get up", but the BAY already sells collegiate type clothing in its department stores, under its own trade marks and under the logo or device of some universities and colleges. The problem for the appellant arises when it seeks to employ a trade mark with a track-record for being confusing, BAYLOR, to market collegiate type clothing as if that university were a clothing department of a department store. Such is a relevant surrounding circumstance. One cannot too often reiterate that marks such as BAYLOR UNIVERSITY, or BAYLOR U. would not be so problematic.

[21]      In terms of famous marks, such as the corporate respondent's in Canada, the above cited United Artists v. Pink Panther is also instructive. Here is the majority's observation at pp. 95 and 96:

[41] In Berry Bros. & Rudd Ltd. v. Planta Tabak-Manufactur Dr. [(1980) 53 C.P.R. (2d) 130 (F.C.T.D.], the applicant wished to register the trade mark CUTTY SARK, for use in relation to tobacco products. The opponent owned the famous trade mark, CUTTY SARK, associated with scotch whisky. Mr. Justice Cattanach found that the case boiled down to this main question:

The dispute in this matter resolves itself into the real issue between the parties as to whether, in view of the long use and reputation acquired by the appellant of its trade mark CUTTY SARK in association with whisky so that it merits the description of a "famous mark", the respondent has been able to establish, as it is its onus to do, that the difference in wares is such as to avoid any likelihood of confusion.

Thus, for Cattanach J., the fact that a mark was very famous did not automatically prohibit its use by other persons in fields outside those used by the owner of that mark. What the extended ambit of protection meant was that the onus on other factors became heavier if the applicant was to satisfy the Registrar or the Court that the public would not be confused. In that case, he found that there was a connection between alcoholic beverages and tobacco products so that it was not unlikely that a consumer might presume that the producer of Cutty Sark Tobacco was one and the same as the producer of Cutty Sark Whisky.

The above thoughts redound in the respondent's favour here, as do those expressed in paragraphs through to [56], the conclusion of the majority's reasons.

[22]      The Court in the Pink Panther case, makes it plain, at p. 97, that the wide scope of protection afforded by a trade mark's fame is relevant only when applying it to a connection between the applicant's and the opponent's trade and services. Here both parties apply their respective marks to collegiate clothing which both parties offer for sale through similar, if not the same, channels of trade. The respondent's trade marks are therefore the weightier here because of their fame in Canada, and the appellant has not displaced the onus to persuade this Court otherwise.

[23]      There is a precedent for this finding, in support of the chairman's decision, in Hudson's Bay Co. v. Peoples Jewellers Ltd. (1992) 46 C.P.R. (3d) 249 (TMOB) rendered by the same chairman, Mr. Partington, who found, (at p. 261):

Having regard to the above and, in particular, the evidence of Ms. Rick, I have concluded that the applicant has failed to discharge the legal burden upon it in respect of the issue of confusion between the trade mark BAYLOR and the opponent's registered trade marks THE BAY and THE BAY & Design. As a result, the applicant's trade mark is not registrable in view of the provisions of s.12(1)(d) of the Trade Marks Act.

The refusal of the appellant's application for the same word, BAYLOR, is not unheard of, nor yet unthinkable.

[24]      Having considered the parties' oral and written arguments, the Court adopts the respondent's arguments as being the more reasonable and correct.

[25]      Accordingly this appeal must be dismissed and the impugned decision, dated September 29, 1997, rendered by G.W. Partington, Chairman, Trade Marks Opposition Board must be affirmed. The Registrar of trade marks is directed to reject application No. 711,942. The corporate respondent shall have its party-and-party costs of this appeal from the appellant. The Registrar is neither awarded nor made liable for any costs herein.

                                

Ottawa, Ontario                          Judge

December 15, 1998