Date: 20030318
Docket: T-222-01
Neutral citation: 2003 FCT 320
BETWEEN:
AMERICAN SPORTING GOODS CORPORATION
Applicant
and
SEARS CANADA INC.
Respondent
REASONS FOR ORDER
GIBSON J.:
INTRODUCTION
[1] These reasons arise out of an application, perhaps more accurately described as an appeal, for review or reconsideration of a decision of the Registrar of Trade Marks (the "Registrar") wherein the Registrar refused the application of American Sporting Goods Corporation (the "applicant") for registration of the trade mark NEVADOS, under application Serial No. 781,939. The applicant's application was based upon the use of the trade mark in Canada since at least as early as March 1994, originally stated to be in association with:
Leather and imitations of leather, travel bags, book bags, tote bags, overnight bags, duffle bags, carry-on bags, athletic bags, all purpose sports bags, gym bags, knapsacks and back packs; clothing, namely, pants, shirts, shorts, sweaters, sweat tops, sweat pants, t-shirts, jackets, socks; footwear namely, hiking boots, sandals, casual shoes, shoes, boots, slippers.[1]
[2] The applicant's application for registration of the trade mark NEVADOS was filed on the 3rd of May, 1995. On the 28th of May, 1998, the application for registration was amended to restrict the statement of wares to:
Footwear, namely, hiking boots, sandals, heavy-duty athletic shoes and boots.
[3] The application or appeal before the Court was initiated in accordance with section 56 of the Trade-marks Act[2] (the "Act"). Subsections 56(1) and (2) of the Act read as follows:
56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
(2) An appeal under subsection (1) shall be made by way of notice of appeal filed with the Registrar and in the Federal Court.
56. (1) Appel de toute décision rendue par le registraire, sous le régime de la présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui suivent la date où le registraire a expédié l'avis de la décision ou dans tel délai supplémentaire accordé par le tribunal, soit avant, soit après l'expiration des deux mois.
(2) L'appel est interjeté au moyen d'un avis d'appel produit au bureau du registraire et à la Cour fédérale.
[4] The decision of the Registrar that is under review or appeal is dated the 7th of December, 2000.
THE PARTIES
[5] The materials which are before the Court, which are extensive, disclose little regarding the applicant, American Sporting Goods Corporation. The most relevant information on the record is contained in the following paragraph from the affidavit of John W. Thomas, sworn the 30th of April, 1998[3]:
8. American Sporting Goods Corporation presently distributes athletic shoes under the AVIA trademark in all geographical locations in Canada. The goods are sold through local distributors which are located throughout Canada. At the present time, American Sporting Goods Corporation is commencing the distribution in Canada of hiking and outdoor footwear designated by the NEVADOS trademark. The footwear designated by the NEVADOS trademark will be sold through the same distributors who currently distribute the AVIA athletic shoes. The hiking and outdoor footwear designated by the NEVADOS trademark will be sold to the public through sporting goods stores, shoe stores and general department stores. [emphasis added]
[6] The respondent Sears Canada Inc. (the "respondent") is described in an affidavit of Sharon Landry, sworn in September, 1997[4], in the following terms:
2. Sears is Canada's largest single retailer of general merchandise selling to the public through both retail stores and catalogue selling outlets. Sears is in fact Canada's only general merchandise catalogue retailer. Sears offers a wide variety of goods for sale in association with its own trade marks as well as the trade marks of others. These goods include major appliances, tools and hardware, home electronics, furniture, housewares, linens, clothing, footwear, stationery and toys. Sears currently operates 110 retail stores and approximately 1400 independent catalogue agent locations across Canada.
3. Sears is the owner of the trade marks NEVADA, NEVADA JEANWEAR and NEVADA JEANSWEAR ... which are widely used for a large range of fashion products, accessories, footwear and luggage for men, women and children. The NEVADA Trade Marks are one of Sears most prominent family of trade marks since the NEVADA Trade Marks are used throughout the fashion department for men, women and children as well as for various other products.
4. Sears is the owner of Canadian trade mark registrations for NEVADA and NEVADA JEANWEAR. The trade mark NEVADA JEANWEAR is registered under Registration No. 378,286 dated January 18, 1991 for clothing namely jeans, pants, jackets, skirts, jumpsuits, shorts, shirts and t-shirts. The trade mark NEVADA is registered under Registration No. 422,608 dated January 28, 1994 for clothing, namely jeans, pants, jackets, skirts, jumpsuits, shorts, shirts and t-shirts; sweaters, sweat tops, sweat pants, bathing suits, cover-ups, blazers, dresses and culottes; accessories, namely handbags, satchels, duffel bags and knapsacks, scarves, hats, belts, gloves, mitts, sunglasses and socks; footwear, namely shoes, boots and slippers; underwear, namely panties, camisoles, crop tops, body suits and bike shorts. ...
THE BACKGROUND
[7] As earlier noted, the applicant, on the 3rd of May, 1995, filed application No. 781,939 to register the trade mark NEVADOS, based on use in Canada since at least as early as March, 1994, in association with a wide range of goods. The applicant's application for registration was advertised for opposition in the Trade-Marks Journal on the 12th of June, 1996.
[8] The respondent filed its statement of opposition to the applicant's application for registration of the trade-mark NEVADOS on the 12th of August, 1996. The applicant served and filed a counter statement in response on the 10th of January, 1997, later revised on the 6th of October, 1997. The respondent amended its statement of opposition on the 10th of September, 1997 and again on the 18th of January, 1999. The respondent based its opposition on the following grounds as extracted from the decision under review:
a) The applied for trade-mark is not registrable in view of paragraph 12(1)(d) of the Trade-marks Act in that the trade-mark NEVADOS is confusing with the opponent's registered trade-marks [NEVADA, NEVADA JEANWEAR and NEVADA JEANSWEAR].
. . .
b) The applicant is not the person entitled to registration pursuant to subsection 16(1) of the Trade-marks Act because, as of the claimed date of first use, the applicant's trade-mark NEVADOS was confusing with the trade-marks NEVADA, NEVADA JEANWEAR and NEVADA JEANSWEAR which had been previously used in Canada by the opponent in association with the wares covered in its trade-mark registrations ... .
c) The applicant's trade-mark is not distinctive pursuant to section 2 of the Trade-marks Act because the applicant's trade-mark does not distinguish and is not adapted to distinguish the wares of the applicant from the wares of the opponent because of the opponent's prior use of its trade-marks NEVADA, NEVADA JEANWEAR and NEVADA JEANSWEAR in association with the wares covered in its trade-mark registrations ... .[5]
[9] As earlier noted, on the 28th of May, 1998, the applicant amended its statement of wares in relation to the trade-mark NEVADOS, to very substantially restrict it to what I will describe as specialty footwear.
[10] Quantitatively, substantial evidence was filed, both on behalf of the applicant and the respondent, before the Registrar. I will have more to say later in these reasons about the quality of the evidence filed.
THE DECISION UNDER REVIEW
[11] After noting the grounds of opposition as quoted in part earlier in these reasons, the Registrar, through his representative, G.W. Partington, Chairperson, Trade-marks Opposition Board, went on to note:
In determining whether there would be a reasonable likelihood of confusion between the applicant's trade-mark and the opponent's registered trade-marks within the scope of subsection 6(2) of the Trade-marks Act, the Registrar must have regard to all the surrounding circumstances, including those which are specifically enumerated in subsection 6(5) of the Act. Further, the Registrar must bear in mind that the legal burden is on the applicant to establish that there would be no reasonable likelihood of confusion between its trade-mark and the opponent's registered trade-marks as of the date of my decision, the material date in relation to the paragraph 12(1)(d) ground. [Registrability] ...[6]
[12] With regard to the first ground of opposition, that is to say, registrability, the Registrar concluded in the following terms:
Having regard to the foregoing [an analysis of "...all of the surrounding circumstances..." relating to confusion as required by subsection 6(5) of the Act] and, in particular, to the degree of similarity between the applicant's trade-mark NEVADOS and the opponent's registered trade-mark NEVADA as applied to overlapping wares which could travel through the same channels of trade, and bearing in mind that the opponent has established that its inherently weak trade-mark NEVADA has become known in Canada particularly in association with clothing, I find that the applicant has failed to meet the legal burden on it of showing that there would be no reasonable likelihood of confusion between the trade-marks at issue. Thus, the first ground of opposition is successful.[7]
[13] After noting that the applicant's trade-mark NEVADOS is inherently distinctive while the respondent's trade-mark NEVADA possesses relatively little inherent distinctiveness in view of its geographic significance[8], the Registrar concluded in respect of the second ground of opposition, that is to say, person entitled to registration:
Having regard to the degree of similarity between the applicant's trade-mark NEVADOS and the opponent's trade-mark NEVADA as applied to wares which could travel through the same channels of trade, and bearing in mind that the opponent has established that its inherently weak trade-mark NEVADA had become known in Canada in association with clothing as of March of 1994, I find that the applicant has failed to meet the legal burden on it in respect of the issue of confusion. Thus, the second ground is also successful.[9]
[14] The Registrar then disposed of the third ground of opposition, essentially without further analysis, in the following brief paragraph:
As both the paragraphs 12(1)(d) and 16(1)(a) grounds of opposition are successful, it follows that the applicant's trade-mark was not distinctive as of the date of opposition. Hence, the third ground of opposition is also successful.[10]
THE ISSUES
[15] Counsel for the applicant went on at substantial length, almost three (3) full pages in the applicant's Memorandum of Fact and Law, to elaborate the points in issue before this Court. By contrast, counsel for the respondent succinctly stated the issues before the Court in the following terms: first, would the "substantial" new evidence filed before this Court have materially affected the Registrar's findings on the issue of confusion; secondly, what standard of review applies with respect to the decision of the Registrar; and thirdly, should this Court interfere with the Registrar's decision that the applicant before this Court did not overcome its onus of showing no reasonable likelihood of confusion.
[16] In the portion of these reasons under the heading "Analysis", I will, in general terms, adopt the respondent's description of the issues. That being said, I will deal first with the issue of burden of proof and relevant dates. I will then turn to the issue of standard of review, then to the impact, if any, of the new evidence filed before this Court, and finally to the substantive issue of whether, in the light of the new evidence before this Court and the evidence that was before the Registrar, this application or appeal warrants the intervention of this Court.
THE STATUTORY FRAMEWORK
[17] In addition to section 56 of the Act, quoted in part earlier in these reasons, a range of provisions of the Act have a bearing on the disposition of this application or appeal. What I determine to be the relevant provisions of the Act, in addition to section 56, are set out in the Schedule to these reasons.
ANALYSIS
a) Burden or onus and relevant dates
[18] On an application or appeal such as this, the applicant or appellant has the burden of establishing that the Registrar made an error in law or exercised his discretion based on a misinterpretation of the evidence before him[11].
[19] As noted by the Registrar in the decision under review, the material date in relation to a challenge to registrability on the basis of confusion with a registered trade-mark is the date of the Registrar's decision[12].
[20] The relevant date in relation to the issue of entitlement to registration under subsection 16(1) of the Act is the date on which the applicant or his predecessor in title first used the mark or made it known, on the facts of this matter as alleged by the applicant, March, 1994. That relevant date is reflected in the terminology of subsection 16(1) of the Act, itself.
[21] Finally, the relevant date for determining whether the applicant's trade-mark is distinctive is the date of the original statement of opposition filed on behalf of the respondent, namely, the 12th of August, 1996[13].
[22] None of the foregoing propositions was substantially in dispute before me.
b) Standard of Review
[23] In Molson Breweries, a Partnership v. John Labatt Ltd.[14], Justice Rothstein, for the majority of the Court of Appeal, wrote at paragraph [29]:
...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.[15]
c) The new evidence before the Court
[24] In quantitative terms, substantial new evidence was filed before this Court, both on behalf of the applicant and on behalf of the respondent.
[25] The applicant's new evidence was in the form of an affidavit of Russ English, the president of Advanced Sports Inc., a wholesaler of footwear and apparel and, Mr. English attests, the exclusive licensee of the applicant in relation to its NEVADOS footwear in Canada. Mr. English attests that Advanced Sports Inc. has been selling NEVADOS footwear in Canada "since 1998". He provides no evidence of sales of NEVADOS footwear in Canada prior to that year. Mr. English attests to sales at wholesale to various retailers across Canada, not including the respondent, in excess of $585,000.00 in 1998, in excess of $10,000.00 in 1999, in excess of $102,000.00 in the year 2000 and in excess of $9,000.00 in the year 2001 to the date of attestation of his affidavit, the 23rd of March, 2001. Mr. English attests that the retail price of the footwear in question would be, on average, marked up by 50%. Mr. English identifies as exhibits to his affidavit "a random selection of copies of actual invoices... showing sales to various customers throughout Canada during the years 1998 to 2001" and catalogues for the years 1999 to 2001. He attests that Advanced Sports Inc. no longer has in its possession a copy of its 1998 catalogue.
[26] The respondent filed before this Court a third affidavit of Sharon Landry sworn the 28th of May, 2001. Two (2) earlier affidavits sworn by Ms. Landry who attests that, at the time of her latest affidavit, she was Manager, Trade-Marks and Administrative Services for the respondent, were before the Registrar.
[27] In her latest affidavit, Ms. Landry provides as exhibits additional samples of advertisements showing NEVADA footwear sold in Canada since 1993 and provides a breakdown of sales figures provided before the Registrar but not previously broken down, specifying Canadian sales figures for NEVADA footwear since 1995. Ms. Landry further provides under oath two (2) excerpts from 1993 catalogues showing use of the NEVADA trade-mark in association with footwear, updated Canadian sales figures for clothing bearing the NEVADA trade-marks, indicating sales in excess of $140,000,000.00 in the year 2000, updated numbers of advertising flyers and catalogues distributed to Canadians from 1997 to 2001 and a "conservative" calculation of the respondent's advertising expenditures related to NEVADA footwear amounting to in excess of $450,000.00 per year for catalogue advertising alone.
[28] Ms. Landry also provides evidence as to substantial market share for NEVADA hiking boots and women's jeans in the Canadian market in the year 2000, demonstrating that clothing and footwear are often sold through the same channels of trade and establishing that the respondent has sold in Canada a variety of other brand name hiking footwear since at least as early as 1983. Ms. Landry provides evidence that Advanced Sports Inc. sells some of the applicant's footwear, specifically athletic footwear, through the respondent's retail stores, albeit such footwear bears a brand name other than NEVADA.
[29] Finally, Ms. Landry provides evidence that the NEVADA line of products had been and continued to be sold through its stores and EATONS stores which were, at the date of attestation of her affidavit, owned or controlled by the respondent.
[30] Neither Mr. English nor Ms. Landry was cross-examined on the fresh evidence they placed before this Court.
[31] Qualitatively and quantitatively, the fresh evidence placed before this Court is of such a nature that, I am satisfied, it "...would have materially affected the Registrar's findings of fact or the exercise of his discretion in arriving at the decision under review or appeal." But, qualitatively, I am satisfied that both the evidence of Mr. English and, more particularly, that of Ms. Landry in her third affidavit, would have materially affected the Registrar's findings in favour of the respondent and against the applicant or appellant.
d) Reviewable error
i) Registrability - confusing with a registered trade-mark
[32] As earlier indicated, the Registrar found that the applicant had failed to meet the legal burden on it to show that there would be no reasonable likelihood of confusion between the trade-marks at issue. In so concluding, the Registrar, by reference to subsection 6(5) of the Act, took into account "...all the surrounding circumstances..." on the evidence before him including the inherent distinctiveness of the trade-marks at issue and the extent to which they had become known, the length of time the trade-marks had been in use, the nature of the wares in question, the nature of the trade and the degree of resemblance between the trade-marks. I find the analysis of the Registrar compelling. The conclusion that the Registrar arrived at on the strength of that analysis is, I am satisfied, further bolstered by the new evidence that is before the Court.
[33] While, as noted by the Registrar, the inherent distinctiveness of the respondent's trade-mark NEVADA and related marks is not great, particularly in view of its geographic significance, and the descriptive nature of the related trade-marks, having regard to the wares in relation to which they are utilized, adds little to the inherent distinctiveness, I am satisfied that the issue of inherent distinctiveness is not, of itself, determinative.
[34] The Registrar went on to comment on the extent to which the NEVADA trade-marks had become known and the length of time the marks had been in use. The respondent's new evidence strengthens both of those considerations in its favour while the applicant's new evidence, to the contrary, would tend to support a conclusion that the NEVADOS trade-mark had not been in use by or on behalf of the respondent, in Canada, and had not become known in Canada earlier than 1998. The applicant's evidence that was before the Registrar and that related to use in Canada, in the words of the Registrar's decision under appeal, "...fails to establish that its trade-mark NEVADOS has been used to date [that is, to the 7th of December, 2000] in Canada or that its [the applicant's] mark has otherwise become known to any measurable extent in this country." That weakness in the applicant's evidence for the period prior to 1998 is confirmed rather than overcome by the applicant's new evidence.
[35] The Registrar concluded:
I find that both the extent to which the trade-marks at issue have become known and the length of time the marks have been in use weighs in the opponent's [the respondent's] favour... as applied to clothing for men, women and children.
[36] Against the guidance on standard of review provided by Molson Breweries, supra, I find that the new evidence before the Court strengthens the Registrar's conclusion both in relation to clothing and, to a lesser extent, in relation to footwear. The extent to which it is strengthened in relation to footwear increases dramatically in relation to the post-1997 period that continues to the date of the Registrar's decision.
[37] The Registrar considered the "nature of the wares" and the "nature of the trade" factors, paragraphs 6(5)(c) and (d) of the Act together. He commented:
There is an overlap between the applicant's "Footwear namely, hiking boots, sandals, heavy-duty athletic shoes and boots", and the opponent's "footwear, namely shoes, boots and slippers" covered in [the] registration ... for the trade-mark NEVADA. Moreover, I would expect that there could be a potential overlap in the nature of the trade of the parties.
Both of these determinations are strengthened by the new evidence that is before the Court. Once again, on the basis of the guidance provided by Molson Breweries, supra, I conclude that the totality of the evidence weighs against the applicant and in favour of the respondent.
[38] The fifth factor enumerated in subsection 6(5) of the Act is the degree of resemblance between the trade-marks. On this factor, the Registrar concluded:
...I do not consider that the average consumer would consider that these marks suggest any ideas in common.
Once again, on the totality of the evidence, the new evidence before the Court not speaking in any significant way to this issue, I reach the same conclusion as the Registrar.
[39] The Registrar then turned to the issue of "further surrounding circumstances". I am not satisfied that the new evidence is material to this factor.
[40] I once again quote the Registrar's conclusion with regard to confusion and its impact on registrability:
Having regard to the foregoing, and, in particular, to the degree of similarity between the applicant's trade-mark NEVADOS and the opponent's registered trade-mark NEVADA as applied to overlapping wares which could travel through the same channels of trade, and bearing in mind that the opponent has established that its inherently weak trade-mark NEVADA has become known in Canada particularly in association with clothing, I find that the applicant has failed to meet the legal burden on it of showing that there would be no reasonable likelihood of confusion between the trade-marks at issue.
[41] Taking into account all of the evidence that was before the Registrar and the new evidence before the Court, and adopting the analysis of the Registrar in relation to the earlier evidence and concluding that that analysis is strengthened by the new evidence before the Court, I reach the same conclusion on this issue as did the Registrar.
ii) Person entitled - subsection 16(1) of the Act
[42] Once again, I repeat here the Registrar's conclusion on this issue:
Having regard to the degree of similarity between the applicant's trade-mark NEVADOS and the opponent's trade-mark NEVADA as applied to wares which could travel through the same channels of trade, and bearing in mind that the opponent has established that its inherently weak trade-mark NEVADA has become known in Canada in association with clothing as of March of 1994, I find that the applicant has failed to meet the legal burden on it in respect of the issue of confusion. Thus, the second ground [of opposition] is also successful.
[43] The new evidence before the Court does not speak in any significant way to the circumstances in March of 1994. That being said, once again I find the analysis of the Registrar with regard to this issue, based on the evidence that was before the Registrar, to be compelling. On the standard of review of correctness, if such be the appropriate standard on this issue, and certainly on a standard of review of reasonableness simpliciter, I am satisfied that the decision of the Registrar should stand.
iii) Distinctiveness
[44] The Registrar essentially chose not to deal with this issue. The Registrar wrote, and I repeat once again a quotation from earlier in these reasons:
As both the paragraphs 12(1)(d) and 16(1)(a) grounds of opposition are successful, it follows that the applicant's trade-mark was not distinctive as of the date of opposition. Hence, the third ground of opposition is also successful.
[45] I am satisfied that this conclusion was open to the Registrar, on a standard of review of correctness.
CONCLUSION
[46] Based upon the foregoing analysis, this application or appeal will be dismissed.
[47] Both parties sought costs of this application or appeal. I am satisfied that costs should follow the event. In the result, an Order of costs will go in favour of the respondent, such costs to be taxed on the ordinary scale in the event that an agreement as to quantum of costs is not arrived at between the parties.
________________________________
J. F.C.C.
Ottawa, Ontario
March 18, 2003
2. In this Act,
...
"confusing", when applied as an adjective to a trade-mark or trade-name, means a trade-mark or trade-name the use of which would cause confusion in the manner and circumstances described in section 6;
...
"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;
...
6. (1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.
(2) 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 wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
...
2. Les définitions qui suivent s'appliquent à la présente loi.
...
« créant de la confusion » Relativement à une marque de commerce ou un nom commercial, s'entend au sens de l'article 6.
...
« 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.
...
6. (1) Pour l'application de la présente loi, une marque de commerce ou un nom commercial crée de la confusion avec une autre marque de commerce ou un autre nom commercial si l'emploi de la marque de commerce ou du nom commercial en premier lieu mentionnés cause de la confusion avec la marque de commerce ou le nom commercial en dernier lieu mentionnés, de la manière et dans les circonstances décrites au présent article.
(2) L'emploi d'une marque de commerce crée de la confusion avec une autre marque de commerce lorsque l'emploi des deux marques de commerce dans la même région serait susceptible de faire conclure que les marchandises liées à ces marques de commerce sont fabriquées, vendues, données à bail ou louées, ou que les services liés à ces marques sont loués ou exécutés, par la même personne, que ces marchandises ou ces services soient ou non de la même catégorie générale.
...
(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
(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
(b) the length of time the trade-marks or trade-names have been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
...
12. (1) Subject to section 13, a trade-mark is registrable if it is not
...
(d) confusing with a registered trade-mark;
...
16. (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with wares or services is entitled, subject to section 38, to secure its registration in respect of those wares or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with
(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;
...
(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) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus;
b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage;
c) le genre de marchandises, services ou entreprises;
d) la nature du commerce;
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.
...
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) elle crée de la confusion avec une marque de commerce déposée;
...
16. (1) Tout requérant qui a produit une demande selon l'article 30 en vue de l'enregistrement d'une marque de commerce qui est enregistrable et que le requérant ou son prédécesseur en titre a employée ou fait connaître au Canada en liaison avec des marchandises ou services, a droit, sous réserve de l'article 38, d'en obtenir l'enregistrement à l'égard de ces marchandises ou services, à moins que, à la date où le requérant ou son prédécesseur en titre l'a en premier lieu ainsi employée ou révélée, elle n'ait créé de la confusion_:
a) soit avec une marque de commerce antérieurement employée ou révélée au Canada par une autre personne;
...
19. Subject to sections 21, 32 and 67, the registration of a trade-mark in respect of any wares or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those wares or services.
...
19. Sous réserve des articles 21, 32 et 67, l'enregistrement d'une marque de commerce à l'égard de marchandises ou services, sauf si son invalidité est démontrée, donne au propriétaire le droit exclusif à l'emploi de celle-ci, dans tout le Canada, en ce qui concerne ces marchandises ou services.
...
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-222-01
STYLE OF CAUSE: AMERICAN SPORTING GOODS CORPORATION v.
SEARS CANADA INC.,
PLACE OF HEARING: OTTAWA, ONTARIO
DATE OF HEARING: JANUARY 8, 2003
REASONS FOR ORDER OF THE HONOURABLE MR. JUSTICE GIBSON
DATED: March 18, 2003
APPEARANCES:
Ms. Chantal Bertosa and. FOR APPLICANTS
Dr. Victoria Carrington
Mark. L. Robbins FOR RESPONDENTS
SOLICITORS OF RECORD:
Shapiro, Cohen FOR APPLICANTS
112 Kent Street, Suite 2001
Ottawa, Ontario,
K1P 6P1
Bereskin & Parr FOR RESPONDENTS
40th Floor, Scotia Plaza
40 King Street West
Toronto, Ontario
[1] Applicant's Record, Tab 2, page 8.
[2] R.S.C. 1985, c. T-13.
[3] Applicant's Record, Volume 2, Tab 8, page 293.
[4] Applicant's Record, Volume 1, Tab 5, pages 24 and 25.
[5] Applicant's Record, Volume 1, Tab 2, pages 8 and 9.
[6] Applicant's Record, Volume 1, Tab 2, page 9.
[7] Applicant's Record, Volume 1, Tab 2, page 14.
[8] Applicant's Record, Volume 1, Tab 2, page 15.
[9] Applicant's Record, Volume 1, Tab 2, page 16.
[10] Applicant's Record, Volume 1, Tab 2, page 16.
[11] Hugo Boss AG v. Paragon Clothing Ltd.(1994), 58 C.P.R. (3d) 504 at 510 (F.C.T.D.).
[12] Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at 424 (F.C.A.).
[13] Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.).
[14] (2000), 5 C.P.R. (4th) 180 (F.C.A.).
[15] For more recent authority to the same effect, see: Astrazeneca AB v. Novopharm Limited et al [2003] F.C.J. No. 166 (online: QL) at paragraphs 8 and 12 (F.C.A.), released after the hearing of this matter.
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