[1] This is an appeal from the decision of the Trade-marks Opposition Board, as delegate of the Registrar of Trade-marks, ("Registrar") by which the Registrar refused the application of Nefco Furniture Ltd. ("applicant" or "Nefco") to register the trade-mark MATTRESS EXPRESS for use in association with the retail sale of beds, mattresses, box springs, bedding products and components therefore.
[2] The application was filed by Nefco on March 10, 1997. It was subsequently amended on July 24, 1997 to disclaim the right to the exclusive use of the word MATTRESS apart from the trade-mark. The application for registration was advertised in the Trade-mark's Journal on December 3, 1997. The Brick Warehouse Corporation ("respondent" or "Brick") filed a statement of opposition on January 21, 1998. The grounds of opposition were stated as follows:
(a) Prior to the date of filing of the opposed application the opponent had used and advertised its family of trade marks BEDDING EXPRESS, SOFA EXPRESS, THE BRICK EXPRESS, TELEVISION EXPRESS, APPLIANCE EXPRESS, in Canada in association with the operation of retail furniture stores selling, amongst other goods, beds, sofa beds, mattresses, box springs, bedding products, appliances, televisions, and audio-visual equipment.
(b) The trade mark MATTRESS EXPRESS is not registrable in view of Section 12(1)(d) of the Trade-marks Act, because it is confusing with each of the following registered trade-marks:
Registration No. Trade-mark Services
379,559 BEDDING EXPRESS operation of a furniture and appliance store
438,606 SOFA EXPRESS operation of a furniture and appliance store
387,554 THE BRICK EXPRESS operation of a store selling furniture, appliances, televisions and audio-visual equipment ordered by the customer from backlit photographic representations displayed at the store
395,630 TELEVISION EXPRESS operation of a store selling televisions, audio-visual equipment, furniture and appliances
395,631 APPLIANCE EXPRESS operation of a furniture and appliance store
Printouts of the registrations are attached.
(c) The applicant is not the person entitled to registration of the advertised mark having regard to the provisions of Section 16(3)(a) of the Trade-marks Act, because at the date of filing of the opposed application, it was confusing with the trade marks BEDDING EXPRESS, SOFA EXPRESS, THE BRICK EXPRESS, TELEVISION EXPRESS, APPLIANCE EXPRESS that had been previously used in Canada by the opponent in association with the services set out above, which trade marks had not been abandoned at the date of advertisement of the opposed application.
(d) The trade mark sought to be registered is not distinctive since it does not actually distinguish nor is it adapted to distinguish the applicant's services from the services of the opponent, by reason of the use, advertising and reputation of the opponent's trade marks referred to above.
[3] The applicant filed its counterstatement on or about February 25, 1998.
[4] Both parties filed evidence in support of their position before the Registrar. The Brick filed certified copies of The Brick's Canadian trade-mark registrations of the marks BEDDING EXPRESS, SOFA EXPRESS, THE BRICK EXPRESS, TELEVISION EXPRESS, APPLIANCE EXPRESS, and NOBODY BEATS THE BRICK. The affidavit of the Brick's Vice-President of Advertising was filed wherein he swore to the Brick's use of the marks BEDDING EXPRESS, THE BRICK EXPRESS, TELEVISION EXPRESS, APPLIANCE EXPRESS and NOBODY BEATS THE BRICK. The Vice-President also provided information about the history and nature of the Brick's business, as well as some sales figures.
[5] Nefco filed the affidavit of its Vice-President of Merchandise and Marketing. In it, he swore that: the applicant had used the mark MATTRESS EXPRESS on signs from March 1997 and in newspaper advertisements from March 1998; the applicant also owned the registered trade-mark LEATHER EXPRESS for use in association with the operation of retail home furnishing stores; and that at no time since March 1998 had he been informed of any confusion by any customer or potential customer, nor was he aware of any other incident alleging confusion between Nefco and the Brick as a result of the use of the trade-mark MATTRESS EXPRESS by Nefco. The Vice-President also swore that he was told by Nefco's counsel that they had conducted a computer search of the Canadian Trade-mark database on April 21, 1999 for relevant registrations which included the word EXPRESS. Exhibited to his affidavit were the results of that search.
[6] Neither deponent was cross-examined upon his affidavit.
THE REGISTRAR'S DECISION
[7] The Registrar decided the application on the basis of the first ground of opposition, which was based on paragraph 12(1)(d) of the Trade-marks Act, R.S.C. 1985, c. T-13 ("Act") and which alleged that MATTRESS EXPRESS is not registrable because it is confusing with each of the opponent's trade-marks BEDDING EXPRESS, SOFA EXPRESS, THE BRICK EXPRESS, TELEVISION EXPRESS and APPLIANCE EXPRESS. The Registrar expressed doubt that the second and third grounds of opposition would have succeeded. In coming to her conclusion the Registrar made the following findings:
i) The evidence provided by the applicant's Vice-President about the solicitor's computer search was hearsay and so was disregarded.
ii) Neither the applicant's mark MATTRESS EXPRESS nor the opponent's mark BEDDING EXPRESS has much inherent distinctiveness. Both MATTRESS and BEDDING have been disclaimed because they describe the character of the parties' services. The word EXPRESS is suggestive of quick service.
iii) At March 10, 1997 (the date of filing of Nefco's application) the extent to which the marks MATTRESS EXPRESS and BEDDING EXPRESS had each become known favoured the opponent; as of January 21, 1998 (the date of filing of the opposition by the Brick) it was difficult to assess if this factor favoured either party; and at the date of her decision the opponent's mark BEDDING EXPRESS was no longer known to any significant extent. The applicant's mark showed only a low level of being known.
iv) The services of the applicant and the opponent overlap significantly because both parties use their marks in association with the retail sale of furniture, including mattresses. There was no significant difference between the two parties' channels of trade.
v) There is a high degree of resemblance between the marks in the ideas suggested by them. Both marks start with a bed-related word and end with the word EXPRESS. She observed that "bedding" is defined as including mattresses. There is a lesser degree of resemblance between the marks in appearance and sound.
vi) The evidence of the lack of confusion was not particularly relevant because the applicant's use of the trade-mark MATTRESS EXPRESS had been somewhat limited. It was not clear that the opponent operates a store in the same geographic area as the applicant's stores.
vii) The apparent discontinuance of the respondent's mark was a surrounding circumstances which she noted when considering the factors enumerated in paragraphs 6(5)(a) and (b) of the Act.
viii) Information about NOBODY BEATS THE BRICK was not relevant to the issue of likelihood of confusion between MATTRESS EXPRESS and any of the opponent's other marks.
ix) Her decision would not be affected by whether or not the opponent has a family of marks.
[8] The Registrar concluded that the applicant had failed to show that there was no reasonable likelihood of confusion between the applicant's mark MATTRESS EXPRESS and the opponent's registered trade-mark BEDDING EXPRESS as of July 10, 2001, the date of the decision of the Registrar. Therefore, the opposition based on paragraph 12(1)(d) of the Act succeeded.
ADDITIONAL EVIDENCE ON APPEAL
[9] On this appeal the applicant filed printouts of lists of registered marks, expunged registrations, abandoned applications and pending applications with respect to marks that include the word EXPRESS, and printouts of trade-mark registrations that include the word EXPRESS. Affidavit evidence was also filed by Nefco as to the proximity of its store to the Brick's store. Also in evidence was that the Registrar had issued a notice to the Brick pursuant to section 45 of the Act concerning its registration of the mark BEDDING EXPRESS, and that the trade-mark BEDDING EXPRESS was expunged as of September 5, 2002 pursuant to subsection 45(4) of the Act. This evidence is discussed in more detail below under the heading standard of review.
THE ISSUE ON APPEAL
[10] A single issue is raised by Nefco on this appeal from the Registrar's decision. Did the Registrar err in holding that Nefco did not meet the onus upon it to show that there is no reasonable likelihood of confusion between its trade-mark MATTRESS EXPRESS and the Brick's registered trade-mark of BEDDING EXPRESS as of July 10, 2001?
[11] The Brick limited its submissions to whether the mark MATTRESS EXPRESS is confusing with the registered trade-mark BEDDING EXPRESS. The Brick did not rely upon confusion with any of its other marks, or with a family of trade-marks.
THE STANDARD OF REVIEW
[12] Decisions of the Registrar, whether of fact, law or discretion, within the Registrar's area of expertise, are to be reviewed on a standard of reasonableness simpliciter. Where additional evidence is adduced before the Court that would have materially affected the Registrar's findings of fact or exercise of discretion, a judge must come to his or her own conclusion as to the correctness of the Registrar's decision. See: Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 at page 168 or paragraph 51 (C.A.); leave to appeal to the Supreme Court of Canada dismissed September 14, 2000, [2000] S.C.C.A. No. 161.
[13] As additional evidence was adduced on this appeal it is therefore necessary first to determine whether such evidence would have materially affected the Registrar's findings of fact or exercise of discretion.
[14] The new evidence consists of the following:
i) Computer searches of the Canadian Trade-marks database, including:
a) A search of all database entries for trade-marks including the word EXPRESS between January 1, 1865 and December 4, 2001. There were 1,531 such entries.
b) The same search modified so as to include the word "retail" in the description of wares or services. There were 148 such entries.
c) The original search modified to include the word "furniture" in the description of wares or services. There were 28 such entries.
ii) Copies of the registration information page for 18 of the 21 trade-mark registrations referred to in the affidavit of the Vice-President, Merchandise and Marketing filed on Nefco's behalf before the Registrar. This was the state of the register evidence which the Registrar did not consider on the ground that it was hearsay;
iii) Information about the applicant's retail locations as follows:
I am familiar with the Applicant's retail locations referred to in paragraph 4 of the Affidavit of Daniel Adelman. I am also aware that a number of years prior to 1998, the Respondent opened and has since operated a retail location at 1065 St. James Street in Winnipeg, which is within four blocks of the Applicant's Ellice Avenue location.
iv) Evidence that the Registrar had issued a notice to the respondent pursuant to section 45 of the Act to furnish evidence of the use of the mark BEDDING EXPRESS within the last three years, and that such trade-mark had been expunged as of September 5, 2002 by reason of the respondent's failure to file the required evidence of use.
[15] In my view, this evidence would not have materially affected the Registrar's decision for the following reasons. Dealing with each category in evidence in the order set out above, I conclude that:
i) even if admissible, the results of the computer searches filed as additional evidence are too vague to be material. The search results consist simply of a list of trade-marks including expunged registrations, and abandoned and pending applications. Examples of the information contained in the listings are:
· "Trademarks: AMERICAN EXPRESS & DESIGN, REGISTERED, 0541438, TMA315618 (O.OK)." This was a listing obtained in the search of database entries for trade-marks including the word EXPRESS where the word "retail" is included in the description of wares or services;
· "Trademarks: DEUTSCHE POST WORLD NET MAIL EXPRESS LOGISTICS FINANCE & DESIGN (DESIGN #1), SEARCHED, 1054177 (O.OK)." This was a listing obtained in the search of database entries for trade-marks including EXPRESS where the word "furniture" is contained in the description of wares and services.
It is not possible to tell exactly what wares or services are covered by each listing.
ii) of the 21 registrations that were before the Registrar, there is now information included with respect to wares and services associated with the marks. However, only three relate to the services covered by the mark MATTRESS EXPRESS. They are: LEATHER EXPRESS, EXPRESS SERIES, and FURNITURE EXPRESS. The Registrar considered the registration of LEATHER EXPRESS in her decision. As for the two other marks, state of the register evidence is relevant to the extent that inferences can be drawn from it about the state of the marketplace. These two registrations would have been insufficient to show that the state of the marketplace was such that the introduction of another EXPRESS trade-mark would not cause confusion. See: Welch Foods Inc. v. Del Monte Corp. (1992), 44 C.P.R. (3d) 205 (F.C.T.D.).
iii) the Registrar did not consider the evidence of lack of confusion to be particularly relevant for reasons relating to Nefco's limited use of the trade-mark and the lack of evidence as to where the stores operated. Even with the new evidence of the geographic proximity of the retail outlets, given the evidence of the applicant's limited use of the mark, I am not satisfied that clarifying the evidence of physical proximity would have had a material effect upon the Registrar's decision.
iv) the relevant date for assessing confusion is the date of the Registrar's decision. The fact that the section 45 notice issued and the expungement occurred after the date of the Registrar's decision makes this evidence irrelevant. Further, the Registrar concluded that it had been seven years since the last evidenced use of the mark BEDDING EXPRESS. She further concluded it was no longer known to any significant extent, and acknowledged that non-use of a registered trade-mark is a relevant factor. Thus, the Registrar was alive to the lack of use of the Brick's mark. She doubted that the Brick's opposition under section 16 of the Act would have succeeded, noting that the Brick would have had to establish non-abandonment of the mark BEDDING EXPRESS as of the date of advertisement of Nefco's opposition. Given these factors, I am not persuaded that knowledge of the section 45 process would materially have affected the decision of the Registrar.
[16] Given that I have concluded that the additional evidence would not have materially affected the decision, I turn next to consider whether the decision of the Registrar was clearly wrong, which equates to review on a standard of reasonableness simpliciter.
[17] As I am not required to come to my own conclusion on the record, it is not necessary for me to consider whether the material date for such de novo review is the date on which the Court renders its decision (as raised in passing in Baylor University v. Governor and Co. of Adventurers Trading into Hudson's Bay (2000), 8 C.P.R. (4th) 64 at footnote 15 (C.A.).
RELEVANT LEGISLATION
[18] In order to determine whether trade-marks are confusing, subsection 6(5) of the Act directs that the Registrar is to have regard to all of the surrounding circumstances, including:
i) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
ii) the length of time the trade-marks or trade-names have been in use;
iii) the nature of the wares, services, or business;
iv) the nature of the trade; and
v) the degree of resemblance between the trade-marks or trade-names in appearance, or sound or any ideas suggested by them.
APPLICABLE PRINCIPLES
[19] The general principles to be applied were reviewed by Mr. Justice Malone for the Federal Court of Appeal in United States Polo Assn. v. Polo Ralph Lauren Corp. (2000), 9 C.P.R. (4th) 51. There Mr. Justice Malone wrote at paragraph 18:
A review of some of the leading cases also establishes some practical guidelines. For example, the Court is to put itself in the position of an average person who is familiar with the earlier mark but has an imperfect recollection of it; the question is whether the ordinary consumer will, on seeing the later mark, infer as a matter of first impression that the wares with which the second mark is used are in some way associated with the wares of the earlier. With respect to the degree of resemblance in appearance, sound or ideas under subparagraph 6(5)(e), the trade-marks at issue must be considered in their totality. As well, since it is the combination of elements that constitutes a trade-mark and gives distinctiveness to it, it is not correct to lay the trade-marks side by side and compare and observe similarities or differences among the elements or components of the marks when applying the test for confusion. In addition, trade-marks must not be considered in isolation but in association with the wares or services with which they are used. When dealing with famous or well-known marks, it may be more difficult to demonstrate that there is no likelihood of confusion, especially if the nature of the wares are similar . Lastly, the enumerated factors in subsection 6(5) need not be attributed equal weight. Each particular case of confusion might justify greater emphasis being given to one criterion than to others. [footnotes omitted]
[20] The onus is upon the applicant to show that there is no likelihood of confusion with the registered trade-mark in the mind of the average consumer.
ANALYSIS
(i) Inherent Distinctiveness
[21] Turning to consideration of the items listed under subsection 6(5) of the Act, the applicant does not challenge the finding of the Registrar that neither mark has much inherent distinctiveness so that this factor favours neither party. Weak marks are entitled to a narrower range of protection. See: Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.).
(ii) Length of Time in Use
[22] The relevant date for determining confusion under paragraph 12(1)(d) of the Act is the date of the determination of the opposition by the Registrar on the evidence. In the present case, this is agreed to be July 10, 2001. At that time the evidence as to the Brick's use of its mark was that it had been extensively advertised between 1990 and 1993, but that more than seven years had elapsed since the last evidenced use of BEDDING EXPRESS.
[23] As the Registrar correctly noted, it was fair to conclude that BEDDING EXPRESS is no longer known to any significant extent more than seven years after its last use.
(iii) Nature of the Wares, Services or Business
[24] No challenge is made to the Registrar's finding that the services overlap significantly because both parties use their marks in association with the retail sale of furniture, including mattresses.
(iv) Nature of the Trade
[25] The Registrar's finding that there was no significant difference between the parties' channels of trade was well-founded and is not challenged on this appeal.
(v) Similarity in Appearance, Sound, and Idea Suggested
[26] The Registrar found a high degree of resemblance between the marks in the ideas suggested by them, and a lesser degree of resemblance between the marks in appearance and sound. This finding is not challenged.
(vi) Other Surrounding Circumstances
[27] The Registrar gave little weight to the evidence of lack of confusion, and declined to consider the apparent discontinuance of the opponents mark as a further surrounding circumstances. The applicant submits that in so doing the Registrar erred.
[28] I respectfully disagree. With respect to the weight to be given to the evidence of lack of confusion, the Registrar gave little weight to the evidence, in part because Nefco's use of the mark had been somewhat limited. Due to the Brick's non-use of the mark, this was not a case where there had been concurrent use of the marks with no confusion. The Registrar was, in my view, entitled to give the evidence little weight.
[29] As to the apparent discontinuance of use of the Brick's mark, I agree with the Registrar that this factor had already been considered under paragraphs 6(5)(a) and (b) of the Act. It was not necessary for this factor to be double-counted.
[30] The substantial error alleged is that the Registrar did not properly consider the effect of non-use of the opponents mark in view of her findings that there was no evidence the Brick's mark was used after 1993, so that the mark BEDDING EXPRESS was no longer known to a significant effect.
[31] The central issue before the Registrar was whether the trade-marks in question are confusing. The test for confusion at subsection 6(1) of the Act is whether the ordinary consumer will believe that the wares with which the second mark is used are in some way associated with the wares of the first mark. It is a test of first impression and imperfect recollection, and ultimately a determination of fact. Because it is in every case a question of fact, the factors listed in subsection 6(5) of the Act need not be given equal weight.
[32] In the present case, while some factors such as the nature of the wares, the nature of the trade, and the degree of resemblance between the marks suggest a likelihood of confusion, in my view, the determining factors are the inherent weaknesses of the marks and the Registrar's correct finding that as of the date of her decision the Brick's mark was not known to any significant degree. The weakness of the marks and the fact that the first mark was no longer known to any significant extent fundamentally contradict the Registrar's finding that the applicant had failed to show that there was no reasonable likelihood of confusion. A weak mark that has been out of use for so long that it is no longer known to any significant degree cannot be a source of confusion.
[33] The Registrar's decisions are to be afforded some measure of deference. However, review on the standard of reasonableness simpliciter requires that the Court ask whether, after a somewhat probing examination, the reasons of the Registrar, when taken as a whole, support the decision. See: 2003 SCC 20">Law Society of New Brunswick v. Ryan, 2003 SCC 20 at paragraph 47. For the reasons set out above, I have respectfully concluded that the reasons as a whole do not support the decision. It follows that the appeal should be allowed, with costs.
ORDER
[34] IT IS HEREBY ORDERED THAT:
1. The appeal is allowed, and the decision of the Registrar refusing the applicant's application pursuant to subsection 38(8) of the Act is set aside.
2. The respondent shall pay to the applicant the costs of this appeal. If not agreed, such costs are to be assessed in accordance with the middle of column III of the table to Tariff B of the Federal Court Rules, 1998.
"Eleanor R. Dawson"
Judge
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1911-01
STYLE OF CAUSE: Nefco Furniture Ltd. v. The Brick Warehouse Corporation
PLACE OF HEARING: Winnipeg, Manitoba
DATE OF HEARING: February 11, 2003
REASONS FOR ORDER AND ORDER OF
THE HONOURABLE MADAM JUSTICE DAWSON
DATED: July 9, 2003
APPEARANCES:
Mr. Robert A. Watchman APPLICANT
Mr. Christopher Brett RESPONDENT
SOLICITORS OF RECORD:
Pitblado Buchwald Asper APPLICANT
Barristers and Solicitors
Winnipeg, Manitoba
Morris Rosenberg
Deputy Attorney General of Canada RESPONDENT
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