Cluett, Peabody Canada Inc. v. Effigi Inc., 2005 FC 400

                                                                                                                                  Date: 20050323

                                                                                                                             Docket: T-1549-04

Citation: 2005 FC 400

BETWEEN:

CLUETT, PEABODY CANADA INC.

Appellant

and

EFFIGI INC.

Respondent

REASONS FOR ORDER

de MONTIGNY, J.

[1]         This is an appeal by Cluett, Peabody Canada Inc. (the appellant) under section 56 of the Trade-marks Act (the Act) from a decision dated June 15, 2004, by the Registrar of Trade-marks. This decision found that the trade-mark of Effigi Inc. (the respondent), AEROPEAK BY DE UNGAVA, was unlikely to cause confusion with the appellant's ARROW type marks.

Facts

[2]         On December 4, 1998, Effigi filed an application for registration of the trade-mark AEROPEAK BY DE UNGAVA (Aeropeak) based on a proposed use in association with clothing and miscellaneous products.

[3]         This application for registration was published in the Trade-marks Journal on August 16, 2000.

[4]         On January 16, 2001, Cluett Peabody filed a statement of opposition to this application. This opposition was based on three grounds: (1) the Aeropeak mark was not registrable under paragraph 12(1)(d) of the Act since it would cause confusion with the appellant's Arrow marks (see Annex 1 for the list of the appellant's trade-marks); (2) Effigi was not the person entitled to registration under paragraph 16(3)(a); and (3) the Aeropeak mark was not distinctive within the meaning of section 2.

[5]         The appellant filed an affidavit with the Registrar to introduce copies of registration of its Arrow marks. The respondent filed an affidavit concerning the registration of its UNGAVA trade-mark for various kinds of clothing.

Registrar's decision

[6]         The Registrar began by noting that the initial onus of proof was on the opponent, to present enough evidence in support of each of its grounds of opposition to make a prima facie case for its claims. The onus then shifted to the applicant, to persuade the Registrar that the grounds of opposition should not be accepted. Finally, the Registrar added that the relevant dates for assessing the merit of the opponent's claims depended on the grounds alleged; in this case, the dates were of little importance and the parties did not, in fact, make an issue of them.

[7]         The Registrar then found there was a lack of evidence of use of the appellant's marks. Since an opponent who bases its opposition on the ownership and use of a series of marks must prove the use of each of the marks, the second and third grounds of opposition were dismissed.

[8]         On the first ground of opposition, the Registrar found that the use of the Aeropeak mark was not confusing with the Arrow marks, after analyzing the criteria in section 6 of the Act, which we will come back to later. He determined, first, that both marks had a certain distinctiveness; however, absent evidence of use of the marks, the Registrar was unable to determine to what degree the marks were known. Referring to the certificate of registration for the Arrow marks, the Registrar explained that these marks had been in use since 1949 and 1902 respectively; he concluded that this second criterion favoured Cluett Peabody.

[9]         At the hearing before the Registrar, the respondent conceded that the criteria in paragraphs (c) (nature of the wares) and (d) (nature of the trade) of subsection 6(5) of the Act favoured Cluett Peabody.

[10]       Finally, the Registrar thought the last criterion (degree of resemblance between the marks) was the most important, particularly when the wares covered by the marks were very similar. In this regard, he made the following observations. Visually, Aeropeak was distinguishable from the Arrow marks. In terms of pronunciation, there was no evidence as to how the words ARROW and AERO were pronounced by an Anglophone, a Francophone and a bilingual person, and more than one pronunciation was conceivable for each of these words. Also, the ideas suggested by the marks were different. This criterion therefore favoured Effigi, therefore. The Registrar concluded that the respondent had discharged its onus of showing that Aeropeak was unlikely to cause confusion with the Arrow marks. Cluett Peabody's opposition was therefore rejected.

Appellant's submissions

[11]       The appellant filed some supplementary affidavits: first, the affidavit of Sheree Smyth, introducing the trade-mark registrations for the Arrow series; second, the affidavit of Ian Ross, President and CEO of Cluett Peabody, explaining the presence and reputation of the Arrow marks in the Canadian industry, producing some examples of advertising and indicating the revenues associated with these marks and the places where they were sold. At the hearing, counsel for the appellant stated that this evidence had not been disputed. As for Brad Wiseman's affidavit, it describes the various pronunciations of the words ARROW and AERO according to nine dictionaries.

[12]       In terms of the standard of review, the appellant argues that the fresh evidence submitted in this appeal goes directly to the question of whether the respondent's proposed mark would cause confusion, and the correctness standard is therefore applicable. It further claims that it has discharged its onus of proof, while Effigi has produced no evidence to establish that its trade-mark would not be confusing.

[13]       The appellant then argues that confusion is at the core of the three grounds of opposition, and proceeds accordingly with its analysis of the criteria in subsection 6(5). On the first factor, it explains that its Arrow marks have an inherent distinctiveness and are well known in Canada, as established by the affidavit of Ian Ross. That affidavit also explains that Cluett Peabody has been using the Arrow mark since 1902.

[14]       On the third and fourth factors, the appellant states that the nature of the wares covered by both trade-marks is essentially similar. So too is the nature of the trade; the parties' wares could be sold in the same commercial establishments. The first four factors in subsection 6(5) would therefore work in its favour.

[15]       On the final factor, the degree of resemblance between the marks, the appellant claims that in Canada, as Brad Wiseman's affidavit indicates, the words Arrow and Aero are pronounced in the same way. This evidence has not been contradicted by the respondent. The appellant further argues that Arrow and Aero are phonetically identical. These words also have similar visual characteristics. The respondent has used as the first portion of its trade-mark (the first portion being the most important) the phonetic equivalent of the appellant's mark.

[16]       At the hearing, the appellant stressed the relationship among the various criteria in section 6, citing in the first place the great reputation of its mark. Since the wares covered by the marks are identical, the marks themselves should not be too similar for the risk of confusion is greater. Similarly, the appellant puts great emphasis on the fact that the first portion of the mark is the most important. It cites in support the decision in Conde Nast Publications Inc. v. Union des éditions modernes (1979), 46 C.P.R. (2d) 183 (F.C.).

[17]       The appellant further argues that it has established that it is the owner of a series of trade-marks, which entitles it to greater protection.

[18]       According to the appellant, therefore, the Aeropeak mark is not registrable under paragraphs 12(1)(d) and 16(3)(a) of the Act. The respondent has not discharged its onus or adduced any evidence. And the Aeropeak mark is not distinctive under section 2.

Respondent's submissions

[19]       In terms of the applicable standard of review in this case, the respondent argues that since the additional evidence filed by the appellant, taken as a whole, would have had no effect on the Registrar's findings or on the exercise of his discretion, the applicable standard is reasonableness simpliciter.

[20]       First, the Registrar had already assessed the circumstances relating to the nature of the wares and nature of the trade and noted the use of the Arrow mark for shirts since 1902, and found that the circumstances favoured the appellant. So the affidavit of Ian Ross could not have had any impact whatsoever on the Registrar's decision.

[21]       As to the affidavit of Sheree Smyth, the respondent submits that the documents introduced were already filed with another affidavit. Moreover, this affidavit adds some trade-marks that were not raised in the statement of opposition, and are therefore irrelevant. In the case of Brad Wiseman's affidavit, it confirms the Registrar's finding that more than one pronunciation was possible for these words; in any event, the respondent adds, pronunciation is but one of the factors in paragraph 6(5)(e).

[22]       In assigning decisive importance to the resemblance factor, the Registrar simply followed the case law, the respondent says. He applied the appropriate confusion test and was aware that the onus was on the respondent. And the respondent did in fact discharge its onus of proving that its Aeropeak mark was not confusing with the Arrow marks.

[23]       The Aeropeak mark is distinguishable from the Arrow marks, the respondent argues. First, there is more than one pronunciation for the words Arrow and Aero; this question is of lesser importance anyway, since the appellant's marks are prominently displayed on its products. Second, Federal Court of Appeal decisions have held that a mark must be considered in its totality, not just its initial elements, as the appellant would have it. Furthermore, the ideas suggested by the marks are different: the word "arrow" has nothing to do with the combination of the words AERO, which means "aeronautic", and PEAK, which means "summit". Likewise, even if the Registrar's decision was only on the ground of opposition based on paragraph 12(1)(d) of the Act, this finding ought to be the same in regard to the other grounds of opposition since the question of confusion is central to all three grounds.

[24]       Finally, the respondent adds that AEROPEAK BY DE UNGAVA is in association with the trade-mark UNGAVA. Aeropeak is therefore incorporating an existing registered mark, and suggests the idea of Ungava wares.

Analysis

1.          Relevant statutory provisions

[25]       The following sections of the Act are useful in examining this case:

2.          What is the applicable standard of review?

[26]       In Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (leave to appeal to the Supreme Court of Canada dismissed: [2000] S.C.C.A. No. 161), the Federal Court of Appeal set down, at para. 51, the applicable standard of review on an appeal from a decision of the Registrar of Trade-marks:

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.

See also, to the same effect: Christian Dior, S.A. v. Dion Neckwear Ltd., [2002] 3 F.C. 405, para. 8 (F.C.A.); Novopharm Ltd. v. AstraZeneca AB, [2002] 2 F.C. 148, para. 25 (F.C.A.), leave to appeal to the Supreme Court of Canada dismissed: [2001] S.C.C.A. No. 646 (QL).

[27]       This principle is not questioned by the parties. Where the parties' opinions diverge is on its application to the present litigation. Relying on subsection 56(5) of the Act, the appellant filed additional evidence with the Court in the form of affidavits, and it is these three affidavits that we must now analyze in order to determine whether this evidence might have affected the Registrar's findings or the exercise of his discretion.

[28]       A close examination of the affidavits of Mr. Ross and Ms. Smyth has not persuaded me that they might have had an impact on the Registrar's decision. He had already found that the appellant had been using the ARROW mark since 1902; even more importantly, the Registrar found that the criteria in paragraphs 6(5)(b), (c) and (d) favoured the opponent. Consequently, the evidence as to use and reputation of the ARROW mark could only have strengthened the Registrar's decision, at least in regard to the first ground of opposition.

[29]       As to the affidavit of Brad Wiseman, it adduces in evidence the various pronunciations of the words Arrow and Aero according to numerous dictionaries. The Registrar found a lack of evidence on this point in his reasons. But once again, this new evidence does not challenge the Registrar's findings on this point. He said, need it be recalled, that in his opinion "more than one pronunciation is conceivable for each of these words." And it appears from the various Canadian dictionaries that were brought to our attention that the word AERO, when attached to another word, is indeed pronounced in different ways. Mr. Wiseman's affidavit therefore simply adds to what the Registrar said, therefore.

[30]       It is of course otherwise in regard to the grounds of opposition based on sections 16(3) and 2. The Registrar, in respect of these, noted that there was no evidence of any use of the appellant's trade-marks. Mr. Ross's evidence does, therefore, add some new elements that the Registrar could have considered. But even on the assumption that he would have agreed to consider these two grounds, it must be recognized that confusion would have remained the focus of the analysis, as for the third ground of opposition. It is therefore conceivable that Mr. Ross's affidavit would have had little impact on the Registrar's final decision.

[31]       Be that as it may, and even if I were to apply the correctness standard, I am of the opinion that the Registrar did not err. In view of the following considerations, I think the Registrar correctly applied the criteria in subsection 6(5) of the Act in determining whether the use of the trade-mark the respondent wishes to register would cause confusion.

3.          Could the Aeropeak mark be confused with the Arrow mark?

[32]       The Trade-marks Act, in subsection 6(2), covers the ways in which trade-marks can cause confusion. The Federal Court of Appeal explains it in these words, in Bohna v. Miss Universe Inc., [1995] 1 F.C. 614, para. 9:

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. [References omitted]

[33]       When making this determination, the Court must consider all of the circumstances, including the criteria in subsection 6(5). The Federal Court of Appeal, in Christian Dior v. Dion Neckwear, [2002] 3 F.C. 405, explains these criteria that must be considered in determining whether a trade-mark causes confusion with another trade-mark, under paragraph 12(1)(d) of the Act:

[9] . . . Some practical guidelines have been set out by Malone J.A., in paragraph 18 of his reasons in Polo Ralph Lauren (supra):

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.

. . .

[18] The factors favouring the opponent were length of use, overlapping of wares travelling through the same channels of trade and similarity in appearance. On the latter point, the Registrar does not explain what it was that made the marks similar in appearance. While I appreciate that the first portion of a trade-mark is the most relevant for purposes of distinction (see Pernod Ricard v. Molson Breweries (1992), 44 C.P.R. (3d) 359 (F.C.T.D.), per Denault J., at page 370), marks are nevertheless to be considered in their totality and the effect or idea of the whole is to be compared even when words in the marks are disclaimed. (See Standard Coil Products Can. Ltd. v. Standard Radio Corp., [1971] F.C. 106; affd [1976] 2 F.C. iv (C.A.); Sealy Sleep Products Ltd. v. Simpson's-Sears Ltd., [1956-60] Ex. C.R. 441, approved by the Supreme Court of Canada in [1965] S.C.R. 734">Ultravite Laboratories Ltd. v. Whitehall Laboratories Ltd., [1965] S.C.R. 734.) In the absence of any explanation by the Registrar, I am left with the strong belief that he focussed solely on the Dion element of the "Dion Collection & Design" mark and not on the totality of the mark. Dion is not the trade-mark which has been submitted. The similarity in appearance, if any, is at best insignificant.

[34]       So the marks have to be considered in their totality, from the standpoint of an average person who is familiar with the mark but has an imperfect recollection of it. Likewise, the criteria in subsection 6(5) are not necessarily assigned the same weight. The onus is on the party seeking to register its trade-mark. It must demonstrate, on a balance of probabilities, that the proposed mark will not cause confusion with a previously used mark (Bohna v. Miss Universe Inc., [1995] 1 F.C. 614, para. 11 (F.C.A.); reiterated in Christian Dior, S.A. v. Dion Neckwear Ltd., [2002] 3 F.C. 405 (F.C.A.), para. 15).

[35]       In the case at bar, the first four criteria in subsection 6(5) are not problematic and favour the appellant. However, the final criterion is generally considered the most important, particularly in a situation like this, where the wares covered by the trade-marks are so clearly similar (Beverley Bedding & Upholstery Co. v. Regal Bedding & Upholstering Ltd. (1980), 47 C.P.R. (2d) 145, at p. 149 (F.C.); affirmed by the Federal Court of Appeal, (1982), 60 C.P.R. (2d) 70. See also Export/Import Clic Inc. v. Effem Foods Ltd. (1993), 53 C.P.R. (3d) 200, at pp. 203-204 (F.C.)).

[36]       In my opinion, the marks do not resemble each other in appearance, sound or ideas suggested. Not only does the evidence indicate that these words may be pronounced differently; it is also necessary to look beyond the initial syllables and consider the mark in its totality. And it is undeniable that the words "Aeropeak de by Ungava" bear absolutely no resemblance, phonetically or otherwise, to the word "Arrow".

[37]       Dior, supra, explains that the first portion is the most relevant, but goes on to say that it must always be kept in mind that marks must be considered in their totality. This decision repeats the rule adopted by the Federal Court of Appeal in previous decisions that marks must not be dissected, since it is the combination of the various elements that constitutes a trade-mark and gives distinctiveness to it; consideration must therefore be given to the effect of the mark in its totality, rather than focussing on just one of its components (Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd., [1991] F.C.J. No. 546 (F.C.A.) and United States Polo Assn. v. Polo Ralph Lauren Corp., [2000] F.C.J. No. 1472, para. 17 (F.C.A.)). The subsection 6(2) test, which refers to the first impression of an average consumer who is familiar with the mark but has only a vague recollection of it, must be kept in mind (Bohna v. Miss Universe, Inc., [1995] 1 F.C. 614, para. 9 (F.C.A.)).

[38]       The appellant made a valiant attempt to persuade me, with decisions of this Court in support, that special weight must be given to the first portion of the trade-mark. I have carefully reviewed each of these decisions and arrived at the conclusion that they can all be distinguished from the present case. In some instances, the applicants had taken exactly the same word as the opponents' marks and added another word (Noma Inc. v. Nomaco Inc. (1999), 4 C.P.R. (4th) 388 (Trade Marks Opposition Board); Bedessee Imports Ltd. v. Star Stabilimento Alimentare S.p.A (1998), 85 C.P.R. (3d) 527 (Trade Marks Opposition Board); Conde Nast Publications Inc. v. Union des éditions modernes (1979), 46 C.P.R. (2d) 183 (F.C.)); in another case, the applicant's mark was virtually identical to the opponent's, a single letter separating the two marks (Polysar Ltd. v. Gaesco Distributing Ltd. (1985), 6 C.P.R. (3d) 289 (F.C.)).

[39]       This argument of the appellant therefore cannot be accepted. The first portion of a mark is important, to be sure, but it cannot be decisive when the mark, taken in its totality and without dissecting it, is not similar in appearance, sound or ideas suggested. In this case, the combination of all of the features of the respondent's mark, "Aeropeak de by Ungava", is not similar to "Arrow". Consequently, an average consumer's first impression of the Aeropeak de by Ungava mark would not be that the wares associated with this mark are connected with the Arrow mark.

[40]       I find, therefore, that the Registrar correctly applied the relevant provisions of the Trade-marks Act and rightly dismissed the appellant's opposition. Like him, I am persuaded on the balance of probabilities that the registration of the mark "Aeropeak de by Ungava" is not likely to cause confusion with the meaning of paragraph 12(1)(d). I would also reject the other two grounds of opposition, even assuming they can be considered in light of the fresh evidence that was submitted, again because there is no risk of confusion.

[41]       The appeal should be dismissed.

                     "Yves de Montigny"

                                Judge

Certified true translation

Peter Douglas

FEDERAL COURT

SOLICITORS OF RECORD

DOCKET:                                            T-1549-04

STYLE OF CAUSE:                CLUETT, PEABODY CANADA INC. v. EFFIGI INC.

PLACE OF HEARING:                      Ottawa, Ontario

DATE OF HEARING:                        February 16, 2005

REASONS FOR ORDER:                de Montigny J.

DATE OF ORDER:               March 23, 2005

APPEARANCES:

Monique Couture                                                                      FOR THE APPELLANT

Barry Gamache                                                                         FOR THE RESPONDENT

SOLICITORS OF RECORD:

Gowling Lafleur Henderson LLP

Ottawa, Ontario                                                                        FOR THE APPELLANT

Léger Robic Richard, S.E.N.C.

Montréal, Quebec                                                                     FOR THE RESPONDENT

Certified true translation

Peter Douglas