Date: 20010206
Docket: T-1951-99
Citation: 2001 FCT 31
Ottawa, Ontario, this 6th day of February, 2001
| PRESENT: THE HONOURABLE MR. JUSTICE JOHN A. O'KEEFE |
BETWEEN:
BAY REST BEDDING COMPANY LIMITED
Applicant
- and -
BEDFORD FURNITURE INDUSTRIES, INC.
Respondent
REASONS FOR ORDER AND ORDER
O'KEEFE J.
[1] This is an appeal by Bay Rest Bedding Company Limited (the "applicant") from the decision of the Trade-marks Opposition Board, which allowed the opposition filed by Bedford Furniture Industries, Inc. (the "respondent") to the application for registration of the trade-mark SPINAL CARE (Application No. 728,731) for use in association with mattresses, box springs and mattress sets filed by the applicant.
[2] The applicant asks for an Order reversing the decision of the Registrar of Trade-marks dated September 8, 1999 and allowing Application No. 728,731 for registration on the Register. The applicant also asks for its costs.
Background Facts
[3] The applicant's application to register the trade-mark SPINAL CARE for mattresses, box springs and mattress sets was made on May 5, 1993. The application was based on use in Canada since at least as early as 1976.
[4] The respondent filed a Statement of Opposition on May 20, 1994.
[5] The grounds of opposition were:
(a) The Application is not in compliance with s. 30 of the Trade-marks Act, R.S.C. 1985; c. T-13 (hereinafter the Trade-marks Act) because it does not contain a date from which the trade-mark has been used in Canada;
(b) The trade-mark is not registerable under s. 12(1)(d) because it is confusing with the Opponent's registered trade-marks SPINAL GUARD (TMA 194,699) and CHIRO-CARE (TMA 218,334);
(c) The Applicant is not entitled to register the mark because at its alleged date of first use the trade-mark was confusing with the Opponent's trade-mark SPINAL GUARD which had been used in Canada by the Opponent's predecessor in title and by the Opponent as a registered user since at least as early as 1970 in connection with mattresses, and with the trade-mark CHIRO-CARE which had been used by the Opponent in Canada since at least as early as 1971 in connection with mattresses and upholstered furniture; and
(d) Pursuant to s. 38(2)(d) and s. 2 the Applicant's trade-mark is not distinctive as it does not actually distinguish nor adapted to distinguish the wares of the Applicant from the aforesaid wares of the Opponent sold under the trade-marks SPINAL GUARD and CHIRO-CARE.
[1] The respondent's evidence was given in the statutory declaration of Jeffrey Lewis dated December 11, 1996. Mr. Lewis was the service manager for the respondent and had been employed about four years prior to signing the statutory declaration.
[2] The respondent is the owner of two registered trade-marks, SPINAL GUARD, TMA 194,699 for use with mattresses and CHIRO CARE, TMA 218,334. Although both marks were raised in the grounds of opposition, the respondent did not lead any evidence with respect to the SPINAL GUARD trade-mark.
[3] The respondent's detailed records were destroyed in 1984 which was before Mr. Lewis was employed by the respondent.
[4] Mr. Lewis defined the term "bedding units" as the sum of mattresses, beds and upholstered furniture.
[5] When Mr. Lewis gave evidence as to the sales and advertising expenses of the respondent's SPINAL GUARD products, he expressed the figures in terms of bedding units. He did not have a specific figure for mattresses.
[6] Mr. Lewis estimated that for the period 1973 to 1983 the respondent's total sales of "bedding units" bearing the SPINAL GUARD name to be in excess of 380,000 with a total wholesale value of not less than $115,000,000. These estimations were based on information and belief provided by an undisclosed source.
[7] The respondent's sales of bedding units bearing the name SPINAL GUARD for the period 1984 to 1994 were estimated to be 230,000 units with a value of not less than $70,000,000.
[8] For the period 1995 to 1996 the respondent's annual sales of SPINAL GUARD bedding units "have been maintained to date at less than the foregoing levels".
[9] Mr. Lewis stated that the respondent spent over $4,000,000 on advertising of its SPINAL GUARD bedding units. He did not state the source or time of circulation of the advertising.
[10] The respondent, as of 1996, sold its "bedding units" through retail outlets such as Eaton's, The Bay, Sears and individual furniture stores. When Mr. Lewis gave this information he could not indicate the identity or number of stores through which the SPINAL GUARD bedding units were sold. There were not less than 1,000 retail outlets.
[11] The applicant filed the following affidavits at the opposition hearing:
| 1. Domenic Ciappa, sworn July 10, 1996, president of the applicant; |
| 2. Silvano Perriccioli, sworn July 10, 1996, manager of Cantu Furniture Interiors Ltd. |
| 3. Samuel Malach, sworn July 9, 1996, president of Orchid Label & Printing Company. |
[1] The applicant has sold mattresses in association with the SPINAL CARE trade-mark continuously since 1997. As of July, 1996 the applicant sold between 400 to 500 mattresses per year under the SPINAL CARE trade-mark. The sales value of the items is about $190,000 per year.
[2] The applicant has used the trade-mark SPINAL CARE with mattresses for 20 years without any reported instances of confusion from its customers believing they were purchasing a SPINAL GUARD product from the respondent. The respondent has never asked the applicant to stop using the name SPINAL CARE.
[3] The applicant filed the additional affidavits of Richard Merritt-Gambrill, sales associate at the Bay, Ralph Gerstl, president of Sleepking and Ms. Jennifer Hendzel for the purpose of this appeal.
[4] The new evidence establishes that mattresses are sold in various sizes and in a set -- box spring and mattress. The mattress lasts for approximately ten years and the average retail price of a twin size set is $450 to $800, while a queen size set retails for approximately $1,600 to $2,000.
[5] The industry practice is to provide a warranty for the mattresses which on the average is for ten years. The warranty is usually found on a label attached to the mattress. The average size of the label is six inches by six inches.
[6] When a retail store displays mattresses, it groups them together according to their manufacturer.
[7] The evidence as to the practice followed when purchasing a mattress was that customers have the assistance of a sales associate for approximately 30 minutes to one hour; and the customer usually lays on the mattress to test it for comfort. The customer will comparison shop between stores. The name of the manufacturer and the mattress warranty are discussed.
[8] The state of the Trade-marks Register shows that there are 20 registered trade-marks using the words BACK, SPINAL, CARE or GUARD for use with mattresses not owned by the respondent.
[9] Sleepking is a third party mattress manufacturer who has used SPINAL REST and SPINAL SUPPORT as a trade-mark for its mattresses continuously since 1977 and has sold over 1,000,000 mattresses bearing these names. Also since 1993 to the present, it sells approximately 10,000 to 15,000 SPINAL REST and SPINAL SUPPORT mattresses per month.
[10] The president of Sleepking stated that he is unaware of any instances of confusion between his products and the products of either the applicant or respondent.
[11] By November, 1996 Eaton's ceased to carry SPINAL GUARD mattresses and The Bay does not currently carry the product.
[12] A new customer service representative of the respondent stated that as of September, 1999 the SPINAL GUARD mattresses may have been discontinued.
[13] Issues
| 1. As of the material date of September 8, 1999 (the date of the board member's decision) was the applicant's SPINAL CARE trade-mark confusing with the respondent's registered trade-mark for SPINAL GUARD and therefore not entitled to registration pursuant to paragraph 12(1)(d) of the Trade-marks Act? |
| 2. As of the material date of "at least as early as 1976" was the applicant's SPINAL CARE trade-mark confusing with the respondent's SPINAL GUARD trade-mark and therefore not entitled to registration pursuant to paragraph 16(1)(a) of the Trade-marks Act? |
| 3. As of the material date of May 20, 1994, was the applicant's SPINAL CARE trade-mark not distinctive of it as it was confusing with the respondent's SPINAL GUARD trade-mark and therefore not entitled to registration pursuant to paragraph 38(2)(d) of the Trade-marks Act? |
Statutory Provisions
[1] Section 2 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the "Act") defines `confusing' as:
| "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;
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| « créant de la confusion » Relativement à une marque de commerce ou un nom commercial, s'entend au sens de l'article 6.
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| [2] Section 6 of the Act states: |
| 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.
(3) The use of a trade-mark causes confusion with a trade-name if the use of both the trade-mark and trade-name in the same area would be likely to lead to the inference that the wares or services associated with the trade-mark and those associated with the business carried on under the trade-name are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
(4) The use of a trade-name causes confusion with a trade-mark if the use of both the trade-name and trade-mark in the same area would be likely to lead to the inference that the wares or services associated with the business carried on under the trade-name and those associated with the trade-mark are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
(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.
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| 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.
(3) L'emploi d'une marque de commerce crée de la confusion avec un nom commercial, lorsque l'emploi des deux dans la même région serait susceptible de faire conclure que les marchandises liées à cette marque et les marchandises liées à l'entreprise poursuivie sous ce nom sont fabriquées, vendues, données à bail ou louées, ou que les services liés à cette marque et les services liés à l'entreprise poursuivie sous ce nom sont loués ou exécutés, par la même personne, que ces marchandises ou services soient ou non de la même catégorie générale.
(4) L'emploi d'un nom commercial crée de la confusion avec une marque de commerce, lorsque l'emploi des deux dans la même région serait susceptible de faire conclure que les marchandises liées à l'entreprise poursuivie sous ce nom et les marchandises liées à cette marque sont fabriquées, vendues, données à bail ou louées, ou que les services liés à l'entreprise poursuivie sous ce nom et les services liés à cette marque sont loués ou exécutés, par la même personne, que ces marchandises ou services soient ou non de la même catégorie générale.
(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.
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| [3] Paragraph 12(1)(d) of the Act states: |
| 12. (1) Subject to section 13, a trade-mark is registrable if it is not
(a) . . .
(b) . . .
(c) . . .
(d) confusing with a registered trade-mark; . . .
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12. (1) Sous réserve de l'article 13, une marque de commerce est enregistrable sauf dans l'un ou l'autre des cas suivants_:
a) . . .
b) . . .
c). . .
d) elle crée de la confusion avec une marque de commerce déposée; . . .
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| [4] Paragraph 16(1)(a) of the Act states: |
| 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; . . .
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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; . . .
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| [5] And section 38 of the Act states in part: |
| 38. (1) Within two months after the advertisement of an application for the registration of a trade-mark, any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar.
(2) A statement of opposition may be based on any of the following grounds:
(a) that the application does not conform to the requirements of section 30;
(b) that the trade-mark is not registrable;
(c) that the applicant is not the person entitled to registration of the trade-mark; or
(d) that the trade-mark is not distinctive.
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38. (1) Toute personne peut, dans le délai de deux mois à compter de l'annonce de la demande, et sur paiement du droit prescrit, produire au bureau du registraire une déclaration d'opposition.
(2) Cette opposition peut être fondée sur l'un des motifs suivants_:
a) la demande ne satisfait pas aux exigences de l'article 30;
b) la marque de commerce n'est pas enregistrable;
c) le requérant n'est pas la personne ayant droit à l'enregistrement;
d) la marque de commerce n'est pas distinctive.
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| [6] A preliminary issue that must be determined is the standard of review of the Registrar's decision in an appeal pursuant to section 56 of the Act. The Federal Court of Appeal has stated as follows in Molson Breweries, a Partnership v. John Labatt Ltd. (2000 5 C.P.R. (4th) 180 (F.C.A.) at page 196: |
| I think the approach in Benson & Hedges v. St. Regis and in McDonald v. Silcorp 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. |
| In this appeal, three new affidavits were tendered on the appeal. These were the Merritt-Gambrill, Gerstl and Hendzel affidavits. On a review of these affidavits, I am satisfied that these affidavits contain evidence that would have materially affected the board member's finding of fact or the exercise of her discretion. That being the case, I must come to my own conclusion as to the correctness of the decision. |
| As of the material date of September 8, 1999 (the date of the board member's decision) was the applicant's SPINAL CARE trade-mark confusing with the respondent's registered trade-mark for SPINAL GUARD and therefore not entitled to registration pursuant to paragraph 12(1)(d) of the Trade-marks Act? |
| The board member held that as of the date of her decision, the SPINAL CARE trade-mark was confusing with the respondent's registered trade-mark SPINAL GUARD and thus, was not entitled to registration pursuant to paragraph 12(1)(d) of the Act. In order to determine whether confusion exists, the factors listed in subsection 6(5) of the Act must be considered along with all of the surrounding circumstances. |
| [8] The first factor under subsection 6(5) of the Act is: |
| (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; |
(a) Inherent Distinctiveness of Trade-marks
| [38] Neither the SPINAL CARE nor the SPINAL GUARD mark have a very high |
degree of inherent distinctiveness as both are made up of ordinary dictionary words. This factor does not favour either party.
Extent to Which Trade-marks have Become Known
| [39] As for the SPINAL GUARD mark, Mr. Lewis gave evidence that over 380,000 |
bedding units (mattresses, beds and upholstered furniture) with a value of over $115,000,000 and containing the SPINAL GUARD mark were sold in Canada between 1973 and 1994. I agree with the board member's ruling that the evidence of Mr. Lewis regarding use of the respondent's trade-mark prior to his commencing employment with the respondent in 1984 should not be considered as it is hearsay evidence from some source. There is a further problem with Mr. Lewis' evidence in that it relates to not just mattresses which are the wares for the registered trade-mark SPINAL GUARD but the sales figures also contain sales revenue for beds and upholstered furniture. The only evidence that can be considered is evidence related to the wares contained in the registration. These figures have not been established by the evidence (see Datascope of Canada Ltd. v. Datascope Corp. (1997) 81 C.P.R. (3d) 409 (TMOB) at page 418).
. . . The opponent sells and services used equipment of various kinds but the registration is limited to photocopiers and business calculating machines, therefore this is what should be used in making a comparison with the applicant's mark in a 12(1)(d) setting.
| [40] The respondent also provided evidence to the effect that over $4,000,000 was |
spent in advertising expenses for the SPINAL GUARD mark between 1973 and 1993. In my opinion, the advertising evidence that relates to the time period prior to Mr. Lewis' employment with the respondent is inadmissible because it is hearsay. As well, very little weight can be placed on the advertising expenditures as I do not know that advertising contributed to make the mark SPINAL GUARD known as I do not know the circulation of the advertising. For example, where geographically was the advertising aimed?
| [41] The applicant provided evidence that it had sold mattresses continuously since |
1977 using the SPINAL CARE mark and that as of July, 1996 400 to 500 mattresses with a sales value of $190,000 were sold per year.
| [42] I am of the opinion that based on the admissible evidence, that the applicant's |
mark has become at least as well known as the respondent's trade-mark.
(b) The Length of Time the Trade-marks Have Been in Use
| [43] Again, based on the admissible evidence, the applicant's mark has been in use |
since at least as early as 1977 and the evidence only establishes the use of the respondent's mark since 1984. This factor favours the applicant.
(c) The Nature of the Wares, Services or Business
| [44] Since the wares of both the applicant and the respondent have mattresses and |
associated with them marks, the nature of the wares are the same. This factor does not favour either party.
(d) The Nature of the Trade
| [45] The respondent's wares are manufactured in its own factories, displayed in its |
showrooms and are sold to individual furniture stores. The applicant's wares are also sold to individual furniture stores. I conclude that the parties' channels of trade overlap. This factor would not favour either party.
(e) The Degree of Resemblance Between the Trade-marks in Appearance or Sound or in the Ideas Suggested by Them
| [46] I agree with the finding of the board member under this factor and note that this |
factor does not favour either party more than the other.
| [47] The board member also considered the additional surrounding circumstance put |
forward by the applicant that the absence of actual confusion, despite the concurrent use of the marks in the marketplace for 15 years, was an important factor to show that there was no confusion between the marks. The board member placed very little significance on this circumstance. I am of the view that this conclusion was in error. In Multiplicant Inc. v. Petit Bateau Valton S.A. (1991), 55 C.P.R. (3d) 372 (F.C.T.D.) at page 379:
The absence of such evidence is an important point to consider. In Prairie Maid Cereals Ltd. v. Christie, Brown & Co. Ltd. (1966), 48 C.P.R. 289 at p. 295, 58 D.L.R. (2d) 186, 56 W.W.R. 375 (B.C.C.A.), Maclean J.A. stated:
| I have already referred to the circumstances that no evidence was called to indicate that anybody had been deceived by the get-up of the appellant's package. In dealing with this matter Rinfret, C.J.C., in Dastous and Rose Canned Food Products v. Mathews-Wells Co., Ltd., 12 C.P.R. 1 at p. 6-7, 10 Fox Pat. C. 1, [1950] S.C.R. 261">[1950] S.C.R. 261 said: |
| "It should be noted at once that there is no evidence of confusion, or deception, by the buying public between the products of the respective parties, and this is very material. On this point it is stated by Kerly on Trade Marks at p. 294: |
| "Where the marks have been circulating side by side in market where deception is alleged to be probable, the fact that no one appears to have been misled is very material." |
The board member also failed to take into consideration the state of the Trade-marks Register which establishes that there are 20 similar trade-marks registered using the words BACK, SPINAL, CARE or GUARD for use with mattresses which are not owned by the respondent. If the board member had this information before her when making her decision, she could not have concluded " . . . I find that it is not surprising that instances of actual confusion would not have been reported to the opponent by consumers or by wholesale purchasers in the mattress trade".
| [48] The applicant, before this Court, presented evidence on the following surrounding |
circumstances and urged upon me that these surrounding circumstances show that there is no confusion between the marks:
1. Mattresses are relatively expensive items which are not purchased hastily by the consumer, thus there is less likelihood of confusion.
In General Motors Corp. v. Bellows (1949), 10 C.P.R. 101 (S.C.C), Rand J. stated at page 116 to 117:
. . . The idea of each is that conveyed by the common name "refrigerator" itself. If there is any confusion, it arises from resemblance in the sound or appearance of the words. But in determining that we must take into account the entire circumstances of the trade, including the prices, the class of people purchasing, and the ordinary manner in which they do that. As Cameron, J. has pointed out, prospective purchasers deliberate before buying this somewhat high class apparatus; refrigerators are not hurriedly picked off a shelf; they represent a substantial purchase and to each transaction some degree of attention and consideration are given.
Although the ware in that case was a refrigerator and in this case a mattress, I believe the same reasoning applies and there is less likelihood of confusion because of the expensive price of the mattress.
| [46] 2. Mattresses are purchased with the assistance of a knowledgeable |
salesperson. Mattress trade-marks are found on labels which also contain the manufacturer's name and warranty. Such warranties are a selling feature. Also, in the retail store setting mattresses are commonly grouped together according to their manufacturer. With such circumstances the likelihood of confusion is lessened.
This same view was expressed by Madam Justice Reed in London Life Insurance Co. v. Manufacturers Life Insurance Co. (1999), 87 C.P.R. (3d) 229 (F.C.T.D.) at page 236:
The assessment of whether there is a reasonable likelihood of confusion is to be assessed in all the circumstances of the given case. The Board Member considered that two such factors were particularly relevant: the practice in the industry when using trade-marks is to use them in close association with the name of the particular insurance company; and, the kind of financial services that are sold in association with the marks are not purchased hastily -- they are purchased only after time has been spent by a broker or agent explaining the policy to the potential purchaser. These conclusions are fully supported by the evidence, both that before the Board and that before me.
The additional evidence presented relating to the sales process leads me to conclude that the likelihood of confusion is lessened.
| [47] The date on which confusion is to be assessed under paragraph 12(1)(d) is the date |
of the board member's decision. The test used to determine whether a trade-mark was confusing was set out by the Federal Court of Appeal in Miss Universe Inc. v. Bohama (1994), 58 C.P.R. (3d) 381 (F.C.A.) at page 387:
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 1, 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. (See s. 6(2), (3) and (4) of the Act; [1968] S.C.R. 134">Rowntree Co. v. Paulin Chambers Co., [1968] S.C.R. 134; Oshawa Holdings Ltd. v. Fjord Pacific Marine Industries Ltd. (1981), 55 C.P.R. (2d) 39, 36 N.R. 71 (F.C.A.); Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 at pp. 9-10, [1988] 3 F.C. 91, 16 C.I.P.R. 282 (C.A.), Thurlow C.J. and Canadian Schenley Distilleries Ltd. v. Canada's Manitoba Distillery Ltd. (1975), 25 C.P.R. 1 at p. 12 (F.C.T.D.), Cattanach J.).
In determining whether there is a likelihood of confusion, the court shall have regard to all the surrounding circumstances, including those described in s. 6(5) above.
The onus is always upon an applicant for the registration of a trade mark to establish that, on the balance of probabilities, there is no likelihood of confusion with a previously used and registered trade mark. (See Sunshine Biscuits, Inc. v. Corporate Foods Ltd. (1982), 61 C.P.R. (2d) 53 at p. 57 (F.C.T.D.), Cattanach J. and Molnlycke Aktiebolag v. Kimberly-Clark of Canada Ltd. (1982), 61 C.P.R. (2d) 42 (F.C.T.D.), Cattanach J.).
| [48] When considering each of the criteria set out in subsection 6(5) of the Act, equal |
weight need not be given to each of the criteria (see Polysar Ltd. v. Gesco Distributing Ltd. (1985), 6 C.P.R. (3d) 289 (F.C.T.D.) at page 298). In the present case, I would attach more weight to criteria 6(5)(b).
| [49] The board member considered the evidence relating to advertising prior to 1984, |
the evidence relating to sales figures which included sales revenues for not only mattresses but also for beds and upholstered furniture in reaching her decision. As well, the board member did not have the additional evidence that was filed for this appeal which included evidence of the sales process and the state of the Trade-marks Register which shows that there were 20 registered trade-marks using the words BACK, SPINAL, CARE or GUARD for use with mattresses not owned by the respondent. I am of the opinion that the board member was not correct in finding that the applicant's SPINAL CARE trade-mark was confusing with the respondent's registered trade-mark for SPINAL GUARD and thus, not entitled to registration pursuant to paragraph 12(1)(d) of the Act. I am of the view that when all of the factors listed in subsection 6(5) of the Act and all of the surrounding circumstances are considered, the applicant has satisfied me that there is no likelihood of confusion between the SPINAL CARE and SPINAL GUARD trade-marks.
As of the material date of "at least as early as 1976" was the applicant's SPINAL CARE trade-mark confusing with the respondent's SPINAL GUARD trade-mark and therefore not entitled to registration pursuant to paragraph 16(1)(a) of the Trade-marks Act? (Note the evidence establishes the date of first use as since "at least 1977".)
Basically under paragraph 16(1)(a) of the Act, the applicant could register, subject to section 38, its trade-mark that it had been using in Canada in association with wares unless at the date of its first use, it was confusing with a trade-mark that had been previously used in Canada. The material date for assessing confusion under paragraph 16(1)(a) is the date of the first use of the applicant's trade-mark, in this case, as early as 1977. Since I have ruled that the respondent's pre-1984 evidence is inadmissible, there is no evidence to support this ground of opposition.
As of the material date of May 20, 1994, was the applicant's SPINAL CARE trade-mark not distinctive of it as it was confusing with the respondent's SPINAL GUARD trade-mark and therefore not entitled to registration pursuant to paragraph 38(2)(d) of the Trade-marks Act?
Paragraph 38(2)(d) of the Act allows an opponent to a registration of a trade-mark, to assert the non-distinctiveness of a trade-mark as a ground of opposition. Section 2 of the Act defines distinctiveness in relation to a trade-mark as meaning, "a trade-mark that actually distinguishes the wares or services in association with which it is used by its owners from the wares or services of others or . . .".
| [52] The material date for a determination of distinctiveness is the date on which the |
application was filed. In the present case, that date is May 20, 1994.
| [53] I have already ruled that there is no likelihood of confusion of the two trade-marks |
under paragraph 12(1)(d) of the Act. The evidence establishes that:
| 1. As of the material date, the applicant has used this mark across Canada for at least 18 years and its annual sales were approximately $200,000; |
| 2. There is no evidence of concurrent use by a third party of SPINAL CARE as a trade-mark; and |
| 3. There are at least 20 similar marks for which registration has been obtained and there has been no reported incident of confusion for 20 years. |
I am of the opinion that the applicant has satisfied me that it has discharged the burden on it to show that the trade-mark SPINAL CARE is distinctive within the meaning of section 2 and paragraph 38(2)(d) of the Act. The trade-mark SPINAL CARE does distinguish the applicant's wares (mattresses) from the wares (mattresses) of the respondent. I have reached this conclusion on the evidence listed above and on the basis of my finding that there was no likelihood of confusion. The board member was in error in her finding on this ground.
| [54] The appeal is therefore allowed on each issue with costs to the applicant. |
ORDER
| [55] IT IS ORDERED that the appeal is allowed with costs to the applicant. |
| [56] IT IS FURTHER ORDERED that the mark SPINAL CARE be registered on |
the Register.
"John A. O'Keefe"
J.F.C.C.
Ottawa, Ontario
February 6, 2001
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1951-99
STYLE OF CAUSE: BAY REST BEDDING COMPANY LIMITED v. BEDFORD FURNITURE INDUSTRIES, INC.
PLACE OF HEARING: TORONTO
DATE OF HEARING: SEPTEMBER 6, 2000
REASONS FOR ORDER AND ORDER OF O'KEEFE, J.
DATED: FEBRUARY 6, 2001
APPEARANCES:
RICK TUZI FOR APPLICANT
SOLICITORS OF RECORD:
IVOR M. HUGHES, BARRISTER & SOLICITOR
THORNHILL FOR APPLICANT
RIDOUT & MAYBEE
OTTAWA FOR RESPONDENT
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