[1] This section 56 Trade-marks Act (the "Act") appeal by the owner of a restaurant with mainly an Italian menu emphasizing the use of garlic operated in San Francisco under the trade-mark THE STINKING ROSE, challenges the December 30, 1999 decision of the Trade-marks Opposition Board (the "Board"), composed of its Chairperson G.W. Partington who dismissed the appellant's October 25, 1994 opposition to the March 10, 1994 trade-mark application by the respondent to register the trade-mark, THE STINKING ROSE, also in association with a restaurant based on use at least as early as August 30, 1993, in Coquitlam, B.C.
[2] No new evidence was filed before me. In the circumstances, I consider the standard of review established in John Labatt Limited et al. v. Molson Breweries, [2000] 3 F.C.145, where Justice Rothstein said this at paragraph 51:
[51] __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.... . [emphasis added]
[3] Justice Iacobucci described the meaning of reasonableness simpliciter in Canada (Director of Investigation and Research) v. Southam Inc., [1997] 1 S.C.R. 748 at paragraph 56, in the following terms:
An unreasonable decision is one that, in the main, is not supported by any reasons that can stand up to a somewhat probing examination. Accordingly, a court reviewing a conclusion on the reasonableness standard must look to see whether any reasons support it.__ The defect, if there is one, could presumably be in the evidentiary foundation itself or in the logical process by which conclusions are sought to be drawn from it. __An example of the former kind of defect would be an assumption that had no basis in the evidence, or that was contrary to the overwhelming weight of the evidence._ _An example of the latter kind of defect would be a contradiction in the premises or an invalid inference.
[4] Justice Iacobucci drew the difference between an "unreasonable" and a "patently unreasonable" decision. He said the difference lies in the immediacy or obviousness of the defect. He wrote at paragraph 57:
If the defect is apparent on the face of the tribunal's reasons, then the tribunal's decision is patently unreasonable. __But if it takes some significant searching or testing to find the defect, then the decision is unreasonable but not patently unreasonable.
Justice Iacobucci said the standard of reasonableness simpliciter is closely akin to the standard the Supreme Court of Canada has said should be applied in reviewing findings of fact by trial judges. He referred to [1976] 2 S.C.R. 802">Stein v. "Kathy K" (The Ship), [1976] 2 S.C.R. 802 at page 806 where Justice Ritchie said this:
. . . the accepted approach of a court of appeal is to test the findings [of fact] made at trial on the basis of whether or not they were clearly wrong rather than whether they accorded with that court's view of the balance of probability.
[5] The appellant framed the issue before me in the following terms:
The principal issue on this appeal is whether or not the trade-mark THE STINKING ROSE is non-distinctive of the Respondent's services by reason of the Appellant's reputation in Canada for its mark, THE STINKING ROSE.
[6] What this means is that out of the three grounds of opposition advanced before the Board, the appellant, the opponent before the Board, is now before this Court only advancing the respondent's trade-mark does not actually distinguish the respondent's restaurant or is adapted to so distinguish them within the meaning of section 2 of the Trade-marks Act in that, at all material times, the appellant's trade-mark was well-known in Canada.
THE BOARD'S DECISION
[7] The Board found the appellant had owned and operated "THE STINKING ROSE-- A GARLIC RESTAURANT" located in the North Beach area of San Francisco, California, since mid-1991. The STINKING ROSE Restaurant serves dishes to over 6,000 patrons a week, many of the dishes being Italian in origin, with an emphasis on the use of garlic in cooking. The name THE STINKING ROSE was chosen because it reflects the restaurant's extensive use of garlic in cooking and the restaurant's humorous approach to garlic. THE STINKING ROSE trade-mark is prominently displayed on the outside of the building housing the restaurant and also appears in its restaurant menus and in its information brochures.
[8] The appellant also uses the trade-mark, THE STINKING ROSE, in association with its concessions at Candlestick Park (since the beginning of the 1993 baseball season) and at San Jose Sports Arena (since the beginning of the 1994 hockey season). At both concessions, the trade-mark THE STINKING ROSE is prominently displayed on the outside of the concession stands and the appellant has developed a sandwich called THE STINKING ROSE 40-CLOVE GARLIC SANDWICH which is sold at both concessions.
[9] Moreover, the appellant markets processed foods in association with the trade-mark as well as with a variety of goods such as aprons, T-shirts, coffee mugs, all of which are displayed near the entrance of the restaurant. These goods can be purchased at the restaurant, as well as through a mail-order catalogue.
[10] The Board found that in late July 1993, Dante Serafini, an officer, director and shareholder of the appellant, was approached in the restaurant by a Victor Caracciolo, the owner of Italian Centre Ltd. of Calgary, Alberta, who had sought rights to distribute goods under THE STINKING ROSE trade-mark.
[11] The Board found the appellant markets its restaurant by contacting travel agents and other persons in Canada who have received its brochure and/or catalogue or postcard on which is displayed the restaurant.
[12] In terms of the respondent, the Board looked to the affidavit of John Venditti, a principal of the respondent and stated the evidence on record established that he and Ms. Kotelko, another principal, visited THE STINKING ROSE Restaurant in San Francisco in late July of 1993 and shortly after that visit Mr. Venditti spoke with Mr. Serafini by telephone and obtained information concerning the appellant's supplier of decorative garlic buds located in Gilroy, California. It said the evidence, however, was conflicting as to whether Mr. Venditti advised or assured Mr. Serafini during their telephone conversation he would not be opening a restaurant under the name THE STINKING ROSE.
[13] The Board said the evidence also established the respondent's restaurant specializes in Italian cuisine and that about eighty-five to ninety percent of Italian dishes contained garlic.
[14] The Board continued its factual analysis finding at page 5:
Further, from the transcript of the Venditti cross-examination, a couple of people per month starting in September of 1993 have come into the applicant's restaurant in Coquitlam, British Columbia and have asked if the restaurant is affiliated with the opponent's restaurant in San Francisco. Finally, while the evidence of record establishes that the expression "stinking rose" is a name which is used to refer to garlic, I suspect the average user of restaurant services would not be aware of this fact.
[15] One of the grounds advanced by the appellant/opponent before the Board the applicant/respondent is not a person entitled to registration of the trade-mark THE STINKING ROSE was because, as the date of claimed first use, the respondent's trade-mark was confusing with the appellant's trade-marks which were previously made known in Canada.
[16] The Board referred to section 5 of the Trade-marks Act which reads:
| 5. A trade-mark is deemed to be made known in Canada by a person only if it is used by that person in a country of the Union, other than Canada, in association with wares or services, and
(a) the wares are distributed in association with it in Canada, or
(b) the wares or services are advertised in association with it in
(i) any printed publication circulated in Canada in the ordinary course of commerce among potential dealers in or users of the wares or services, or
(ii) radio broadcasts ordinarily received in Canada by potential dealers in or users of the wares or services,
and it has become well known in Canada by reason of the distribution or advertising.
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5. Une personne est réputée faire connaître une marque de commerce au Canada seulement si elle l'emploie dans un pays de l'Union, autre que le Canada, en liaison avec des marchandises ou services, si, selon le cas_:
a) ces marchandises sont distribuées en liaison avec cette marque au Canada;
b) ces marchandises ou services sont annoncés en liaison avec cette marque_:
(i) soit dans toute publication imprimée et mise en circulation au Canada dans la pratique ordinaire du commerce parmi les marchands ou usagers éventuels de ces marchandises ou services,
(ii) soit dans des émissions de radio ordinairement captées au Canada par des marchands ou usagers éventuels de ces marchandises ou services,
et si la marque est bien connue au Canada par suite de cette distribution ou annonce.
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[17] The Board found the appellant's mark was not well-known in Canada at the material date (August 30, 1993) when the respondent opened his restaurant in B.C. It said at page 6:
In order for its trade-mark to be deemed to have been made known in Canada, the opponent must satisfy the Registrar not only that it has used its trade-mark THE STINKING ROSE in the United States of American in association with restaurant services, but also that its restaurant services have been advertised in association with its mark in printed publications which have circulated in Canada in the ordinary course of commerce among potential users of its services. Further, the opponent must show that its trade-mark THE STINKING ROSE has become "well-known" in Canada by reason of such advertising as of the applicant's claimed date of first use (August 30, 1993), the material date for considering this ground. In the present case, and even if all of the materials relied upon by the opponent could properly be characterized as advertising of its restaurant services in Canada, which is not the case, I do not consider that the opponent's trade-mark THE STINKING ROSE had become "well-known" in British Columbia or in Vancouver as of August 30, 1993. [emphasis mine]
[18] The Board opened its consideration of the appellant's case for non distinctiveness of the respondent's mark by stating where the burden lay. It said this at page 7:
While the legal burden is on the applicant to show that its trade-mark THE STINKING ROSE is adapted to distinguish or actually distinguishes its restaurant services from those of others throughout Canada . . . there is an initial evidential burden on the opponent to establish the facts being relied upon by it in support of this ground. Furthermore, the material time for considering the circumstances respecting this issue is as of October 25, 1994, the filing date of the statement of opposition . . . I would also note that it is not necessary for the opponent to show that its trade-mark THE STINKING ROSE is well known in Canada or that it has been made known solely by the restrictive means set forth in Section 5 of the Act, (see Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 (F.C.T.D.) at page 55). [emphasis mine]
[19] The Board then considered the appellant's affidavits filed. It referred to the affidavit of Doug Fyfe and Robert W. White. It made these findings at page 7:
Exhibits 1 to 4 of the first Fyfe affidavit are copies of excerpts from four Canadian publications dated prior to the material date where passing reference only is made to THE STINKING ROSE restaurant in San Francisco, while Exhibits 5 to 21 are copies of excerpts from various United States publications including the San Francisco Chronicle, the Los Angeles Times and the Dallas Morning News in which reference is made to the opponent's restaurant. However, none of the United States publications has been shown to have had any more than minimal circulation in Canada. Mr. Fyfe has also annexed as Exhibit 22 to his first affidavit the text of an article taken from the LEXIS electronic database which appeared in the February 1992 issue of Men's Health, this magazine having a Canadian circulation exceeding 14,500 including 2,500 in British Columbia. Further, while the Fyfe affidavit introduce into evidence copies of pages from travel guides, the opponent's evidence does not establish that any of these guides were available in Canada prior to the material date.
[20] The Board contrasted this evidence with the evidence contained in the affidavit of Scott Booth put forward in support of the respondent's position. Mr. Booth had visited the Vancouver Public Library and four different book stores located in that city in December 1993 and he reviewed 32 publications relating to San Francisco and California. The Board found he "was unable to locate any reference to the opponent's restaurant in any of the publications".
[21] The Board concluded the appellant's evidence "establishes the existence of one relevant publication containing an article relating to the opponent's restaurant which had some measurable circulation in Canada and, in particular, in British Columbia". It noted from Mr. Serafini's affidavit that Mr. Caracciolo from Calgary and a Mr. Mansueto from Vancouver were also familiar with the opponent's restaurant prior to the date of opposition. The Board further mentions from the Serafini affidavit that it identified a list of names of nine travel writers and other persons in Canada who "apparently received the opponent's brochure and/or catalogue or postcard" in November 1992. The Board resolved at page 7:
However, in view of the enquiries made by Mr. Booth as outlined in paragraphs 27 and 28 of his affidavit, I am not prepared to accord much weight to this aspect of Mr. Serafini's evidence.
[22] The Board then mentioned the transcript of Mr. Venditti's cross-examination and it drew this at page 7:
In particular, the transcript of the Venditti cross-examination establishes that commencing in September of 1993, a couple of people a month have visited the applicant's restaurant in Coquitlam and have asked the waiters if it is affiliated with the opponent's restaurant in San Francisco. Further, from the transcript, it would appear that Ms. Rabson, who is also the sister of Nadine Kotelko, was aware of the opponent's restaurant and mentioned it at a dinner party in March of 1993 at which Ms. Kotelko and Mr. Venditti were present. This evidence therefore establishes that at most fifty persons in the Vancouver area were aware of the opponent's trade-mark prior to the date of opposition. [emphasis mine]
[23] The Board referred to the decision of Justice Houghton of the B.C. Supreme Court who had dismissed the appellant's application for an interlocutory injunction dated February 14, 1994.
[24] The Board noted the appellant's restaurant had only been in operation in San Francisco for about three and a half years as of the date of opposition.
[25] It also said the respondent's evidence confirmed the expression "stinking rose" in reference to garlic appears in far more publications which have circulated in Canada than those which have referred to the opponent's restaurant. The Board concluded at page 8:
As a result, and even considering that there were about fifty people in the greater Vancouver area who were aware of the opponent's restaurant as of the material date, I have my doubts as to whether this evidence, together with the minimal evidence of the opponent which supports this ground, is sufficient to meet the evidential burden on the opponent.
[26] The Board added:
In any event, and even assuming that the evidence of record is sufficient to meet the opponent's evidential burden, the applicant's evidence establishes that it had operated its restaurant in Coquitlam, British Columbia, for almost fourteen months prior to the date of opposition. I have concluded, therefore, that the applicant has met the legal burden upon it of showing that its trade-mark THE STINKING ROSE distinguishes its restaurant services from those of the opponent in Canada, including the area in Vancouver where the applicant had carried on business.
ANALYSIS
[27] I take as a point of departure about what lack of distinctiveness means as that stated by Justice Addy in Motel 6, Inc. v. No. 6 Motel Ltd. et al. (1981), 56 C.P.R. (2d) 44 (F.C.T.D.) a case involving a U.S. plaintiff company operating some 300 motels in the United States but none in Canada and its challenge to a registered trade-mark by a Canadian motel operator. He wrote this at page 58:
The definition of "distinctive" is to be found in s. 2 of the Trade-marks Act. A trade mark can neither distinguish nor be adapted to distinguish the services of a person if another person has used the mark in a foreign country and it has become known in Canada as the latter's mark in respect of similar services. On the issue of lack of distinctiveness of a mark, although it must be shown that rival or opposing mark must be known to some extent at least, it is not necessary to show that it is well known or that it has been made known solely by the restrictive means provided for in s. 5, supra. It is sufficient to establish that the other mark has become known sufficiently to negate the distinctiveness of the mark under attack. [emphasis mine]
[28] Justice Addy then talked about the nature of the evidence to establish reputation. He said this at pages 58-59 of the reported decision:
The attack based on non-distinctiveness is not restricted to actual performance of services in Canada as in the case of a claim of prior use pursuant to s. 4. It also may be founded on evidence of knowledge or reputation of the opposing mark spread by means of word of mouth and evidence of reputation and public acclaim and knowledge by means of newspaper or magazine articles as opposed to advertising. All relevant evidence may be considered which tends to establish non-distinctiveness.
[29] A finding of lack of distinctiveness is a finding of fact.
[30] This is what Justice L'Heureux-Dubé said about reviewing factual findings of an administrative tribunal in Canadian Union of Public Employees, Local 301 v. Montreal (City), [1997] 1 S.C.R. 793 at paragraph 85:
We must remember that the standard of review of the factual findings of an administrative tribunal is an extremely deferent one . . . Courts must not revisit the facts or weigh the evidence.
[31] The appellant argued before me there is abundant evidence of the appellant's substantial reputation in the mark, THE STINKING ROSE, in Canada which is more than sufficient to negate the distinctiveness of the mark being challenged. He pointed to the following evidence which he said was clear and compelling:
(a) Mr. Venditti chose the name THE STINKING ROSE for his restaurant in the full knowledge of the appellant's San Francisco restaurant of the same name;
(b) Mr. Venditti was also aware, in April 1993, that someone had reserved the name "THE STINKING ROSE -- A GARLIC RESTAURANT LTD." at the Registrar of Companies for British Columbia and that the reservation was renewed in June 1993;
(c) Mr. Serafini had been approached by Canadians from Ontario and British Columbia with respect to using the name THE STINKING ROSE for restaurant services;
(d) many Canadians have visited the appellant's restaurant in San Francisco;
(e) there is strong and clear evidence of repeated instances of actual confusion by visitors to the respondent's restaurant who inquired whether there was any affiliation between the respondent's restaurant and the appellant's restaurant and that the incidence of actual confusion is most likely understated;
(f) there have been many promotional pieces circulated in Canada including travel brochures and books in which the appellant's mark has been promoted; and
(g) the appellant's mark has also been mentioned in numerous articles in publications which enjoy a high level of circulation in Canada.
[32] In particular, the appellant submits the Board was not reasonable in arriving at a finding that "at most 50 people in the Greater Vancouver area were aware of the [appellant's] trademark prior to the date of opposition".
[33] The appellant says the Board was not reasonable in accepting Mr. Venditti's credibility on the question of the number of instances of actual confusion, that credibility being in issue by reason of the contradiction in his testimony by affidavit.
[34] The appellant adds the Board was also not reasonable in its "at most 50 people" finding on the basis the number of actual instances of confusion should have been found by the Board to be indicative of a much greater number of instances of confusion. The appellant says the Board ought to have drawn an inference that the actual number of people who are aware of the appellant's mark is much greater than merely the number of people who were actually confused in the respondent's restaurant and took the time to ask whether there was any connection between the two restaurants.
[35] Counsel for the respondent pointed to a number of facts in the record before the Board. In support of the Board's finding including:
(a) four articles in Canadian publications which made a passing reference to the appellant; he says they are not about the appellant's restaurant but rather about other subjects and happen to make a one-sentence reference to its restaurant;
(b) several articles in American publications which made a passing reference to the appellant's restaurant but these publications received minimal circulation in Canada;
(c) while acknowledging the October 23, 1991 issue of the San Francisco Chronicle talked about the appellant's restaurant, stated there is no evidence of the extent of Canadian distribution of this issue;
(d) while acknowledging the appellant's restaurant has been mentioned in four travel guide books about San Francisco and about California, stated the applicant adduced no evidence these guide books were actually available in Canada and contrasted that evidence with that of Mr. Booth;
(e) he buttresses in a number of ways which I do not have to be specific about, the Board's finding about Mr. Serafini sending a brochure catalogue or postcard to nine individuals in Canada.
[36] After examining the material before the Board, including the transcript of the cross-examination of Mr. Venditti, I am of the view this appeal should be dismissed.
[37] There was evidence before the Board upon which it could base its findings.
[38] It cannot be said the Board's findings, which are findings of fact, were unreasonable -- clearly wrong as per Southam, supra.
[39] It seems to me the appellant is asking this Court to re-weigh the factual findings of the Board which is something I cannot do.
[40] The appellant says the Board was wrong in not drawing a negative inference as to Mr. Venditti's credibility and therefore his evidence because of the answers he gave on cross-examination about the number of people who came to his restaurant and inquired of waiters of its association with the appellant's San Francisco restaurant.
[41] The sequence of questions and answers on cross-examination satisfy me the Board committed no error in failing to draw the negative finding of credibility against Mr. Venditti. As I see it, he responded to questions directly and was neither evasive nor vague on the issue.
DISPOSITION
[42] For all of these reasons, this appeal is dismissed with costs.
"François Lemieux"
J U D G E
OTTAWA, ONTARIO
MAY 18, 2001
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