Pierre Fabre Médicament v. Smithkline Beecham Corp., docket T-2093-98

                                                                                                                                   Date: 20000329

                                                                                                                              Docket: T-2093-98

Ottawa, Ontario, the 29^th day of March, 2000

Present: The Honourable Mr. Justice Pinard

Between:

PIERRE FABRE MÉDICAMENT

Applicant

- and -

SMITHKLINE BEECHAM CORPORATION

Respondent

ORDER

The decision of the Registrar of Trade-marks, dated September 11, 1998, rejecting the application for registration made by the applicant on the basis of the risk of confusion between its trade-mark IXEL and the respondent's trade-mark PAXIL, is set aside. The statement of opposition filed by the respondent on November 22, 1994 is dismissed and the Registrar of Trade-marks is ordered to proceed with the registration of the trade-mark IXEL that is the subject matter of application no. 743,101 made by the applicant. With costs against the respondent.

                                   J.

Certified true translation

Martine Brunet, LL.B.

Date: 20000329

                                          Docket: T-2093-98

Between:

PIERRE FABRE MÉDICAMENT

Applicant

- and -

SMITHKLINE BEECHAM CORPORATION

Respondent

REASONS FOR ORDER

PINARD J.:

[1]         This is an appeal under subsection 56(1) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act) from a decision rendered by the Registrar of Trade-marks (the Registrar) on September 11, 1998 refusing the application for registration filed by the applicant for the trade-mark IXEL in connection with antidepressants. The application for registration was filed in the Trade Marks Office on December 9, 1993 on the basis of the planned use in Canada through a licensee. On November 22, 1994, the respondent filed a statement of opposition. In his decision of September 11, 1998, the Registrar refused the application for registration on the basis of the risk of confusion between the applicant's trade mark IXEL and the respondent's trade mark PAXIL.

[2]         The only issue in dispute between the parties is whether there was a reasonable risk of confusion between the marks in question as of the date of the Registrar's decision.

[3]         The relevant provisions of the Act are as follows:

[4]         In the recent decision John Labatt Limited et al. v. Molson Breweries, A Partnership (February 3, 2000), A-428-98, the Federal Court of Appeal noted the applicable standard of judicial review in such matters. The Honourable Mr. Justice Rothstein, writing for the majority of the Court, stated at page 12:

[29]        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. [Emphasis added]

[5]         In the case at bar, additional evidence was adduced by each of the parties, consisting in particular of the affidavits of two experts, Dr. Brenda M. Hosington, for the applicant, and Dr. Yves Roberge, for the respondent. In my opinion this evidence is significant and important, because it essentially covers a basic issue, the degree of resemblance between the trade marks in question, an aspect of the evidence considered deficient by the Registrar. Indeed, in this regard, the Registrar wrote as follows in his decision:

[Translation]

Although I recognize Mr. Reich's competence to testify as an expert in relation to the pronunciation in English of the trade-marks at issue, it is otherwise when it comes to expert testimony concerning the pronunciation of those marks in French. Similarly, I recognize Mr. Barbaud's competence to testify as an expert in relation to the French pronunciation of the trade-marks at issue, but not to testify as an expert concerning their pronunciation in English. Accordingly, neither of the deponents has persuaded me that he is competent to testify as an expert in relation to the pronunciation of the trade-marks at issue in both official languages. Furthermore, the Registrar of Trade-marks has no reason to adopt an expert's opinion solely on the basis of the latter's knowledge. As Mr. Justice Mahoney noted in William H. Rorer (Canada) Ltd. v. Johnson & Johnson, 48 C.P.R. (2d) 58, at p. 62, the judge should know the facts or the assumptions on which the expert bases his opinion so as to assess the validity of that opinion and the reasoning behind it. Moreover, the contradictory opinions of the linguistics experts concerning the pronunciation of the trade-marks at issue and in other instances in opposition suggest to me that the Registrar of Trade-marks should perhaps accord little weight to this expert testimony [see, for example, Coca-Cola Ltd. v. Brasseries Kronenbourg, une société anonyme, 55 C.P.R. (3d) 544, and Chantelle v. Kabushiki Kaisha Chandeal, application no. 730,153 (March 19, 1998), unreported]. [Emphasis added]

[6]         But the new expert evidence to a large degree concerns precisely this phonetic aspect, in both of the country's official languages, of the marks PAXIL and IXEL. It also adds some useful explanations concerning their visual aspect.

[7]         This new evidence clearly indicates that there is no risk of confusion in relation to the French pronunciation of the trade-marks at issue. In this regard, the evidence is no longer contradictory. The same expert for the respondent, Dr. Yves Roberge, who is linguistically competent in both French and English, confirms this at paragraph 12 of his affidavit:

12.         In my opinion, the marks PAXIL and IXEL bear a low degree of resemblance in sound in French and are not likely to be confused when spoken in Canadian French.

[8]         Thus, since I agree with the Registrar himself that "[Translation] given Canada's bilingual character, it is the opinion of the average bilingual Anglophone or Francophone consumer that must be considered in assessing the issue of confusion," and furthermore that "[Translation] equal importance must be given to English and French in the evaluation of this issue," I am of the opinion that with this crucial additional evidence, had it been presented, he would not have been able, in applying the test of the average bilingual consumer, to note as he did the flaw in the experts' evidence in relation to the phonetic aspect of the trade-marks or to state that he "[Translation] entertained some doubt about the confusion".

[9]         My opinion is reinforced by the preponderance of the new evidence to the effect that in the pronunciation of the trade-marks, the emphasis must be placed on the first syllable. It is this portion that creates a dominant impression in the public's mind. The cases are consistent to that effect.^[1] May it suffice, by way of illustration, to quote the following two extracts:

. . . it is the first syllable of the trade marks at issue that is far the more important for the purpose of distinction: . . .^[2]

. . . It is axiomatic that the first word or the first syllable in a trade mark is far the more important for the purpose of distinction. . . .^[3]

[10]       The first syllable of each of the trade-marks PAXIL and IXEL must therefore assume greater importance than their suffix, an unaccented syllable, in assessing the risk of confusion. Visually, as well, the beginning of the words must have preponderance. It is the sound and appearance of the first syllable that most often provides the first impression, which is so decisive in such matters. In this regard, I find the applicant's additional evidence much more valid than that of the respondent, whose expert, Dr. Roberge, did not give the first syllable the necessary weight, but seemed rather to have assigned equal importance to the following four factors:

1.          "Number of syllables"

2.          "Stress pattern"

3.          "Similarity of first syllable"

4.          "Similarity of last syllable"

[11]       The applicant's expert, Dr. Brenda M. Hosington, seemed to me to give greater weight to the importance of the first syllable. I can only agree with this evidence that the initial portion of the trade-mark PAXIL, which is the attack of the word, bears within it an element of great force, an explosive consonance. This attack with the consonant "P" is highly perceptible, which distinguishes it even further from the trade-mark IXEL. Indeed, the first element heard is one of the most forceful and most distinctive consonants in the alphabet, the letter "P". The first syllable of PAXIL certainly cannot, in phonetic terms, be confused with the first syllable of IXEL, therefore, nor can it be visually, moreover, given the obvious difference in the upper part of the letters. Consequently there can be no ambiguity whatsoever for an Anglophone or Francophone person concerning the identity of the trade-mark PAXIL compared with the trade-mark IXEL.

[12]       In expressing the opinion that the Registrar, had he had the benefit of the additional evidence that was filed in this Court, would not have concluded as he did that there was confusion between the two marks, I also took into account, as he did, that the two marks are invented words and intrinsically distinctive, that they do not convey any particular idea and that they are associated with identical products distributed through the same channels. Like the Registrar, I note as well that the use of the trade-mark PAXIL cannot be attributed to the respondent owing to the onus it has failed to discharge of establishing that it has exercised effective control over the quality and nature of the products manufactured and marketed under this mark by another entity. I note, in fact, that the respondent did not file any additional evidence in this regard in this Court, so I must conclude as well that it has failed to demonstrate that the trade-mark PAXIL has become known in Canada as its trade-mark. In the circumstances, incidentally, the following allegations by Dr. Roberge, in paragraphs 19 and 20 of his affidavit, are unfounded and serve to undermine the validity of his opinion concerning the resemblance between the two trade-marks:

19.         While neither PAXIL nor IXEL have a dictionary meaning, this does not mean that both are devoid of any kind of meaning. I understand that PAXIL anti-depressant medication is sold in Canada and has been for some years, while IXEL anti-depressant medication has not been and is not currently sold in Canada. As such, there is some level of knowledge in Canada of the PAXIL product, and the meaning of PAXIL for some Canadians is a trade-mark identifying a particular product. IXEL is sought to be registered for a similar medication.

20.         Given that PAXIL is known to some measure and IXEL is unknown, it is my view that there would be a higher likelihood of confusion with PAXIL on reading or hearing IXEL than if PAXIL medication was completely unknown in Canada.

Furthermore, I assume that the Registrar also took into account the case law to the effect that among the criteria referred to in subsection 6(5) of the Act, the resemblance between the trade-marks is generally the most important. In this regard, may it suffice to refer to the following extract, often cited by this Court, from Beverly Bedding & Upholstery Co. v. Regal Bedding & Upholstering Ltd. (1980), 47 C.P.R. (2d) 145(F.C.T.D.), at page 149:

. . . Realistically appraised it is the degree of resemblance between trade marks in appearance, sound, or in ideas suggested by them that is the most crucial factor, in most instances, and is the dominant factor and other factors play a subservient role in the overall surrounding circumstances.

[13]       Finally, in finding as I have that there is no risk of confusion between the trade-marks at issue, I have taken into account the principles that are applicable when deciding whether the use of a trade-mark causes confusion with another trade-mark, as they were stated by the Federal Court of Appeal, per Décary J.A., in Miss Universe, Inc. v. Bohna, [1995] 1 F.C. 614, at pages 621-22:

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. [notes omitted]

In determining whether there is a likelihood of confusion, the Court shall have regard to all the surrounding circumstances, including those described in subsection 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. [notes omitted]

The stronger the mark is, the greater the ambit of the protection it should be accorded and the more difficult it will be for an applicant to discharge the onus....

[14]       In conclusion, the additional evidence filed in this Court, combined with the rest of the evidence presented to the Registrar, leads me to realize that the decision in question by the Registrar can no longer stand, since the applicant has ultimately established that there is no reasonable risk of confusion between its trade-mark IXEL and the respondent's trade-mark PAXIL. Accordingly, making the ruling that the Registrar should have made, I reject the respondent's opposition and order the Registrar to proceed with the registration of the trade-mark IXEL that is the subject matter of application no. 743,101, with costs.

                                   J.

OTTAWA, ONTARIO

March 29, 2000

Certified true translation

Martine Brunet, LL.B.

FEDERAL COURT OF CANADA

TRIAL DIVISION

NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET NO:                         T-2093-98

STYLE:                                     PIERRE FABRE MÉDICAMENT

v. SMITHKLINE BEECHAM CORPORATION

PLACE OF HEARING:            Montréal, Quebec

DATE OF HEARING: February 22, 2000

ORDER AND REASONS FOR ORDER OF PINARD J.

DATED:                                   March 29, 2000

APPEARANCES:

Jean-François Buffoni                                        FOR THE APPLICANT

Chantal Desjardins

Shu-Tai Cheng                                                   FOR THE RESPONDENT

Robert MacDonald

SOLICITORS OF RECORD:

MARTINEAU WALKER                                             FOR THE APPLICANT

Montréal, Quebec

GOWLING, STRATHY & HENDERSON                   FOR THE RESPONDENT

Ottawa, Ontario