Date: 20001208
Docket: T-614-99
Ottawa, Ontario, this 8th day of December 2000
PRESENT: THE HONOURABLE MR. JUSTICE PELLETIER
IN THE MATTER OF Section 56 of the
Trade-marks Act, R.S.C. 1985, c. T-13
AND IN THE MATTER OF an Appeal From Decision Rendered
on Behalf of the Registrar of Trade-marks Concerning
Opposition to Registration of the Following Trade-mark:
VIDEO MAIL - Serial No. 760,169
BETWEEN:
CANADA POST CORPORATION
Applicant
- and -
PAXTON DEVELOPMENTS INC.
Respondent
REASONS FOR ORDER AND ORDER
PELLETIER J.
[1] Paxton Developments Inc. applied to register the trade mark VIDEO MAIL in connection with "telecommunication services". Canada Post Corporation ("Canada Post") objected on the ground that VIDEO MAIL was confusing with a number of Canada Post trade marks including but not limited to FAXMAIL, LASERMAIL, ADMAIL. The Trade-marks Opposition Board ("Opposition Board") decided in favour of registration, largely on the ground that "the average consumer would be more likely to associate the mark VIDEO MAIL when applied to telecommunications services with "voice mail", "electronic mail" or "E-mail" than with the opponent's marks".1 As a result, the Opposition Board found that the opponent, Canada Post, had not discharged the onus of showing that the use of the mark would likely lead consumers to assume that the services provided were provided by the applicant, Canada Post.
[2] Canada Post appealed and put in a considerable volume of new evidence including a survey of the reaction of consumers to the proposed mark VIDEO MAIL. Canada Post argues that the Opposition Board acted on no evidence in concluding that the average consumer would associate the proposed mark with generic services, such as voice mail and E-mail, and applied the wrong standard in considering the matter from the point of view of the "average" consumer. Canada Post pointed to its survey to show that a substantial number of consumers would conclude that the services offered under the mark VIDEO MAIL were offered by Canada Post. This, it says, proves that the mark is confusing within the meaning of the Trade-marks Act, R.S.C. 1985 c. T-13 (the "Act") and leads to the conclusion that the appeal ought to be allowed.
[3] The hearing of this matter was made somewhat out of the ordinary by the fact that the respondent, Paxton Developments Inc., did not file any material and did not appear at the hearing of the appeal, though it did advise the Court that it continued to maintain the validity of the registration. Placed in a similar situation in Canadian Schenley Distilleries Ltd v. Canada's Manitoba Distillery Ltd. (1975), 25 C.P.R. (2d) 1, Cattanach J. commented upon the peculiar position in which the judge finds himself in those circumstances:
| That places the Judge in the invidious position of ensuring that counsel for the appellant does so without the advantage of representations by counsel for the respondent. The Judge is therefore obliged to raise matters favourable to the respondent and unfavourable to the appellant requiring counsel for the appellant to meet the matters so raised by the Judge, as is the duty of the Judge to do so. To place the Judge in the position in which he is required to do this is almost tantamount to making him counsel for the respondent and that is why I have termed the position into which I was forced by the respondent's decision not to be represented as "invidious". |
[4] The effect of the respondent's failure to appear is to convey the impression that:
| it attaches no importance or significance to the trade mark which it proposed to use in a association with its product and that it has lost or foregone its interest in the mark and must have concluded that it is not worthy of the expense and effort of attempting to support its validity. |
[5] Nonetheless, the respondent is entitled to have its position considered on the merits. It is not considered to have abandoned its claim to registration of its mark.
[6] As is often the case in opposition matters, the issue resolves itself to one of confusion, a state of affairs which is defined in the Act:
| 2. ..."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;
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.
(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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| 2. ... « créant de la confusion » Relativement à une marque de commerce ou un nom commercial, s'entend au sens de l'article 6.
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.
(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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[7] The onus in an application for registration of a trade mark is upon the applicant to satisfy the Registrar that the mark is registrable, though the opponent has the burden of proving the use of a mark with which confusion can result. British American Bank Note Co. Ltd. v. Bank of America, [1983] 2 F.C. 778 at 791-792 (TD), (1983), 71 C.P.R. (2d) 26. The onus of proof remains with the applicant in the event of an appeal. The standard which the applicant must meet is to show that confusion is unlikely. Mitac Inc. v. Mita Industrial Co. Ltd. (1992), 40 C.P.R. (3d) 387 at 391-392, [1992] F.C.J. No. 9.
[8] Section 56 of the Act permits the introduction of "evidence in addition to that adduced before the Registrar" in an appeal of the Registrar's decision. The effect of that evidence is described in Molson Breweries v. John Labatt Ltd., [2000] F.C.J. No. 159, [2000] 3 F.C. 145:
| 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. |
[9] The limiting condition is the question of whether the evidence would have materially affected the Registrar's findings. Once it is determined that it would, the deference which would generally be afforded the Registrar's decision, as one made by a person with expertise in the subject matter of the decision, is subordinated to the Court's obligation to draw its own conclusions.
[10] In this case, the new evidence is significant and is of a nature that could materially influence the Registrar's decision. As a result, I am approaching the issue as one in which I am to "come to [my] own conclusion as to the correctness of the Registrar's decision".
[11] The Opposition Board had before it evidence of Canada Post's various registered marks including the various ADMAIL marks, FAXMAIL, LASERMAIL, LETTERMAIL, MAILTRAC, POSTE MAIL & design, REMITMAIL and SUPERMAILBOX. The certificates of registration of those marks show that some of them (ADMAIL, FAXMAIL, LASERMAIL for example) involve telecommunications. The Opposition Board consulted a number of dictionary definitions of "voice mail", "electronic mail" and "E-mail" and concluded that "the average consumer would be more likely to associate the mark VIDEO MAIL when applied to telecommunications services with `voice mail', `electronic mail' or `E-mail' than with the opponent's marks." As a result, the Opposition Board was not satisfied that the use of the mark VIDEO MAIL in association with telecommunication services would lead consumers to assume "that such services are performed and used or authorized by or under the consent of the opponent and its employees." This conclusion was applied to each of the grounds of opposition which depended upon a finding of confusion with the result that the opposition failed. This conclusion must now be reassessed in light of Canada Post's survey evidence.
[12] A threshold issue is the extent to which the community of consumers must be misled before confusion is established. The Opposition Board appeared to base its conclusions upon its assessment of what the "average" consumer might think. Objection is taken to this manner of expression as it implies a majority of consumers. In other words, the average consumer is misled if a majority of consumers are misled. The Act does not require a majority of consumers to be misled to support a funding of confusion. It is sufficient that a substantial number of consumers, more than enough to pass any de minimis threshold but less than a majority, be confused or be likely to be confused:
| What level of confusion or likely confusion must be established? Young, in his text, makes the following comment at p. 37: |
| The proof required to establish a probability of deception is that there would be a likelihood of deception in the mind of a substantial number of persons such as the ordinary purchaser or user (of the goods or services in question) purchasing with ordinary caution. In arriving at a decision the court must not surrender in favour of any witness its own independent judgment. (See Parker Knoll Ltd. v. Knoll International Ltd. [1962] RPC 265 at 279 (HL): Lord Morris.) |
| Other authorities make it clear that the substantial number or appreciable number does not mean a majority, just a sufficient number to get over the de minimis rule. In his text, Trade Marks and Unfair Competition, 2nd ed., J. Thomas McCarthy points out at p. 785 that 8.5% was found by an American court to be strong evidence of confusion. |
| Walt Disney Productions v. Triple Five Corp. et al. (1994), 53 C.P.R. (3d) 129 (Alta. C.A.) Affirming 43 C.P.R. (3d) 321. |
[13] To the extent that the use of the phrase "average consumer" means a majority of consumers, the Opposition Board was in error.
[14] The extent of the confusion required, before registration is refused, is raised sharply by the applicant's survey evidence. The applicant retained a firm to conduct a survey of consumers on its behalf. The firm conducted interviews of 600 randomly-chosen consumers in shopping malls in Vancouver, Toronto, Montreal, and Halifax. The sample was random in the sense that interviewees were individuals who happened to be in the mall on the day in question and agreed to participate. It was also controlled in the sense that age and gender criteria were applied to those who agreed to participate so that they were representative of the larger population. Participants were taken to one of two interview locations where they were either shown a card which said VIDEO ROUTE or VIDEO MAIL. Interviewees who saw one card did not see or know of the other. The interviewees who saw the VIDEO MAIL card were asked the following question:
| Please look at this with care. I am going to name and spell a trademark for a telecommunication service: the name is VIDEO MAIL. It is made up of two words spelled V-I-D-E-O-M-A-I-L. If you have an opinion, what company or organization do you think would offer this service. |
[15] Interviewees who saw the VIDEO ROUTE card were asked the same question except that VIDEO ROUTE was substituted for VIDEO MAIL. The results were then recorded verbatim. Those who had an opinion as to the service provider, other than Canada Post, were asked if there was any other company which would offer the service. When the results were tabulated, they showed that 6% of those who were shown the VIDEO MAIL card answered that Canada Post was the likely service provider while only .3% of those shown the VIDEO ROUTE card answered Canada post. Of all those who identified a service provider other than Canada Post, 3% of those who were shown the VIDEO MAIL card thought Canada Post would offer the service, while none of those who were shown the VIDEO ROUTE card identified Canada Post as a possible provider. The applicant's position is that 9% of those exposed to VIDEO MAIL were confused as to the origin of the services to be marketed under VIDEO MAIL. The authors of the study say that the difference between .3% confusion for VIDEO ROUTE and 9% confusion for VIDEO MAIL is statistically significant, which I take to mean that there is confidence that the result is not due to chance.
[16] The criteria for the use of survey evidence in trade mark matters are reviewed in Walt Disney Productions v. Triple Five Corp., supra. They include certain structural criteria who object is to ensure that the survey results are broadly representative of the general population and that the results are not skewed by inappropriate questions. Those criteria are satisfied in this case. In Joseph E. Seagram and Sons Ltd. v. Seagram Real Estate Ltd. (1990), 33 C.P.R. (3d) 454, [1990] F.C.J. No. 909, the use to be made of survey evidence is described by MacKay J. as follows:
| The question of admissibility and reliability of surveys of public opinion polls has been the subject of debate in numerous trade mark cases. However, after considering the jurisprudence concerning the matter, I understand the general principle to be that the admissibility of such evidence and its probative value are dependant upon the relevance of the survey to the issues before the court and the manner in which the poll was conducted; for example, the time period over which the survey took place, the questions asked, where they were asked and the method of selecting the participants: see Canadian Schenley Distilleries Ltd. v. Canada's Manitoba Distillery Ltd. (1975), 25 C.P.R. (2d) 1 at pp. 9-10 (F.C.T.D.), per Cattanach J. |
[17] The survey evidence presented here meets the structural requirements. The sample is large enough and is sufficiently random to be broadly representative of the public. The questions are factual and the responses were recorded without being characterized by the interviewer. The categorization was performed later by the researchers.
[18] The applicant points to the fact that in the Walt Disney matter, the Alberta Court of Appeal found confusion within a range of meaning of the Act or the basis of confused responses spanning 4.8% to 8.2% of survey respondents. On that basis, and on the basis of the 8.5% accepted as showing confusion in the judgment cited in Trade Marks and Unfair Competition 2nd Ed quoted above, the applicant says that proof of confusion in a substantial number of consumers is established.
[19] However, when one looks at the survey results, it transpires that of all interviewees who were shown the VIDEO MAIL card, 9.3% initially responded that the service provider would be Rogers cable or an affiliated company using the name Rogers. Nine (9) percent of the interviewees who were shown the VIDEO ROUTE card came to the same conclusion. This is to be compared with the 6% who initially identified Canada Post as the service provider. When one looks further, one notes that 11.6% of interviewees shown the VIDEO MAIL card initially identified a telephone company as the service provider while 7.6% of those shown the VIDEO ROUTE card came to the same conclusion. Of those who identified a service provider when shown the VIDEO MAIL card, 4.1% identified Rogers as their second choice as a possible service provider. Using the same basis of comparison, 13.4 % of interviewees identified Rogers as the service provider as opposed to 9.3% who identified Canada Post as the service provider.
[20] Do these results affect the interpretation to be put upon the 9% result. The issue is at what level does a result go beyond de minimis to become evidence of confusion on the part of a substantial number of consumers? Is the determination of a "substantial number of consumers" affected by a finding that a larger group of consumers incorrectly identifies some other service provider as the source of the services? One could conceive of a situation in which one of four possible choices was given by 25% of the sample so that each answer had a 25% share of the total responses. One could say without the benefit of statistical analysis that 25% is a substantial portion of consumers. Is that proportion any less significant for one answer because the same proportion was achieved by three other answers. One would think not. A certain level of confusion is significant whether or not other responses were given by a larger group of the survey sample.
[21] I conclude that the survey evidence, showing that 9% of consumers believed that a product called VIDEO MAIL would be provided by Canada Post, is evidence of actual confusion in a significant number of consumers.
[22] While evidence of actual confusion is a relevant, indeed weighty, consideration, it is not determinative of the issue. Section 6 of the Act requires that all of the surrounding circumstances be considered. The decision of the Registrar is, in my view, correct in most respects with respect to the balance of the circumstances to be considered:
| 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 |
| "In view of the above, the extent to which the trade-marks at issue have become known [Para 6(5)(a)] has been shown to weigh in the opponent's favour. Likewise, the length of time the trade-marks have been in use [Para 6(5)(b)] is a further surrounding circumstance which favours the opponent, the present application being based upon proposed use of the trade-mark VIDEO MAIL in Canada while the opponent has evidence use of its registered trade-marks:..." |
| c) the nature of the wares, services or business |
| d) the nature of the trade |
| "There is, therefore, an overlap in the services of the parties and consequently in their respective channels of trade, there being no limitation in the applicant's statement of services which limits the telecommunications services in any manner." |
| e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them. |
[23] On this issue, the Registrar found that the respondent's marks were not suggestive of the applicant's services but rather of services such as voice mail or E-mail. In doing so, he erred. The survey evidence introduced by the applicant shows that a significant number of persons thought that the respondent's marks were suggestive of postal services.
[24] All of these factors taken together lead to the conclusion that the Registrar erred in registering the respondent's trade-mark as it was and is confusing with the applicant's registered trade marks. Registration is therefore prohibited by paragraph 12 (1)(d) of the Act.
[25] The appeal is allowed and the registration of the respondent's trade mark is set aside.
ORDER
For the reasons stated above, the appeal is allowed and the registration of the respondent's trade mark is set aside.
"J.D. Denis Pelletier"
Judge
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1 Applicant's Record p. 23
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