Date: 19990831
Docket: T-2064-97
BETWEEN:
TOYOTA JIDOSHA KABUSHIKI KAISHA
ata TOYOTA MOTOR CORPORATION
-and-
LEXUS FOODS INC.
Respondent
REASONS FOR ORDER AND ORDER
BLAIS J.
| [1] This is an appeal by way of section 56 of the Trade-Marks Act of a decision of the Registrar of Trade-marks dated July 22, 1997, rejecting the applicant"s opposition to the registration of application serial no. 703,830 for the mark LEXUS. |
BACKGROUND
| [2] The applicant is the owner of the following trade-mark registrations: |
| LEXUS registration no. TMA 377,407 granted December 21, 1990 for use in association with "motor cars and parts and accessories therefor"; |
| LEXUS registration no. TMA 377,423 granted December 21, 1990 for use in association with "repair and maintenance of automobiles; leasing or renting of automobiles; and providing financing to others for the purchase of automobiles"; and |
| LEXUS & DESIGN registration no. TMA 412,246 granted May 14, 1993 for use in association with automobile parts and accessories and a wide variety of consumer goods. |
| [3] On April 27, 1992 Lexus Foods inc., the respondent, filed application serial no. 703,830 for registration of the trade-mark LEXUS based upon proposed use of the mark in association with "canned fruits, canned vegetables, fruit juices and vegetables juices". |
| [4] The applicant filed a statement of opposition on February 10, 1993 and an amended statement of opposition on September 3, 1993. |
DECISION OF THE REGISTRAR
| [5] The Registrar found that the applicant had failed to provide evidence showing it had a famous mark. He concluded that there was no likelihood of confusion between the parties" marks as there was no connection between the goods and services of the applicant and the wares of the respondent and refused the applicant"s opposition. |
POINTS IN ISSUE
| Is Toyota"s LEXUS a famous trade-mark? and |
| Is there a likelihood that the use of the mark LEXUS by the respondent would cause confusion? |
APPLICANT"S SUBMISSIONS
| [6] It is submitted that had the Registrar had evidence before him regarding the facts surrounding the applicant"s adoption of the mark LEXUS and evidence before him supporting a conclusion that the applicant was the owner of a "famous" mark, the Registrar could have concluded that there was a likelihood that confusion would arise from the simultaneous use of the same mark by two different entities. |
| [7] It is further submitted that having regard to the new evidence filed in this appeal, the applicant has, in fact, provided sufficient facts for this Court to conclude that it is the owner of a famous mark and that there is, therefore, a likelihood of confusion. |
| [8] In view of the results of a survey conducted on behalf of the applicant to gauge the public"s perception of the word "lexus" shortly after the date of the Registrar"s decision, it is submitted that as of September 1997 a clear majority (58%) of the Canadian public associated the mark LEXUS with a vehicle. It clearly shows that the applicant has a famous mark. |
RESPONDENT"S SUBMISSIONS
| [9] Respondent submits that Toyota"s mark has been used in Canada since 1990. That is only two years prior to the date Lexus Foods started using its mark. Toyota"s mark has not been in use for long enough to be accorded the status of a famous mark, especially when compared to the length of time Lexus Foods used its mark Toyota"s mark, if at all, has only acquired recognition amongst car purchasers in Canada. |
| [10] It is the respondent"s submission that word association surveys are viewed as a poor method of judging the thought patterns and commercial loyalties of consumers, therefore the Corbin survey should be given no weight. Furthermore, Dr. Corbin"s study does not measure whether a consumer, when presented with a LEXUS brand of canned fruits, canned vegetables, fruit juices or vegetable juices, would in any way associate those wares with Toyota. |
| [11] Lexus Foods" additional evidence reinforces the Registrar"s view that Canadian consumers would not be confused by traders in different fields trading under the name "lexus" as several traders other than Toyota and Lexus Foods already use the name "lexus". |
| [12] The distinction between the wares of the applicant and opponent is key to the issue of confusion. Toyota"s wares are distinctive from the wares of Lexus Foods. There is nothing within the evidence to alter the decision of the Registrar that there is no reasonable likelihood of confusion between the marks at issue. |
ANALYSIS
| [13] On December 4, 1997, by order of justice Hugessen, the appellant was granted leave to file the affidavits of Jefferey, Corbin and Yan. Pursuant to paragraph 56(5) of the Trade-marks Act: |
Additional evidence
56(5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.
Preuve additionnelle
56(5) Lors de l'appel, il peut être apporté une preuve en plus de celle qui a été fournie devant le registraire, et le tribunal peut exercer toute discrétion don"t le registraire est investi.
| [14] Therefore, in determining this appeal, the Court will be guided by the principles established in the jurisprudence which dictate that the Court should approach with caution any appeal from a decision of a Registrar since he is generally considered a specialist in trade mark matters1. However, since new evidence was introduced, this Court enjoys greater latitude in relation to the Registrar"s decision2. |
Is Toyota"s LEXUS a famous trade-mark?
| [15] To be considered a famous trade-mark, a trade-mark must be generally recognized throughout Canada as well as by most, if not all, segments of the population3. |
| [16] The applicant has produced the affidavit of Ruth Corbin, who conducted a survey to measure what comes to mind, if anything, when adult Canadians hear the term "Lexus". The result of this survey indicates that 6 out of 10 Canadian adults recognize the term LEXUS as indicative of a car. |
| [17] Respondent made representations to the effect that the Corbin affidavit should be given no weight because word association surveys are viewed as a poor method of judging the thought patterns and commercial loyalties of consumers and have been highly criticized in Canada and the U.S. when used as proof of confusion. |
| [18] However, in my opinion, the result of the survey is sufficient in itself to demonstrate that Toyota"s Lexus trade-mark can be described as famous or very well known within the parameters of the law. |
| [19] Moreover, it has been established through the Jeffery, Pape, Imai and White affidavits that the applicant"s trade-mark Lexus was promoted through significant commercial use and advertisement prior to the filing of the subject application on April 27, 1992. |
Is there a likelihood that the use of the mark LEXUS by the respondent would cause confusion?
| [20] Section 6(5) of the Trade-mark Act sets out the main guidelines to determine if confusion exists. The five criteria are not exhaustive and all surrounding circumstances have to be considered. |
| What to be considered
(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.
|
Éléments d'appréciation
(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.
|
| [21] The Registrar has already granted that paragraphs 6(5)(a), (b) and (e) favour the applicant, leaving paragraphs 6(5)(c) and (d) relatively to the nature of the wares, services or business; and the nature of the trade, respectively to be determined. I see no reason to redetermine what has been found in favour of the applicant by the Registrar as there was not additional evidence presented by respondent to the contrary. |
| [22] It must first be noted that coined words such as "Lexus" have been given a broader ambit of protection. In this case, this notion is reinforced due to the fact that the Court considers the trade-mark "Lexus" to be well-known. |
| [23] Does the significant difference in the nature of the wares: motor vehicles, parts and accessories on one hand; and fruit and vegetable juices and canned fruits and vegetables on the other hand, permit to conclude that there will be no likelihood of confusion of the two marks? |
| [24] I believe that in answering this question, which constitutes in my view, the central issue in this case, the surrounding circumstances have to be examined closely as highly relevant considerations. This approach also suggests that one has to be careful in making comparisons with other cases which could be distinguishable based upon their own surrounding circumstances. |
| [25] First, emphasis has been made by the applicant that the respondent has adopted the mark of the applicant in its entirety and has added no further distinctive portion to the mark or distinguished it from the applicant"s mark in any way. |
| [26] Second, the respondent"s Vice-President admitted personal knowledge of the applicant"s trade-mark Lexus at the time that the mark was adopted by the respondent. The respondent"s Vice-President also admitted that the name was chosen because it represented a quality name. |
| [27] The Registrar recognized that "Lexus" is a coined word and that its inherent distinctiveness would entitle it to a wide ambit of protection. In addition, as ruled by the Federal Court of Appeal in Miss Universe Inc. v. Bohna [1995] 1 F.C. 614: |
| |
The factors enunciated in paragraphs 6(5)(a) to (e) need not be interpreted as having equal weight in all circumstances. Where, for example, a strong trade-mark is measured against a proposed mark, criteria (c) and (d), i.e. the nature of the wares, services or business and the nature of the trade, are not particularly determinative. |
|
| [28] The Pink Panther4 case has been mentioned by both parties, but as I noted earlier, the Court must be careful when comparing cases that involve different circumstances. In particular, the Pink Panther case did not have to deal with a coined word on which the applicant directed promotional efforts, based specifically on this particularity with the objective that the name would stick to the car and would evoke a high standard of quality. |
| [29] Additionally, the fact that the trade-marks of the appellant in Pink Panther were used by its predecessors in title for over 30 years is a significant difference with the case at bar. It could be contemplated that a trade-mark, which is enjoying the beginning of the famousness deserves an even wider ambit of protection in order to preserve this rising reputation. |
| [30] Moreover, I once more agree with the Court of Appeal in Miss Universe Inc. v. Bohna5 where the Court finds that: |
| |
It was the duty of the respondent to select a name with care so as to avoid any confusion - as is required under the definition of "proposed trade-mark" in section 2 of the Act - and so as to avoid the appearance that he intended to jump on the bandwagon of an already famous mark. |
|
| [31] The fact that the respondent"s Vice-President also admitted that the name was chosen because it represented a quality name shows that the promotional efforts by the applicant was somewhat successful and could provide for an appreciable lift in promoting it own products. |
CONCLUSION
| [32] Therefore, the surrounding circumstances and the evidence adduced provide sufficient elements to conclude that the trade-mark of the applicant being famous and made of a coin word should benefit from a wide ambit of protection having the consequence that less weight should be accorded to the difference in the nature of the wares. |
| [33] For those reasons, I would allow the appeal and direct the Registrar of Trade Mark to refuse the respondent"s application for the registration of the trade mark "Lexus", serial no. 703830. With costs. |
Pierre Blais
Judge
OTTAWA, ONTARIO
August 31, 1999
__________________
1 Benson & Hedges (Canada) Ltd. v. St.Regis Tobacco Corp. (1968), [1969] S.C.R. 192">[1969] S.C.R. 192.
2 Choice Hotels International Inc. v. Hotels Confortel Inc. (1996), 67 C.P.R. (3d) 340 at 344 (F.C.T.D.).
3 Jaguar Cars Ltd. v. Manufacture des Montres Jaguar S.A. (1997), 78 C.P.R. (3d) 548 at 555 (T.M.O.B.).
4 United Artists Corp. v. Pink Panther Beauty Corp.[1998] 3 F.C. 534.
5 [1995] 1 F.C. 614.
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