Skydome Corporation v. Toronto Heart Industries Ltd., docket T-2491-95

     T-2491-95

     IN THE FEDERAL COURT OF CANADA

     TRIAL DIVISION

IN THE MATTER OF trade-mark Application No. 593,961 for the trade-mark WHERE THE WORLD COMES TO PLAY filed on October 22, 1987, SkyDome Corporation (formerly Stadium Acquisition Inc. and assignee from Stadium Corporation of Ontario Limited)

BETWEEN:

     SKYDOME CORPORATION,

     Appellant,

     - and -

     TORONTO HEART INDUSTRIES LTD., and

     THE REGISTRAR OF TRADE-MARKS,

     Respondents.

     REASONS FOR JUDGMENT

LUTFY J.:

     This appeal is brought under section 56 of the Trade-marks Act¹ (the "Act") from the decision of the Registrar of Trade-Marks (the "Registrar") of September 28, 1995 in which the appellant's application for the registration of the trade-mark WHERE THE WORLD COMES TO PLAY was refused in respect of certain wares.

     The application for registration of WHERE THE WORLD COMES TO PLAY was filed on October 22, 1987. It was based on the proposed use in Canada for a lengthy list of wares including various toys and games, foods and beverages, infant accessories, sporting goods and recreational equipment, clothing, footwear, stationery supplies, luggage and accessories, souvenir items and jewellery, as well as for services related to the operation of a stadium, entertainment complex, hotel and restaurant. The application was advertised in the Trade-Marks Journal on July 18, 1990.

     On August 14, 1990, in its statement of opposition, the respondent Toronto Heart Industries Ltd. ("respondent") alleged that the proposed trade-mark was not registrable pursuant to section 12(1)(d) of the Act on the basis that it was confusing with its own registered trade-mark TORONTO COME TO PLAY. The respondent's trade-mark includes souvenir items, T-shirts, key-rings, buttons, rulers and sweatshirts. Before the Registrar, the respondent did not file any evidence or written submissions in support of its opposition. The appellant filed an affidavit which was found to be inadmissible and written argument.

     In refusing to register WHERE THE WORLD COMES TO PLAY on the basis of the issue of confusion, the Registrar stated:

As for Section 6(5)(a) of the Act, the opponent's mark TORONTO COME TO PLAY suggests that the opponent's wares have a Toronto connection. Thus, although the opponent's mark is inherently distinctive it is not a strong mark. There being no evidence from the opponent, I must conclude that its mark has not become known at all in Canada.

The applicant's mark WHERE THE WORLD COMES TO PLAY appears to refer to some form of entertainment complex described in the applicant's statement of services which includes a stadium, hotel, restaurant and health club. The mark is therefore inherently weak when used with the applicant's services. However, the mark is not suggestive in relation to the proposed wares and is therefore inherently strong when used with those wares. The Lauriola affidavit comprises inadmissible hearsay evidence. Thus, the applicant has not evidenced any use of its mark. I must therefore conclude that the applicant's mark has not become known at all in Canada.

...

As for Section 6(5)(e) of the Act, I consider that there is some degree of resemblance between the marks at issue in all respects. Although one refers to the world and the other to Toronto, both include the phrase COME(S) TO PLAY. Both marks suggest the idea of coming to a tourist site or attraction for recreational or entertainment purposes. If, in fact, the applicant's mark is associated with the SkyDome stadium in Toronto, that would emphasize the resemblance in the ideas suggested by the two marks.

In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. Insofar as the wares of the parties are similar, I find that the marks are confusing given that they have some degree of resemblance. Otherwise, I find that the marks are not confusing.

     On November 27, 1995 the appellant filed an appeal from this decision. The appellant and the respondent adduced additional evidence before this Court. The respondent filed written submissions but chose not to appear at the hearing of the appeal. The Registrar did not participate in this appeal.

     The appellant's new evidence establishes that its trade-mark WHERE THE WORLD COMES TO PLAY has been used in the advertisement of the SkyDome stadium. The appellant asserts that it has acquired a reputation in Canada in that mark. The mark has been used in association with the SkyDome stadium since late 1988 or early 1989. Furthermore, the appellant is not aware of any instances of confusion in Canada as the result of the concurrent use of both trade-marks in the Canadian marketplace.

     The respondent's deponent establishes the use of the trade-mark TORONTO COME TO PLAY since October 1987 through sales to several national retailers and other local stores.

     Pursuant to subsection 56(5) of the Act, this significant new evidence allows the Court to exercise any discretion vested in the Registrar. For this reason, the appeal is treated as a trial de novo.²

     In Miss Universe Inc.,³ Decary J.A. explained certain principles concerning the likelihood of confusion between trade-marks:

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.

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.

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.

[references omitted]

     All the circumstances enumerated at subsection 6(5) of the Act must be considered in determining whether the proposed trade-mark is likely to cause confusion. However, the enumerated factors do not need to be interpreted as having equal weight in all circumstances.⁴ Indeed, the degree of resemblance between trade-marks in appearance or sound or in the ideas suggested by them is often the most crucial factor.⁵

     Also, the trade-mark must be considered as a whole and not dissected.⁶ This principle was summarized by Desjardins J.A. in Park Avenue Furniture Corp.:⁷

I agree with the appellant that marks are to be considered in their entirety. On this very point, H.G. Fox says the following (H.G. Fox, op. cit, at 167-169):

"... In applying these tests the first principle to be invoked is that the marks are to be looked at as totalities and not as dissected items. The idea of each mark, that is, the net impression left by the mark as a whole upon the mind is to be considered. It is the mark taken in its entirety that is to be examined and a decision then arrived at whether such mark is likely to cause confusion with one already registered ... The true test is whether the totality of the mark proposed to be registered is such that it is likely to cause mistake or deception or confusion in the minds of persons accustomed to the existing trademark. It is the combination of the marks as a whole that is to be regarded and the effect or idea of the whole that is to be compared."

...

In the case at bar, what the trial judge had to decide was the likelihood of confusion between the marks Posture-Beauty and Babybeauty taken in their entirety. He erred in dissecting the trademark and in giving strong trade protection to the word Beauty.

     In the present case, both marks possess little inherent distinctiveness. The respondent's mark is not strong and does not have a claim to a wide ambit of protection. Therefore, even minor differences between the parties' marks should distinguish them.⁸

     The appellant's mark WHERE THE WORLD COMES TO PLAY is used with wares and services related to the SkyDome stadium. The respondent's wares have been distributed to well-known retailers. The appellant's assertion that the SkyDome stadium has acquired a reputation throughout Canada does not necessarily establish that its mark has become more well-known than the respondent's mark.

     There is no substantial difference in the length of time that the two trade-marks have been in use. Although there is an overlap between the nature of the wares of the parties, the appellant's list of wares covers a much larger range of products. There is also a certain overlap between the nature of the trade of the parties.

     In my view, the trade-marks appear and sound different in their entirety even though the words "COME(S) TO PLAY" are common to both. The marks are quite different in their appearance and in the way they are presented. The appellant's mark is used as a complete sentence and the respondent's mark is separated into two parts. Furthermore, greater emphasis may be placed on the first word of the marks.⁹ In this case, there is no similarity between the first word of each mark and it is very unlikely that an ordinary consumer would confuse them in sound or appearance. As a matter of first impression from the perspective of an ordinary consumer, the trade-marks are sufficiently dissimilar and, consequently, it would be very unlikely that they would be confused when used in the same area. Although both marks suggest the idea of joining people for recreational purposes, when each mark is taken as a whole and all the factors are considered, confusion between them is unlikely. In addition, no evidence was presented establishing confusion between the marks during the several years they have both been in use.¹⁰

        

     For these reasons, the decision of the Registrar of September 28, 1995 will be set aside with respect to those wares for which registration was refused. The matter will be referred back to the Registrar for redetermination on the basis that the application under number 593,961 for the registration of the trade-mark WHERE THE WORLD COMES TO PLAY be granted for all the wares and services listed in the application.

     The appellant has not sought any order as to costs.

                                                 Allan Lutfy

                                                 Judge

Ottawa, Ontario

March 10, 1997

__________________

¹      R.S.C. 1985, c. T-13.

²      Sim & McBurney v. Belvedere International Inc. (1993), 53 C.P.R. (3d) 522 at 528 (F.C.T.D.); Bally Schuhfabriken AG/Bally's Shoe Factories Ltd. v. Big Blue Jeans Ltd. (1992), 41 C.P.R. (3d) 205 at 209 (F.C.T.D.); McDonald's Corp. v. Coffee Hut Stores Ltd. (1994), 76 F.T.R. 281 at 288 (F.C.T.D.). According to subsection 56(5) of the Act, "... evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar".

³      Miss Universe Inc. v. Bohna, [1995] 1 F.C. 614, 58 C.P.R. (3d) 581 (F.C.A.), at 621 (F.C.).

⁴      Ibid. at 624.

⁵      United Artists Corp. v. Pink Panther Beauty Corp. (1996), 111 F.T.R. 241 at 255, notice of appeal filed on May 1, 1996 under Court file No. A-365-96; Effem Foods Ltd. v. Export/Import Clic Inc. (1993), 53 C.P.R. (3d) 200 at 203 (F.C.T.D.); Beverly Bedding & Upholstery Co. v. Regal Bedding Ltd (1980), 110 D.L.R. (3d) 189 at 193 (F.C.T.D.), aff'd (1982), 133 D.L.R. (3d) 255 (F.C.A.).

⁶[1965] S.C.R. 734">      Ultravite Laboratories Ltd. v. Whitehall Laboratories Ltd., [1965] S.C.R. 734 at 737; Oshawa Group Ltd. v. Creative Resources Co. Ltd. (1982), 46 N.R. 426 at 433 (F.C.A.).

⁷      Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413, 130 N.R. 223, (F.C.A.) at 426-7 (C.P.R.).

⁸      Supra note 3 at 622; Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 at 359 (F.C.A.).

⁹      Conde Nast Publications Inc. v. Union des Editions modernes (1979), 46 C.P.R. (2d) 183 at 188 (F.C.T.D.); Choice Hotels International Inc. v. Hotels Confortel Inc. (1996), 112 F.T.R. 39 at 49, notice of appeal filed on April 3, 1996 under Court file No. A-284-96.

¹⁰      However, the fact that two marks have co-existed for some time without actual confusion is not in itself conclusive of the absence of confusion. See Mr. Submarine Ltd. v. Amandista Investments Ltd., [1988] 3 F.C. 91 (F.C.A.).