Date:
20130206
Docket:
T-1423-11
Citation:
2013 FC 127
Ottawa, Ontario,
February 6, 2013
PRESENT: The
Honourable Mr. Justice Manson
BETWEEN:
|
|
THE THYMES, LLC
|
|
|
|
Applicant
|
|
and
|
|
|
REITMANS (CANADA) LIMITED
|
|
|
|
Respondent
|
|
|
|
|
REASONS FOR
JUDGMENT AND JUDGMENT
I. Background
[1]
On
March 30, 2005, the applicant, The Thymes LLC, filed an application to register
the trade-mark THYMES [the Thymes application] for the following wares:
Skin soap; hair
and body shampoo; non-medicated bath preparations, namely, liquid soap, bath
conditioner, gels salts and body scrubs; body crème; body powder; body oil;
body lotion; sachets; perfume; eau de toilette; aerosol room scenting sprays;
and candles
[2]
The
Thymes application was based on: (a) proposed use and (b) registration in the United States of America under No. 3,308,432 and use in the United States of America. The Thymes
application had a priority filing date of March 7, 2005.
[3]
On
June 23, 2008, the respondent, Reitmans (Canada) Limited, filed a Statement of
Opposition [Opposition] against the Thymes application.
[4]
On
August 28, 2008, the applicant filed a Counterstatement denying the Opposition.
On December 22, 2008, the opponent filed its evidence. The applicant filed its
evidence on April 22, 2009. I will discuss their evidence below. Both parties
filed a Written Argument and attended at the oral hearing.
[5]
The
Decision of the Registrar of Trade-marks [the Registrar] refusing the Thymes
application was issued by the Trade-marks Office on July 5, 2011. This is an
appeal of that decision. In accordance with the Federal Court Rules, (SOR/98-106),
this appeal is treated as an application.
[6]
The
Notice of Application in this matter states that the Registrar erred in finding
that:
A.
Use
of the applicant’s THYMES mark in the U.S. was required as of the filing date
of the application in Canada in order to make a valid claim under s. 16(2) of
the Trade-marks Act, (RSC, 1985, c T-13) [the Act]; and
B.
There
was a likelihood of confusion between the respondent’s mark THYME MATERNITY
(TMA611,775) [respondent’s mark] registered for use with, inter alia, body
lotions and creams [respondent’s wares] and applicant’s THYMES mark.
[7]
In
support of its Notice of Application, the applicant filed additional evidence
in the form of an affidavit of Jill Gerard, sworn November 7, 2011 [the Gerard
affidavit]. Ms. Gerard was cross-examined on her affidavit on February 14, 2012
[Gerard Cross-Examination].
[8]
In
response, the respondent filed a Notice of Appearance and the Affidavit of Jonathan
A. Plens, sworn December 20, 2011 [the Plens affidavit]. Mr. Plens was
cross-examined on February 9, 2012 [Plens Cross-Examination].
II. Issues
[9]
The
issues to be resolved in the present appeal are:
A.
Did
the Registrar err in concluding that use of a trade-mark registered or applied
for in a foreign jurisdiction was required in a foreign country as of the
filing date of the application in Canada in order to be a valid filing basis
under s. 16(2) of the Act?
B.
Did
the Registrar err in concluding that there is a likelihood of confusion between
the applicant’s THYMES and T design trade-mark and the respondent’s trade-marks
and trade names?
III. Standard of Review
[10]
Given
that new evidence was filed by the opponent in this matter which was not before
the Opposition Board, the Court has an unfettered discretion to consider the
matter and come to its own conclusion as to the correctness of the Board’s
decision, if the new evidence is significant and would materially affect the
underlying decision (Bojangles' International, LLC v Bojangles Café Ltd,
2006 FC 657 [Bojangles]; Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22
at paras 35, 37 [Mattel])
[11]
However,
where no new significant evidence is added on appeal, the standard of review is
reasonableness simpliciter (Molson Breweries v John Labatt Ltd, [2000]
FCJ No 159, [2000] 3 FC 145; Novopharm Ltd v AstraZeneca AB, 2001 FCA
296).
[12]
Thus,
the real question for consideration by the Court is the nature and quality of
the new evidence, and whether it materially affects the decision below, so that
the standard calls for a reconsideration of the evidence by the Court to
determine the issues, or whether the new evidence is not significant and would
not materially affect the decision below, such that the standard of review is
reasonableness and considerable deference should be given to the decision below
(Telus Corp v Orange Personal Communications Services Ltd, 2005 FC 590
at 397; aff’d 2006 FCA 6 (FCA)).
[13]
In
any case, my consideration of the new evidence does not, in any way, eliminate
the Board’s expertise or indeed the examiner’s decision as a relevant
consideration (Mattel, above, at paras 35 and 37):
35 The Act provides for a full
right of appeal to a Federal Court judge who is authorized to receive and
consider fresh evidence (ss. 56(1) and 56(5)). There is no privative clause.
Where fresh evidence is admitted, it may, depending on its nature, put quite a
different light on the record that was before the Board, and thus require the
applications judge to proceed more by way of a fresh hearing [page794] on an
extended record than a simple appeal (Philip Morris Inc v Imperial Tobacco
Ltd (No 1) (1987), 17 CPR (3d) 289 (FCA)). Section 56 suggests a
legislative intent that there be a full reconsideration not only of legal
points but also of issues of fact and mixed fact and law, including the
likelihood of confusion. See generally Molson Breweries v John Labatt Ltd,
[2000] 3 FC 145 (CA), at paras 46-51; Novopharm Ltd v Bayer Inc (2000),
9 CPR (4th) 304 (FCA), at para 4, and Garbo Creations Inc v Harriet Brown
& Co (1999), 3 CPR (4th) 224 (FCTD).
37 What this means in practice
is that the decision of the registrar or Board "should not be set aside
lightly considering the expertise of those who regularly make such
determinations": [page795] McDonald's Corp v Silcorp Ltd (1989), 24
CPR (3d) 207 (FCTD), at p 210, aff'd (1992), 41 CPR (3d) 67 (FCA). Reception of
new evidence, of course, might (depending on its content) undermine the factual
substratum of the Board's decision and thus rob the decision of the value of
the Board's expertise. However, the power of the applications judge to receive
and consider fresh evidence does not, in and of itself, eliminate the Board's
expertise as a relevant consideration: Lamb v Canadian Reserve Oil & Gas
Ltd, [1977] 1 S.C.R. 517, at pp 527-28.
IV. Relevant Dates
[14]
The
material date for determining compliance with section 30 of the Act is the date
the application was filed.
[15]
The
material date for considering confusion under s. 12(1)(d) of the Act is the
date of the Opposition Board decision. However, where additional evidence is
filed that is significant and probative, so the standard is such that the Court
should consider it as a fresh hearing, the material date is the date of the
appeal judgment.
[16]
The
material date for considering distinctivess is the date of filing the Opposition.
V. Onus
on the Parties
[17]
While
the initial evidentiary burden for the opposition is on the opponent, the legal
burden or onus that the trade-mark is registrable remains on the applicant, on
a balance of probabilities (John Labatt Ltd v Molson Co, [1990] FCJ No 533, 30
CPR (3d) 293, aff’d [1992] FCJ No 525, 42 CPR (3d) 495 (FCA)).
VI. Analysis
A. Was
Use of the Applicant’s THYMES Mark in the United States Required as of the
Filing Date of the Application in Canada?
[18]
I
will deal with the applicant’s first ground of appeal. There is no doubt a
proper reading of that section requires that, at the time of filing the
application, if an applicant relies on registration or application and use
abroad pursuant to that section, there must have been use of the trade-mark at
the time of the application to rely on this section as a valid basis to obtain
registration in Canada.
[19]
It
is clear that section 16(2) of the Act emphasizes that use of the mark in the
country of origin of the applicant is a requirement for registration in Canada.
[20]
Further,
the last portion of section 16(2) of the Act, namely : “unless at the date of
filing of the application in accordance with section 30”, also supports the
view that both section 16 and section 30 requirements must exist and be
reviewed as at the date of filing of the application.
[21]
Having
regard to all of the foregoing, I find the applicant’s argument is based on an
incorrect reading and interpretation of section 16(2) of the Act. The ground of
appeal therefore fails.
B. Did the Registrar Err
in Concluding that There is a Likelihood of Confusion Between the Applicant’s
THYMES Trade-Mark and the Respondent’s Trade-Mark and its Trade Names?
i. Evidence Before
the Opposition Board
[22]
The
opponent’s evidence consisted of certified copies of the opponent’s Canadian
trade-mark registrations and applications, the affidavit of Ms. Kim Schumbert
[Schumbert affidavit] and the affidavit of Ms. Angelina Liapis. The applicant’s
evidence consisted of the affidavit of Mr. Sanjukta Tole. There were no
cross-examinations on the affidavits.
[23]
The
hearing officer raised several concerns with the nature of the opponent’s
evidence before her:
a)
The
opponent’s evidence referred to thirteen trade-mark registrations and four
trade-mark applications using the word THYME. Nine of the trade-mark
registrations listing skin care products as part of the wares. Yet the
Opposition only referred to five of the registered marks and the four applications
with respect to the opponent’s allegations of confusion;
b)
The
opponent’s evidence of Ms. Schumbert referred not only to all the opponent’s
marks, not those as pleaded, but also did not include any sales figures or
invoices relating to opponent’s use of THYME MATERNITY on its wares and
services in Canada, or information regarding the extent of circulation of print
advertising in Canada.
[24]
The
hearing officer refused to allow the opponent to amend its opposition to
include the additional registrations not included in the Opposition.
[25]
The
hearing officer then found that the opponent succeeded on the first ground of
opposition, namely that the applicant failed to show registration or
application and use abroad of its trade-mark at the time of filing of
the application in Canada, and therefore that basis for registration was
invalid.
[26]
The
hearing officer then considered section 12(1)(d) of the Act and likelihood of
confusion, and found that the opponent’s case was strongest with respect to the
opponent’s THYME MATERNITY trade-mark registration No. 611,775. She held that
if there was no likelihood of confusion with that trade-mark, the opponent
would not succeed based on the remaining trade-marks asserted, as they were
less similar, in appearance, or in respect of the wares and services covered in
the registrations.
[27]
The
hearing officer held that the opponent’s evidence as a whole was sufficient to
show its THYME MATERNITY mark had become known to a considerable extent in
Canada since 2003 through signage and use in its stores across Canada and in
association with wares, directly or indirectly, as well as in catalogues from
2002 to 2008, whereas the applicant did not show any use of its trade-mark
THYMES & T design. She went on to find that the factors set out in section
6(5) of the Act, including the length of time in use, the nature of the wares
(overlap), the channels of trade and the degree of resemblance all favoured the
opponent. Accordingly, a consumer would, as a matter of first impression, be
likely to believe the skin care products associated with the opponents THYME
MATERNITY trade-mark and with the opponent’s THYMES & T design mark were
manufactured, sold or performed by the same person.
[28]
The
hearing officer also found that the applicant’s THYMES & T design
trade-mark is likely to be confused with the opponent’s previous use of its
trade names, and that the applicant’s trade-mark is not distinctive and not
capable of distinguishing the applicant’s wares from the wares covered by the
opponent’s trade-marks.
ii. New
Evidence Filed on Appeal
[29]
The
applicant filed the affidavit of Ms. Gerard sworn November 7, 2011. The
opponent filed the affidavit of Mr. Plens sworn December 20, 2011. Both
affiants were cross-examined.
[30]
The
Gerard affidavit provides the additional evidence not before the hearing
officer:
a)
The
applicant’s trade-mark THYMES & T design has been used in Canada as early as June 21, 2005 in association with skin care products;
b)
Previously,
the applicant and its predecessors in title made continuous use of the word
THYMES, in association with skin care products in Canada, from 1989 to 2005, as
used in THE THYMES and the THE THYMES LIMITED.
[31]
Cross-examination
of Ms. Gerard confirmed this evidence.
[32]
The
Plens affidavit provides the following additional evidence not before the
hearing officer:
a)
Print
advertising in Canada showing used of the opponent’s THYME MATERNITY trade-mark
since as early as 1998 and in association with skin care products since 2003;
b)
Sales
figures for opponent’s wares making use of its THYME MATERNITY trade-mark in
association with skin care products in Canada since as early as 2003;
c)
Internet
use of the opponent’s THYME MATERNITY mark in association with skin care
products since 2003;
d)
Advertising
figures for 2003 to the present date for all its THYME trade-marks;
[33]
Cross
–examination of Mr. Plens did not change the nature of his evidence.
[34]
While
both parties provided evidence relating to use and reputation of their
respective trade-marks in the United States, I give no weight to this evidence,
as being irrelevant for purposes of this appeal (Interstate Brands Co -
Licensing Co v Becker Milk Co, [2000] FCJ No 358, 254 NR 360 (FCA).
VII. Analysis and Reasons
for Judgment
[35]
Having
reviewed the quality of the applicant’s new evidence before me, as well as the
opponent’s new evidence, I am satisfied that this new evidence is significant
and probative with respect to the issues to be decided in this appeal.
Accordingly I am deciding this matter on the facts before me and applicable
legal principles, but shall, as well, give some consideration to the hearing
officer’s expertise below.
[36]
In
a nutshell, it is the applicant’s position that given the weakness of the
opponent’s evidence, and having regard to the applicant’s new evidence which
establishes the applicant’s use of previous trade-marks making use of the word
THYMES, from 1989 to 2005, and use of its trade-mark THYMES & T design from
June 2005 to the present date, the applicant should succeed in its appeal. This
is particularly so because, during either period of time, 1998 to the present,
or 2005 to the present, there is a complete absence of any actual confusion
with any of the opponent’s trade-marks as pleaded or its trade names. Further,
use of THYMES since 1989 gives prior use and therefore prior rights to the
applicant with respect to using THYMES as part of a trade-mark, over any use of
the trade-marks or trade names of the opponent (Masterpiece Inc v Alavida
Lifestyles Inc), 2011 SCC 27 at paras 35-36):
35 At the outset, it is important to recall the
relationship between use and registration of a trade-mark. Registration itself
does not confer priority of title to a trade-mark. At common law, it was use of
a trade-mark that conferred the exclusive right to the trade-mark. While the Trade-marks
Act provides additional rights to a registered trade-mark holder than were
available at common law, registration is only available once the right to the
trade-mark has been established by use. As explained by Ritchie C.J. in Partlo
v Todd (1888), 17 SCR 196, at p 200:
It is not the registration that makes the party
proprietor of a trade-mark; he must be proprietor before he can register ... .
36 That principle established under Canada's early trade-mark legislation continues under the present Act. Rights arising from
use have been incorporated into the Act by granting rights to the first user of
a trade-mark in two ways. First, under s. 16, a party normally gains a priority
right to register a trade-mark when it first uses that trade-mark. Second, a
user is also able to oppose applications or apply to expunge registrations
based on its earlier use of a confusing trade-mark. This explains why an
unregistered trade-mark of Masterpiece Inc. can be the basis of a challenge to
Alavida's subsequent registration application. Section 16(3) of the Act
recognizes the right of a prior user against any [page404] application for
registration based upon subsequent use. Section 17(1) preserves that right,
subject to certain limitations that are of no relevance here, where the
trade-mark has been registered.
[37]
The
applicant also criticizes the quality of evidence led by the opponent, both
before the hearing officer and on appeal.
[38]
The
essential problem, as argued by the applicant’s counsel, is that the Schumbert
affidavit, which was filed on the opposition proceeding and relied upon by the
opposition board, and the Plens affidavit, which is filed as new evidence on
this appeal, both co-mingle trade-marks of the opponent relied on its Opposition
with trade-marks improperly introduced into evidence, but not pleaded. These
trade-marks of the opponent, not pleaded, were found to be inadmissible by the
hearing officer, and yet persist in the evidence relied upon by the opponent on
appeal. It is the applicant’s position that given this improper reliance on all
the opponent’s registrations and applications, in submitting evidence of use of
THYME MATERNITY by the opponent, without identifying which trade-marks
specifically relate to use of THYME MATERNITY in association with skin care
products, that evidence is rendered equivocal at best, and should be given
little or no weight.
[39]
The
applicant also relies on the finding of the examiner, who advertised the
applicant’s application for its THYMES & T design trade-mark over the
citation of the opponent’s THYME MATERNITY mark and found that the word THYME
has little inherent distinctiveness. The applicant submits these findings
should be persuasive in concluding that small differences should suffice to
distinguish the THYME & T design from the THYME MATERNITY trade-marks and
trade names of the opponent, so as to avoid any likelihood of confusion (Advance
Magazine Publishers Inc v Farleyco Marketing Inc, 2009 FC 153 at para 104).
I am not persuaded that in this case the applicant’s arguments can prevail.
[40]
The
respondent takes the position that the respondent has clearly established a
likelihood of confusion and lack of distinctiveness of applicant’s THYMES &
T design mark, by virtue not only of its evidence before the hearing officer
below, but also as bolstered by its new evidence of advertising and sales since
1998 generally, and since 2003 with respect to skin care products, as provided
in the Plens affidavit. The respondent states that evidence concerning use of
the word THYME by the applicant or its predecessors from 1989 to 2005 is
irrelevant, as the Court should only consider the use of the applicant’s
trade-mark in issue, namely THYMES & T design, since 2005, as that is the
only relevant trade-mark and use to be considered. That use is subsequent to
the opponent’s established use of its trade-marks, as pleaded, which enures to
the benefit of the opponent since 1998 and at least 2003 with respect to skin
care products, clearly prior to the 2005 date of applicant’s use of its THYMES
& T design mark. Further, nothing in the new evidence changes the facts
relating to likelihood of confusion, namely:
a) The
channels of trade-mark for the sales of both parties skin care products
overlap; it is not a question of what particular retail outlets the opponent
evidently sells its wares in, but whether it may offer for sale and sell its
wares in the same channels of trade – there is no limit in the registration;
b) The
nature of the products (skin care products) are the same;
c) The
degree of resemblance between the trade-marks is high with the word THYME or
THYMES being the dominant feature of each trade-mark; and
d) If I
accept that only the 2005 date is relevant for use by the applicant, the length
of time/prior use again favours the opponent.
[41]
The
respondent further replies that, regardless of the references to all the
opponent’s trade-marks in the opponent’s evidence, the common elements of THYME
MATERNITY, which is in all of the marks, and in its trade-name, renders the
applicant’s argument regarding “co-mingling” of the opponent’s trade-marks,
unimportant, or essentially irrelevant, in respect of the result of finding a
likelihood of confusion by the hearing officer. In any event, it is argued that
the opponent’s new evidence establishes the necessary basis, in conjunction
with Ms. Schumbert’s evidence, of a likelihood of confusion with those
trade-marks and trade names of the opponent, clearly showing use of THYME
MATERNITY for skin care products and by the applicant’s use of THYME & T
design for the same or substantially the same products, whether at the date of
opposition or at the date of this appeal judgment. I agree with the
respondent’s submissions.
[42]
While
the applicant may well be able to demonstrate use of the word THYMES prior to the
dates of first use relied upon in the opponent’s trade-mark registrations, as
pleaded, or the opponent’s trade names, that does not change the nature of the
applicant’s fundamental problems concerning its registrabillity of its
trade-mark THYMES & T design, filed as application 1, 252, 795 on March 30,
2005, based upon 1) proposed use and 2) registration and use in the
United States.
[43]
The
second basis for registration has been held invalid. The first basis requires
that the applicant’s trade-mark THYMES & T design be distinctive of the
applicant’s wares as of the date of opposition (June 23, 2008) and not be
likely to be confusing with the opponent’s THYMES MATERNITY trade-marks and
trade names, as of either the date of the opposition board decision (June 25,
2011) or as of the date of this judgment, based on the new evidence filed by
both parties. For the reasons relied upon by the respondent as set out above,
the applicant must fail, in that the evidence before the Court shows there is a
likelihood of confusion with the opponent’s trade-marks and trade names at the
relevant date, namely the date of opposition, or the date of this judgment,
which I hold to be the relevant date. Moreover, the applicant’s trade-mark
THYMES & T design is not distinctive of the applicant for use in
association with skin care products as of the date of opposition, given the
opponent’s use and reputation established for its THYME MATERNITY trade-mark
and trade name and THYME trade names prior to March 30, 2005.
[44]
While
the applicant may have grounds to challenge the validity of the one or more of
the applicant’s trade-mark registrations in other proceedings, based on
possible prior use of THYMES, it does not change the problems concerning lack
of distinctiveness and likelihood of confusion for its THYMES & T design
mark as applied for on March 30, 2005.
JUDGMENT
THIS
COURT’S JUDGMENT is that the applicant’s appeal is dismissed
with costs to the respondent.
"Michael D.
Manson"
Email this Content