La Maur Inc. v. Prodon Industries Ltd. et al., [1971] SCR 973

Supreme Court of Canada

La Maur Inc. v. Prodon Industries, [1971] S.C.R. 973

Date: 1971-04-05

La Maur, Inc. Appellant;

and

Prodon Industries Ltd. and Rayette-Faberge of Canada Ltd. Respondents.

1971: February 23; 1971: April 5.

Present: Martland, Ritchie, Hall, Pigeon and Laskin JJ.

ON APPEAL FROM THE EXCHEQUER COURT OF CANADA

Trade marks—Expungement—“Hy*style” and design for hair fixatives—Unregistered mark “STYLE” in association with hair fixatives already in use—Application to expunge dismissed—Issue of “likelihood of confusion”—Factors considered—Appeal dismissed—Trade Marks Act, 1952-53 (Can.), c. 49, s. 6(2), (5).

Following an application of December 17, 1963, the respondent (this being a reference to the predecessor and successor respondent companies) obtained on August 7, 1964, the registration, under the Trade Marks Act, 1952-53 (Can.), c. 49, of a trade mark “hy*style” and design, intended to be used in association with hair sprays and shampoos. The appellant corporation did not contest the application, but on June 18, 1964, it filed its own application for registration of the trade mark “STYLE” in association with hair fixatives and permanent waving compositions, as being a trade mark already in use by the appellant in Canada. An examiner’s report on the application, made on November 16, 1964, stated that the appellant’s mark was considered confusing with the respondent’s registered mark, and, in view of s. 12(1)(d) of the Trade Marks Act, it did not appear to be registrable. Thereafter, the appellant moved before the Exchequer Court of Canada to strike out the entire registered mark of the respondent or, alternatively, to amend the latter’s registration by deleting the word “style” therefrom. The motion was dismissed and the appellant then appealed to this Court. The main issue in the appeal was whether the two marks were “confusing” within the meaning of s. 6(2) of the Act.

Held: The appeal should be dismissed.

The Court agreed with the conclusion of the trial judge that the appellant had failed to prove the likelihood of confusion at the material date (December 17, 1963) and with his findings in coming to this

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conclusion. Wella Corporation v. La Maur, Inc. (1963), 136 U.S.P.Q. 453; La Maur, Inc. v. Revlon, Inc. (1965), 146 U.S.P.Q. 654, distinguished; British Drug Houses Ltd. v. Battle Pharmaceuticals, [1944] Ex. C.R. 239, affirmed, [1946] S.C.R. 50; Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp., [1969] S.C.R. 192, referred to.

APPEAL from a judgment of Gibson J. of the Exchequer Court of Canada[1], dismissing an application for the expungement of a trade mark registration. Appeal dismissed.

Ronald J. Rolls and C. Ronald Riches, for the appellant.

Donald F. Sim, Q.C., and Roger T. Hughes, for the respondents.

The judgment of the Court was delivered by

LASKIN J.—The appellant, a foreign corporation, and the respondent (this being a reference to the predecessor and successor respondent companies), a Canadian corporation, are competitors in the sale and distribution of hair fixatives, including hair sprays and shampoos, which are found in beauty parlours and in retail stores in Canada. Following an application of December 17, 1963, the respondent obtained on August 7, 1964, the registration, under the Trade Marks Act, 1952-53 (Can.), c. 49, of a trade mark “hy*style” and design, intended to be used in association with hair sprays and shampoos.

The appellant did not contest the application, but on June 18, 1964, it filed its own application for registration of the trade mark “STYLE” in association with hair fixatives and permanent waving compositions, as being a trade mark already in use by the appellant in Canada. An examiner’s report on the application, made on November 16, 1964, stated that the appellant’s mark was considered confusing with the respondent’s registered mark, and, in view of s. 12(1) (d) of the Trade Marks Act, it did not appear to be registrable. Thereafter, the appellant moved under s. 56 of the Act to strike out the

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entire registered mark of the respondent or, alternatively, to amend the latter’s registration by deleting the word “style” therefrom. The motion was dismissed by Gibson J. of the Exchequer Court of Canada, and the appellant has taken an appeal to this Court.

Counsel for the parties agree that the main issue in the appeal is whether the two marks are “confusing”, a term which is elaborated in s. 6(2) of the Act to mean that “the use of both trade marks in the same area would be likely to lead to the inference that the wares… associated with [them] are manufactured [or] sold by the same person…” The issue of “likelihood of confusion” (and I shall use this phrase to catch the subtler nuance of the statutory language “would be likely to lead to the inference”, etc.) arises in these expungement proceedings through the combined effect of ss. 16(3)(a), 18(1)(a) and s. 56(1) of the Trade Marks Act. These provisions concern registrability of a proposed trade mark and its disentitlement to registration if at the date of application for registration it was confusing with a trade mark that had been previously used in Canada by another person. Gibson J. made a number of findings in coming to a conclusion that the appellant had failed to prove the likelihood of confusion at the material date which he determined to be December 17, 1963. The parties do not dispute the finding as to the material date but there are differences between them as to other findings.

As a matter, apparently or at least partly, going to the standing of the appellant as a person interested under ss. 2(k) and 56(1), the respondent questions the finding of the trial judge that the appellant had proved use in Canada of its unregistered trade mark in association with its specified wares continuously since 1954. Reliance was placed on s. 4 and on a line of cases that indicate that at-large advertising of wares with the trade mark would not qualify as use. In my opinion, the trial judge could properly make the finding as to use in Canada that he did, and there is no ground to interfere with it. The evidence before him went beyond the mere advertising of

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the appellant’s products. The respondent also contended that the trial judge took too narrow a view of its registered trade mark in viewing confusion from the standpoint only of the words “Style” and “Hy*Style” as the dominant features. Even so, it followed (so the contention went) that if confusion was not proved in respect of the dominant feature of each trade mark, there would a fortiori be none on an assessment of the whole of the respondent’s trade mark, including the design.

The central part of the appellant’s argument on appeal rested on the trial judge’s concentration on the words “Style” and “Hy*Style” as the dominant features on which the issue of likelihood of confusion should be resolved. On this basis, it was contended that Gibson J. erred in so far as he founded himself on the want of any evidence of actual confusion. I do not read his reasons as making this a governing consideration. Although evidence of actual confusion may not be necessary on an issue of mere likelihood of confusion, it would none the less be admissible respecting use of the competing trade marks after the relevant date. I note that the admissibility of evidence of actual confusion on an issue of likelihood of confusion was approved in British Drug Houses Ltd. v. Battle Pharmaceuticals[2], at p. 244, which was affirmed by this Court[3], but without express reference to this point. The weight of such evidence would depend on a variety of factors that need not be canvassed here. In this case, the trial judge’s reference to want of evidence of actual confusion did not mean that the appellant could not establish its claim without it but, simply, that it would have been helpful in meeting the burden of proof resting upon the appellant to show likelihood of confusion.

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The onus on an applicant seeking to expunge a registered trade mark does not involve proof of its own entitlement to registration. It is true that the appellant in this case disavowed any concern with the registrability of its trade mark “Style”, but it did not carry this disavowal to say that the mark was merely descriptive of the wares with which it was associated or that it was common in the trade as a definition of the products thereof. Certainly, if there was mere descriptiveness, which also carried over to the respondent’s trade mark, each would be tainted by a fatal defect which it would be open to this Court to recognize by cleansing the trade mark register. Far from taking this position, the appellant put its case on the basis of an appropriation by the respondent of the appellant’s trade mark, preceded only by a laudatory adjective.

In effect, the appellant was claiming distinctiveness for its mark as pointing to its goods with which the mark was associated; and it was equally part of its submission that, although the respondent could not, in relation to a mark that was new at the material date, claim distinctiveness through use, neither could the respondent rely on registration to protect a mark that could not have a distinguishing effect in signifying its goods. In so far as these contentions go beyond the issue of likelihood of confusion, they are met by s. 53(3) of the Trade Marks Act which makes a copy of the record of registration of a trade mark prima facie proof of the facts set out therein. There was no countering evidence to challenge the registrability of the respondent’s trade mark per se.

The appellant’s argument also imported a conclusion on the issue of likelihood of confusion, and it was buttressed by reliance on the factors spelled out in s. 6(5), and particularly on the last three. This provision is as follows:

6. (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

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(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.

Apart from the question of the relevance of such circumstances as the existence of other registered marks which employ the word “style” and the reference by the appellant to litigation in the United States involving its trade mark (to both of which matters I will refer later), the factors enumerated in s. 6(5) appear to be the only ones that need be considered in this appeal. Of those, (b), (c) and (d) support the appellant’s position because of the finding as to the length of time that it has used its trade mark in Canada, and because there is no doubt about the similarity of the associated wares in the case of each trade mark and of the similarity of the trade of the parties. The appellant submitted that factor (a) envisages concurrent use of competing marks and is appropriate to the present case where at the material date that of the respondent was merely a proposed use. I do not think that this view of factor (a) is preclusive of consideration of the distinctiveness of a known and used mark of one of the parties; and the trial judge was, in my view, entitled to assess the appellant’s mark under factor (a). He did so here, and concluded that “the applicant’s unregistered trade mark has little inherent distinctiveness being a weak mark employing a word in ordinary and common usage.”

I turn, accordingly, to an examination of the two marks, and advert in this connection to factor (e) respecting the degree of resemblance between them. The appellant’s unregistered mark consists of the word “Style” written in script and centred in an oval. The registered mark of the respondent

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consists of a much more elaborate design. It portrays a crown set in an oval and under the oval the words “hy style” appear (in upper or lower case) separated by an asterisk near the top, and there is an oval beneath them (in which advertising matter can be printed). The appellant emphasized that there was no disclaimer by the respondent, in the proceedings leading to the registration of its mark, with respect to the word “Style”. This is so, but there is no suggestion that the respondent has sought to appropriate that word in relation to its wares. Indeed, it is part of the respondent’s case in defence that there are other subsisting marks for hair fixatives, owned by other firms, which employ the word “style”. One is a registered mark known as “Nestyle”, which has been in existence in Canada much longer than the appellant’s mark.

The trial judge recognized that on the question of resemblance “the whole of the design or get-up must be looked at” in respect of each of the competing marks. Although he selected the words “Style” and “Hy Style” as the dominant features, he also found that “the other indicia in [the respondent’s] trade mark in relation to the indicia in the get-up of the unregistered trade mark of the applicant other than the word “Style” in it are not things which are or were likely to cause confusion in the minds of the public.” I agree with this finding, and I think that it reinforces the result at which the trial judge arrived. Each of the trade marks as a whole must be considered in applying the factors in s. 6(5); and, of course, in applying them in respect of an action to expunge (as opposed to the contestation of an application for registration), regard must be had to the fact that the Registrar had already acted affirmatively on the question of registrability and was not considering it originally in the light of opposing submissions thereon. This latter situation is exhibited in the judgment of this Court in Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp.[4], where the holder of a registered trade mark was successful in defeating the application of a competitor to have its trade mark registered.

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The appellant referred this Court to two American cases, Wella Corporation v. La Maur, Inc.[5] and La Maur, Inc. v. Revlon, Inc.[6], in which the appellant secured protection for “Style”, applied to hair fixatives, as against “Style-Tex” and as against “Style and Set” and “Set & Style” respectively. In neither case did there appear to be any question of the setting of the competing marks in a distinctive design as against the bare use of “Style”. Moreover, there were other considerations there that are not present here. In the Wella case a petition to cancel had been granted by the Trademark Trial and Appeal Board, and its decision was sustained on appeal. The applicant produced documentary and oral testimony but the Wella Corporation relied simply on its own registration and on other registrations containing the word “style” in various forms. In the Revlon case, the proceeding was to restrain infringement of La Maur’s registered mark and the district court judge before whom the case came stated that “La Maur has introduced a superabundance of evidence proving that the La Maur mark ‘Style’ has a strong secondary meaning”, and, again he referred to La Maur as of having shown strong consumer identification for the trade mark “Style”. This is in contrast to the opinion of Gibson J. in the present case that La Maur’s unregistered trade mark was a weak mark.

In trade mark law as in other branches of law, there is no rule that compels similar conclusions in different cases where one of the litigants is the same, merely because similar issues are raised by that litigant. The evidence and the frame of the proceedings are dominant factors, and these considerations must outweigh the convenience of uniformity in trade mark decisions where, as here, the products involved are marketed in both the United States and Canada. One need only glance at the collections of instances where expungement was allowed and where it was refused, as set out

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in Fox, Canadian Law of Trade Marks, 2nd ed., 1956, vol. 1, pp. 290-291, to appreciate how much each case turns on its own facts.

I would dismiss the appeal with costs.

Appeal dismissed with costs.

Solicitor for the appellant: George H. Riches, Toronto.

Solicitors for the respondents: McCarthy & McCarthy, Toronto.