Docket: A-284-96
OTTAWA, ONTARIO, the 7th DAY OF DECEMBER 2000
CORAM: THE HONOURABLE MR. JUSTICE DÉCARY
THE HONOURABLE MR. JUSTICE LÉTOURNEAU
THE HONOURABLE MR. JUSTICE NOËL
BETWEEN:
HOTELS CONFORTEL INC.
Appellant
- and -
CHOICE HOTELS INTERNATIONAL INC.
Respondent
JUDGMENT
The appeal is dismissed with costs.
Robert Décary
J.A
Certified true translation
Monica Chamberlain
Date: 20001207
Docket: A-284-96
Coram: DÉCARY, J.A.
LÉTOURNEAU, J.A.
NOËL, J.A.
Between:
HOTELS CONFORTEL INC.
Appellant
- and -
CHOICE HOTELS INTERNATIONAL INC.
Respondent
Hearing held at Ottawa, Ontario, Thursday, December 7, 2000
Judgment delivered from the bench at Ottawa, Ontario,
on Thursday, December 7, 2000
REASONS FOR JUDGMENT OF THE COURT BY: NOËL, J.A.
Date: 20001207
Docket: A-284-96
Coram: DÉCARY, J.A.
LÉTOURNEAU, J.A.
NOËL, J.A.
Between:
HOTELS CONFORTEL INC.
Appellant
- and -
CHOICE HOTELS INTERNATIONAL INC.
Respondent
REASONS FOR JUDGMENT
(Delivered from the bench at Ottawa, Ontario,
on Thursday, December 7, 2000)
NOËL, J.A.
[1] This is an appeal from the decision of Mr. Justice Rouleau of the Trial Division in which he allowed the respondent's appeal and quashed the decision of the Trade-marks Opposition Board (the "Registrar") to uphold the appellant's application for registration of the nominal trade-mark CONFORTEL.
[2] The reasons for the decision rendered by the Registrar reveal that the respondent opposed the application for registration of the trade-mark in question but failed to submit any evidence. In fact, apart from the application for registration and the supporting evidence produced, the respondent's statement of opposition and the appellant's counter statement are the only documents that were filed with the Registrar.
[3] It is therefore within the framework of very restricted evidence, submitted by only one of the two parties, that the Registrar concluded, primarily on the basis of a grammatical and phonetic analysis of competitors' names, that the respondent had not discharged its burden of establishing that the proposed trade-mark gave rise to a reasonable possibility of confusion with its own.
[4] The respondent compensated for the lack of evidence before Rouleau J. by introducing substantial and significant evidence. In particular, it established in a convincing manner that the suffix "TEL" of the proposed trade-mark added at the end of a word generally indicated hotel services and that no company in the hotel industry, other than the respondent, was using the word "COMFORT" as an essential element of its trade-mark.
[5] In relying on this Court's decision in Molson Breweries v. John Labatt Ltd., [1999] 5 C.P.R (4th) 180, at 196, it seems clear to us that the evidence that was produced in the appeal, which the Registrar did not have the opportunity to consider, allowed
Rouleau J. to draw his own conclusions as to the merits of the Registrar's decision. We are also of the view that this evidence was sufficient for him to determine that the respondent had succeeded in establishing the existence of a probability of confusion between both trade-marks in question.
[6] As to the survey introduced in evidence by the respondent, the appellant was justified to question it. The survey did not even meet the minimal standards of reliability set out by the person in charge of the inquiry in a recent publication (Trial by Survey: Survey Evidence and the Law, R. Corbin, R.S. Jolliffe and A.K. Gill, Carswell, at 16. See also Survey Evidence – A Tool of Persuasion, Canadian Intellectual Property Reports,
9 C.I.P.R. 158, at 165.) In our view, the survey had no probative value.
[7] Rouleau J. should therefore not have referred to the survey in his decision. However, there is no cause for this Court's intervention since it seems obvious, based on the grounds for his decision, that Rouleau J. relied on the survey solely to confirm the conclusion he had reached. Had he not considered the survey, his decision would have been the same.
[8] For these reasons, the appeal will be dismissed with costs.
Marc Noël J.A.
Certified true translation
Monica Chamberlain
FEDERAL COURT OF CANADA
APPEAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
STYLE OF CAUSE: Hotels Confortel Inc. v.
Choice Hotels International Inc.
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: December 7, 2000
REASONS FOR JUDGMENT DELIVERED FROM THE BENCH
BY THE COURT: Décary, Létourneau, Noël, JJ.A.
APPEARANCES:
Bob Sotiriadis
Stéphanie Malo FOR THE APPELLANT
Chantal Bertosa FOR THE RESPONDENT
SOLICITORS OF RECORD:
Léger Robic Richard
Montréal, Quebec FOR THE APPELLANT
Shapiro Cohen
Ottawa, Ontario FOR THE RESPONDENT
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