Date: 20000914
Docket: A-206-99
ISAAC J.A.
MALONE J.A.
BETWEEN:
POLO RALPH LAUREN CORPORATION
Appellant
- and -
UNITED STATES POLO ASSOCIATION
and THE REGISTRAR OF TRADE-MARKS
Respondent
Heard at Ottawa, Ontario, on Wednesday, May 31, 2000
Judgment rendered at Ottawa, Ontario, on Thursday, September 14, 2000
REASONS FOR JUDGMENT BY: MALONE J.A.
CONCURRED IN BY: STRAYER J.A.
CONCURRING REASONS FOR JUDGMENT BY: ISAAC J.A.
Date: 20000914
Docket: A-206-99
CORAM: STRAYER J.A.
ISAAC J.A.
MALONE J.A.
BETWEEN:
POLO RALPH LAUREN CORPORATION
Appellant
- and -
UNITED STATES POLO ASSOCIATION
and THE REGISTRAR OF TRADE-MARKS
Respondent
REASONS FOR JUDGMENT
MALONE J.A.
[1] This appeal should be denied and the order of the Trial Division dated March 8, 1999 should be confirmed as it relates to word-mark applications 629,983 and 629,985.
[2] The reasons delivered this date in appeal A-205-99 are applicable to this appeal. While there are minor differences in the affidavit evidence provided in the record in A-206-99,1 and the Registrar's decision was made by a different member of the Board,2 the errors of law identified in A-205-99 and the analysis therein prevail in this appeal.
[3] USPA has met its onus in establishing that there was no confusion pursuant to subsection 6(5) in the case of the word-marks in dispute.
(Brian Malone)
J.A.
I agree
B.L. Strayer
J.A.
Date: 20000914
Dockets: A-206-99
CORAM: STRAYER J.A.
ISAAC J.A.
MALONE J.A.
BETWEEN:
POLO RALPH LAUREN CORPORATION
Appellant
- and -
UNITED STATES POLO ASSOCIATION
and THE REGISTRAR OF TRADE-MARKS
Respondent
REASONS FOR JUDGMENT
ISAAC J.A.
[1] I have read, in draft, the reasons of my colleague, Mr. Justice Malone in these appeals. While I agree with his dispositions in both appeals, with respect, I am unable to agree with his reasons. My own reasons follow.
[2] These appeals are from a judgment of the Trial Division, reported at (1999), 87 C.P.R. (3d) 193, which heard three appeals from decisions of the Trademark Opposition Board (the "Board"). The learned Judge below allowed appeals from two of those decisions, and dismissed one appeal. It is only the two appeals that he allowed that are appealed to this Court. These appeals were heard together. A copy of these reasons shall be filed in each of files A-205-99 and A-206-99 and be considered to be the disposition of the appeal in each file.
2THE FACTS
[3] On June 21, 1985, the respondent United States Polo Association (USPA) applied to register these two design marks.
Registration Nos. 544,477 and 544,478
On April 18, 1989, USPA applied to register the following words:
| U.S. POLO ASS'N (Registration No. 629,983) |
| U.S. POLO ASSOCIATION (Registration No. 629,985) |
[4] The appellant, Polo Ralph Lauren Corporation ("PRLC"), filed a statement of opposition to the USPA picture marks on November 6, 1987, and amended that statement on July 26, 1995. PRLC also filed a statement of opposition to the USPA word marks on May 31, 1991. In both cases, PRLC alleged that the proposed USPA marks were confusing with its family of Polo-based marks, listed below:
| POLO (Registration No. 312,324) |
| POLO BY RALPH LAUREN (Registration No. 314,406) |
(Registration No. 314,256)
(Registration No. 318,560)
7
(Unregistered)
THE DECISION OF THE BOARD
[5] The Board heard the applications and found in each case that the USPA's marks were confusing with PRLC's marks. It found that the picture marks of both parties were inherently distinctive, but that the word marks are not inherently strong. The length of time the marks have been in use favoured PRLC in each case, and the two parties' wares and trades overlapped. Finally, the marks themselves bear some resemblance. The word marks are similar both visually and phonetically and the ideas suggested by the marks are very similar: the game of polo. The picture marks are similar because they all contain horses and polo mallets as prominent design features, and they also suggest the sport of polo. Applying the test of first impression and imperfect recollection, the Board found that USPA did not satisfy the legal burden on it to show that its proposed marks were not confusing with PRLC's marks.
THE DECISION OF THE TRIAL DIVISION
[6] USPA appealed these decisions to the Federal Court -- Trial Division pursuant to subsection 56(1) of the Trademarks Act.3 Subsection 56(5) of the Act provides that parties to such an appeal may, in addition to the evidence adduced before the Board, adduce further evidence before the Court. Those subsections read:
| 56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months. . . . |
| (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. |
[7] In the Trial Division, the parties filed a total of sixteen additional affidavits. These affidavits are mentioned by my colleague in his reasons. The Judge hearing the appeals considered all of the evidence before him and, after quoting extensively from the decision of this Court in United Artists Corp. v. Pink Panther Beauty Corp. et al.4, concluded that the marks at issue in this appeal were not confusing with any of PRLC's marks. He agreed with the conclusion of the Board respecting the inherent distinctiveness of the marks; the length of time they have been in use; the nature of the wares; and the nature of the trade.
[8] However, he disagreed with the conclusion of the Board respecting what he considered the crucial factor in this case: the degree of resemblance between the marks. In his view, although all the word marks suggest the idea of the sport of polo, the marks of USPA suggest an affiliation with a polo club -- the United States Polo Association. Therefore, they do not resemble the word marks of PRLC. As regards the picture marks, they too are similar in that they all suggest the sport of polo, but again the marks of USPA suggest an affiliation with a polo club and not with a line of clothing.
ISSUES
[9] The main issue in this appeal is whether the Judge below erred in concluding that the marks of USPA were not confusing with the marks of PRLC.
[10] I agree with the conclusions of my colleague on the preliminary issues in this case. The affidavits of Christine Ng-Chung, Bill W.K. Chan and Isabelle Jomphe are inadmissible because they are hearsay. I also agree that the standard of review in this case is as stated by Rothstein J.A. in John Labatt Limited et al. v. Molson Breweries, A Partnership5 at page paragraph 51:
| I think the approach in Benson & Hedges v. St. Regis and in McDonald v. Silcorp are consistent with the modern approach to standard of review. Even though there is an express appeal provision in the Trade-marks Act to the Federal Court, expertise on the part of the Registrar has been recognized as requiring some deference. Having regard to the Registrar's expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether of fact, law or discretion, within this area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar's decision. |
This is so because the remaining affidavits contain significant new evidence.
CONFUSION
[11] The starting point for any analysis of the issue is whether a series of marks are confusing is section 6 of the Act. The relevant parts of that section read:
| 6. (1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section. |
| (2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. . . . |
| (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. |
[12] I agree with my colleague that the Board and Judge hearing the appeal made no error in applying the factors found in paragraphs 6(5)(a) to (d) of the Act.
[13] However, I respectfully disagree with his conclusion, at paragraphs 20 and 21 of his reasons, that the analysis of the Judge below respecting paragraph 6(e) of the Act "incorrectly considers the USPA Design marks in isolation with that of polo instead of in association with the articles of clothing with which the USPA registration is sought" and that the Judge below also failed to "apply the first impression test."
[14] At paragraph 29 of his reasons, the Judge hearing the appeals instructed himself on the law correctly, in my respectful view. He stated that he must follow the test set out in Pink Panther6 and consider "all the surrounding circumstances" of the case. This is a clear indication that he did not consider the marks in isolation. Furthermore, at paragraph 30 of his reasons, he stated that "the test of first impression and imperfect recollection is the relevant test to be applied in determining whether the appellant's marks are likely to cause confusion with the respondent's marks." The Judge clearly turned his mind to the correct legal test in his disposition of the appeals and did not make the errors of law which my colleague has alleged.
[15] In my respectful view, absent legal error or a palpable and overriding error of fact, the decision of the Judge below should not be interfered with. One should keep in mind the observations in Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp.7, where Ritchie J., writing for the majority, stated that:
| In my view, the decision as to whether or not a trade mark is confusing within the meaning of s. 6 of the Act involves a judicial determination of a practical question of fact and does not involve the exercise of the Registrar's discretion. [emphasis added]8 |
Since the issue of "confusion" is a question of fact, it is not sufficient for this Court to substitute its view of the facts for that of the Judge below simply because we would have come to a different conclusion. And this is so, even though all of the evidence before the Judge was documentary. As Mr. Justice Mahoney stated in Canada v. Capitol Live Insurance Co.:
| It is true that there is no evident issue of credibility here and that we are probably in as good a position as the Trial Judge to make the necessary findings of fact. An appellate court is not, however, even in that circumstance, entitled to substitute its views for those of the Trial Judge simply because it would have concluded differently; the appellate court must conclude that he was wrong.9 |
[16] Having examined all of the marks in issue in this case, including the non-registered trade-marks at paragraph 7 of my colleague's reasons, and considering the matter from the perspective of an average consumer having a vague or imperfect recollection of the appellant's marks, I am unable to conclude that the Judge below was wrong to decide that the marks were not confusing.
[17] In my respectful view, the marks of USPA do not resemble the marks of the appellant in appearance, sound, or the idea suggested. The picture marks of USPA are visually different from the marks of PRLC. The word marks of USPA are also different from the single word "POLO" which PRLC registered. Although it is possible to "focus on particular features of the mark that may have a determinative influence on the public's perception of it", the marks must still be assessed in their entirety.10 When examined in their entirety, I believe there is little doubt that the phrases "U.S. POLO ASSOCIATION" or "U.S. POLO ASS'N" do not have a significant degree of resemblance with the single word "POLO". At the very least, I am unable to conclude that the Judge was wrong to consider the respondent's marks distinctive.
[18] I would like to make a further observation on one aspect of the reasons of my colleague respecting paragraph 6(5)(e) of the Act. At paragraph 20 of his reasons, he criticizes the Judge below for considering the USPA's marks in isolation with the sport of polo instead of in association with the articles of clothing for which registration is sought. However, at paragraphs 37 and 38 of his reasons, the Judge on appeal explicitly considered the nature of the wares and the nature of the trade. My colleague seems to indicate that the nature of the wares must be also considered in conjunction with paragraph 6(5)(e) of the Act: the degree of resemblance. In my respectful view, this would mean that the nature of the wares would be counted twice: once when examining paragraph 6(5)(c) of the Act, and again when examining 6(5)(e) of the Act. This would result in this Court giving undue influence to the "nature of the wares" as a factor in determining the issue of confusion, and clearly contrary to the express provision of the Act. "Nature of the words" is only one of the "surrounding circumstances" listed in subsection 6(5) of the Act, and should only be considered as one factor, not as two.
DISPOSITION
[19] For all these reasons, I would dismiss both appeals with one set of costs.
________________________
J.A.
__________________
1In appeal A-206-99, the remaining new admissible affidavits submitted on behalf of USPA are those of Eileen Castellano, sworn on February 17, 1995 and Merle Jenkins, sworn on February 17, 1995. PRLC's remaining affidavits consist of those of Victor Cohen, sworn on April 19, 1995, Michael Belcourt sworn on April 12, 1995 and Jason Wolfe, sworn on April 12, 1995.
2Appeal Book pages 276-281.
3 R.S.C. 1985, c. T-13 [hereinafter Act ].
4 (1998), 80 C.P.R. (3d) 247 (Fed. C.A.) [hereinafter Pink Panther ].
5 [2000] F.C.J. No. 159, online: QL (FCJ) [hereinafter John Labatt Ltd. ].
6 Ibid.
7 [1969] S.C.R. 192">[1969] S.C.R. 192.
8 Ibid. at 196.
9 [1986] 2 F.C. 171 (C.A.) at para. 15.
10 See Pink Panther , supra at para. 34.
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