United States Polo Assn. v. Polo Ralph Lauren Corp., docket A-205-99

Date: 20000914

Docket: A-205-99

    

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

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-205-99

    

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.

A. Introduction

[1]      This is an appeal by Polo Ralph Lauren Corporation ("PRLC") from an Order of the Federal Court Trial Division dated March 8, 1999 that deals with the United States Polo Association's ("USPA's") trade-mark applications 544,477 and 544,478. These USPA applications are for the "design" trade-marks UNITED STATES POLO ASSOCIATION & Design and U.S.P.A & Design respectively (the "USPA Design Marks").

[2]      Two separate appeals have been launched by the appellant. The within appeal A-205-99 deals with trade-mark applications 544,477 and 544,478 while appeal A-206-99 concerns word-mark applications 629,983 and 629,985. Both appeals were argued together but each had a separate appeal record. These reasons are intended to respond to appeal A-205-99. Brief reasons relating to appeal A-206-99 will be filed separately.

[3]      The central issue in these appeals is whether the learned Trial Judge erred in law by failing to apply the proper test as to the likelihood of confusion between the USPA Design Marks and others owned by PLRC. In brief, that test is whether, as a matter of first impression in the mind of an average consumer having a vague or imperfect recollection of another mark, the use of both trade-marks in the same area and in the same manner is likely to lead to the inference that wares associated with those marks are produced or marketed by the same company. For convenience, I will refer to this as the "first impression test".

[4]      Before dealing with that subject, however, I must first deal with preliminary issues raised by the appellant relating to the admissibility and use of certain additional affidavits filed by USPA before the Trial Judge and to the standard of review that this Court is to apply in reaching its decision.

B. Preliminary Issues

[5]      USPA applied to register the USPA Design Marks on June 21, 1985. In the case of application 544,477, its proposed use in Canada was to be in association with the following wares:

"...men's, women's and children's wearing apparel namely, pants, shirts, shorts, skirts, blouses, coats, T-shirts, jackets, sweaters and jogging wear namely, sweat-shirts, sweat-pants, sweat-shorts and fleece-lined jackets."1

2The proposed use for application 544,478 also related to wearing apparel in the same words.

[6]      Both applications are shown below:

"UNITED STATES POLO ASSOCIATION              "U.S.P.A. & Design"

& Design

544,477 544, 478

[7]      PRLC filed its statement of opposition to applications 544, 477 and 544, 478 on or about July 26, 1995 ². PRLC is the owner of a number of trade-marks that include the word "Polo" or the representation of a mounted polo player including the following registered trade-marks:

4. Registration No.                  Trade-mark
5. 312,324                      POLO
6. 314,406                      POLO BY RALPH LAUREN
   
   
   

5                             

"POLO PLAYER Design"

     314,256

    

                                

"RALPH LAUREN & Design"

     318,560

and the following non-registered trade-marks:

6         

9.                                     
   
   
   
   
   
   

(referred to collectively as "the POLO Trade-marks")³.

[8]      Before the Trade-marks Opposition Board ("the Board") , USPA filed one affidavit in support of application No. 544,477 but filed no evidence in support of application No. 544,478. PRLC filed three affidavits, opposing these applications principally on the grounds of confusion with its trade-marks set out above. This material related to PRLC's ownership of various trade-marks and its marketing and retail efforts in North America since 1967. USPA recited the history of its trade-mark registration and licensing efforts in North America but no evidence of its use of these various registered trade-marks was offered. In decisions dated November 22, 1995, the Board refused both applications. The ground for refusal was that USPA failed to meet its onus of showing that, as of the date of the decision, November 22, 1995, each of the USPA Design Marks was not confusing with the following registered trade-mark of Polo Ralph Lauren Corporation:

8                                     

     "Polo Player Design"

[9]      Before the Trial Division, the parties filed a total of nine⁴ additional affidavits. The Trial Judge found in favour of USPA and allowed its appeal concluding that the Board's decision could not stand and that USPA had met its burden of showing that there is no likelihood of confusion between its marks and those of PRLC.

[10]      A number of these additional affidavits filed by USPA (i.e. the affidavits of Christine Ng-Chung, Bill W.K. Chan and Isabelle Jomphe) are not confined to facts within the personal knowledge of the deponents as required by Rule 81 of the Federal Court Rules ⁵. No exception to the hearsay rule based on necessity or reliability as set out by the Supreme Court of Canada ⁶ and as adopted by our Court⁷ can be advanced because necessity has not been demonstrated.

[11]      In my view, none of these affidavits should have been referred to or relied on by the Trial Judge in his analysis. While the reasons of the Trial Judge do not identify the factual sources on an affidavit by affidavit basis, the only possible source from the record for his statement "In October 1992, the appellant sold three different styles of T-shirts, two of which featured a trade-mark with the words United States Polo Association and POLO indicia"⁸ is the inadmissible Jomphe affidavit.⁹

[12]      The remaining admissible affidavits filed on behalf of USPA in appeal A-205-99 are those of Merle Jenkins, sworn on June 5, 1996¹⁰ and Eileen J. Castellano, sworn on January 22, 1996. PRLC submitted affidavits by Victor Cohen, sworn on April 18, 1996; Michael Belcourt, sworn on March 25, 1996; Jason Wolfe, sworn on March 15, 1996 and Laurence Rosen, sworn on March 24, 1996.

[13]      In the recent decision of Molson Breweries v. John Labatt Ltd, this Court set out the test for the standard of review of a Trade-marks Opposition Board decision in the following words:

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 his area of expertise, are to be reviewed on a standard or 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.11

[emphasis added]

                                            

[14]      The admissible affidavits filed by both parties before the Trial Judge in this case recite the history of USPA sporting activities in Canada and the United States over many years, the state of the Canadian trade-mark register regarding the word "Polo" as at January 22, 1996 and the widespread use of POLO Trade-marks in Canada with respect to men's clothing, sporting goods, and women's wear.

[15]      Material new evidence was filed before the Trial Judge in the form of an exhaustive search of the Canadian Trade-mark register as deposed to in the affidavit of Eileen J. Castellano dated January 22, 1996. This evidence suggests that the word "polo" has been generally adopted and widely used in the retail business in Canada. In my view, this evidence would have materially affected the Registrar's findings of fact. Accordingly, the standard of review is correctness as was applied by the Trial Judge.

C. Main Issue

[16]      Reliance on inadmissible affidavit evidence such as the Jomphe affidavit constitutes an error of law. I am of the opinion that this Court, in these circumstances, is able to conduct its own analysis on the issue of confusion.¹²

[17]      In determining whether trade-marks or trade-names are confusing, subsection 6(5) of the Act directs that the Court or the Registrar of Trade-marks is to 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.13

[18]      A review of some of the leading cases also establishes some practical guidelines. For example, the Court is to put itself in the position of an average person who is familiar with the earlier mark but has an imperfect recollection of it¹⁴; the question is whether the ordinary consumer will, on seeing the later mark, infer as a matter of first impression that the wares with which the second mark is used are in some way associated with the wares of the earlier. With respect to the degree of resemblance in appearance, sound or ideas under subparagraph 6(5)(e), the trade-marks at issue must be considered in their totality.¹⁵ As well, since it is the combination of elements that constitutes a trade-mark and gives distinctiveness to it, it is not correct to lay the trade-marks side by side and compare and observe similarities or differences among the elements or components of the marks when applying the test for confusion. In addition, trade-marks must not be considered in isolation but in association with the wares or services with which they are used.¹⁶ When dealing with famous or well-known marks, it may be more difficult to demonstrate that there is no likelihood of confusion, especially if the nature of the wares are similar .¹⁷ Lastly, the enumerated factors in subsection 6(5) need not be attributed equal weight. Each particular case of confusion might justify greater emphasis being given to one criterion than to others.¹⁸

[19]      There was symmetry between the Registrar and the Trial Judge in the manner in which they applied paragraphs 6(5)(a) through (d) inclusive of the Act. Both found that the PRLC's marks were inherently distinctive and the appellant's evidence of extensive use and promotion of its Polo Player Design and Polo Trade-marks was accepted. The length of time the trade-marks had been used also favoured PRLC. The nature of the PRLC wares was found to be "designer clothing" and more upscale than the wares of USPA but neither was restricted as to trade or price in any way. I agree to this point with the analysis of both the Board and the Trial Judge.

[20]      The only difference between The Trial Judge and the Trade-marks Opposition Board arose in relation to the degree of resemblance between the trade-marks pursuant to paragraph (e) of subsection 6(5). In considering the degree of resemblance between the marks under paragraph 6(5)(e), the Trial Judge found that the USPA Design Marks and the Polo Trade-marks both suggest the idea of the sport of polo. On further analysis the former was said to suggest an affiliation with a polo club (specifically the United States Polo Association) while the latter suggested a different idea - an affiliation with clothing designed by Ralph Lauren. In my opinion, this analysis incorrectly considers the USPA Design marks in isolation with the sport of polo instead of in association with the articles of clothing with which the USPA registration is sought, namely:

"Men's, women's and children's wearing apparel namely, pants, shirts, shorts, skirts, blouses, coats, T-shirts, jackets, sweaters and jogging wear namely, sweatshirts, sweat-pants, sweat-shorts and namely, fleece-lined jackets"19

[21]      That analysis also fails to consider the degree of resemblance between the marks in appearance and the ideas suggested by each, as a matter of first impression. While the Trial Judge refers to the first impression test during his initial analysis he does not ultimately apply the test in his overall consideration of subsection 6(5).

[22]      In considering subsection 6(5)(e), the marks do bear some degree of physical resemblance. The USPA Design marks and the POLO Player Design include a horse and a mallet (two in the USPA Design marks) as prominent features. All trigger the idea of the sport of polo and prima facie would likely lead to the inference that clothing associated with these marks are produced or marketed by the same company. However, the analysis cannot end there.

[23]      USPA filed its searches of the Canadian Trade-marks registry indicating that some sixty-seven trade-mark entries involve the word "polo" either alone or in combination and/or having polo design elements. In connection with clothing, twenty involved PLRC, nine involved USPA and sixteen involved eight other clothing manufacturers or retailers. The remaining twenty-two entries are for a variety of wares including eye apparel, luggage, perfume, jewelry and cosmetics. Seven are on behalf of PRLC and fifteen are made by eight other different retailers or manufacturers. In considering the surrounding circumstances in relation to subsection 6(5), such evidence has been accepted in other cases to mitigate the significance of resemblance under subsection 6(5)(e) on the basis that wide-spread use must infer that the market place is able to distinguish between the competing marks²⁰

[24]      There was no cross-examination on this state of the register evidence so that its authenticity cannot now be challenged. Nor was contrary evidence offered by PRLC suggesting past instances of consumers being confused between articles of clothing produced by other manufacturers and those of PRLC. What the new evidence filed by PRLC does establish is the wide-spread use in Canada of the Polo Trade-marks with respect to men's clothing, sporting goods, cosmetics, jewelry, perfumes and women's wear. There is no doubt that the Polo trade-marks are among the most famous brands being produced and marketed in Canada.

D. Conclusion

[25]      The presence of a common element in trade-marks (ie the horse and polo mallet in this case) has been held in other cases to have an important effect on the issue of confusion. As stated by the Comptroller General in Harrods Ld. -- In the Matter of an Application by --to Register a Trade Mark:

Now it is a well recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trade marks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks and to distinguish between them by those other features. 21

[26]      Applying the first impression test and based on all of the evidence of surrounding circumstances, I have concluded that USPA has discharged its onus of showing that there is no likelihood of confusion between the USPA Design marks and any of the Polo Trade-marks notwithstanding that they are produced or marketed in respect of clothing to be sold in the Canadian retail market. The state of the register raises convincing evidence of a lack of confusion. I believe that it may be reasonably inferred that Canadian clothing consumers are accustomed to making minor distinctions between the various polo marks.

---

[27]      I would deny appeal A-205-99 and confirm the order of the Trial Division dated March 8, 1999 as it relates to trade-mark applications 544, 477 and 544, 478. As this appeal and appeal no. A-206-99 were heard together, there should be one set of costs but with disbursements in both appeals.

     (Brian Malone)

     J.A.

I agree

B.L. Strayer

J.A.

Date: 20000914

Dockets: A-205-99

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.

THE FACTS

[3]      On June 21, 1985, the respondent United States Polo Association (USPA) applied to register these two design marks.

10         

        

        

        

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)

11         

     (Registration No. 314,256)

12      (Registration No. 318,560)

15     

    

    

    

                     (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.²² 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.²³, 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 Partnership²⁴ 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.

[Emphasis added.]

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 Panther²⁵ 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.²⁶, 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]27

                        

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.28

[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.²⁹ 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.

"Julius A. Isaac"

     ________________________

     J.A.

__________________

     ¹USPA's 544,477 application includes a disclaimer to the exclusive use of the words "UNITED STATES POLO" apart from the trade-mark as a whole. Appeal Book, Vol. 7, p. 1700.

Error! Main Document Only.Error! Main Document Only.

     ²This is the date that the final, amended statement of opposition was filed.

Error! Main Document Only.Error! Main Document Only.

     ³Appeal Book, Vol. 1, p.9-10.

     ⁴Note that this is only for A-205-99.

     ⁵SOR/98-106

     ⁶R. v. Khan, [1990] 2 S.C.R. 531; .R. v. Smith, [1992] 2 S.C.R. 915.

     ⁷Ethier v. Canada [1993] 2 F.C. 659 (F.C.A.).

     ⁸Appeal Book page 1883 at para. 17.

     ⁹Appeal Book page 1483.

     ¹⁰Those paragraphs containing facts within his knowledge only.

     ¹¹(2000) 252 N.R. 91 at para. 29, [2000] F.C.J. No. 159 (QL) at para. 51 [hereinafter Molson Breweries cited to N.R.]. See also Evans J. (as he then was) in Garbo Group Inc. v. Harriet Brown Co. (1999) 3 C.P.R. (4^th) 222 at paras. 34 to 38.

     ¹² This power has been long established in the jurisprudence concerning trade-mark confusion. See Re AndreWines Ltd and E. & .J. Gallo Winery (1975), 25 C.P.R. (2d) 126 at 129; Mr. Submarine Ltd.v. Amandista Investmests Ltd. (1987, 19C.P.R. (3d) 3 at 11; Molson Breweries supra note 12 at para. 54.

     ¹³Trade-marks Act, R.S.C. 1985, c. T-13.

     ¹⁴Coca-Cola of Canada v. Pepsi-Cola Co. of Canada [1942] 2 D.L.R. (H.L.) 657 at 661; see also Miss Universe Inc. v. Bohna [1995] 1 F.C. 614 at 621-22.

     ¹⁵United Artists Corp. v.Pink Panther Beauty Corp. [1998] 3 F.C. 534 (F.C.A.). at para.34 [hereinafter Pink Panther].

     ¹⁶ Pink Panther supra at para.21.

     ¹⁷ Pink Panther, ibid. at paras. 39-46.

     ¹⁸ Pink Panther, ibid. at para. 38.

     ¹⁹Supra note 1.

     ²⁰Kellogg Salada Canada Inc. v. Canada (Registrar of Trade-marks), [1992] 3 F.C. 442 (F.C.A.).

     ²¹ (1934), 52 R.P.C. 65 at 70.

     ²²      R.S.C. 1985, c. T-13 [hereinafter Act ].

     ²³      (1998), 80 C.P.R. (3d) 247 (Fed. C.A.) [hereinafter Pink Panther ].

     ²⁴      [2000] F.C.J. No. 159, online: QL (FCJ) [hereinafter John Labatt Ltd. ].

     ²⁵      Ibid.

     ²⁶      [1969] S.C.R. 192">[1969] S.C.R. 192.

     ²⁷      Ibid. at 196.

     ²⁸      [1986] 2 F.C. 171 (C.A.) at para. 15.

     ²⁹      See Pink Panther , supra at para. 34.