Date: 19991110
Docket: A-266-98
OTTAWA, ONTARIO, WEDNESDAY, NOVEMBER 10, 1999
BETWEEN:
CANADIAN OLYMPIC ASSOCIATION
Appellant
- and -
TECHNIQUIP LIMITED
Respondent
JUDGMENT
This appeal is dismissed with costs.
"Alice Desjardins"
J.A.
Date: 19991110
Docket: A-266-98
BETWEEN:
CANADIAN OLYMPIC ASSOCIATION
Appellant
- and -
TECHNIQUIP LIMITED
Respondent
Heard at Toronto, Ontario, on Wednesday, October 20, 1999.
Judgment rendered at Ottawa, Ontario, on Wednesday, November 10, 1999.
REASONS FOR JUDGMENT BY: DESJARDINS J.A.
CONCURRED IN BY: McDONALD J.A.
SEXTON J.A.
Date: 19991110
Docket: A-266-98
BETWEEN:
CANADIAN OLYMPIC ASSOCIATION
Appellant
- and -
TECHNIQUIP LIMITED
Respondent
REASONS FOR JUDGMENT
DESJARDINS J.A.
[1] This is an appeal from a decision of Joyal J. acting pursuant to sections 56 and 59 of the Trade-marks Act1 ("the Act") in which he reversed the decision of the Trade-marks Opposition Board ("the Board" or "the Board member"). The Board refused Techniquip Limited's trade-mark application No. 612,272 for Representation of a Man on the ground that it resembled the appellant's family of official marks which comprised twenty-nine of its official marks and thirteen official marks of "The Organizing Committee of the 1976 Olympic Games/Le Comité organisateur des jeux olympiques de 1976".
[2] Techniquip Limited ("the respondent") requested the registration of the following mark:
[3] The appellant filed an opposition pursuant to subparagraph 9(1)(n)(iii) and paragraph 12(1)(e) of the Act. Herein are some illustrations of the appellant's family of official marks, the first on the left-hand side being a soccer player.
[4] The Board stated, at the outset of its decision, that the test under subparagraph 9(1)(n)(iii) of the Act, as to whether the respondent's mark was identical to, or almost the same as the official mark, was a straight comparison of the marks in issue quite apart from any market place consideration since the test was to be distinguished from the one applicable in a section 6 analysis.2 Applying the "straight comparison" test, the Board excluded the respondent's two affidavits. The first affidavit introduced over 250 registrations for trade-marks comprising fanciful representations of human stick figures engaged in various activities, with or without the head appearing separate from the body. Some were registered as early as 1959, others as recently as 1989. The second affidavit evidenced the widespread use of human stick figures found in telephone business directories, magazines, newspapers, public signs and advertising. The owners of those marks were involved in businesses ranging from insurance to costume design. Others were local governments setting down traffic directions, shopping centres providing information to customers, or road gang directing traffic. Ignoring this evidence, the Board went on to state that if the appellant had relied on one official mark, that of a soccer player, its application would have been dismissed. But since the appellant was relying on a family of marks, the Board felt it was bound by the case law to consider such a family of marks. The Board estimated that one could easily perceive the harness worn by the respondent's stick figure as being related to a sporting activity such as skydiving, hand gliding or bunjee jumping.3 This perception raised doubt in the mind of the Board member with respect to the issue of resemblance. He concluded that since the legal onus was on the respondent to show that its mark was registrable, the doubt so raised was to be resolved against the respondent whose application he finally refused.
[5] On appeal, the trial judge followed the test developed in the case of The Queen v. Kruger.4 There, the Registrar of Trade-marks noted that the protection under subparagraph 9(1)(n)(iii) of the Act was in some respects broader than the confusion test but, in other respects, the resemblance test provided by subparagraph 9(1)(n)(iii) was narrower than the confusion test provided by section 6 of the Act. The Registrar of Trade-marks stated that under subparagraph 9(1)(n)(iii) of the Act, if the mark in use by a person so nearly resembles the prohibited mark as to be mistaken for that of the other person, the use of that mark may be prohibited even when there is no likelihood of confusion. The test under subsection 9(1)(n)(iii) was restricted to resemblance between the prohibited mark and the adopted mark. On the other hand, he said, in determining the likelihood of confusion under section 6 of the Act, reference may be had to all the surrounding circumstances, including those set out in subsection 6(5). Hence, the degree of resemblance between the marks was only one of numerous surrounding circumstances taken into consideration in a section 6 analysis.
[6] The Registrar of Trade-marks then went on to say:5
| ... A person of imperfect recollection familiar with the opponent's mark and having an imperfect recollection thereof upon seeing the applicant's mark applied to or associated with the wares applied for would not be led to the inference that the wares associated with the applicant's mark were manufactured, sold, leased, hired, or performed by the opponent. |
[7] The trial judge noted, at the outset, that the appellant's family of marks consisted of a squared block background with white stick-like figures on top. Each figure had an upper body portion that was detached from a round head and a lower portion. All figures were in movement and engaged in a sporting activity. On every mark, extra lines help define which sport is practised by the figures. The respondent's status, as a "public authority" was not contested.6
[8] The respondent's mark, on the other hand, consisted of a rounded block background with a white stick-like figure on top. The figure had a detached round head and its upper body portion was divided in four sections by what was obviously meant to represent a harness. That figure was motionless in the pictogram.
[9] Proceeding with his legal analysis, the trial judge accepted the test under subparagraph 9(1)(n)(iii) of the Act to be one of resemblance between the prohibited mark and the adopted mark. If the opposed trade-mark was not identical to the mark relied upon by the opponent, then the Court, he said, ought to consider whether the appellant's trade-mark so nearly resembled as to be likely to be mistaken for one or more of the opponent's marks. Hence, he rejected the test of "straight comparison" and adopted the test of resemblance and of imperfect recollection.
[10] The trial judge was of the view that since the appellant was relying on a family of marks in an opposition proceeding, he had to establish "use" of its official marks. He accepted the state of the register and the state of the market place as being highly relevant in that context and concluded that the particularized elements of the appellant's marks, all of which use human figures in movement, were engaged in sporting activities and could not reasonably be ascribed to the design submitted by the respondent, which shows an erect, motionless human figure, wearing a harness.
Analysis
[11] In my view, the trial judge was correct in his analysis.
[12] The trial judge was dealing with an "official mark" under subparagraph 9(1)(n)(iii) of the Act. An "official mark" is one which is adopted and used by a public authority in Canada as an official mark for wares or services and in respect of which the Registrar has, at the request of the public authority, given public notice in the Trade-marks Journal7 of its adoption by the public authority. This mark then becomes a prohibited mark from the time the public notice is given under subparagraph 9(1)(n)(iii) of the Act.8 Both counsel were in agreement that an official mark does not appear in the register.9
[13] The intent and effect of subparagraph 9(1)(n)(iii) were then well set by the trial judge when he said:
| [28] In my view, the intent of section 9 is to remove all the kinds of marks as listed above from the field of trade or business. It is to preclude any person from capitalizing on any well known, respected public symbol and adopting it for his or her own wares or services. These emblems, badges or crests are associated with public institutions, not involved in trade or business, but which nevertheless are deemed to be invested with respectability, credibility and other civic virtues. Section 9, in a sense, ensures that these symbols do not become pawns of trade or proprietorship. |
| [30] This privileged position provided by section 9, however, varies with the various subparagraphs of section 9(1)(n). The comments of MacGuigan J.A. in Allied Corp. v. Canadian Olympic Association, supra, are clear on this, eg. Section 9(1)(n)(i) speaks of "adopted or used" by Her Majesty's Forces, but section 9(1)(n)(iii) specifies "adopted and used". I interpret these statutory distinctions as narrowing somewhat the exclusivity of "public authority" marks as compared to others. |
[14] The appellant opposed the respondent's registration on the basis of a family of marks.
[15] The notion of a family of marks was developed in the context of proceedings under section 6 of the Act. In Molnlycke Aktiebolag v. Kimberly-Clark of Canada Ltd., Cattanach J. explained:10
| If these are a series of marks all having the same features and are all owned by the same trader then this is a circumstance which must reflect adversely upon an applicant for a mark containing that common feature since the public might think that such a mark indicated goods coming from the same source as the goods covered by the other marks. |
| If those marks which have common characteristics are registered in the names of different owners then the presumption is that the common characteristic is a common feature in the trade and registration ought to be allowed. The fact that the marks are owned by different persons tends to negative any proprietorial significance of the common feature and so assists an applicant. |
[16] The appellant, having brought into evidence the notion of "family of marks" developed in the context of a section 6 analysis, the respondent was entitled to adduce evidence that there was no family of marks on which the appellant could rely. In order to do so, it was open to the respondent to bring evidence of the state of the register and of the market place in order to establish that these human stick figures were common to many marks and that, consequently, once a mark is common to trade, one cannot claim it has a family of marks.11
[17] The trial judge was correct in applying the legal test developed by the case law with regard to subparagraph 9(1)(n)(iii) of the Act. Considering the evidence brought by the appellant with regard to his family of official marks, he was also justified in accepting the two affidavits filed by the respondent and in determining the matter the way he did.
[18] I would dismiss this appeal with costs.
"Alice Desjardins"
J.A.
"I agree
F. Joseph McDonald, J.A."
"I agree
__________________
1R.S.C. 1985, c. T-13.
2A.B. at 740-42.
3It should be noted that these three sporting activities are not within the appellant's family of official marks.
4(1978), 44 C.P.R. (2d) 135 (Registrar of Trade-marks).
5(1978), 44 C.P.R. (2d) 135 at 141 (Registrar of Trade-marks).
6Registrar of Trade-marks v. Canadian Olympic Association (1982), 67 C.P.R. (2d) 59 (F.C.A.).
7The Trade-marks Journal is referred to at subsection 66(3) of the Act and in articles 15, 16 and 17 of the Regulations.
8Canadian Olympic Association v. Allied Corp. (1989), 28 C.P.R. (3d) 161 at 165-66; Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at 422-2; Canadian Olympic Assn. v. Olympus Optical Co. (1991), 38 C.P.R. (3d) 1.
9Section 26 of the Trade-marks Act.
10(1982), 61 C.P.R. (2d) 42 at 47-48 (F.C.T.D.).
11McDonald's Corp v. Coffee Hut Stores Ltd. (1994), 55 C.P.R. (3d) 463 per McKeown J., affirmed (1996) 68 C.P.R. (3d) 168, per Hugessen J.A. (as he then was) (C.A.) citing Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at 428 per Desjardins J.A. (C.A.).
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