Date:
20130115
Dockets: A-2-12
A-3-12
Citation:
2013 FCA 6
CORAM: DAWSON J.A.
TRUDEL
J.A.
STRATAS
J.A.
BETWEEN:
MÖVENPICK
HOLDING AG
Appellant
and
EXXON
MOBIL CORPORATION
and
ATTORNEY GENERAL OF CANADA
(REGISTRAR OF TRADE-MARKS)
Respondents
REASONS FOR JUDGMENT
OF THE COURT
(Delivered
from the Bench at Ottawa, Ontario, on January 15, 2013)
STRATAS J.A.
[1]
The
appellant appeals from the judgments of the Federal Court dated December 11,
2011 (per Harrington J.): 2011 FC 1397.
[2]
The
Federal Court found that the decisions of the Registrar of Trade-Marks dated
August 3, 2010 (2010 TMOB 125 and 2010 TMOB 126) were reasonable. The Registrar
dismissed the appellant’s opposition to the registration of the “MARCHÉ EXPRESS
& DESIGN” trade-mark application no. 1,124,171 and the “MARCHÉ EXPRESS”
trade-mark application no. 1,124,172.
[3]
Before
the Federal Court, the appellant adduced new evidence. The Federal Court found
as a finding of mixed law and fact, suffused by fact, that this new evidence
was not material as it would not have changed the Registrar’s findings and
conclusions. In this Court, the appellant has not submitted that the Federal
Court’s finding of immateriality is vitiated by palpable and overriding error.
[4]
Accordingly,
in essence, these are appeals from judgments upholding the decisions of the
administrative decision-maker, here the Registrar, as reasonable based on the
record before the Registrar.
[5]
The
Federal Court found that the Registrar applied proper legal principles to the
facts before her.
[6]
The
core of the Registrar’s holding is in paragraphs 61-63 of her decisions:
[61] When
considering the wares, services and trades of the parties, it is the statement
of wares or services in the parties’ trade-mark application and registration
that govern [Henkel Kommanditgesellschaft auf Aktein v. Super Dragon Import
Export Inc. (1986), 12 C.P.R. (3d) 110 (F.C.A.); Mr. Submarine Ltd. v.
Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.); Miss
Universe Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.)]
[62] The
Opponent submits that the Applicant’s services include fast food services and
points to evidence establishing that convenience stores and gas stations now
offer a wider variety of ready-to-go food items, which it argues falls within
the scope of restaurant services, necessarily overlapping with its services
[see Brennan affidavit Exhibits C, D and E].
[63] The
parties’ respective statements of services must be read with a view to
determining the probable type of business or trade intended by the parties
rather than all possible trades that might be encompassed by the wording [see McDonald’s
Corp. v. Coffee Hut Stores Ltd. (1994), 55 C.P.R. (3d) 463 (F.C.T.D.),
affd. 68 C.P.R. (3d) 168 (F.C.A.)]. The marks are also to be compared as they
are used in business [see Joseph E. Seagram & Sons Ltd. v. Seagram Real
Estate Ltd. (1990), 33 C.P.R. (3d) 454 (F.C.T.D.)]. In this regard, the
evidence establishes that the Applicant’[s] convenience stores at gasoline
stations, sell a variety of items such as cigarettes, candy bars and salty
snacks and offer fast food items such as sandwiches, doughnuts, coffee and soft
drinks. As I understand it, the Applicant’s services are not fast food
restaurant services, but rather convenience stores at gasoline stations where
limited food items are sold. In this regard, based on the evidence of record, I
find it unlikely that the parties’ trades would overlap. On the other hand, I
note that the Opponent’s statement of services does not include any limitations
regarding its trade channels; thus nothing would prevent the Opponent from
operating its restaurants, particularly in the form of fast food restaurants at
gasoline stations and in such cases, the Applicant’s fast food items could
potentially overlap with the Opponent’s restaurant services [see Brennan
affidavit Exhibit P].
[7]
We
agree with the Federal Court that this fell within the range of outcomes
acceptable and defensible on the facts and the law: Dunsmuir v. New Brunswick, 2008 SCC 9, [2008] 1 S.C.R. 190 at paragraph 47.
[8]
When
asked in oral argument to point to any error in the above passage, the appellant
submitted that the Registrar considered the potential overlap between the
parties’ trades but her consideration was limited by her finding that the
respondent’s services were not fast food services. However, the Registrar made
no such finding.
[9]
In
its analysis, the Federal Court went further than simply assessing the
reasonableness of the Registrar’s decisions. To some extent, perhaps mindful of
a potential appeal to this Court, it re-did the Registrar’s analysis, adding
observations of its own. This was unnecessary, and prompted the appellant to
attack some of the Federal Court’s observations, diverting focus from the real
issue, which was the reasonableness of the Registrar’s decisions.
[10]
We
wish to address one of the observations the Federal Court made. At paragraph
77, the Federal Court’s words could be taken to say that the admissibility of
new evidence offered in reviews of Registrar’s decisions is governed by the
rules of admissibility adopted by the Registrar. We disagree. Admissibility of
new evidence in the Federal Court in such proceedings is governed by the law of
evidence in the Federal Court.
[11]
We
see no reason to depart from the usual principle that costs in appeals follow
the event.
[12]
A
copy of these reasons for judgment shall be placed in both appeal files, A-2-12
and A‑3‑12.
[13]
For
the foregoing reasons, we shall dismiss the appeals, with one set of costs.
"David
Stratas"
FEDERAL COURT OF
APPEAL
NAMES OF COUNSEL AND
SOLICITORS OF RECORD
DOCKET: A-2-12
APPEAL
FROM A JUDGMENT OF THE HONOURABLE MR. JUSTICE HARRINGTON DATED DECEMBER 1, 2011,
DOCKET NO. T-1640-10
STYLE OF CAUSE: Mövenpick
Holding AG v. Exxon Mobil Corporation and Attorney General of Canada (Registrar of Trade-Marks)
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: January
15, 2013
REASONS FOR JUDGMENT
OF THE COURT BY: Dawson,
Trudel, Stratas JJ.A.
DELIVERED FROM THE
BENCH BY: Stratas
J.A.
APPEARANCES:
|
Bayo
Odutola
Hala
Tabl
|
FOR
THE APPELLANT
|
|
Christopher
C. Van Barr
Michael
O’Neill
|
FOR
THE RESPONDENT,
Exxon Mobil Corporation
|
SOLICITORS
OF RECORD:
|
Ollip
P.C.
Ottawa, Ontario
|
FOR THE APPELLANT
|
|
Gowling
Lafleur Henderson LLP
Ottawa, Ontario
|
FOR
THE RESPONDENT,
Exxon Mobil Corporation
|
FEDERAL COURT OF
APPEAL
NAMES OF COUNSEL AND
SOLICITORS OF RECORD
DOCKET: A-3-12
APPEAL
FROM A JUDGMENT OF THE HONOURABLE MR. JUSTICE HARRINGTON DATED DECEMBER 1, 2011,
DOCKET NO. T-1641-10
STYLE OF CAUSE: Mövenpick
Holding AG v. Exxon Mobil Corporation and Attorney General of Canada (Registrar of Trade-Marks)
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: January
15, 2013
REASONS FOR JUDGMENT
OF THE COURT BY: Dawson,
Trudel, Stratas JJ.A.
DELIVERED FROM THE
BENCH BY: Stratas
J.A.
APPEARANCES:
|
Bayo
Odutola
Hala
Tabl
|
FOR
THE APPELLANT
|
|
Christopher
C. Van Barr
Michael
O’Neill
|
FOR
THE RESPONDENT,
Exxon Mobil Corporation
|
SOLICITORS
OF RECORD:
|
Ollip
P.C.
Ottawa, Ontario
|
FOR THE APPELLANT
|
|
Gowling
Lafleur Henderson LLP
Ottawa, Ontario
|
FOR THE RESPONDENT, Exxon
Mobil Corporation
|
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