Date: 20130430
Docket: A-392-12
Citation: 2013 FCA 119
CORAM: SHARLOW
J.A.
DAWSON J.A.
WEBB
J.A.
BETWEEN:
REYNOLDS PRESTO
PRODUCTS INC.
Appellant
and
P.R.S. MEDITERRANEAN
LTD.
Respondent
REASONS FOR JUDGMENT
WEBB J.A.
[1]
This
is an appeal from the decision of the Federal Court (2012 FC 824) rendered by Harrington J.
(the Judge) dismissing the application by Reynolds Consumer Products, Inc. (now
Reynolds Presto Products Inc.) (Presto) under section 57
of the Trade-marks
Act, R.S.C. 1985, c. T-13 (the Act). The application by Presto was for
an order to strike out the NEOWEB entry in the Trade-Marks Register. The
registered owner of the NEOWEB mark is P.R.S. Mediterranean Ltd. (P.R.S.). Presto’s
application was based on the allegation that the NEOWEB mark used by P.R.S. in
association with its cellular confinement systems is confusing with the GEOWEB
mark of Presto used by it in association with its cellular confinement systems.
If this allegation is valid, then the trade-mark NEOWEB would not have been
registrable by P.R.S. in association with cellular confinement systems.
Facts
[2]
Presto
registered the GEOWEB trade-mark in Canada in 2001 in association with its
cellular confinement systems. These systems are arrays of pockets or cells
created by welding together perforated strips of polyethylene (or some other
material) in a honeycomb shape. The cells are then filled with sand, gravel,
concrete, soil or some other material. The systems are used for erosion control
or to stabilize the ground. Presto stated that it had been using the mark
“GEOWEB” in Canada in association with these wares since at least August 1993.
[3]
In
1996 (which was the same year that P.R.S. was incorporated), Presto granted P.R.S.
a license to use the GEOWEB trade-mark in association with the manufacture and
sale of cellular confinement systems. P.R.S. distributed these systems in approximately
20 countries (which were not identified). As stated by the Judge, it is not
clear whether P.R.S. was licensed to sell GEOWEB products in Canada. Since the Chairman of P.R.S. stated during cross examination that P.R.S. had never
sold GEOWEB products in Canada, this would mean that either P.R.S. was an
unsuccessful distributor of such products in Canada or that Canada was not one of the unidentified countries in which P.R.S. was licensed to sell
GEOWEB products.
[4]
The
licensing agreement (which was to have expired in 2001) was extended to 2006.
The agreement was either terminated in 2006 or not renewed. P.R.S. then began
to compete with Presto. Initially there was no significant difference between
the cellular confinement systems sold by P.R.S. using the trade-mark NEOWEB and
the cellular confinement systems sold by Presto using the trade-mark GEOWEB.
P.R.S. has claimed that it has since made some improvements to the systems that
it is selling.
[5]
In
August 2007, P.R.S. applied to have the trade-mark NEOWEB registered for use in
association with cellular confinement systems and this trade-mark was
eventually registered in 2010. Although the description of the wares for the
NEOWEB trade-mark is longer than the description of the wares for the GEOWEB
trade-mark, the Judge found, in paragraph 6 of his reasons, that “it really
comes to the same thing: three-dimensional polymeric webs for soil and earth
stabilization and cellular confinement systems”. This finding has not been
challenged.
Legislation
[6]
Presto
had applied under section 57 of the Act for an order to strike out the
registration of the NEOWEB trade-mark. Subsection 57(1) of the Act provides as
follows:
57. (1) The
Federal Court has exclusive original jurisdiction, on the application of the
Registrar or of any person interested, to order that any entry in the
register be struck out or amended on the ground that at the date of the
application the entry as it appears on the register does not accurately
express or define the existing rights of the person appearing to be the registered
owner of the mark.
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57.
(1) La Cour fédérale a une compétence initiale exclusive, sur demande du
registraire ou de toute personne intéressée, pour ordonner qu’une inscription
dans le registre soit biffée ou modifiée, parce que, à la date de cette demande,
l’inscription figurant au registre n’exprime ou ne définit pas exactement les
droits existants de la personne paraissant être le propriétaire inscrit de la
marque.
|
[7]
As
noted above, the basis for the application was the allegation that the use of
the NEOWEB trade-mark in association with the wares identified by P.R.S. was
confusing with the GEOWEB trade-mark in association with the wares identified
by Presto.
[8]
Section
6 of the Act provides, in part, that:
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.
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6. (1) Pour l’application de la
présente loi, une marque de commerce ou un nom commercial crée de la
confusion avec une autre marque de commerce ou un autre nom commercial si
l’emploi de la marque de commerce ou du nom commercial en premier lieu
mentionnés cause de la confusion avec la marque de commerce ou le nom commercial
en dernier lieu mentionnés, de la manière et dans les circonstances décrites
au présent article.
(2) L’emploi d’une marque de
commerce crée de la confusion avec une autre marque de commerce lorsque
l’emploi des deux marques de commerce dans la même région serait susceptible
de faire conclure que les marchandises liées à ces marques de commerce sont
fabriquées, vendues, données à bail ou louées, ou que les services liés à ces
marques sont loués ou exécutés, par la même personne, que ces marchandises ou
ces services soient ou non de la même catégorie générale.
[…]
(5) En décidant si des marques
de commerce ou des noms commerciaux créent de la confusion, le tribunal ou le
registraire, selon le cas, tient compte de toutes les circonstances de l’espèce,
y compris :
a) le caractère distinctif
inhérent des marques de commerce ou noms commerciaux, et la mesure dans
laquelle ils sont devenus connus;
b) la période pendant laquelle
les marques de commerce ou noms commerciaux ont été en usage;
c) le genre de marchandises,
services ou entreprises;
d) la nature du commerce;
e) le degré de ressemblance
entre les marques de commerce ou les noms commerciaux dans la présentation ou
le son, ou dans les idées qu’ils suggèrent.
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Judge’s Decision
[9]
After
quoting subsection 6(5) of the Act and referring to certain excerpts from the
reasons of Rothstein J. in Masterpiece Inc. v. Alavida Life-styles Inc.,
2011 SCC 27, (Masterpiece), the Judge stated that:
21 Turning now to section 6(5)
of the Act, I consider it safe to eliminate subsections (b), (c) and (d).
22 Apart
from the claim in the GEOWEB application, taking that claim at its face value,
there has been no evidence of further use in Canada. Mr. Erez, P.R.S.'
Chairman, testified that his company had never sold a GEOWEB product here.
However, as aforesaid, it is not clear that it was licensed to sell GEOWEB
products in Canada, or, if it was, whether it was a sole distributor. There is
some evidence of the use of the NEOWEB trade-mark. There was one shipment of NEOWEB
product, attendances at trade shows and the like. At best, NEOWEB has a slight
edge.
23 Both
companies are engaged in the same wares, business and trade. P.R.S. claims the
latest version of its product is better, but there is no evidence that it is
appealing to a different, more sophisticated market or that its product is more
expensive.
24 In
my opinion, the test for confusion, in this case, is to be found in the
surrounding circumstances, including subsections 5(a) and 5(e). In subsection
5(a), I limit myself to "the inherent distinctiveness of the
trade-marks..." as I am not satisfied that it has been established that
either GEOWEB or NEOWEB is better known than the other.
[10]
The
Judge then reviewed the inherent distinctiveness of the two trade-marks, the
resemblance of the two trade-marks and other surrounding circumstances as
listed in paragraph 31 of his reasons, which were:
a. misleading
marketing practices on the part of P.R.S.;
b. actual confusion;
c. treatment of the
trade-marks in other jurisdictions;
d. family of marks; and
e. the opinion of the
trade-marks examiner.
[11]
He
then concluded in paragraph 46 that:
46 Having reviewed the evidence and
the written and oral submissions of the parties, in my opinion the use of the GEOWEB
and NEOWEB trade-marks in Canada would not likely lead to the inference that
the wares associated with the marks were manufactured or sold by the same
person.
Standard of Review
[12]
In
Housen
v. Nikolaisen, [2002] 2 S.C.R. 235, 2002 SCC 33, the Supreme
Court of Canada confirmed that the standard of review for questions of law is
correctness. Findings of fact (including inferences of fact) will stand unless
it is established that the Judge made a palpable and overriding error. For
questions of mixed fact and law, the standard of correctness will apply to any
extricable question of law and otherwise the standard of palpable and
overriding error will apply. An error is palpable if it is readily apparent and
it is overriding if it changes the result.
Analysis
[13]
As
provided in subsection 6(5) of the Act, the question of whether NEOWEB is
confusing with GEOWEB is to be determined by having regard to all of the
surrounding circumstances, including those listed in paragraphs 6(5)(a) to (e)
– the inherent distinctiveness of the trade-marks and extent to which they are
known, the length of time the trade-marks have been in use, the nature of the
wares, the nature of the trade, and the resemblance in appearance, sound or
ideas suggested by them.
[14]
Presto
argues that the Judge eliminated the three factors that are set out in
paragraphs 6(5) (b), (c) and (d) of the Act in determining whether the two
trade-marks are confusing. If the Judge did not consider any of these three
factors that he was required to consider, then this would be an error of law (Canada
(Director of Investigation and Research, Competition Act)
v. Southam Inc. [1997] 1 S.C.R. 748, paragraphs 39 and 41).
[15]
P.R.S.,
on the other hand, argues that these factors were considered and the reference
to “eliminating” the factors in paragraph 21 of his reasons, when read with his
comments in paragraphs 22 to 24, simply means that he was not assigning any
weight to these factors. This would mean that he had decided that these
factors, in this case, were not important and did not assist him in determining
whether the two trade-marks were confusing. If the Judge did make an error in
determining whether these factors assisted him in deciding that the two
trade-marks are not confusing, this error could only be addressed by this Court
if it amounted to a palpable and overriding error and would have changed the
outcome (ITV
Technologies, Inc. v. WIC Television Ltd. 2005 FCA 96 (paragraph
36)). P.R.S. argues that no palpable and overriding error was made by the
Judge.
[16]
Although
it is not entirely clear (since the Judge indicated in paragraph 21 of his
reasons that he was eliminating “subsections (b), (c) and (d)”), it seems to me
that the correct interpretation of his reasons is that the Judge had determined
that these factors did not assist him in determining whether the two
trade-marks are confusing, i.e., he assigned no weight to these factors.
Therefore, this finding can only be disturbed only if there was a palpable and
overriding error.
[17]
In
my respectful view, the nature of the wares and the nature of the trade assist
in determining whether these two trade-marks are confusing. Having found that
“both companies are engaged in the same wares, business and trade” (paragraph
23 of his reasons), the Judge should have considered how this finding should have
been assessed in determining whether the use of the NEOWEB trade-mark in
association with cellular confinement systems would be confusing with the use
of the GEOWEB trade-mark in association with cellular confinement systems. If
this analysis had been conducted, it would have changed the result.
[18]
Since
the analysis of these two factors was not completed by the Judge, this Court
could either send the matter back to the Federal Court to complete this
analysis or conduct its own analysis. Since all of the testimony of the
individuals was submitted by affidavits, in my opinion, it would seem
appropriate in this case for this Court to conduct its own analysis, with
deference to the findings of fact of the Judge where no any palpable and
overriding error was made.
[19]
In
conducting the analysis required to determine whether the two trade-marks are
confusing it is helpful to start with the general comments of Rothstein J. (who
was writing for the entire Court) in Masterpiece:
40 At
the outset of this confusion analysis, it is useful to bear in mind the test
for confusion under the Trade-marks Act. In Veuve Clicquot Ponsardin
v. Boutiques Cliquot Ltée, 2006 SCC 23, [2006] 1 S.C.R. 824, Binnie J.
restated the traditional approach, at para. 20, in the following words:
The test to be applied is a
matter of first impression in the mind of a casual consumer somewhat in a hurry
who sees the [mark], at a time when he or she has no more than an imperfect
recollection of the [prior] trade-marks, and does not pause to give the matter
any detailed consideration or scrutiny, nor to examine closely the similarities
and differences between the marks.
Binnie J. referred with approval to the words of
Pigeon J. in Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp.,
[1969] S.C.R. 192, at p. 202, to contrast with what is not to
be done - a careful examination of competing marks
or a side by side comparison.
…
67 This Court has affirmed that
consumers in the market for expensive goods may be less likely to be confused
when they encounter a trade-mark, but the test is still one of "first
impression". In his reasons, the trial judge used the importance and cost
of expensive goods and services to change the likelihood of confusion test from
one of first impression of a trade-mark to a test of consumers being
"unlikely to make choices based on first impressions". This approach
is not consistent with the test for confusion under s. 6(5) which has been
consistently endorsed by this Court, most recently in Veuve Clicquot.
70 The
focus of this question is the attitude of a consumer in the marketplace.
Properly framed, consideration of the nature of the wares, services or business
should take into account that there may be a lesser likelihood of trade-mark
confusion where consumers are in the market for expensive or important wares or
services. The reduced likelihood of confusion is still premised on the first
impression of consumers when they encounter the marks in question. Where
they are shopping for expensive wares or services, a consumer, while still
having an imperfect recollection of a prior trade-mark, is likely to be
somewhat more alert and aware of the trade-mark associated with the wares or
services they are examining and its similarity or difference with that of the
prior trade-mark. A trade-mark, as Binnie J. observed in Mattel, is a
shortcut for consumers. That observation applies whether they are shopping for
more or less expensive wares or services.
71 It
is not relevant that, as the trial judge found, consumers are "unlikely to
make choices based on first impressions" or that they "will generally
take considerable time to inform themselves about the source of expensive goods
and services" (para. 43). Both of these - subsequent research or consequent
purchase - occur after the consumer encounters a mark in the
marketplace.
72 This
distinction is important because even with this increased attentiveness, it may
still be likely that a consumer shopping for expensive goods and services will
be confused by the trade-marks they encounter. Careful research and
deliberation may dispel any trade-mark confusion that may have arisen. However,
that cannot mean that consumers of expensive goods, through their own caution
and wariness, should lose the benefit of trade-mark protection. It is confusion
when they encounter the trade-marks that is relevant. Careful research which
may later remedy confusion does not mean that no confusion ever existed or that
it will not continue to exist in the minds of consumers who did not carry out
that research.
73 Indeed,
before source confusion is remedied, it may lead a consumer to seek out,
consider or purchase the wares or services from a source they previously had no
awareness of or interest in. Such diversion diminishes the value of the
goodwill associated with the trade-mark and business the consumer initially
thought he or she was encountering in seeing the trade-mark. Leading consumers
astray in this way is one of the evils that trade-mark law seeks to remedy.
Consumers of expensive wares or services and owners of the associated
trade-marks are entitled to trade-mark guidance and protection as much as those
acquiring and selling inexpensive wares or services.
[20]
The
test for confusion is to be applied when a consumer encounters a trade-mark.
The test is whether the consumer who sees a particular trade-mark and who has
an imperfect recollection of another trade-mark will erroneously assume that
the goods or services associated with the particular trade-mark are associated
with the other trade-mark. Since this is a civil case, the burden on Presto is
to establish that it is more likely than not that a consumer who encounters the
NEOWEB trade-mark in association with cellular confinement systems (when that
consumer has an imperfect recollection of the GEOWEB trade-mark in association
with the same or substantially the same wares) would be confused and
erroneously assume that the NEOWEB cellular confinement systems were being sold
by Presto. Even though the cellular confinement systems would be considered to
be expensive items with only a limited market, “the test is still one
of ‘first impression’".
[21]
This
determination of whether the two trade-marks are confusing is made based on all
of the surrounding circumstances including those specifically enumerated in
paragraphs 6(5)(a) to (e) of the Act. As noted by the Judge in paragraph 31 of
his reasons, there are circumstances that were alleged to be relevant, in
addition to those specifically enumerated in paragraphs 6(5)(a) to (e) of the
Act.
Paragraph 6(5)(a) – Inherent
Distinctiveness and the Extent to Which They are Known
[22]
Paragraph
6(5)(a) of the Act provides that the inherent distinctiveness of the
trade-marks and the extent to which they have become known are to be considered.
These factors will determine the strength of the particular trade-mark (Pink
Panther Beauty Corp. v. United Artists Corp., [1998]
3 F.C. 534, paragraph 23). If a trade-mark is not inherently distinctive (and
has not acquired distinctiveness as a result of continual use in the
marketplace), it will not be considered to be a strong trade-mark and it will
be afforded less protection.
[23]
The
Judge found (in paragraph 24) that it had not been established that either
trade-mark was better known than the other one and he therefore limited his
analysis to the inherent distinctiveness of the trade-marks. In paragraph 28 of
his reasons, the Judge found that neither trade-mark was inherently
distinctive. As noted by the Judge, both trade-marks are comprised of a three
letter Greek prefix (geo and neo) and a common suffix – web. In my opinion,
there is no basis to interfere with these findings. Since the GEOWEB trade-mark
is not inherently distinctive, it will be afforded less protection than if it
were inherently distinctive. However, less protection does not mean it will not
be afforded any protection.
[24]
Although
GEOWEB is not a strong trade-mark, the question is still whether a consumer,
upon encountering the NEOWEB trade-mark in association with cellular
confinement systems, would likely be confused about whether these were the
GEOWEB wares of Presto.
Paragraph (b) – The Length of
Time That the Trade-marks Have Been in Use
[25]
In
paragraphs 14 and 22, the Judge noted that there was little evidence of the use
of either trade-mark in Canada and that “[a]t best, NEOWEB has a slight edge”.
There is no basis to interfere with this finding.
Paragraphs (c), (d), and (e) –
The Nature of the Wares and Trade and the Resemblance of the Two Trade-marks
[26]
In
this case, the wares were the same (or substantially the same) and the nature
of the trade was the same, as noted by the Judge in paragraph 23 of his
reasons.
[27]
In
Pink
Panther Beauty Corp., Linden J.A., writing on behalf of this
Court, stated that:
26 Clearly, where trade-marks are
similar, the degree to which the wares or services which bear those marks are
similar will be a large factor in determining whether confusion is likely to
result.
[28]
In
Precision
Door & Gate Service Ltd. v. Precision Holdings of Brevard, Inc., 2012
FC 496, O'Reilly J. stated that:
34 Both
parties offer primarily garage door services. The nature of their wares and
services is essentially identical. This suggests that the potential for
confusion is high.
[29]
In
Mattel, Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 772, the Supreme
Court of Canada commented on the decision of this Court in Pink Panther
and noted in paragraph 71 that a difference in wares will not always be a
dominant consideration and that any comments of Linden J.A. that could
be interpreted as requiring a resemblance between wares before trade-marks
could be found to be confusing, should not be followed. However, the Supreme
Court also noted, in the same paragraph, that the difference between wares will
“generally be an important consideration”. There is no significant difference
between the wares sold by P.R.S. using the trade-mark NEOWEB and the wares sold
by Presto using the trade-mark GEOWEB and, in this case, this is an important
consideration.
[30]
There
is a greater likelihood of confusion if two trade-marks that resemble each
other are used in association with the same products (or substantially the same
products) in the same markets. As a result, the resemblance of the two
trade-marks should not be viewed in isolation but rather in conjunction with
the nature of the wares and the nature of the trade.
[31]
In
analysing the resemblance of GEOWEB and NEOWEB, these two trade-marks should
not be analysed syllable by syllable, but rather as a whole, in order to
determine whether NEOWEB, in association with cellular confinement systems, so
resembles GEOWEB, in association with cellular confinement systems, in the same
market, that it would cause confusion for the consumer with the imperfect
recollection of the GEOWEB trade-mark (Park
Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd , [1991]
F.C.J. No. 546).
[32]
In
comparing the entire trade-mark NEOWEB with GEOWEB it should be noted that only
the first letter is different and, as a whole, each is comprised of a Greek
prefix with the same suffix. The two sound similar (they rhyme) and the use of
“neo” as a prefix could suggest that NEOWEB is simply a newer version of
GEOWEB. It seems to me that, as a whole, NEOWEB would likely cause confusion
with consumers with an imperfect recollection of the GEOWEB trade-mark. Since
the wares associated with each trade-mark are the same wares (or substantially
the same wares) and since the markets for the wares are the same, the
likelihood of confusion is even greater and, in my opinion, elevated to the
point where it would be more likely than not that the consumer with the
imperfect recollection of the GEOWEB trade-mark in association with cellular
confinement systems would be confused about whether NEOWEB cellular confinement
systems were made by Presto.
Other Circumstances – Marketing
by P.R.S.
[33]
As
noted above, there were other circumstances that were alleged to be relevant in
this matter. One such circumstance was the marketing by P.R.S. or its
distributors which identified NEOWEB as formerly GEOWEB. The issue in this case
is whether the first impression of the consumer in encountering the trade-mark
NEOWEB (not the additional words in the promotional material) with an imperfect
recollection of the trade-mark GEOWEB would be confused and erroneously assume
that the NEOWEB systems were made by Presto. Confusion is determined based on
the trade-mark, not on the additional words included in any advertising
material. Therefore, the marketing practices of P.R.S. do not assist in
determining whether the two trade-marks are confusing.
Other Circumstances – Actual
Confusion
[34]
Presto
referred to an e-mail that it had received from an unidentified customer in an
unidentified country which indicated that the author of the e-mail was
confused. However, as noted by the Judge, since there was no indication that
the person was in Canada, this is of no assistance in determining whether the
two trade-marks are confusing for the purposes of the Act.
Other Considerations – The
treatment of the Trade-marks in Other Jurisdictions
[35]
P.R.S.
introduced evidence showing that, of the 31 jurisdictions in which a trade-mark
search was conducted, both trade-marks are registered in three countries – Australia, Japan and South Korea. However, no evidence was introduced in relation to the
trade-mark law of these three countries. Presto introduced a decision of
the Office for Harmonization in the Internal Market (Trade Marks and Design)
- Opposition Division, Opposition No B 1 302 530, dated 27 February 2012.
As noted by the Judge “[t]his was an opposition based on the registration of GEOWEB
in the Benelux countries, Czech Republic, Greece, Hungary, Ireland, Italy,
Poland, Slovakia, Denmark, France, Germany, Spain and the United Kingdom”. The
Judge also stated that this “decision deals with language used in various
jurisdictions and concluded that the opposition was partially well-founded on
the basis of Presto's GEOWEB” (paragraph 38) and that “this decision is in
appeal” (paragraph 40). Neither party provided any update on the status of this
appeal.
[36]
There
are also a number of other jurisdictions in which a search was conducted for
both registrations. However, there was no indication of whether P.R.S. had
attempted to register NEOWEB in these other jurisdictions or whether the
registration of the NEOWEB trade-mark had been rejected in these other jurisdictions.
[37]
It
seems to me that, although it should not be given a great deal of weight, that
this would favour GEOWEB since of the 31 jurisdictions that were searched, the
registration of the two trade-marks was allowed in three and successfully
opposed in 13 jurisdictions with no explanation for what happened in the other
15 jurisdictions.
Other Considerations – Family of
Marks
[38]
The
Judge noted that AGRIWEB is a registered trade-mark of Presto and NEOLOY is a registered
trade-mark of P.R.S. Neither party has any claim that it has a family of
trade-marks that would affect the confusion analysis.
Other Considerations – Position
of the Trade-marks Examiner
[39]
The
only other circumstance that the Judge identified as favouring either party was
the determination by the trade-mark examiner. On February 6, 2008, a Senior
Trade-marks Examiner wrote to P.R.S. indicating that the NEOWEB trade-mark was
confusing with the previously registered GEOWEB trade-mark. Following submissions
made by P.R.S., the registration of the trade-mark NEOWEB was allowed. As noted
by the Judge, this circumstance favours P.R.S. However, in my opinion, it does
not so strongly favour P.R.S., that, when all of the surrounding circumstances
are taken into account, the two trade-marks could not be found to be confusing.
Conclusion
[40]
It
seems to me that if all of the surrounding circumstances are taken into account
(including those specifically enumerated in paragraphs 6(5)(a) to (e) and those
identified by the Judge in paragraph 31 of his reasons) it is more likely than
not that a consumer, with an imperfect recollection, who encounters NEOWEB used
by P.R.S. in association with cellular confinement systems, would be confused
with respect to whether the NEOWEB systems were made by Presto. The two
trade-marks are obviously similar (with only one letter different and with the
substitution of one Greek three letter prefix for another). The two also rhyme
and the use of “neo” could suggest that NEOWEB is a newer version of GEOWEB. The
wares associated with each trade-mark are the same or substantially the same
and the markets in which the wares are sold are also the same.
[41]
As
a result, I would allow the appeal, with costs in this Court and in the Federal
Court, and set aside the judgment of the Federal Court. Making the judgment
that should have been made, I would order that the Registration No. TMA 780,538
for the trade-mark NEOWEB be struck out.
"Wyman
W. Webb"
“I
agree.
K. Sharlow J.A.”
“I
agree.
Eleanor R. Dawson J.A.”
FEDERAL COURT OF
APPEAL
NAMES OF COUNSEL AND
SOLICITORS OF RECORD
DOCKET: A-392-12
STYLE OF CAUSE: REYNOLDS PRESTO
PRODUCTS INC. v. P.R.S. MEDITERRANEAN LTD.
PLACE OF HEARING: Toronto, Ontario
DATE OF HEARING: April 8, 2013
REASONS FOR JUDGMENT
BY: WEBB J.A.
CONCURRED IN BY: SHARLOW J.A.
DAWSON J.A.
DATED: April 30, 2013
APPEARANCES:
Anthony Prenol
Tariq
Remtulla
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FOR
THE APPELLANT
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Stephen P. Shoshan
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FOR
THE RESPONDENT
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SOLICITORS OF RECORD:
Blake, Cassels, Graydon LLP
Toronto, ON
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FOR THE APPELLANT
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Piasetzki Nenniger Kvas LLP
Toronto, ON
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FOR
THE RESPONDENT
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