Date: 20101020
Dockets: A-512-09
A-513-09
Citation: 2010 FCA 277
CORAM: NOËL J.A.
SHARLOW J.A.
LAYDEN-STEVENSON
J.A.
A-512-09
BETWEEN:
SIMPSON STRONG-TIE COMPANY, INC.
Appellant
and
PEAK INNOVATIONS INC.
Respondent
A-513-09
BETWEEN:
SIMPSON STRONG-TIE COMPANY, INC.
Appellant
and
PEAK INNOVATIONS INC.
Respondent
Heard at Vancouver,
British Columbia, on October 20, 2010.
Judgment delivered from the Bench at Vancouver, British Columbia, on October 20, 2010.
REASONS FOR
JUDGMENT OF THE COURT BY: LAYDEN-STEVENSON J.A.
Date: 20101020
Dockets: A-512-09
A-513-09
Citation: 2010 FCA 277
CORAM: NOËL
J.A.
SHARLOW
J.A.
LAYDEN-STEVENSON J.A.
A-512-09
BETWEEN:
SIMPSON STRONG-TIE COMPANY, INC.
Appellant
and
PEAK INNOVATIONS INC.
Respondent
A-513-09
BETWEEN:
SIMPSON STRONG-TIE COMPANY, INC.
Appellant
and
PEAK INNOVATIONS INC.
Respondent
REASONS FOR JUDGMENT OF THE
COURT
(Delivered
from the Bench at Vancouver, British Columbia, on October 20, 2010)
LAYDEN-STEVENSON J.A.
[1]
These
reasons address the appeals in Court File Number A-513-09 and Court File Number
A-512-09 and will be filed as reasons for judgment in both files.
[2]
The appellant,
Simpson Strong-Tie Company, Inc. (Strong-Tie) appeals the judgment of Justice
Snider (the judge) in 2009 FC 1200 wherein she dismissed Strong-Tie’s appeals
from a decision of the Trade-Mark Opposition Board (the Board). The Board
rejected Strong-Tie’s opposition regarding two trade-mark applications of the
respondent Peak Innovations Inc. (Peak) in relation to fastener brackets for
attaching deck boards for the colours green and greyish green. For the reasons
that follow, we are of the view that the appeals must be dismissed.
[3]
Justice
Snider correctly stated the standard of review from a decision of the Board
(reasons for judgment at paras. 13-15) as well as the applicable evidentiary
burdens (reasons for judgment at para. 29). Strong-Tie does not allege any
error with respect to the judge’s identification of the appropriate legal tests
to be applied.
[4]
Strong-Tie’s
arguments are largely founded on the basis that the “new” evidence it adduced
in the Federal Court is more than sufficient to meet its evidential burden so
as to shift the legal burden on the issues to Peak (appellant’s memorandum of
fact and law at paras. 8, 23, 37, 42, 44 and 49). Basically, this constitutes
an attack on the judge’s appreciation and weighing of the evidence. The
intervention of this Court is therefore limited to palpable and overriding
error on the part of the judge. We are not persuaded any such error has been
established.
[5]
The judge
examined and assessed Strong-Tie’s purported new evidence. Where she found it
to be material, she considered the relevant ground of opposition afresh, as she
was bound to do. Strong-Tie makes the same arguments before us that were made
to the judge and rejected by her. It would have this Court conduct a de novo
hearing. That is not our function. Only three of Strong-Tie’s arguments require
further comment.
[6]
With
respect to its submission that the judge misdirected herself in concluding that
the allegation of non-distinctiveness was not raised in its statements of
opposition, we agree with Peak that Strong Tie explicitly challenged
distinctiveness of the Peak Colour Mark on the basis of alleged confusion
with various other trade-marks. This ground of opposition was rejected by the
Board and by the judge. The reference to the ground of opposition upon which
Strong-Tie relies to justify its general attack of non-distinctiveness related
to subject matter (use and functionality) rather than what the judge
characterized as the “inherent nature of the mark” (reasons for judgment
at para. 30). In any event, there is no evidence to demonstrate that the Peak
Colour Mark does not distinguish Peak’s fastener brackets.
[7]
Next, even
if Strong-Tie were correct that the judge placed too high an onus on it with
respect to the evidence of non-use (and we make no finding in this respect), it
is immaterial to the result because she also found that Strong-Tie’s new
evidence did not relate to the colour green and there was no evidence that a
green coating had any particular advantage over a coating of another colour.
[8]
Finally,
we are not persuaded that the judge erred in concluding that the issue of the
back view was not raised in the statement of opposition. The licensing argument
was not pursued.
[9]
Since
Strong-Tie has failed to demonstrate any error that warrants the intervention
of this Court, the appeals will be dismissed with a single set of costs.
“Carolyn Layden-Stevenson”
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND
SOLICITORS OF RECORD
DOCKETS: A-512-09
A-513-09
STYLE OF CAUSE: SIMPSON
STRONG-TIE COMPANY, INC.
v. PEAK INNOVATIONS INC.
PLACE OF HEARING: Vancouver,
British Columbia
DATE OF HEARING: October 20, 2010
REASONS FOR JUDGMENT NOËL J.A.
OF THE COURT BY: SHARLOW J.A.
LAYDEN-STEVENSON J.A.
DELIVERED FROM THE BENCH BY: LAYDEN-STEVENSON J.A.
APPEARANCES:
|
Kenneth D. McKay
|
FOR
THE APPELLANT
|
|
Paul Smith
|
FOR
THE RESPONDENT
|
SOLICITORS
OF RECORD:
|
Sim, Lowman, Ashton & McKay LLP
Toronto, Ontario
|
FOR THE APPELLANT
|
|
Smiths IP
Vancouver,
British
Columbia
|
FOR THE RESPONDENT
|
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