Dockets:
A-222-14
A-223-14
Citation: 2015 FCA 111
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CORAM:
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GAUTHIER J.A.
WEBB J.A.
NEAR J.A.
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BETWEEN:
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ROTHMANS, BENSON & HEDGES, INC.
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Appellant
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and
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IMPERIAL TOBACCO PRODUCTS LIMITED
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Respondent
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REASONS
FOR JUDGMENT
GAUTHIER J.A.
[1]
Rothmans, Benson & Hedges, Inc. appeals the
order of Boivin J. (the judge) (2014 FC 300) dismissing its appeals from the
decision of Trade-marks Opposition Board (the Board) (2012 TMOB 226) rejecting
its oppositions to Imperial Tobacco Products Limited’s Applications No. 1,317,127
and No. 1,317,128 (Marks 127 and 128).
[2]
Both applications seek registration of an Orange
Package Design in association with manufactured tobacco products, namely
cigarettes. The appellant’s appeals from the decision of the judge were
consolidated by the June 18th, 2014 order of Mainville J.
[3]
The appellant argues that the Registrar erred in
finding that the respondent’s applications complied with subsections 30(b) and (h)
of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act). For applications based
on prior use of a mark in Canada, subsection 30(b) requires applicants to
provide the date of first use. In applications for trade-marks not limited to
words, subsection 30(h) requires applicants to provide a drawing of the applied-for
mark.
[4]
Before us, the appellant made clear that it was
not contesting that the marks described in each application would be
registerable had they been used as described. Thus, the issue is whether the
applications should have been denied on the basis that the respondent has not
in fact used the marks for which it applied, and that the drawings submitted are
not representative of the marks it has actually used.
[5]
The appellant says that the Board failed to
properly consider and refer to Nightingale
Interloc Ltd. v. Prodesign Ltd.
(1984), 2 C.P.R.
(3d) 535 [Nightingale].
However, it acknowledged at the hearing that Nightingale was not cited
to the Board, and that the case simply summarizes existing case law regarding
when a mark can be said to have been used as registered.
[6]
In any event, Nightingale merely reaffirms
that the use of a mark in combination with other material constitutes use of a
mark per se as a trade-mark if the public, as a matter of first
impression, would perceive the mark per se as being used as a trade-mark.
In addition, as in proceedings under section 45 of the Act, a given trade-mark
will be considered to be used where the trade-mark actually used (either alone
or in combination with other material) is not substantially different from the
applied-for or registered mark and where any deviations will not deceive the
public.
[7]
The appellant asserts that the Board should have
specifically referred to Nightingale and the two principles summarized
above. In the appellant’s view, the Board never turned its mind to the question
of whether Marks 127 and 128 were used as described and depicted in the
applications.
[8]
The appellant
argues that had the Board properly considered Nightingale, it would have
concluded that the applied-for marks had not been used since 2006 and that the
colour orange could not have been perceived by consumers to be used as a trade-mark
per se. For the appellant, the colour orange is actually used by the
respondent as an aesthetic background overlaid and integrated with other matter,
including other trade-marks and information mandated by regulation (e.g.,
health warnings, a list of ingredients, a price barcode etc.).
[9]
For the reasons that follow, I cannot agree.
[10]
In my view, this case essentially turns on its
own facts and the evidence on file. Contrary to the appellant’s arguments based
on policy, it is not a case that involves any new principles.
[11]
It is trite law that on appeals of decisions
made pursuant to subsection 56(1) of the Act, this Court must consider whether
the judge properly identified and applied the standard of review (Monster
Cable Products, Inc. v. Monster Daddy, LLC, 2013 FCA 137 at para. 4). The
parties agree that the judge properly identified the reasonableness standard as
applicable to the issues that were before him. Therefore, rather than focussing
on the reasons of the judge, this Court will step into the shoes of the judge
and focus on the decision of the Board: Agraira v. Canada (Public Safety and Emergency Preparedness), 2013 SCC 36 at paras. 45-46, [2013] 2 S.C.R.
559.
[12]
I note that the precise arguments made before us
were not made to the Board. Although the appellant raised subsection 30(b) in
its opposition, its argument in relation to that subsection was limited to the
fact that i) Marks 127-128 were applied to products sold in the so-called dark
market in most provinces in Canada, and would therefore not be visible at the
time of transfer and ii) alternatively, if those marks were visible at the time
of transfer, they could not act as trade-marks because they were merely ornamental
and not indicative of source (Appeal Book Vol. I, pp. 222-223 and 232).
[13]
In analyzing the subsection 30(b) ground of
opposition, the Board noted that the appellant filed no written submissions at
the hearing and presented no oral arguments in support of this ground. It is
thus difficult to fault the Board for not addressing subsection 30(b) in the
exact manner in which the appellant now argues it. Certainly, in that context
it is evident that we cannot infer from the absence of a specific reference to Nightingale that the Board failed to consider the principles discussed therein.
This is especially so considering that these principles have been applied
consistently for more than 40 years.
[14]
The Board addressed the arguments raised by the
appellant in its statement of opposition in relation to subsections 30(b) and
(h) in paras. 40-44 and 46 of its reasons.
[15]
In discussing subsection 30(b), in my view the
Board also dealt with the issue of whether or not the respondent’s actual use
of the colour orange on its packaging as of 2006 constitutes use of Marks 127
and 128 per se as trade-marks. Although the Board does not expressly
address all the specific points raised by the appellant before us, as these
were not argued before it, on a fair reading of her reasons, it is clear that it
turned its mind to these issues and addressed them in substance at paras. 42 and
46 of its reasons. It refers to relevant evidence submitted by the respondent
and in particular how it had notified the public that the colour orange was
used as its trade-mark, and it refers to the impact of other marks and material
(particularly, the warnings) used on the packaging. On my reading, it was
satisfied that the public would perceive the applied-for marks per se as
trade-marks and that the evidence demonstrated use of those trade-marks per
se by the respondent. In para. 46, the Board also noted that the appellant
adduced no evidence to support its allegation that the marks were merely
ornamental.
[16]
In view of the foregoing, I have not been
persuaded that the Board’s decision was unreasonable. The conclusion it reached
in respect of the issues referred to above was open to it on the evidence before
it. The judge therefore properly applied the standard of review when he found its
decision to be reasonable.
[17]
I propose that the appeal be dismissed with
costs.
“Johanne
Gauthier”
“I agree
Wyman W.
Webb, J.A.”
“I agree
D.G. Near,
J.A.”
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