Docket: A-406-16
Citation:
2017 FCA 125
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CORAM:
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DAWSON J.A.
DE MONTIGNY J.A.
WOODS J.A.
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BETWEEN:
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TIME
DEVELOPMENT GROUP INC. & TIME DEVELOPMENT INC.
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Appellants
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and
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TIMES GROUP
CORPORATION & TIMES DEVELOPMENTS INC.
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Respondents
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REASONS
FOR JUDGMENT
WOODS J.A.
[1]
This is an appeal from a judgment of the Federal
Court (per O’Reilly J.) which determined that a registered trademark,
TIMES GROUP CORPORATION, had been infringed by a confusing tradename, TIME
DEVELOPMENT GROUP.
[2]
The applicable legislative provision is
paragraph 20(1)(a) of the Trade-marks Act, R.S.C. 1985, c. T-13,
which provides:
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20 (1) The
right of the owner of a registered trade-mark to its exclusive use is deemed
to be infringed by any person who is not entitled to its use under this Act
and who
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20 (1) Le droit du propriétaire d’une marque de commerce
déposée à l’emploi exclusif de cette dernière est réputé être violé par une
personne qui est non admise à l’employer selon la présente loi et qui :
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(a) sells,
distributes or advertises any goods or services in association with a
confusing trade-mark or trade-name;
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a) soit vend, distribue ou annonce des produits ou services
en liaison avec une marque de commerce ou un nom commercial créant de la
confusion;
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…
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[…]
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[3]
The appellants, Time Development Group Inc. and
Time Development Inc., use the tradename TIME DEVELOPMENT GROUP. The
respondents, Times Group Corporation (the owner of the registered trademark)
and Times Developments Inc., instituted an application in the Federal Court for
injunctive relief against the appellants for infringement and similar relief
pursuant to the passing off provisions of the Act.
[4]
Each of the four parties is involved in some way
in real estate development and management, and their businesses are focussed on
the Chinese Canadian community in the Greater Toronto Area. However, the record
is sparse as to the exact nature of the business activities conducted by each
of them.
[5]
For reasons cited as 2016 FC 1075, the Federal
Court declared that the registered trademark had been infringed and ordered
that the appellants refrain from using “its trade-names
and any confusingly similar variants.”
[6]
The appellants have appealed to this Court.
Decision of the Federal Court
[7]
The Federal Court framed the main issue as one
of confusion: Was confusion likely between the registered trademark, TIMES GROUP
CORPORATION, and the tradename, TIME DEVELOPMENT GROUP? A related issue was
whether the registered trademark was invalid on the ground that it was not
distinctive of a single source.
[8]
The Federal Court concluded in the respondents’
favour on both issues. The judge found that the registered trademark was
distinctive and therefore valid, and that the appellants’ tradename was likely
confusing with it. The appellants were accordingly enjoined from using the
confusing tradename, and similar ones.
[9]
The judge also concluded that it was not
necessary to deal with the issue of passing off in light of the conclusion on
infringement.
Analysis
[10]
The appellants submit that the Federal Court
erred:
(a) in concluding that the registered trademark,
TIMES GROUP CORPORATION, was distinctive of a single source;
(b) in concluding that the respondents, the
applicants in the Federal Court, had established a likelihood of confusion; and
(c) in applying the applicable test of confusion.
[11]
For the reasons below, I conclude that the Federal
Court did not make any reviewable error in deciding that the registered
trademark was distinctive, and that the tradename TIME DEVELOPMENT GROUP was
confusing with it. The applicable standard of review is palpable and overriding
in respect of errors of fact and mixed fact and law, and correctness for
extricable errors of law (Housen v. Nikolaisen, 2002 SCC 33, [2002] 2
S.C.R. 235).
Distinctive of single source
[12]
The appellants submit that the judge erred in
finding that the registered mark was distinctive of a single source. A lack of
distinctiveness may be used as a defence to a trademark infringement
application pursuant to paragraph 18(1)(b) of the Act. The term “distinctive” is defined in section 2 of the Act, as
follows:
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distinctive, in relation to a trade-mark, means a trade-mark that actually
distinguishes the goods or services in association with which it is used by
its owner from the goods or services of others or is adapted so to
distinguish them; (distinctive)
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distinctive Relativement à une marque de
commerce, celle qui distingue véritablement les produits ou services en
liaison avec lesquels elle est employée par son propriétaire, des produits ou
services d’autres propriétaires, ou qui est adaptée à les distinguer ainsi. (distinctive)
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[13]
According to the appellants, the distinctiveness
requirement has not been satisfied because the registered trademark has been
used by both respondents and yet only one of them, Times Group Corporation,
owns the mark. In other words, the registered trademark does not distinguish
the owner’s goods or services from those of Times Developments Inc.
[14]
The appellants acknowledge that this difficulty
could have been overcome if the owner of the registered mark had licensed it to
the other respondent in an arrangement in which the owner retained control of
the character or quality of the goods and services used in connection with the
trademark. However, the appellants submit that such a licence has not been
established by the evidence.
[15]
In my view, the distinctiveness argument must be
rejected in light of the factual finding by the Federal Court that there is no
evidence that the registered trademark was used by both respondents (reasons,
paragraph 12). I have not been convinced that the Federal Court made a palpable
and overriding error in so finding. The appellants’ argument falls away if the
trademark has not been used by the respondent Times Developments Inc.
[16]
The appellants suggest that in the Federal
Court’s reasons, the judge acknowledges that both respondents were using the
registered mark. They point to parts of the reasons that appear to treat both
respondents as one entity and carrying on one business, such as references to
the respondents collectively as “Times” rather
than individually, and occasional references to their businesses as “it.”
[17]
I do not agree with this submission. In my view,
the references to “Times” in the reasons are generally
meant to convey the sense of “at least one of the
respondents.” The evidence before the Federal Court often referred
collectively to the appellants and to the respondents. It is unfortunate that
the terminology was not more precise. Nevertheless, the Federal Court’s reasons
read as a whole are clear that the two respondents are separate entities and
that the evidence did not establish that both respondents had used the
registered trademark.
[18]
The appellants also submit that the Federal
Court erred in its distinctiveness analysis by failing to consider the
coexistence of the two respondents in the market and the use of similar
tradenames and trademarks by Times Developments Inc. (Memorandum, paragraphs
61, 63 and 71). The appellants rely on affidavit evidence introduced by the
respondents to the effect that the respondents are well known as “Times Developments” (Appeal Book, Tab 5, page 41).
[19]
I also disagree with this submission. First,
this argument was not clearly made in the appellants’ written submissions
before the Federal Court, and it is not clear to me that this submission was fairly
before that Court. However, even if the argument was made, it was not a
reviewable error for the judge to decline to expressly deal with it.
[20]
As mentioned above, the evidence before the
Federal Court did not focus to any great extent on the details of the business
activities conducted by each of the respondents. Accordingly, little is known
as to how Times Developments Inc. and Times Group Corporation dealt with each
other and conducted their own businesses. In order for the appellants to
succeed in defending the infringement application on this basis, greater
evidence should have been provided on the use of tradenames and trademarks by
Times Developments Inc. In the absence of such evidence, it is not possible to
conclude that the registered trademark owned by Times Group Corporation was not
distinctive of its source as a result of similar tradenames and trademarks used
by Times Developments Inc.
[21]
For these reasons, I conclude that there is no
palpable and overriding error in the Federal Court’s conclusion that the
registered trademark was distinctive and therefore valid.
Likelihood of confusion
[22]
The Federal Court concluded that there was a
reasonable likelihood of confusion between the mark TIMES GROUP CORPORATION and
the name TIME DEVELOPMENT GROUP. The appellants submit that this conclusion is
flawed because the analysis failed to take into account the use of other “Times” trademarks and tradenames by both respondents
and by third parties.
[23]
This issue is reviewable on a standard of
palpable and overriding error.
[24]
It is important not to parse the confusion analysis
by the judge but to read the analysis as a whole. In my view, the judge did not
fail to take this evidence into account.
[25]
The Federal Court’s finding on confusion was
premised on the fact that there is a very strong resemblance between the
registered trademark TIMES GROUP CORPORATION and the tradename TIME DEVELOPMENT
GROUP and the fact that the mark and name are used in similar businesses and in
the same vicinity. The judge also commented that the resemblance is
particularly striking when the names are written in the Chinese language
because the singular and plural form of “TIME” are
the same. It is implicit in the reasons that these factors trumped a lack of
distinctiveness.
[26]
The appellants also submit that the Federal
Court did not identify the proper confusion test in paragraphs 35 and 36 of the
reasons.
[27]
This issue is reviewable on a standard of
correctness.
[28]
The Federal Court made no such error, in my
view. Paragraphs 35 and 36 of the reasons consider that individuals buying an
expensive item such as a home would not generally make this decision based on
first impressions. The judge applies the correct legal principles in this
discussion. In paragraph 36 of the reasons, the judge correctly notes that
confusion is to be determined based on the somewhat rushed, casual consumers’
first impression. The Federal Court did not misapprehend the proper test of
confusion.
Conclusion
[29]
It follows that I would dismiss the appeal with
costs.
“Judith M. Woods”
“I agree
Eleanor R.
Dawson J.A.”
“I agree
Yves de Montigny
J.A.”
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