Docket: T-712-16
Citation: 2018 FC 408
[ENGLISH TRANSLATION REVISED BY AUTHOR]
Ottawa, Ontario, April 16, 2018
PRESENT: The Honourable Mr. Justice Grammond
JUDGMENT AND REASONS
[1]
The applicant, The Clorox Company of Canada, Ltd. [Clorox] is appealing a decision by the Registrar of Trade-marks [the Registrar], who rejected its opposition to two applications for trademark registration filed by the respondent, Chloretec s.e.c. [Chloretec]. Clorox holds the registered trademark “Javex”
and several other similar trademarks associated with bleach. Chloretec is applying to register the trademark “Javelo,”
in both written and visual form, for made-to-order bleach (in French, “eau de Javel”
). The main issue is whether there is confusion between Clorox’s marks and those of Chloretec. For the following reasons, I am of the view that there is no confusion and that the Registrar was right in rejecting Clorox’s opposition. The appeal is therefore dismissed.
[2]
The Registrar’s decision contains a detailed statement of facts. I will state only what is essential to the understanding of these reasons.
[3]
Clorox holds the registered trademark “Javex”
and many other similar marks associated with bleach or various other cleaning products. Some of these trademarks have been registered in Canada since the 1930s. Clorox acquired these trademarks in 2007.
[4]
On January 26, 2012, Chloretec filed an application to register the trademark “Javelo”
and the mark consisting of the word “Javelo”
and a design depicting a man who is throwing a javelin. Chloretec began promoting bleach by using its marks in the weeks before the application was filed. However, the first sales did not take place until February 2012.
[5]
On March 18, 2013, Clorox filed an opposition to these applications. In support of its opposition, Clorox raised a number of grounds: (1) The mark “Javelo”
is not distinctive within the meaning of section 2 of the Trade-marks Act, RSC 1985, c. T-13 [the Act]; (2) Chloretec is not the person entitled to registration pursuant to paragraphs 16(3)(a) and (b) of the Act; (3) According to paragraph 12(1)(d) of the Act, the mark is not registrable; (4) The application was not consistent with paragraph 30(i) of the Act; (5) The mark was used before the application was filed, contrary to paragraph 30(b) of the Act; (6) The mark was used by third parties who do not hold a licence; (7) The mark leads to confusion with Clorox’s marks.
[6]
After Clorox filed its opposition, Chloretec amended its application for registration to limit its scope to bulk bleach made to order.
[7]
In a decision dated February 22, 2016, a member of the Trade-marks Opposition Board, who exercises the powers of the Registrar, dismissed the opposition. For the sake of convenience, I will refer to this decision as that of the Registrar.
[8]
The Registrar first summarily dismissed some of the grounds of opposition. He held that paragraph 30(i) of the Act was not breached merely because the applicant was aware of the opponent’s mark. With respect to paragraphs 16(3)(a) and (b) of the Act, he concluded that Clorox had not submitted any evidence that its marks were used in Canada before 2012. In addition, given that Clorox was basing this ground of opposition on one mark only and that this mark had not been registered before 2013, this ground of opposition had to be dismissed. Finally, as for the distinctiveness of the “Javex”
marks, the Registrar noted that Clorox had not submitted any evidence.
[9]
The Registrar dismissed the ground of opposition based on the use of the “Javelo”
mark by Chloretec before its application was filed. He found that the use of a mark solely for promotional or advertising purposes did not amount to use within the meaning of section 4 of the Act.
[10]
The Registrar also dismissed the ground of opposition based on third party use. He found that the third parties in question were merely distributors or carriers acting under the direction of Chloretec.
[11]
Finally, with respect to the key issue of confusion, the Registrar weighed the various factors listed in subsection 6(5) of the Act. He found that Clorox’s marks and those belonging to Chloretec had a low degree of resemblance; that both marks were inherently distinctive to a certain extent, but that the “Javelo”
mark had become distinctive to a certain extent due to its use; that Clorox had not submitted any evidence of use of its marks, while Chloretec has been using its own marks since 2012; that the products offered by both parties are similar; and that no evidence of actual confusion had been submitted. In short, the Registrar saw no confusion, and Clorox’s oppositions were dismissed.
[12]
Section 56 of the Act grants a right to appeal the Registrar’s decisions to this Court. Clorox appealed the Registrar’s decision, reiterating all its grounds of opposition.
[13]
On such an appeal, subsection 6(5) of the Act allows the parties to file new evidence. Pursuant to this right, Clorox filed the affidavit of Angela S. Hilt, its vice-president and secretary. The purpose of this affidavit is to fill in some of the gaps in Clorox’s evidence that were identified by the Registrar.
[14]
In a recent decision, Justice Richard Boivin of the Federal Court of Appeal set out the approach to be taken when new evidence is submitted as follows:
In principle, the standard of review to be applied in an appeal of a decision of the Board is reasonableness. However, when new evidence is adduced on appeal before the judge under section 56 of the Act and the judge comes to the conclusion that the new evidence would have affected the Board’s finding of fact or exercise of discretion, the judge must come to his own conclusion on the issue to which the additional evidence relates [...].
(Saint Honore Cake Shop Limited v Cheung’s Bakery Products Ltd., 2015 FCA 12 at paragraph 18)
[15]
I am of the view that Ms. Hilt’s affidavit introduces new and significant evidence with respect to certain specific questions. In particular, it contains evidence of use of Clorox’s marks in Canada. This evidence is rather sketchy. It nonetheless justifies setting aside the Registrar’s finding that Clorox had not submitted any evidence of use of its marks. However, it does not make it possible to determine the extent of this use nor to assess the extent of the marks’ acquired distinctiveness.
[16]
Furthermore, Ms. Hilt indicates that two surveys on the “Javex”
marks were carried out in Canada. In the first case, she merely summarizes some findings of a survey carried out in 2006/2007, which apparently confirm—according to her—that there were significant sales of Javex products in Canada in 2007. No documents have been submitted to support these statements. In the second case, Ms. Hilt provides some charts that purport to display the results of a survey conducted in 2013 on the awareness of the “Javex”
trademarks. Among other things, these charts show the proportion of persons who say they are aware of certain marks of cleaning products. However, no information is provided on the survey’s methodology, nor even on the identity of the firm that conducted it.
[17]
At the hearing, counsel for Clorox asserted that the results of these surveys were not submitted in support of its arguments regarding confusion, but rather of its arguments regarding the awareness of the “Javex”
marks and their distinctiveness.
[18]
In Mattel, the Supreme Court commented on the use of surveys as evidence in trademark disputes:
The more recent practice is to admit evidence of a survey of public opinion, presented through a qualified expert, provided its findings are relevant to the issues and the survey was properly designed and conducted in an impartial manner.
[…]
As to the usefulness of the results, assuming they are elicited by a relevant question, courts have more recently been receptive to such evidence, provided the survey is both reliable (in the sense that if the survey were repeated it would likely produce the same results) and valid (in the sense that the right questions have been put to the right pool of respondents in the right way, in the right circumstances to provide the information sought).
Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 at paras 43-45, [2006] 1 SCR 772 [Mattel])
[19]
In this case, Ms. Hilt does not provide any information as to the methodology that was used to conduct these surveys. It is therefore impossible to assess their reliability and relevance to the questions that are at issue here. In fact, such evidence should have been submitted by means of the affidavit of an expert who conducted the survey and who provides sufficient explanations in relation to its methodology. Therefore, I will not consider these two surveys.
[20]
In short, I will review the Registrar’s decision on the reasonableness standard. However, when issues related to the use of the “Javex”
marks by Clorox are raised, I will assess the evidence myself without deferring to the Registrar.
[21]
I will first analyze the issue of confusion, which is the crux of this dispute. I will then address the arguments regarding the use of the marks before the application for registration and their use by third parties. Given the conclusion I reach, I will be able to summarily dispose of some other arguments put forth by Clorox.
[22]
The concept of confusion is defined in subsection 6(2) of the Act. Essentially, there is confusion between two trademarks when the use of these two marks for two categories of goods is likely to suggest that these goods are manufactured by the same person. Section 12 of the Act provides that a trademark cannot be registered if it is confusing with a previously registered trademark.
[23]
Subsection 6(5) of the Act sets out a detailed list of factors that must be considered to assess whether there is confusion between two marks. Furthermore, in Veuve Clicquot, the Supreme Court reiterates that instead of conducting a detailed analysis, the point of view of a hurried consumer must be adopted:
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 name Cliquot on the respondents’ storefront or invoice, at a time when he or she has no more than an imperfect recollection of the VEUVE CLICQUOT 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.
Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 at para 20, [2006] 1 S.C.R. 824)
[24]
In Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27, [2011] 2 S.C.R. 387 [Masterpiece], Justice Rothstein of the Supreme Court of Canada held that resemblance is the most important criterion referred to in subsection 6(5) of the Act (at para 49). The other factors would be relevant only where the two marks at issue are sufficiently similar. I will therefore consider the factors listed in subsection 6(5), starting with resemblance.
[25]
Two additional comments must be made at this juncture. First, confusion must be assessed by relying on the registered uses as opposed to the actual use of the marks in question (Masterpiece at paras 51–59). Second, the consumer whose point of view must be adopted is not always hurried to the same extent. When faced with valuable goods or niche-market goods, “more care will naturally be taken”
by the consumer (Mattel at para 58).
[26]
No new evidence was filed concerning this issue, which is the most determinative. The Registrar compared both parties’ marks in terms of the writing, sound, the graphic design, and the ideas suggested and found that they had a low degree of resemblance.
[27]
Clorox affirms that both parties’ marks are highly similar because they share the same prefix, “Jav-”
or “Jave-.”
It adds that the first part of a trademark is critical in determining the degree of resemblance. However, as I will explain later on, this prefix corresponds to the common noun “eau de Javel”
in French, which designates the product. In my opinion, this similarity is insufficient to lead to confusion between the two trademarks.
[28]
The Registrar’s finding on the degree of similarity is eminently reasonable. I do not see how a hurried consumer could discern similarities between the two trademarks.
[29]
Even though the finding on the degree of resemblance is largely determinative, I will analyze the other criteria referred to in subsection 6(5) of the Act, starting with the distinctiveness of the marks in question. This distinctiveness can be inherent when a mark, by means of its wording or its design, conveys a distinctive impression. It can also be acquired when the longstanding use of a mark has made it possible to associate it with a particular product. On this issue, the new evidence concerning the use of Clorox’s marks is relevant, so I will carry out my own assessment.
[30]
As for the inherent distinctiveness of both parties’ marks, the starting point of the analysis, in my opinion, is that the two sets of trademarks are derived from the French expression “eau de Javel”
a common noun that is translated as “bleach”
and that designates the product in issue. Although counsel for Clorox claimed that the mark “Javex”
is a coined term, this is true only to a limited extent. Indeed, the word “Javex”
is composed of a prefix derived from the French common noun “Javel,”
which designates the product, to which the letter “x”
was added. The same is true of the mark “Javelo.”
As a result, I find that both of the parties’ marks possess limited inherent distinctiveness.
[31]
A striking analogy can be drawn between this case and one recently decided by my colleague Justice René LeBlanc: Assurant, Inc. v Assurancia, Inc., 2018 FC 121 [Assurant]. The issue was whether there was confusion between the trademarks “Assurant”
and “Assurancia,”
both of which are used in the context of the insurance industry. Justice LeBlanc found as follows:
[…] I see no basis to interfere with the Board’s conclusion respecting the inherent distinctiveness of the trademarks at issue. The Board found that both trademarks had a low degree of inherent distinctiveness as their main and common feature — “ASSURAN” — was highly suggestive of the insurance field when these trademarks are used in association with the parties’ services.
(Assurant at para 50)
[32]
In that case, the opponent had also pleaded that the mark “Assurant”
was distinctive because the French word “assurance,”
which is usually translated into English as “insurance,”
does not typically call to mind the insurance industry from the point of view of Anglophone consumers. Justice LeBlanc rejected this argument, noting that from a practical point of view, this would allow the monopolization of words of the French language and prohibiting the creation of new marks that are based on such words (Assurant at para 57). The same can be said about the mark “Javex.”
In this respect, I refer to what the Supreme Court said in Mattel: “No person is entitled to fence in the common of the English or French languages and words of a general nature cannot be appropriated over a wide area”
(Mattel at para 75).
[33]
As for the distinctiveness acquired by the mark “Javelo,”
the Registrar found that a company affiliated with Chloretec had “continuously promoted the Goods associated with the Mark since September 29, 2011”
and found that the mark “Javelo”
had acquired distinctiveness. Even though Clorox now claims that the evidence supporting the Registrar’s finding was insufficient, I see no reason why I should deviate from this conclusion.
[34]
The Registrar refused to acknowledge that the “Javex”
marks have acquired distinctiveness because no evidence of their use had been submitted to him. Addressing this gap is the purpose of Ms. Hilt’s affidavit. This affidavit establishes that Clorox has been selling Javex products in Canada on a continuous basis for at least ten years. I am prepared to deduce that the “Javex”
marks have acquired distinctiveness over the years. However, I cannot assess the extent of this distinctiveness nor compare it to the distinctiveness of the “Javelo”
mark. Furthermore, Ms. Hilt’s affidavit also establishes that, since 2013, Clorox has sold bottles of bleach that mainly bear the mark “Clorox.”
The “Javex”
mark is displayed only in a very discreet way on the back of the bottle. Therefore, the distinctiveness acquired by the mark “Javex”
may be on the decline.
[35]
All in all, and considering the new evidence, I believe that this factor does not clearly support a finding of confusion.
[36]
The length of time during which a mark is used is an additional factor that goes to distinctiveness (Mattel at para 77). On this subject, the Registrar noted that Clorox’s marks have been registered since 1937 (for “Javalin”
) and 1945 (for “Javex”
), but he noted the absence of evidence of use of these marks. The Registrar therefore found that this factor weighed in favor of Chloretec, who proved that its marks have been used since 2012.
[37]
Since Clorox filed evidence that its “Javex”
marks have been used over the past ten years, the Registrar’s finding cannot be supported. Clearly, Clorox has used its marks over a longer period than Chloretec has, even though the only evidence before me concerning the period prior to 2007 is a statement from Ms. Hilt, according to which—to her knowledge—Colgate-Palmolive, which sold the “Javex”
marks to Clorox in 2007, has used these marks in Canada since at least 1970.
[38]
This being said, Ms. Hilt’s affidavit does not enable me to assess the intensity of this use and, consequently, to reach conclusions regarding acquired distinctiveness. Thus, this factor does not clearly support the conclusion that there is confusion.
[39]
With regard to these two criteria, the Registrar found that the products associated with the two marks are the same. He refused to agree with Chloretec’s arguments to the effect that the products of the two parties are intended for different markets. In this respect, the Registrar ruled that Chloretec’s attempt to narrow the scope of its application for registration was not relevant. What matters is that, according to the Registrar, the registration of the “Javex”
marks does not in any way restrict their use or the market the products are intended for. Therefore, overlapping between the two marks may take place, and this favours a finding of confusion.
[40]
These findings are completely reasonable. Furthermore, they are compatible with the teachings of the Supreme Court in Masterpiece.
[41]
We are now returning to the basic issue: Would a hurried consumer who only vaguely remembers the “Javex”
mark conclude that a product bearing the mark “Javelo”
was made by the same company? The most important factor is the degree of resemblance between the two marks. As the Registrar said, this degree of resemblance is low. The other factors set out in subsection 6(5) of the Act paint a hardly convincing picture. Clorox has not proven that the “Javex”
marks have inherent or acquired distinctiveness of such a degree that it leads to a finding of confusion. The fact that the products associated with the two marks are the same is not sufficient to counterbalance the low degree of resemblance. All in all, I find that there is no confusion between the parties’ marks.
[42]
Clorox is also opposed to the registration of the “Javelo”
marks, claiming that Chloretec used these marks before the date on which the application was filed, namely January 26, 2012. This ground derives from paragraph 30(b) of the Act, which requires that the applicant state the date of first use of the mark. According to Clorox, Chloretec promoted the “Javelo”
mark in various publications or during trade shows before January 26, 2012.
[43]
The Registrar rejected these arguments. He noted that the use of a mark for promotional purposes does not represent a “use”
under section 4 of the Act and, consequently, cannot constitute a ground of opposition based on paragraph 30(b). He carefully analyzed the evidence and concluded that none of the sales of Chloretec products had taken place before January 26, 2012.
[44]
No new evidence was adduced in this respect. The Registrar’s decision is reasonable.
[45]
I will add that I am far from certain that it flows from paragraph 30(b) of the Act that the registration must be denied if the opponent is able to show the mark was used to a certain extent before the date stated in the application. This seems to be the result of some of the Registrar’s decisions, but I have not been referred to any decision of our Court that sets out such a rule. Given my findings of fact, I do not have to determine whether such a rule exists.
[46]
Clorox also claims that the “Javelo”
marks lost their distinctiveness due to their use by third parties who do not hold licences, which would be contrary to section 50 of the Act.
[47]
However, as the Registrar noted, the third parties in question are actually companies related to Chloretec that distribute and transport the product. The Registrar also found that the resolutions tendered confirmed that a licence was granted to UBA inc., which acts as a distributor.
[48]
No new evidence was adduced in this respect. The Registrar’s decision is reasonable.
[49]
Clorox put forward some other arguments. However, these arguments all rely on a finding of confusion. It is unnecessary to deal with them any further.
[50]
The appeal from the Registrar’s decision is therefore dismissed.
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