7.Lyons Partnership v. Paul MacGregor, February 24, 2000, FCTD (Lemieux J.) Contempt
Contempt proceedings relating to the breach of an interlocutory injunction that restrained the defendant from making unauthorized use of the BARNEY character. The defendant performed in a purple dinosaur costume at a children's event despite the injunction.
Held: Fine assessed against the defendant in the amount of $3000 in order to yield no profit to the defendant for his performance.
8.Hugo Boss et al. v. John Doe et al.; Polo Ralph Lauren et al. v. John Doe et al., February 25, 2000, FCTD (Gibson J.) Show Cause Orders
The plaintiffs seek show cause orders requiring two defendants to answer why they should not be held in contempt of interlocutory injunctions. The injunctions enjoined certain vendor defendants from using the plaintiffs' BOSS and POLO marks.
Held: Show cause orders granted. The two defendants, despite first hand knowledge of the injunctions, allegedly aided and abetted the vendor defendants to infringe the injunctions.
9.Interstate Brands v. Becker Milk, March 24, 2000, FCA (Evans, J.A., Strayer J.A., Sexton J.A.) Opposition Appeal/Confusion/Coexistence Abroad
Appeal from Trial Division's dismissal of an appeal from the Opposition Board. The Board refused the appellant's application for DOLLY MADISON on the basis that there was a likelihood of confusion with the same mark as used by the respondent. New evidence on appeal included evidence by the appellant's general counsel that no reports of confusion had come to his attention despite many years of use of the mark by two different parties in the U.S.
Held: Appeal dismissed. Given the essentially factual nature of the issue in this appeal, the appellant must satisfy the Court that the judge committed an overriding and palpable error. The respondent argued that the judge had been wrong to uphold the conclusion that there was a reasonable likelihood of confusion. The judge was not in error when she concluded that the evidential value of the new evidence filed on appeal was limited by the absence of evidence of any mechanism to facilitate the reporting of confusion to the affiant. In any event, absence of confusion between marks in another country does not necessarily mean that there is no reasonable likelihood of confusion between the same marks in Canada.
10.Dion Neckwear v. Christian Dior and Reg. TM, March 31, 2000, FCTD (Pelletier J.) Opposition Appeal/Primarily Merely A Surname/Confusion
Appeal from Registrar's decision rejecting the appellant's application to register DION COLLECTION & Design for neckties, scarves and ascots, due to confusion with the respondent's DIOR trade mark.
Held: Appeal dismissed. The issue is whether the Registrar came to a legally sustainable conclusion, not whether he was correct in every intermediate step in his reasoning. The new evidence filed is of a piece with that which was before the Registrar and so a considerable degree of deference should be paid to the Registrar's finding. Since the likelihood of confusion is to be assessed in a hypothetical market, deficiencies in the evidence of use cannot per se undermine a finding as to confusion.
Regarding confusion, the appellant's argument that the public is skilled at discriminating between personal names and notices small differences fails because the test is one of "first impression and imperfect recollection".
The Registrar's conclusion that he was left in doubt as to the reasonable likelihood of confusion cannot be said to be clearly wrong. "While a different Registrar could have found for the appellant on the same evidence, this Registrar did not; his decision is not subject to being set aside simply because the evidence is evenly balanced."
Regarding the test for being "primarily, merely a surname", the question is what understanding would an ordinary Canadian have of the significance of the word. If the general public would recognize the mark as the name of an individual, then the mark may not be registrable, even if the word has some other meaning. However, if the general public understands the word as having a meaning other than as a surname, the fact that it is someone's name would not be fatal to registration.
11.Showtime Networks v. WIC Premium Television, April 7, 2000, FCTD (Gibson J.) Judicial Review/Frivolous Opposition
Application for judicial review of Registrar's decision wherein the Registrar considered that a statement of opposition raised a substantial issue and thus forwarded a copy to the applicant. The statement of opposition's sole ground of opposition was that the trade mark application does not conform to the requirements of s. 30 of the Trade-marks Act because it does not contain a statement in ordinary commercial terms of the specific wares or services in association with which the mark has been or is proposed to be used and a "credible" statement that the applicant is satisfied that it is entitled to use the mark in Canada.
Held: Application dismissed. The general rule is that an interlocutory decision should not be reviewed where there is an adequate alternative remedy, namely an appeal at the end of the proceedings. Costs, delay and the view that the opposition is totally without merit are not special circumstances that justify not applying the general rule.
12.Warnaco v. AG Can., April 7, 2000, FCA (Heneghan J.) Descriptiveness/Standard of Review on Appeal/Status of Registrar of Trade Marks/Federal Court Rule 303
Appeal from a decision of the Reg. TM whereby an application to register SATIN STRIPES for bras and panties was refused pursuant to s. 12(1)(b). Preliminary issue concerning whether the Registrar was the proper respondent pursuant to rules 300 and 303.
Held: Appeal dismissed. Given that the new evidence filed on appeal would not have materially affected the Registrar's decision, the appropriate standard of review is that of reasonableness simpliciter. It appears that the Registrar assessed the evidence and arguments before him and reached a conclusion that is reasonable.
Regarding the preliminary issue, r. 303 applies to the conduct of this appeal. The applicant's argument that r. 303 only applies to applications for judicial review is wrong. Since there is no person who is required to be named as a party to the appeal pursuant to the Trade-marks Act, r. 303(2) comes into play making the proper respondent the AG Can. The Registrar should not be a party in order to avoid having a decision-maker participate in a review of her own decision.
13.Novopharm v. Reg. TM and Pfizer Canada,April 12, 2000, FCTD (Dawson J.)Judicial Review/Opposition Proceedings/Trade Mark Rule 44(2)
Application for judicial review of Registrar's decision refusing to grant an order for cross-examination in an opposition by Novopharm. Novopharm requested the order by letter dated January 21, 1999. That same day the Registrar sent out a letter advising that written argument could be filed within one month. Rule 44(2) of the Trade-marks Regulations provides that before giving notice that written arguments may be filed, the Registrar may order cross-examinations.
Held: Application dismissed. Judicial review should only occur where special circumstances exist. None exist here; the full right of appeal at the end of the opposition proceedings is an adequate alternative remedy available to Novopharm.
In view of the apparent absence of authority as to whether notice is given under r. 46(1) as of the date of the notice or as of the date when the notice is received, the Court refused to award costs in accordance with the upper limit requested by the respondents. Instead costs should be assessed in the usual course.
14.Apotex v. Monsanto Canada and Reg. TM, April 13, 2000, FCTD (Rouleau J.) Opposition Appeal/Colour/Section 30(h)/Trade Mark Drawings/Distinctiveness
Appeal from Registrar's decision rejecting Apotex's opposition to an application for a trade mark consisting of the colour white applied to the whole visible surface of a tablet. The application stated that the representation of the tablet shown in dotted outline does not form part of the mark. The grounds of opposition included non-compliance with s. 30 and non-distinctiveness.
Held: Appeal allowed. The fundamental issue is whether the mark is distinctive. Monsanto has the onus of proving that the appearance of its tablet is recognized by the public as distinctive of its wares. To put it another way, Monsanto must show that the colour white, applied to a hexagonal tablet, distinguishes its tablet from other white and hexagonal tablets sold in Canada. It is not sufficient to show that Canadians know that Monsanto's product is sold in a white tablet or a white and hexagonal tablet. Rather, it must show that physicians, pharmacists or patients can and do use the trade mark in choosing whether to prescribe, dispense or request Monsanto's product. This has not been shown. Both prior to and at the date of the opposition, manufacturers had distributed and sold hundreds of white pharmaceutical tablets, several of which are used in the treatment of conditions associated with those treated by Monsanto's product. There are other six-sided tablets on the market that are white. Without the markings "Searle 1461" which appear on Monsanto's product, it would not be possible to distinguish Monsanto's white hexagonal tablets from any other white hexagonal tablet on the market.
The Court expressed considerable doubt that the application complies with s. 30. The drawing submitted must be a meaningful representation of the mark in the context of the written description appearing in the application and must enable the determination of the three-dimension limits of the tablet to which the colour is applied. The application is confusing and ambiguous as the result of the presence of both dotted lines, which have been disclaimed, and solid lines which have not been disclaimed, in the representations of the tablets. Although the application disclaims the hexagonal shape of the tablet, the Registrar appears to have assumed that the trade mark was the colour and the shape of the tablet.
15.Novopharm v. Ciba-Geigy Canada and Reg. TM, April 14, 2000, FCTD (Rouleau J.) Opposition Appeal/Colour/Section 30(h)/Trade Mark Drawings/Distinctiveness
Appeal from Registrar's decision rejecting Novopharm's opposition to an application for a trade mark consisting of a pink colour applied to the whole of the visible surface of the tablet as shown in the affixed drawings and specimens. The application stated that the tablet shown in the dotted outline does not form part of the mark. The grounds of opposition included that the application did not include a drawing of the mark and non-distinctiveness.
Held: Appeal allowed. The fundamental issue is whether the mark is distinctive. Ciba-Geigy has the onus of proving that the appearance of its tablet is recognized by the public as distinctive of its wares. Ciba-Geigy must therefore show that the colour pink, applied to a round tablet, distinguishes its tablet from other pink and round tablets sold in Canada. It is not sufficient to show that Canadians know that Ciba-Geigy's product is sold in a pink tablet or a pink and round tablet. Rather, it must show that physicians, pharmacists or patients can and do use the trade mark in choosing whether to prescribe, dispense or request Ciba-Geigy's product. This has not been shown. Instead it has been demonstrated that round, pink tablets are common in the pharmaceutical industry and that there are a number of pink tablets on the market in Canada. Ciba-Geigy's impressive sales figures cannot alone satisfy the burden of proving distinctiveness.
The Court expressed considerable doubt that the application complies with s. 30. The drawing submitted must be a meaningful representation of the mark in the context of the written description appearing in the application and must enable the determination of the three-dimension limits of the tablet to which the colour is applied. The application is confusing and ambiguous. The drawing shows a dotted line, meaning that the circular shape is not part of the mark and the written description says "the tablet shown in the dotted outline does not form part of the trade mark". However, the written description also states that the mark consists of "a pink colour applied to the whole of the visible surface of the tablet as shown in the drawing and the specimens".
16.Apotex v. Ciba-Geigy Canada and Reg. TM, April 14, 2000, FCTD (Rouleau J.) Opposition Appeal/Colour/Section 30(h)/Trade Mark Drawings/Distinctiveness
Appeal from Registrar's decision rejecting Novopharm's opposition to a proposed-use application for a trade mark consisting of a light pink colour applied to the whole of the visible surface of the tablet, as shown in the drawings. The tablet is triangular in shape. The application stated that the tablet shown in the dotted outline does not form part of the mark. The grounds of opposition included that the application did not include a drawing of the mark and non-distinctiveness.
Held: Appeal allowed. The fundamental issue is whether the mark is distinctive. Ciba-Geigy has the onus of proving that the appearance of its tablet is recognized by the public as distinctive of its wares. Ciba-Geigy must therefore show that the colour pink, applied to a triangular tablet, distinguishes its tablet from other pink and triangular tablets sold in Canada. It is not sufficient to show that Canadians know that Ciba-Geigy's product is sold in a pink tablet or a pink and triangular tablet. Rather, it must show that physicians, pharmacists or patients can and do use the trade mark in choosing whether to prescribe, dispense or request Ciba-Geigy's product. This has not been shown. Instead it has been demonstrated that there are other pink, triangular tablets on the market and that there are a number of pink tablets sold in Canada. Impressive sales figures cannot alone satisfy an applicant's burden of proving distinctiveness.
The Court expressed considerable doubt that the application complies with s. 30. The drawing submitted must be a meaningful representation of the mark in the context of the written description appearing in the application and must enable the determination of the three-dimension limits of the tablet to which the colour is applied. The application is confusing and ambiguous. The drawing shows a dotted line, meaning that the triangular shape is not part of the mark and the written description says "the tablet shown in the dotted outline does not form part of the trade mark". However, the written description also states that the mark consists of "a pink colour applied to the whole of the visible surface of the tablet as shown in the drawings". As a result, it is unclear whether the application relates to a shape along with a colour or simply the colour alone.
II. OTHER COURT DECISIONS
1.L.B. Maple Treat v. N.J.S., March 14, 2000, QSC (Boisvert J.) Trade Mark/Section 9 Prohibited Marks/Canadian Flag/Infringement/Interlocutory Injunction
Declaratory action for a permanent and interlocutory injunction based on trade mark infringement. Both the plaintiff and defendant sold maple syrup in bottles marked with similar labels bearing a stylized representation of the maple leaf of the Canadian flag. The plaintiff claimed unregistered trade mark rights in the design of the label and alleged that the defendant had copied this design.
Held: Injunction denied. The labels were similar although there were small differences between them and each was affixed to a different shaped bottle. However, the presence of the maple leaf on each might, on first impression, lead one to believe that the two came from the same source. Nevertheless, s. 9(1)(e) stipulates that no person shall adopt the Canadian Flag as a trade mark, and the plaintiff therefore cannot claim an exclusive right to use as its trade mark the designs or logos of the stylized maple leaf of the Canadian Flag. There is no doubt that the stylized maple leaf constitutes the essential distinctive element of the plaintiff's alleged trade mark given that the other inscriptions on the label are required by federal regulation for the export of maple syrup. The plaintiff therefore can not claim exclusive rights in its label design. The plaintiff has not proven that the design has acquired a reputation in the market by reason of that distinguishing feature, for the purposes of a passing off action. The balance of convenience weighs clearly in favour of the defendant, and this is a case where it appears at the interlocutory stage that the rights claimed are nonexistent, thus the interlocutory injunction should be refused.
III. OPPOSITION BOARD DECISIONS
1.Salomon v. Powder Blades, March 3, 2000 (Herzig) Confusion/Pleadings
Proposed-use application for POWDER BLADES for snow skis and snow boards. Opposition based, inter alia, on s. 16 due to confusion with the trade mark SNOW BLADE, regn. No 439,527, previously used for snow sleds and snow boards.
Held: Application refused. The s. 16 ground failed because the opponent did not establish use of its mark prior to the material date. The Board Member was prepared to interpret the pleadings broadly so as to consider that the wording used to plead the s. 16 ground also pleaded a s. 12(1)(d) ground, in the absence of submissions from the applicant on this point. The s. 12 (1)(d) ground succeeded because there was evidence of sales under the opponent's mark as of that section's material date and the Board Member was left in a state of doubt as to whether the public would assume that the applicant's wares are approved, sponsored or licensed by the opponent. In view of the onus, this doubt was resolved against the applicant.
2.Sunshine Village v. Sun Peaks Resort, March 3, 2000 (Partington) Confusion/Ordinary Commercial Terms/Section 30(a)
Applications for SUN PEAKS and SUN PEAKS & Design based on use for clothing, souvenirs and novelties and on proposed use for ski equipment and various sporting equipment and services including the promotion of wares and services of others. Opposition based, inter alia, on s. 12(1)(d) due to confusion with various SUNSHINE trade marks registered for operating a mountain ski and summer resort and various wares and s. 30(a) because the applied for services, "the promotion of wares and services of others", are not in ordinary commercial terms.
Held: Applications refused with respect to "the promotion of wares and services of others" but opposition rejected with respect to remaining wares and services. "The promotion of wares and services of others" is contrary to s 30(a) because the applicant has not limited the "wares and services" of others in any manner and has not identified the nature of the promotion which it intends to provide to third parties. Regarding the factors to be considered with respect to confusion, the word SUNSHINE in the opponent's mark has a geographic significance that diminishes the inherent distinctiveness of the opponent's marks. The principal business of both parties is the operation of a ski resort. Skiing is an expensive form of recreation and there is evidence that skiers who travel to resorts are generally quite sophisticated and well informed. Moreover, the name and logo of a resort is a minor factor in deciding which resort to select for a skier looking to spend a significant amount of money for a ski holiday. The existence of SUN VALLEY, a well known ski resort in the U.S., is a relevant surrounding circumstance because the opponent is alleging that it is skiers from Eastern Canada, the United States or abroad who would be confused. For these reasons, there is no reasonable likelihood of confusion between the marks.
3. Parfums Christian Dior v. Lander, March 3, 2000 (Partington) Section 30/Continuous Use
Use-based application for FASCINATION for cosmetic and toilet preparations, hair cream, shampoo, and hair colouring. Opposition based, inter alia, on s. 30 because the applicant has not used its mark since the claimed dates of first use.
Held: Application refused. The opponent met its evidential burden by evidencing the expungement of prior registrations for the same mark and wares under s. 45. The s. 45 evidence points to the fact that the mark was likely not in use for a two-year period ending shortly before the filing of the present application. The applicant has failed to show that its mark was in continuous use or that any periods of non-use were within the normal course of trade.
4. McGregor Industries v. Sara Lee, March 3, 2000 (Partington) Section 30/Section 2 Definition of Trade Mark/Functionality
Proposed-use applications for Red Toe Seam Design and Pink Toe Seam Design for socks. Opposition based, inter alia, on s. 30 because the mark is not a mark within the definition of s. 2.
Held: Applications refused. A mark that is primarily functional as part of the wares associated with the mark is not registrable as a trade mark applied to those wares (Remington Rand et al. v. Phillips Electronics, 64 C.P.R. (3d) 467). A toe seam is a critical physical feature of every sock, being used for the purpose of constructing the sock. Red and pink socks would typically have red and pink toe seams, respectively. Although the applicant argued that its applications do not contemplate its red and pinks seams being applied to red and pink socks, as the seams in such instances would be almost invisible whereas the drawings show its marks to be readily apparent, the applicant did not specifically exclude red and pink socks from its statement of wares. In any event, as most socks have toe seams which are readily visible to the average consumer, it is doubtful that the average consumer would perceive the contrasting colour of the toe seam from the remainder of the sock as displacing the "primarily" functional nature of the toe seam. Thus, the marks would not be perceived as functioning as trade marks.
5. War Amputations of Canada v. Fortco, March 3, 2000 (Partington) Confusion
Use-based application for PLAYSAFE for rubber granulars combined with polyurethane or epoxy resins to create a rubberized safety surface for a seamless playground area which provides a safe shock absorbing rubberized surface in which to help prevent children from serious injury. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark PLAYSAFE registered for a safety program among children to aid in preventing accidental amputation.
Held: Application refused. Even though the opponent's mark is clearly descriptive and there is no similarity between the parties' wares and services and no overlap in their channels of trade, there exists some doubt as to whether or not there would be a reasonable likelihood of confusion given that the opponent's mark has become relatively well known in association with its safety program and the applicant's wares are intended to prevent injury to children. The average consumer might possibly conclude as a matter of immediate impression that the opponent may have sponsored or approved the use by the applicant of the identical trade mark. It matters not that the opponent has never sponsored or licensed the use of its trade mark.
6. Novopharm v. Astra, March 9, 2000 (Martin) Colour/Distinctiveness/Pharmaceutical Trade Marks
Use-based application for Tablet Design for pharmaceutical preparations, namely felodipine. The mark consists of the colour yellow applied to the whole of the visible surface of the tablet. Felodipine is used to treat hypertension. Opposition based, inter alia, on non-distinctiveness due to the use by other traders of yellow tablets, including 21 yellow tablets available for treatment of hypertension.
Held: Application refused. The Board Member treated listings in the Compendium of Pharmaceuticals and Specialties (CPS) similarly to state of the register evidence, i.e. the existence of a fairly large number of yellow tablets for treating hypertension in the CPS allows the conclusion that at least some of those tablets have been actively marketed in Canada. The applicant's evidence is insufficient to establish that its mark does in fact distinguish its wares. The applied for mark is inherently weak and so it was incumbent on the applicant to clearly show that many consumers recognize it as a mark, not just as an ornamental or functional element. Even high levels of sales would not meet the applicant's onus unless there were also significant efforts to educate physicians, pharmacists and patients as to the trade mark status of the tablet's colour. By displaying its yellow tablets beside differing dosages of pink and brown felodipine tablets on its brochures, the applicant has underscored the functional purpose of the colour. Obiter: Pleading that the applicant's mark cannot distinguish its wares because the applicant has the exclusive right to produce felodipine would not have succeeded.
7.WWF - World Wide Fund for Nature v. 615334 Alberta, March 9, 2000 (Martin) Confusion/Section 12(1)(e)/Official Marks
Use-based application for PANDA MARKETS & Design for operation of grocery/market retail stores. Opposition based, inter alia, on s. 12(1)(d) due to confusion with Panda Design marks registered for a long list of wares and the operation of a fund for the conservation of Canadian natural resources and s. 12(1)(e) in view of the opponent's official marks PANDA and WWF & Panda Design.
Held: Application refused. The s. 12(1)(e) ground succeeded because, as a matter of first impression and imperfect recollection, the applicant's mark so nearly resembles the opponent's official marks as to be likely to be mistaken for them. The official mark PANDA is identical to the dominant word component of the applicant's mark and is the written equivalent to that mark's dominant design component. The s. 12(1)(d) ground failed, notwithstanding the degree of resemblance between the marks, because of the differences between the wares, services and trades of the parties and the absence of any reputation for the opponent's marks.
8. Petro-Canada v. UPI, March 9, 2000 (Herzig) Confusion/Hearsay
Proposed-use application for PETROCARD for credit cards and debit cards and credit card and debit card services for commercial fuel customers. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark PETRO-CANADA registered for petroleum products and services.
Held: Application refused. Confusion is likely having regard in particular to the reputation of the opponent's mark in the area of petroleum products and services and related credit card services. One of the opponent's affiants (the Manager, Wholesale Marketing, in Brand Management of the opponent) supervised an investigation of a list of more than 100 PETROÖ third party companies introduced by the applicant. The applicant objected to his evidence as hearsay because he stated that some of the information "was obtained by numerous Petro-Canada marketing field representatives throughout Canada..." The Board Member held that the evidence met the hearsay exemption criteria of necessity and reliability because the affiant was personally involved in instructing his personnel on the type of information he sought and it would be "onerous to expect a single individual to gather information from geographically dispersed locations".
9. Loblaws v. Premium Label Foods, March 9, 2000 (Partington) Confusion/Section 50
Proposed-use application for TREASURES OF TUSCANY for sauces. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark MEMORIES OF registered for sauces and s. 16 due to confusion with the mark MEMORIES OF and various MEMORIES OFÖ marks previously used for sauces.
Held: Opposition rejected. The s. 12(1)(d) ground failed because there is little resemblance between the marks. The s. 16 ground failed because there is no evidence of use of the marks by the opponent. The opponent said that it had licensed its marks to a wholly-owned subsidiary Sunfresh Limited and that under the licence the opponent has at least indirect control of the character and the quality of the wares sold by Sunfresh in association with the MEMORIES OF trade mark. However, the packaging submitted reads, "This is a P.C. product prepared for Sunfresh Limited". In view of the clear message conveyed by the product packages, the Chairperson stated that evidence which merely restates the wording of s. 50(1) is insufficient for the Board to conclude that the licensed use by Sunfresh enures to the benefit of the opponent. The opponent should have evidenced facts from which the Board could determine the nature and the extent of the control that the opponent has over the character or quality of the licensed wares.
10. Direct Line Insurance v. The Investment Centre Financial Group, March 22, 2000 (Martin) Confusion/Making Known
Proposed-use application for THE LITTLE RED PHONE for financial and insurance services. Opposition based, inter alia, on s. 16(3)(a) due to confusion with the mark Phone Design previously used and made known for insurance and financial services.
Held: Opposition rejected. The opponent failed to meet its evidential burden; its mark has not been used in Canada and there is no admissible evidence that ads placed in U.K. publications circulated in Canada.
11. Interstate Engineering/Figgie International v. Gold Star, March 9, 2000 (Partington) Confusion
Use-based application to extend the registration for GOLD STAR to include vacuum cleaners, freezers, electric pumps and escalators. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the marks TRI STAR and DRISTAR registered for vacuum cleaners.
Held: Opposition rejected. Confusion not likely given the low degree of resemblance between the marks, the extensive use of the applicant's mark and the absence of any use of the opponent's marks.
12. Stay Alert Stay Safe v. Richard Shergold, March 31, 2000 (Partington) Confusion
Application for BE ALERT BERT & Design based on use for videos, stuffed dolls of bee-like appearance, t-shirts and posters and on proposed use for boardgames. Opposition based, inter alia, on s. 16 due to confusion with the marks STAY ALERT STAY SAFE and BERT previously used for educational materials, including videotapes and posters.
Held: Application refused. There is a potential overlap in the nature of the trade with respect to all of the wares because the applicant's dolls, t-shirts and boardgames might well be associated with a child safety program. There is a fair degree of similarity between the marks and, as a further surrounding circumstance, the opponent has evidenced that it uses its STAY ALERT STAY SAFE and BERT marks in close proximity to each other. The applicant has therefore failed to meet the legal burden of showing that there would be no reasonable likelihood of confusion.
13. Rebel Slacks v. Rebelstoke, March 31, 2000 (Partington) Confusion/Section 30(b)
Use-based application for REBELSTOKE for casual clothing for men and women, namely leather jackets, shirts, pants, jeans, socks and sweaters. Opposition based, inter alia, on s. 30(b) because the application does not contain the correct date from which the applicant has used its mark in association with each of the general class of wares described in the application and s. 12(1)(d) due to confusion with the mark REBELSTOKE registered for clothing.
Held: Application refused. The s. 30(b) ground succeeded with respect to shirts, pants, jeans, socks and sweaters because the applicant has not yet begun using the mark for those wares. When an applicant claims that its mark has been used in association with a general class of wares as of a certain date, the mark must have been used with each of the specified wares by such date, even though the dates when use commenced for each may differ. The s. 30(b) ground also succeeded with respect to leather jackets as the applicant was unable to evidence use as of the date claimed. The s. 12(1)(d) ground also succeeded.
14. Enterprise Car & Truck Rentals v. Enterprise Rent-A-Car, March 31, 2000 (Partington) Section 16/Court Injunction
Proposed-use application for ECAR for vehicle fleet management services, vehicle repair services, vehicle leasingÖ Opposition based, inter alia, on s. 16(3)(b) due to confusion with the opponent's prior application for the mark ENTERPRISE RENT-A-CAR.
Held: Opposition rejected. The opponent cannot rely on its prior application as it has been enjoined by the Federal Court from using such mark.
15. Salomon v. Tricot Exclusive, March 31, 2000 (Herzig) Confusion/Pleadings/Section 16(5)/Abandonment/Section 50/Hearsay
Proposed-use application for SALMONE for clothing. Opposition based, inter alia, on s. 16(3)(a) due to confusion with the mark SALOMON previously used with wares relating to the design, manufacture, distribution and retail sale of clothing.
Held: Opposition rejected. The fact that the user of the opponent's mark is a subsidiary of the opponent is insufficient for the Board to conclude that such use enures to the benefit of the opponent. Sections 16(5) and 17(1) impose an evidential burden on the opponent to show that it has not abandoned its mark and that it has in fact used its mark. Although the existence of the registration for the opponent's mark (for which a declaration of use was filed) might support a finding that the opponent did at one time use its mark, the opponent has not demonstrated that it had not abandoned its mark as of the material date. (Evidence of use of the opponent's mark was hearsay as it was introduced by an individual whose authority to testify about the opponent's activities is not apparent and has not been explained.) Although the statement of opposition makes mention of trade-mark registrations for the opponent's SALOMON mark, a s. 12(1)(d) ground of opposition was not pleaded.
16. Moulin Rouge v. Lamour Hosiery, March 31, 2000 (Herzig) Confusion/Descriptiveness
Use-based application for MOULIN ROUGE for panty hose. Opposition based, inter alia, on s. 16(1)(b) due to confusion with the opponent's application for MOULIN ROUGE for personal care products, wine and alcoholic beverages and s. 12(1)(b) because the mark is descriptive.
Held: Opposition rejected. Regarding confusion, the opponent's mark had not acquired any significant reputation in Canada as of the material date and the nature of the parties' wares are distinct, as would be their channels of trade. Regarding descriptiveness, the Board was not swayed by the opponent's submissions that its MOULIN ROUGE cabaret and can-can dancers in Paris, France are well known in Canada and that Canadians would think that MOULIN ROUGE panty hose are wares that originate in France and are wares of high quality suitable for professional dancers.
17. General Mills v. T.L.I.G. Marketing, March 31, 2000 (Folz) Confusion/Hearsay
Proposed-use applications for TOTAL LINK and TOTAL LINK & Design for vitamins, dietary mineral supplements and dietary food supplements. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark TOTAL registered for wheat flakes and oatmeal.
Held: Opposition rejected. The opponent's evidence re sales in Canada is hearsay as it was based on a retail audit obtained from Neilsen data and not the records of the affiant's company. The opponent argued that the parties' wares were similar if not identical because its cereal has been promoted as a source of vitamins and minerals. The Board disagreed because it is the opponent's statement of wares in its registration that governs and the opponent's mark is not registered for vitamins and minerals. In addition, the applicant's wares consist of a food based product that comes in a tube like container which is sprayed into the mouth prior to being ingested, resulting in there being no relation whatsoever between the applicant's wares and the opponent's cereal.
18. SécuriGroupe v. Life Insurance Desjardins-Laurentienne, March 31, 2000 (Partington) Confusion
Use-based applications for ASSURANCE SÉCURIVIE and ASSURANCE SÉCURIVIE DESJARDINS for insurance services for persons between the ages of 50 and 75. ASSURANCE, SÉCURIVIE and DESJARDINS disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the trade mark SÉCURIGROUPE & Design registered for life insurance services.
Held: Applications refused. Given there is a certain degree of resemblance in appearance and idea suggested by the trade marks in association with services that are almost identical and that are offered to the same group of consumers, and given that the opponent has demonstrated that its mark has become well known in the province of Québec, and to a certain degree, throughout Canada, there is a likelihood of confusion.
19.SécuriGroupe v. Life Insurance Desjardins-Laurentienne, March 31, 2000 (Partington) Confusion/Bilingual Context
Use-based applications for SECURLIFE INSURANCE and DESJARDINS SECURLIFE INSURANCE for life insurance services for persons between the ages of 50 and 75. INSURANCE disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark SÉCURIGROUPE & Design registered for life insurance services.
Held: Applications refused. Regarding the degree of resemblance between the marks, the likelihood of confusion must be determined in a bilingual context, English and French being of equal importance. Given there is a certain degree of resemblance in the appearance and idea suggested by the trade marks in association with services that are almost identical and offered to the same group of consumers, and given that the opponent has demonstrated that its mark has become well known in the province of Québec, and throughout Canada to a certain degree, there is a likelihood of confusion between the marks.
20.Albert Fischer Canada v. Farmers' Rice Cooperative, April 6, 2000 (Bradbury) Confusion/Section 30(b)/Clearly Inconsistent
Use-based application for DIAMOND G & Design for rice. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark DIAMOND & Design registered for rice and s. 30(b) because the applicant has not used the mark since the date claimed.
Held: Application refused because confusion is likely given the overlap of the wares and the resemblance between the marks. While the opponent may rely on the applicant's evidence to meet its evidential burden with respect to s. 30(b), the opponent must show that the applicant's evidence is clearly inconsistent with the claims set out in the application. The s. 30(b) ground failed because an affiant's statement that the mark has been used since at least as early as 1989 is not clearly inconsistent with the claim in the application that the mark has been used since January 17, 1989.
21.Ralston Purina v. H.J. Heinz, April 10, 2000 (Bradbury) Descriptiveness/ Distinctiveness
Use-based application for MEDI CAL & Design for pet food. Opposition based, inter alia, on s. 12(1)(b) because the mark is clearly descriptive of a medical pet food and non-distinctiveness.
Held: Opposition rejected. The opponents have not met their evidential burden to show that the average Canadian pet food buyer perceives the applicant's mark as being the word "medical". The only evidence on this point is the applicant's evidence that the mark is pronounced with emphasis on the "DI" and "CAL" and that the applicant's affiant is not aware that any customer has pronounced the mark as "medical". Regarding the non-distinctiveness ground, there is no evidence that the opponent or any other party sells "medical pet food" while the applicant has made extensive use of its mark as of the relevant date.
22. France-Canada Éditions et Publications v. Vanity Fair, April 12, 2000 (Herzig) Confusion
Proposed-use application for VAN-ELLE & Design for clothing, namely lingerie and intimate apparel. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark ELLE registered for magazines.
Held: Opposition rejected because the opponent's mark has a low degree of inherent distinctiveness, the opponent's mark has acquired a reputation for magazines rather than clothing, and the evidence indicates significant marketplace use of the mark NATUR-ELLE for clothing by a third party.
23.Frank T. Ross & Sons (1962) v. Hurteau & Associés, April 12, 2000 (Partington) Confusion
Proposed-use application for NATURE COLLECTION & Design for bubble baths, bath oils, cosmetic products, etc. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark NATURE CLEAN registered for shampoos and cosmetic products.
Held: Opposition rejected. The applicant's state of the register evidence points to there being other marks in the marketplace including the word NATURE and applied to similar wares. As a result, and bearing in mind that there is not a significant degree of resemblance between the marks, the applicant has met its legal burden in respect of confusion.
24.The John Forsyth Company v. Hudson's Bay Company, April 12, 2000 (Partington) Confusion/State of the Register
Proposed-use applications for two HBC HERITAGE COLLECTION & Designs for various items of men's and ladies' apparel, accessories, glassware, key chainsÖ, retail shop selling collectibles, souvenirs and Canadiana. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark HERITAGE registered for men's and boys' dress shirts and sport shirts, men's pyjamas, and knitted sport shirts.
Held: Applications refused with respect to the various items of apparel and accessories. Opposition rejected with respect to glassware, key chainsÖ, retail shop selling collectibles, souvenirs and Canadiana. The fact that seven different parties own registrations for clothing trade marks that incorporate the word HERITAGE was treated as insufficient to draw any meaningful conclusions concerning the possible use of such marks in the Canadian marketplace.
25.Flora v. Astra Pharma, April 26, 2000 (Partington) Confusion/Descriptiveness
Proposed-use application for SOLUTIONS-SANTÉ INTÉGRÉES for provision of health care and pharmaceutical informationÖ and the operation of a business dealing in research, manufacture and sale of pharmaceuticals. Opposition based, inter alia, on s. 16 due to confusion with the mark SOLUTIONS-SANTÉ previously used by the opponent for vitamin and mineral supplements etc. and s. 12(1)(b).
Held: Opposition rejected. The s. 16 ground failed because the opponent did not evidence use of its mark with the relevant wares; the evidence only showed use on newsletters after the relevant date. The applicant's mark may be suggestive of some of its services but it is not clearly descriptive.
26.Hearst Communications v. Nesbitt Burns, April 26, 2000 (Martin) Section 30(b)/Confusion/Statement of Wares
Use-based application for RED BOOK for various publications related to matters of economics, fiscal and financial interest, including magazines. Opposition based, inter alia, on s. 30(b) because the applicant has not used the mark since the date claimed and s. 12(1)(d) due to confusion with the marks THE RED BOOK MAGAZINE and REDBOOK Design registered for periodicals and magazines.
Held: Application refused. The s. 30 ground succeeded because the applicant's own evidence suggested that use of its mark began two years after the date claimed. Confusion is likely given the resemblance between the wares, trades and marks. The applicant argued that the wares and trades of the parties are distinct since the opponent's magazine is a general interest magazine directed to women and sold through newsstand and subscription sales whereas the applicant's publications are specialized financial publications distributed as part of its investment services only to its sophisticated customers and to professionals in the investment and financial industries. While this is true, the statements of wares in the parties' registrations and application are not so restricted.
IV.SECTION 45 DECISIONS
1.Brouillette Kosie v. Faraday, March 28, 2000 (Savard) Sufficiency of Evidence/Prima Facie Case of Use
FARADAY registered for a variety of electrical signaling and communication systems and equipment and parts thereof.
Held: Registration restricted. The registrant has clearly stated that all of the wares in its catalogue are being sold in Canada and has provided sample labels, packaging, photographs and invoices. A registrant is not required to submit physical evidence in the form of labels, invoices or packaging in respect of each of the registered wares. The registrant has established a prima facie case of use in respect of all of the wares except for three.
2.Gowling, Strathy & Henderson v. Star Data Systems, March 28, 2000 (Savard) Use With Wares
BAYPORT registered for computer software and operation of a business of development, sale and support of computer software.
Held: Registration expunged. There is no evidence of use of the mark with the registered services. The mark was advertised in association with wares during the relevant time period but there is no evidence that sale or licensing of the wares occurred during the relevant time period.
3.Gowling, Strathy & Henderson v. Star Data Systems, March 28, 2000 (Savard) Sufficiency of Evidence
BAYPAC registered for computer software, covering investment portfolios, record keeping and mutual fund accounting.
Held: Registration maintained. The registrant provided the value of sales under the trade mark during the relevant three-year period and attached a copy of a system reference manual bearing the trade mark which, to the best of his knowledge, information and belief, was distributed with the software during the relevant time period.
4.Phillips, Freidman, Kotler v. Freed's of Morden, March 28, 2000 (Savard) Section 50(1)
NICCOLINI registered for various clothing items.
Held: Registration restricted to wares shown to be in use. For the purposes of s. 45, the fact that the affiant is an officer of both the registrant and the licensee is sufficient to conclude that the registrant had control over the character and quality of the wares associated with the mark.
5. I-CEE (Guyana) v. ICEE-USA, March 28, 2000 (Savard) Sufficiency of Evidence
ICEE registered for machines for dispensing drinks.
Held: Registration maintained. Machines for dispensing drinks bearing the trade mark are loaned by the registrant's licensee to Canadian retailers. Although the registrant could have provided more details concerning these transactions, considering that the requesting party is not contesting the evidence, the Registrant was prepared to accept that the mark is not "deadwood" for the wares.
6. I-CEE (Guyana) v. ICEE-USA, March 28, 2000 (Savard) Sufficiency of Evidence
ICEE registered for carbonated soft drinks.
Held: Registration maintained. There was evidence that syrups, cups, lids etc., which are used with the beverage, were provided to retail customers during the relevant time period; so it can be inferred that the retailers would have sold the beverage during the relevant time period. As the trade mark appears on the dispensing machine, the required association between the mark and the wares would have occurred at the time of transfer.
7. Kent & Edgar v. Her Majesty Industries, March 29, 2000 (Savard) Use by Predecessor/Retroactive Extension of Time
QUANTUM registered for various items of clothing.
Held: Registration maintained. The requesting party argued that the registrant's affiant was not entitled to give evidence on behalf of his company's predecessor but this argument became moot as the registrant obtained a retroactive extension of time to file an affidavit from an officer of the predecessor company. The second affidavit clearly showed use of the mark during the relevant period.
8. Smart & Biggar v. Usinage Valmecot, March 29, 2000 (Savard) Retroactive Extension of Time/Sufficiency of One Sale
SEA-BOW registered for motorized amphibious vehicle, also capable of aerial travel.
Held: Registration maintained. The registrant first filed a declaration that contained a bare statement of use. However, after the requesting party filed its written argument, the registrant obtained an extension of time to file an affidavit that showed that one vehicle was delivered during the relevant period and that another was delivered at a later date. There is no reason to doubt the bona fides of the one sale having regard to the evidence in its entirety.
9. Stikeman, Elliott v. Agropur Coopérative Agro-alimentaire, March 29, 2000 (Savard) Sufficiency of Evidence/Prima Facie Case of Use
FRUTTI Design registered for fruit drinks.
Held: Registration maintained. Evidence of use by the current owner post-dates the relevant time period. Sales figures have been provided for the predecessor's sale of FRUTTI Design drinks during the relevant time period and their volume permits a conclusion that they were made in the normal course of trade. Although the registrant only provided current packaging, the statement that the registrant has continued the use made of the trade mark by its predecessor was sufficient to infer that when the predecessor sold the wares, the trade mark was associated with the wares in a manner similar to that at present.
10. Gowling, Strathy & Henderson v. Degrémont-Infilco, March 29, 2000 (Savard) Use as a Trade Mark/Section 4(1)
Bird Design registered for appareils pour traitement biologiqueÖ
Held: Registration restricted to wares supported by evidence. The requesting party argued that the mark is used as a corporate identifier, rather than as a trade mark for wares, particularly as it often appears beside the registrant's name. While the Registrar agreed, she said that it could also be perceived as a trade mark distinguishing the registrant's wares, as it is used as a house mark. The wares are not the type one would generally find in a store but rather are wares that would probably be seen by purchasers only once installed. The mark is brought to the purchaser's attention by way of brochures distributed to customers and at the top of invoices and on signage on site where the wares have been installed. This suffices to give the notice specified in s. 4(1).
