Ottawa, Ontario, January 16, 2006
PRESENT: THE HONOURABLE MR. JUSTICESHORE
BETWEEN:
Defendant by Counterclaim
and
JAGUAR CARS LIMITED and FORDMOTOR COMPANY OF CANADA, LIMITED/FORD DU CANADA LIMITEE carrying on business as JAGUAR CANADA
Plaintiffs by Counterclaim
REASONS FOR JUDGMENT AND JUDGMENT
[1] Subsequent to 14 years of preparation time by the parties for this trial, and an eight-week trial that spanned for over a year, after more than 6,000 exhibits, 200 binders, dozens of brochures and tens of actual accessory samples, such as suitcases, briefcases, knapsacks, key chains, vehicle wallets, key fobs and dinky toys, the analysis of the evidence was made possible by the kind assistance of Madame Sylvie Baillargeon and Mr. Alain Dernek, two registrars of the Federal Court. It is they, who catalogued and organized the material, assisted by two most able individuals, who worked as archivists for the respective legal counsel of both parties, Ms. Bettina Murphy and Mr. Tyson Neil. Madame Mireille Legault deserves special mention. It is she who put this judgment into printed format, ensuring that the end notes were included and cited.
In addition, it is noted that due to the fact that for closing arguments, the two parties filed four and eight binders, respectively, for a further twelve binders (six of which consisted of authorities), the parties were asked to submit within a week a summary of closing arguments, in no longer than 90 page memoranda as to what, respectively, they considered essential to their positions. This, both parties, kindly did.
Emerson said the essence of all is found in simplicity.
This trademark case has at its core one question: who has a right to what, when and for what purpose?
(1) who - which company?
(2) what - for which trademark?
(3) when - for what time period and when does it begin?
(4) for what purpose - which products?
OVERVIEW................................................................................................................................... 1
TABLE OF CONTENTS.............................................................................................................. 3
INTRODUCTION......................................................................................................................... 6
the action and the counterclaim............................................................................ 9
Structure of the decision.......................................................................................... 10
BACKGROUND FACTS............................................................................................................ 10
Fact Witnesses.......................................................................................................................... 10
Remo Witnesses.................................................................................................................................................................. 10
Jaguar Cars Witnesses....................................................................................................................................................... 18
Expert Witnesses...................................................................................................................... 22
Jaguar Experts...................................................................................................................................................................... 22
Remo Experts........................................................................................................................................................................ 26
The reliability and validity of the various surveys................................ 27
The 1998 Jaguar Car Awareness Survey.......................................................................................................................... 28
The 1998 Jaguar Briefcase Survey.................................................................................................................................... 33
The 2004 Jaguar Luggage / Knapsack / Wallet / Key Case Survey............................................................................. 34
The 2004 Jaguar Advertising Survey............................................................................................................................... 36
The Report of Mitch Bergesen (The BAV Data; Marketing Evidence; The Regression Analysis)....................... 43
The Report of Professor Moorthy.................................................................................................................................... 51
Landor Survey...................................................................................................................................................................... 60
Conclusion of the Court - Re Survey Evidence............................................ 61
DETAILED FACTS.................................................................................................................... 62
Jaguar Cars Sales Since 1936................................................................................................... 62
Jaguar Cars considered luxury vehicles.................................................................................. 63
JAGUAR cars have become famous in 1980, 1991 and are at present................................... 65
Agreed Facts........................................................................................................................................................................ 65
Worldwide Promotion.................................................................................................................. 65
Promotion in Canada................................................................................................................... 66
Evidence of Reputation................................................................................................................ 69
Jaguar Cars has been connected with personal accessories including Luggage Wares since at least the 1950's....................................................................................................................................................... 71
Jaguar Cars expanded its accessories line in the early 1980's.................................................. 72
The expansion of Jaguar Cars in the early 1980's and thereafter into a broader range of personal accessories including Luggage Wares was a natural expansion and commercial value to JAGUAR Cars connection for consumers with the famous JAGUAR car mark...................................................................... 75
Uses of Luggage Wares by other car companies........................................................................................................... 75
Remo's acknowledgment.................................................................................................................................................... 76
The Jaguar Cars Registration for some of its personal accessories....................................... 77
Remo has since 1973 sold personal accessories in Canada using the trademarks REMO, BEAU SAC and SACSIBO...................................................................................................................................... 77
Remo adopted the trademark JAGUAR in 1980 claiming no knowledge of the Jaguar Cars mark 78
Remo's registrations................................................................................................................ 79
Remo's Sales............................................................................................................................. 79
Remo's extension application................................................................................................... 80
Remo's Massive Advertising Campaign in 1999..................................................................... 81
Remo's sales have included low end products and low end chain stores................................ 81
Chronology of key dates............................................................................................ 82
ISSUES......................................................................................................................................... 84
ANALYSIS................................................................................................................................... 85
Validity of Remo Trademark Registration............................................................................... 85
Ambit of Protection............................................................................................................................................................. 86
Goodwill................................................................................................................................................................................ 88
Natural expansion of goodwill........................................................................................................................................... 89
Connecting factors between cars and luggage............................................................................................................... 99
Depreciation Factors - General........................................................................................................................................ 101
Taking a Valuable Asset................................................................................................................................................... 104
Lost Exclusivity (Dilution)................................................................................................................................................ 105
Tarnishment........................................................................................................................................................................ 107
Possibility of deception.................................................................................................................................................... 108
Likelihood of Confusion................................................................................................................................................... 112
Surrounding Circumstances............................................................................................................................................. 119
Conclusion concerning confusion.................................................................................................................................. 120
Non-Distinctive.................................................................................................................................................................. 121
Conclusion concerning distinctiveness......................................................................................................................... 126
Invalidity of Remo's Registration................................................................................................................................... 126
Validity of Jaguar Cars Trademark Registrations for the Objected Wares.......................... 127
Depreciation, Infringement and Passing Off by Remo........................................................... 129
No Infringement or Passing Off by Jaguar Cars.................................................................... 132
Costs....................................................................................................................................... 132
CONCLUSION.......................................................................................................................... 132
JUDGMENT.............................................................................................................................. 133
END NOTES.............................................................................................................................. 137
[2] "In cases involving similar, famous trade-marks much of the jurisprudence has little precedential value. The cases turn on the particular and often unique facts. Two marks are seldom similar or dissimilar in the same way. Two cases do not often involve the same types of businesses or the same types of customers. As a result cases decided in the past may be interesting, but not generally helpful with regard to a decision of this kind..." Mr. Justice Linden of the Federal Court of Appeal in Pink Panther Beauty Corp v. United Artists Corp. (C.A.), [1998] 3 F.C. 534, [1998] F.C.J. No. 441 (QL) at p. 566 at para. 39.
[3] After much deliberation and a detailed, in depth, review of the evidence, the closing arguments and the summary closing arguments of both parties, the Court is in agreement with the essence reflected in the Defendants' legal arguments. Although the Court is in disagreement with the Defendants' expert witnesses' analysis in regard to its mandated surveys, that is simply, and only, due to the inherent methodology of the surveys, justified by the experts, and, with which the Court intrinsically disagrees.
[4] The Socratic method, whether used consciously or subconsciously, in any matter, wherein there are two or more sets of experts, requires logic to understand issues of a specific discipline or specialization. When court time is spent by opposing parties to examine the logic of the answers of experts or the consistency of definitions or explanations which forms the basis of the experts "informed" conclusions, in the final analysis of the Court, all answers are not considered equally valid or accorded the same weight. In such an examination, there is acceptance and refutation. Thus, the Socratic method (again, consciously and subconsciously applied) necessitates humility to avoid arbitrariness on the part of the Court. This is to ensure a continuous striving for fairness whereby no premise of an expert, when confronted by one of the parties, is accepted as a given but rather is considered with humility by the Court for the purpose of its assessment.
[5] Therefore, in regard to the surveys and the evidence of the experts, the Court, further to reflection, is in basic agreement with the analysis of the Plaintiff, yet, in and of itself, that does not alter the Court's analysis, reached in conclusion, after consideration of the evidence as a whole. Although the ultimate outcome remains the same as that argued by the Defendants, in terms of the interpretation of the law, doctrine and jurisprudence, it is noted that both parties, respectively, claim that each, at the executive levels, did not know of the existence of the other at the outset of the legal proceedings; and the evidence itself, even if interpreted conversely by the respective parties, did not demonstrate otherwise; thus, the parties should be made to live with the consequences thereof for the past; by corollary, therefore, and even more so, it then becomes readily apparent through the evidence that the respective clienteles of the respective parties were different, as was the marked separation in the market place of the respective products of both parties. Remo sells its accessories, mainly, to low-end and sometimes medium-range retail stores; whereas, Jaguar Cars sells its accessories either through its automobile dealerships or directly to its buyers with no intermediary.
[6] Therefore, the Plaintiff is not ordered to pay any exemplary, punitive or other damages; nevertheless, as explained in the reasons of the judgment below, the Defendants have a right to their "famous" trademark, thus, the Plaintiff's trademark, bearing the name Jaguar is to be expunged.
[7] It is the Court's ultimate conclusion that even if confusion did not take place in the past, it has the potential to exist which, in and of itself, is of major significance. Again, since each party, at its executive levels, claims it did not "consciously" or "directly" know of the existence of the other prior to the outset of legal proceedings, neither party should be financially accountable to the other for the past, nor should either party suffer financial consequences based on that past (other than costs which remain to be determined); with respect to the future that would be a different matter, and therefrom flows the judgment.
the action and the counterclaim
[8] This is an action dated June 5, 1991 by the Plaintiff Remo Imports Ltd. (Remo) against Jaguar Cars Limited and Ford Motor Company of Canada Limited (Jaguar Canada) (jointly Jaguar Cars) for infringement and passing off of Remo's trademark JAGUAR, registration number 263,924, registered on October 30, 1981 for tote bags and luggage, and on January 11, 1984 for hand bags and school bags, by reason of the sale by Jaguar Cars of the wares: driving licence cases, wallet cases, business card holders, belts, credit card holders, key cases, address books, note books, passport holders, beauty cases, document cases, pocket wallets ("Objected Wares") in association with the trademark JAGUAR. Remo also seeks to expunge the Objected Wares from Jaguar Cars registrations 378,643 and 378,644 for JAGUAR and for JAGUAR AND LEAPER DESIGN.
[9] Jaguar Cars' counterclaimed on March 6, 1992 for expungement of Remo's registration on the basis that, as at Remo's adoption of the trademark JAGUAR in 1980 it was and continues to be invalid because it was likely to depreciate the value of the goodwill attaching to Jaguar Cars registration UCA21,618 for JAGUAR for cars, was confusing therewith and deceived the public, and was not distinctive. Jaguar Cars also claim relief for depreciation, infringement and passing off.
[10] The core issue in both the action and the counterclaim which registration is valid. All other issues flow from that result.
[11] Due to a most extensive documentation and presentation by the parties, a detailed background is provided prior to a presentation of issues. The validity of the specific trademarks to wares of the respective parties can only be resolved subsequent to an essential examination of the evidence as to whether the Jaguar Cars trademark in Canada was famous at the pertinent time-frame, and, only then, its trademark connection, if any, to its accessory wares. Also essential, at the outset, is an examination of the Remo "JAGUAR" trademark evidence in respect of its wares; and, only after that detailed background setting are the core issues for resolution of the action and counterclaim presented.
[12] Mr. Moise Bassal is and always has been the sole shareholder, President and Chief Executive Officer of Remo.
[13] Mr. Bassal was born in Beirut, Lebanon, on January 30, 1947, and attended elementary and secondary school in Beirut. As a child, he did not recall ever playing with or seeing a toy Jaguar car. As a student in elementary and secondary school, he did not recall seeing pictures, magazines or books about Jaguar cars. Mr. Bassal went to Beirut University, Faculty of Letters, and obtained a Bachelor's degree. He does not recall seeing or traveling in a Jaguar car in Beirut at that time.
[14] After obtaining his Bachelor's degree, Mr. Bassal went to Paris for a year to obtain a degree for teaching. While in Paris, his means of traveling was by subway, not by car and Mr. Bassal does not recall having seen a Jaguar automobile on the streets of Paris.
[15] After Paris, Mr. Bassal returned to Lebanon for two years, where he taught school. From the time Mr. Bassal returned to Lebanon until he left in 1967, he did not recall seeing or driving a Jaguar automobile, nor did he recall pictures, books or magazines about Jaguar cars.
[16] Mr. Bassal left Lebanon and came to Montreal in 1967 and taught high school for four years.
[17] While Mr. Bassal was teaching in Montreal, he also imported into Canada leather handbags from Lebanon, for resale purposes. After four years of teaching, he left that profession and went into the handbag business. Remo Imports Ltd. was incorporated on January 16, 1973.
[18] Between 1967 and 1979, Mr. Bassal bought six different automobiles, but rather than visiting car shows, car dealerships and/or purchasing buy and sell literature about cars, most of his choices were made on the advice of friends or employees. (As is fully outlined in paragraphs 398 and 410-412 of the Plaintiff's original Memorandum of Fact and Law, Volume 1.)
[19] While Mr. Bassal admitted that he did see a Jaguar automobile in Hong Kong, he explained that it was not during his first trip to Hong Kong in 1978. (As is outlined in paragraph 404 of Plaintiff's original Memorandum of Fact and Law, Volume 1.)
[20] Mr. Bassal testified that he did not see or drive a Jaguar car during his first trip to Korea in 1978, as Korea was closed to all foreign imports at that time and as such there were no foreign imported cars on the streets.
[21] Notwithstanding the fact that between 1973 and 1980 Mr. Bassal traveled for his business through Quebec and Ontario, as well as to such European countries as Holland, Belgium and Northern Italy, he maintained that he was not aware of Jaguar cars during such period of time, "as Jaguar cars or any cars were not on my radar, it's not something that mattered to me.".
[22] While Mr. Bassal did read from time to time the Montreal Gazette between 1967 and 1979, he never saw any of the 168 advertisements placed by Jaguar dealers in such newspaper (VSA 31), as he never paid attention to such types of advertisements and did not read that section of the newspaper.
[23] On a business trip to Italy in 1979, Mr. Bassal went to see a friend, Mr. Roberto Gista, who was originally an agent of his. His friend's company in Italy was called Jaguar S.R.L. which was selling luggage in Italy and later in other parts of Europe in association with the trademark "JAGUAR".
[24] During such visit, Mr. Bassal asked Mr. Gista if he minded if he used the same mark for Canada. Mr. Gista said he was not selling in Canada, so there was no problem and Mr. Bassal could do what he wanted.
[25] When Mr. Bassal saw the trademark "JAGUAR" at his friend's premises, it had a logo associated with it. Mr. Bassal identified such logo from exhibit P-46, the Italian registration of Jaguar S.R.L. for the trademark "JAGUAR" & design.
[26] Upon his return to Canada from Italy, Mr. Bassal had a search carried out by his attorney Mr. Charles Wolfson, to determine if Remo could use the trademark "JAGUAR" in Canada for tote bags and baggage. Mr. Wolfson notified him that the trademark was available.
[27] Mr. Bassal does not recall Mr. Wolfson telling him about the existence of any registrations for "JAGUAR" covering automobiles.
[28] Given the favourable search results received from Mr. Wolfson, on October 10, 1980, Remo filed application no. 460, 209 for the registration of the trademark "JAGUAR" covering tote bags and baggage.
[29] Application no. 460,208 matured to registration under no. 263,924 on October 30, 1981, covering tote bags and baggage.
[30] On March 3, 1982, Remo filed an application to extend the wares of its registration no. 263,924 for the trademark "JAGUAR" to cover handbags and school bags. Such extension application was allowed and a certificate of amendment issued on January 11, 1984.
[31] In 1980, Remo began buying "JAGUAR" branded goods from Korea, and in particular polyurethane and nylon oxford bags, all of which bore a "JAGUAR" hangtag as well as a "JAGUAR" logo. When such bags arrived in Canada and were subsequently delivered to Remo's customers, they bore the "JAGUAR" hangtag and logo.
[32] Filed as exhibits P-162, P-163, P-164 and P-165 were sales confirmations covering some of the orders placed by Remo in 1980 for "JAGUAR" branded goods.
[33] Filed as exhibit MB-22.1 (P-50) is a list of Remo's "JAGUAR" branded products for the year 1980.
[34] Exhibit P-102 represents copies of Remo's sales invoices to its customers for the year 1980.
[35] At trial, Mr. Bassal went through each invoice in exhibit P-102 and identified "JAGUAR" branded products as being represented by styles 78508, 78849, 78508, 78700, 78780, 78521, 102, 104, 105, 106, 108, 109, 112 and 114.
[36] Detailed reference was made to relevant exhibits covering the purchase by Remo and its subsequent sale to retail customers in Canada of "JAGUAR" branded leather goods during the years 1981 to 2000. (Paragraphs 482 to 533 of the Plaintiff's original Memorandum of Fact and Law, Volume 1)
[37] Remo has sold and continues to sell to date its "JAGUAR" line of products to department stores, chain retail outlets and specialty stores located across Canada.
[38] The approximate gross sales by Remo of its "JAGUAR" branded line of products for the years 1980 to 1997 inclusive are set out in confidential exhibit DT-32.
[39] During the years 1988 to 1999, Remo participated in co-operative advertising with many of its customers, including Zellers Inc., K-Mart Canada Ltd., Bentley Leathers Inc. and Kotler Canada.
Exhibits P-33 and P-76 (MBA-100) are copies of credit notes from Remo to its customers relating to co-operative advertising for Remo's "JAGUAR" branded products for the years 1988 to 1998.
[40] Between 1980 and 1988, Remo also participated in similar co-operative advertising with its customers, and in particular Zellers and K-Mart.
[41] Copies of credit notes relating to Remo's co-operative advertising for its "JAGUAR" branded products for the years 1997 to 2001 with such customers as K-Mart Canada Ltd., Zellers Inc., Giant Tiger Stores Ltd., Sears Canada Inc., Bentley Leathers Inc. and The Hudson's Bay were also produced as Exhibit P-99.
[42] Since the early 1980's until 1992 inclusive, Remo attended and participated at the Canadian International Footwear Exposition which took place at the Place Bonaventure Hotel in Montreal. At each of these trade shows Remo had a booth at which it displayed its products being offered for sale in association with its trademark "JAGUAR".
[43] Commencing in the year 1986 and continuing to date, Remo attended the Canadian Luggage, Leathergoods, Handbags and Accessory Show, which is held each spring in the City of Toronto, Ontario. At each of these shows Remo had a booth at which it displayed its products being offered for sale in association with its trademark "JAGUAR".
[44] On a regular basis since the 1980's to date, Remo attended smaller open shows in hotel rooms in Quebec City, where it offered for sale its "JAGUAR" branded products.
[45] An illustration of Remo's "JAGUAR AVANT GARDE II" set of luggage appeared in the December 14th, 1999 issue of the National Post.
[46] An illustration of Remo's "JAGUAR AVANT GARDE II" and "JAGUAR PILOT" luggage appeared in December 1999 in those newspapers and on the dates specified in Agreed fact P-849.
[47] Remo began its billboard and bus shelter advertising program for its "JAGUAR" products in August 1999.
[48] Billboard and bus shelter advertisements featuring some of Remo's "JAGUAR" branded products were arranged for and erected by Mediacom, Inc., on behalf of Remo, between August 1999 and December 2000, in the Cities of Halifax and Sydney, Nova Scotia; Moncton and St. Johns, New Brunswick; Thetford Mines, Drummondville, Granby, Beauce, Quebec City, Chicoutimi, Trois-Rivières, Sherbrooke, Montreal and Hull, Province of Quebec; Kingston/Brockville, Belleville, Ottawa, Toronto, Hamilton, Oshawa, Kitchener, St. Catherines/Niagara, London, Windsor, Sarnia, Peterborough/Lindsay, Barrie, Orilla and Thunder Bay, Ontario; Winnipeg, Manitoba; Regina and Saskatoon, Saskatchewan; Moose Jaw, Edmonton and Calgary, Alberta; and Vancouver, British Columbia.
[49] Photographs of Remo's billboard and bus shelter advertisements placed by Mediacom, Inc. were produced as Exhibit P-152.
[50] Subsequent to December 2000 and on a continuous basis to date, Remo concluded arrangements with both Viacom Inc. and Patterson to have billboard and bus shelter advertisements featuring some of its "JAGUAR" products erected across Canada.
[51] Ms. Alice Ann Morlock is a trademark lawyer with McMilliam Binch. In 1987 she was the outside Canadian trademark lawyer for Jaguar Cars. She testified about certain trademark practices. Her communications with her client are privileged and those communications were excluded from evidence.
[52] Ms.Vivien Shortt has been employed by Jaguar Canada since 1981 and in charge of Jaguar Canada's full personal accessories lines from the early 1980's to 1990s. Since she started in 1981, Jaguar Car's personal accessory line has extended into a full line of personal accessories including attaché case, folios, briefcases, handbags, license cases, purses, wallets, organizers, document wallets, credit card wallets, cardholders, key rings, key cases, garment bags, sport bags, suitcases, flight bags, travel kits, luggage, belts, clothing, duffel bags, tote bags and the like. This new line of JAGUAR personal accessories has been promoted in Canada since the early 1980's in numerous Jaguar Cars brochures and pamphlets available to consumers at dealer showrooms and car shows. Sales have been made through Jaguar Canada dealerships and Jaguar Cars' licensees with some direct sales by Jaguar Canada. Jaguar Cars has adopted high standards for the manufacture, display, promotion, advertisement and sale of its line of personal accessories bearing the trademark JAGUAR and all authentic, authorized personal accessories offered for sale in Canada bearing the trademark JAGUAR are of the highest quality. Ms. Shortt was not aware of the existence of the Plaintiff or its Canadian sales until the demand letter from Plaintiff's counsel leading to commencement of this action.
[53] Mr. Jim Robertson has been employed by Jaguar Canada from 1976 to present in sales and marketing positions and is currently Marketing, Displays and Training Co-ordinator. He described marketing of Jaguar Cars from 1976 to present. He described the numbers of Jaguar Cars' sales of luxury automobiles in association with the trademarks JAGUAR, from the early 1970s to 1997.
[54] Mr. Craig Manuel is a Toronto lawyer. He discussed many videos in which he identified a Jaguar car in films released as early as 1942.
[55] Mr. John Maries was a senior officer of Jaguar Cars Limited in England in charge of extending the JAGUAR brand into a full line of personal accessories from the late 1970's to 1999. The trademark JAGUAR was used internationally and in Canada in association with a number of personal accessory products by Jaguar Cars or its licensees, some since at least as early as the 1950's, including luggage, model cars, vehicle wallets, key fobs and key chains. He described some of the promotion of personal accessories by Jaguar Cars worldwide from 1950 to 1980. Luxury car competitors of Jaguar Cars such as Mercedes-Benz since before 1980 have extended their famous brands into personal accessories. Jaguar Cars' management decided in the late 1970's to extend their valuable Jaguar brand into a full line of personal accessories. He was in charge of this starting in 1981 and developed the Silver Brochure in 1982. Jaguar Cars has never permitted use of its JAGUAR trademark by Remo. Jaguar Cars had no knowledge of Remo until the demand letters in this action in mid-1990. Had Jaguar Cars known of Remo's use of the JAGUAR trademark, Jaguar Cars would have tried to prevent such use. Jaguar Cars did take steps to stop others from using the JAGUAR trademark where possible.
[56] Mr. Anders Clausager is the archivist of a company related to Jaguar Cars Limited in England. Jaguar Cars and its predecessors in association with the trademarks JAGUAR, LEAPING JAGUAR DESIGN & JAGUAR HEAD DESIGN, have sold cars continuously internationally, including Canada since 1936. He identified the order of magnitude of the sales volumes. Since 1936, Jaguar has been involved in continuous advertising and promotion of Jaguar Cars' automobiles internationally and in Canada in association with the trademark JAGUAR. Numerous accurate books have been written regarding Jaguar Cars and its cars since at least 1959.
[57] Mr. John Mackie was Vice-President Sales and later President of Jaguar Canada from 1965 to about 1997. He described Jaguar Cars' advertising spending and sales numbers of luxury automobiles in association with the trademarks JAGUAR from 1948 to 1997. He described the nature and extent of promotion of Jaguar Cars automobiles in Canada from 1948 to 1997. There are many documents over the years prior to 1980 showing the reputation of Jaguar Cars in Canada and its connection with affluence and quality. The trademark JAGUAR was used in Canada in association with a number of personal accessory products by Jaguar Cars or its licensees since at least as early as the 1950's, including luggage, model cars, vehicle wallets, key fobs and key chains. Jaguar Canada discussed the idea of extending their valuable JAGUAR brand into a full line of personal accessories with Jaguar Cars in about 1981 or 1982. Jaguar Canadahas never permitted or acquiesced to use of its JAGUAR trademark by Remo. Jaguar Canadahad no knowledge of Remo until the demand letters in this action in mid-1990.
[58] Mr. Brian Green was the service general manager of Jaguar Canada from 1968 to 1986, and Vice-President from 1986 to 1994. He described some operations of Jaguar Canada from 1968 to present. The trademark JAGUAR was used in Canada in association with a number of personal accessory products by Jaguar Cars or its licensees since at least as early as the 1950's, including luggage, model cars, vehicle wallets, key fobs and key chains. Luxury car competitors of Jaguar Cars including Mercedes-Benz; BMW; Porsche; Saab since before 1980 have extended their famous brands into personal accessories.
[59] Mr. John Cox was the chief officer and/or owner of Jaguar Cars dealerships in Toronto from 1981 to about 2000. He has been in the car dealership business since 1970. He discussed the operation of the Jaguar Coventry dealership from 1993 to 1998 and the Jaguar on Bay dealership from 1981 to 1992. He described typical annual promotion of JAGUAR brand personal accessories by both of these dealerships. Sales of personal accessories started in the early 1980's and gradually increased after that. From the early to mid-1980's, sales of accessories were made available by Jaguar dealers to their customers from Jaguar catalogues or brochures or price lists including "Jaguar Collection" brochures. He described some of the methods of promotion used by Jaguar Coventry for both cars and accessories including various sporting and cultural events, publications and showroom displays.
[60] Dr. Ruth Corbin is an expert in marketing and consumer behaviour research and analysis, particularly surveys in issues relating to trademarks. She conducted four independent surveys, two in 1998 and two in 2004.
[61] The 1998 Jaguar Car Awareness Survey: From a cross-Canada telephone survey she concluded that in 1980 and 1998, awareness of the name JAGUAR as the name of a car was 89% of the Canadian public within given levels of accuracy.
[62] The 1998 Jaguar Briefcase Survey: From a cross-Canada telephone survey she concluded that:
(1) 5% to 9% of people who encountered JAGUAR briefcases would infer without any prompting that the briefcases were manufactured or licensed by Jaguar Cars;
(2) When questioned, 19% of people (31% of luxury car owners) would infer a relationship between JAGUAR briefcases and Jaguar Cars.
[63] The 2004 Jaguar Luggage/Knapsack/Wallet/Keycase Survey: From a cross-Canada telephone survey, she concluded that:
(1) 4% to 7% of people who encountered JAGUAR luggage, knapsacks or wallets would infer that these products were manufactured or licensed by Jaguar Cars;
(2) When questioned, 35% of people would infer a relationship between Jaguar keycases and Jaguar Cars.
[64] The 2004 Jaguar Advertising Survey: From a mall survey of Canadians who were shown a copy of a Remo billboard ad, she concluded that:
(1) Awareness of Jaguar Cars is 97%;
(2) Jaguar Cars are associated with words like luxurious, elegant, classy, stylish;
(3) Remo's ad for its JAGUAR luggage brings to mind Jaguar Cars among 44% of adults, unprompted;
(4) Even when people are not confused, the majority still link the Jaguar name of the Remo products to the goodwill of Jaguar Cars.
[65] Mr. Mich Bergesen is an expert in brand (trademark) valuation, brand extensions and the valuation of goodwill in brands and brand extensions of well-known trademarks and the measurement of consumer awareness of well-known trademarks in the United States and Canada.[1] He conducted historical research into extensions by well known automotive brands into "Luggage Wares". He described the Brand Asset Valuator (BAV) database which surveyed thousands of brands in Canada and the USfrom 1993 to 2003.
[66] He reported his analysis of the above consumer brand data and other attributes of the trademark JAGUAR for consumers:
(1) The consumer awareness for the brand JAGUAR for cars was 96%;
(2) The level of perceived affluence and quality both in the United States and Canada was very high.
(3) There was significant, measurable value in the goodwill of the trademark JAGUAR in association with cars.
(4) There was a significant, measurable value in the goodwill of the trademark JAGUAR in connection with a brand extension into Luggage Wares.
[67] The data and analysis was extrapolated back to 1980 in Canada. His opinion is that as of 1980, 1991, 1993 and at present in Canada:
(1) A brand valuator would advise Jaguar Cars that it had valuable goodwill in an extension of its JAGUAR brand into Luggage Wares;
(2) A third party using the brand for Luggage Wares would be using goodwill that Jaguar Cars could have licensed or sold for significant value;
(3) There is and has been a strong connection between the trademark JAGUAR used for cars and its use for Luggage Wares such as those to which Jaguar Cars did extend its JAGUAR brand in the 1980's.
[68] Dr. Darmon challenged this extrapolation back to 1980.
[69] Dr. Joachimsthaler is an expert in marketing strategy, building strong brands and extending brands into new categories of goods or services.[2] He considers the methodology used by Mr. Bergesen to be reliable and valid, that there was high awareness of JAGUAR as a premium brand for cars from 1993 to 2004 in Canada and the US and that extrapolation back to 1980 in Canada was appropriate. He concluded that the JAGUAR brand was appropriate for extension into luggage in Canada in 1980; and that when Remo traded in luggage in 1980 under the JAGUAR trademark in Canada, it was engaging in an activity of significant value to Jaguar Cars. Dr. Joachimsthaler confirmed that there was historical and marketing precedent and strong connections for extension by well known automotive brands into luggage prior to 1980 in Canada; and thereby concluded that Remo, by using the JAGUAR brand in luggage in Canada in 1980 depreciated the brand for JAGUAR cars, whether the luggage was of high or low quality, and whether the consumer is confused or not, as there are different types of depreciation. His evidence is set aside for the reasons discussed below in regard to Mr. Bergesen.
[70] Professor Sridhar Moorthy is an expert in marketing generally and branding in particular including brand (trademark) valuation, brand extensions, consumer awareness and brand equity. He concluded that the extrapolation of the data back to 1980 in Canadawas valid; and furthermore that as of 1980, 1991, 1993 and 2004:
(1) There were good grounds for Jaguar Cars to extend its JAGUAR brand from cars into "Luggage Wares";
(2) A third party using the trademark JAGUAR for Luggage Wares would be utilizing goodwill that otherwise would have been of significant value to Jaguar Cars;
(3) JAGUAR auto wares are complementary to Luggage Wares from a consumer standpoint;
(4) There were good marketing reasons for a well known auto brand to extend into Luggage Wares;
(5) Remo, by using the JAGUAR brand for Luggage Wares in Canada in 1980 was able to save on costs of promotion, depreciated the value of the goodwill in the trademark JAGUAR for automobile wares in one or more different ways, whether or not there is confusion and whether or not Remo's goods are inferior.
[71] The Court's reflection in his regard is specified below.
[72] Dr. Alain D'Astous, Professor of Marketing, is a recognized award winning expert for multicultural marketing in Canada. It is he who examined the analysis of memory processes as put forward by Jaguar Cars survey evidence.
[73] Dr. René Darmon testified for Remo and he analyzed the regression analysis of the Bergesen Report. His expertise is also in marketing. Professor Darmon continues to teach marketing in both Europe and North America. He is a recognized expert in both the European Community and in North America and a recipient of the best applied paper award for marketing in Canada.
[74] The Court agrees with the expert witnesses of Remo as reflected in the analysis of the Court discussed below simply due to the methodology which the Jaguar experts used to arrive at their conclusions for the sole purpose of this case. It is that methodology with which the Court disagrees.
The reliability and validity of the various surveys
[75] As a significant proportion of time was spent in examination and cross examination of expert witnesses in respect of surveys, mandated specifically for the purpose of this litigation by the Defendants, the results of said surveys were described above. The Court now concludes with specific examples of the inherent weaknesses of the said expert analysis of the surveys in respect to the case at bar.
[76] This heading will be treated in three separate sections as follows:
(i) The Corbin Surveys;
(ii) The BAV data (marketing evidence - the regression analysis);
(iii) The applicable case law.
The 1998 Jaguar Car Awareness Survey
[77] This was a survey conducted in 1998, the purpose of which was to attempt to establish the awareness of the name "JAGUAR" as the name of a car, prior to 1980. It was a survey conducted by telephone.
[78] Notwithstanding that telephone surveys are common in the survey industry, in this particular survey, for its intended purpose, there is an inherent weakness of the survey being conducted by telephone; as there is no empirical verification of the age, gender, or other characteristics of the respondents. This is particularly relevant given the nature and stated purpose of the 1998 Jaguar Car Awareness Survey.
[79] Dr. Corbin acknowledges at page 151 of the July 5th, 2005 transcript, in response to question 228, as follows:
On that one small point of determining the possibility of misrepresentation of one's age, it goes without saying that visual confirmation would be better.
[80] Given that the age of the respondent is crucial to the reliability and validity of the survey, with particular regard to the responses elicited from the respondents in questions 4, 5 and 6, a survey conducted by telephone for the purposes articulated by Dr. Corbin, immediately evokes questions as to the survey's reliability and validity.
[81] There is no assurance that inference can be made from the survey that the demographic (i.e. "universe") was proper for purposes of the survey.
[82] Question 1 asked of the respondents was: "What one thing first comes to mind when you hear the name Jaguar/Panther?"
[83] As appears from the Detailed Findings at tab 2, page 3, of Exhibit DT-4.2, in relation to question 1:
(a) No one mentioned luggage or briefcases.
(b) Four percent (4%) mentioned "wealthy people/money".
(c) One percent (1%) mentioned "Expensive/high quality".
[84] Question 2 asked: "Does anything else come to mind when you hear the name Jaguar? Anything else?" At the Detailed Findings contained at tab 2, page 4, Exhibit DT-4.2, the chart which combines the answers to question 1 and question 2, notes the following:
(a) Less than one percent (1%) of the respondents responded "luggage".
(b) Two percent (2%) responded "expensive/high quality".
[85] One further notes from page 4 of the Detailed Findings, that question 1 measured "top of mind reactions." Question 2 is asserted as being "A follow-up open ended question".
[86] Question 3 was the following: "Have you heard the name Jaguar used as the name of a car, or not."
[87] It was confirmed by Dr. Corbin at paragraph 19 of her Affidavit, Exhibit DT 4.1, that question 3, which was asked of respondents who had not previously mentioned a car in question 1 or 2, evoked "prompted awareness.".
[88] It was further confirmed by Dr. Corbin in her response to question 103 at page 78 of the trial transcript of July 5th, 2005, that question 3 was a prompted question, and this was re-confirmed by her in her response to question 130 at page 85 of the aforesaid transcript. Further, she confirms that the interviewer was instructed to ask a prompted question referring specifically to the name Jaguar used as the name of a car.
[89] Question 4 is: "Approximately how old were you when you first became aware of cars with the name Jaguar?".
[90] Respondents who could not think of a specific age or range in question 4 were asked question 5, which is a prompted question. Question 5 reads as follows: "Do you think it was before you were a teenager, during your teenage years, or some time after your teenage years.".
[91] Dr. Corbin acknowledges that question 5 was asked "as a prompt" and makes the following subjective supposition:
For many people, their teenage years are one of the periods of their life when they remember very clearly their attitude towards cars or luxury cars.
A valid question arises as to whether this supposition is supported by empirical evidence (no such evidence was made by Dr. Corbin), and further, whether such a supposition would apply equally across the myriad cultural and socio-economic segments of the Canadian population.
[92] Question 77 at page 69 of the trial transcript of July 5th, 2005 is as follows:
Q- Is question 5 a prompted question?
A- Question 5 has a prompt(ed).
Question 78 of the same transcript is as follows:
Q- Would you agree or disagree that question 6 has a prompt?
A- Yes, yes, question 4 is the unprompted question and then questions 5 and 6 have prompts, not only prompts in the research sense, but actually the kind of memory prompts that are talked about in the memory literature, exactly those, the kinds of things we use to draw things out of our long-term memory. ...
[93] In her response to question 290, page 195 of the July 5th, 2005 trial transcript, Dr. Corbin was asked whether question 5 is the jogging question for question 6. It was suggested to Dr. Corbin that the respondents' memory was being jogged. Her response was:
Question 4 isn't jogging the memory, it's asking them, but question 5 you could say is a jogging question if as long as we're both using the word objectively, yes.
[94] Further, in her response to question 64 of the trial transcript of July 6th, 2005, Dr. Corbin acknowledged that questions 5 and 6 are closed-ended questions.
[95] Question 6 was "And was that before 1980, sometime in or after 1980, or do you not recall?". Dr. Corbin states:
And so for these people, we went to question 6, and now they have had their prompt, or their assistance so that they could answer us factually question 6...
[96] It is the submission of the Plaintiff that questions 4, 5 and 6 are not simply "prompted" questions using the jargon or vernacular of the survey industry, but are indeed suggestive and thus leading questions. For these reasons, and by reason of those issues raised by Dr. d'Astous in his report, and in his evidence and, as well, with regard to the time period from the date the survey was taken to the era to which the respondents are being referred is at least 18 years, that the data obtained by this survey is neither reliable nor valid. As Dr. d'Astous stated:
... as I said many times, the person is asked to retrieve an event that occurred almost twenty (20) years ago, which, in my opinion, is a trivial event, that is my knowing that - my learning that Jaguar is the name of a car. And given the time that he has or she has to remember this event in the context of the survey, I argue that people are going to construct from generic knowledge, a reasonable answer which is not going to correspond to the memory.
[97] With regard to Exhibit DT-24, the Court is respectfully referred to pages 17 to 25 inclusive of the trial transcript of July 20th, 2005, and specifically, at page 20 wherein Dr. Corbin responds:
As a general statement memory decays over time, depending on specific circumstances, which I know you haven't asked about. As a general statement it is true.
[98] With regard to the issue as to whether question 6 of the Jaguar Car Awareness Survey is indeed redundant, and was simply put there to collect data, reference is made to pages 45 and following of the transcript of July 20th, 2005, and specifically to Dr. Corbin's response to question 95 at page 47 which is as follows:
Q. So that question six is no longer a computational device in the example that was just given to you?
A. It is now an additional contextual cue. You're right, it is an additional delineator not the - it is not able to act as the same kind of precise computational device, just a guideline now.
Q. So the red herring is becoming pink?
A. Yes, if we could agree on a deep pink herring, but - but yes, that is a good point.
Q. Something less than red?
A. I acknowledge that, and I think that is a good example.
The 1998 Jaguar Briefcase Survey
[99] This survey elicits data as at 1998, and was a survey conducted by telephone. Reference is made to paragraph 5.6 and following of Plaintiff's original Memorandum, volume 2, in relation to the questions asked in the survey, and to the absence of a control condition with regard to question no. 2. As argued in paragraph 5.9 of the aforesaid Memorandum, the mention in question 2 of the "brand name JAGUAR" would indeed be a relevant cue that might trigger guessing of a car company, and thus a control condition should indeed have been used.
[100] This survey is flawed by reason of the innate weakness of telephone surveys in general, as well as by reason of the failure to use control conditions, when applicable.
The 2004 Jaguar Luggage / Knapsack / Wallet / Key Case Survey
[101] This survey was conducted in 2004, as a national telephone survey of Canadian adults consisting of a random representative sample of 202 people in all provinces of Canada over the age of 18 years.
[102] The purpose of the survey was to measure the extent, if any, to which consumers would misapprehend various Jaguar brand goods of the Remo company as products of Jaguar Cars Limited.
[103] It is to be noted that the survey is in 2004, approximately twenty-four (24) years after Plaintiff has been marketing and selling its products in Canada.
[104] The questions and the resulting data appear at paragraph 6.5 to 6.21 of Plaintiff's original Memorandum, Volume 2.
[105] With regard to question 5, and confirmation that it is a prompting question, reference is made to paragraph 51 of the Corbin Affidavit, and to question 291 at page 171 of the trial transcript of July 6th, 2005, and with further regard to the aforesaid question 5, to question 293 at page 172 of the aforesaid transcript, and to questions 299 to 302 at page 173 and following of the aforesaid transcript.
[106] For further confirmation that question 5 is a "closed-ended" question, reference is made to question 317 at page 183 of the trial transcript of July 6th, 2005.
[107] In paragraph 51 of the Corbin Affidavit, Dr. Corbin acknowledges that question 5 is a prompting question, and the suggestive nature of the question is obvious from a simple reading thereof.
[108] At paragraph 55 of the Corbin Affidavit, Exhibit DT-4.1, in 2004, Dr. Corbin concludes that a certain level of perception was established in the survey (4% to 7%) that people who encounter Jaguar luggage or knapsacks or wallets would infer, without any prompting, that the products are manufactured or licensed by Jaguar Cars Limited. Suffice it to say that these percentages reflect a market in which the Plaintiff has been selling its wares for almost a quarter of a century.
[109] This survey is both unreliable and invalid, reference being made to the general criticism of telephone surveys when surveying respondents of a certain age and over, and, as well, for the comments both in Plaintiff's original Memorandum, volume 2, and in this Memorandum, that respondents were being asked suggestive and leading questions, particularly with regard to question numbers 4 and 5.
The 2004 Jaguar Advertising Survey
[110] As described, this survey had as its purpose brand awareness as explained at page 1 of Exhibit DT-4.4, and at paragraph 57 of the Corbin Affidavit.
[111] Reference is further made to questions 42 and 43 at page 34 of the trial transcript of July 7th, 2005, as well as to page 4 of Exhibit DT-4.4 which states the following:
According to the mandate of Ridout and Maybee, the pertinent population for the survey was determined to be all adult English speaking Canadian consumers, since the advertising has been in mass media. Questions on the survey also permitted an analysis of responses among only luggage purchasers, or among only drivers of luxury cars, or for anyone city or age group.
[112] At paragraph 59 of the Corbin Affidavit, one notes that interviews were conducted in malls in four provinces of Canada, namely in Ontario, British Columbia, Nova Scotia and Alberta.
[113] Thus, the mall study was conducted to the exclusion of that part of the Canadian population residing in the province of Quebec, which constitutes approximately twenty-five percent of the Canadian population, and in important aspects, such as language and culture, is distinct from the remaining Canadian population. Notwithstanding, as well, that the Remo advertising by billboard took place in many locations in the Province of Quebec.
[114] Dr. Corbin has acknowledged that this survey is not necessarily demographically representative, and in this regard, reference is made to question 64 at page 39 of the trial transcript of July 7th, 2005, and, as well, to paragraph 60 of the Corbin Affidavit.
[115] At questions 79 to 86 of the trial transcript of July 7th, 2005, the Remo ad was confirmed as having been the target ad of interest, and in this regard reference is made to paragraph 61 of the Corbin Affidavit, and questions 79 to 86 inclusive of the July 7th, 2005 trial transcript, commencing at page 44 thereof.
[116] The obvious consequence from the foregoing is that the Remo ad, being the last of three ads seen by the respondents, is the most recent ad in their memory.
[117] Reference is made to questions 169 to 172 inclusive at page 114 and following of the trial transcript of July 7th, 2005, and, as well, to question 175 at page 118 thereof, and to questions 179 to 181 inclusive at pages 119 and following. Particular emphasis is made in regard to questions 179 to 181 at pages 119 and 120 of the aforesaid transcript, which were as follows:
Q. [179] But I put it to you that if somebody said just car, they didn't mention Jaguar Cars. If somebody said vehicle, they didn't mention the Jaguar vehicle. That's the point I'm trying to make, Dr. Corbin.
A. Correct. I accept that. I just want to refer it to the question they were asked for a product or products, and so they said one of these answers, yes.
Q. [180] Okay. So, again, I put it to you that one cannot conclude from the figures in this table, Table 2, what percentage of the Respondents referred only to Jaguar Cars?
A. Yes, that's... we can't... That's right, yes.
Q. [181] Okay. Therefore, am I correct in concluding that people having said it was an ad for Jaguar Cars, may also have said that it was an ad for luggage?
A. Yes, that is possible.
[118] Question 3 is reproduced at page 11 of Exhibit DT-4.4, as follows:
Even if you had mentioned it already, please tell me what company sponsors the last ad you saw?"
This question once again is directed to the Remo ad, and at page 147 of the July 4th, 2005 transcript, Dr. Corbin acknowledges "now we're getting more and more directive".
[119] At page 148 of the trial transcript of July 4th, 2004, Dr. Corbin acknowledges that question 3 is a directive question.
[120] Further, at page 149 of the trial transcript of July 4th, 2005, Dr. Corbin acknowledges "45% of people did read off "Agua" and you should take that into account then. Some people were just reading and my apologies."
[121] It is evident, therefore, that respondents are simply reading off the name of the last ad they saw (always the Jaguar/Remo ad).
[122] Question 4 appears at page 12 of Exhibit DT4.4: "Please tell me what, if anything, you know, about the products of that company? (Probe) Anything else, or not? What products are you thinking of that you would describe that way?";
The purpose of question 4 is described at page 12 as an attempt to clarify ambiguous answers from question 3, given the possibility that people might have guessed that the name Jaguar or Remo just from the words in the ad. No ambiguous answers were given to question 3, and this question is an attempt to elicit responses "if people gave information consistent with Jaguar or Remo products, it can be inferred that they were indeed thinking of Jaguar Cars Limited or Remo Imports Limited".
[123] The response "Jaguar" is not in itself ambiguous. Respondents may have been referring to a "Jaguar luggage company". By asking question 4, the interviewers are prompting the respondents so that they may infer other responses to those that were already given.
[124] Table 4A at page 13 of Exhibit DT-4.4contains the detailed responses to question 4, and it is to be noted from page 13, that part way through the survey, question 9(d) was added, asking those who had given just "Jaguar" answers at question 3, whether they meant the same company as the one that puts out Jaguar cars, or a different company. The question was asked only of respondents who had said "Jaguar" at question 3. Question 9d reads as follows:
I have one last question to ask you about the advertisement. You said earlier that you thought this ad was sponsored by a company named Jaguar. Did you mean the same company as the one that puts out Jaguar Cars, a different company than the one that puts out Jaguar Cars, or something else?
Question 9d is an extremely suggestive, leading, and is a prompting question. Moreover, to add a question partway through the survey to obtain clarifications to various responses is not the normal course in which surveys should be conducted.
[125] Table 4b at page 14 of Exhibit DT-4.4summarizes all the results regarding associations made with Jaguar in the Jaguar group upon first impression of the ad. The responses to question 9d are included in these results and the data contained therein is highly suspect, particularly in view of the nature of question 9d.
[126] With regard to question 7 at page 19 of Exhibit DT-4.4, the question is highly suggestive. The question could have been framed as follows: "Are you aware of a company with the name "Jaguar?", instead of adding the words "that makes cars".
[127] Question 8 and Table 8 containing the Detailed Findings in relation thereto are contained at page 19 of Exhibit DT-4.4, and reference is made to questions 260 and 261 at page 163 of the trial transcript of July 7th, 2005, and to questions 264 and 165 at page 164 thereof, which state the following:
Q. [260] Question 8 was, quote:
What words would you use to describe Jaguar cars?
So now, we specifically refer - we! - the interviewer has specifically referred Jaguar Cars to the Respondent?
A. Yes.
Q. [261] Okay. and I am pointing out to you that if you go down the horizontal tables in Table 8, and you come to the word "reliable", it's six percent (6%) for the Jaguars condition. Correct?
A. Correct.
... Q. [264] Okay. And if you follow me, still down Table 8, some, a few further horizontal sections, there is one column, "Well-known brand", and for the Jaguar brand, it's two percent (2%).
A. Right.
Q. [265] And that is after the Respondents have been specifically referred to Jaguar cars in the question?
A. Right.
[128] It should be noted that the Corbin surveys (other than the 1998 Jaguar Car awareness survey) indicated that there was no or little connection between luggage and cars, and, by way of example, reference is made to paragraphs 5.12, 5.14, 5,15, 6.10(a), 6.13, 6.19, 6.28 and 11.33 of the Plaintiff's original Memorandum of Fact and Law, Volume 2.
[129] In relation to the mall survey in particular, this survey did not represent the demographic population of Canada. The fact that the Jaguar and Agua ads were shown last in the series of slides shown to the respondents created a factual situation where the most recent memory of the respondents was directed to those ads. One might ask, rhetorically, whether it was necessary at all, to show the first two ads to the respondents, prior to the Jaguar or Agua ads that were shown last.
[130] The jurisprudence regarding the admissibility of survey evidence contained at pages 64 to 76 of Plaintiff's original Memorandum of Fact and Law, volume 2, are applicable to the four Corbin surveys. In general, these criteria are the following:
(a) If, and only if, the sample is correctly selected, can it be said that the opinions found to exist in the sample are representative of the entire universe. (Disney)[3]
(b) The questions must be put in such a manner as to not elicit the type of answer sought by the sponsor of the poll. (Disney above)
(c) The survey must not require a subjective judgment on the part of the interviewer as to categorization of the answers given (for example: "using the terms "expensive", "rich people", etc.). (Disney above)
(d) The correct consumer must be surveyed. (McDonald's)[4]
(e) A survey conducted 12 years after the dates pertinent for assessing the lack of confusion cannot be considered to represent a response of average Canadians of ordinary intelligence. (Seagram)[5]
(f) We do not know anything about the education of the interviewees, whether they can read, whether they have any physical disabilities, whether they are employees or customers of the shopping centre, and so on. Responses, under such circumstances, can be of little probative value. A survey for such a short period of time, conducted in one area, in one city of Canada, is far from being representative. (Seagram above)
(g) The surveys "...involve the interviewer deciding whether or not the interviewee was confused, and this involves an interpretation by the interviewer of what the interviewee said. There is no evidence as to the background, knowledge and experience of the interviewers. A particular response by one member of the public might be interpreted in ten different ways by ten different interviewers, depending on their intelligence, their education and their experience. Surely, to accept such evidence, based on such unknowns and such variables, would be unwise indeed." (Seagram above)
(h) The interviewees are not before the Court, and a party would be at a considerable disadvantage in endeavouring to obtain a complete picture of the various interviews on the present state of the record. (Salada Foods)[6]
(i) "The survey had blatant and determinative shortcomings which considerably undermined its relevance. The results of the survey were inconsistent with the allegation of a connection between the wares and services of the parties. Further, the respective trade-marks had co-existed for ten years without any evidence of confusion. The only conclusion that could be drawn from the survey was that the opponent's trade-mark was very well-known or famous, a factor that had been considered by the registrar in his decision. The notoriety of a mark was only one factor to be taken into account in assessing confusion. It could not automatically be presumed that there would be confusion because the opponent's trade-mark was famous. The relevant question was not whether there was, in the abstract, a reasonable likelihood of confusion between the marks but rather whether the use of the applicant's mark would prompt consumers to conclude that the wares and/or services associated with both marks emanated from the same source or were otherwise associated." (Mattel)[7]
(j) Suggestive questions should not be allowed. (Mattel)
(k) Regarding the treatment of surveys conducted long after the time period relevant for determining confusion, the most relevant case is Seagram. The case was cited in a subsequent Trademarks Opposition Board decision of John Labatt Ltd. v. Miller Brewing Co. (1996), 70 C.P.R. (3d) 351 T.M.O.B.) , which also refused to admit survey evidence on the grounds that the survey was conducted after the relevant time period.
At page 361:
The applicant has also relied on the Ossip and Greensmith affidavits which evidence a survey conducted to gauge consumer reaction to various trade-marks and product descriptions (including the applicant's trade-mark LITE Design) used in association with beer. However, that survey was conducted in October of 1991, some six years after the material time, and is therefore irrelevant respecting the issue of whether or not the applicant's mark was without distinctive character as of November 18, 1985.
The Report of Mitch Bergesen (The BAV Data; Marketing Evidence; The Regression Analysis)
[131] Exhibits 3, 4, 5, 6, 7 and 8 of the Bergesen Report, exhibit DT-11.1, make reference to custom cases, suitcases and hat boxes, fitted luggage for Mercedes Benz and Porsche autos, as well as Louis Vuitton fitted and motoring luggage. The witness is not aware as to whether any of the products illustrated in these exhibits bore any trademark, nor whether any were actually marketed in Canada.
[132] At pages 43 and following of the July 8th, 2005 transcript, commencing at question 59, referring to paragraph 17 of his report, Mr. Bergesen makes reference to the four (4) pillars of the make-up of a brand, being:
(a) Differentiation
(b) Relevance
(c) Esteem
(d) Knowledge
[133] All of these pillars contribute to a brand's ability to succeed in a particular market. It is considered that success is defined as a function of sales or profitability in a particular market.
[134] When referred to Exhibit 12 to his report, Mr. Bergesen acknowledges that at page 12 of the Exhibit, the document describes that various ethnic groups such as African-Americans, Spanish and Asians are not fully represented in the current panel. When asked whether that affected the findings of the BAV data, Mr. Bergesen acknowledged that if the under represented constituencies are materially underrepresented, it could skew the results toward those constituencies that are represented. Mr. Bergesen further acknowledges that it is very difficult to reach sufficient numbers of minority groups, and this is true of market research generally. These groups tend to be underrepresented in all market research. When asked whether the foregoing would be true of Canada, Mr. Bergesen's response was "I would imagine so. I don't know for sure."
[135] When asked whether there was any data for Canada, the witness responded "I haven't made any representation data for Canada, no."
[136] Mr. Bergesen further acknowledges that these statistical tests applied to the Canadian data have not been filed.
[137] With regard to slide 18 of Exhibit 17, it is to be noted that the Canadian data only refers to the years 1993, 1997 and 2002, and the American data only refers to 1993, 1997, 1999, 2000, 2001, 2002 and 2003. At page 85 and following of the trial transcript of July 11th, 2005, reference is made to the results depicted in slide 20, which contains regression analysis results for the U.S. 1980 projection. Slide 21 contains the Canadian projection results for 1980.
[138] At page 88 and following of the trial transcript of July 11th, 2005, reference is made to paragraph 43 of the Bergesen Report, at page 13, which describes the regression analysis of Mr. Bergesen back to 1980, and to Exhibit 21 to his report. As a first general comment, it is noted that Jaguar automobiles has a small market share within the total premium automotive brands forming part of the analysis. From reference to Exhibit 18 to the Bergesen Report, one notes that Jaguar, in 1980, sold three thousand and twenty-three (3,023) cars in the U.S.A., of a total market of in excess of eleven million (11,000,000) cars; and when totalling the figures for luxury cars only, sold three thousand and twenty-three (3,023) cars of a total luxury car market of approximately two hundred and fifty thousand (250,000) automobiles, or approximately one point five percent (1.5%) of the luxury car market.
[139] With regard to the variables measured by Mr. Bergesen in doing his regression analysis, reference is made to paragraph 43 of his report and to page 88 of the July 11th, 2005 transcript, wherein he states the following:
To project Jaguar's brand awareness back to nineteen eighty (1980), the relationship between measured brand awareness from the BAV data, unit sales volume for a set of premium automotive brands was analyzed over the period nineteen ninety-three to two thousand and three (1993 - 2003). A model was developed to predict brand awareness in terms of unit sales volume using standard leased square regression.
[140] The regression analysis contained in exhibit 21 to Mr. Bergesen's report is referred to at pages 91 and following of the July 11th, 2005 transcript, which in turn refers to paragraph 46 of Mr. Bergesen's report.
[141] Mr. Bergesen has confirmed that he did not do a review of the activities of Jaguar Cars Company in relation to its brand extension in Canada.
[142] Other than the examinations of the trademark registrations provided to him by counsel, he has not done any empirical study of brand extensions that have been carried out by whatever automobile company for whatever period in Canada.
[143] Mr. Bergesen has acknowledged that there may be individual factors that moderate the relationship for one car maker versus another. But for the purposes of his regression analysis where he was seeking to project a yes or no answer in terms of awareness level, the assumption that he could use data points for awareness and unit sales for the luxury category was sufficiently narrowly defined for this purpose.
[144] Mr. Bergesen further acknowledges that he is assuming that the characteristics of luxury automotive brands high awareness and below market share, is consistent across this sample, and that this appears from the graphs that appear in Exhibit 21, because in those graphs he indicates awareness points for all models of luxury cars.
[145] With regard to Mr. Bergesen's analysis, Mr. Bergesen confirms that he started to do his analysis based on the actual data from market share for Jaguar, and making no other hypothesis outside of those ranges, and he is starting with a coefficient of ninety-three point twenty nine percent (93.29%) as a characteristic of this segment of the market, and he further confirms that awareness can never be below ninety-three point twenty nine percent (93.29%).
[146] The BAV data is not accepted by the Court in respect of the case at bar for the following reasons:
(a) It does not contain a demographically sufficient sample, as minorities and various ethnic groups have been excluded, and as Mr. Bergesen has testified, this may be the case in Canada as well.
(b) The regression analysis performed by Mr. Bergesen was, in the Plaintiff's submission, successfully challenged by Dr. René Darmon. Dr. Darmon's report, at paragraph 16, summarizes his findings:
The reported procedure relies on some strong implicit assumptions. It implies that:
(i) The same underlying relationship links brand awareness and sales for all the considered brands of premium automotive brands, including Jaguar. This is to discard the probable differential effectiveness of the marketing of these brands, competing in the same markets.
(ii) Brand awareness is linearly linked to sales volume. This can be challenged on sound theoretical grounds: sales volume should respond with decreasing marginal returns to brand awareness. Concave functions should be expected to more appropriately describe such relationships.
(iii) The Canadian market follows exactly the US pattern over time, with some effectiveness lag. There is little rationale provided as to why this could be true and why the same pattern could be already applicable 13 years before the first empirical observation.
Data and Analytical Procedures:
(i) The data set used for this analysis is a mixture of observations (the brands) and time series data. This is at variance with one of the basic assumptions of regression analysis which states that observations should be independent draws from one parent population. Although this should not substantially affect the regression equation estimates, it may, however, affect the accuracy of the predictions.
(ii) Furthermore, it may not be intellectually satisfying to regress brand awareness on sales volume. This implies that brand awareness is a consequence of sales. As specified, sales are a consequence of brand awareness and not the other way around. Obviously this procedure was followed because otherwise, the model would have been unsuitable for predictions. Had the regression been run in the proper direction, however, the relationship equation would have been different, although the strength of the relationship would have remained the same. Nevertheless, it is clear that the choice of an actual factor that causes brand awareness, such as advertising expenditures (rather than one of its possible consequences) would have produced more convincing results.
(iii) It might be argued that the direction of causation does not really matter as long as a relationship does exist between the two variables. This is true if the relationship is a strong one, which is definitely not the case here. In fact, only 8 percent of the variability in brand awareness is "explained" by sales volume. As specified, according to statisticians, it is known that making predictions with such a weak relationship (even though the relationship is statistically significant, like in the present case) can yield only unreliable results. This is evidenced in this case by the estimated equation model (reference is made to exhibit 21 of the Bergesen Report); particularly the sheet titled "Knowledge 2 Model, Summary Output, Regression Statistics".)
(iv) The estimated regression model is as follows:
Brand awareness (in percentage points)=93.29+0.000211 Sales (in units)
This model shows that brand awareness is largely independent from sales.
No sales at all (S=0) would correspond to a brand awareness of 93.29 percent! Any positive sales volume (within plausible ranges) would produce a brand awareness level only slightly above 93.29 percent. In the present case, the Jaguar sales volume of 3023 units in 1980 produces an estimated brand awareness index of 93.93! (in the U.S.A.) In other words, according to this model, brand awareness is pretty insensitive to sales volume. Consequently, why use sales volume for predicting brand awareness?
In other words, any sales forecast based on this formula is bound to be above 93.29%, irrespective of the sales volume figure used for 1980! An index forecast will reflect that the average notoriety index of the nine automotive brands between the 1993-2003 time period is high (around 90%). Consequently, the reported analysis amounts essentially to saying: "Nine premium automotive brands had (in average) high brand awareness indices between 1993 and 2003. Consequently, the notoriety index for Jaguar in 1980 (or any other year for that matter) must also have been at about the same level.". Needless to say that such a statement is unwarranted.
(v) It might be argued that the weakness of the relationship is automatically reflected in a larger computed confidence interval around the estimate. In this case, the .95 confidence interval is estimated at + or -9.58 percentage points around the estimated value. In other words, the confidence interval for this estimate runs from 84.35 and 103.51 percent!!! Obviously, no observation can be larger than 100 percent brand awareness. This interval is a clear indication that the standard error of the estimate is not constant (an essential condition for accurate predictions, a problem known as heteroscedasticity in statistics), and that the confidence interval computed at the prediction level could be much higher than reported. This is confirmed in exhibit 2 to Dr. Darmon's report, which shows that the residuals around the regression equation are not equally distributed. Larger residuals are observed at smaller volume levels and vice versa. (In other words, glancing through the data suggests that the error term for a low sales volume (such as 3 023 units) could be as large as +8 or -25 percentage points. Assuming that the rest of the analysis was correct, which analysis was not agreed to by Dr. Darmon, this would bring the most conservative estimate at 68% brand awareness (and not 84%). However, the analysis appears incorrect, as stated in the affidavit of Dr. Darmon.
(vi) The transposition of the USpredictions to the Canadian case is an ad hoc procedure which, as already mentioned, makes the strong assumption that the observed differences of trends in the two countries between 1993 and 2003 were already operative in 1980, 13 years before.
[147] With reference to slide 41 of Mr. Bergesen's Exhibit 17, the reference is made to Dr. Darmon's response to question 278 at page 104 of the trial transcript of July 14th, 2005, in which Dr. Darmon states that it does not mean that when you have such a similarity of pattern, that it holds with regard to a very specific brand for a very specific year.
[148] With regard to paragraph 16(2)(e) of Dr. Darmon's report, and in particular with that part of the paragraph which states: "In other words, the confidence interval for this estimate runs from 84.35 to 103.51%...", reference is made to questions 285 to 288 at page 187 and following of the trial transcript of July 14th, 2005, as well as to Dr. Darmon's responses to the Court's questions at question 666 and following, to question 677 at pages 199 and following of the transcript.
[149] In further relation to paragraph 16(2)(e) and that portion thereof which states "that the interval is a clear indication that standard error is not constant", reference is made to Dr. Darmon's responses at questions 705, 722 and 726, and with regard to the heteroscedasticity problem, again, reference is made to Dr. Darmon's responses to questions 685 and 686 at pages 208 and following of the July 14th trial transcript.
[150] Dr. Darmon's report asserts that the data which have been used are inadequate for the foregoing purpose, and that the regression and backward extrapolation techniques which have been applied twist the data to obtain information that is just not there.
The Report of Professor Moorthy
[151] With regard to paragraph 16(1)(a) of the Darmon report, Professor Moorthy responds to questions 22 to 25 at page 62 and following of the trial transcript of July 15th, 2005. At question 25, Professor Moorthy describes the manner in which he would correct Dr. Darmon's concerns as expressed in paragraph 16(1)(a) of Dr. Darmon's report. Therefore Professor Moorthy is implicitly admitting that the Bergesen regression analysis is deficient.
[152] With regard to paragraph 16(1)(b) of the Darmon report, Professor Moorthy responds at questions 29 to 31 at page 68 and following of the trial transcript of July 15th, 2005. His response to question 29 is as follows:
Q. And then, if we look at paragraph 16(1) b) of Doctor Darmon's Affidavit, how could you deal with his concern here?
A. Well, you know, these are the natural checks and balances that every modeller has to deal with when they're dealing with developing the best regression model for a given set of data.
One would want to check for the concern that Professor Darmon has expressed, which is that, you know, the relationship could be concave.
But very simple checks are available to deal with that. You introduce a square term to the regression and see what the coefficient of that square term turns out to be. If it turns out to be insignificant, then the relationship is primarily linear. If the coefficient of the square term turns out to be positive...
...
at Q. 31
A. Yes. So, as I was saying, there are simple checks that one could do to verify whether the data in fact show concavity between awareness and sales volume or not. Okay? And it's a fairly straightforward test that one could do.
[153] What is interesting to note is that what Professor Moorthy is doing is suggesting corrections to the Bergesen regression analysis, by addressing Dr. Darmon's critical findings. Suffice it to say that neither Professor Moorthy in his report, Exhibit DT 17, nor Mr. Bergesen, carried out what Professor Moorthy is suggesting should have been done.
[154] With regard to the outlier issue, in response to question 59 at page 79 of the aforesaid transcript, Professor Moorthy states:
A. Well, what you do with outliers is to assess what impact the outlier is having on your regression.
You obviously don't want the entire regression to be governed by this outlier, if it is in fact an outlier, so you're trying to assess -- I mean, the simple way to do it, is to test what would happen to the regression if you were to take care of this outlier and see to what extent the regression line moves by getting out that particular... what seems like a discrepant observation.
[155] With regard to paragraph 16(1)(c) of the Darmon report, the Court is referred to Professor Moorthy's responses to questions 72, 74, 76, 77 and 78 of the trial transcript of July 15th, 2005. It should be noted that as part of his response to question 78, Professor Moorthy, in addressing the similarities or otherwise of the U.S. and Canadian markets, states as follows:
But, of course, there could be some differences, and I would want to look into that. I mean, there are differences in weather patterns, for example." Mr. Bergesen did not do that in his regression analysis.
[156] In response to question 80, of the July 15th transcript, when Professor Moorthy is asked what he considers to be material distinctions between the Canadian and U.S. markets, he responds to question 81 as follows:
Sorry, sorry, two thousand and three (2003). But the basic structure held, I presume. The difference that I'm alluding to is the one which I mentioned in the affidavit as well, which is that the luxury segment of the market expanded significantly from nineteen eighty (1980) to ninety-three ('93), and many more players entered the market. For example, you know, many of the Japanese cars which are now making luxury cars were not there in nineteen eighty (1980), which came on the market in ninety-three ('93). It was there in ninety-three ('93), but not in nineteen eighty (1980).
[157] With regard to paragraph 16(2)(a) of the Darmon report, reference is made to Professor Moorthy's responses to questions 84, 85, 86, 87, 88, 89, and 90, commencing at page 90 of the trial transcript of July 15th, 2005. The following should be noted from Professor Moorthy's responses to question 90:
at page 93
The concept is whether, you know, the error terms in regression satisfy the assumption of independence or not.
at page 94
...the lack of independence impairs your ability to draw inferences, but it does not affect your best estimate based on the numbers you have.
[158] The foregoing is an implicit criticism of the Bergesen regression analysis.
[159] At question 92 at page 94 of the trial transcript of July 15th, 2005, Professor Moorthy is questioned and he is asked to recall that Dr. Darmon stated that you should run a separate regression on each brand on each year. In response to question 93, Professor Moorthy states:
... As I said before, you could control for that through dummy variables, you take into account the time aspects of the data through sort of a time-plan term. You could do that.
Mr. Bergesen did not do that in his regression analysis.
[160] At question 94 on page 97 of the trial transcript of July 15th, 2005, Professor Moorthy is asked whether it is common to run a regression using observations arising naturally in the real world and used as they come. In his response to question 96, Professor Moorthy states:
... There are ways to control for problems which might arise in dealing with data as they come. And it's a practical issue, I mean.
Mr. Bergesen did not do that.
[161] In response to question 100 put by the Court, at page 99 of the trial transcript of July 15th, 2005, the Court, specifically at question 102 asks: "Then wouldn't it be perhaps inadvertently creating a situation of error by not having it distinct and on its own?" The response is "yes".
Professor Moorthy responds to questions 103 and 104 as follows: "Right, I mean, you know, the modification of the regression to address one of Dr. Darmon's concerns which he expressed in terms of the brands being different... is a concern of the kind that you're talking about."
Professor Moorthy continues at page 101: "So, for those uniquenesses, that's exactly the reason why you have the dummy variable technique, to allow the data to recognize that their might be something unique about these cars here."
[162] And further, in his response to question 107 by the Court, the Court asks:
Exactly. So one would have to determine how far you want the results to be together and how far you would want them to ... when you would want them to be distinct...
Professor Moorthy's response is: "Absolutely".
[163] Mr. Bergesen did not do that.
[164] At question 112 on page 102 of the trial transcript of July 15th, 2005, Mr. Wilson asks Professor Moorthy with regard to Dr. Darmon's statement that he had a concern that years are not independent. Professor Moorthy's response to this question is as follows:
A. Yes. Again, it's a matter of, of recognizing that and taking that into account in the regression. Okay.
Again, a very common technique is available to deal with that issue, and that's using time as a variable. You could have a time-trend term in the regression, recognizing that some data is coming from ninety-three ('93), the other data is coming from ninety-four ('94), ninety-five ('95), ninety-six ('96) and so on.
So, the passage of time can be recognized in the regression and accounted for, and that would most likely get rid of this lack of independence problem.
[165] At question 122 of page 107 of the trial transcript of July 15th, 2005, it is put to Professor Moorthy that Dr. Darmon stated that no approximate awareness of Jaguar's fame in 1980 can be determined by the Bergesen analysis. Professor Moorthy's comments are solicited. His response is as follows:
I mean, you could determine it. I mean, you know, It's a separate question whether, you know, to what extent you have confidence in that estimate. Okay. But you could certainly determine it, and it's just one piece of evidence amongst many.
[166] Further, in response to question 123, at page 108, Professor Moorthy responds as follows:
Of course, if you're trying to extrapolate from one period to a very distant period, you will have less confidence than if you were to do it in a more proximate prediction.
[167] At question 125 on page 108 of the trial transcript of July 15th, 2005, Mr. Wilson refers Professor Moorthy to page 5 of the Darmon report, wherein Dr. Darmon is concerned with the strength of the relationship between awareness and the sales. When asked what Professor Moorthy would do to address Dr. Darmon's concerns, he responds:
at page 109
Well, many cases when you do regressions, what you find is that you fix one problem, you fix many problems. So, you know, we've alluded to many issues here, in terms of brands being different, we talked about the lack of independence, and we talked about the eight percent (8 %), only eight percent (8 %) is explained by sales volume.
I wouldn't be surprised if you were to fix those other two problems and you found that R squares went up quite high.
The Court:
Excuse me just for a moment.
Q. [126] Wouldn't that significantly change your results?
A. I mean, it will give you more confidence in what you're doing.
Q. [127] And wouldn't it then significantly change your results?
A. No, it won't change the... No, it may or may not. I mean, it may or may not.
Q. [128] But it may change your results?
A. It may change your results.
[168] When asked at question 131 at page 110 of the aforesaid transcript what he would have done in the above-regard, Professor Moorthy responds as follows:
A. As I was saying, you know, the fact that only eight percent (8%) of the variability in brand awareness is explained by sales volume suggests there may be other factors which are driving brand awareness. Okay.
So, I would, as a first cut, recognize that there is a time trend here, okay. People are becoming more aware of the brand as time goes on.
So, I would introduce that as a variable. We have data on that. We know that, in ninety-three ('93), we had an observation awareness and we had a ninety-four ('94) observation awareness, and ninety-five ('95), ninety-six ('96) and ninety-seven ('97) and so on.
So, I would recognize that time is passing, and that might have an effect on awareness, and I would recognize that in the regression. And I would think that by doing that, I might get a much better variability explained in awareness in this modified regression.
By recognizing brand differences also, I would probably improve the fit of the model and explain more variability.
The Court:
Q. [132] I'm sorry, something about the model; I didn't catch the word before the word "model".
A. Fit.
[169] At question 135 on page 111 of the July 15th, 2005 trial transcript, with reference to paragraph 16(2)(d) of the Darmon report, Mr. Wilson informs Professor Moorthy of the concern of Dr. Darmon with independence between awareness and sales. He is asked how he would deal with this concern.
Professor Moorthy responds as follows:
Yes. You know, that is not the primary concern here as such. And our goal is to predict what the awareness of Jaguar was in nineteen eighty (1980).
How we predict it is a matter of how you do it. I mean, it's not sacrosanct that it has to be predicted through sales volume. It just happens to be the case that we have data on sales volume, so you certainly would include that.
And as I've said before, there are good reasons to believe that sales volume could, in fact, affect awareness through visibility and all the other reasons I gave earlier about awareness and advertising and so on.
So, you certainly would want to include sales volume, but if the data are showing you that the relationship between sales volume and awareness is not really high, I wouldn't be too disappointed with that. I would say that my goal is to be able to develop a good regression model which estimates awareness in nineteen eighty (1980). And there are many ways of doing that, yes. Okay...
[170] At question 137, page 114, Mr. Wilson solicits Professor Moorthy's comments on the suggestion that Mr. Bergesen's study was not state of the art. He responds:
Well, regression is a standard technique and continues to be applied and used. So, in that sense, is state of the art. Of course, improvements are being made to how we use the technique and those are happening constantly.
So, you know, the way Mr. Bergesen ran the regression would certainly be my first-cut analysis, but I would go beyond that and make modifications to the model, and do other things as well. Whether at the end of the day all this modification will change my opinion or not remains to be seen, but there are many variations which I would explore.
[171] In response to the Court's questions at page 119 and following of the trial transcript of July 15th, 2005, (questions 148 to 157), as to what Professor Moorthy would have done with the student that came to him with the Bergesen Report, the responses are contained at the aforesaid questions 148 to 157, and particularly at question 151, (page 120) he states: "Yes, I would ask him to do the checks and balances which are required as part of regression..."And at question 152 (page 120):
Checking what the residual patterns look like, you know; the Error terms; the residual patterns; what the graph looks like; does it show evidence of heteroscedasticity or not; whether it shows independence of Error terms or not; whether the relationship between sales and awareness is linear or not, okay.
I mean, all of these concerns, you know, would need to be examined in terms of, as I said before, the distinction between the best estimate that you have for awareness versus drawing inferences about how valid those estimates are, or how much variability there might be in those estimates.
So, I would ask him to check for those things to see whether it makes a difference or not. I'm not expecting one way or the other at this point, whether it would make a difference or not. But I would ask him to check those things.
[172] At question 159 on page 122 of the trial transcript of July 15th, 2005, Mr. Wilson refers Professor Moorthy to paragraph 16(2)(e) of the Darmon report, dealing with heteroscedasticity and the R-square problem. Professor Moorthy is asked how he would deal with these problems, and responds as follows:
...Again, there are ways to correct for that, and these are standard techniques available which have been known for tens of years. And, you know, in this particular case, I would guess that, you know, having, correcting for the fact that there are different brands involved, using dummy variables, correcting for the fact that there is a time series involved using time as a variable, the problem would be substantially ameliorated.
[173] At question 162 on page 127 of the trial transcript of July 15th, 2005, Mr. Wilson informed Professor Moorthy that Dr. Darmon had showed great concern that the confidence interval could run over one hundred percent (100%), and requested his comments. Professor Moorthy's comments were as follows:
Well, yes, that happens here because, of course, you know, we're dealing with percentages here, and percentages over a hundred percent (100 %) obviously don't make sense...
...Again, there are ways in which we could have ensured that the estimates would never go beyond a hundred percent (100 %) or below zero percent (0%). Just doing one more cut on the regression to do that...
[174] At question 230, at page 142 and following of the transcript, Professor Moorthy was asked for his view as to the effect of the accumulation of the various criticisms by Dr. Darmon on the Bergesen results. Professor Moorthy responds at page 143 as follows:
As I said, there are ways available to deal with those criticisms. And I would, if I had the time to do it, I would redo the regression to see what effect of those criticisms are, and how to overcome them.
[175] Dr. Erich Joachimsthaler examined the BAV data from 1993 to 2004. His evidence is set aside for the same reasons as specified in respect of Mr. Bergesen.
[176] In summary, the evidence given by Professor Moorthy has validated Dr. Darmon's Report, and invalidated Mr. Bergesen's Regression Analysis, the effect being that Mr. Bergesen's Regression Analysis should be totally disregarded by this Court.
[177] One exception remains, the Landor Survey. This survey was not effected for the specific purpose of litigation and its validity has been demonstrated in that it is the only survey that dates from 1980's for information with respect to the 1980's (rather than a survey effected, years after the facts that would have been sought).
[178] The Landor Survey in the 1980's was a breakthrough in measuring brands from a consumer's perspective.[8] A Landor Survey was reported in the Wall Street Journal in 1988 and circulated in Canada. This article quotes the survey performed in 1988 in which the trademark JAGUAR by Jaguar Cars is listed as the 17th "best-known-and most highly regarded-brand name in the world, according to a survey of 3,000 consumers". The trademark JAGUAR is just behind NESTLE and ROLEX and just ahead of XEROX, LIPTON and HILTON.[9]
Conclusion of the Court - Re Survey Evidence
[179] The Court, in this instance, as a trier of fact, had the distinct advantage of listening to all of the witnesses and, when necessary, questioning them. This listening and questioning included the expert witnesses discussed above.
[180] Thereby, the Court reached the conclusion that it is not in agreement with the methodology of the defendants' experts, due to that methodology and the methodology alone, rather, it endorses the critique of the expert witnesses of the Plaintiff. The survey evidence of the Defendants, in its minute details, as it unfolded, day by day, hour by hour, at great length, may have, at the most initial
outset, shown potential promise in addressing the core issues but, on examination, in essence, contained precious little significance, if any, (other than occasionally providing general marketing principles as confirmed and nuanced by other evidence, doctrine and jurisprudence).
[181] However, the Defendants' witnesses, other than its expert witnesses, provided pivotal evidence with respect to the fame of Jaguar Cars in Canada and elsewhere for the relevant time-frames, in addition to the important specific time and place related evidence of its well-documented foray into accessories.
[182] Jaguar Cars have sold automobiles and auto accessories continuously in association with the trademark JAGUAR internationally to about 95 countries including Canada since 1936.[10] JAGUAR Cars has been known as having a sports (racing) car since 1936.[11]
[183] Jaguar Canada sells its products, including automobiles, automobile accessories, automobile parts and personal accessories received from Jaguar Cars or its licensees such as Unipart Group Unlimited and Jaguar U.S. to its licensed dealer distributors throughout Canada, who in turn sell the products to end user customers.[12]
[184] Vehicle sales to Canada rose steadily from about 220 in 1950 to about 300 in 1980.[13]
[185] Based on known selling prices from England and Canada rough dollar sales figures show a reasonably steady rise from about $50,000 sales in 1950 to about $10 million in 1980.[14]
Jaguar Cars considered luxury vehicles
[186] To the general public, Jaguar cars have maintained an image of luxury. The parties agreed that Jaguar is a known luxury automobile brand along with - Mercedes-Benz; BMW; Lexus; Infinity; Porsche; Volvo; Audi; Bentley; Rolls Royce; Saab; Ferrari; Aston Martin. A luxury automobile is agreed to be one with many luxury features, that is, features that are not necessary for driving but increase the enjoyment of the driving experience... and is generally priced above $40,000.00 (in 1997 dollars).[15]
[187] The witnesses from Jaguar Cars testified as to the steps taken by Jaguar Cars to maintain a consistent corporate image and an image of the pedigree, refinement, handling and performance of the cars. A Jaguar owner is sold his car by Jaguar Cars which it considers to make a statement of affluence and status and an appreciation of design and performance. The E-type, brought out in the 1960s was described as the world's most beautiful car and has been placed in the Museum of Modern Art. "It was just like a bombshell".[16]
[188] While Remo brought out some evidence of quality problems in the late 1970s and early 1980s, there was no evidence that this affected the overall consumer perception of the affluence and quality attached to the Jaguar brand.
[189] The contrary is shown by looking at just a few of the available newspaper and magazine articles from the 1980's, the accuracy of which was confirmed by Mr. Mackie and Mr. Robertson, for example:[17]
(1) "They make some very good motor cars, but, you know, one of the things about a Jaguar, of course, is that you don't just buy the car, you buy the image that goes with it. You buy a way of life and you buy of viewing yourself."[18]
(2) "Few vehicles evoke such glamorous associations as does the Jaguar. The name and the cars have a smooth feline sensuousness and a cachet so powerful that just mentioning it congers up scenes of flying along the Côte d'Azur under a full moon or purring down Rodeo Drive in Beverly Hills. Yes, the name has magic and the most voluptuously shaped Jaguar of them all was the E-Type, also known as the XKE, which debuted in 1961." ... "The performance of the E-Type was, of course, outstanding as one would expect from a Jaguar. Road & Track tested the E-Type in their September, 1961 issue and for comparison purposes also carried road tests of the XK series of cars."[19]
(3) "For those enthusiasts who will be attending the Guild Inn Meet, the Jaguar is more than a machine, it's a legend. When the last great Jag, the E-Type was introduced in 1961, it's space-age design set the automotive world at whirl. By the time the last one came off the production line in 1974, the car was already considered a classic." ... - "Through the 1960s and 70s, starlets on their rise to fame posed for a mandatory Jaguar shot. In popular literature, movies and T.V., macho heroes leered from the cockpits of their shiny red E-Types, the car has power, a symbol of their virility and life in the fast lane. Great racers. Fuel was added to the Jaguar Legend in the heady days of the fifties and sixties, when the Jaguar Marque was associated with racing greats like Stirling Moss, Phil Hill and Jackie Stewart."[20]
JAGUAR cars have become famous in 1980, 1991 and are at present
[190] The evidence establishes that the JAGUAR cars brand had become famous in Canada in 1980, 1991 and at present. The evidence included Agreed Facts, witness testimony, evidence of promotions and evidence of reputation.
[191] It was agreed that Jaguar Cars owned all rights in a family of distinctive registered trademarks in Canada which included the word JAGUAR or a design of a Jaguar, including the right to authorize others to sell merchandise bearing the marks.[21] These are reproduced at Schedules A and B to the Amended Statement of Defence and Counterclaim. Other Agreed Facts are referred to below.
[192] Jaguar Cars has advertised and promoted its JAGUAR cars internationally for over 60 years.[22]
[193] Jaguar Cars owns registrations for the trademark JAGUAR for automobiles in approximately 95 countries other than Canada. Such registrations have been successfully enforced in countries such as the United States, Singapore, Sweden, Saudi Arabia and China, usually on the basis that the JAGUAR mark is very well-known.[23]
[194] A vast range of promotions have been used for Jaguar cars around the world. This included motor shows, motor racing, brochures, press segments, advertisement in the press, special events, radio, television and films, publicity reprints, sales manuals and car manuals.[24]
Promotion in Canada
[195] There was clear evidence of significant promotion of Jaguar Cars in Canada before 1980 and after 1980 found in the following Agreed Facts alone.
(1) Jaguar Cars has advertised and promoted Jaguar Cars' automobiles in association with the trademark JAGUAR in Canada for over 60 years.[25]
(2) Jaguar Cars' automobiles and/or automobile accessories and parts have been promoted in Canada in association with the trademark JAGUAR since at least 1970 by the following means. The exhibits and productions referred to below accurately disclose some of those means:
(a) Commercials and/or programming broadcasts from: Radio stations and Television stations including: The Sports Network ("TSN"); CBC Newsworld; Local Toronto, Ontario news broadcasts; TVO; Bravo; CFTO; CBLT; CBMT; CFCF; BCTV; CBUT (VSA4.90);
(b) Print advertisements namely,
(i) Flyers (VSA4.1);
(ii) Yellow page advertisements (VSA4.14);
(iii) Sales Bulletins (VSA4.1); Advertising Mat Sheets (VSA4.8);
(iv) Press Releases (VSA4.10); Magazine inserts (VSA4.100);
(v) Newspaper advertisements in the: Financial Post Marketplace Financial Times; Financial Post Weekly; Financial Post Daily; Financial Times; Toronto Star; Calgary Herald; Ottawa Citizen; Quebec Le Soleil; Les Arraires; Kitchener/Waterloo Record; London Free Press; Sarnia Observer; Winnipeg Free Press; Edmonton Journal; Victoria Times Colonist; Western Living Les Affaires; Globe & Mail; Canadian Jewish News; Montreal Gazette; Montreal La Presse; Vancouver Province; Vancouver Sun; Vancouver Courier; Halifax Mail Star; Windsor Star; Saskatoon Star Phoenix; Kelowna Daily Courier; North Shore News; Richmond Review (VSA4.9);
(vi) Magazine advertisements in: Macleans; Time; Canadian Business; ROB Magazine; Inside Guide; Canadian; Privilege; Travel on Business; Saturday Night; L'Actualite; Revenue Commerce; Inter Canadian; EnRoute; Financial Post Magazine; Financial Post Special; Financial Post 500; Financial Commerce Le Magazine Affaires; Financial Post Marketplace; Financial Post Moneywise; Financial Times; Equinox; Revenue Commerce; Altitude; Vista; City & Country Home; MTL Magazine; Elegant Life; Toronto Life; Punch Doctor; Score; Tennis Canada; Royal Winter Fair; Domino; Point of View; Point de View; Canadian Geographic Royal Horse Show Program; Western Living; Commerce; Le Magazine Affairs; Canadian Lawyer; Business Quarterly; Revue Commerce; Decormag; Mississauga Business Report Magazine; Car Guide/Buyer's Guide (French & English); West Van Lifestyles; Canadian Art; Performance; B.C.C.T.C.; World of Wheels; Luxury Car Guide; Autovision; Cinema Guide; Canadian Inflight Magazine; Car Guide; Tennis; Club Empress Video Programme; World Economic Affairs; Road & Track; Car & Driver; Motor Trend; USA Today (VSA4.12);
(vii) Calendars (VSA4.12);
(viii) Banners (VSA4.25);
(ix) Car Show Brochures and Displays for accessories (VSA7.4);
(x) Binder Inserts or Mini-prints (J28); and
(xi) Billboards;
(c) Flags (VSA4.19)
(d) Direct Mail Videos (VSA4.99);
(e) Films and videos loaned to Jaguar car clubs;
(f) Annual automobile shows in major cities and regional centres (VSA4.5);
(g) Canadian National Sportsman's show (VSA4.6);
(h) Show room displays (VSA4.25);
(i) Charitable events, such as parades (VSA4.12; Manuel Affidavit, para. 8);
(j) Racing events (VSA4.40); and
(k) The internet (BM1.1);
(l) Manuals, such as those listed in BM10[26]
(3) Between 1970 and 1997, Jaguar Cars and Jaguar Canada or its predecessors placed in excess of 270 advertisements for Jaguar Cars' automobiles in association with the trademark JAGUAR in the Montreal Gazette.[27]
(4) Jaguar Cars' automobiles bearing the trademark JAGUAR have won victories at Le Mans, a world famous endurance race for automobiles held in France each year, in the years: 1951, 1953, 1955, 1956, 1957, 1988 and 1990, and the World Sports Car Championships in 1988 and 1991.[28]
(5) Jaguar Canada or its predecessors have displayed for sale its automobiles in association with the trademark JAGUAR at annual car shows open to the public in major cities and regional centres across Canada including Toronto Sportsmen's Show on the Canadian National Exhibition grounds throughout the 1960s to 1972; Toronto International Automobile Show since 1972 to present; Montreal International Automobile Show since the first annual show in 1969.[29]
(6) Motor magazine with references to JAGUAR cars circulated in Canada at least as early as the 1950's.[30]
(7) Since at least 1967 to present, Jaguar Canada Inc. and its predecessors and successors have retained the services of an advertising agency to promote the sale in Canada of cars in association with the trademark JAGUAR using such media as newspapers, magazines and radio.[31]
[196] There was evidence by Mr. Mackie, Mr. Green, Mr. Robertson, Mr. Cox and Mr. Maries as well as further Agreed Facts about promotion of Jaguar Cars before 1980 and after 1980, including the following promotion: general[32]; newspapers[33]; magazines[34]; websites[35]; events[36]; racing[37]; car and other shows[38]; car brochures[39]; ad agencies[40]; flyers[41]; dealer promo[42]; direct mail[43]; sales bulletins[44]; yellow pages[45]; press releases[46] and manuals[47]
[197] There was further strong independent evidence that the Jaguar Cars trademark JAGUAR was well-known, indeed famous, in 1980, 1991 and at present.
[198] The Agreed Facts together with testimony of Mr. Mackie, Mr. Robertson, Mr. Maries and Mr. Clausager showed extensive documentation circulated to the Canadian public and referring to Jaguar Cars both past and present; including newspaper articles since the 1940's[48], books, some published before 1980[49], magazines[50], films with Jaguar cars in them, many released before 1980[51], videos[52], car clubs dating back to 1959[53], websites[54], CD Roms[55], Royal warrant[56], post cards[57] and birthday cards[58].
[199] Even newspaper articles published in the 1980's and 1990's showed the fame of the mark before 1980, for example:
(1) "Jaguar, a famous name in the luxury car market..." [Globe & Mail 1984][59]
(2) "The renowned British car maker was split from British Leyland in 1984..." [TorontoStar 1988][60]
(3) "Auto/Jaguar, Long a Prestige Name in Luxury Cars" [Globe & Mail 1992][61]
[200] There are well over one hundred books about the history of Jaguar Cars.[62] Some published before 1980 include: The Jaguar Companion, Kenneth Ullyett, Stanley Paul Publishing, London, 1959[63]; Jaguar: A Biography by Lord Montagu of Beaulieu, (3rd edition), Lord Montagu of Beaulieu, Cassell & Company Ltd. London, 1967[64]; The Jaguar Story, Joseph Wherry, Chilton Book Company, Philadelphia, 1967[65]; The Complete Official Jaguar "E", Robert Bentley Publishing, Roberts Bentley Inc., Cambridge, Massachusetts, 1970[66]; The Jaguar XK, Chris Harvey, Oxford Illustrated Press, Oxford, England, 1978[67]; and E-Type: End of an Era, Chris Harvey, St. Martin's Press, New York, 1977[68].
[201] Even books published after 1980 clearly show the reputation of the JAGUAR mark before 1980, for example: Jaguar, the Legend, Jonathan Wood, Paragon Books, Bristol, England, 1997[69]; Jaguar History of a Classic Marque, Philip Porter, Quintet Publishing Limited, 1988[70]; Jaguar, The Definitive History of a Great British Car, Andrew Whyte, Patrick Stephen Limited, 1980[71]; and Jaguar, Lord Montagu of Beaulieu, 6th ed. Prince Michael of Kent, Quiller Press Ltd., London, 1986.[72].
[202] Mr. Craig Manuel viewed a Jaguar car in many films and used a well respected movie guide to determine distribution dates. Seven were distributed before 1980.[73] Distribution of these films in Canada on about those dates is accepted as a matter of judicial notice.
Jaguar Cars has been connected with personal accessories including Luggage Wares since at least the 1950's
[203] Jaguar Cars has a long history of connection with personal accessories. Suitcases were made available through Jaguar Cars catalogues and parts manuals as early as the 1930's and they were circulated to dealers in Canada from at least the 1950's. For example exhibit VS101, a 1949 spare parts catalogue reprinted in 1958 and J110, a 1950 spare parts catalogue reprinted in 1958, both refer to Canada in the document. Mr. Green had such documents available at Jaguar Canada in 1968.[74] There is an Agreed Fact as to circulation in Canada in the 1950's of articles showing suitcases for Jaguar Cars.[75].
[204] Vehicle wallets bearing the trademark JAGUAR containing instruction manuals and the like have been provided with Jaguar Cars since the 1950's.[76] Model Jaguar cars have been sold since the 1950's and continue to date, some with removable luggage in the trunk.[77] Leather key fobs with the trademark JAGUAR have been available since the 1960's.[78] Other personal accessories sold by Jaguar Cars in Canada since at least the 1970's include travel bags, lighters, pens, clothing, golf shirts, T-shirts, hats, jackets, cigarette lighters, money clips, ties, belts, tie bars, and cufflinks.[79]
Jaguar Cars expanded its accessories line in the early 1980's
[205] Such merchandise included life style items, luxury items, items that would be consistent with the promoted image of the brand Jaguar Cars - the type of items later found in the Silver Brochure (J16) - the kind of products that supported the kind of life that the Jaguar driver would be living in accordance with Jaguar Cars' promotion. This was one of the first things that Jaguar did when it gained its independence from British Leyland in 1980. Mr. Maries moved into Jaguar's premises in March 1981. Jaguar found a partner company, Sotheby Handbags, which had been buying Jaguar leather cutoffs and turning them into handbags and purses. Mr. Gucci in the US, was hired to assist with the program by sourcing product. This led up to the Silver brochure (J16).[80]
[206] The Silver Brochure, prepared in England in 1981 was Jaguar Cars' first effort to promote the Jaguar Collection, and it was distributed worldwide. It was used in Canada in 1982 and the Jaguar Collection line of products was established in Canada by 1984. The brochure contained a complete range of merchandise intended to reflect 'the aspirations or life style that included luxury items, the kind of life a Jaguar driver would be living.[81] This brochure was sent out to dealers in Canada who showed the merchandise. While not everything in the brochure was necessarily sold, every item was made available to the dealers. Jaguar Canada received this document then placed an order for a minimum quantity of each item. Then it would depend on how many were bought by the dealer network as to how many more items would be ordered.[82] The Silver Brochure included the following items:
attaché cases, briefcases, handbags; licence cases, wallets, cardholders; keyrings, keycases; garment bags, suitcases, flight bags, and other luggage; belts, ties, handkerchiefs; scarves, watches, umbrellas; address and note books; leather jackets, bathrobes.
[207] The Jaguar Collection was adopted by Jaguar Canada with accessories prior to that point. Mr. Mackie of Jaguar Canada had discussions with Jaguar Cars in 1981/82 prior to the launch of Jaguar Collection because he foresaw a danger of national sales companies pursuing their own course around the world. Jaguar Cars considered it would be better if the launch was coordinated from the centre at Jagaur Cars in England and pushed out to the markets around the world and that is what happened.[83].
[208] The sales of JAGUAR COLLECTION personal accessories through dealers have occurred continuously from 1982 to the present, expanding each year.[84]
[209] Parallel to the personal accessories brochures there was a licensing program where approved parties were sourcing and distributing other specialty merchandise. By the late 1980s, for licensing alone, Jaguar was making 2.5 million Cdn. bottom line extra income for the company. Licensees included: early 1980s, watches (shown in some of the Jaguar brochures); in 1984, spectacle frames and sunglasses (shown in some of the Jaguar brochures); in 1988 fragrances; in 1994, formal clothing; and in the 1980s a number of model car licenses (some shown in some of the Jaguar brochures). There were also a number of smaller licenses. With some local exceptions, by and large licensed products were sold worldwide including Canada. The licensed products have been advertised and promoted, since 1981, both by the Jaguar company and the licensees and their distributors. The types of promotions include in-store promotions, dealership promotions, motor shows, and at some stage television and radio was used.[85]
[210] Sales of personal accessories before 1985 were in the order of magnitude of $50,000 per year and increased to about $500,000 per year by 1990.[86]
[211] JAGUAR Cars personal accessories have been sold primarily through dealers in Canada.[87] Jaguar Canada has also had direct sales of its personal accessories.[88]
[212] JAGUAR Cars personal accessories have been promoted by brochure, catalogue, direct mail, showcases and marketing programs in Canada by Jaguar Canada and its dealers.[89] Jaguar witnesses provided more detailed information about promotion of personal accessories through brochures and catalogues,[90] dealer materials,[91] and showcases.[92] Licensees of Jaguar Cars' have also been promoting accessories bearing the JAGUAR trademark, including model cars, clocks, watches, fragrances, clothing, glasses and other items.[93]
The expansion of Jaguar Cars in the early 1980's and thereafter into a broader range of personal accessories including Luggage Wares was a natural expansion and commercial value to JAGUAR Cars connection for consumers with the famous JAGUAR car mark
[213] The witnesses for Jaguar Cars showed that it is, and has been since at least 1980, a natural brand extension or expansion from luxury cars into Luggage Wares, defined as:
luggage, bags, cases, sacs, tote bags and other wares used to contain or hold smaller wares; attaché cases, briefcases, handbags; school bags; licence cases, wallets, cardholders; keyrings, keycases; garment bags, suitcases, flight bags, folios, keyfobs, sports bags; driving licence cases, wallet cases, business card holders, belts, credit card holders, passport holders, beauty cases, document cases, pocket wallets; address books, note books, camera bags; knapsacks, carry-ons, travel bags, sport bags, tennis bags, cosmetic bags/pouches, money belts, waist bags, lunch bags, and computer cases.
Uses of Luggage Wares by other car companies
[214] The Agreed Facts showed that well-known car companies commonly have sold Luggage Wares since long before 1980 to present, and it was natural for Jaguar Cars to do so in 1980.
[215] The Agreed Facts concerning registration and use around the world[94] show the industry trend by car manufacturers before 1980 to expand to personal accessories, including luggage. There are at least 10 examples in U.S. registrations before 1980.[95] These car companies are all competitors of Jaguar. All sell luxury cars. All sell personal accessories items, many including luggage, wallets, handbags, and briefcases. Some luxury car manufacturers have designed luggage for their vehicles since at least the 1930s. For example in Canada:
(1) Starting in 1933, registered in 1969 MERCEDES-BENZ was used for key rings, key holders, document and map cases, bags, cases and trunks sold in Canada;
(2) In 1958, VOLVO was registered in Canadafor boxes of artificial leather for storage and transportation of various types of small articles of a personal nature and for mechanical use, baggage bags, trunks and suitcases; and
(3) Starting in 1973, registered in 1980 JEEP was used on duffle bags, hand bags, tennis bags, airline bags, tote bags, wallets, key cases, back packs sold in Canada.
[216] The fact witnesses from Jaguar Cars were well aware of the sale of personal accessories sold by competing car companies before 1980.[96]
[217] Remo acknowledges that Jaguar Cars is the owner of a JAGUAR family of registered trademarks (Schedules A & B to the Defence).[97]
[218] Remo has acknowledged that JAGUAR Cars has the right to registration and use in Canada of the trademark JAGUAR for the following personal accessories:
spectacles, sunglasses, spectacle frames and parts of these goods and spectacle casings, cleaning and polishing preparations for motor land vehicles, hand tools, jewellery, and parts of and fittings for such jewellery, books, periodicals, magazines and newspapers, playing cards, parasols, umbrellas, tennis racquets, badminton racquets, squash racquets, golf balls, golf tees, and ashtrays; men's toiletries and fragrances, namely eau de toilette, after shave lotion, soap, deodorant stick and deodorant spray, shower gel, hair shampoo, foaming shave gel, after shave moisturizing balm, watches, clocks, jewellery, parts of and fittings for all the aforesaid goods, smoker's articles of precious and semi-precious metals, namely, cigarette cases, ashtrays and cigarette lighters; parts of and fittings for all the aforesaid goods, writing paper, pens, pencils, desk ornaments, and playing cards, bathing caps, bathing suits, swim trunks, bathing trunks, beach cover ups, ski bibs, ski boots, ski jackets, ski gloves, ski pants, ski suits, jackets, golf shirts, gym shorts, head bands, jogging suits, polo shirts, sweat shirts, sweat pants, sweat suits, golf shoes, golf trousers, golf gloves, t-shirts, tennis wear, track suits, hats, horse riding attire.[98]
The Jaguar Cars Registration for some of its personal accessories
[219] On April 1, 1987 Jaguar Cars filed in Canada applications no. 581,257 and no. 581,258 for the trademark JAGUAR DESIGN for the following personal accessories:
cleaning and polishing preparations for motor land vehicles, hand tools, jewellery, other than watches, and parts of and fittings for such jewellery, books, periodicals, magazines and newspapers, printed publications relating to automotive subjects namely spare parts lists and maintenance manuals, playing cards, parasols, umbrellas, tennis racquets, badminton racquets, squash racquets, golf balls, golf tees, and ashtrays; driving license cases, wallet cases, business card holders, belts, credit card holders, key cases, address books, note books, passport holders, beauty cases, document cases, pocket wallets (The Objected Wares to which Remo objects are in bold.)
[220] They issued to registration No. 378,643 and 378,644.[99]
Remo has since 1973 sold personal accessories in Canada using the trademarks REMO, BEAU SAC and SACSIBO
[221] From 1973 to 1980 the Plaintiff used the trademarks REMO (for which it obtained a registration), BEAU SAC and SACSIBO. During this period, the Plaintiff applied for the mark VOLARE but the application was opposed and was dropped by REMO. No definitive reason was given as to why Remo went from those trademarks to JAGUAR in 1980.
[222] Remo pleaded in its Statement of Claim that its wares were a narrowly defined set. Para 5. defines Maroquinerie as:
tote bags, handbags, school bags, baggage, luggage, clutches, knapsacks, briefcases, attaché cases, key cases, change purses, wallets, check book covers, credit card holders and eye ware cases
[223] Remo now defines maroquinerie as follows in the Agreed Facts:
D356 Plaintiff defines "maroquinerie" to include: tote bags; handbags; school bags, luggage, clutches, knapsacks, briefcases, attaché cases, key cases, wallets, cheque book covers, credit cards holders, eye wear cases, garment bags, suitcases, camera bags, travel bags, tennis bags, travel totes, shopping bags with wheels, beach bags, flight bags, sports bags, weekenders, cosmetic bags, pilot cases, leather bags, coin purses, sport totes, belt bags, computer cases, carry-ons, satchels, money belts, lunch bags, lunch boxes and carriers on wheels.
D314 The Plaintiff has never sold any key cases or cheque book covers.
[224] Remo is not prepared to restrict its products in the future. The Plaintiff will feel free to expand into any products in the fashion business.[100]
Remo adopted the trademark JAGUAR in 1980 claiming no knowledge of the Jaguar Cars mark
[225] Mr. Bassal claimed that he was not aware of Jaguar cars in 1980, and indeed until 1990.
[226] Mr. Bassal adopted JAGUAR SPORT in 1987 thus furthering the connection with JAGUAR cars and after commencing the action he adopted JAGUAR TOURING, JAGUAR OLD SCOTLAND, JAGUAR LONDON and JAGUAR CLUB. After receiving Defendants' productions including its line of JAGUAR COLLECTION brochures, he adopted the trademark JAGUAR COLLECTION. All of these marks could potentially make a connection in the minds of consumers with JAGUAR cars.
[227] On October 10, 1980, Remo filed Application no. 460,209 for the registration in Canada of the trademark JAGUAR based on proposed use in respect of tote bags and baggage. Application no. 460,209 was allowed on September 17, 1981, and matured to Registration no. 263,924 on October 30, 1981.[101]
[228] On March 3, 1982, Remo filed an application to extend the wares of the Remo Registration to cover handbags and schoolbags based on proposed use. Such amendment was allowed on September 10, 1982. A certificate of amendment covering handbags and school bags issued on January 11, 1984.[102]
[229] The wares sold by Remo over the years since 1981 are referred to in the Agreed Facts.[103] Suffice it to say that Remo has expanded its wares considerably beyond the four wares listed in its registration and has no intention of limiting itself to any particular personal accessories in the future. During the period 1983-1987 and thereafter, Remo's annual sales of Luggage Wares bearing the JAGUAR trademark grew substantially. Prior to 1999, Remo conducted only negligible advertising and promotion, such as attendance at trade shows in Toronto and Montreal after 1986, co-operative advertising in promotional materials distributed by Zellers and K-Mart and product catalogues distributed by Bentley.[104]
[230] On March 1, 1990, Remo filed a further application (460,209-2) signed by Mr. Bassal to extend registration no. 263,924 based on alleged use since October 1981 for the following wares: luggage, clutches, knapsacks, briefcases, attaché cases, key cases, change purses, wallets, cheque book covers, credit card holders, eyewear cases and belts.[105] In fact, none of the wares referred to in the application had been sold before October 1981 except briefcases.[106] This application by Remo for extension to many wares for JAGUAR not used at the date alleged, was filed shortly before the Remo demand letter to Jaguar on May 12, 1990. The Statement of Claim alleged rights to all those wares.
[231] The extension application was published on February 12, 1992 and opposed by Jaguar Cars in the Trade-Marks Office.[107] On appeal to the Federal Court, Trial Division, further extensive evidence was filed.[108] Remo voluntarily abandoned its extension application as to all wares except briefcases at the hearing before the TMO.[109]
Remo's Massive Advertising Campaign in 1999
[232] In August 1999, Remo launched a massive Canada-wide newspaper, billboard and transit shelter advertising campaign aimed at promoting the Remo Wares bearing Remo's JAGUAR mark.[110]
[233] The plaintiff has refused to direct its advertising representatives to remove its billboard locations from places near Jaguar Cars' dealerships, despite a request by Jaguar Cars to do so.[111]
[234] The campaign came within months after Remo and Jaguar Cars settled the Opposition on May 12, 1999. In the settlement proposal sent on Mr. Bassal's instructions, Remo arranged an agreement whereby Jaguar Cars would not commence an injunction application prior to trial in return for Remo dropping its trademark application. Mr. Bassal acknowledged that the billboard advertisements were Remo's first non-co-op advertising and that he would have started planning the campaign by at least April 1999.[112]
Remo's sales have included low end products and low end chain stores
[235] Remo has sold and continues to sell Luggage Wares in association with the trademark JAGUAR to department stores, chain retail outlets and specialty stores located across Canada, including Bentley, Zellers, K-Mart, Sears, Wal-Mart, Agnew, Globo, Giant Tiger and Bi Way.[113] These are comparatively lower-end stores that would not be considered, in and of themselves, associated with a luxury item of quality and affluence.[114]
[236] Mr. Bassal stated that when Remo adopted JAGUAR as a trademark it was not his intention that the bags would be high quality. He had no intention regarding quality.[115] In 1990 Remo was selling both its low-end and high-end priced briefcases to Bentley retail outlets and just its low-end briefcases to K-Mart.[116] Mr. Bassal acknowledged that the backpack, Exhibit MB16, is a Remo product. At first he said it goes back many, many years but later acknowledged it was around 1996. He agreed that by today's standards the backpack is not high quality.[117] In the early years, Remo sold its briefcases in the range of $30 to $100. Other companies sometimes sold briefcases as high as $250. Remo is selling its briefcases in the middle range.[118]
Chronology of key dates
[237] The following are key dates and events:
(1) 1925 - First use of Luggage Wares by Mercedes. Famous car companies continue use of Luggage Wares worldwide to date.
(2) 1936 - Jaguar Cars first use of JAGUAR for cars, continuing worldwide to date including Canada.
(3) 1945 - Canadian registration No. UCA21,618 of JAGUAR for cars.
(4) 1945-60 - Personal accessories associated with Jaguar Cars include suitcases, vehicle wallets, key chains, key fobs, model cars and clothing.
(5) October 10, 1980 - Remo files App. No. 460,209 to register JAGUAR for tote bags and baggage based on proposed use for tote bags and baggage.
(6) March 1981 - Mr. Maries is assigned the task of developing Jaguar Car's line of personal accessories called the JAGUAR COLLECTION.
(7) October 30, 1981- Remo's App. No. 460,209 issues to registration under Reg. No. 263,924.
(8) 1982 - Jaguar Cars releases Silver Brochure (J16) to dealers worldwide.
(9) March 3, 1982 - Remo applies to extend Reg. No. 263,924 to cover handbags and schoolbags based on proposed use.
(10) January 11, 1984- Remo's Reg. No. 263,924 extended to cover handbags and schoolbags.
(11) April 1, 1987 - Jaguar Cars files App. Nos. 581,257 and 581,258 to register JAGUAR and for, among other wares, a variety of Luggage Wares. (the Objected Wares)
(12) 1988 - Landor Survey finds JAGUAR cars the 17th best known and most highly regarded brand name in the world.
(13) March 1, 1990- Remo files application to extend Registration No. 263,924 to cover luggage, clutches, knapsacks, briefcases, attaché cases, key cases, change purses, wallets, cheque book covers, credit card holders, eyewear cases and belts based on alleged use since 1981 - admitted to be inaccurate.
(14) May 29, 1990 - Demand letter from Remo to Jaguar Canada dealer.
(15) August 24, 1990- Jaguar threatens to expunge Remo's registration.
(16) January 25, 1991 - Jaguar Cars' App. Nos. 581,257 and 581,258 issue to registration under Reg. Nos. 378,643 and 378,644 for JAGUAR and respectively.
(17) June 5, 1991- Remo commences this action claiming, validity of Remo mark among other remedies, an order amending Jaguar Cars' Reg. Nos. 378,643 and 378,644 to delete all Luggage Wares.
(18) March 6, 1992 - Jaguar Cars files its Counterclaim in this action, and its application to expunge the Remo Registration.
(19) October 19, 1992- Statement of Opposition by Jaguar Cars.
(20) January 27, 1998 - withdrawal of wares at TMO hearing by Remo
(21) May 12, 1999 - settlement agreement by Jaguar not to bring injunction and by Remo to withdraw application
(22) August 1999 - billboard and advertising campaign by Remo
[238] Subsequent to the essential, a priori, analysis of the evidence as to whether the Jaguar Cars trademark in Canada was famous and, thus, its trademark connection, if any, to its accessory wares and further to an analysis of the Remo "JAGUAR" trademark evidence in respect of its accessory wares, the following issues as to the validity of the specific trademarks to wares of the respective parties require resolution:
[239] Has Remo:
(1) Used the trademark JAGUAR in such a manner as to be likely to depreciate the value of the goodwill attached to Jaguar Cars' registered trademarks contrary to s.22(1).
(2) Infringed Jaguar Cars' exclusive right to use the registered JAGUAR trademark pursuant to s.19 and 20.
(3) Directed public attention to its wares such that confusion was likely to be caused in Canada between Remo's wares and the wares of Jaguar contrary to s.7(b).
(4) Passed off its wares contrary to s.7(c); and
(5) If so, to what relief is Jaguar Cars entitled?
[240] Has Jaguar Cars:
(1) Used the trademark JAGUAR on the Objected Wares and was it entitled to do so.
(2) Infringed Remo's exclusive right to use the registered JAGUAR trademark pursuant to s.19 or s.20.
(3) Directed public attention to its wares such that confusion was likely to be caused in Canada between Jaguar Cars Objected Wares and the wares of Remo contrary to s.7(b).
(3) Passed off its wares contrary to s.7(c), and
(4) If so, to what relief is Remo entitled?
Validity of Remo Trademark Registration
[241] As at October 10, 1980 and March 3, 1982 when Remo's JAGUAR mark was adopted (filed), 1991 when the action was filed, and at present was the use of the trademark JAGUAR by Remo in association with Luggage Wares likely to have the effect of depreciating the value of the goodwill attaching to the famous Jaguar Cars' registered trademark JAGUAR for automobiles contrary to s.22 of the Trade-marks Act, R.S.C. 1985, c. T-13?
[242] The relevant provision of the Trade-marks Act is s.22:
| 22. (1) No person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto |
22. (1) Nul ne peut employer une marque de commerce déposée par une autre personne d'une manière susceptible d'entraîner la diminution de la valeur de l'achalandage attaché à cette marque de commerce. |
[243] Jaguar Cars owns and has owned Registration No. UCA021618, issued March 7, 1945 for the trade-mark JAGUAR in association with motor land vehicles based on use from 1936 to present. Accordingly, Jaguar Cars enjoys the exclusive right to, among other things:
(1) restrain others from using Jaguar Cars' JAGUAR mark in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto; and
(2) authorize others to reproduce, distribute, promote, offer for sale and sell merchandise bearing each of Jaguar Cars' JAGUAR mark.[119]
[244] It is noted that the courts have stated that when trademarks are well-known, they enjoy a broad ambit of protection.[120]
[245] The following are examples of how marks have become well known:
(1) After 65 years use in Canada and registrations in 60 countries, the CARTIER trademark had become well known in Canada in association with jewellery. As a result, the protection afforded the mark extended beyond jewellery to eyewear.[121]
(2) Initially, there may have been nothing remarkably distinctive about the word "Miss" or the word "Universe" or the expression "Miss Universe". But as time went by and as the use and promotion of the two words linked together as one expression were reaching global proportions, the expression acquired considerable distinctiveness. Because the trade-mark had become well-known and reputable, it was accorded a particularly wide scope of protection.[122]
(3) As a result of the "long and extensive" use of SUN LIFE in association with insurance services (including good health), it had been become so "established and widespread" that its protection extended "beyond the field of the owner's own exploitation" into fruit juices.[123]
(4) There was "no question" that the long and extensive use of the trade-mark CUTTY SARK in association with Scotch whisky entitled the mark to broad protection.[124]
(5) On the following basis, the trade-mark JOHNNIE WALKER was entitled to extended protection beyond the particular field in which it had been used (that is, whiskey):
As a result of extensive sales and advertising in Canada and throughout the world, the...trademark JOHNNIE WALKER has achieved international fame, not only among consumers of whisky but also among ordinary members of the general public. It has become so famous that even when used or seen in isolation and without any reference to whisky it is generally understood and recognized as indicating a connection with the [senior user]. [The] trademark JOHNNIE WALKER has been so extensively used and advertised throughout the years that it has acquired the stature of a famous trademark."[125]
(6) By 1989, the MISS CANADA mark was famous for beauty pageants, and therefore entitled to broad protection.[126]
(7) In the Clicquot case, the Federal Court of Appeal did not interfere with the lower court's findings that "a mark which has been used for a long time is deemed to have made a certain impression on consumers", and that "the mark 'Clicquot' is well known and unique, and deserves extensive protection."[127]
[246] In deciding whether a trade-mark is famous or well known, the courts have considered a number of objective factors, including duration of use, sales volume, advertising/promotion expenditures, mode of advertising/promotion and other means of making the public aware of the mark.
[247] This approach is consistent with the wording of s.6(2):
| 6. (2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. |
6. (2) L'emploi d'une marque de commerce crée de la confusion avec une autre marque de commerce lorsque l'emploi des deux marques de commerce dans la même région serait susceptible de faire conclure que les marchandises liées à ces marques de commerce sont fabriquées, vendues, données à bail ou louées, ou que les services liés à ces marques sont loués ou exécutés, par la même personne, que ces marchandises ou ces services soient ou non de la même catégorie générale. |
[248] The objective factors from the cases referred to above apply in this case, for example, by 1980 the JAGUAR mark had been used for 44 years, there was use and registration in 95 countries, there were millions of dollars of sales in Canada, extensive promotion and independent articles and books about the brand. The Jaguar Cars' trademark JAGUAR associated with automobiles was, as of 1980, 1991 and at the present a famous mark, and therefore was and is worthy of the breadth of protection afforded the most well known marks.
[249] The goodwill attaching to a trade-mark is the whole advantage, whatever it may be, of the reputation of, and connection with goods sold under the mark ― which has been built up by years of honest work, or gained by lavish expenditure of money ― including the ability of the mark to persuade the public to purchase the owner's goods, and to attract new customers. (Clairol)[128]
Goodwill is the reputation that has been built up by a good product and expenditure of money with the consequent advantage in identifying the wares with the mark. (S.C. Johnson).[129]
[250] Where senior user's mark is so well known that the public associates senior user with activities outside its regular business (for example, new types of wares within senior user's zone of expansion), the goodwill in the mark includes the opportunity to use the mark in senior user's zone of expansion. (Orkin, Disney above, Dunhill).[130]
[251] In Orkin, the Court of Appeal stated:
As far as basic principles are concerned I would begin with a consideration of the nature of Orkin's interest which is affected by Pestco's conduct. If Orkin had been carrying on business in Ontario before Pestco then, of course, the parties would be in direct competition with each other and the nature of Orkin's damage would be the immediate diversion of customers from it to Pestco and, accordingly, lost sales and business.
However, a plaintiff does not have to be in direct competition with the defendant to suffer injury from the use of its trade name by the defendant. If the plaintiff 's trade name has a reputation in the defendant's jurisdiction, such that the public associates it with services provided by the plaintiff, then the defendant's use of it means that the plaintiff has lost control over the impact of its trade name in the defendant's jurisdiction. The practical consequence of this is that the plaintiff is then vulnerable to losing the Ontario customers it now has as well as prospective Ontario customers, with respect to services provided in the United States. Also, it can result in Orkin being prevented from using its trade name in Ontario when it expands its business into Ontario.[131]
...should damage to the property in the goodwill, if any, be presumed to have been incurred by Orkin and if so, was that presumption rebutted? Pestco submits, quite simply, that no damage to Orkin's goodwill has occurred in Canada because Pestco and Orkin are not competitors. Without damage there is no passing off. This argument is completely answered by the assertion that Orkin has suffered damage, sufficient to support a cause of action against Pestco, by virtue of its loss of control over the impact of its trade name in Ontario and the creation of a potential impediment to its using its trademark upon entering the Ontario market -- both arising from Pestco's use of the name "Orkin" in Ontario. [132] (Emphasis added)
[252] Section 22 applies when a newcomer uses a well-known trademark in a non-competing field of trade or in association with wares in respect of which the well known mark is not registered.[133] Under s.22, confusion is not required, but there must be a connection between the wares or services associated with the parties' marks either in the consumer's minds or from a business perspective, provided the extension is not speculative.[134] Since there is a paucity of cases under s.22 relating to the meaning of "connection", some confusion cases will be examined.
[253] In Pink Panther,[135] the Federal Court of Appeal stated that the wide scope of protection afforded by the fame of senior user's mark is relevant when applying it to a connection between the parties' wares or trades. Mr. Justice Linden went on to say:
No matter how famous a mark is, it cannot be used to create a connection that does not exist.
Note that s.22 was not in issue in Pink Panther. In Clicquot, the Federal Court of Appeal clarified this statement:[136]
...the link sought by Linden J.A....is not any link whatever, but one based on which a conclusion can be drawn that there was a risk of confusion.
In other words, Pink Panther did not set out a new principle, rather the Court of Appeal merely restated that there will almost never be a likelihood of confusion if the parties' wares are entirely dissimilar. There must be a connection or link.
[254] Since s.22 requires proof of likelihood of depreciation, without the need for proof of confusion, it follows that there is a lower standard of "connection" required.
[255] In the following cases, Canadian courts have found ostensibly disparate wares and services to be connected or associated in the minds of consumers, thereby allowing the courts to find the parties' marks confusingly similar. In that these senior users satisfied the more onerous connection test in confusion cases they necessarily would have met the lower s.22 connection threshold referred to above, had s.22 been considered:
(1) Magazines & Door Locks. High quality, stylish, decorative locks were likely to be featured, advertised or written about in senior user's fashion magazines. (VOGUE) The Court held:
In this case, there was evidence of a connection between the respondent's wares (door locks) and the features, articles and advertisements found in the appellant's VOGUE and VOGUE DECORATION magazines concerning interior decoration.
In the absence of any evidence from the respondent concerning the nature of its wares and the respondent's claimed monopoly, it is appropriate to presume that all kinds of door locks and lock hardware fall within the scope of the monopoly sought by the respondent, including high quality, stylish, decorative products such as those that are likely to be featured, advertised or written about in the appellant's magazines.
This is not a case, such as in the Pink Panther case ... where the products at issue were movies and beauty products and where there was a gaping divergence in the nature of the wares.
...
As stated by Mr. Justice Decary in Miss Universe at page 626:
It was the duty of the respondent to select a name with care so as to avoid any confusion -- as is required under the definition of "proposed trade-mark" in section 2 of the Act -- and so as to avoid the appearance that he intended to jump on the bandwagon of an already famous mark.
In this appeal the Chairman of the Opposition Board emphasized the non- similarity of the wares, even when faced with a famous mark. There are many decisions where a famous mark has prevailed with respect to non-competing goods.
...
I find, in this case, that there is a nexus between the wares particularly where the marks are identical and the registered mark is a well- known mark. The applicant has not limited its use of the mark to products which would be foreign to the ambit of protection that the VOGUE mark now has.[137] (Emphasis added)
(2) Beauty Pageants & Hosiery. There were several commercial associations involving the pageant, the trademark MISS CANADA and Canadian businesses, including product endorsement contracts, personal appearances, donations to the Miss Canada scholarship fund and participation in the Regal Awards portion of the pageant broadcasts. The commercial value of the goodwill resided in developing new avenues for involving businesses and products in the pageant, including endorsements and sponsorship contracts relating to airline passenger services, meat products, fashion show productions, swimsuits, cosmetics, fitness clubs, clothing stores, jewellery, footwear and ski equipment.[138] This all showed a connection with hosiery.
(3) Jewellery/Other Luxury Items & Eyeglasses: Many famous names in the world of fashion, such as Christian Dior, Pierre Cardin, Calvin Klein and Polo-Ralph Lauren, had in recent years entered into the eyeglass market. Glasses had become a fashion accessory that had captured the attention of designers and hautes couturiers. Senior user (CARTIER) joined the new fashion wave and came into the Canadian market in the 1980s. Junior user was already selling heavily across Canada and competing as well against the fashion designers. The Court held:
Where an inference of common origin of the wares could arise, the criterion of distinctiveness will be defeated. Hence, in Alfred Dunhill Ltd. v. Sunoptic S.A., [1979] F.S.R. 337, the plaintiff company carried on business throughout the world in the sale of tobacco products and a wide range of luxury goods. Their entire business had been conducted under the name and trademark DUNHILL. In recent years they had diversified and moved from tobacco to luxury goods for men. One Christopher Dunhill, the son of the chairman of Dunhill, conceived the idea of using the name Dunhill, together with his Christian name Christopher, for the purpose of marketing spectacle frames and sunglasses. The court pointed out that, at that juncture, certain other well-known firms had also entered into that market, including Christian Dior, Yves St-Laurent, etc. The plaintiff Dunhill charged that Christopher Dunhill was deliberately attempting to cash in on the Dunhill reputation by creating confusion. The trial judge had emphasized the fact that Dunhill was not in the spectacle frames and sunglasses market. Roskill L.J.C.A., said as follows (at p. 362):
With very great respect to the learned judge, the judgment does not seem to deal with the point that it was alleged damage to the overall Dunhill reputation which was in issue and not damage to particular classes of goods which Dunhill's were presently involved in selling.
The learned judge came to the conclusion that in the business world Dunhill's reputation extended "very far beyond their original activities in the tobacco and smoking industry" .
...
As mentioned earlier, eyeglasses have now become fashion accessories. The defendant Lunettes Cartier sells to opticians and optometrists, whereas the plaintiff Cartier sells its luxury items mostly in fashion boutiques. However, so as to establish the likelihood of confusion, it is not necessary to prove that the wares are sold in the same places, provided they are of the same general class, could eventually be sold in the same places, and the parties are entitled to do so: see Eminence, SA v. Registrar of Trademarks (1977), 39 C.P.R. (2d) 40.
...
In the instant case, the evidence reveals that the Cartier luxury wares which were created in the last century for monarchs and the opulent elite were gradually scaled down to meet the demands of a different society. Ralph Destino, chairman of the board of Cartier, described today's Cartier customer as a newly affluent, upwardly mobile, married person, 35 to 45 years old, responsive to status symbols and interested in style, quality and taste.
On the other hand, Lunettes Cartier has upscaled its publicity so as to maintain its strong market position as a leading distributor of eyeglasses in Canada against the arrival of more sophisticated competitors.
Thus, the wares sold by both parties are now within the same range of luxury eyeglass frames and are appealing to the same clientele, although the plaintiff Cartier carries a more expensive line. (d) The nature of the trade
Again, the plaintiff is registered for eyeglass cases, but it claims that eyeglass frames are an extension of its luxury line of goods. On the other hand, the defendant Lunettes Cartier submits that it does not sell eyeglass cases: it gives them away with the frames. It is indeed the custom of the trade to provide eyeglass cases free along with eyeglasses. Clearly, the sale price is set to include both items. The plaintiff's wares are sold through boutiques and some fashion conscious department stores, while the defendant sells to opticians and optometrists through salesmen. Interested customers may seek and find the desired eyeglass frames at any of those outlets. [139]
(4) Insurance & Fruit Juice: Senior user's (insurer) long use of the trade-mark SUNLIFE in connection with its promotion of physical fitness and cultural events was widespread and established. Junior user made extraordinary efforts to promote physical fitness by sponsoring a variety of athletic and sporting events. In choosing a mark for its juices, junior user was guided by the public's concern for matters of health. It was not inconceivable to imagine that a bottle of junior user's juice might very well end up beside senior user's brochure at one of these sporting events.[140]
(5) Sports Team & Chewing Gum: Senior users made available to persons attending home games of the Toronto Maple Leafs hockey club, various confections, souvenirs and other items, such as T- shirts, key tags, pucks, bumper stickers, mugs, hats, calendars, crests and hockey sticks as well as such food items as hot dogs, popcorn, potato chips and soft drinks, all bearing the TORONTO MAPLE LEAFS mark. The parties' wares were connected even though senior user's food items were sold entirely within Maple Leaf Gardens and not in normal retail outlets (like junior user's gum).[141]
(6) Magazines/Dress Patterns & Jewellery - Senior user published a high fashion magazine, VOGUE, was familiar with the fashions, manufactured and sold dress patterns and was familiar with fashionable accessories. Its magazine contained articles written by experts in the field as to what was current and in good taste. It was but a short step for senior user to take to enter the field of the manufacture and sale of jewellery.[142]
(7) Whiskey & Pipe Tobacco (CUTTY SARK) - The consumption of tobacco and alcoholic beverages went hand in hand; one encouraged the use of the other. In Victorian times and sometimes in modern times the ladies retired to the drawing room so the gentlemen could remain in the dining-room and partake of cigars and brandy. Rothmans carried on business in tobacco products and alcoholic beverages. It was a popular practice to flavour pipe tobacco with every conceivable type of alcoholic beverage (including Scotch whisky).[143]
(8) Soft Drinks & Glasses. Senior user (Coke) had distributed in Canada drinking glasses displaying the COCA-COLA script trademark to bottlers employed by senior user. Four years earlier, senior user had decided to embark upon a merchandise licensing programme to enhance its ability to protect its trade-marks by reinforcing and enhancing the goodwill, expand quality-oriented trade-mark exposure and to generate profit. One such license covered drinking glasses, the sale of which had commenced just a few months before trial.[144]
(9) Whiskey & Sporting Equipment. Senior user (JOHNNIE WALKER) featured various sporting activities in advertising whisky. It had become common practice in Canada and in other countries for manufacturers of well-known alcoholic beverages to finance sporting events and the televising of sporting events and to use such events as a medium of advertising.[145]
(10) Whiskey & Beer - (HAIG & HAIG) Companies in Eritrea, Pakistan, India and Japan produced and sold both beer and whisky under the same brand name. Brewers in Great Britain acted as distributors of scotch either directly through the brewing company or through subsidiary companies owned or controlled by the brewing companies (though the scotch and beer were sold under different marks). There was no evidence that Canadian breweries manufactured or sold distilled alcoholic beverages or that Canadian distillers manufactured or sold brewed alcoholic beverages.[146]
[256] The basis upon which these Courts found a likelihood of confusion may be distilled into the following categories of factors relevant to determining whether the connection between the parties' wares is close enough for a finding of confusion (the "Connection Factors"):
(1) The parties' wares performed similar or related functions, or one party's wares were used in conjunction with the other's wares.
(2) Third parties active in the senior user's industry sector had previously extended the use of their well known marks to wares of the same type as those of the junior user. In many cases, such third party activities took place outside Canada.
(3) The senior user had previously dealt in wares similar to those of junior user. In many cases, such dealings were promotional in nature, or were through channels of trade not customary for junior user's wares.
(4) The courts have considered whether the attributes and characteristics of the senior user's brand rendered it suitable for an extension to the category of wares comprising junior user's wares.
(5) Senior user produced survey evidence indicating that members of the public would tend to perceive a connection between junior user's wares and senior user.
[257] Remo relies on the following cases ("Remo's Connection Cases"), where the courts concluded that the following wares and services were not connected in a sufficiently significant way. Except for Clicquot and I.T.V. which also involved s.22 to a minimal extent, the determination in all of these cases was restricted to likelihood of confusion: motion pictures and beauty supplies [Pink Panther]; champagne and retail clothing stores [Clicquot]; cars and canned fruit.[147] [Lexus]; Dolls and restaurants (Barbie Doll case)[148]; liquor and real estate brokerage services[149] [called Seagram]; and magazines/social clubs and automobile tires. [Playboy] [150]
[258] Remo's connection cases are distinguishable:
(1) In none of Remo's Connection Cases was the parties' wares functionally related. Only incidentally would the wares and services (listed above) be used in conjunction with each other.
(2) In none of Remo's Connection Cases was there any indication of an industry-wide practice whereby the senior users had actually expanded into the junior users' wares/services.
(3) In none of Remo's Connection Cases had the senior users actually expanded into a junior user's products, either before or after junior user's activities commenced. In Clicquot, the court noted the absence of evidence showing that senior user intended to exploit any areas other than champagne. "If the plaintiff really intended to extend its marks to the fashion field, its strategic plans would have reflected that."[151] In contrast, Jaguar Cars has clearly demonstrated an intention to fully enter the Luggage Wares category as of 1980 and 1991. Jaguar Cars had dealt in such wares since the 1940s. Since the 1970s, such use has dramatically expanded. The full expansion to Luggage Wares in the 1980s was a natural progression of a process started many decades earlier. Clicquot is distinguishable on the basis that Jaguar Cars' pre-1980 strategic plans clearly reflected a bona fide intention to expand into Luggage Wares, which was in fact realized.
(4) In Clicquot, senior user's sale of promotional articles in junior user's area did not establish a connection between the parties' activities. "Those items remain promotional articles and nothing more".[152] However,
(a) This cannot be interpreted as a wholesale exclusion of all promotional activities from the connection assessment, considering the plethora of cases in which such activities have played a central role, for example: Glen-Warren (cross-sponsorship, licensing), Maple Leaf (non-traditional promotion of food at hockey games), Sun Life (insurance brochures promoting good health, sponsorship of sports events); Johnnie Walker (sponsorship of sports events, ads showing sports); and Coca-Cola (promotional gift to suppliers). Indeed, in Coca-Cola, the court's connection finding was based on senior user's licensing campaign, the stated objectives of which included the enhancement of senior user's ability to protect its trade-marks and quality-oriented trade-mark exposure (as opposed to the generation of profit through tradition means).
(b) It cannot stand for the general proposition that senior users' future expansion plans are irrelevant is all situations. Indeed, in a number of cases, such plans have played a central role in determining the breadth of senior users' rights, and the existence of a connection between the parties' wares: Orkin (expansion from U.S. to Ontario), Disney (expansion from U.S. to Alberta), Cartier (expansion from jewellery to eyeglasses) and Coca-Cola (expansion from soft drinks to drinking glasses).
(c) Accordingly, even if Jaguar Cars' pre-1980 sales of Luggage Wares was primarily promotional in nature or future expansion planning (which it was not), such activities are nevertheless strong indicators of a connection between automobiles and Luggage Wares, and of Jaguar Cars' intention to fully expand into Luggage Wares, which actually occurred in the 1980s.
(5) According to the Trial Judge in Clicquot,[153] consideration of future events and possibilities of diversification is properly restricted to the potential expansion of existing operations; it should not include speculation as to diversification into entirely new ventures, involving new kinds of wares, services or businesses. This is a restatement of the requirement that the parties' wares must be connected. If the parties' wares are connected, then the future diversification plans will be characterized as "potential expansion of existing operations"; if the wares are unconnected, such plans will be "diversification into entirely new ventures". In other words, Clicquot did not articulate a distinct rationale for excluding senior user's future expansion plans.
(6) In any event, this case is distinguishable from Clicquot on the facts. Jaguar Cars' sale of Luggage Wares (including wallet covers, suitcases and leather key fobs) since the 1940s foreshadowed the full expansion to JAGUAR-branded Luggage Wares that actually occurred in the 1980s. This critical fact ― that senior user actually effected the full extension it alleged was its intention ― was absent in Clicquot. What better proof of senior user's intention to expand into junior user's area? In Clicquot senior user's strategic plans made no mention of expanding to fashion accessories. Not only did Jaguar Cars' pre-1980 strategic plans specifically include the proposed introduction of a full line of JAGUAR-branded personal accessories (including Luggage Wares), but such plans were in fact effected. In Clicquot adequate senior user's strategic plans made no mention of such an expansion, and no movement in that direction had occurred by the trial. Jaguar Cars' assertion of a pre-1980 intention to diversify to Luggage Wares is far more credible. Moreover, Jaguar Cars has demonstrated that other car companies actually expanded to Luggage Wares well before 1980; evidence of an industry practice of diversification from champagne to fashion accessories was wholly absent in Clicquot. Accordingly, the facts are different.
(7) Toyotav. Lexus Foods is distinguishable from this case in several significant respects in addition to those set out above:
(a) In the Lexus case, automobiles and canned fruit, are far more disparate than automobiles and Luggage Wares.
(b) Canned food has no premium brand attributes as does luggage.
(c) Toyota's survey evidence was confined to assessing the reputation of the LEXUS mark, which evidence, of course, did "not establish that there was any confusion between the two products. It merely show[ed] that many people knew about the fine car made by [Toyota]".
(d) Toyota's LEXUS mark was just "enjoying the beginning of famousness" as opposed to the well-entrenched fame enjoyed by the JAGUAR car mark in 1980. LEXUS-branded cars had been on sale in Canada for less than 10 years, as compared with decades of sales of JAGUAR cars. Toyota's use of LEXUS commenced a mere two years before that of junior user.
(e) The Court of Appeal highlighted junior user's evidence that many businesses, unrelated to automobiles, use the name Lexus.
(f) Lexus concerned an opposition to a proposed use application. The material dates and burdens in such a situation differ significantly from the causes of action and expungement bases at play in this case.
(g) Because there was no allegation of depreciation of goodwill in Lexus, the court's assessment of a linkage between the parties' wares was based solely on the enhanced connection threshold required to establish likelihood of confusion.
(h) Accordingly, the Lexus case is of negligible relevance. In the end, the Lexus court restated[154] the well-established principle that "it is necessary to evaluate all of the relevant factors listed in subsection 6(5) in each case and to make a determination which gives appropriate weight to each of them." The following comment in Pink Panther [Court of Appeal, p. 264] is particularly pertinent on the Lexus case:
...much of the jurisprudence has little precedential value. The cases turn on the particular and often unique facts. Two marks are seldom similar or dissimilar in the same way. Two cases do not often involve the same types of businesses or the same types of customers. As a result cases decided in the past may be interesting, but not generally helpful with regard to a decision of this kind.
Connecting factors between cars and luggage
[259] In numerous respects Luggage Wares and automobiles ― and particularly JAGUAR automobiles ― are connected in the minds of consumers and from a practical business perspective:
(1) Function & Concurrent Use. Where the parties' wares perform a similar function or are used in conjunction with each other, the courts tend to find such wares are connected. In Maple Leaf, food products were consumed at the hockey games. In Sun Life, insurance brochures might appear beside fruit juice at sporting events. In Advance and Conde Naste, magazine articles and advertisements discussed interior design (locks) and fashion accessories (jewellery). In Berry Bros, whiskey and tobacco were consumed together; indeed, "one encourages the use of the other". There is an analogous relationship between cars and Luggage Wares. The primary function of both is the transportation of individuals and their possessions. Auto trunks are meant for holding Luggage Wares. Luggage is used on road trips. All drivers use handbags, wallets and/or key cases.
(2) Industry Practice Worldwide. In assessing whether the parties' goods are connected, courts have considered competitors' activities inside and outside Canada. In Cartier, other famous names in the world of fashion had entered into the eyeglass market. In Berry Bros, a competitor carried on business in tobacco products and alcoholic beverages, and it was common practice to flavour tobacco with alcohol. In Johnnie Walker, it was common practice worldwide for manufacturers of alcoholic beverages to sponsor sporting events. In Haig, companies in various countries produced and sold both beer and whisky under the same brand name. Brewers in Great Britaindistributed scotch. That competitors have dealt in both parties' wares favours a finding that such wares are connected. Such is the case with automobiles and Luggage Wares. By the 1930's and at least the late 1970's numerous auto brands had been extended (by use and/or registration) to Luggage Wares internationally and in Canada. Moreover, luggage manufacturers such as Louis Vuitton have sold custom-made products for cars.
(3) Actual Extensions by the Senior User. A connection between the parties' wares has been underscored in situations where senior users have actually dealt in junior user's wares directly, pursuant to license agreements, or by any number of other non-traditional methods. In Cartier, senior user (a jeweller) sold eyewear, albeit several years after junior user. In Coca-Cola, the sale of senior user-approved drinking glasses had commenced just a few months before the trial. In Glen-Warren, the beauty pageant's mark had been licensed for hosiery. In Maple Leaf, senior user had sold food products at its hockey games, but not through normal retail channels. Jaguar Cars' JAGUAR mark has been used on suitcases, vehicle wallets and model cars since the 1950s and since the 1960s on key chains, key fobs clothing and miscellaneous personal accessories among others. Jaguar Cars resolved to extend its JAGUAR mark to a full line of Luggage Wares throughout the world and actually implemented such plan starting in the early 1980's. In Cartier and Coca-Cola, the senior users' early activities in junior users' areas supported a finding that the parties' wares were connected, even though the senior users' activities were quite recent, and, in Cartier, after junior user began selling its wares. Jaguar Cars' distribution of Luggage Wares since the 1950s is a strong indication of a real-life connection between those Wares, which is reinforced by Jaguar Cars' full expansion in the 1980s. Under this heading, the issue is not one of timing, with the first to sell Luggage Wares prevailing. Rather, the issue is whether the public sees a link between cars and Luggage Wares; Jaguar Cars' Sales of Luggage wares at any time is a strong indicator of such a connection.
(4) Brand Attributes - Valuation. Where the brand attributes perceived by consumers are strongly connected, the Courts will take note. In Cartier, senior user argued that that eyeglass frames (junior user's wares) were an extension of senior user's luxury line of goods. Before enjoining junior user's sale of CARTIER-branded eyeglasses, Justice Dubé identified certain attributes of the CARTIER mark that enhanced the likelihood of consumers perceiving a connection between senior user's jewellery and junior user's eyeglasses such as fashion accessory attributes for the newly affluent, upwardly mobile, married, middle-aged, person responsive to status symbols and interested in style, quality and taste.[155]
[260] In conclusion, there is a natural brand extension between Jaguar's cars and Luggage Wares as of 1980, 1991 and at present.
Depreciation Factors - General
[261] "Depreciate the value of goodwill" means to reduce in some way the advantage of the reputation and connection, to take away the whole or some portion of the custom otherwise to be expected and to make it less extensive and thus less advantageous. Goodwill has value only to the extent of the advantage of the reputation and connection which its owner enjoys and whatever reduces that advantage reduces the value of it. Such depreciation may arise through reduction of the esteem in which the mark itself is held or through the direct persuasion and enticing of customers who could otherwise be expected to buy or continue to buy goods bearing the trade-mark. (Clairol)[156]
[262] When senior user's reputation extends beyond its core wares and a newcomer uses senior user's mark for other wares, the court must focus on whether the newcomer's activities will damage senior user's overall reputation, rather than just the class of wares in which senior user currently deals.(Dunhill)[157] Damage to the distinctiveness of a trademark necessarily depreciates whatever goodwill is attached to the mark. The purpose of s.22 is to preserve that goodwill.[158] (Sony)
[263] When a company adopts a famous brand in association with goods in its natural zone of expansion, it is likely to succeed in marketing its goods with little advertising or promotion.[159]
[264] Deception is not the test prescribed by s.22, it is the likelihood of depreciating the value of the goodwill attaching to the senior user's mark, which can result without deception being present. (Clairol)[160] A s.22 violation can occur even though the true origin of the junior user's goods would be revealed when customers examined the junior user's labels. (Perrier)[161] The depreciation of the value of goodwill in the context of s.22 does not require confusion leading to an immediate loss of sales, nor is it necessary that the parties are in commercial competition. (Gucci)[162]
[265] In the context of a passing off action, as quoted above, the Orkin court stated that a plaintiff does not have to be in direct competition with the defendant to suffer injury. The Defendant's activities could result in Orkin being prevented from using its trade name in Ontario when it expands its business into Ontario.[163]
[266] In Hilton Hotels v. Belkin, the court restrained junior user from using HILTON and HILTON HOTEL in association with the operation of a hotel. The court found that senior user was "internationally renowned as the world's leading operators of hotels...operating twenty-eight first-class hotels...in the United States and other countries" not including Canada. The court quoted a leading text on tort law and applied the principle as follows:
In Winfield on Tort, 6th ed., p. 739, the author says:
A commits a tort against B if he passes off his goods or business as those of B.
It is not necessary for B to prove that A did this knowingly or with any intent to deceive; nor that any one was actually deceived -- it is enough that deception was probable; nor that he suffered damage. (Emphasis added)
It cannot be said here deception is improbable, in fact the converse appears to me to be quite obviously true. The plaintiff companies being an international organization particularly active on the North American continent, it is more than probable that to a great many travellers accustomed to staying at hotels operated by this chain that a reference to any hotel directory covering the City of Vancouver would indicate that there is a Hilton Hotel in Vancouver, and such traveller might quite probably be deceived into thinking that the defendants' hotel in Vancouver was one of the chain. [164]
[267] The evidence in this case is much stronger in that the party's wares could be competing and deception is a possibility. Both parties are selling Luggage Wares. While at present the channels of trade are different, in the absence of an injunction there is nothing to prevent either party from moving into more similar trade channels.
[268] There are different kinds of depreciation and possible.
[269] A senior user suffers damage by virtue of its loss of control over the impact of its trade-mark in a new area and the creation of a potential impediment to the use of its mark upon entering that new area, both of which arise from junior user's use of the mark in the new area. (Orkin)[165]
[270] When junior user misappropriates senior user's mark from another field of endeavour, damages are the harm which results or may result to the goodwill or reputation senior user has established. It may also include the loss of senior user's right to exploit its reputation into an unrelated field of endeavour, whether or not senior user has any current intention of venturing into that field. (Disney)[166]
[271] If a third party sells Luggage Wares associated with the Jaguar mark, it could potentially be utilizing goodwill of significant value to Jaguar cars, an asset it could potentially license or sell.
[272] The same associations would not, however, influence purchase of guar gum, paper, sewing machines, wire rope, cash registers, shoe laces, alcohol, telecommunications equipment, manicure instruments or beauty supplies. Here other associations drive the purchase. Thus, one would not expect the same connection between Jaguar Cars for such products as for luggage. The use of the mark JAGUAR on such products therefore would not affect the goodwill in the JAGUAR cars mark.[167] Such products are outside the zone of natural expansion of Jaguar Cars' mark.
[273] Section 22 aims to address a diminution in the uniqueness of the trade-mark that will eventually work to the disadvantage of the senior user. The advertising and sales value of a trade-mark is in many cases dependent upon its uniqueness and dilution impairs the effectiveness of the trade-mark as an advertising or selling medium, thus potentially injuring the property right in the trade-mark to the detriment of the owner.
[274] Where senior user's mark has a reputation such that the public associates the mark with senior user's wares, when junior user uses the mark in an area of natural expansion of the senior user, senior user can lose control over its impact, and is vulnerable to losing prospective customers, and may be prevented from using its mark when it expands its business. (Orkin)[168]
[275] When junior user uses senior user's mark in a field connected with the senior user, junior user borrows senior user's reputation, and the quality of junior user's wares is not within senior user's control. This is an injury, even though junior user does not tarnish the reputation, or divert any sales by its use. A reputation, like a face, is the symbol of senior user, and junior user can use it only as a mask. Unless junior user's use is so foreign to senior user's as to insure against any identification of the two, it is unlawful. (Yale)[169]
[276] In finding that junior user's sale of GUCCI-branded furniture had the likely effect of depreciating the value of the "admitted substantial goodwill" attached to senior user's GUCCI mark ―which was registered for a wide range of goods excluding furniture ― the Federal Court of Appeal stated that the depreciation of the value of goodwill in the context of s.[22] does not require competition leading to an immediate loss of sales:
In the type of action contemplated by s. [22] there is no necessary confusion between goods and hence no immediate loss of sales, but a diminution in the uniqueness of the trade mark that will eventually work to the disadvantage of the trade mark owner. The advertising and sales value of a trade mark is in many cases dependent upon its uniqueness and dilution impairs the effectiveness of the trade mark as an advertising or selling medium. In this way the property right in the trade mark suffers injury to the detriment of the owner.[170] (Emphasis added)
[277] Section 22 would apply where senior user's extremely well-known and respected mark is taken by junior user and applied to wares of an entirely different class. There is no loss in sales to the senior user but it detracts from the uniqueness, and distinctiveness, of the trademark. (S.C. Johnson)[171]
[278] The use of a well-known trademark by junior user in a non-competing field of trade or in association with wares or services in respect of which the mark is not registered would be covered by Section 22.(Clairol)[172]
[279] By using senior user's marks on non-competing wares, junior user could cash in on senior user's well-established reputation. A deception could tend to dilute the quality of senior user's marks, impair its business integrity, and cause injury to its goodwill. (Perrier)[173]
[280] Senior user is entitled to retain the possibility of exploiting its own goodwill by expanding its current activities; that possibility ought not to be diluted by anything done by junior user before senior user embarks upon such expansion. (Sheraton)[174]
[281] The reduction of esteem in which the wares are held is depreciation of goodwill. Section 22 provides a remedy to senior user where the use of its trademark by junior user has the effect of bringing senior user's mark into disrepute. (S.C. Johnson)[175]
[282] Where an appreciable number of persons are known to believe there is a business relationship between senior user and junior user, or are uncertain about it, there exists a real risk of harm to the reputation or image which senior user has carefully built. Any lack or deficiency in the quality of junior user's wares could reflect in the minds of the public on the reputation of senior user and its wares. (Disney)[176]
[283] There is a real risk of injury to senior user's reputation in its mark in a new area ― and hence to its goodwill ― when senior user is unable to control the quality of junior user's products or the way they are marketed and hence, the effect of junior user's use on the reputation of the mark in the new area. (Lego)[177]
[284] To put the matter in general terms, if senior user acquires a reputation with the public in relation to a particular trademark, the use of that mark by junior user in either an associated field or even in a different field may be restrained if the public may be confused into thinking that junior user's product has the cachet of senior user's established mark. Such business confusion can exist separate from product confusion (where junior's goods are purchased as or for senior's goods.) (John Walker & Sons Ltd. v. Rothmans Int'l)[178]
[285] In addition to the statutory grounds, the courts have recognized non-statutory grounds for expungement, including where the registration could deceive and mislead the public.[179]
[286] In. Williamson Candy Co v. W.J. Crothers v, the junior user learned of senior user's OH HENRY! candy bar while traveling in the United States. Upon returning to Canada, junior user registered the mark in its own name, which senior user successfully expunged even though senior user had not used the mark in Canada. The following excerpt from President Maclean's reasons in Williamson summarizes the objectives of the Trade-marks Act in the context of a junior user who adopts senior user's mark that was known in Canada through U.S.-based print advertisements having been circulated here. These principles apply equally to a junior user who adopts senior user's famous mark for wares comprising senior user's zone of expansion:
The use of trade-marks was adopted to distinguish one person's goods from those of another, on the market, and to prevent one person selling his goods as those of another. The system was designed to encourage honest trading, and the protection of the buying public. One may safely say that our Trade-Marks Act was not enacted to encourage in Canada the adoption of foreign registered marks, even if there were no user by the foreign registrant here. That would cause confusion and deception, just the thing that trade-marks were supposed to avoid, and it would be a fetter upon trade, another thing quite foreign to the purposes of trade-marks. Trade-mark legislation was designed as much for the benefit of the public, as for the users of trade-marks.
If such a practice were knowingly permitted by all countries, the use of trade-marks would end in hopeless confusion and bring about a result which trade-marks were originally supposed to avoid.[180] (Emphasis added)
[287] The principle set out in Williamson was adopted by the Federal Court of Appeal in its 1975 decision in Re Andres Wine, despite the Trade-marks Act having undergone significant amendments, including the removal of the "calculated to deceive" language:
The statute has been changed since [the Williamson decision] was written but the general comments of the learned Judge are as valid today as they were in 1924. The...learned Judge held, that having regard to [senior user's] advertising and the knowledge of its mark thereby generated in Canada [junior user]'s registration of the mark for use in Canada was "calculated to deceive or mislead the public" and for that reason should be expunged.[181]
[288] When a senior user has established that its trademark distinguishes its goods from the goods of others, the Trade-marks Act will prevent a newcomer from selling its goods as those of the senior user. Williamson dealt with just one situation in which this can occur. Clairol makes it clear that the reputation attaching to a senior user's mark will be protected from a junior user who attempts to exploit any advantage afforded by senior user's goodwill, for example by exploiting such goodwill to entice customers who could otherwise be expected to buy or continue to buy goods bearing senior user's mark. This is underscored by the courts' reasoning in the Orkin and Disney cases, which is by no means confined to situations involving Canadian junior users who misappropriate the reputation foreign senior users enjoy in Canada.
[289] When a junior user uses a famous mark for wares comprising the senior user's zone of expansion, the resulting potential deception of the Canadian public is no less objectionable than a junior user who adopts a foreign senior user's mark. In both situations, the junior user's adoption of the mark could deceive and cannot be tolerated.
[290] Regardless of the manner in which junior user has misappropriated the advantages afforded senior user's reputation in its famous mark, junior user's registration of senior user's mark must be expunged if it is shown that junior user adopted senior user's famous mark for wares comprising senior user's zone of expansion. As established by the Wiliamson, Andres Wine, Orkin and Disney cases, there is no requirement that senior user's mark has ever been used, or has otherwise come to distinguish senior user in Canada. All that the senior user needs establish is that its mark must have become known among the Canadian public (including in respect of wares the public perceives senior user is likely to sell).
[291] In granting senior user's expungement application in Williamson, President Maclean said:
...[junior user's] registration in question was improperly made. The [junior user] was not the proprietor of the mark, and was not entitled to register the same and it should be expunged. Neither was [junior user] the first to use the mark to his knowledge.... [junior user]'s registration, is calculated to deceive or mislead the public, and for that reason also, [junior user]'s registered mark should be expunged.[182]
[292] In Re Andres Wine, on the date junior user applied to register SPANADA for wines, the mark had become widely (if not well) known in Canada as the senior user's mark as a result of television advertisements originating in the U.S. and received in Canada. To the Federal Court of Appeal, this conclusion was "irresistible on the evidence notwithstanding the very cogent observation of the learned trial Judge that there was not so much as one affidavit by a Canadian viewer to the effect that he had seen appellant's "Spanada" advertising on any of the United States television stations."[183]
[293] Noting that senior user had not previously used its mark in Canada (so that the mark had not become distinctive of senior user), the Re Andres Wine Trial Judge refused to find the mark was not distinctive of junior user. The Court of Appeal disagreed with the Trial Judge:
...the registration of the mark SPANADA as the trademark of [junior user] and its use by [junior user] in association with its wines would be calculated to deceive and mislead the public and that it follows from this that the mark is not adapted to distinguish the wares of [junior user]. The opposition of [senior user] under s. 37(2)(d) of the Trademarks Act [the mark did not distinguish junior user's wares] should therefore be sustained.[184] (Emphasis added)
[294] The following finding of the Re Andres Wine Court of Appeal applies directly to this case:
I do not think it follows from a finding that the mark was not distinctive of [senior user] that it was "adapted to distinguish" the goods of [junior user] and for that reason distinctive of [junior user] or its goods.[185] (Emphasis added)
[295] The principles set out in Williamson have become well-entrenched in Canadian trademark law. There are numerous Federal Court decisions (in addition to Re Andres Wine) in which a junior user has been restrained from adopting a senior user's mark when the junior user had the prior use of the mark in Canada.[186]
[296] Even if Mr. Bassal of Remo did not know of the Jaguar brand, when Remo first adopted the JAGUAR mark in 1980, the JAGUAR mark was famous for cars in Canada and worldwide; and Luggage Wares comprised Jaguar Cars' zone of natural expansion, bearing in mind the brand extension trend that was well under way for the automobile industry.
[297] In conclusion, Remo's Registration is invalid and vulnerable to expungement.
[298] Two separate attacks are made on the basis of confusion. It is alleged that the use of the trademark JAGUAR by Remo in association with Luggage Wares was likely to cause confusion with Jaguar Cars' famous trademark JAGUAR for automobiles and/or its trademark for Luggage Wares:
(1) On October 30, 1981 (when Remo's Reg. No. 263,924 issued) and January 11, 1984 (when such registration was extended), and considering Jaguar Cars' prior registrations for JAGUAR for automobiles JAGUAR was unregistrable by Remo.
(2) On October 10, 1980 (when Remo applied to register JAGUAR) and March 3, 1982 (when Remo applied to extend Reg. No. 263,924), and considering Jaguar Cars' prior use of JAGUAR with automobiles and/or prior use on Luggage Wares Remo was not entitled to such registration .
[299] While most of the legal issues relating to these two grounds are common, there are some differences.
[300] The statutory basis for confusion is the following from the Trade-marks Act:
| 12. (1) ... a trade-mark is registrable if it is not
...
(d) confusing with a registered trade-mark; .
|
12. (1) [...] une marque de commerce est enregistrable sauf dans l'un ou l'autre des cas suivants :
[...]
d) elle crée de la confusion avec une marque de commerce déposée;
|
[301] In this ground, knowledge of the senior user by the junior user is irrelevant as long as there is confusion with a confusing senior registration, in this case, Jaguar Cars registration for cars.
[302] The statutory basis for determining confusion from the Trade-marks Act:
| 6. ...
(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
(3) The use of a trade-mark causes confusion with a trade-name if the use of both the trade-mark and trade-name in the same area would be likely to lead to the inference that the wares or services associated with the trade-mark and those associated with the business carried on under the trade-name are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
(4) The use of a trade-name causes confusion with a trade-mark if the use of both the trade-name and trade-mark in the same area would be likely to lead to the inference that the wares or services associated with the business carried on under the trade-name and those associated with the trade-mark are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
(5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
(b) the length of time the trade-marks or trade-names have been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them. |
6. [...]
(2) L'emploi d'une marque de commerce crée de la confusion avec une autre marque de commerce lorsque l'emploi des deux marques de commerce dans la même région serait susceptible de faire conclure que les marchandises liées à ces marques de commerce sont fabriquées, vendues, données à bail ou louées, ou que les services liés à ces marques sont loués ou exécutés, par la même personne, que ces marchandises ou ces services soient ou non de la même catégorie générale.
(3) L'emploi d'une marque de commerce crée de la confusion avec un nom commercial, lorsque l'emploi des deux dans la même région serait susceptible de faire conclure que les marchandises liées à cette marque et les marchandises liées à l'entreprise poursuivie sous ce nom sont fabriquées, vendues, données à bail ou louées, ou que les services liés à cette marque et les services liés à l'entreprise poursuivie sous ce nom sont loués ou exécutés, par la même personne, que ces marchandises ou services soient ou non de la même catégorie générale.
(4) L'emploi d'un nom commercial crée de la confusion avec une marque de commerce, lorsque l'emploi des deux dans la même région serait susceptible de faire conclure que les marchandises liées à l'entreprise poursuivie sous ce nom et les marchandises liées à cette marque sont fabriquées, vendues, données à bail ou louées, ou que les services liés à l'entreprise poursuivie sous ce nom et les services liés à cette marque sont loués ou exécutés, par la même personne, que ces marchandises ou services soient ou non de la même catégorie générale.
(5) En décidant si des marques de commerce ou des noms commerciaux créent de la confusion, le tribunal ou le registraire, selon le cas, tient compte de toutes les circonstances de l'espèce, y compris :
a) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus;
b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage;
c) le genre de marchandises, services ou entreprises;
d) la nature du commerce;
e) le degré de ressemblance entre les marques de commerce ou les noms commerciaux dans la présentation ou le son, ou dans les idées qu'ils suggèrent.
|
[303] A key common law principle of confusion:
(1) Use of junior user's mark in a field that is associated with - or even different from - the field in which senior user's mark has acquired a reputation will be restrained if the public may be confused into thinking that junior user's wares have the cachet of senior user's mark. Such "business confusion" is to be distinguished from "product confusion", in which junior user's wares are purchased as and for those of senior user. With business confusion senior user may not lose sales, but if senior user is wrongly regarded as the source of junior user's wares, senior user will suffer considerable damage. On this basis, competition is not an essential factor before damage can be proved. (Cartier)[187] Thus it does not matter if Remo's products do not compete with those of Jaguar Cars.
(2) Likelihood of confusion is established when it is proven to exist on a "balance of probabilities".[188] The likelihood of confusion has been established in potential, even if it did not exist in actuality.
(3) Confusion is a fact-specific determination, in respect of which prior decisions have little value as precedents. (Pink Panther)[189]
(4) In Cartier it was found that even if confusion was unlikely when junior user began its operations in 1977 (which was not the case), by initiating junior user's campaign in 1983-84, junior user entered the more sophisticated market occupied by senior user, thereby increasing the likelihood of confusion.[190] Jaguar Cars actually did distribute Luggage Wares prior to Remo's adoption in 1980 and use in 1981. But even if Remo's sales of a few types of Luggage Wares predated the Silver Brochure in 1982, and the extensive Jaguar Collection in later years, it was not entitled to do so under the rationale of Cartier.
(5) Each s.6(5) element need not be interpreted as having equal weight. A particular case might justify greater significance being given to one criterion over others. For instance, with strong marks that are well-known throughout Canada, the distinction between the wares and the nature of the trade becomes less important. Certainly those factors are not conclusive of the issue of confusion; they are only incidental criteria to be regarded in ascertaining likelihood of confusion.[191] In this case, in view of the fame of the JAGUAR car mark greater weight should be given to the factors in s.6(5)(a) (extent to which the marks are known), s.6(5)(b) (length of time the trademark has been in use) and s. 6(5)(e) (degree of resemblance between the marks of the trademarks). Less weight should be given to the factors in s.6(5)(b) (nature of the wares) and s.6(5)(c) (nature of the trade).
Sections 6(5)(a) and 6(5)(b)
[304] As to the question in s.6(5)(a) and (b) , the "extent to which they have become known" and "length of time....in use", there are several considerations:
(1) On the issue of registrability in 1980 this issue favours Jaguar Cars because its mark has been used since 1936 and was and is famous whereas Remo did not start use until after 1980;
(2) On the issue of person entitled in 1980 as a result of prior use by Jaguar Cars for either cars OR personal accessories, this issue again favours Jaguar Cars because its use for cars was famous from use since 1936 and its use for personal accessories was at least known in Canada by 1980 as a result of use since the 1950's on certain items of luggage and personal accessories.
(3) Famous or well-known trademarks are entitled to a broader ambit of protection as set out above.[192]
(4) There is no issue on the first part of s.6(5)(a). The mark JAGUAR is inherently distinctive of all the wares in issue as it is not descriptive of them. Inherent distinctiveness is not limited to invented words. For example, JAGUAR is inherently distinctive as applied to automobiles. As the name of an animal, JAGUAR does not, on first impression, bear any relationship to a motor vehicle.
(5) The evidence is that Jaguar Cars used or made known its mark in association with at least suitcases, vehicle wallets and key fobs (both forms of Luggage Wares) since long before 1980 and that it was natural to expand from its luxury car wares into other Luggage Wares.
Sections 6(5)(c) and 6(5)(d)
[305] Where a strong mark is measured against a proposed mark, Sections 6(5)(c) and (d) "nature of the wares...and nature of the trade" are not particularly determinative.[193] Remo's application in 1980 was based on proposed use.
[306] When a senior user's mark has become very well known across Canada and/or internationally, it is entitled to a much wider area of general protection beyond the wares in respect of which the mark has been used. In such cases, the burden on the junior user to dispel any likelihood of confusion is particularly difficult to overcome.[194] Remo has not met its heavy burden[195] to dispel likelihood of confusion where the JAGUAR cars' mark was famous at the material dates.
[307] There is no requirement for a strict affinity or analogy between the parties' wares in order to conclude that the marks are confusing. Trademarks may in fact be confusing whether or not the wares in association with which they are used are of the same general class.[196]
[308] For confusion to be likely, the parties' wares must be linked,[197] such as by showing that: third parties have dealt in both parties' wares[198]; the senior user has dealt in the junior users' wares, even if not through normal channels of trade[199]; or the senior user has conducted promotional activities in connection with wares of the same type as the junior user's.[200] Each of these factors apply to this case as well as the other Connection Factors referred to above under Depreciation. The same considerations apply.
[309] It would be sufficient if the evidence showed that the senior user intended to extend its mark to the junior user's field.[201] By at least 1979, Jaguar Cars had sold some personal accessories into Canada and did intend to extend its market to personal accessories to a whole JAGUAR COLLECTION line.[202] The facts are totally different in this case from Clicquot because Jaguar Cars was very serious about its diversification in 1979 and in fact had sold some of their Luggage Wares in the past.
[310] To establish a likelihood of confusion it is not necessary to prove that the wares are effectively sold in the same place as long as the parties are entitled to do so.[203] In 1980, Jaguar Cars was entitled to sell its Luggage Wares extension in any retail outlet it chose. Remo has advertised its wares on billboards next door to Jaguar dealers and has refused to remove them.[204] Remo acknowledges in the Agreed Facts[205] that the trademarks that are the subject of Jaguar Cars' registrations for the trademark JAGUAR are distinctive of Jaguar Cars in Canada in association with the wares specified in such registrations except the Objected Wares.[206]
Section 6(5)(e)
[311] In this case, the parties' word marks are identical. The parties' design marks both suggest the idea of a JAGUAR.
[312] Section 6(5) requires that the Court look at all the surrounding circumstances.
[313] Evidence of actual confusion is not necessary, as the issue is not actual confusion but the likelihood of confusion (Cartier Men's Shops).[207] Remo claims that it was not aware of any confusion its wares may have caused.[208]
[314] When read carefully, it is Remo that states that it is rather Jaguar Cars that is causing the confusion:
The Plaintiff's use of the trademark JAGUAR in association with the Plaintiff's wares is confusing with Jaguar Cars' trademark JAGUAR used in association with driving license cases, wallet cases, business card holders, belts, credit card holders, key cases, address books, note books, passport holders, beauty cases, document cases and pocket wallets at the date of commencement of the action; and at present.[209]
[315] Even when a senior user's mark is registered by over 30 different entities (ranging from apartment buildings to construction) this does not mean the mark has become so widespread as to lose its distinctiveness and a senior user is justified in pursing only certain uses, that is, in fields where confusion was likely to arise and cause injury to the reputation of senior user's mark. (Cartier)[210] Jaguar Cars makes no attempt to restrain third parties' use of JAGUAR in Canada in association with wares and/or services that are not normally associated with automobiles or personal accessories. Jaguar Cars has taken steps to restrain the unauthorized use in Canadaof the JAGUAR mark in association with wares and services related to Jaguar Cars' Registered Wares. For example, Jaguar Cars opposed Canadian Application No. 693,313 filed November 7, 1991, pursuant to which Manufacture des Montres Jaguar S.A. sought to register JAGUAR for watches. Such application was refused.[211]
[316] A junior user should not be permitted to strengthen its case by generating evidence to show that it had a stronger claim by reason of usage of its mark after becoming aware of the senior user's prior claim to the mark.[212]
Conclusion concerning confusion
[317] Having regard to the foregoing, the Remo trademark JAGUAR, at the material dates in 1981 and 1984 was confusing with Jaguar Cars' prior registration UCA21,618 for the trademark JAGUAR for automobiles. (s.12(1)(d))
[318] Further the Remo trademark JAGUAR was at the material dates in 1980 and 1982;
(1) confusing with Jaguar Cars prior use on automobiles;
(2) confusing with Jaguar Cars' prior use on Luggage Wares.
[319] Remo's registration is therefore invalid for these additional reasons.
[320] The question here is whether as of June 5, 1991 (when the action commenced) and as of March 6, 1992 (when Jaguar Cars filed its Counterclaim) and at present, the trademark JAGUAR was and is not distinctive of Remo's Luggage Wares in view of the use of the trademark JAGUAR by Jaguar Cars in association with automobiles and/or Luggage Wares.
[321] Remo commenced this action on June 5, 1991. In its Statement of Claim, Remo asserted that the Remo Registration was valid, thereby bringing its validity into question. Accordingly, under the usual rule, the distinctiveness of Remo's Registration is to be assessed on the basis of the facts as they existed on June 5, 1991.
[322] There are three elements to distinctiveness: (1) the mark and the goods or services must be associated, (2) the owner of the mark uses this association and is selling the goods or services, and (3) this association enables the owner to distinguish its goods or services from those of others.[213]
[323] The determination of whether a trademark satisfies these elements is a question of fact to be determined by looking at all the circumstances. The Court must begin its analysis with an examination of the specific wording used in the challenged registration. It should determine whether the owner of the mark and/or any other person was using or generating goodwill, in connection with the trademark in question in association with the wares outlined in the registration, at the material time. Only when it has completed this analysis is the Court in a position to determine whether the trademark actually distinguishes the wares or services of its owner from those of other producers or suppliers or such goods or such services.[214]
[324] When a trademark does not have inherent distinctiveness, it may still acquire distinctiveness through continual use in the marketplace. However, where junior user adopts senior user's trademark - that has become known in Canada(regardless of whether senior user has used its mark in Canada, such that it has become distinctive of senior user) ― the courts have disregarded any acquired distinctiveness resulting from junior user's use of senior user's mark. This is because junior user's original adoption of senior user's mark was not for the purpose of distinguishing junior user's wares from senior user or its wares. (Motel 6)[215]
[325] In Motel 6, senior user's mark had been used in the U.S. since 1961, but there had been no use in Canada before the trial. In 1979, senior user applied to expunge junior user's Canadian registration for essentially the same mark, which had issued in 1974 based on a 1972 filing. Senior user alleged in part that the mark was not distinctive of junior user. In the course of expunging the registration, Mr. Justice Addy said the following:
A trade mark can neither distinguish nor be adapted to distinguish the services of a person if another person has used the mark in a foreign country and it has become known in Canada as the latter's mark in respect of similar services. On the issue of lack of distinctiveness of a mark, although it must be shown that rival or opposing mark must be known to some extent at least, it is not necessary to show that it is well known or that it has been made known solely by the restricted means provided for in s. 5, supra. It is sufficient to establish that the other mark has become known sufficiently to negate the distinctiveness of the mark under attack...
The attack based on non-distinctiveness is not restricted to actual performance of services in Canada as in the case of a claim of prior use pursuant to s. 4. It also may be founded on evidence of knowledge or reputation of the opposing mark spread by means of word of mouth and evidence of reputation and public acclaim and knowledge by means of newspaper or magazine articles as opposed to advertising. All relevant evidence may be considered which tends to establish non-distinctiveness.[216] (Emphasis added)
[326] In other words, because junior user adopted senior user's mark - which enjoyed a substantial reputation and goodwill in Canada before such adoption through to trial - the mark was incapable of ever distinguishing junior user's services, regardless of the extent to which junior user used the mark. The mark JAGUAR had already distinguished Jaguar Cars automobiles and extended to wares like Luggage Wares.
[327] The principle that junior users who adopt senior users' well known marks should not benefit from any acquired distinctiveness resulting from junior users' use of such misappropriated marks has been applied in situations other than expungement actions. For example:
(1) In Orkin (a passing off case), the Ontario Court of Appeal rejected junior user's assertion that any goodwill in Ontario in senior user's marks belonged to junior user, considering it had used the marks for over 10 years prior to senior user voicing its objection and senior user had not carried on business in Canada:
...from the beginning of its "use" of [senior user's word mark] in 1967 [junior user] acquired no rights against [senior user] and that in 1967 [senior user], if it had known of the misappropriation, could have obtained an injunction against [junior user] to protect its rights in Ontario. [senior user]'s rights, because of its steadily increasing reputation in Ontario, were even more solidly based in 1976 when [senior user] began to use [senior user's logo]...
In 1967 [senior user]'s reputation in Ontario, based on its customers in Ontario and advertising of various kinds was, in the circumstances, of sufficient strength to make [senior user]'s rights superior to those of [junior user]. Its reputation has grown steadily since 1967 [when junior user commenced use of senior user's mark]...
What are the circumstances? A very cogent circumstance is [junior user]'s decision in 1967 to use the [senior user] name in Ontario. This is evidence from which it may be inferred that the name [senior user] had commercial value at that time in Ontario and is a circumstance that has been observed in several cases to be an important indication of goodwill in a "foreign" territory: [authorities omitted]. [217]
(2) The plaintiff in Cartier had for many decades used its famous CARTIER mark throughout the world for jewellery and other personal items (excluding eyeglasses). When a trademark infringement action was commenced, the defendant had already been selling CARTIER-branded eyeglasses throughout Canada for 6 years. The plaintiff began selling CARTIER-branded eyeglasses outside Canadaone year after commencing the action. The court rejected the defendant's assertions that this sequence of events worked in its favour, and the plaintiff's late entry and court proceedings "represent[ed] nothing less than an expropriation". On the issue of distinctiveness, the court said:
...There is conclusive evidence that the Cartier name in association with jewellery and other expensive luxury goods has been known in Canada long before the defendant came into operation in 1977. The latter only started to advertise in a substantial way in the 1983-1984 period so as to meet the new competition from the designers who had entered the eyeglass market.[218]
(3) In Humpty Dumpty, Mr. Justice Martin found that the Opposition Board should not have considered the applicant's (junior user's) use of its mark after the opponent's (senior user's) co-pending application for the same mark had been cited against the junior user's proposed use application, including junior user's use prior to the material date for considering the non-distinctiveness basis of opposition (i.e. the date the opposition was filed):
...I would also allow this appeal on the grounds that the chairman should not have received the evidence of the [junior user] with respect to the use of its proposed trademark after the [junior user] had received the notice of May 10, 1985, from the Trade marks Office that its proposed mark would not appear to be entitled to registration in view of the co-pending and conflicting application of the [senior user.]
In Molnlycke[219] [the Court held]:
The obvious fallacy in accepting the date of opposition proceedings as the effective date for the consideration of the rights between the parties rather than the date of the filing of the opposition would permit the circumstances being varied in the interval to strengthen the position of one of the parties...(Emphasis added)
In the present case the [junior user] had been informed of the unlikelihood of its application being allowed because of the apparent confusion with the [senior user's] application. It then set out to strengthen its case by the generation of evidence to show that it had a prior claim and stronger claim by reason of usage. In the words of the court in the Molnlycke case these are circumstances which should not have been considered and, in my view, for the same reason, the evidence of the [junior user's] activities which occurred after the notice of May 10, 1985, should not have been considered by the chairman.[220]
[328] These principles are applicable to Remo's adoption of the JAGUAR mark in 1980. Even if it had been found that Jaguar Cars' had not "used" the JAGUAR mark in Canada in association with Luggage Wares by 1980, which it had, Jaguar Cars zone of expansion included Luggage Wares in 1980. In particular, the JAGUAR mark was not distinctive of Remo's Luggage Wares in 1980 or 1991, nor was it ever adapted to distinguish Remo's Luggage Wares bearing in mind the JAGUAR car mark was well known throughout the world, including in Canada by 1980, and the worldwide brand extension trend for well known automobiles into personal accessories including Luggage Wares was well under way by 1980. The fame of the JAGUAR car mark and Jaguar Cars' use of the mark for Luggage Wares only increased between 1980 and 1991. In view of the potential confusion between Remo's mark with Jaguar Car's mark for both cars and Luggage Wares, Remo's mark has never been distinctive.
[329] Up to 1999, Remo did not advertise extensively. Then in 1999, well after commencement of this action and after obtaining an agreement from Jaguar Cars not to bring an interlocutory injunction application in return for dropping Remo's trademark application, Remo commenced a significant and extensive billboard and media campaign.
Conclusion concerning distinctiveness
[330] As in Motel 6, Remo's sale of JAGUAR-branded Luggage Wares cannot result in acquired distinctiveness during 1980-1991. In conclusion, the Remo trademark JAGUAR is invalid.
Invalidity of Remo's Registration
[331] Remo's registration is invalid for all four of the above grounds.
[332] Section 57(1) reads:
| The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark. |
La Cour fédérale a une compétence initiale exclusive, sur demande du registraire ou de toute personne intéressée, pour ordonner qu'une inscription dans le registre soit biffée ou modifiée, parce que, à la date de cette demande, l'inscription figurant au registre n'exprime ou ne définit pas exactement les droits existants de la personne paraissant être le propriétaire inscrit de la marque. |
[333] In conclusion, Remo's registration shall be struck from the register.
Validity of Jaguar Cars Trademark Registrations for the Objected Wares
[334] Remo seeks to have Jaguar Cars' JAGUAR Registration Nos. 378,643 and 378,644 amended to delete the Objected Wares: driving licence cases, wallet cases, business card holders, belts, credit card holders, key cases, address books, note books, passport holders, beauty cases, document cases, pocket wallets.
[335] Remo alleges that on the following dates, the alleged use or proposed use of the trademark JAGUAR by Jaguar Cars in association with the Objected Wares was likely to cause confusion with Remo's registered trademark JAGUAR for Luggage Wares:
(1) On April 1, 1987 (the date of application for registration no. 378,643 and 378,644) and considering Remo's prior use of JAGUAR for Luggage Wares; and/or
(2) On January 25, 1991(when Jaguar Cars' registration nos. 378,643 and 378,644 issued) and considering Remo's prior registration for JAGUAR for Luggage Wares.
[336] Remo also alleges that on July 9, 1991 (when Remo filed its Statement of Claim) the trademark JAGUAR was non-distinctive of Jaguar Cars' Objected Wares in view of the use of the trademark JAGUAR by Remo in association with Luggage Wares.
[337] Remo's infringing and depreciating use and registration of the JAGUAR trademark cannot invalidate Jaguar Cars' JAGUAR mark and registrations for the Objected Wares. Remo's Registration is invalid and vulnerable to expungement because Remo's initial adoption of the JAGUAR mark was not adapted to distinguish its Luggage Wares from the wares of Jaguar Cars. From its inception, Remo's Registration had the potential to depreciate the goodwill in Jaguar Car's trademark...
[338] In equity, a junior user should not be in a position to usurp a senior user's trademark rights just because the senior user was unaware of the junior user's infringing and depreciating activities,[221] even if the junior user may himself not have known of the existence of the senior user. Remo made sales with very little promotion for ten years and then Remo sued Jaguar Cars. Jaguar Cars threatened to bring an action against Remo in 1990 when it learned of Remo and ultimately brought its counterclaim against Remo in 1992 within a reasonable time after it had knowledge of Remo's use. Then, eight years after filing this action, Remo commenced a significant and extensive national billboard advertising campaign while in the midst of the litigation, which could change the distinctiveness of the Remo mark in the eyes of the Canadian public. In equity, this behaviour by a junior user ought not to be permitted.[222]
[339] In any event, Remo's use does not cause a loss of distinctiveness of Jaguar Cars' registration for the Objected Wares because not only did Jaguar Cars have some goodwill in Luggage Wares before 1980, but also the Objected Wares were a natural extension of Jaguar Cars' famous trademark JAGUAR. Consumers who see the Objected Wares of Jaguar Cars would connect them with the famous mark, not Remo.
[340] In conclusion the Jaguar Cars registrations remain valid.
Depreciation, Infringement and Passing Off by Remo
[341] The issues are whether Remo has:
(1) Used the trademark JAGUAR in such a manner as to be likely to depreciate the value of the goodwill attaching to Jaguar Cars' registered trademarks contrary to s.22(1).
(2) Infringed Jaguar Cars' exclusive right to use the registered JAGUAR trademark pursuant to s.19 and 20.
(3) Directed public attention to its wares such that confusion was likely to be caused in Canada between Remo's wares and the wares of Jaguar contrary to s.7(b). and/or
(4) Passed off its wares contrary to s.7(c).
[342] The material date for these issues is the date of decision.
[343] The potential depreciation by Remo has been established above.
[344] Infringement and passing off are governed by the following sections from the Trade-marks Act:
| 19 ...The registration of a trade-mark in respect of any wares or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those wares or services.
...
20. (1) The right of the owner of a registered trade-mark to its exclusive use shall be deemed to be infringed by a person not entitled to its use under this Act who sells, distributes or advertises wares or services in association with a confusing trade-mark....
* * *
7. No person shall
...
(b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another.
(c) pass off other wares or services as and for those ordered or requested.
|
19 [...] l'enregistrement d'une marque de commerce à l'égard de marchandises ou services, sauf si son invalidité est démontrée, donne au propriétaire le droit exclusif à l'emploi de celle-ci, dans tout le Canada, en ce qui concerne ces marchandises ou services.
[...]
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 non admise à l'employer selon la présente loi et qui vend, distribue ou annonce des marchandises ou services en liaison avec une marque de commerce ou un nom commercial créant de la confusion...
* * *
7. Nul ne peut :
[...]
b) appeler l'attention du public sur ses marchandises, ses services ou son entreprise de manière à causer ou à vraisemblablement causer de la confusion au Canada, lorsqu'il a commencé à y appeler ainsi l'attention, entre ses marchandises, ses services ou son entreprise et ceux d'un autre;
c) faire passer d'autres marchandises ou services pour ceux qui sont commandés ou demandés;
|
[345] In each case the question of confusion arises, this time between Remo's mark for Luggage Wares and Jaguar Cars valid registrations for both cars and for the Objected Wares. Based on the principles of confusion referred to above, it is concluded that confusion is possible.
[346] To establish passing off, the senior user must establish that: (a) the senior user's trademark has a reputation (goodwill) in the marketplace; (b) the junior user has misrepresented its wares as those of the senior user (whether knowingly or unknowingly); (c) such misrepresentation was calculated or likely to deceive the consuming public into thinking the junior user's wares emanate from the senior user, and (d) such conduct is likely to injure the senior user's goodwill. (Institut National).[223]
[347] The law assumes, or presumes, that if the goodwill of a man's business has been interfered with by the passing off of goods, damage results therefrom. He need not wait to show that damage has resulted, (Sun Life)[224]
[348] It is concluded that Remo has infringed Jaguar Cars registered trademarks and passed off its wares contrary to s.19, 20, 7(b) and 7(c) of the Trade-marks Act.
[349] Jaguar Cars is therefore entitled to the following relief: A declaration that Remo's registration is invalid and Jaguar Cars' trademarks have the potential to be depreciated, infringed and passed off, as well as the issuance of an injunction. (Whiten; Apotex)[225]
No Infringement or Passing Off by Jaguar Cars
[350] Remo's registration is invalid for the reasons set out above. Therefore, Jaguar Cars has had the right to sell its personal accessories products in association with the trademark JAGUAR and as a famous brand has had the right to natural brand extensions. It is concluded that there has been no infringement or passing off by Jaguar Cars.
[351] The parties have agreed that costs will be dealt with by submissions after judgment is given.
[352] Remo's action is dismissed and Jaguar Cars counterclaim is allowed.
THIS COURT ORDERS AND DECLARES THAT:
1. Plaintiff's action is dismissed and Defendants' counterclaim is allowed.
2. Plaintiff's Registration No. 263,924 is and always has been invalid, and shall be expunged on the bases that at all material times:
(1) Use of Plaintiff's JAGUAR mark in association with Luggage Wares is likely to depreciate the value of the goodwill attaching to Jaguar Cars Limited's Registrations for JAGUAR marks for automobiles contrary to Section 22 of the Trade-marks Act.
(2) Use of Plaintiff's JAGUAR mark in association with Luggage Wares could potentially deceive and mislead the public.
(3) Use of Plaintiff's JAGUAR Mark in association with Luggage Wares is likely to cause confusion with Defendants' trademark JAGUAR for automobiles and JAGUAR for Luggage Wares, and therefore:
(a) Plaintiff's JAGUAR mark has never been registrable, and
(b) Plaintiff was never entitled to register the JAGUAR mark; and
(4) Plaintiff's JAGUAR mark has never been distinctive of Remo.
3. Jaguar Cars Limited's JAGUAR Registration Nos. 378,643 and 378,644 is valid, including the Objected Wares: driving licence cases, wallet cases, business card holders, belts, credit card holders, key cases, address books, note books, passport holders, beauty cases, document cases, pocket wallets.
4. Plaintiff, by itself, its directors, officers, servants, agents, workmen or through any entity directly or indirectly owned or controlled by it or otherwise is restrained and permanently enjoined from:
(1) selling, advertising or otherwise using in Canada in association with consumer products any trade-mark which includes the word JAGUAR or a Leaping Jaguar Design, or any trade-mark or trade name which depreciates the value of the goodwill attaching to the JAGUAR family of trademarks owned by the Defendants as defined in the Amended Statement of Defence and Counterclaim;
(2) Using the trademark JAGUAR or a Leaping Jaguar Design so as to deceive and mislead the public;
(3) selling, advertising or otherwise using in Canada in association with consumer products any trademark which includes the word JAGUAR or a Leaping Jaguar Design, or any trademark or trade name confusingly similar to the JAGUAR family of trademarks owned by the Defendants;
(4) infringing the exclusive rights of the Defendant, Jaguar Cars Limited, to use its JAGUAR family of trademarks;
(5) directing public attention to its wares by using in association therewith the trademarks JAGUAR or Leaping Jaguar Design or any trademark, trade name or corporate name confusingly similar to the JAGUAR family of trademarks; and
(6) passing off or enabling others to pass off its wares as and for those of the Defendants.
5. Plaintiff is required to destroy or deliver up under oath to the Defendants for destruction all products, packaging, promotional materials, sales literature, printed matter, labels, advertising copy, videotapes, film, art work or any other materials as may be in the possession or within the power, custody or control of the Plaintiff which bear a trademark, trade name or corporate name which is contrary to the injunction granted herein.
6. Plaintiff shall not pay to the Defendants any exemplary, punitive or other monetary damages because until now, no monetary damages have been proven. The respective clienteles and markets of the respective parties have been separate until now; however, that may not be the situation for the future.
7. The parties shall make written submissions to this Court concerning costs within 2 months of the date of this Judgment. A reply in writing, if any, shall be filed within two weeks of receipt of the initial submissions.
JUDGE
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-1473-91
STYLE OF CAUSE: REMO IMPORTS LTD.
v.
JAGUAR CARS LIMITED and
FORD MOTOR COMPANY OF CANADA,
LIMITED/FORD DU CANADA LIMITEE
Carrying on business as JAGUAR CANADA
PLACE OF HEARING: MONTREAL, QUEBEC
DATE OF HEARING: October 18, 2004 to October 27, 2004
June 20, 2005 to July 21, 2005
October 31, 2005 to November 4, 2005
AND ORDER BY: The Honourable Mr. Justice Shore
APPEARANCES:
Mr. Arthur Garvis FOR THE PLAINTIFF/
Mr. Richard Uditsky DEFENDANT BY COUNTERCLAIM
Mr. Douglas Wilson FOR THE DEFENDANTS/
Ms. Pauline Bosman PLAINTIFFS BY COUNTERCLAIM
SOLICITORS OF RECORD:
McMILLAN BINCH MENDELSOHN FOR THE PLAINTIFF/
MONTREAL (QUEBEC) DEFENDANT BY COUNTERCLAIM
RIDOUT & MAYBEE FOR THE DEFENDANTS/
TORONTO (ONTARIO) PLAINTIFFS BY COUNTERCLAIM
[1] (Bergesen Report, para. 10, see also p. 16, Exhibit 13, 15); (Bergesen Cross 12 July 05 pp. 20-22).
[2] (Joachimsthaler Affidavit, Paras 1-5; Ex. 1).
[3] Walt Disney Productions v. Triple Five Corp. et al (1992), 43 C.P.R. (3d) 321; affirmed (1994), 53 C.P.R. (3d) 129; leave to appeal refused (1994), 55 C.P.R. (3d) vi (note) (S.C.C.).
[4] McDonald's Corp. et al. v. Coffee Hut Stores Ltd. (1994), 55 C.P.R. (3d) 463.
[5] Joseph E. Seagram & Sons Ltd. et al. v. Registrar of Trade Marks et al (1990), 33 C.P.R. (3d) 454. (F.C.T.D., Mackay J.); affirmed (1984), 3 C.P.R. (3d) 325 (T.M.O.B.).
[6] Salada Foods Ltd. v. W.K. Buckley Ltd. (1973), 9 C.P.R. (2d) 3 (F.C.T.D.).
[7] Mattel, Inc. v. 3894207 Canada Inc. et al. (2004), 30 C.P.R. (4th) 456., affirming (2002), 23 C.P.R. (4th) 395 (T.M.O.B.)
[8] Agreed Facts D64, D65; VSA 19.
[9] Exhibit VSA19; Agreed Fact D64.
[10] Agreed Facts D38, D75, D76, D77 and D105 and testimony of Messer's Clausager, Maries, Robertson and Mackie (Def. Memo Section 1).
[11] Agreed Facts D55, 57, 58, 241, 242, 245, Robertson Ev. Jun 22: 175.17 to 180.04; Jun 23: 200:20 to 26:8; Mackie Ev. Jun 30: 51.07 to 55.13; Jun 28: 140.08 to 143.18.
[12] (Agreed Fact D87; Def. Memo Vol I Section 2).
[13] VSA 13.1, J104.63.
[14] VSA 13.1, J104.63; Historic currency converter.
[15] Agreed Fact D93.
[16] Def. Memo Vol I Section 4.
[17] (Def. Memo Section 4).
[18] Ex MH 5.338 Toronto Star 1988.
[19] Ex MH 5.345 Toronto Star 1988.
[20] EX MH 5.394 Toronto Star 1987.
[21] Agreed Facts D34-38.
[22] Agreed Fact D220A.
[23] Agreed Facts 75-77, 81, 82-86; Defendant's key documents list pp. 2-4.
[24] Maries' Ev. Jun 27 :14.11 to 14.23; Clausager Ev. June 28: 58.10 to 59.16.
[25] Agreed Fact D220A.
[26] Agreed Fact D221A.
[27] Agreed Facts D222, 223.
[28] Agreed Fact D241.
[29] Agreed Fact D246A.
[30] Agreed Fact D254(4)-(7).
[31] Agreed Fact D260.
[32] Def. Memo pp. 71.72.
[33] Def. Memo p. 72; Agreed Facts D224A, B, D225, D226, D227.
[34] Def. Memo pp. 72-73; Agreed Fact D255.
[35] Agreed Facts D230-234.
[36] Agreed Facts D238-239.
[37] Def. Memo p. 79; Agreed Fact D261.
[38] Def. Memo pp. 75-76; Agreed Facts D246A, B.
[39] Def. Memo pp. 76-79; also Schedule I.1; Agreed Facts D221B, C, D254, D258.
[40] Def. Memo p. 79; Agreed Fact D261.
[41] Agreed Fact D266.
[42] Def. Memo pp. 80-81; Agreed Facts D91, D227, D276, D280-282, D285, D287.
[43] Agreed Facts D266, D268, D269, D270.
[44] Def. Memo pp. 73-75.
[45] Def. Memo pp. 79-80.
[46] Def. Memo pp.81-82.
[47] Def. Memo p. 82.
[48] Def. Memo p. 89; Agreed Facts D182, 183, 185-192, 194, 223, 224A, 225, 245; Def. Key Documents pp. 6, 6A, 11.
[49] Def. Memo pp. 89-91; Agreed Facts D195A, B, C.
[50] Def. Memo p. 89; Agreed Facts D183, 192, 213-218, 224A, 225.
[51] Def. Memo pp. 91-93; Agreed Fact D200.
[52] Agreed Facts D199, 200.
[53] Def. Memo p. 93; Agreed Facts D202-207.
[54] Agreed Facts D208, 236.
[55] Agreed Fact D209.
[56] Def. Memo p. 61; Agreed Fact D181.
[57] Agreed Fact D201.
[58] Agreed Fact D211.
[59] MH2.120.
[60] MH5.304.
[61] MH2.28.
[62] Causager Ev. Jun 28 : 59.17 to 60.15.
[63] Agreed Fact D195B4.
[64] Agreed Fact D195B(5).
[65] Agreed Fact D195B(6).
[66] Agreed Fact D195B(11).
[67] Agreed Fact D195B(12).
[68] Agreed Fact D195B(13).
[69] Agreed Fact D195A(1) and see Clausager Ev. Jun 28: 67.10 to 69.21; 103.07 to 104.16.
[70] Agreed Fact D195A(5) and see Clausager Ev. Jun 28: 71.01 to 73.08; 104.17 to 105.15.
[71] Agreed Fact D195A(8).
[72] Agreed Fact D195A(9) and see Clausager Ev. Jun 28: 69:22 to 70:14; 62.20 to 64.10; 100.16 to 102.07.
[73] Manuel Ev. 23June05.
[74] Def. Memo pp. 97-102.
[75] Agreed Fact 254(4).
[76] Def. Memo pp. 96-97.
[77] Def. Memo pp. 102-3.
[78] Def. Memo p. 103.
[79] Def. Memo pp. 94-96.
[80] Maries' Ev. Jun 27 : 191.01 to197.02.
[81] Maries' Ev. Jun 27 : 191.01 to 197.01; 197.03 to 203.13; Jun 29 : 106.15 to 108.24; 179.06 to 181.20; 186.20 to 190.04.
[82] Green Ev. Jun 30 : 124.03 to 125 :20.
[83] Mackie Ev. Jun 30 : 17.03 to 21.21.
[84] Maries' Ev. Jun 27 : 203.14 to 206.19,
[85] Maries' Ev. Jun 27 : 206.20 to 209.03; Jun 29 : 23.07 to 25.17.
[86] Mackie Ev. Jun 30 : 85.01 to 86.18, 95.21 to 97.12; Exhibit J105.16.
[87] Agreed Facts D87, 108, 122-129, 131, 133, 134-136, 140, 141.
[88] Agreed Facts D92, 147, 230, 232-235, 266, 267, 272, 273.
[89] Agreed Facts D112, 113, 114, 128, 137A, 137B, 139, 220B, 221A,(2)(i), 221B(1), 221C(1), 246B, 249-253, 257, 258, 276, 277, 278, 280, 285, 288.
[90] Def. Memo pp. 129-9.
[91] Def. Memo pp. 129-130.
[92] Def. Memo pp. 131-132.
[93] Agreed Facts D50, 113, 114, 150-153, 156-158, 161-164, 166, 167, 171, 210, 259, 289-292, 294, 296-302; Shortt Ev. Jun 21 : 258.03 to 268.15; Jun 22 : 146.19 to 147-13.
[94] Agreed Facts D370-505.
[95] Agreed Facts D375, 376, 391, 404, 405, 411B, 425, 426, 427.
[96] Maries Ev. Jun 27 : 167.15 to 190.23; Green Ev. Jun 30: 122.16 to 124.02,
[97] Agreed Facts D33, D82.
[98] Agreed Facts D33-35.
[99] Agreed Facts D347, 348.
[100] Bassal Cross, 20Oct04, pp. 164.5 to 166.15, 170.19 to 173.3,
[101] Agreed Facts D306, 307, 310; P4, 25; Bassal Cross, 20Oct04, pp. 207.7 to 212.23..
[102]Agreed Facts P5, 6; D309.
[103] Agreed Facts P10, 888, 889; D305, 311, 314, 321, 322, 324-326, 328, 329, 358, 359.
[104] Agreed Facts P890; D364, D361, D362, P808.
[105] Agreed Facts D9, P7.
[106] Agreed Fact D22.
[107] Agreed Facts P8, D10-12, 14, 18.
[108] Agreed Facts D15, 16, 18.
[109] Agreed Fact P9.
[110] Agreed Facts D365-367, P836, P847, P849, P881.
[111] Agreed Fact D368.
[112] Agreed Facts D20, D21; Bassal Cross, 20Oct04, pp. 190.12, to 202.22.
[113] Agreed Facts P10, 11-13; D319, 355.
[114] Joachimsthaler Ev.
[115] Bassal Cross, 20Jun05, pp.42/05 to 43.25.
[116] Bassal Cross, 20Jun05, pp. 57.22 to 58.16.
[117] Bassal Cross, 21 Jul05, pp. 156.12 to 164.14.
[118] Bassal Cross, 20Jun05, pp. 48.01 to 48.13.
[119] Agreed Facts D33, D34, D35.
[120] John Haig & Co. Ltd. v. Haig Beverages Ltd. (1975), 24 C.P.R. (2d) 66 at p. 71, (QL) at p. 4 (F.C.T.D., Addy, J.); reversing (1974) 21 C.P.R. (2d) 271 (TMOB); Leaf Confections Ltd. v. Maple Leaf Gardens Ltd. (1986), 12 C.P.R. (3d) 511 at p. 520, (QL) at p. 3 (F.C.T.D., Rouleau J.); affirming (1984), 3 C.P.R. (3d) 93 (TMOB); affirmed (1988), 19 C.P.R. (3d) 331 (F.C.A.; Heald, Mahoney, Hugessen JJ.); Advance Magazine Publishers Inc. v. Masco Building Products Corp. (1999), 86 C.P.R. (3d) 207 at para. 33 (F.C.T.D.; Richard A.C. J.); reversing (1996), 73 C.P.R. (3d) 311 (TMOB); Danjaq Inc. v. Zervas (1997), 75 C.P.R. (3d) 295 at p. 303, (QL) at p. 7 (F.C.T.D. Lutfy J.); reversing (1996), 67 C.P.R. (3d) 247 (TMOB); United Artists Corp. v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 at paras. 40, 41, 43 (F.C.A., Isaac C.J., Linden and McDonald JJ.A.); reversing (1996), 67 C.P.R. (3d) 216 (F.C.T.D., Mackay J.); affirming (1990), 34 C.P.R. (3d) 135 (TMOB).
[121] Cartier Inc. v. Cartier Optical Ltd. (1988), 20 C.P.R. (3d) 68 at pp. 70-71, (QL) at p. 3 (F.C.T.D., Dube J.).
[122] Miss Universe, Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 at pp. 388-390, (QL) at p. 7 (F.C.A., Hugessen, Decary, Létourneau JJ.A.); reversing (1992), 43 C.P.R. 3(d) 462 (F.C.T.D., Strayer J.); affirming (1991), 36 C.P.R. (3d) 76 (TMOB).
[123] Sun Life Assurance Co. of Canada v. Sunlife Juice Ltd. (1988), 22 C.P.R. (3d) 244 (QL) at pp. 5-6 (Ont. H.C., MacFarland J.).
[124] Berry Bros. & Rudd Ltd. v. Planta Tabak-Manufactur Dr. Manfred Oberman (1980), 53 C.P.R. (2d) 130 at p. 134, (QL) at p. 4 (F.C.T.D., Cattanach J.); reversing (1979), 47 C.P.R. (2d) 205 (TMOB).
[125] John Walker & Sons Ltd. v. Steinman (1965), 44 C.P.R. 58 at pp. 60-62, (QL) at p. 2 (RegTM).
[126] Glen-Warren Productions Ltd. v. Gertex Hosiery Ltd. (1990), 29 C.P.R. (3d) 7 at p. 13, (QL) at p. 5 (F.C.T.D., Dubé J.); reversing (1989), 25 C.P.R. (3d) 309 (TMOB).
[127] Veuve Clicquot Ponsardi v. Boutiques Cliquot Ltée. (2003), 28 C.P.R. (4th) 520 at paras. 59, 75 (F.C.T.D.; Tremblay-Lamer J.); affirmed (2004), 35 C.P.R. (4th) 1 (F.C.A., Desjardins Noël, Nadon JJ.A.); leave to appeal to SCC
[128] Clairol International Corp. and Clairol Inc. of Canada v. Thomas Supply & Equipment Co. Ltd. et al. (1968), 55 C.P.R. 176 (Ex. Ct.).
[129] S.C. Johnson & Son, Ltd. v. Marketing International Ltd. (1977), 32 C.P.R. (2d) 15 at 29 (QL) at p. 10 (F.C.T.D.' Cattanach, J.); reversed (1978), 41 C.P.R. (2d) 35 (F.C.A., Jackett, C.J. Urie, Ryan, JJ.); affirmed (1979), 44 C.P.R. (2d) 16 (SCC, Martland, Pigeon, Dickson, Estey, McIntyre, JJ.).
[130]Orkin Exterminating Co. Inc. v. Pestco Co. of Canada Ltd. (1985), 5 C.P.R. (3d) 433 at p. 444, (QL) at pp. 8-9 (Ont.C.A.): Zuber, Morden and Robins JJ.A.); affirming (1984), 80 C.P.R. (2d) 153 (Ont.H.C.J.); Disney above; Alfred Dunhill Ltd. v. Sunoptic S.A., [1979] F.S.R. 337 at p. 362 (UK CA, Megaw, Roskill and Brone, LLJ) relied on in Cartier at p. 73, (QL) at p. 4)
[131] Orkin above at p. 444, (QL) at pp. 8-9.
[132] Orkin above at p. 454, (QL) at p. 15.
[133] Clairol above at. p. 195, (QL) at p. 12.
[134] Clicquot above at p. 541, (QL) at para. 94; ITV Technologies, Inc. v. WIC Television Ltd. (2003), 29 C.P.R. (4th) 182 at paras. 195-196 (F.C.T.D., Tremblay-Lamer J); affirmed (2005), 38 C.P.R. (4th) 481 (F.C.A., Noël, Evans, Pelletier JJ.A.).
[135] Pink Panther above at para. 43.
[136] Clicquot above at para. 5.
[137] Advance above at paras.39-53.
[138] Glen-Warren above at pp. 11-12, (QL) at p. 4.
[139] Cartier above at pp. 3-5 (QL).
[140] Sun Life above at pp. 251-52, (QL) at p. 6.
[141] Maple Leaf above at p. 519, (QL) at p. 4.
[142] Conde Nast Publications Inc. v. Gozlan Brothers Ltd. (1980), 49 C.P.R. (2d) 250 at p. 255, (QL) at p. 4: (F.C.T.D., Cattanach J); reversing (1978), 43 C.P.R. (2d) 234 (TMOB).
[143] Berry Bros above at p. 142, (QL) at p. 9.
[144] Coca-Cola Ltd. v. Fisher Trading Co. (1988), 25 C.P.R. (3d) 200 at 202-03 (QL) at p. 3 (F.C.T.D., Teitelbaum J.).
[145] John Walker above at pp. 60-61, (QL) at p. 2.
[146] Haig above at p. 274, (QL) at p. 3.
[147] Toyota Jidosha Kabushiki Kaisha v. Lexus Foods Inc. (2000), 9 C.P.R. (4th) 297 (F.C.A., Strayer, Linden, Malone JJ.A.); reversing (1999), 2 C.P.R. (4th) 62 (F.C.T.D., Blais J.); reversing (1997), 79 C.P.R. (3d) 131 (TMOB).
[148] Mattel, Inc. v. 3894207 Canada Inc. (2004), 30 C.P.R. (4th) 456 (F.C.T.D.); affirming (2002), 23 C.P.R. (4th) 395 (TMOB).
[149] Seagram above.
[150] Playboy Enterprises, Inc. v. Astro Tire & Rubbert Co. of Canada Ltd. (1978), 46 C.P.R. (2d) 87 (TMOB).
[151] Clicquot above at p. 535.
[152] Clicquot above at p. 535.
[153] Clicquot above p. 535.
[154] Toyotav. Lexus Foods above at p. 300.
[155] Cartier above at 74, (QL) at pp. 4-5.
[156] Clairol above at 199-200, (QL) at p. 15.
[157] Dunhill above.
[158] 826129 Ontario Inc. v. Sony Kabushiki Kaisha (1995), 65 C.P.R. (3d) 171 at 183, (QL) at p. 8 (F.C.T.D., McKeown J).
[159] Joachimsthaler Affidavit; Moorthy Affidavit.
[160] Clairol above at 195, (QL) at p. 12.
[161] Source Perrier (Societe Anonyme) v. Fira-Less Marketing Co. Ltd. (1983), 70 C.P.R. (2d) 61 at 65, (QL) at p. 3 (F.C.T.D., Dube J).
[162] Meubles Domani's v. Guccio Gucci S.P.A. (1992), 43 C.P.R. (3d) 372 at 380-81, (QL) at p. 7 (F.C.A.); Cie Générale des Établissements Michelin-Michelin & Cie v. C.A.W.-Canada (1996), 71 C.P.R.(3d) 348 at 363, (QL) at p. 15 (F.C.T.D., Teitelbaum J); Clicquot at p. 540, (QL) at p. 14; ITV above at p. 230.
[163] Orkin above at pp. 43-34.
[164] Hilton Hotels Corp. et al. v. Belkin and Kalensky (1955), 24 C.P.R. 100 at p. 102 (British Columbia Supreme Court; McInnes J).
[165] Orkin above at p. 454, (QL) at p. 15; adopted in Disney at p. 153, (QL) at p. 18.
[166] Disney above at p. 153, (QL) at p. 18.
[167] Joachimsthaler Affidavit, pp. 39, 60.
[168] Orkin above at p. 444, (QL) at p. 8; adopted in Disney above at p. 147, (QL) at p. 14.
[169] Yale Electric Corp v. Robertson, 26 F. 2d 972 at pp. 973-74 (1928, 2nd Cir.C.A.); adopted in Orkin above at p. 445, (QL) at p. 9; adopted in Disney above at pp. 147-48, (QL) at p. 14.
[170] Meubles Domani's v. Guccio Gucci S.P.A. (1992), 43 C.P.R. (3d) 372 at pp. 380-81, (QL) at p. 7 (F.C.A.; Marceau, MacGuigan and Decary JJ.A.); affirming (1991), 39 C.P.R. (3d) 119 (F.C.T.D.; Jerome A.C.J.).
[171] S.C. Johnson above F.C.T.D. at p. 29, (QL) at p. 11.
[172] Clairol above at p. 12.
[173] Perrier above at p. 65, (QL) at p. 3.
[174] Sheraton Corp. of America v. Sheraton Motels Ltd., [1964] R.P.C. 202 at p. 204 (Eng. H. Ct.); adopted in Orkin at pp. 444-45, (QL) at p. 9; adopted in Disney above at p. 147, (QL) at p. 14.
[175]S.C. Johnson above at p. 29, (QL) at pp. 10-11.
[176] Disney above at p. 154, (QL) at p. 19.
[177] Lego System Aktieselskab v. Lego Motels Ltd., [1983] F.S.R. 155 at 195 (Ch. D.); adopted in Disney above at p. 154, (QL) at pp. 18-19.
[178] John Walker & Sons Ltd. v. Rothmans Int'l, [1978] F.S.R. 357 at 360 (High Ct. of Justice); adopted in Cartier above at p. 76, (QL) at p. 6.
[179] Gill, Kelly and R. Scott Jolliffe, Fox on Canadian Law of Trade-marks and Unfair Competition (4th Ed.) (Thomson Carswell, 2002) at 11-24. Williamson Candy Co. v. Crothers Co., [1925] S.C.R. 377 at p. 3. Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 at p. 10 (F.C.A., Thurlow, Ryan and LeDain, JJ.); reversing (1974), 14 C.P.R. (2d) 204 (F.C.T.D.); affirming (1973), 9 C.P.R. (2d) 154 (T.M.O.B.).
[180] Williamson Candy Co. v. W.J. Crothers Co., [1924] Ex. C.R. 183 at paras. 14-15 (Maclean P.); affirmed [1925] S.C.R. 377 (Anglin, C.J.C.).
[181] Re Andres Wines above at p. 10.
[182] Williamson above at para. 16.
[183] Re Andres Wines above at pp. 136-37, (QL) at p. 8.
[184] Re Andres Wines above at p. 140, (QL) at p. 10.
[185] Re Andres Wines above at p. 138, (QL) at p. 8.
[186] Wilhelm Layher GmbH v. Anthes Industries Inc. (1986), 8 C.P.R. (3d) 187 at pp. 194-95, (QL) at p. 7 (F.C.T.D.; McNair J.); Anheuser-Busch, Inc. v. Carling O'Keefe Breweries of Canada Ltd. (1986), 10 C.P.R. (3d) 433 at pp. 444-47, (QL) at pp. 11-12 (F.C.A.; Heald, Mahoney and Stone JJ.); Moore Dry Kiln Co. Of Canada Ltd. v. U.S. Natural Resources Inc. (1976), 30 C.P.R. (2d) 40 at pp. 45-46, (QL) at p. 8 (F.C.T.D.; Mahoney, J.); Valle's Steak House v. Tessier et al. (1980), 49 C.P.R. (2d) 218 at p. 227, (QL) at p. 7 (F.C.T.D.; Marceau, J.).
[187]Cartier above at p. 6 (QL).
[188] Dion Neckware Ltd. v. Christian Dior, S.A. (2002), 20 C.P.R. (4th) 155 (F.C.A.) at paras. 10-12.
[189] Pink Panther above at para. 39.
[190] Cartier above at pp. 80-81, (QL) at p. 9.
[191] Advance above at para. 31; Maple Leaf above at pp. 519-520
[192] Cartier, Advance, Pink Panther, Glen-Warren,Maple Leaf, Berry Bros, Sun Life, above.
[193] Miss Universe above at p. 388, (QL) at p. 6.
[194] Advance above at paras. 34 & 37.
[195] Advance above.
[196] Maple Leaf above at p. 519.
[197] Clicquot, Pink Panther, above.
[198] Berrrry Bros above.
[199] Maple Leaf above.
[200] Sun Life, Glen-Warren, above.
[201] Cartier, Orkin, Pink Panther, Maple Leaf, Sun Life, above.
[202] Clicquot above.
[203] Cartier Men's Shops Ltd. v. Cartier Inc. (1981), 58 C.P.R. (2d) 68 at 74, (QL) at p. 3 (F.C.T.D.).
[204] Agreed Fact D368.
[205] D33-D35.
[206] Agreed Facts D34, 35.
[207] Cartier Men's Shops above at p. 73.
[208] DT31 - Tab 13 Bassal Cross, 20Jun05, pp. 58.14 to 59.05.
[209] Agreed Fact D509.
[210] Cartier above.
[211] Jaguar Cars Ltd. v. Manufacture des Montres Jaguar S.A. (1997), 78 C.P.R. (3d) 548 (T.M.O.B.); Agreed Fact D532; See also Agreed Fact D304 VS104.
[212] Humpty Dumpty Foods Ltd. v. George Weston Ltd. (1989), 24 C.P.R. (3d) 454.
[213] Alibi Roadhouse Inc. v. Grandma Lee's International Holdings Ltd. (1997), 76 C.P.R. (3d) 327 at p. 333, (QL) at p. 6 (F.C.T.D.; Teitelbaum J.); Labatt Brewing Co. v. Molson Breweries, A Partnership (1992), 42 C.P.R. (3d) 481 at p. 494, (QL) at p. 9 (Federal Court, Trial Division; Dubé J.).
[214] Alibi at 333, (QL) at p. 6; Steinberg Inc. v. J.L. Duval Ltée, (1993), 44 C.P.R. (3d) 417 at 420, (QL) at p. 3 (F.C.T.D.; Denault J.); White Consolidated Industries, Inc. v. Beam of Canada Inc. (1991), 39 C.P.R. (3d) 94 at pp. 109-111, (QL) at p. 12 (Federal Court, Trial Division; Teitelbaum J.); Orkin above.
[215] Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 at 58, (QL) at p. 10 (F.C.T.D., Addy J.).
[216] Motel 6 above at pp. 58-59, 60-61, (QL) at pp. 10-12.
[217] Orkin above at 452, 454, (QL) at 15, 13.
[218] Cartier above at 72-74, (QL) at pp. 4-5.
[219] Aktiebolag v. Kimberly-Clark of Canada Ltd. (1982), 61 C.P.R. (2d) 42.
[220] Humpty Dumpty at pp. 461-62, (QL) at pp. 5-6 (F.C.T.D.; Martin J.).
[221] Maries Ev. Jun 29 :111.20 to 116.20; Mackie Ev. Jun 30: 90.11 to 92.02; Shortt Ev. Jun 21: 271.02 to 271.08.
[222] Humpty Dumpty above at p. 2.
[223] Institut National des Appellations d'Origine des Vins et Eaux-de-Vie et al. v. Andres Wines Ltd. Et al., [1987] O.J. No. 644, (QL) at pp. 18-20 (H.C.), aff'd [1990] O.J. No. 1005 (C.A.).
[224] Sun Life above at 252, (QL) at p. 7.
[225] Whiten v. Pilot Insurance Co., [2002] 1 S.C.R. 595 at para. 112 (S.C.C.); Apotex Inc. v. Merck & Co., [2003] F.C.J. No. 1034 (QL) at para. 34 (F.C.A.).