Date: 20010601
Docket: T-1124-99
Neutral citation: 2001 FCT 575
BETWEEN:
ANDRÉS WINES LTD.
Applicant
- and -
VINA CONCHA Y TORO S.A.
Respondent
[1] This application by Andrés Wines Ltd. ("Andrés") is for an order pursuant to section 57 of the Trade-marks Act[1] ("the Act") that Vina Concha Y Toro S.A.("Vina")'s trade-mark registration no. TMA474,731 for the trade-mark "TRIO" for use in association with wines, be struck from the register of trade-marks.
[2] Andrés is the owner of the trade-mark "TRIUS" and the trade-mark registration TMA404,905, dated November 13, 1992. It alleges that it and its predecessors-in-title, Underberg (Canada) Inc. and Hillebrand Estates Winery Limited, have been using its trade-mark in Canada, in association with wine since at least as early as 1991. Vina's application for the trade-mark "TRIO" was filed on May 17, 1995, claiming a priority date of March 23, 1995.
[3] It is to be noted at the outset that Andrés did not oppose Vina's application for the trade-mark "TRIO" and its counsel provided no explanation for the failure to do so.
1. Issues
[4] There are two fundamental issues to be resolved in this application. First, whether Andrés is a "person interested" under section 57 of the Act and secondly, whether the trade-mark "TRIO" is confusing with the trade-mark "TRIUS".
2. Is Andrés a person interested?
[5] Section 57 of the Act provides for the application of any person interested to expunge a registration and section 2, the definitions section of the Act, defines a "person interested" as follows:
"person interested" includes any person who is affected or reasonably apprehends that he may be affected by any entry in the register, or by any act or omission or contemplated act or omission under or contrary to this Act, and includes the Attorney General of Canada;
[6] Both Andrés and Vina sell wine in Canada and as such operate in the same channels of trade. Andrés claims that it is therefore adversely affected by the continued presence on the trade-mark register of the trade-mark "TRIO" in that it serves to dilute the scope of protection afforded to its own "TRIUS" trade-mark and will lead to confusion in the minds of Canadian wine consumers, if such confusion has not already occurred.
[7] On the other hand, Vina alleges that Andrés has not provided any evidence of any consumers being confused, its evidence fails to even suggest that there is a likelihood of such confusion, and has taken no step to enjoin Vina from using its "TRIO" trade-mark in association with wines: consequently, the "TRIO" registration in no way affects Andrés' rights with respect to its use of the "TRIUS" label design in the market place. Thus, the expungement of the "TRIO" registration turns on the sole issue of whether Vina's "TRIO" trade-mark is confusing with the "TRIUS" label design used by Andrés.
[8] It is trite law that registration of a trade-mark confers certain rights and benefits to the owner, including prima facie proof of the rights and ownership of the trade-mark. Thus, when a trade-mark is registered, there is a presumption of validity and the party seeking to expunge the registration has the onus of proving the invalidity. If any doubt exists regarding the validity of the trade-mark registration, the presumption of validity has not been rebutted and the doubt must be resolved in favour of the validity of the trade-mark registration[2].
3. Reasonable likelihood of confusion
[9] Subsection 6(2) of the Act provides the definition of confusing trade-marks for the purposes of the Act. It stipulates that the use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would likely lead to the inference that the wares associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person. The test of confusion is a matter of first impression on the mind of an ordinary consumer[3]. Subsection 6(5) of the Act stipulates that in determining confusion between trade-marks "all surrounding circumstances" must be considered. The subsection reads as follows:
What to be considered
6. (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.
[10] Thus, the surrounding circumstances must be considered in the light of those five criteria.
a) The inherent distinctiveness of the trade-marks and the extent to which they have become known
[11] The trade-mark "TRIUS" is a coined word with no specific signification, consequently a strong mark, whereas the trade-mark "TRIO" has several meanings, mostly a musical connotation of three instruments or three voices; and other possible derivatives related to the number three. This factor would favour "TRIUS".
b. The length of time of use
[12] "TRIUS" has been used in Canada since 1991 whereas "TRIO" is more recent, dating to 1996. This factor again favours "TRIUS".
c) The nature of the wares and d) the nature of the trade
[13] Both wares are wine. "TRIUS" is a Canadian wine and "TRIO", a Chilean wine. "TRIUS" wines are sold only in Ontario. "TRIO" wines are sold across Canada. In Ontario, "TRIO" wine is sold exclusively in VINTAGES stores or VINTAGES sections of LCBO stores. Conversely, "TRIUS" wine is sold either in Andrés' own stores (where "TRIUS" wines are not available) or commonly available in sections of the LCBO stores dedicated to Ontario wines.
[14] The evidence clearly establishes that the nature of the wine trade in Canada is such that the geographic origin of the wine plays a significant role in the manner in which the wine is sold and how it is selected by consumers. The first factor a consumer considers, apart from the price of the bottle, is the country or region from which the wine originates. The "TRIUS" wine originates from the Niagara Peninsula Region of Ontario and the "TRIO" wines are to be found by Canadian consumers in the Chilean section of imported wines. Both the nature and the trade factors strongly favour the "TRIO" trade-mark.
e) The degree of resemblance
[15] It is axiomatic that the first part, the first syllable, of a trade-mark is the dominant portion[4]. Obviously, there is some degree of resemblance between "TRIO" and "TRIUS" as the first three letters are similar. "TRIO" is a known word in the English language, having a specific meaning and a known pronunciation, namely "TREE-O". Conversely, "TRIUS" is a coined word and has no known meaning and no clearly established pronunciation. "TRIUS" could conceivably be pronounced "TRY-US" as suggested in a wine article published in a newspaper filed in evidence, or "TREE-US" as suggested by Andrés.
[16] As to the appearance, the word "TRIUS" on its primary label features a scripted form with a stylized "T" in conjunction with a prominent design element of a stylized figure of a woman or a flower. The label also includes a clear indication that the wine is manufactured by Hillebrand Estates and originates from the Niagara Peninsula Region of Ontario.
[17] Moreover, the evidence with regard to "TRIO" establishes that the trade-mark is a reference to the three types of wines sold in association with the trade-mark, the three valleys from which the wine originates, and the three primary elements of the wine, namely the climate, the soil and the wine makers. A picture of the three valleys (Maipo, Rapel and Casablanca) appears on the "TRIO" labels.
[18] Thus, the degree of resemblance is minimal at best.
f) Other surrounding circumstances
[19] The evidence establishes that the "TRIUS" wine is sold only in Ontario whereas the "TRIO" wine is sold across Canada. Virtually, all the articles submitted in evidence include an indication that the "TRIUS" originates from Ontario and, or Canada and indicate that the "TRIO" wine originates from Chili. The Canadian domestic wine industry and the import wine industry operate under two separate regimes with little inter-mingling. In particular, the wine festivals and shows where the "TRIO" wine is promoted are typically limited to imported wines. The "TRIUS" wine would not be promoted there. Furthermore, the wine displayed at festivals and shows that include both domestic and imported wines are segregated according to the country of the region of origin.
[20] Accordingly, it is unlikely that a consumer would ever encounter a situation where a Chilean and a Canadian wine of any type would be offered for sale or promoted in the same part of the wine store, festivals or shows and much less side by side on the same shelves.
[21] The evidence also shows that both the "TRIUS" and the "TRIO" wines are considered to be at the high end of the line of prices and, typically, a Canadian consumer would pay closer attention while making his selections, thereby reducing any risk of confusion.
[22] Apart from the two trade-marks "TRIUS" and "TRIO", there are seven other registered trade-marks for wines beginning with the syllables "TRI" and no evidence of confusion was tendered to the Court. Of course, there was no obligation to produce evidence of confusion but actual confusion is clearly more determinative than a mere possibility.
4. Disposition
[23] Consequently, there being no reasonable likelihood of confusion, the instant application for expungement must fail. At the hearing of this matter, counsel for Vina raised a further argument to the effect that in its application Andrés did not rely on the registration of its own trade-mark but only on its use to seek the expungement of Vina's trade-mark. However, in view of my finding that there is no reasonable likelihood of confusion between the two marks, it is not necessary to deal with this matter.
[24] The application is dismissed with costs.
OTTAWA, Ontario
June 1, 2001
Judge
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1124-99
STYLE OF CAUSE:Andrés Wines Ltd. v. Vina Concha Y Toro S.A.
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: May 28, 2001
REASONS FOR ORDER OF the Honourable Mr. Justice Dubé
DATED: June 1, 2001
APPEARANCES:
Mr. Mitchell B. Charness and FOR APPLICANT
Ms. Theresa Roy
Mr. Steven B. Garland and FOR RESPONDENT
Mr. Kevin K. Graham
SOLICITORS OF RECORD:
Ridout & Maybee FOR APPLICANT
Ottawa, Ontario
Smart & Biggar FOR RESPONDENT
Ottawa, Ontario
[1] R.S.C. 1985, c. T-13.
[2] Mr. P's Mastertune Ignition Services Ltd. v. Tune Masters (1984), 82 C.P.R. (2d) 128 at 134 (F.C.T.D.)
[3] Miss Universe, Inc. v. Bohna (1995), 58 C.P.R. (3d) 381 at 387 (F.C.A.).
[4] Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.)