Ottawa, Ontario, October 19, 2006
PRESENT: The Honourable Madam Justice Mactavish
BETWEEN:
and
THE REGISTRAR OF TRADE-MARKS
REASONS FOR JUDGMENT AND JUDGMENT
[1] This is an appeal by Minolta-QMS, Inc., from a decision of the Registrar of Trade-marks rejecting Minolta’s opposition to the registration of the “MAGICOLOR” trade-mark.
[2] The appeal will be allowed, as I am satisfied that the respondent Cheng-Lang Tsai was not entitled to register the mark in question as at the time that Minolta filed its statement of opposition to the registration of the mark, the MAGICOLOR mark was not distinctive. This was because of the likelihood of confusion between the proposed mark, when used in association with the wares covered by the registration, and Minolta’s MAGICOLOR mark.
Background
[3] Minolta-QMS, Inc. (now Konica Minolta Printing Solutions U.S.A., Inc.), is a producer and retailer of printing and copying products, including colour laser printers sold under the MAGICOLOR brand name.
[4] Minolta also sells printer “consumables” for use with its MAGICOLOR printers. These include printer cartridges, replacement printer cartridges, printer drums, printer stands and printer cleaning products.
[5] Minolta’s “MAGICOLOR” mark is not a registered trade-mark.
[6] On May 19, 2000, the respondent Cheng-Lang Tsai filed an application to register the MAGICOLOR trade-mark with the Canadian Trade Marks Office in association with “electrical wire and cable, namely shielded, unshielded and insulated electric wire, cable and cord”.
[7] According to an affidavit filed by Mr. Tsai, he is the President of HUNG Hsang Wire MFG. Co. Ltd. (“HHW”). HHW is a company based in Taiwan that manufactures and sells wires, including LAN cables. In addition, an exhibit to Mr. Tsai’s affidavit describes products sold under the MAGICOLOR mark, and includes MAGICOLOR USB cables.
[8] On November 28, 2001, Mr. Tsai’s application was advertised in the Trade-marks Journal. On April 29, 2002, Minolta filed a statement of opposition, in which it advanced five separate grounds of opposition. A counterstatement was then filed by Mr. Tsai on June 14, 2002.
[9] Minolta initially elected not to file any evidence in support of its opposition before the Board. After Mr. Tsai filed an affidavit in support of the registration, Minolta then filed two affidavits in reply. These affidavits were sworn by Toshimitsu Taiko, who was the Vice President of Strategic Planning, and acting Vice-President of Marketing for Konica Minolta Printing Solutions U.S.A., Inc.
The Decision of the Trade-marks Opposition Board
[10] As a preliminary matter, the Board determined that much of the evidence filed by Minolta was not proper reply evidence, in that it was not responsive to the evidence adduced by Mr. Tsai. Rather, by means of its reply evidence, Minolta had endeavoured to provide an evidentiary foundation for its arguments – a foundation that was not otherwise present, as a result of Minolta’s failure to file any evidence in chief.
[11] Because much of the evidence contained in the affidavits of Mr. Taiko was not proper reply evidence, the Board found that it was inadmissible.
[12] One of Minolta’s grounds of opposition before the Board was that Mr. Tsai had not established that he intended to use the MAGICOLOR mark in Canada. In considering the admissible evidence before it, the Board was satisfied that use of the mark by HHW, a third party under Mr. Tsai’s control, was sufficient to establish that Mr. Tsai intended to use the MAGICOLOR mark in Canada.
[13] Although Minolta had advanced four additional grounds of opposition, the Board found that there was insufficient admissible evidence before it to support any of these allegations. Nevertheless, in the event that it was found to have been in error in relation to its evidentiary ruling, the Board proceeded to consider Minolta’s arguments on these additional grounds, assuming that Minolta’s evidence was properly before it.
[14] In this regard, the Board found that had the evidence filed by Minolta been admissible, it would have established that Minolta had used its MAGICOLOR mark in Canada since at least April of 2001. This conclusion was reached on the basis of a summary of Minolta’s sales of MAGICOLOR laser printers in Canada between April of 2001 and May of 2002. As a consequence, the onus would have shifted to Mr. Tsai to demonstrate that there would have been no confusion between his wares and those of Minolta.
[15] The Board then determined that had Minolta’s evidence on the issue of confusion been admissible, it would have led to a finding that Mr. Tsai had failed to demonstrate, on a balance of probabilities, that his MAGICOLOR mark was distinctive as of April 29, 2002, that is the date on which Minolta filed its statement of opposition.
[16] However, the Board would have dismissed Minolta’s three other remaining grounds of opposition, even considering all of the evidence filed by Minolta in support of those grounds.
The New Evidence Filed on the Appeal
[17] As is permitted in appeals under section 56 of the Trade-marks Act, Minolta has filed additional evidence on this appeal. This consists of an affidavit from Donald Tao An Hsieh, to which are attached numerous exhibits.
[18] Mr. Hsieh is the Vice President, Marketing, for Konica Minolta Printing Solutions U.S.A., Inc.
[19] Mr. Hsieh’s affidavit seeks to address the gaps in the evidentiary record that was before the Board. In particular, Mr. Hsieh has produced evidence with respect to the date of Minolta’s first use of the MAGICOLOR mark in Canada in relation to colour printers, and with respect to when it was that the mark would have first been made known in this country.
[20] This new evidence includes magazine advertisements, and circulation figures for the publications in question, demonstrating the extent to which Minolta’s MAGICOLOR mark had been made known in Canada. The affidavit also includes proof of internet sales, and sales information for all MAGICOLOR printers in Canada and worldwide, between 1995 and 2005.
[21] Mr. Tsai did not file any material in response to Minolta’s appeal, nor did he appear at the hearing.
Standard of Review
[22] The standard of review identified in cases such as Dion Neckware Ltd. v. Christian Dior, S.A. et al. [2002] F.C.J. No. 95, 20 C.P.R. (4th) 155, 2002 FCA 29, John Labatt Ltd. v. Molson Companies Ltd., [1990] F.C.J. No. 533, 30 C.P.R. (3d) 293 (F.C.T.D.) at 298 and John Labatt Ltd. et al v. Molson Breweries, a Partnership [2000] F.C.J. No. 159, 5 C.P.R. (4th) 180 at p. 196 applies to appeals under section 56 of the Trade-marks Act from decisions of the Registrar of Trade-marks.
[23] That is, where no new evidence is filed on the appeal that would have materially affected the Registrar’s decision, the test is whether the Board was clearly wrong.
[24] However, where additional evidence is filed on the appeal that would have materially affected the Registrar’s findings of fact or law or the exercise of discretion, the test is one of correctness. Although not an entirely apt description, some cases refer to this as a hearing de novo. In these cases, the Court is entitled to substitute its opinion for that of the Registrar.
[25] In deciding whether the impact of new evidence is sufficient to warrant a review on the standard of correctness, I am guided by the comments in Garbo Group Inc. v. Harriet Brown & Co., [1999] F.C.J. No. 1763, 3 C.P.R. (4th) 224. There, Justice Evans noted that in assessing the impact that additional evidence will have for the standard of review, the question is the extent to which the additional evidence has a probative significance that extends beyond the material that was before the Board. If the new evidence adds nothing of significance, but is merely repetitive of existing evidence, without enhancing its cogency, the issue will be whether the Board was clearly wrong.
[26] In this case, Minolta has filed a considerable volume of new evidence. Having reviewed this evidence, I am satisfied that the new evidence provided is of a probative significance such that it would have affected the Registrar’s decision.
[27] In this regard, it bears repeating that the Registrar’s decision was based, in part, on the finding that Minolta had not provided any admissible evidence to support a number of its grounds of opposition. The affidavit of Mr. Hsieh addresses many of the gaps in the record before the Board. As a consequence, I am satisfied that the Court should review the Registrar’s decision on the correctness standard.
Analysis
[28] Although Minolta raises a number of issues on this appeal, I am satisfied that the appeal can be disposed of on the basis that as of the date of filing of Minolta’s statement of opposition, the MAGICOLOR mark was not distinctive, in view of the likelihood of confusion between Mr. Tsai’s mark and Minolta’s mark. As a consequence, the application for registration should be refused pursuant to the provisions of section 38(2)(d) of the Trade-marks Act, which provides that:
|
38. (2) A statement of opposition may be based on any of the following grounds:
[…]
(d) that the trade-mark is not distinctive . |
38. (2) Cette opposition peut être fondée sur l’un des motifs suivants :
[…]
d) la marque de commerce n’est pas distinctive. |
[29] In this regard, it should be recalled that the Board found that had the evidence filed by Minolta in the opposition proceedings been admissible, it would have led to the finding that Mr. Tsai had not established, on a balance of probabilities, that the MAGICOLOR mark was distinctive as of the date of Minolta’s filing its statement of opposition on April 29, 2002.
[30] That is, the Board itself found that had the evidence filed by Minolta been admissible, it would have established that Minolta had used its MAGICOLOR mark in Canada since at least April of 2001.
[31] This conclusion was reached on the basis of a summary of Minolta’s sales of MAGICOLOR laser printers in Canada between April of 2001 and May of 2002. As a consequence, the Board found that the onus would have shifted to Mr. Tsai to demonstrate that there would have been no confusion between his wares and those of Minolta.
[32] In addressing the issue of confusion, the Board examined the factors enumerated in subsection 6(5) of the Trade-marks Act. That is, the Board looked to all of the surrounding circumstances including the inherent distinctiveness of the trade-marks in question, and the extent to which they have become known; the length of time each had been in use; the nature of the wares; the nature of the trade; and the degree of resemblance between the trade-marks in appearance, sound or the ideas suggested by them.
[33] The Board found that as an invented word, Mr. Tsai’s MAGICOLOR mark had some degree of inherent distinctiveness when used in association with the wares. However, given that the marks in issue are identical, the Board found that Minolta’s MAGICOLOR mark had the same degree of inherent distinctiveness.
[34] Moreover, given that Minolta’s MAGICOLOR product had been on the market longer than had Mr. Tsai’s products, and that there was a potential overlap in the nature of the trade, the Board stated that it would have found that Mr. Tsai had not established the distinctiveness of his mark as at the date of filing of the statement of opposition.
[35] The new evidence before the Court demonstrates that there have been significant Canadian sales of Minolta’s MAGICOLOR printers going back at least as early as 1995. As a consequence, I am satisfied that Minolta has satisfied its initial evidentiary onus of establishing that its mark was known in Canada at the relevant date. The legal burden is then on Mr. Tsai to establish that his MAGICOLOR mark is distinctive: see Clarco Communications Ltd. v. Sassy Publishers Inc. [1994] F.C.J. No. 138, 54 C.P.R. (3d) 418.
[36] In determining whether Mr. Tsai’s MAGICOLOR mark is distinctive, the question is whether the mark actually distinguishes his wares or services from the wares or services of others, or has been adapted so as to distinguish the wares from those of others: see section 2 of the Trade-marks Act.
[37] The material date for determining whether a trade-mark is distinctive is the date of the filing of the statement of opposition: BAB Holdings Inc. v. Big Apple Ltd. [2002] F.C.J. No. 89, 16 C.P.R. (4th) 427, 2002 FCT 72 at ¶ 12.
[38] The issue, then, is whether consumers would believe that the wares or services in issue came from a common source. The test for confusion is that of “first impression and imperfect recollection”: Polo Ralph Lauren Corp. v. United States Polo Association et al. [2000] F.C.J. No. 1472, 9 C.P.R. (4th) 51.
[39] Given that the evidence establishes use of the MAGICOLOR mark in Canada by Minolta as early as 1995, and that the only documented use of Mr. Tsai’s mark is in 2003, this factor favours Minolta. In addition, the documentary evidence attached to Mr. Hsieh’s affidavit shows that there has been extensive promotion of the MAGICOLOR mark by Minolta in this country. There is no comparable evidence from Mr. Tsai, and thus I am satisfied that the Minolta mark has become known to a greater extent than has Mr. Tsai’s mark.
[40] Moreover, the affidavit of Mr. Hsieh establishes that not only are the marks identical, there is in fact an overlap in the wares, with a serious resultant potential for confusion in the marketplace. That is, Mr. Tsai’s MAGICOLOR USB and LAN computer cables could be used in association with Minolta’s MAGICOLOR printers, leading to the strong inference that the two types of product emanated from the same source.
[41] As a consequence, I am satisfied that as of April 29, 2002, Mr. Tsai was not entitled to register the MAGICOLOR mark in Canada, as that the mark did not distinguish Mr. Tsai’s wares from those of Minolta, and, as a result, was not distinctive.
Conclusion
[42] For these reasons, the appeal is allowed, with costs.
JUDGMENT
THIS COURT ORDERS AND ADJUDGES that the appeal is allowed, with costs.
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-2039-05
STYLE OF CAUSE: MINOLTA-QMS, INC. v.
CHENG-LANG TSAI and
THE REGISTRAR OF TRADE-MARKS
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: October 16, 2006
APPEARANCES:
Timothy C. Bourne FOR THE APPLICANT
SOLICITORS OF RECORD:
Mr. Timothy C. Bourne FOR THE APPLICANT
Ridout & Maybee LLP
Ottawa, Ontario