Date: 19991105
Docket: T-1653-98
Ottawa, Ontario, the 5th day of November, 1999
Present: The Honourable Mr. Justice Pelletier
BETWEEN :
VEJEE GROUP (CANADA) LTD.
Applicant
- and -
WOOLWORTH CANADA INC.
Respondent
REASONS FOR ORDER and ORDER
INTRODUCTION
[1] This is an appeal pursuant to section 56 of the Trade marks Act, R.S.C. 1985, c. T-13 [hereinafter the Act], from the decision dated June 18, 1998 by the Chairman of the Trade marks Opposition Board [hereinafter Registrar] maintaining the opposition by the respondent to the appellant's application for the registration of the trade mark CANADIAN REFLECTIONS
FACTS
[2] On June 25, 1992, the appellant, Vejee Group (Canada) Ltd., filed an application to register its trade mark "CANADIAN REFLECTIONS" based on use of the mark since at least as early as June 1, 1992 in association with t-shirts, jogging suits and sweat shirts; and based on intended use of the mark in association with:
| "pants; shorts, half pants; full pants; tank tops, underwear, ladies' tops, dress suits, wrist bands, socks, bathrobes, towels, robes, skirts; trousers; tights, bicycle shorts, shoes; ladies', men's and kids hand bags; winter and spring jackets; overalls; ladies', men's and kids winter long and short coats; ties; scarves; and ladies, men's and kids sweaters." |
The application was advertised in the Trade Marks Journal on January 26, 1994.
[3] The respondent gave notice of opposition to the proposed registration by way of Statement of Opposition dated March 8, 1994. The grounds of opposition were as follows:
| (a) The opponent bases its opposition on the ground set out in Section 3 8(2)(b), namely, that the alleged mark claimed in the application should have been refused by the Registrar by virtue of the provisions of Section 37(1) |
| (b) The opponent asserts that the alleged mark claimed in the application is confusing, within the meaning of Section 12(l)(d); with the following registered trade marks of the opponent: |
| (i) Registration No. 409,026 covering the trade mark REFLEXIONS for use in association with jewellery, namely; earrings, necklaces, bracelets, broaches/pins, scarf clips; handbags, purses, bags and wallets; clothing accessories, namely; socks, belts, scarves, bandannas, hats, gloves, shoulder pads, button covers, plastic t-shirt holders; hair accessories, namely; hair elastics and scrunchies (hair holing accessory), barrettes, combs and hair bands. The registration is dated March 5, 1993 and is subsisting. |
| (ii) Registration No. 332,968 covering the trade mark REFLEXIONS for use in association with services of operation of a retail outlet for the sale of jewellery handbags and accessories. The registration is dated October 9, 1987 and is subsisting. |
| (iii) Registration No. 372,896 covering the trade mark NORTHERN REFLECTIONS & Design for use in association with ladies' clothing, namely sweat shirts, sweat pants, t-shirts, tank tops, sweaters, cardigans, vests, shirts, pants, jeans, jackets, shorts, jumpsuits, socks and belts. The registration is dated September 7, 1990 and is subsisting. |
| (c) The opponent bases its opposition on the ground set out in Section 38(2)(c), namely, that the applicant is not the person entitled to registration of the alleged mark claimed in the application in view of the provisions of Section 16. At the date of the filing of the application, namely, June 25, 1992 or as of June 1, 1993, the alleged date of first use in respect of T-shirts, jogging suits and sweat shirts, such alleged mark was confusing with |
| (i) the trade marks of the opponent set out above, which had been previously used in Canada by the opponent, and/or |
| (ii) the opponent's trade marks set out in Schedule A hereto, applications for which had been previously filed, and/or |
| (iii) the opponent's trade mark CANADIAN REFLECTIONS which had been previously used in Canada by the opponent in association with t-shirts and sweat shirts. |
| (d) The opponent bases its opposition on the ground set out in Section 38(2)(d), namely, that the alleged mark claimed in the application is not distinctive within the definition of "distinctive" in Section 2. It does not actually distinguish wares in association with which it may be, or is proposed to be, used by the applicant from the wares of others nor is it adapted so to distinguish them. Without limiting the generality of the foregoing, the opponent asserts that such alleged mark claimed in the application is not distinctive because it does not, and cannot, actually distinguish the wares of the applicant described in the applicant from the wares and services of the opponent. |
[4] The evidence which the respondent presented to the Registrar consisted of the affidavit of Lora Tisi, the Senior Vice-President of the Northern Group of Woolworth Canada Inc. A cross- examination was conducted in respect of the affidavit of Ms. Lora Tisi and the transcripts, the exhibits and answers to undertakings were filed before the Registrar. The affidavit of Ms. Lora Tisi and the testimony at cross-examination outlined the respondent's two types of retail outlets, each managed by distinct divisions within the respondent company, under its marks REFLEXIONS and NORTHERN REFLECTIONS. The REFLEXIONS division is responsible for selling jewellery, handbags, hair accessories and some clothing while the NORTHERN REFLECTIONS division is responsible for selling clothing. The respondent began use of its NORTHERN REFLECTIONS mark in about the mid 1980's and was operating about 185 such NORTHERN REFLECTIONS outlets by 1995. Retail sales from the respondent's NORTHERN REFLECTIONS stores amounted to about $8.5 million in 1987 rising to $153 million in 1994. As of January 1995, the respondent was operating thirty-seven REFLEXIONS outlets across Canada, with sales totalling about $27 million for the three year period 1992-1994
[5] The appellant's evidence consisted of the affidavit of Stephen Dilworth, a trade mark searcher. In his affidavit, Stephen Dilworth provided a database search for marks including the words REFLECTION, REFLECTIONS, REFLECT, and REFLECTS which have been allowed or registered for use in association with wearing apparel and apparel store services.
[6] On the basis of the evidence before him, the Registrar refused the appellant's application to register the trade mark CANADIAN REFLECTIONS, on the ground that there would be a likelihood of confusion with the respondent's registered trade marks NORTHERN REFLECTIONS. In his reasons for judgment, the Registrar emphasised that the respondent's NORTHERN REFLECTIONS marks had acquired a significant reputation in Canada at all material times through sales of clothing and advertising under its marks, that the applied for mark incorporates the whole of the distinctive element of the respondent's marks and that the parties' wares are essentially the same.
[7] A notice of appeal was filed on November 30, 1998, in which the appellant alleged that "the Registrar erred in fact and in law when she [sic ] decided that the appellant's trade mark CANADIAN REFLECTIONS was likely to be confused with the respondent's NORTHERN REFLECTIONS trade marks."
[8] The evidence submitted by the applicant on the appeal consisted of proof that on September 30, 1998, the applicant filed an amendment to its trade mark application to limit the places where the wares might be sold. The Registrar"s decision refusing registration is dated June 24, 1998.
[9] The respondent filed the affidavit of Cathy Fernandes, the Vice-President for the NORTHERN REFLECTIONS Division of the respondent. Included in this affidavit is a photograph of a t-shirt bearing its unregistered trade mark CANADIAN REFLECTIONS. The affidavit also sets out that the trade mark CANADIAN REFLECTIONS has been used by the respondent on t-shirts and sweat shirts since at least as early as March 23, 1992 and that the sales of such t-shirts and sweat shirts for 1992 are in excess of $1 ,062,300.00. As well, the affidavit underlines that the respondent intends to continue selling such CANADIAN REFLECTIONS t-shirts and sweat shirts through its NORTHERN REFLECTIONS retail outlets and that purchase orders for the t-shirts and sweat shirts were to be placed for the Spring 1999 season. Ms. Fernandes also states that as of October 29, 1998, the respondent operates a total of 179 retail outlets under the trade mark NORTHERN REFLECTIONS. Marked as Exhibit B to her affidavit is an envelope containing all such Canadian store locations. Ms. Fernandes refers as well to the fact that open air stalls, bazaars and flea markets are often set up in the same shopping malls or in the vicinity of shopping malls where there are NORTHERN REFLECTIONS retail outlets across Canada operated by the respondent. Lastly, Exhibit C to the affidavit is a dictionary definition which indicates that the definition of the word bazaar includes the terms "department stores".
[10] The sole issue in the appeal is the question of confusion between the applicant"s CANADIAN REFLECTIONS mark and the respondent"s NORTHERN REFLECTIONS registered trademark.
[11] The Registrar undertook a careful analysis of the two marks following the framework set out in s. 6(5) of the Trade Marks Act R.S.C. 1985 c. T-131. He found that:
| 1) the NORTHERN REFLECTIONS mark has a fair degree of inherent distinctiveness since the phrase as a whole has no immediately apparent connection to wearing apparel while the mark CANADIAN REFLECTIONS has somewhat less distinctiveness since CANADIAN suggests the origin of the applicant"s wares. |
| 2) NORTHERN REFLECTIONS had acquired a significant reputation in Canada at all material times through sales of clothing and advertising. There was no evidence before the Registrar of any reputation attaching to CANADIAN REFLECTIONS. |
| 3) The applicant began use of NORTHERN REFLECTIONS seven years before the respondent alleges it began use of CANADIAN REFLECTIONS. |
| 4) The wares to which the marks are to be applied are essentially the same in both cases. |
| 5) The nature of the trades was potentially different since the applicants sold only through their own retail outlets and the respondents proposed use could involve sales through all types of retail clothing outlets. However, this left the possibility of sales of the competing wares through adjacent stores. |
| 6) The applied for mark resembles the respondent"s mark to a fair degree visually and aurally and there is an overlap in the ideas suggested by the marks since the word "northern" has a general connection to the word "Canadian". |
[12] On the basis of these findings, particularly the reputation acquired by the respondent"s marks, the incorporation of the distinctive element of the respondent"s marks and the similarity of the wares, the Registrar concluded that the applicant"s mark CANADIAN REFLECTIONS was confusing with the respondent"s mark NORTHERN REFLECTIONS.
[13] The applicant argued, on the basis of the affidavit of Stephen Dilworth, a trade mark researcher, that "reflections" was in such wide use that the respondent could have no protection for its use. Dilworth found that the words REFLECTION, REFLECTIONS, REFLET and REFLETS appeared in the register in relation to wearing apparel and apparel store services approximately 28 times. The Registrar reviewed these and concluded that only 8 of the entries related to wares which were similar to those in issue, of which 5 were registered marks and 3 applications. He found that these registrations were insufficient in number to permit any conclusions to be drawn about the state of the market, the usual use to which such evidence is put. The applicant argued that the registration of various combinations of qualifiers to REFLECTIONS such as BEAUTY REFLECTIONS, SILK REFLECTIONS, WESTERN REFLECTIONS, SOUTHERN REFLECTIONS was evidence that there was no confusion arising from the use of REFLECTIONS in connection with various modifiers such as beauty, silk, southern, western, since if there were, the registrations would not have been allowed. On that basis, the registration ought to have been allowed. No authority was cited for that approach to the use of evidence as to the state of the register.
[14] It is trite law that the onus of showing lack of confusion is upon the applicant. Molnlycke Aktiebolag v. Kimberly Clark of Canada Ltd (1982), 61 C.P.R. (2d) 42 (F.C.T.D.) The decision of the Registrar is entitled to a certain degree of deference, even on appeal, as a result of the expert status of the Registrar acting within his field:
| In my view the Registrar's decision on the question of whether or not a trade mark is confusing should be given great weight and the conclusion of an official whose daily task involves the reaching of conclusions on this and kindred matters under the Act should not be set aside lightly but, as was said by Mr. Justice Thorson, then President of the Exchequer Court, in Freed & Freed Ltd. v. Registrar of Trade Marks, 14 C.P.R. 19 at p. 25, [1951] 2 D.L.R. 7 at p. 13, [1950] Ex.C.R. 431, 11 Fox Pat. C. 50: |
| ... reliance on the Registrar's decision that two marks are confusingly similar must not go to the extent of relieving the Judge hearing an appeal from the Registrar's decision of the responsibility of determining the issue with due regard to the circumstances of the case. |
Benson & Hedges (Canada) Ltd v. St. Regis Tobacco Corp [1969] S.C.R. 192
[15] In this case, the Registrar carefully reviewed the circumstances of the use and proposed use of the two trade marks and found that there was a reasonable likelihood of confusion between the two marks given that they could be sold from adjacent stores. I find no error which would require me to interfere with his decision on the issue of confusion, on the state of the material before him. However, the material before me is different, at least to the extent of the amendment. What effect, if any, does it have on the outcome?
[16] In my view it has no effect because it is not possible to amend the application for registration after it has been refused by the Registrar. Sections 41 and 42 of the Act speak of amendments to the Register after a trade mark has been registered. There has been no registration here and therefore no possibility of amendment to the Register. Section 30 of the Trade-Mark Regulations (1996) provides that an application can be amended before or after advertisement. Section 31 describes the limitations on the amendments which may be made, while s. 32 refers to the amendments which may be made after advertising. While neither of these sections speaks directly to the question of post refusal amendments, common sense suggests that one cannot amend that which has already been adjudicated. It was possible to amend the application for registration before it was the object of deliberation by the Registrar either before or after advertisement. But once the Registrar ruled upon the application before him, he was functus officio and could not consider an amendment to the application.
[17] The power of the Court to receive evidence not before the Registrar is found at s. 56(5) of the Act2 There is nothing to suggest that the power to receive evidence which was not before the Registrar includes the power to decide an application which was not before the Registrar. The amended application is not the application which the Registrar refused; it cannot be the subject of an appeal, since it was not the subject of the Registrar"s ruling.
[18] As a matter of practical consequences, permitting such amendments would result in a process of successive approximation in which applicants would draft their claims as widely as possible before the Registrar only to narrow them to conform to the Registrar"s objections at the appeal stage. This would be a wasteful process which ought not to be encouraged.
[19] The applicant"s second argument of note was that directed to the state of the register as evidence of lack of confusion. The argument assumes that because one mark is not confusing with another mark incorporating a particular word, it is not confusing with any other mark incorporating the same word.. This is not necessarily the case as an example will make clear. NORTHERN REFLECTIONS ( to use a similar mark) is not confusing with SOUTHERN REFLECTIONS since, despite the similarity in the use of REFLECTIONS and a direction, they suggest different ideas: the one suggesting forest and stream, the other suggesting tropical destinations. CANADIAN REFLECTIONS could well be confusing with NORTHERN REFLECTIONS given the suggestion of northern wilderness which is often associated with references to things Canadian, without necessarily being confusing with SOUTHERN REFLECTIONS, which lacks the boreal connotation associated with the other two marks. The evidence of the state of the Register simply establishes that when considering each mark in turn the Registrar did not believe the mark to be registered was confusing with any registered mark. It does not prove that any other combination involving REFLECTIONS will not be confusing with any of the existing registrations.
[20] There is an ancillary argument to the effect that the evidence of the state of the Register demonstrates that consumers are able to make subtle distinctions between marks involving a common term, presumably by focussing on the accompanying descriptor which gives the mark as a whole its distinctive character. The fact of registration of NORTHERN REFLECTIONS, SOUTHERN REFLECTIONS and WESTERN REFLECTIONS suggests that consumers pay more attention to the descriptor than they do to the word REFLECTIONS. Were it otherwise, only one of these marks would be registrable. Accepting the premise does not require one to accept the conclusion which is that no two descriptors could be confusing. It is within the Registrar"s expertise to find that CANADIAN and NORTHERN are sufficiently close in the idea suggested that they are reasonably likely to be confusing when used with a common word like REFLECTIONS to refer to identical wares travelling in the same channels of trade. That appears to be exactly what the Registrar did in this case and in my view he came to the right answer. As a result, I find no reason to interfere with the decision of the Registrar
.
O R D E R
The appeal is dismissed with costs.
"J.D. Denis Pelletier"
Judge
__________________| (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. |
(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. |
| 56 (5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar. | 56(5) Lors de l'appel, il peut être apporté une preuve en plus de celle qui a été fournie devant le registraire, et le tribunal peut exercer toute discrétion dont le registraire est investi. |