Date: 19990629
Docket: T-1652-98
| IN THE MATTER OF an Appeal pursuant to Section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13, from a decision of the Registrar of Trade-marks dated June 18, 1998 in an Opposition by Sta-Rite Industries, Inc. to Application No. 692,304 for the trade-mark STA-DRY filed by GSW Inc. |
BETWEEN:
GSW INC.
Applicant,
- and -
THE REGISTRAR OF TRADE-MARKS and
STA-RITE INDUSTRIES, INC.
Respondent.
REASONS FOR ORDER AND ORDER
CAMPBELL J.
[1] This is an appeal from a decision of the Trade-marks Opposition Board (the "Board") on behalf of the Registrar of Trade-marks dated 18 June 1998.
[2] On 24 October 1991, the applicant applied to register the trade-mark "STA-DRY" in Canada in relation to submersible and utility pumps. The application was opposed by the respondent, Sta-Rite Industries, Inc., on the basis that the mark is "clearly descriptive of the applicant"s wares" and is, therefore, excluded from registration by virtue of s. 12(1)(b) of the Trade-marks Act , R.S.C. 1985, c. T-13 (the "Act") which reads as follows:
| 12. (1) Subject to section 13, a trade-mark is registrable if it is not |
| ... |
| (b) whether depicted, written or sounded, either clearly descriptive or deceptively mis-descriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin; |
[3] Indeed, the Board refused the applicant's application for registration for the following reasons:
| The opponent"s evidence consists of the affidavit of Ian McMillan, student at law. Mr. McMillan"s affidavit merely serves to introduce into evidence copies of pages from two dictionaries showing definitions for the words DRY and STAY. The applicant elected not to file any evidence. Only the opponent filed a written argument, however, both parties were represented at an oral hearing. |
| The word "dry," as evidenced by the opponent, means "free of moisture; not wet ... depleted or devoid of water ... drained away . . ." and the word "stay," as evidenced by the opponent, means "to continue to be as specified, as to condition...stop, check ...cease action..." In view of the above definitions, the opponent submits the following, at pp 2-3 of its written argument: |
| When the connotation as outlined above is used in association with a pump, it is respectfully submitted that the ordinary person to whom pumps would be sold would clearly understand the connotation to mean that "the pump is intended to keep a location dry, that is, as moisture or fluid enters a location that is dry, the pump will function to keep the location dry. Thus, the necessary connotation of the trade mark when used in association with pumps clearly described or deceptively misdescribes the character or quality of the pump, namely, that the pump is intended for and has the quality of ensuring that the pump will keep a desired location dry. |
In my view the opponent has supported its case that the mark STA-DRY, when sounded, describes the function of, or the principal result achieved from using, the applicant"s wares, that is, that [sic] applicant"s wares provide the user with the means to keep moisture in check. The applicant"s arguments at the oral hearing were not persuasive nor do I consider that any of the jurisprudence cited by the applicant was applicable in the instant case.
In view of the above, I find that the applied for mark is clearly descriptive of the applicant"s wares. Accordingly, the subject application is refused. 1 [Emphasis added]
[4] The present appeal is brought under s. 56 of the Act. Of particular interest to the arguments in this case is s. 56(5) which reads as follows:
| (5) On the appeal, evidence in addition to that adduced before the Registrar may be adduced and the Court may exercise any discretion vested in the Registrar. |
[5] In bringing this appeal, the applicant argues that errors are found within the reasons above quoted, and, in any event, on the basis of "filed fresh evidence" 2, a different outcome should be found.
A. The standard of review
[6] In both written and oral argument, the standard of review in the present case has been placed in issue; in particular, is the appeal judge required to review the entire record before the Registrar as if the appeal is a trial de novo, and is the appeal judge entitled to simply replace his or her discretion for that of the Registrar? Therefore, the following analysis is necessary.
[7] The test in this appeal is that stated by Pratte J.A. in Beverley Bedding and Upholstery Co. v. Regal Bedding and Upholstering Ltd. as being "whether the Registrar has gone wrong." 3
[8] An important precedent on the scope of an appeal judge"s authority when considering a Registrar"s or Board"s decision under the Act is Ritchie J."s opinion in Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp. 4 An issue raised in that case was whether a judge sitting on the appeal of a Registrar"s decision is precluded from substituting his or her opinion for that of the Registrar, unless it can be shown that the Registrar proceeded on some wrong principle, or failed to exercise discretion judicially. With respect to this issue, Ritchie J. said this:
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] I am accordingly of the opinion that it was open to Jackett, P., in the circumstances of this case to substitute his conclusion for that of the Registrar. 5 [Emphasis added]
[9] With respect to the scope of responsibility of a judge acting under s.56(5) of the Act, Stone J.A. in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. cites Ritchie J. in making the following statement:
While the Opposition Board"s decision is entitled to great weight, it did not relieve the trial judge of the responsibility of determining the issues in the light of the circumstances: Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp. (1968), 57 C.P.R. 1 at pp. 5-6, 1 D.L.R. (3d) 462, [1969] S.C.R. 192. As we shall see, the case had also to be considered in the light of all the evidence including that which was not before the Opposition Board. 6
[10] On the basis of these authorities, wide latitude is given to the judge hearing an appeal. Obviously an error in law or fact in a Board"s decision will justify granting an appeal. In addition, it might very well be that evidence admitted on appeal, in addition to that adduced before the Board, will require a different result. 7 Whether, apart from the existence of these two conditions, a Board"s decision should not be allowed to stand, given the degree of deference that it is to be accorded, a great deal of reliance is placed on the skill of the appeal judge to determine, after a full review of the evidence, the law, and the Board"s decision, whether to reach a fair, just and correct result, it is necessary that his or her opinion should replace that of the Board. It seems to me that such a case might not occur very often.
B. Arguments respecting error in the Board"s decision
[11] The applicant argues that the use of the phrase "the opponent has supported its case" in the Board"s reasons shows that the opponent"s argument was accepted as evidence and , therefore, an error in law has been made. In addition, the applicant argues that the inclusion of the word "moisture" in the reasons creates a confusion amounting to an error in fact, in that only humidifiers and dehumidifiers deal with moisture, while pumps, about which this case is concerned, deal with fluids.
[12] I find that, taken in context, the noted words used in the reasons do not expose an error in either law or fact. In my opinion, the quoted phrase used by the Board successfully conveys the point that the opponent"s argument was accepted, not that it was taken as evidence. There is no question that the Board"s decision concerns only pumps that pump fluid to keep a location free of fluid, that is, as dry as possible. The use of the word "moisture" does not detract in any way from this correct focus.
[13] The applicant also argues that the Board is in error in focusing on the "sounding" of the mark STA-DRY rather than, more appropriately, on the fact of the way the mark is used, being "depicted" or "written" as specified in s.12(1) of the Act . However, I agree with the respondent"s argument that the Board is correct in making a finding on any one or more of the conditions of "depicted", "written" or "sounded" expressed in s.12(1)(b).
[14] Therefore, I reject the applicant"s arguments respecting error.
C. Arguments respecting new evidence
[15] As noted above, as a ground of appeal the applicant argues that the Board"s decision should be reversed on "filed fresh evidence". There are two bodies of such evidence tendered on this appeal: first, that contained within an affidavit filed by the applicant subsequent to the Board"s decision; and, second, an answer given in the cross-examination on an affidavit filed by the respondent subsequent to the Board"s decision.
[16] The point behind the tendering of the "fresh" evidence is to prove that, while an applicant should not be allowed to obtain a monopoly on the use of a word which thereby prevents other members of the community from using it to describe the character or quality of goods 8, in this case there is no evidence of such an interest, and, therefore, there is no reason not to allow the applicant"s mark to be registered.
[17] The respondent fully contests the admissibility of the "fresh" evidence tendered by the applicant.
[18] The first body of evidence tendered by the applicant is contained in the affidavit of a lawyer/trade-mark agent which purports to prove facts about other trade-marks or word usage, the sources of such evidence being stated in the following paragraphs:
2. On July 29, 1998, August 11 and August 13, 1998, I conducted various searches of the Canadian trade-mark database by means of a CD-ROM service published by CD Name Search Corp. I am advised by various promotional material and the CD-ROM itself and verily believe that in the case of my searches mentioned above, this CD-ROM service includes trade-marks applications and registrations made available for public inspection as of May 29, 1998.. . .5. On July 29, 1998 and August 11, 1998, I conducted computer searches on the Internet for "web pages" containing references to the phrases "STAYDRY" or "STAYDRI" or "STAY-DRY" or "STA-DRI". Now shown to me and attached to this my affidavit as Exhibits "C1", "C2", "C3", "C4" and "C5", are true copies of printouts of portions of selected "web pages".6. A few of the other "web pages" uncovered by the above searches were reviewed but I never came across any that employed any of the phrases mentioned in paragraph 5 above to describe pumps. Another search was in fact done for web pages containing any of the phrases mentioned in paragraph 5 above along with the word "pump" and none of the results employed any of those "STA-DRY" phrases to describe pumps. 9
[19] With respect to paragraph 2 of the affidavit, since the CD-ROM source of the evidence is speaking to the truth of the state of the trade-mark register, it is hearsay evidence. Thus, unless the source is proved to be reliable, or unless a statutory or common law exception to the rule applies, the evidence is inadmissable.
[20] I was told during oral argument that a practice has developed within the intellectual property bar in trade-mark litigation that the state of the register can be proved by sources such as the CD-ROM source advanced in the present case. Clearly this is acceptable practice if on consent, or if the required standard of proof is met. However, in the present case, counsel for the respondent specifically puts the applicant to the legal test of admissibility as the source used is unknown to him. Therefore, since the reliability of the source has not been proved to my satisfaction, and since no exception to the hearsay rule has been shown to apply, I find the CD-ROM evidence to be inadmissible.
[21] While I accept that the evidence contained in paragraphs 5 and 6 of the affidavit quoted above is admissible, it only proves that pages found on the World Wide Web exist as mentioned, and, as stated in paragraph 6, none of them describe pumps. I find, however, that these facts do not prove the proposition that there is no competition in the market place for the words STA-DRY with respect to pumps. I find that for this proposition to be proved by such a search, a much more detailed and complete body of evidence must be established. For example, if the World Wide Web is to be taken as the source of such information, which might be an erroneous conclusion, at the very least it would be necessary to know how professionally conducted and extensive the web search was. This information was not provided. Therefore, I give this search evidence no weight.
[22] With respect to the cross-examination of the respondent"s affiant who, as a person involved in the marketing of pumps for 26 years, stated that he is not aware of mention by anyone of the term "STA-DRY" in talking about pumps, I find that, while this is some evidence of the lack of use of such a term in the market place, it is not enough evidence to prove the proposition advanced.
[23] Therefore, I find that there is effectively no "fresh evidence" before me warranting interference with the Board"s decision.
D. Conclusion
[24] Accordingly, there being no error in law or fact in the Board"s decision, and there being no different evidence before me than that before the Board, and no other reason being found making it necessary to interfere with the Board"s decision, this application is dismissed.
| [25] As the successful party, I award costs to the respondent Sta-Rite Industries, Inc. |
"Douglas R. Campbell"
Judge
Toronto, Ontario
June 29, 1999
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
COURT NO: T-1652-98
| STYLE OF CAUSE: GSW INC. |
| - and - |
| THE REGISTRAR OF TRADE-MARKS and |
STA-RITE INDUSTRIES, INC.
DATE OF HEARING: TUESDAY, JUNE 15, 1999
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR ORDER BY: CAMPBELL J.
DATED: TUESDAY, JUNE 29, 1999
APPEARANCES: Mr. Tony Bortolin
For the Applicant
| Mr. Michael E. Charles |
For the Respondent
SOLICITORS OF RECORD: MacBeth & Johnson
| Barristers & Solicitors |
| 301-133 Richmond Street West |
| Toronto, Ontario |
| M5H2L7 |
For the Applicant
| Bereskin & Parr |
| Barristers & Solicitors |
| Scotia Plaza |
| 40 King Street West |
| Suite 4000 |
| Toronto, Ontario |
| M5H 3Y2 |
For the Respondent
FEDERAL COURT OF CANADA
Date: 19990629
Docket: T-1659-98
Between:
| GSW INC. |
Applicant
| - and - |
THE REGISTRAR OF TRADE-MARKS and
STA-RITE INDUSTRIES, INC.
Respondent
REASONS FOR ORDER AND ORDER
__________________
1 Application Record, pp 18-19.
2 Ibid, Tab 5, p. 3, para. 10.
3 (1982), 60 C.P.R. (2d) 70 at 71 (F.C.A.).
4 (1968), 57 C.P.R. 1 (S.C.C.).
5 Ibid at p. 8.
6 43 C.P.R. (3d) 349 at 353 (F.C.A.).
7 These two conditions have been very well recognized as grounds for replacing the Registrar"s decision. For example, see: McDonald"s Corp. v. Coffee Hut Stores Ltd. (1994), 55 C.P.R. (3rd) 463 at 471 (F.C.T.D.), aff"d (1996), C.P.R. (3rd) 168 (F.C.A.); and Automobile Club de L"Ouest de France (ACO) v. Bridgestone/Firestone, Inc. (1995), 62 C.P.R. (3rd) 154 at 160.
8 See: Aluminum Goods Ltd. v. Registrar of Trade-marks, (1954), 119 C.P.R. 93 at 102 (Ex. Ct.).
9 Application Record, p. 104.