Date : 20000609
Docket : T-1564-97
T-1565-97
BETWEEN:
CANADIAN OLYMPIC ASSOCIATION
Appellant
- and -
OLYMEL, SOCIÉTÉ EN COMMANDITE
and
THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR ORDER
LEMIEUX J.:
A. INTRODUCTION
[1] This section 56 Trade-marks Act (the "Act") appeal by the Canadian Olympic Association ("COA") focusses principally on the scope of section 9 of that Act relating to official marks adopted and used by a public authority.
[2] COA appeals an Opposition Board (the "Board") decision of May 21, 1997, denying its opposition to two trade-mark applications by Olymel, Société en commandite ("Olymel"), for the trade-marks OLYMEL and OLYMEL & Design, which, after examination, were advertised in the Trade-Marks Journal (the "Journal") on September 16, 1992 and September 23, 1993, respectively.
[3] Olymel is a large Quebec-based meat processor engaged in the business of selling meat products in Canada and in export trade. Olymel was created in 1991 as the result of a merger of Groupe Olympia Ltée, a holding company, whose subsidiary was Viandes Olympia (Olympia Meats) and Turcotte and Turmel, both meat packers in Quebec specializing in pork products. Olymel as a trade-mark was derived from OLY in Olympia Meats and MEL in Turmel.
[4] Olymel asserted a date of first use of April 6, 1992, in connection with the following wares:
| Wares: meat, processed meat, prepared meat, processed meat products, meat by-products and processed meat by-products |
and the date of first use of February 17, 1992, in connection with the following services:
| Services: operation of a business for trade in the purchase of meat, the marketing of live animals, meat and by-products; trade in all deli meats and in animal auctioning. |
Olymel's design is a large stylicized O with the word OLYMEL through the centre.
[5] COA, in its opposition, said to the Board Olymel's proposed trade-mark applications were defective on a number of grounds. In particular, COA said, because it had adopted a number of official marks under subparagraph 9(1)(n)(iii) ("section 9") of the Act, Olymel's proposed trade-marks were prohibited from registration by paragraph 12(1)(e) of that Act.
[6] The official marks which COA cited against Olymel were:
| (a) notice of adoption published in the Journal of January 29, 1975 of Canadian Olympic Association, Association olympique canadienne and Design, Canadian Olympic Association, Association olympique canadienne; |
| (b) notice of adoption published in the Journal of March 5, 1980, of Olympic Games, Olympiades, Olympian, Olympic, Olympique, Summer Olympics, Canada's Olympic Teams, Winter Olympics and Winter Olympic Games; |
| (c) notice of adoption published in the Journal of May 9, 1984, of Olympia; |
| (d) notice of adoption published in the Trade-marks Journal of June 11, 1986, of Olympus. |
B. THE BOARD'S DECISION
[7] Two issues decided by the Board are relevant for this appeal: the section 9 grounds and the section 30(i) grounds. The section 30(i) grounds relate to Olymel's awareness of COA's official marks and, in particular, of its 1984 official mark OLYMPIA and, as a result, could not have been satisfied it was entitled to use the mark OLYMEL.
(i) The section 9 ruling
[8] Before dealing substantively with the section 9 argument, the Board determined that:
| (1) The material time for considering a section 9 opposition would appear to be the date of the decision (May 21, 1997); |
| (2) While the legal burden is on the applicant to show that its marks are not prohibited marks, to the extent that the facts alleged by the opponent are not self evident or admitted, there is in accordance with the usual rules of evidence an evidentiary burden on the opponent to support the facts alleged; |
| (3) The opponent is not required to evidence use and adoption of each official mark relied on. |
[9] As to the test to be applied in a section 9 case, the Board said at page 5 of its decision the following:
| Finally, the test to be applied is one of straight comparison of the marks in question apart from any marketplace considerations such as the wares, services or trades involved... As stated in section 9(1)(n)(iii) of the Trade-mark Act, that test is whether or not the applicant's mark consists of, or so nearly resembles as to be likely to be mistaken for, the official mark. In other words, is the applicant's mark identical to, or almost the same as, the official mark? |
| [emphasis mine] |
[10] Having defined this approach, the Board undertook its analysis of the applicant's trade-marks OLYMEL and OLYMEL & Design. The Board found:
| (a) Those marks "certainly are not identical to any of the opponent's official marks identified above"; (page 5 of the Board's decision) |
| (b) Moreover, from a visual comparison of the applicant's trade-marks OLYMEL and OLYMEL & Design and the opponent's section 9(1)(n)(iii) marks, the Board said: "I do not consider the applicant's trade-marks to be almost the same as any of the opponent's official marks. However, the test for resemblance under Section 9(1) is not restricted to a visual comparison of the marks but rather includes all three aspects of resemblance referred to in Section 6(5)(e) of the Trade-marks Act .... Thus, I consider there to be no similarity in sounding or in the ideas suggested between the applicant's trade-marks and any of the opponent's official marks identified above". (pages 5-6 of the Board's decision) |
[11] The Board then embarked on the state of the register evidence. Olymel had requested a trade-mark searcher to conduct a search to locate trade-mark registrations, applications and official marks for which an application has been made for or for which public notice has been given where such marks incorporate the letters "OLYM"; that search revealed 143 hits as a result of a computerized search. COA had submitted that the state of the register evidence adduced was of no relevance to the section 9 ground of opposition. This is what the Board had to say on the issue at page 6:
| While I had my doubts as to the relevance of state of the register evidence to a Section 9(1)(n)(iii) ground of opposition... prior to the decision of the Federal Court, Trial Division, in Canadian Olympic Association v. Health Care Employees Union of Alberta..., it may well be that such evidence is of relevance in so far as it negates any proprietorial significance of the common feature of the official marks relied upon by an opponent. In this regard, the results of the Godwin search point to the existence of over eighty registered trade-marks or official marks incorporating the four letters or word OLYM, many of which are quite similar to a number of the opponent's official marks being relied upon in these oppositions. As a result, the state of the register evidence supports the conclusion that little weight can be accorded to the opponent's official marks were the same to be considered to constitute a family or series of such marks. |
| [emphasis mine] |
[12] The Board then considered the issue of a family or series of official marks notwithstanding, in its view, the opponent "has not specifically asserted that it is relying upon a family or series of official marks;" the Board said it must consider this issue "in view of the number of official marks comprising the OLYMP component being relied upon by the opponent. The Board ruled, having regard to Health Care Employees Union of Alberta and the Registrar of Trade-marks (1992), 46 C.P.R. (3d) 12 (F.C.T.D.) "I am obliged to consider that a public authority can rely upon a series or family of official marks and that the public authority need not evidence use of its Section 9 marks in order to establish the existence of the family of official marks". The Board went on to make this statement at page 7 of its decision:
| In the present case, the common characteristic of the opponent's official marks are the initial letters OLYMP and I have concluded that the opponent has submitted evidence relating to the existence of an alleged family of marks comprising these letters. However, as noted above, the state of the register evidence submitted by the opponent significantly reduces any significance which might be accorded such a family of marks. [emphasis mine] |
[13] The Board concluded the section 9 issue as follows at page 7:
| In view of the above, I have concluded that one would not be likely to mistake the applicant's trade-marks OLYMEL and OLYMEL & Design for any of the opponent's official marks identified above. Consequently, the applicant has met the legal burden upon it in respect of the Sections 12(1)(e) and 9(1)(n)(iii) grounds of opposition in both proceedings and I have therefore dismissed these grounds. |
(ii) The section 30(i) ruling
[14] The Board's ruling on this issue was made on the basis of evidentiary burden. The Board said at page 3:
| Although the onus or legal burden is on the applicant to show that its applications comply with the provisions of Section 30 of the Trade-marks Act,, there is an evidentiary burden on the opponent to prove the allegations of fact being relied upon by it in support of the Section 30(i) grounds.... |
[15] The Board ruled that "even had the applicant been aware of the opponent's marks and name prior to filing the present applications, such a fact is not inconsistent with the statement in the applications that the applicant was satisfied that it was entitled to use the trade marks . . .do not so nearly resemble" COA's marks. The Board said the success of this ground is contingent on a finding that the trade marks "are confusing with the opponent's trade-name or so nearly resemble as to be likely to be mistaken for the opponent's official marks.
C. THE ISSUES
[16] COA's counsel, in his submissions before me, argued the Board was clearly wrong in its application of section 9 of the Act in a number of ways:
| (1) The Board erred when it adopted as the method to gauge whether Olymel's trade-marks consisted of or so nearly resembled as to be mistaken for COA's official marks, the straight comparison method rather than the imperfect recollection test citing Canadian Olympic Association v. Health Care Employees Union of Alberta, supra. |
| (2) The Board's analysis of the interplay between the state of the register evidence and COA's family or series of official marks was faulty unduly diminishing the family of marks concept; |
| (3) The Board ignored the standard test of word resemblance which places emphasis on the first syllable of Olymel's marks, namely OLYM; |
| (4) The Board did not place upon Olymel the onus of demonstrating that it was entitled to the mark. |
[17] During the hearing, I was made aware by counsel that the Federal Court of Appeal was about to consider an appeal which would likely have an impact on the section 9 issue raised here. I decided to wait the Federal Court of Appeal's decision and take written submissions from the parties on the impact of what it had determined. I also asked the parties to make additional submissions on the Federal Court of Appeal's decision in Big Sisters Association of Ontario et al. v. Big Brothers of Canada (1999), 86 C.P.R. (3d) 504, which, in doing so, upheld the reasons for judgment of Gibson J. at trial and on the issue of the importance of the first four letters of a word in resemblance cases.
[18] On Wednesday, November 10, 1999, the Federal Court of Appeal dismissed COA's appeal in Docket A-266-98 where Techniquip Limited was the respondent.
[19] In terms of the section 30(i) argument, COA's counsel said the Board erred in finding the COA had not made out its prima facie case because Olymel's witness on cross-examination admitted the applied for marks were created from OLYMPIA and was viewed by the customer as one and the same mark and that was the result intended by OLYMEL.
D. THE LEGISLATION
[20] Sections 9 and 56 of the Trade-marks Act read:
| 9. (1) No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, . . . (n) any badge, crest, emblem or mark (i) adopted or used by any of Her Majesty's Forces as defined in the National Defence Act, (ii) of any university, or (iii) adopted and used by any public authority, in Canada as an official mark for wares or services, in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use; 56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months. 56(2) Procedure (2) An appeal under subsection (1) shall be made by way of notice of appeal filed with the Registrar and in the Federal Court. 56(3) Notice to owner (3) The appellant shall, within the time limited or allowed by subsection (1), send a copy of the notice by registered mail to the registered owner of any trade-mark that has been referred to by the Registrar in the decision complained of and to every other person who was entitled to notice of the decision. 56(4) Public notice (4) The Federal Court may direct that public notice of the hearing of an appeal under subsection (1) and of the matters at issue therein be given in such manner as it deems proper. 56(5) Additional evidence (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. [emphasis mine] |
9. (1) Nul ne peut adopter à l'égard d'une entreprise, comme marque de commerce ou autrement, une marque composée de ce qui suit, ou dont la ressemblance est telle qu'on pourrait vraisemblablement la confondre avec ce qui suit_: . . . n) tout insigne, écusson, marque ou emblème_: (i) adopté ou employé par l'une des forces de Sa Majesté telles que les définit la Loi sur la défense nationale, (ii) d'une université, (iii) adopté et employé par une autorité publique au Canada comme marque officielle pour des marchandises ou services, à l'égard duquel le registraire, sur la demande de Sa Majesté ou de l'université ou autorité publique, selon le cas, a donné un avis public d'adoption et emploi; 56. (1) Appel de toute décision rendue par le registraire, sous le régime de la présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui suivent la date où le registraire a expédié l'avis de la décision ou dans tel délai supplémentaire accordé par le tribunal, soit avant, soit après l'expiration des deux mois. 56(2) Procédure (2) L'appel est interjeté au moyen d'un avis d'appel produit au bureau du registraire et à la Cour fédérale. 56(3) Avis au propriétaire (3) L'appelant envoie, dans le délai établi ou accordé par le paragraphe (1), par courrier recommandé, une copie de l'avis au propriétaire inscrit de toute marque de commerce que le registraire a mentionnée dans la décision sur laquelle porte la plainte et à toute autre personne qui avait droit à un avis de cette décision. 56(4) Avis public (4) Le tribunal peut ordonner qu'un avis public de l'audition de l'appel et des matières en litige dans cet appel soit donné de la manière qu'il juge opportune. 56(5) Preuve additionnelle (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. |
[21] In this case, no new evidence was presented to the Court.
E. ANALYSIS
(a) The standard and scope of review
[22] The standard of review in a section 56 trade-marks appeal was recently considered by the Federal Court of Appeal in John Labatt Limited et al. and Molson Breweries (docket A-428-98, February 3, 2000) where Rothstein J.A., noting the Registrar's expertise, in the absence of additional evidence adduced this Court was of the view "that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise are to be reviewed on the standard of reasonableness".
[23] In this case, no new evidence was introduced on appeal and the errors alleged are ones of law rather than a misapprehension of fact. In these circumstances, I adopt the approach of Reed J. in Canadian Olympic Association v. Logo-Motifs Ltd. et al., (docket T-182-94). I will first determine whether the Board applied the wrong test and, if so, will assess the evidence which does not differ from that before the Board, and make a decision.
(b) The section 9 issue
(i) The principles
[24] As noted, the Federal Court of Appeal in Big Sisters Association of Ontario, supra, and in COA v. Techniquip Limited, supra, dealt with some fundamental issues surrounding section 9 of the Act.
[25] In Big Sisters Association of Ontario, supra, the Federal Court of Appeal, in dismissing an appeal from Mr. Justice Gibson's decision in a passing-off action, said simply this:
| We have had the benefit of lengthy argument aimed towards showing errors in the judgment of the learned trial judge [reported 75 C.P.R. (3d) 177]. We see no palpable or overriding error in his findings. |
[26] I take from Gibson J.'s reasons after trial the following principles relevant to this case when dealing with official marks under section 9 which are raised to block a trade-mark applicant:
| (1) The test under section 9 is one of resemblance and where the official mark and the applied for mark are not identical, the issue "then is whether or not the Defendant's mark is almost the same as, or substantially similar to any or all of BSAO's marks" and that the relevant test to determine this question, as set out in the Queen v. Kruger, is whether "a person familiar with [BSAO's] marks [or any of them] but having an imperfect recollection thereof would... be likely to mistake the [Defendant's mark therefor]". (page 217) |
| (2) The test adopted by Rothstein J. (as he then was) in Canadian Olympic Association v. Health Care Employees Union of Alberta, supra, is nothing more than a useful restatement of the Kruger test and does not vary from the Kruger test. Mr. Justice Rothstein had formulated the test as follows at page 19: |
| The question must be determined in the context of whether a person who, on a first impression, knowing one mark only and having an imperfect recollection of it, would likely be deceived or confused. |
| (3) The straight comparison test is rejected. Gibson J. at page 217 said this: |
| I cannot accept the argument advanced on behalf of the Plaintiffs that the test is one of "straight comparison". The concept of "straight comparison" implies a close and careful look at or comparison between BSAO's marks and the mark of the Defendant. Such a close and careful look or comparison was specifically rejected by Mr. Justice Rothstein in Canadian Olympic Assn. v. Health Care Employees Union of Alberta. |
| (4) At page 218, Gibson J., notwithstanding his rejection of the argument on behalf of the plaintiffs based upon a straight comparison of the marks, added that if he had considered a straight comparison to be relevant, he would conclude that mistake or confusion is likely to arise between BIG BROTHERS AND SISTERS OF CANADA and the mark of BIG SISTERS OF CANADA applying the test from Sum-Spec Canada Ltd. v. Imasco Retail Inc. (1990), 30 C.P.R. (3d) 7, to the effect the case law has also established that "the first word or first syllable in a trade ark is far the most important for the purpose of distinction". Gibson J. observed "the first substantive word in the Defendant's mark is "BROTHERS"which contrasts remarkably with the first substantive words "SISTERS" in the mark BIG SISTERS OF CANADA. That being said, in all other respects, the marks are almost identical". |
[27] There are two statements made by the Registrar in The Queen v. Kruger (1978), 44 C.P.R. (2d) 135, which are useful to review. At page 139 of the report, the Registrar said this:
| In some respects the protection provided under s-s 9(1)(n)(iii) is broader than the protection afforded by way of tests for confusion and in other respects the resemblance test provided by s-s 9(1)(n)(iii) is narrower than the test for confusion in s. 6 of the Trade-marks Act. If the mark in use by a person so nearly resembles the prohibited mark as to be mistaken therefor, the use of that mark may be prohibited even in those cases where there is no likelihood of confusion. The test under s-s 9(1)(n)(iii) is restricted to resemblance between the prohibited mark and the adopted mark. |
| [emphasis mine] |
[28] The other statement made by the Registrar in Kruger, supra, is set out at page 141 of the report:
| The applicant's design mark and the opponent's mark as a whole both suggest the idea of Canada. A person of imperfect recollection familiar with the opponent's mark and having an imperfect recollection thereof upon seeing the applicant's mark applied to or associated with the wares applied for would not be led to the inference that the wares associated with the applicant's mark were manufactured, sold, leased, hired, or performed by the opponent. [emphasis mine] |
[29] The Federal Court of Appeal's decision in Techniquip, supra, was one where the COA put up a family of 29 of its official marks and 13 official marks of the Organizing Committee of the 1976 Olympic Games in opposition to the applicant's trade-mark for Representation of Man.
[30] I take the following principles from Techniquip as relevant to the case here:
| (1) The straight comparison test was rejected, i.e. the test whether the mark was identical to or almost the same as the official marks, marketplace considerations being irrelevant. (Using this test, the Registrar had excluded affidavit evidence of 250 trade-mark registration comprising fanciful representations of human figures and another affidavit evidencing human stick figures found in telephone business directories, etc., where the owners of those marks engaged in such diverse businesses as insurance to costume design; others were local governments setting down traffic directions, shopping centres providing information to customers, or road gangs directing traffic.) |
| (2) A notion of a family of marks was developed in the context of section 6 of the Act and is based on a series of marks all having the same features, all owned by the same person and citing from Molnlycke Aktiebolag v. Kimberly-Clark of Canada Ltd. (1982), 61 C.P.R. (2d) 42 (F.C.T.D.) at pages 47-48 per Cattanach J., "is a circumstance which must reflect adversely upon an applicant for a mark containing that common feature since the public might think that such a mark indicated goods coming from the same source as the goods covered by the other marks.... The fact that the marks are owned by different persons tends to negative any proprietorial significance of the common feature and so assists an applicant". |
[31] After setting forth that background, Desjardins J.A. held this at paragraph 16:
| The appellant, having brought into evidence the notion of "family of marks" developed in the context of a section 6 analysis, the respondent was entitled to adduce evidence that there was no family of marks on which the appellant could rely. In order to do so, it was open to the respondent to bring evidence of the state of the register and of the market place in order to establish that these human stick figures were common to many marks and that, consequently, once a mark is common to trade, one cannot claim it has a family of marks. |
| [emphasis mine] |
(ii) Application to this case
[32] Based on the principles set out above, I draw the following conclusions on the section 9 issue. First, clearly the Board erred in this case in adopting a straight comparison test. The proper test is resemblance and imperfect recollection. The Board's error was an error of law.
[33] Second, the Board did consider COA's family of marks evidence and identified the common feature of those official marks, namely the first four letters OLYM. The Board weighed that evidence against the state of the register evidence presented by Olymel and held, because there were over 80 registered trade-marks, or official marks incorporating the four letters OLYM, many of which were quite similar to a number of COA's official marks being relied on:
| ... the state of the register evidence supports the conclusion that little weight can be accorded to the opponent's official marks were the same to be considered to constitute a family or series of such marks. |
[34] Based on the Techniquip, supra, analysis, the Board's approach is quite proper. The state of the register evidence established these letters, OLYM, were common to many marks and, in the words of Desjardins J.A., "once a mark is common to trade, one cannot claim it as a family of marks".
[35] Moreover, Olymel did introduce marketplace evidence which was not considered by the Board. In particular, Olymel introduced the affidavit of Roland Soucy who identified that a meat packer in Western Canada, Intercontinental Packers Ltd. of Saskatoon, had used, since 1960, its registered trade-mark OLYMPIC in connection with meat products.
[36] Taking all of this evidence into account, and applying the proper test, I can only conclude that a person familiar with COA's official marks and having an imperfect recollection of them and having an imperfect recollection of seeing the mark OLYMEL and/or Design applied to meat products or in respect of Olymel's services, would not lead to the inference that the wares or services associated with Olymel were manufactured, sold, hired, or performed by the opponent, i.e. COA.
(2) The section 30(i) issue
[37] I find no merit in the second point argued by COA, that is, because of the existence of its trade-mark OLYMPIA in 1984, Olymel could not have satisfied itself it had a proper mark for which it was applying for. While true, the three letters OLY were derived from OLYMPIA (Olympia Meats had also sold under this company name) and the last three letters MEL were derived from one of the merged companies which had engaged in meat processing.
[38] Given all of the evidence before the Board and its finding on this point that it was interrelated to the overall issue of resemblance, COA's argument fails.
F. CONCLUSION
[39] For all of these reasons, these appeals are dismissed with costs.
J U D G E
OTTAWA, ONTARIO
JUNE 9, 2000