Date: 20010515
Docket: T-1259-99
Neutral Citation: 2001 FCT 481
BETWEEN:
ANHEUSER-BUSCH, INCORPORATED
Applicant
AND:
MOOSEHEAD BREWERIES LIMITED
Respondent
APPLICATION UNDER Rule 300(d) of the Federal Court
Rulesand Section 56 of the Trade-marks Act, R.S.C. 1985,
c. T-13 as amended
[1] This is an appeal pursuant to section 56 of the Trade-marks Act, R.S.C.1985, c. T-13 ("the Act") from the decision of the Registrar of Trade-marks, dated May 10, 1999, which dismissed the applicant Anheuser-Busch Inc.'s opposition to Application No. 764,928 to register the trade-mark A & Moosehead Design filed by the respondent Moosehead Breweries Ltd.
[2] The applicant seeks an order allowing this appeal and directing the Registrar of Trade-marks not to allow the respondent's trade-mark application. The applicant also seeks costs.
[3] The relevant provisions of the Trade-marks Act, R.S.C. 1985, c. T-13, are as follows:
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.
12. (1) Subject to section 13, a trade-mark is registrable if it is not
(d) confusing with a registered trade-mark; [...]
[4] On September 20, 1994, the respondent filed an application to register the trade-mark A & Moosehead Design for the following wares:
clothing, namely jackets, t-shirts, golf shirts, sweatshirts, caps, hats, woolen knit hats, game jerseys, rugby shirts; souvenirs, namely hockey sticks, hockey pucks, key chains, lapel pins, watches, plastic beer cups, beer mugs, athletic equipment bags, posters;
and for the following services:
organization of hockey games and the promotion of hockey teams through associated events, namely dinners, dances, fundraising events, ice skating events, family activity events.
The application was based on proposed use by the respondent or a licensee in Canada. The application was advertised for opposition purposes on May 10, 1995.
[5] The applicant filed a Statement of Opposition on October 10, 1995. The grounds of opposition were as follows:
(i) the application did not conform to the requirements of section 30(i) of the Act because the respondent could not have been satisfied that it was entitled to use the trade-mark in Canada;
(ii) the trade-mark was not registrable pursuant to section 12(1)(d) of the Act because it was confusing with five registered trade-marks owned by the opponent (registrations No.UCA17982; 332,251; 429,784; 445,757 and 415,990);
(iii) the respondent was not entitled to registration of the trade-mark because, as of the filing date, the trade-mark was confusing with the registered trade-marks noted above previously used and made known in Canada by the applicant in association with the various registered wares and in association with "services and merchandising items relating to the sport of hockey"; and
(iv) the trade-mark was not distinctive because it was confusing with the applicant's marks.
[6] As its evidence, the applicant submitted the affidavits of Todd Douglas Bailey, Kimberly L. Townley-Smith, Daniel B. Brown and William S. Campbell. The respondent filed a counter statement and, as its evidence, submitted the affidavits of Donna J. Harris, Karen Louise Pratt and Paul H. McGraw. As evidence in reply, the applicant submitted the affidavit of Peter Eliopoulos.
[7] On May 10, 1999, David J. Martin, Member of the Trade Marks Opposition Board, rejected the applicant's opposition. With respect to the first ground of opposition, Mr. Martin was of the opinion that the applicant had failed to set forth any allegations of fact in support of its contention that the respondent could not have been satisfied that it was entitled to use the applied for mark in Canada. Therefore, the first ground was unsuccessful.
[8] As for the second ground, the aspect of that ground based on registration No. 332,251 was unsuccessful since it was expunged in August 1996. With respect to registration No. UCA17982, given that the applicant failed to evidence use of this mark, that the wares were different from those in the respondent's application and that there were significant differences between the marks at issue, Mr. Martin found that the respondent's mark was not confusing with this registered mark.
[9] The remaining three registrations were considered together since they covered essentially the same mark. Mr. Martin examined the surrounding circumstances set forth in subsection 6(5) of the Act which must be considered in applying the test for confusion. His findings can be summarized in the following way:
* Inherent distinctiveness (6(5)(a)): The marks of both parties are inherently distinctive. Since the only evidence of use of the respondent's mark is as the logo for a junior hockey club in Amherst, Nova Scotia, the mark has become known to some extent in that area in association with the operation of a hockey club. The applicant's registered mark appears as a very minor element of the applicant's beer labels. The applicant's evidence was only able to establish that its registered mark has become known to some extent in Canada in association with beer, and to a lesser extent with promotional items in the Toronto area. The applicant failed to evidence any reputation of note for its mark in Canada in association with hockey or with United States-based theme parks.
* Length of time in use (6(5)(b)): The length of time the marks has been in use favours the applicant, but the only product for which lengthy use has been shown is beer.
* Nature of the wares, services or business (6(5)(c)): The respondent's services differ from the applicant's wares, and the respondent's wares differ from the applicant's wares such as beer and non-alcoholic beer. However, there is a direct overlap between the respondent's wares and the applicant's wares shown in registration No. 429,784.
* Nature of the trade (6(5)(d)): The trades of the parties are similar since both parties brew and sell beer, and sell promotional items. The trades of the parties in respect to promotional items can overlap since such items are sold through beer stores, company-owned stores, sporting goods stores and stores specializing in licensed products. As for the respondent's services, there is no overlap in the trades of the parties.
* Degree of resemblance (6(5)(e)): There is a fair degree of resemblance between the marks since both are dominated by the letter A and the representation of an animal. But there are also differences: different styles of script for the letter A; an eagle for the applicant's mark compared to the head of a moose for the respondent's mark; and the applicant's mark is more ornate since it includes other elements.
* Additional surrounding circumstances: The respondent has relied on the state of the register and submitted evidence of other registrations for marks dominated by the letter "A" for similar items. Therefore, it is common for traders in clothing items, caps, mugs and other promotional items to use trade-marks dominated by the letter A, and consumers are used to seeing such marks and would pay more attention to their other components in distinguishing them. In addition, since the respondent has shown significant use of its MOOSEHEAD trade-mark, consumers would likely associate the respondent's mark with the respondent because of their familiarity with the HEAD OF MOOSE design as a consequence of the reputation associated with that design flowing from the substantial sales of the respondent's MOOSEHEAD beer.
[10] Consequently, in view of the conclusions above and in the absence of significant reputation in Canada for the applicant's mark in association with promotional items, in view of the common use of A & Design marks by others in the field and in view of the reputation associated with the respondent's MOOSEHEAD design, Mr. Martin found that the respondent had satisfied the onus on it to show that its applied for mark was not confusing with the applicant's registered mark A & Design. Thus, the second ground of opposition was unsuccessful.
[11] With respect to the third ground, Mr. Martin was of the view that the applicant failed to evidence making known of its marks prior to the date of the filing of the respondent's application. He found that the applicant had not clearly evidenced use of any of its marks for snack foods or promotional items prior to the respondent's filing date, and that the applicant had also failed to evidence prior use of its marks for "services and merchandising items relating to the sport of hockey". The applicant had only evidenced prior use of its mark A & Design in association with beer. With regard to that aspect, he concluded that in view of the differences in the wares of the parties and of the common adoption of A & Design marks by third parties in the field and the beer-related reputation associated with the mOOSEHEAD component of the respondent's mark, the respondent had satisfied the onus on it to show that its applied for mark was not confusing with the trade-mark A & Design previously used in Canada by the applicant. Thus, the third ground was unsuccessful.
[12] Finally, with regard to the fourth ground, Mr. Martin was of the view that since the ground of non-distinctiveness turned on the issue of confusion between the marks, his conclusions respecting the second and third grounds were applicable and thus, the fourth ground was unsuccessful. Mr. Martin therefore rejected the applicant's opposition.
[13] Since the evidence submitted is determinative in cases involving trade-marks, and is also important to determine the standard of review, I will briefly summarize the evidence that was submitted by both parties in these proceedings.
THE APPLICANT'S EVIDENCE
A. Before the Registrar
[14] The Affidavit of Todd Douglas Bailey: The evidence of Mr. Bailey, a student-at-law with Bereskin & Parr, the applicant's counsel, was that:
– the A & Eagle Design trade-mark appeared on promotional items which he was able to purchase or view on sale in various stores in the Toronto area in March and June, 1996;
– Exhibit B shows a sweatshirt, t-shirt, and beer glass which Mr. Bailey purchased in Etobicoke, Ontario bearing the A & Eagle Design trade-mark;
– Exhibit F shows a golf shirt and a key chain which Mr. Bailey purchased in Mississauga, Ontario, bearing the A & Eagle Design trade-mark.
[15] The Affidavit of Kimberly L. Townley-Smith: The evidence of Ms. Townley-Smith, a lawyer with the firm Bereskin & Parr, the applicant's counsel, was that:
– during broadcasts of National Hockey League hockey games, she had seen many advertisements for beer companies in various forms, including advertisements on the boards surrounding the ice, on billboards located throughout the arena, on promotional material handed out to the fans attending the game, etc.;
– during televised hockey games which are being played in American arenas, she has seen many advertisements for Anheuser-Busch beer products and services.
[16] The Affidavit of Daniel B. Brown: The evidence of Mr. Brown, Director of Quality and Executive Assistant for Busch Entertainment Corporation, was that:
– Busch Entertainment Corporation operates nine theme parks in the United States (the Anheuser-Busch Theme Parks);
– the A & Eagle Design mark is used frequently in advertising for the Anheuser-Busch Theme Parks and throughout the parks themselves;
– many Canadians travelling in the United States visit the Anheuser-Busch Theme Parks: for the five years before 1996, the estimated number of annual Canadian visitors has averaged over 375,000 visitors per year;
– Exhibit A shows representative samples of brochures for the Anheuser-Busch Theme Parks bearing the A & Eagle Design mark.
[17] The Affidavit ofWilliam S. Campbell: The evidence of Mr. Campbell, Director of Marketing, Canada, for Anheuser-Busch International, Inc., was the following:
– Anheuser-Busch is the owner of five Canadian trade-mark registrations for the A & Eagle Design;
– the A & Eagle Design is the symbol of Anheuser-Busch and has been used in Canada for many decades in association with beer;
– the A & Eagle Design appears on Anheuser-Busch letterhead and on many of the beer and beer-related products of Anheuser-Busch;
– Anheuser-Busch's most successful and well-known product is BUDWEISER beer;
– BUDWEISER beer is the world's largest selling brand of beer; it is among the top selling beers in Canada and has been sold in Canada for over 100 years;
– BUDWEISER beer is sold in Canada in association with the A & Eagle Design mark;
– since 1992, sales of BUDWEISER beer in Canada have exceeded 850,000 barrels (approximately US$100 million) annually;
– the A & Eagle Design mark is displayed on a wide variety of promotional products available in Canada, and such promotional products have enjoyed substantial sales in Canada;
– Exhibit F shows labels used on bottles of BUDWEISER beer sold in Canada;
– Exhibit G shows copies of representative samples of promotional products displaying Anheuser-Busch, Inc.'s A & Eagle Design mark;
– Exhibits H and I show the A & Eagle Design mark on merchandise licensed by Anheuser-Busch, Inc.
[18] The Affidavit of Peter Eliopoulos: The evidence of Mr. Eliopoulos, a summer student with Bereskin & Parr, the applicant's counsel, was that the bald eagle is a national symbol of the United States of America.
B. Additional Evidence filed before this Court
[19] In support of this appeal, the applicant filed as additional evidence the affidavits of Paul Casuccio and Christopher Frederick Effer, pursuant to subsection 56(5) of the Act.
[20] The Affidavit of Paul Casuccio: The evidence of Mr. Casuccio, a law student with Bereskin & Parr, the applicant's counsel, is that:
– he was able to purchase a range of the applicant's beer products (BUDWEISER, BUD LIGHT, BUSCH, BUSCH LIGHT and MICHELOB) in Toronto and Thornhill, Ontario;
– the exhibits to the affidavit show the product labels bearing the A & Eagle Design mark.
[21] The Affidavit of Christopher Frederick Effer: The evidence of Mr. Effer, Country Manager for Canada for Anheuser-Busch International, Inc. is that:
– Anheuser-Busch products are advertised extensively in Canada through a variety of media, including print and television;
– since 1993, total expenditures incurred for advertising BUDWEISER and BUD LIGHT beers in Canada have exceeded $10 million dollars annually;
– Exhibit A is a video tape copy of samples of television commercials for products bearing one or more of the trade-marks owned by the applicant, including the A & Eagle Design, which were broadcast on Canadian television, including the Global Television Network, between 1993 and 1996;
– the applicant spends many times this amount on advertisements and promotions involving its BUDWEISER products in the United States, some of which reach Canada;
– since as early as 1911, the A & Design mark has appeared on bottle caps for BUDWEISER beer (Exhibit B to his affidavit shows a sample of such bottle caps), and such use has been continuous in Canada since the 1940's;
– the basic BUDWEISER label which shows the A & Eagle Design mark in two locations has been used in the same or substantially similar form on bottles and cans of BUDWEISER sold in Canada since at least as early as 1957;
– the A & Eagle Design mark has appeared continuously on the labels of the following Anheuser-Busch products since the following dates: BUDWEISER beer cans (1950), BUDWEISER beer bottle (1950), BUDWEISER beer bottle cap (1940), BUD LIGHT beer bottle (1990), BUD LIGHT beer can (1990), MICHELOB beer bottle (1980), BUSCH beer can (1990) and BUSCH LIGHT beer can (1992).
THE RESPONDENT'S EVIDENCE
A. Before the Registrar
[22] The Affidavit of Karen Louise Pratt: The evidence of Ms. Pratt, Trade Marks Agents Assistant with McDermid and Company, is principally that she purchased items of clothing bearing A & Design sports team logos (pictures of the items purchased are included as exhibits). As well, Ms. Pratt included as exhibits copies of newspaper articles showing the A & Design logos of various sports teams, and copies of magazines showing respondent's HEAD OF MOOSE trade-mark.
[23] The Affidavit of Paul H. McGraw: The evidence of Mr. McGraw, Vice President of Finance and Corporate Secretary of Moosehead Breweries Limited, was that:
– since 1938, the respondent has brewed, bottled and packaged brewed alcoholic beverages under its trade-mark MOOSEHEAD;
– the respondent first used the representation of the HEAD OF A MOOSE as a trade-mark on its brewed alcoholic beverages on Canada in 1931;
– Exhibit C shows the various depictions of a HEAD OF A MOOSE on the respondent's beer labels from 1931 to present;
– the respondent is the owner of several HEAD OF MOOSE design trade-marks, as well as the trade-marks MOOSEHEAD, MOOSE and THE MOOSE IS LOOSE, which have been used in association with, among others, brewed alcoholic beverages and related promotional items and which are known in Canada and internationally;
– the respondent also owns trade-marks for A & ALPINE design for use in association with brewed alcoholic beverages, as well as with various promotional items;
– the respondent also owns trade-marks for "HALIFAX MOOSEHEADS" and H & HEAD OF MOOSE Design for wares and services identical to those as set forth in the application at issue in these proceedings;
– the respondent has been using the HEAD OF MOOSE design-mark, the MOOSEHEAD trade-mark, and the ALPINE "A" Design mark in association with beer and various promotional items;
– the trade-mark that is the subject of this proceeding is displayed on the jersey of a hockey team sponsored by the respondent, the "AMHERST MOOSEHEADS";
– also attached as Exhibits are various pictures of items on which the HEAD OF MOOSE Design is displayed, several advertisements of the MOOSEHEAD family of trade-marks, as well as newspaper and magazine articles attesting to the popularity of the respondent's beers.
[24] The Affidavit of Donna J. Harris: The evidence of Ms. Harris, Trade Mark Searcher, was that:
– she conducted a search of the Register in January 1997 to locate trade-mark registrations and applications which were similar to the A & Moosehead Design trade-mark and which included as part of the trade-mark an "A" Design;
– attached as Exhibit A are copies of 21 trade-mark registrations and applications which she selected as bearing the most similarity to the A & Moosehead Design trade-mark and excluded marks owned by Anheuser-Busch, Inc.;
– Exhibit B shows copies of a number of trade-marks on the Register owned by the respondent which include either the word MOOSEHEAD or a HEAD OF MOOSE Design.
B. Additional Evidence filed before this Court
[25] The respondent has not filed any additional evidence before this Court.
SUBMISSIONS
A. The Applicant's Submissions
[26] The applicant submits that the Registrar erred in finding that the A & Moosehead Design mark was not confusing with the applicant's registered A & Eagle Design marks, both with respect to the clothing and souvenir wares and with respect to the hockey team related services. The applicant argues that the Registrar's error was due to:
(a) the erroneous finding that A & Eagle Design mark has only become known to some extent in Canada in association with beer;
(b) overemphasis on the "extent known" factor in assessing confusion with the applicant's marks, such that the test applied under s. 12(1)(d) of the Act was applied like the test for passing-off;
(c) overemphasis on minute differences between the marks in applying the "degree of resemblance" test under s. 6(5)(e) of the Act;
(d) overemphasis on the "state of the marketplace" evidence; and
(e) the erroneous finding that consumers would associate the A & Moosehead Design with the respondent because of their familiarity with the Moosehead Design.
[27] The applicant argues that since the Registrar was wrong in his application of the confusion test and in assessing the evidence filed by the applicant, it is open to this Court to substitute its own conclusion for that of the Registrar, especially in light of the new evidence filed in this appeal. The applicant submits that the new evidence is significant, and that the factual situation before this Court is therefore quite different from that which was before the Registrar (London Life Insurance Co. v. Manufacturers Life Insurance Co. (1999), 87 C.P.R. (3d) 240 (F.C.T.D.); Garbo Group Inc. v. Harriet Brown & Co., [1999] F.C.J. 1763 (F.C.T.D.); Oshawa Group Ltd. v. Creative Resources Co. Ltd. (1982), 61 C.P.R. (2d) 29 (F.C.A.)).
[28] The applicant submits that in assessing whether two marks are confusing, the Court must ask itself whether, as a matter of first impression on the mind of an ordinary person having a vague recollection of the mark, the use of both marks in the same area in the same manner is likely to lead to the inference that the wares or services associated with those marks are performed or produced by the same person (Miss Universe v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.)). The use of a mark would cause confusion with the use of another mark if the use of both marks in the same area would be likely to lead to the inference that the wares associated with those marks are manufactured or sold by the same person, whether or not the wares are of the same general class. The test is a theoretical test and is not reliant on there being evidence of actual use of the marks at issue in the same area (s. 6(2) of the Act; Oshawa Holdings Ltd v. Fjord Pacific Marine Industries Ltd. (1981), 55 C.P.R. (2d) 39 (F.C.A.); Canadian Tire Corp. v. Cooper Tire & Rubber (1994), 59 C.P.R. (3d) 402 (T.M.O.B.)). The applicant also submits that confusion is to be assessed in light of all of the surrounding circumstances, including the criteria listed in subsection 6(5) of the Act.
[29] The applicant claims that the Registrar erred in concluding that consumers would associate the A & Moosehead Design mark with the respondent because of their familiarity with the Moosehead Design. The applicant contends that this conclusion was speculative and not supported by the required evidence.
[30] The applicant further contends that the Registrar erred in assessing the extent to which the applicant's A & Eagle Design mark has become known. It claims that the new evidence of Mr. Effer and Mr. Casuccio confirms that the A & Eagle Design mark ought to have been found to have become well known in Canada. According to the applicant, the Registrar relied heavily on the extent of the evidence of use of the applicant's mark in relation to the wares listed in Registration No. 429,784 (i.e. clothing and promotional items) in concluding that confusion was not likely. This emphasis on the "extent known" factor reduces the test for confusion with a registered mark to a test of passing off, where the party alleging confusion must prove notoriety of its mark in the area where the two marks are actually in use. The applicant contends that this is not the correct approach, since it denies the owner of a registered mark the benefit of the registration afforded by s. 12(1)(d) of the Act.
[31] In addition, the applicant submits that the Registrar erred in finding that there was no relationship between the wares covered by the applicant's registrations and the services covered by the application. The applicant submits that beer advertisements feature prominently in televised hockey broadcasts, and that consumers in Canada are likely to associate beer with hockey-related services, and especially the sponsorship of hockey teams. The applicant further contends that the Registrar erred in attributing little weight to the evidence of Kimberly Townley-Smith. According to the applicant, this evidence showed a strong connection between beer, covered by the applicant's trade-marks UCA17982 and 445,757, and hockey (the services listed in the application at issue).
[32] Furthermore, the applicant contends that in applying the similarity portion of the confusion test, the marks are to be looked at as totalities and not as dissected items (Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.)). The applicant therefore submits that in performing a feature-by-feature comparison of the marks, the Registrar erred in finding that the marks were not sufficiently similar to support a finding of confusion. When looked at in their totalities, the marks are very similar. They both employ the main features of a capital "A" and an animal emerging from the letter. In both cases the animal is a national symbol.
[33] Finally, the applicant claims that the Registrar erred in accepting the respondent's evidence as showing the state of the marketplace as of the date of filing of the application. Much of the state of the marketplace evidence was prepared two years after the filing date, and therefore does not show the state of the marketplace at the filing date. The applicant contends that the same considerations apply with respect to the issue of confusion, but the material date is the date of opposition.
B. The Respondent's Submissions
[34] The respondent submits that the current standard of review, where no significant additional evidence has been filed, is one of "reasonableness". It contends that where the additional evidence is simply repetitive of the evidence already before the Registrar or where it would not have materially affected the Registrar's findings or conclusions, the Court should only interfere where the Registrar was "clearly wrong" (Molson Breweries v. John Labatt Ltd., supra; Garbo Creations Inc. v. Harriet Brown & Co. (2000), 3 C.P.R. (4th) 224 (F.C.T.D.)).
[35] Moreover, the respondent contends that if additional evidence is filed which goes beyond what was before the Registrar, the Court should ask itself whether, in light of that material, the Board reached the wrong decision on the issue to which that evidence relates. Therefore, the findings of the Registrar for which no additional evidence was filed should be accorded considerable deference (Garbo Creations, supra).
[36] The respondent submits that the additional evidence filed by the applicant adds nothing of significance and is merely repetitive of the evidence that was previously before the Registrar. The respondent also submits that there is no likelihood that an average consumer, upon seeing the parties' trade-marks, would come to the conclusion that they originate from the same source. Consequently, the respondent contends that the Registrar committed no reviewable error under either standard of review in finding that no likelihood of confusion exists between the trade-marks at issue.
[37] With respect to confusion, the respondent submits that the factors set out in subsection 6(5) are not necessarily afforded equal weight, and that each particular case of confusion might justify greater significance being given to one criteria than to others (United Artists v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 (F.C.A.); SkyDome Corp. v. Toronto Heart Indutries Ltd. (1997), 72 C.P.R. (3d) 546 (F.C.T.D.)). The respondent further submits that the appropriate weight to be given to the various factors set out under s. 6(5) of the Act is a matter falling directly within the Registrar's expertise and that this Court should exercise extreme reluctance in interfering (Van Melle Nederland B.V. v. Maple Leaf Meats Inc., [2000] F.C.J. No. 182 (T.D.)).
[38] With respect to the issue of distinctiveness, the respondent claims that there is no reason for concluding that the Registrar's finding on the issue of distinctiveness was wrong, let alone unreasonable. The respondent contends that contrary to the applicant's allegation, the Registrar did not apply a "passing off" test with respect to the "extent known" factor, but that the applicant has confused "inherent distinctiveness" and "distinctiveness", which are analogous but distinct concepts (Van Melle Nederland B.V., supra).
[39] In addition, the respondent contends that the Registrar did not err in finding that although there is some overlap between the parties' wares with respect to promotional items, no likelihood of confusion existed. The respondent submits that it is seeking protection in respect of its mark in relation to the organization and promotion of a hockey team and associated merchandise, not in relation to beer. The respondent's promotional items will be used in relation to a junior hockey team in Amherst, Nova Scotia, and will circulate in a market that is very familiar with the MOOSEHEAD design. The respondent submits that the suggestion that the parties' trades may overlap in the future is insufficient to support a finding of confusion (McDonald's Corp. v. Coffee Hut (1994), 55 C.P.R. (3d) 463 (F.C.T.D.)).
[40] Furthermore, the respondent contends that the Registrar applied the correct principles when he considered the degree of resemblance between the two trade-marks. It claims that in comparing the two trade-marks, the Court must not dissect them into component parts, but that it is the entirety of the mark that must be considered. (SkyDome Corp., supra; Molson Companies Ltd. v. John Labatt, (1994), 58 C.P.R. (3d) 527 (F.C.A.)). The respondent claims that when the trade-marks at issue in the case at bar are viewed in their entirety, it is clear that there are significant differences between the two trade-marks which serve to decrease the likelihood of confusion.
[41] The respondent also submits that while trade-marks must be examined in their entirety, it is still possible to focus on particular features of the mark that may have a determinative influence on the public's perception of the mark (United Artists Corp., supra). The respondent also claims that where only one part of the trade-mark is common to both, and the differences serve to dominate the common parts, then the likelihood of confusion is diminished (California Fashion Industries Inc. v. Reitmans (Canada) Ltd. (1991), 38 C.P.R. (3d) 439 (F.C.T.D.)). The respondent submits that the dominant feature of the applicant's mark is the Eagle, whereas the dominant feature of the respondent's mark is the head of a moose, which is extremely well known and recognizable in Canada. Therefore, the respondent contends that the evidence supports the Registrar's finding that the average consumer would likely associate the respondent's mark with the respondent, given the significant reputation in Canada for its HEAD OF MOOSE design mark. The respondent agrees with the Registrar's conclusion that the degree of resemblance between the trade-marks weighed in favour of the respondent.
[42] With respect to surrounding circumstances, the respondent contends that the presence of a common element in trade-marks which is also contained in a number of other trade-marks in the same market has an important bearing on the issue of confusion (Kellogg Salada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.)). The respondent submits that the state of the Register may show that a variety of trade-marks exist with much the same features, thereby showing widespread use of those features, and that such a common occurrence in the market tends to cause purchasers to pay more attention to the other or non-common features of the respective trade-marks and to distinguish between them by those other features.
[43] According to the respondent, in such circumstances, small differences between the trade-marks will be sufficient to avert confusion. To hold otherwise would give the applicant an exclusive property right in relation to the letter "A" in respect of such promotional products (Kellogg Salada, supra; Molson Companies, supra). The respondent submits that the evidence demonstrated 21 registrations for design marks employing the letter "A" in either standard or fancy form, in association with hockey or sports generally. Therefore, the Registrar gave due consideration to the state of the register evidence. In addition, the evidence demonstrated use of another A & Design trade-mark owned by the respondent, which is used in association with its ALPINE brand of beer and in association with various promotional items. The respondent, therefore, claims that its use of it's A & Design trade-mark is another "surrounding circumstance" which weighs against a finding of likelihood of confusion.
ANALYSIS
[44] In my view, this appeal should be dismissed. The applicant has not established that the Registrar's decision was unreasonable and that this Court should intervene.
A. The Standard of Review
[45] The Federal Court of Appeal recently discussed the standard of review in appeals from the Registrar of Trade-marks in Molson Breweries v. John Labatt Ltd., [2000] F.C.J. No. 159 (F.C.A.). Rothstein J.A. summarized the principles with respect to the standard of review, and stated the following at paras. 46 to 51:
Because of the opportunity to adduce additional evidence, section 56 is not a customary appeal provision in which an appellate court decides the appeal on the basis of the record before the court whose decision is being appealed. [...] Nor is the appeal a "trial de novo" in the strict sense of that term. The normal use of that term is in reference to a trial in which an entirely new record is created, as if there had been no trial in the first instance. Indeed, in a trial de novo, the case is to be decided only on the new record and without regard to the evidence adduced in prior proceedings.
[...]
An appeal under section 56 involves, at least in part, a review of the findings of the Registrar. In conducting that review, because expertise on the part of the Registrar is recognized, decisions of the Registrar are entitled to some deference. In Benson & Hedges (Canada) Limited v. St. Regis Tobacco Corporation [[1969] S.C.R. 192], Ritchie J. stated, at page 200:
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 and Freed Limited v. The Registrar of Trade Marks et al, 14 C.P.R. 19:
... 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.
In McDonald's Corp. v. Silcorp Ltd. [(1989), 24 C.P.R. (3d) 207 (F.C.T.D.), at p. 210.], Strayer J. (as he then was), having regard to the words of Ritchie J., explained that while the Court must be free to assess the decision of the Registrar, that decision should not be set aside lightly.
It seems clear that in opposition proceedings where the issue is essentially one of facts concerning confusion or distinctiveness the decision of the registrar or the Board represents a finding of fact and not the exercise of discretion. Therefore the court should not impose upon itself the same degree of restraint, in reviewing that decision, as it would if the decision were essentially an exercise of discretion. It is thus free to review the facts to determine whether the decision of the registrar or Board was correct, but that decision should not be set aside lightly considering the expertise of those who regularly make such determinations: see Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp. (1968), 57 C.P.R. 1 at p. 8, 1 D.L.R. (3d) 462, [1969] S.C.R. 192 at pp. 199-200 (S.C.C.). While different panels of the Federal Court of Appeal have variously expressed the duty of this court on appeal to be to determine whether the registrar has "clearly erred", or whether he has simply "gone wrong", it appears that it is the duty of a judge sitting on an appeal such as this to come to his own conclusion as to the correctness of the finding of the registrar. In doing that he must, however, take into account the special experience and knowledge of the registrar or the Board, and more importantly have regard to whether new evidence has been put before him that was not before the Board [Affd (1992), 41 C.P.R. (3d) 67 (F.C.A.).].
McDonald's Corp. v. Silcorp Ltd. was a 1989 decision, well before the recent Supreme Court jurisprudence establishing the modern spectrum of standards of review, namely, correctness, reasonableness simpliciter and patent unreasonableness. See Canada (Director of Investigation & Research) v. Southam Inc. [[1997] 1 S.C.R. 748, at pp. 776-777.]. Because Strayer J. was prepared to accord some deference to the Registrar, I do not consider his use of the term "correct" to reflect the non-deferential and rigorous standard of review that is today associated with the terms "correct" or "correctness".
I think the approach in Benson & Hedges and McDonald's Corp. are consistent with the modern approach to standard of review. Even though there is an express appeal provision in the Trade-marks Act to the Federal Court, expertise on the part of the Registrar has been recognized as requiring some deference. Having regard to the Registrar's expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar's decision. (emphasis mine)
[46] In my view, since Molson Breweries, supra, has been followed by subsequent Federal Court of Appeal decisions as well as Federal Court, Trial Division decisions, Rothstein J.A.'s reasoning must be applied. Therefore, the standard of review of the decision of the Registrar is reasonableness simpliciter, unless additional evidence that would have materially affected the Registrar's finding of fact or the exercise of his discretion is adduced, in which case the standard of review will be correctness. Consequently, in light of these principles, the question at issue is whether the additional evidence adduced by the applicant in the case at bar is sufficient to raise the standard of review to correctness.
[47] In my opinion, the new evidence adduced by the applicant would not have materially affected the Registrar's finding of fact or the exercise of his discretion. I agree with the respondent that the additional evidence filed adds nothing of significance and is merely repetitive of the evidence that was previously before the Registrar. The new evidence attests to substantial television advertising of the applicant's beer, but the use of the A & Eagle Design in the ads is quite minimal. It also attests to the fact that the A & Eagle Design is found on the applicant's beer labels. The evidence simply confirms the Registrar's finding that the applicant's trade-mark A & Eagle Design appears as a very minor element of the label on the applicant's BUDWEISER beer and that the applicant's trade-mark BUDWEISER has become well-known in Canada. In light of the evidence previously submitted, the Registrar has already concluded that the applicant's trade-mark A & Eagle Design has become known to some extent in Canada in association with beer. In my view, the new evidence only serves to further demonstrate the use of the mark in association with beer, not with souvenirs, promotional items or hockey team related services. Nor does it demonstrate that the public associates the A & Eagle Design mark with the applicant.
[48] Therefore, in my view, the standard of review of the Registrar's decision must be reasonableness simpliciter.
B. The Reasonableness of the Decision of the Registrar
[49] I am of the opinion that the Registrar's decision was reasonable. With respect to the issue of confusion, the Registrar applied the proper test, i.e. that of first impression and imperfect recollection, and he examined the surrounding circumstances, including each of the criteria set out in subsection 6(5) of the Act. I agree with the respondent that the factors set out in subsection 6(5) are not necessarily afforded equal weight, and that the weight to be given to each factor is within the Registrar's expertise, as confirmed by Pelletier J. in Van Melle Nederland B.V., supra, at para. 11.
[50] In my view, it was reasonable for the Registrar, based on the evidence, to find that the A & Eagle Design mark had only become known to some extent in Canada in association with beer, since the evidence submitted by the applicant almost exclusively demonstrated use of the mark in association with beer, and since the A & Eagle Design mark on the beer label is relatively insignificant. I cannot agree with the applicant's submission that the Registrar's emphasis on the "extent known" factor in determining that there was no confusion reduced the test for confusion to a test for passing off. As discussed above, the weight to be given to the different criteria must be evaluated by the Registrar in each case. I cannot conclude that the weight given to this factor was unreasonable.
[51] It was also not unreasonable, in my view, for the Registrar to attribute little weight to the evidence of Kimberley Townley-Smith. I disagree with the applicant's contention that her affidavit showed a strong connection between beer, covered by two of the applicant's registrations, and hockey; in addition, it certainly did not show a strong connection between the applicant's A & Eagle Design mark and hockey.
[52] With regard to the criteria at paragraph 6(5)(e) of the Act, the Registrar's conclusion that the marks were not sufficiently similar to support a finding of confusion was reasonable. I disagree with the applicant's statement that the Registrar performed a feature-by-feature comparison of the mark and over-emphasized the minute differences between the marks. As pointed out by the respondent, in United Artists v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 (F.C.A.), Linden J.A. stated the following at p. 263:
While the marks must be assessed in their entirety (and not dissected for minute examination), it is still possible to focus on particular features of the mark that may have a determinative influence on the public's perception of it.
In my view, the Registrar assessed the marks in their entirety and was correct in concluding that the head of a moose design would have a determinative influence on the public's perception.
[53] With respect to the state of the marketplace, it was reasonable for the Registrar to consider it, since all surrounding circumstances must be considered when assessing the issue of confusion. I agree with the respondent that the Registrar gave due consideration to the issue of the state of the marketplace as one of the surrounding circumstances in this case. I disagree with the applicant's statement that the emphasis on the state of the marketplace was disproportionate.
[54] Finally, I believe that it was reasonable for the Registrar to conclude that consumers would associate the A & MOOSEHEAD Design mark with the respondent because of their familiarity with the MOOSEHEAD Design. The respondent submitted considerable evidence of its use of the MOOSEHEAD Design and similar marks, especially in the Maritimes, where the applied for trade-mark would be used in association with a junior hockey team. I cannot but agree with the Registrar's finding that consumers would most likely associate the respondent's mark with the respondent.
CONCLUSION
[55] In conclusion, therefore, this appeal should be dismissed with costs in favour of the respondent.
Marc Nadon
JUDGE
O T T A W A, Ontario
May 15, 2001