Federal Court Decisions

Date: 19971215

Docket: T-1814-96

     IN THE MATTER OF a Decision of the Trade-marks Opposition

     Board with respect to an Opposition by the Coca-Cola Company,

     sometimes carrying on business under the name and style of

     Coca-Cola Foods, a Division of The Coca-Cola Company,

     to Application No. 679,225, for the Trade-mark SUN-RYPE

     HI-5 & Design of SUN-RYPE PRODUCTS LTD.

BETWEEN:

     SUN-RYPE PRODUCTS LTD.,

     Appellant,

     - and -

     THE COCA-COLA COMPANY, sometimes carrying on

     business under the name and style of Coca-Cola Foods,

     a Division of The Coca-Cola Company,

     Respondent.

     REASONS FOR JUDGMENT

ROULEAU, J.

[1]      This is an appeal pursuant to section 56 of the Trade-marks Act from a decision of the Registrar of Trade-marks which held that the appellant's mark is not registrable because it is confusing with certain trademarks registered in the name of the respondent.

[2]      The facts are straightforward. On April 4, 1991, the appellant filed an application under Serial No. 679,225 to register the following trademark for use in association with fruit juices, based on proposed use in Canada:

[3]      The application was advertised in the trade-marks Journal in December of 1991. On March 18, 1992, the respondent filed a Statement of Opposition with the Registrar of Trade-marks opposing the appellant's application on the following three grounds:

(a) the appellant's mark is not registrable because it is confusing with the following trademarks registered in the name of the respondent:

         FIVE ALIVE, Reg. No. 260,305;

         DELI-CINQ, Reg. No. 265,829

         FIVE ALIVE LIGHT & Design, Reg. No. 358,627;

         DELI-CINQ LEGER & Design, Reg. No. 358,272;

         FIVE ALIVE LIGHT, Reg. No. 385,814;

         DELI-CINQ LEGER, Reg. No. 385,815; and

         HI-C, Reg. No. UCA50875

(b) the appellant is not the person entitled to registration of its mark; and

     (c) the appellant's mark is not distinctive.

[4]          The appellant filed a Counterstatement and both parties filed evidence. On June 6, 1996, David J. Martin, a member of the Opposition Board, on behalf of the Registrar of Trade-marks, rendered a decision refusing the appellant's application, stating his reasons, in part, as follows:

In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my conclusions above, and particularly in view of the similarities between the wares and trades of the parties, the reputation associated with the opponent's marks HI-C and FIVE ALIVE and the degree of resemblance between the applicant's mark and the opponent's marks (particularly HI-C), I find that the applicant has failed to satisfy the onus on it to show that its proposed mark is not confusing with the opponent's trade-marks HI-C and FIVE ALIVE. The applicant has therefore failed to satisfy the onus on it to show that its mark distinguishes or is adapted to distinguish its wares from those of the opponent throughout Canada. The third ground is therefore successful.

As for the first ground of opposition, the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark is the date of my decision. . . As for the second ground, the material time for considering the circumstances of as of the applicant's filing date. Both grounds turn on the issue of confusion, and in view of my conclusions respecting the third ground of opposition, I find that both the first and second grounds are also successful.

[5]      Generally, considerable weight will be attached to any decision of the Registrar of Trade Marks in granting or refusing the registration of a mark, since the subject-matter is one in which he must be considered to possess substantial expertise. However, on an appeal from the decision of the Registrar, the issue of whether a trade mark is confusing involves a judicial determination of a practical question of fact and the question remains fully open to the Court to consider based on the facts before it. In the present case, after having examined the impugned decision and considering the written and oral submissions of the parties, I am satisfied that the appeal should be allowed for the following reasons.

[6]      First, the respondent's marks are not so distinctive that they can be characterized as strong marks. On the contrary, they are inherently weak marks which are entitled to only a limited range of protection. For example, the descriptive element HI in the respondent's HI-C mark, or the phonetically equivalent HIGH or HY, is a component of nine other marks on the trade-mark register owned by third parties for juices and beverages, namely:

1. HIGH COUNTRY;

2. HIGH PARK;

3. HY & ZELS'S;

4. HI-SPOT;

5. HI-SPOT & Design;

6. HI-TWIST;

7. HIGH-N-DRY;

8. HY-5 (pending);

         9. HIGH VALLEY (pending).

[7]      In the same manner, the word FIVE in the respondent's FIVE ALIVE mark, is a component of fifteen other marks on the register for juices and beverages:

         1. TAKE FIVE;

         2. PRENDS 5;

         3. CITRUS FIVE & Design;

4. CITRUS 5;

         5. TAKE 5;

         6. TROPIC 5;

         7. 5 ALARM GINGER BEER;

         8. 5 Design;

         9. LABATT 5 Design;

         10. 5 H & H Design;

         11. TROPICAL 5;

         12. LIFESAVERS FIVE FLAVOR & Design;

         13. 5 Q;

         14. FIVE ROSES;

         15. HY-5.

[8]      Second, the essential question to be determined in considering if one mark is confusing with another, is whether the use of a proposed mark would be likely to lead to the inference that the wares associated with it and those associated with the registered trade mark were produced or marketed by the same company.

[9]      In the present case, the respondent contends that the use of the elements HI and 5 in the appellant's trade mark, is confusing with its own registered trade marks. However, the fact that both marks contain these particular elements is not sufficient, in and of itself, to conclude that the marks are confusing. The tests to be applied are those of appearance, sound and the ideas suggested by the marks. In applying these tests, the first principle to be invoked is that the marks are to be looked at as totalities and not as dissected items. It is the idea of each mark, that is, the net impression left by the mark as a whole upon the mind, which is to be considered. Accordingly, the marks should not be subjected to intense and detailed analysis, but should rather be viewed from the standpoint of a person who has only an imperfect recollection of one mark and then later sees or hears the competing mark by itself.

[10]      This was the approach followed by the Court in Sealy Sleep Products Ltd. v. Simpson's-Sears Ltd (1960), 20 Fox Pat. C. 76, (Ex. Ct), wherein Thorson, P. made the following comments at pp. 81-82:

It is not a proper approach to the determination of whether one trade mark is confusing with another to break them up into their elements, concentrate attention upon the elements that are similar and conclude that, because there are similarities in the trade marks, the trade marks as a whole are confusing with one another. Trade marks may be different from one another and, therefore, not confusing with one another when looked at in their totality, even if there are similarities in some of the elements when viewed separately. It is the combination of the elements that constitutes the trade mark and it is the effect of the trade mark as a whole, rather than any particular part in it, that must be considered.

[11]      I am satisfied that as a matter of first impression, the trademarks in issue are substantially dissimilar. The appellant's mark includes the distinctive SUN-RYPE "sunburst" design prominently featured at the top of the mark; the component HI-5 is a distinctive design closely associated with the SUN RYPE "sunburst" design; there are pictorial illustrations of various fruits; and, there are the disclaimed words "A Tropical Blend of Pineapple, Passionfruit, Guava, Tangerine and Orange Juices".

[12]      In my view, the Registrar placed too much emphasis on the HI-5 component of the appellant's mark and failed to give sufficient weight to the whole of the appellant's mark, in particular to the SUN-RYPE element.

[13]      Finally, the Registrar held that the appellant's mark had not become known at all during the material time. However, the affidavit evidence demonstrates that the SUN-RYPE mark has been used and advertised in connection with fruit juice and related products since 1959 and the volume of sales of products bearing the SUN-RYPE trade name and one or more of the SUN-RYPE family of trademarks has been in excess of 71 million packages annually since 1990. The evidence also shows that over one hundred million units were sold in 1995. Furthermore, contrary to the findings of the Board, there have been significant sales of Sun-Rype products east of Manitoba from 1993 to 1996.

[14]      I am satisfied therefore that the appellant has demonstrated that its trade-mark is not likely to be confusing with the respondent's registered trade marks. Accordingly, the appeal is allowed and the decision of the Registrar of Trade-Marks is set aside. Costs to the appellant.

     JUDGE

OTTAWA, Ontario

December 15, 1997