Date: 20040206
Docket: T-923-02
Citation: 2004 FC 197
Ottawa, Ontario, the 6th day of February, 2004
Present: THE HONORABLE MR. JUSTICE BEAUDRY
BETWEEN:
BLUEDOT JEANSWEAR COMPANY INC.
Applicant
and
9013-0501 QUÉBEC INC.
Respondent
REASONS FOR ORDER AND ORDER
[1] This is an appeal under subsection 56(1) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act) from a decision of the Registrar of Trade-marks (the Registrar) dated March 19, 2002 maintaining the opposition by the Respondent to application number 805,285 by the Applicant for the registration of the trade-mark RAGE JEANS.
ISSUE
[2] The issue in this case can be stated as follows:
1. In light of some new evidence before this Court at the appeal stage, was the Registrar entitled to maintain the opposition by the Respondent on the basis of likelihood of confusion with the latter's trade-marks?
[3] For the following reasons, I will answer in the affirmative. Consequently, I will dismiss the appeal.
FACTS
[4] On July 12, 1991, the Respondent's trade-mark ORAGE 386,694 was registered, followed by trade-mark ORAGE & Dessin 452,745 and ORAGE Dessin 556,050 on January 5, 1991 and January 8, 2002 respectively. These trade-marks will be refered to as ORAGE. On February 26, 1996, the Applicant filed an application with the Trade-marks Office to register the words RAGE JEANS as a trade-mark, based on proposed use for the trade-mark in association with men's, women's and children's clothing, with athletic wear and with souvenir items. The application was assigned a file number 805,285. In a revised application dated June 25, 1996, the Applicant disclaimed the right to the exclusive use apart from the trade-mark of the word "jeans". The application was advertised for the purpose of opposition on October 30, 1996. The Respondent filed an opposition on December 27, 1996; the opposition was based inter alia on paragraphs 12(1)(d), 16(3)(a) and subparagraph 30(i) of the Act. The Applicant filed a counter-statement of opposition on May 12, 1997.
[5] The Applicant's evidence consisted of an affidavit of Charles Lam, President of the Applicant, and Exhibits A and B. Mr. Lam was cross-examined on his affidavit. The Respondent's evidence in support of the opposition consisted of an affidavit of Eric D'Anjou, President of the Respondent, and Exhibits P-1 to P-10.
[6] On March 19, 2002, the Registrar maintained the Respondent's opposition and refused the Applicant's application for registration.
CONTESTED DECISION
[7] After determining that the legal onus is on the Applicant to show that there would be no reasonable likelihood of confusion, the Registrar applied the five factors of confusion found in subsection 6(5) of the Act to the facts. At pages 5-7 of his decision, he wrote:
The applied for mark RAGE JEANS, for use in association with various items of clothing, possesses a relatively low degree of inherent distinctiveness as the distinctive component of the mark namely, RAGE, is a common English and French word. The opponent's marks ORAGE and ORAGE & Design (sic) also possess a relatively low degree of inherent distinctiveness when used in association with clothing. In this regard, the word ORAGE would be perceived as the word RAGE prefixed by the letter O by the average Anglophone consumer, and would be understood by the average Francophone or bilingual consumer as the French word for "thunderstorm" or "stormy weather". The inherent distinctiveness of the opponent's marks would be reduced to the extent that the word ORAGE would be suggestive, to the Francophone or bilingual consumer, of wares that are rugged enough to be suitable for severe weather.
The applied for mark RAGE JEANS was of course not known prior to February 26, 1996 but did acquire some reputation by mid 1998 as a result of sales and advertising under the mark. The opponent's marks ORAGE and ORAGE & Design (sic) had acquired some reputation by 1990 and had acquired a fair reputation by 1997 as a result of sales and advertising under the marks. The length of time that the parties' marks have been in use is a factor that favours the opponent. The nature of the parties' wares overlap or are closely related and there is potential for the parties to sell the wares through the same retail outlets in the future although that is not the case at present.
The marks in issue resemble each other to a fair extent visually. In this regard, the distinctive element of the applied for mark namely, RAGE, is a component of the opponent's marks ORAGE and ORAGE & Design (sic). The marks would be sounded somewhat similarly by an Anglophone consumer, that is, the difference in sounding would be the "oh" sound prefixing the opponent's marks. However, the marks in issue would be sounded differently by the average Francophone and bilingual consumer who would recognize the French word "orage". The applied for mark RAGE JEANS would likely suggest the idea of intense anger to the Anglophone, Francophone and bilingual consumer since the word "rage" has the same meaning in both languages. It might also suggest the idea of a "fashion fad" to the Anglophone and bilingual consumer. The opponent's marks would likely suggest the idea of a "thunderstorm" to the average Francophone and bilingual consumer and possibly the idea of "rage" to the average Anglophone consumer, if it suggested any idea at all.
Considering the above, and considering in particular the relatively low inherent distinctiveness of the applied for mark RAGE JEANS, the greater acquired distinctiveness of the opponent's marks ORAGE and ORAGE & Design (sic) at all material times, the resemblance between the marks in issue to the average Anglophone consumer and the similarity between the parties's wares, I find that I am in a state of doubt whether the applied for mark is confusing with the opponent's marks. As such doubt must be resolved against the applicant, the subject application is refused.
ANALYSIS
New evidence and standard of review
[8] On appeal, the Applicant filed new evidence, i.e. affidavits by Professor Brendan Gillon, Professor Eva Kehayia, Professor Glyne Piggott, Leopold Dubord, Brigitte Trottier and Lynda Palmer. The Respondent also filed new evidence, i.e. affidavits by Professor Claire Gélinas-Chebat, Professor Philippe Barbaud, Susan Brandson and Michael Kristmanson.
[9] With regards to new evidence, subsection 56(5) of the Act provides:
| 56(5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.
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[10] The question then becomes which standard of review should be used by this Court on an appeal from the Registrar on an opposition issue. The Applicant argues that it should be the standard of correctness and the Respondent submits that it should be the standard of reasonableness simpliciter. I agree with the Respondent. As stated by Evans J. in Garbo Group Inc. v. Harriet Brown & Co. (1999), 3 C.P.R. (4th) 224 at pages 234-236 (F.C.T.D.) and by the Federal Court of Appeal in Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 at paragraph 51 (C.A.), the standard would seem to be that where no new evidence is filed on appeal that would have materially affected the Registrar's findings, decisions of the Registrar should be reviewed on a standard of reasonableness simpliciter. As will be shown in the following analysis, the new evidence adduced by the Applicant does not materially affect the conclusion reached by the Registrar and the new evidence adduced by the Respondent, to the extent that it would have affected the Registrar's findings, would have reinforced these findings.
General principles
[11] It is worth reiterating some general principles pertinent to an opposition case. The legal onus is on the Applicant to show that there would be no reasonable likelihood of confusion, as stated in British American Bank Note Co. Ltd. v. Bank of America National Trust and Saving Association, [1983] 2 F.C. 778 (T.D.) at page 35:
The onus is upon an applicant for the registration of a trade mark to establish his right thereto and that onus is constant upon him (see Eno v. Dunn ([1890] 15 A.C. 202) and that includes the onus of showing that confusion is unlikely.
But before an opponent can base an objection on prior use under section 16 the opponent must establish a reputation in the trade under a style with which confusion may result. That to me is not an onus but a burden of proof. An onus never shifts but a burden of proof does. The applicant may rebut the proof proffered by the opponent. (my emphasis)
[12] In case of "doubt whether the registration of a Trade Mark would cause confusion with a prior Mark the doubt must be resolved against the newcomer" (Conde Nast Publication Inc. v. Union des Éditions Modernes (1979), 46 C.P.R. (2d) 183 at page 188 (F.C.T.D.)).
[13] According to subsection 16(3) of the Act, in the context of an application for registration of a proposed trade-mark, the relevant date to assess the presence or absence of confusion is the date of filing of the application (February 26, 1996, in this case).
[14] There will be a finding of confusion if either an Anglophone consumer, a Francophone consumer or a bilingual consumer, or more than one of these audiences, is likely to be confused between the marks (Pierre Fabre Médicament v. Smithkline Beecham Corp., [2001] 2 F.C. 636 at paragraphs 10 and 14 (C.A.)).
[15] The factors to be analysed in order to determine whether there is a likelihood of confusion are found in subsection 6(5) of the Act. The subsection provides:
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;
6(5) En décidant si des marques de commerce ou des noms commerciaux créent de la confusion, le tribunal ou le registraire, selon le cas, tient compte de toutes les circonstances de l'espèce, y compris :
a) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus;
(b) 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.
b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage;
c) le genre de marchandises, services ou entreprises;
d) la nature du commerce;
e) le degré de ressemblance entre les marques de commerce ou les noms commerciaux dans la présentation ou le son, ou dans les idées qu'ils suggèrent.
Application to the facts
[16] I propose to go through each of the subsection 6(5) factors, taking into account the evidence that was before the Registrar, the Registrar's conclusions, as well as the new evidence that adds something to the case.
[17] The "new" evidence relating to the first four factors does not add anything and rather reinforces the findings of the Registrar on those issues. As to the "inherent distinctiveness of the trade-marks and the extent to which they have become known" (paragraph 6(5)(a)) and the "length of time the trade-marks have been in use" (paragraph 6(5)(b)), I find no reason to disagree with the Registrar that both RAGE JEANS and ORAGE trade-marks have low inherent distinctiveness, that RAGE JEANS was not known prior to February 26, 1996 while ORAGE had been known years earlier, and that both the sales figures and the publicity investments were significantly more important in relation to the ORAGE trade-marks than to the RAGE JEANS trade-mark. The only "new" evidence would be Ms. Palmer's affidavit that merely tends to confirm the low distinctiveness of both the Applicant's and the Respondent's trade-marks.
[18] As for the "nature of the wares" (paragraph 6(5)(c)), no new evidence was adduced to disturb the finding that the wares overlap: the Applicant's proposed trade-mark covers men's, women's, boys' and girls' clothing, athletic wear and souvenir items, while the Respondent's trade-marks pertain to sports clothing.
[19] Then comes the "nature of the trade" factor (paragraph 6(5)(d)). In order "to establish the likelihood of confusion, it is not necessary to prove that the wares are sold in the same places, provided they are of the same general class, could eventually be sold in the same places, and the parties are entitled to do so" (Cartier Inc. v. Cartier Optical Inc. (1988), 20 C.P.R. (3d) 68 at page 74 (F.C.T.D.)). Though not presently sold through the same channels of trade, it is possible that the Applicant's and the Respondent's products could be sold in the future through the same venues. That fact was acknowledged by Leopold Dubord on cross-examination on his affidavit for this appeal. Both Mr. Dubord and Mr. Nolet confirmed in affidavits not before the Registrar where their respective products are sold: RAGE JEANS products are sold in department stores like LaBaie, Wal-Mart, Winners and Costco, and ORAGE products are sold in sporting goods stores and department store like André Lalonde Sport, Sports Experts, Les Ailes de la Mode and Eaton's.
[20] As for the "degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them" (paragraph 6(5)(e)), "new" evidence was presented by both sides. Professors Gillon, Kehayia and Piggott are, no doubt, knowledgeable in linguistics, but their resumes and admissions in cross-examinations on their affidavits reveal that their work and studies never involved trade-marks nor the behaviour of the consumer in the retail market. It is also to be noted that their linguistic analysis does not focus on confusion as contemplated by the Act but rather on a non-legal concept of confusion, i.e. linguistic confusion. I also note that Professor Gillon, with which Professors Kehayia and Piggott simply concur, makes "assumptions" and statements that are not even once back up by references to studies, surveys or articles published on that subject. Consequently, I will disregard their evidence as I find it is not relevant to the present issue and I cannot put any serious weight on their propositions.
[21] I will now turn to the Respondent's linguistic experts, Professors Claire Gélinas-Chebat and Philippe Barbaud. Professor Gélinas-Chebat's affidavit and resumé show that her main field of research consists of studying linguistic characteristics of advertising messages. As for Professor Barbaud's affidavit, it states that he has written approximately 25 affidavits as expert witness on the subject of whether two trade-marks can lead to confusion from a linguistic point of view.
[22] Professor Gélinas-Chebat's affidavit, with which Professor Barbaud concurs, raises some observations that only confirm the Registrar's findings. At paragraph 25, she writes "les mots « ORAGE » et « RAGE » sont extrêmement semblables du point de vue orthographique : le mot « RAGE » est composé de 4 des cinq lettres de « ORAGE » , et ce, dans le même ordre".
[23] At paragraphs 27 and 28, she adds "il est important de considérer d'autres facteurs qui pourraient affecter la reconnaissance auditive et visuelle tels les bruits de fond, la prononciation particulière d'un interlocuteur, des variantes de style visuelles, etc. Dans son affidavit, Pr Gillon considère des conditions parfaites où les mots « ORAGE » et « RAGE » seraient prononcés d'une manière précise ou écrits de façon parfaite. Or, si l'emphase phonétique ou visuel (sic) porte sur la particule « rage » du mot « orage » , le son « o » pouvant être prononcé doucement ou masqué par un bruit de fond quelconque et le visuel du « o » pouvant être différent de celui de la particule « rage » , le mot « orage » pourrait très bien être confondu, dans un sens strict, avec le mot « rage » ."
[24] At paragraph 30, she states "Comme pour la reconnaissance visuelle et phonétique, je trouve regrettable, du point de vue méthodologique, qu'aux paragraphes 17 et 18 de son affidavit Pr Gillon passe sous silence les grandes ressemblances entre les mots « ORAGE » et « RAGE » . D'ailleurs, il y a plus de ressemblances (80%) que de différences (20%), et ce, même d'un point de vue complètement académique et hors contexte."
[25] At paragraph 30, Professor Gélinas-Chebat adds "dans la mesure où cette expression se retrouve apposée sur un jeans, la particule « JEANS » représente une expression générique et perd son importance et c'est la particule « RAGE » qui prend toute l'importance pour le récepteur puisque cette particule lui permet de discriminer CE jeans parmi d'autres." At paragraph 40, she says "Je souligne au contraire que le mot « RAGE » , tant par la lettre que par le son, en français, se retrouve entièrement compris dans le mot « ORAGE » ."
[26] In light of the Registrar's decision and the "new" evidence, I find that all the factors enumerated in subsection 6(5), except the first part of the first factor - the inherent distinctiveness of the trade-marks - which is neutral, lead to the conclusion that there is a likelihood of confusion. For the first four factors, nothing in the new evidence disturbs the Registrar's findings. As for the last factor, the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them, Professor Gélinas-Chebat's evidence reinforces the fact that at least the Francophone and bilingual consumers would be likely confused between the trade-marks RAGE JEANS and ORAGE as the distinctive words RAGE and ORAGE have a visual, a spelling and a pronunciation that are very similar in the French language.
[27] In conclusion, I concur with the Registrar's findings and, since the new evidence presented to me only reinforces these findings, I am satisfied that there is a likelihood of confusion at least for the Francophone and the bilingual consumers. The Registrar's decision maintaining the opposition to the trade-mark registration of RAGE JEANS is upheld.
[28] The Respondent is asking that costs should be awarded on the maximum scale of Column IV of the Tariff of the Federal Court Rules (the Rules). I see no such justification here. The Applicant had the right to file new evidence and he should not be penalized for that.
ORDER
THE COURT ORDERS THAT the decision of the Registrar dated March 19, 2002 maintaining the opposition by 9013-0501 Québec Inc. to application number 805,285 be upheld and the Respondent will have its costs as per the middle scale of Column III of the Tariff of the Rules.
"Michel Beaudry"
Judge
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-923-02
STYLE OF CAUSE : BLUEDOT JEANSWEAR COMPANY
INC.
v.
9013-0501 QUÉBEC INC.
PLACE OF HEARING : Montreal, Quebec
DATE OF HEARING : February 4, 2004
REASONS FOR ORDER
AND ORDER BY : THE HONOURABLE MR. JUSTICE BEAUDRY