Date: 20040304
Docket: T-635-02
Citation: 2004 FC 341
Ottawa, Ontario, this 4th day of March, 2004
Present: The Honourable Justice James Russell
BETWEEN:
SARASIN CONSULTADORIA E. SERVICOS LDA
Appellant
and
ROOX'S INC.
Respondent
and
THE REGISTRAR OF TRADE-MARKS
REASONS FOR ORDER AND ORDER
[1] This is an application pursuant to s. 56 of the Trade-marks Act, R.S.C. 1985, c. T-13, as amended ("Act") to appeal the decision of the Registrar of Trade-marks ("Registrar") dated February 18, 2002 ("Decision") in the matter of an opposition. Roox's Inc. ("Respondent") was the Opponent before the Registrar and Sarasin Consultadoria E Servicos Lda ("Appellant") was the Applicant.
BACKGROUND
[2] On May 8, 1996, the Appellant indicates that its predecessor in title, Edit- S.R.L. ("Edit"), filed an application to register NOSE DESIGN ("Appellant's Mark") for use in association with shoes, boots, slippers, and sandals ("Wares") based on use since as early as March 23, 1995.
[3] The Appellant's Mark was advertised in the Trade-marks Journal of May 20, 1998.
[4] The Respondent filed a Statement of Opposition on October 20, 1998.
[5] On December 9, 1998, the Appellant filed and served a Counterstatement to the Statement of Opposition.
[6] The Respondent's evidence consisted of a certified copy of the trade-mark registration for TOES ON THE NOSE & DESIGN ("Respondent's Mark") in support of its opposition.
[7] The Respondent notes that the Respondent's Mark is registered, inter alia, for "... athletic shoes, shoes, sandals, sneakers, tennis shoes." The Appellant's Mark is registered, inter alia, for "... shoes, boots, slippers, and sandals."
[8] The application for the Appellant's Mark was assigned to the Appellant by Edit as of December 31, 1999.
[9] The Registrar rejected all grounds of opposition except the ground that the application did not comply with s. 30(b) of the Act. The Registrar thought it wasn't clear whether the use at the date alleged, namely, 23 March 1995, was by the Appellant's predecessor in title and whether such use enured to the benefit of the Appellant. The Registrar found that the invoice provided in response to the Respondent's request referred to "a party whose identity or role has not been explained." The Registrar then said:
... the applicant has not met the onus on it to establish that such use accrues to its benefit, rather than to the entity whose name appears on the invoice, the Section 30(b) ground of opposition succeeds.
This was the only ground on which the Registrar refused the application and it is this refusal that is appealed. The Appellant otherwise agrees with the Registrar's decision.
Decision of the Registrar
[10] An appeal from the Registrar's decision was filed February 19, 2002. A second affidavit of Lino Fornari, the sole director of Edit, sworn April 16, 2002, was filed in the Federal Court on April 22, 2002.
[11] The Appellant submits that, as of January 1, 1994, there was a licence agreement between the then owner of the Appellant's Mark, Edit, and Ubi-Maior S.R.L. ("Ubi-Maior") whereby Ubi-Maior was the exclusive licensee of the Appellant's Mark and Edit had direct control of the character and quality of the wares under the licence agreement. Ubi-Maior was the exclusive licensee of the Appellant's Mark in association with those wares for 1994 and as of the date of first use on March 23, 1995.
[12] The Appellant submits that the invoice of Ubi-Maior dated March 23, 1995, was for an order placed October 7, 1994, for wares delivered March 23, 1995, to Aldo in Canada, and payment was to be made to Redax AG, a related company of Ubi-Maior, the exclusive licencee.
[13] The Respondent entered an appearance on April 25, 2002, stating that it intended to participate in the appeal.
[14] The Appellant submits that Appellant's Mark was used in association with the Wares at date of first use, namely, March 23, 1995, by the exclusive licensee of the trade-mark owner at the time, and that such use enures to the benefit of the Appellant.
[15] The Respondent submits that neither the further affidavit of Mr. Lino Fornari filed on appeal nor the alleged license agreement attached as exhibits A & B to that affidavit establish use by the Appellant as at the date of the alleged first use claimed in the subject application.
PERTINENT LEGISLATION
[16] Section 3 of the Trade-marks Act R.S.C., c. T-13, as amended, addresses the issue of deemed adoption:
| 3. A trade-mark is deemed to have been adopted by a person when that person or his predecessor in title commenced to use it in Canada or to make it known in Canada or, if that person or his predecessor had not previously so used it or made it known, when that person or his predecessor filed an application for its registration in Canada. |
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3. Une marque de commerce est réputée avoir été adoptée par une personne, lorsque cette personne ou son prédécesseur en titre a commencé à l'employer au Canada ou à l'y faire connaître, ou, si la personne ou le prédécesseur en question ne l'avait pas antérieurement ainsi employée ou fait connaître, lorsque l'un d'eux a produit une demande d'enregistrement de cette marque au Canada. |
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[17] Section 4(1) sets out when a trade-mark is deemed to be used:
| 4. (1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred. |
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4. (1) Une marque de commerce est réputée employée en liaison avec des marchandises si, lors du transfert de la propriété ou de la possession de ces marchandises, dans la pratique normale du commerce, elle est apposée sur les marchandises mêmes ou sur les colis dans lesquels ces marchandises sont distribuées, ou si elle est, de toute autre manière, liée aux marchandises à tel point qu'avis de liaison est alors donné à la personne à qui la propriété ou possession est transférée. |
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[18] Section 6 addresses the issue of confusion:
| 6. (1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.
(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
(3) The use of a trade-mark causes confusion with a trade-name if the use of both the trade-mark and trade-name in the same area would be likely to lead to the inference that the wares or services associated with the trade-mark and those associated with the business carried on under the trade-name are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
(4) The use of a trade-name causes confusion with a trade-mark if the use of both the trade-name and trade-mark in the same area would be likely to lead to the inference that the wares or services associated with the business carried on under the trade-name and those associated with the trade-mark are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
(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. |
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6. (1) Pour l'application de la présente loi, une marque de commerce ou un nom commercial crée de la confusion avec une autre marque de commerce ou un autre nom commercial si l'emploi de la marque de commerce ou du nom commercial en premier lieu mentionnés cause de la confusion avec la marque de commerce ou le nom commercial en dernier lieu mentionnés, de la manière et dans les circonstances décrites au présent article.
(2) L'emploi d'une marque de commerce crée de la confusion avec une autre marque de commerce lorsque l'emploi des deux marques de commerce dans la même région serait susceptible de faire conclure que les marchandises liées à ces marques de commerce sont fabriquées, vendues, données à bail ou louées, ou que les services liés à ces marques sont loués ou exécutés, par la même personne, que ces marchandises ou ces services soient ou non de la même catégorie générale.
(3) L'emploi d'une marque de commerce crée de la confusion avec un nom commercial, lorsque l'emploi des deux dans la même région serait susceptible de faire conclure que les marchandises liées à cette marque et les marchandises liées à l'entreprise poursuivie sous ce nom sont fabriquées, vendues, données à bail ou louées, ou que les services liés à cette marque et les services liés à l'entreprise poursuivie sous ce nom sont loués ou exécutés, par la même personne, que ces marchandises ou services soient ou non de la même catégorie générale.
(4) L'emploi d'un nom commercial crée de la confusion avec une marque de commerce, lorsque l'emploi des deux dans la même région serait susceptible de faire conclure que les marchandises liées à l'entreprise poursuivie sous ce nom et les marchandises liées à cette marque sont fabriquées, vendues, données à bail ou louées, ou que les services liés à l'entreprise poursuivie sous ce nom et les services liés à cette marque sont loués ou exécutés, par la même personne, que ces marchandises ou services soient ou non de la même catégorie générale.
(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) 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. |
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[19] Section 30(b) provides as follows:
| 30. An applicant for the registration of a trade-mark shall file with the Registrar an application containing
...(b) in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of wares or services described in the application;
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30. Quiconque sollicite l'enregistrement d'une marque de commerce produit au bureau du registraire une demande renfermant_: ... b) dans le cas d'une marque de commerce qui a été employée au Canada, la date à compter de laquelle le requérant ou ses prédécesseurs en titre désignés, le cas échéant, ont ainsi employé la marque de commerce en liaison avec chacune des catégories générales de marchandises ou services décrites dans la demande;
... |
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ISSUES
The Appellant raises the following issue on appeal:
Whether the application to register the Appellant's Mark complied with Section 30(b) of the Act as a result of the use by the exclusive licensee of the Appellant's predecessor in title, which use enured to the benefit of the Appellant.
The Respondent raises the following issue on appeal:
Whether the Registrar's Decision on confusion wrong.
ANALYSIS
Section 30(b)
[1] The Appellant submits that the Court may substitute its decision for that of the Registrar if the Registrar came to a wrong conclusion or if additional evidence is adduced on appeal that would have materially affected the Registrar's findings of fact or the exercise of her discretion (Molson Breweries, a Partnership v. John Labatt Ltd. (2000), 5 C.P.R. (4d) 180 at 196 (F.C.A.)).
[2] The Appellant submits that the additional evidence, namely the affidavit of Mr. Lino Fornari (sworn April 16, 2002) filed by the Appellant in this appeal, satisfies the ambiguity raised by the Registrar and referred to in the Decision in relation to s. 30(b) of the Act.
[3] The Appellant says that, as of January 1, 1994, and at March 23, 1995, Ubi-Maior was an exclusive licensee of Edit, the Appellant's predecessor in title of the Appellant's Mark and it made and sold the Wares.
[4] The invoice of Ubi-Maior dated March 23, 1995 is for an order for wares placed October 7, 1994, which were delivered in Canada on March 23, 1995, to Aldo, a Canadian retailer.
[5] The Appellant's Mark appeared on the wares delivered March 23, 1995 to Aldo in Canada.
[6] Hence, the Appellant says that the Appellant's Mark was used in association with the Wares by the exclusive licensee of the Appellant's predecessor in title, Edit, who had control of the character or quality of the Wares. Such use, says the Appellant, enures to the benefit of the owner of the Appellant's Mark whether or not the trade-mark was registered.
[7] The Respondent submits that the Appellant has not filed any substantive additional evidence on appeal that would materially affect the Registrar's decision on this matter.
[8] The Respondent submits that the additional evidence of the Appellant filed on appeal is ambiguous and equivocal at best and that the Appellant must file evidence "positively establishing" the date of first use as alleged (Coca-Cola Ltd. v. Compagnie Française de Commerce International Cofci, S.A. (1991), 35 C.P.R. (3d) 406).
[9] The Respondent says that, for various reasons, the new evidence filed by the Appellant does not resolve the s. 30(b) problems raised in the Decision.
[10] To begin with, the Respondent says that Mr. Fornari, in his affidavit of April 16, 2002, does not make it clear that the Appellant's Mark was used at the material time in association with the wares referred to in the invoice of March 23, 1995, that is produced to prove use in Canada.
[11] The invoice refers to a shipment of 179 canvas shoes of three different kinds. The Respondent says that Mr. Fornari could easily have made it clear that the Appellant's Mark was used in association with these items, but he chose not to do so. Hence, the ambivalence concerning the use of the Appellant's Mark under s. 30(b) remains.
[12] The Appellant says there is no ambiguity on this point. Mr. Fornari's affidavit of April 16, 2002, has to be read together with his affidavit of April 26, 2000. In his earlier affidavit, Mr. Fornari made it clear that the Appellant's Mark "has been used in Canada since at least March 23, 1995, in association with shoes, boots, slippers and sandals" and he provides representative examples showing use of the Appellant's Mark with shoes, boots, slippers and sandals in Canada. Those examples show samples of the "477" style of boot referred to in the Ubi Maior invoice of March 23, 1995, and the Appellant's Mark appears on the side of the boots.
[13] In my view, if both affidavits of Mr. Fornari are taken together, use of the Appellant's Mark in association with the Wares is established.
[14] But the Respondent goes further and says that the exclusive licence agreement between Edit and Ubi Maior relied upon by the Appellant does not establish use in Canada that can be attributed back to Edit, the Appellant's predecessor in title. The Respondent points out that the licence agreement does not specifically refer to Canada and the recital paragraph says that use will be "within the limits and conditions of the present contract." The grant is for "the national and international territory."
[15] My review of the recital of the licence agreement does not leave me with the impression that there is any territorial limitation or use of the Appellant's Mark that is referred to, or that can be implied, from the agreement itself, and that would exclude Canada.
[16] The Respondent says that this matter was pursued when Mr. Fornari was cross-examined on his affidavit of April 16, 2002, and no clear answer was ever provided on the question of whether Canada was included. In fact, the Respondent says, legal counsel objected to the question as improper.
[17] My reading of the cross-examination transcript suggests that the relevant exchange covered registration issues and there is nothing in the record or in the licence agreement itself to suggest that Canada was excluded from the licence agreement.
[18] In Mr. Fornari's affidavit of April 16, 2002, the Ubi Maior invoice is clearly connected to a shipment of wares to Aldo in Canada. There appears to be no challenge in the cross-examination of Mr. Fornari to the assertion that the Appellant's Mark was used in Canada on the Wares at the relevant time.
[19] The Respondent also attacks the April 16, 2002, affidavit of Mr. Fornari on the ground that the crucial Ubi Maior invoice of March 23, 1995, referred to by Mr. Fornari to show use of the Appellant's Mark in Canada is not a matter upon which Mr. Fornari has direct knowledge, and the affidavit does not adopt the usual practice in relation to information and belief matters. In other words, the Respondent says that this is information that should have been provided by someone else with more direct knowledge and it cannot be relied upon to show use in this case.
[20] It appears to me, however, that in cross-examination Mr. Fornari explained that he was a partner or shareholder of Ubi Maior, that he was often present at the Ubi Maior factory and that, as an administrator of Edit he was "in full control of the quality of the production of the brand "NOSE". He also says that, as a partner of Ubi Maior he had access to that firm's documentation:
As administrator of Edit, I would receive copies of the invoices of production of UBI Maior.
[21] My conclusions on this first issue are that the Appellant has filed additional evidence on appeal in the form of Mr. Fornari's affidavit of April 16, 2002, that would have materially affected the Registrar's decision on this matter and that satisfies the Court that the sole ground in the Decision for refusing the application pursuant to s. 30(b) of the Act has now been resolved by the production of convincing evidence establishing use of the Appellant's Mark on the Wares in Canada as early as March 23, 1995.
Confusion
[22] On this issue the Respondent says that even if the s. 30(b) ground of opposition is overcome, the Appellant's Mark remains confusing with the Respondent's Mark and the Registrar's Decision on the confusion ground was clearly wrong.
[23] The Respondent refers the Court to the words of Strayer J., as he then was, in Welch Foods Inc. v. Del Monte Corp. (1992), 44 C.P.R. (3d) 205 (F.C.T.D.) at page 207 for the proposition that it is the Appellant who has the onus of establishing no reasonable likelihood of confusion. The Respondent submits that in applying the criteria under s. 6(5) of the Act, the relevant test is first impression and imperfect recollection.
[24] The Decision of the Registrar makes it clear that "[s]ome of the grounds of opposition are rather garbled" but she goes on to try and deal with them in any event. On this issue, the approach is as follows:
I have some doubt as to whether the opponent has pleaded a registrability ground under Section 12(1)(d) in the third ground of its opposition, in addition to its Section 16 grounds. The third ground states that it is under Section 38(2)(c) (which deals with entitlement, not registrability) and, although the opening sentence of the ground refers to registrability as well as entitlement, it specifically refers to Section 16 (which only deals with entitlement) as being the basis of the ground. The opponent's registrability pleading is therefore ambiguous and possibly contrary to Section 38(3)(a). In any event, a consideration of all of the Section 6(5) factors, as of today's material date, would not result in the opponent succeeding under a Section 12(1)(d) ground of opposition. This is primarily because of the low degree of resemblance between the applicant's NOSE Design mark and the opponent's TOES ON THE NOSE mark and the lack of evidence of any use or acquired distinctiveness of the opponent's mark, and notwithstanding that both marks are inherently distinctive and are for use in association with wares that overlap and would most likely travel through similar channels of trade. In reaching this decision, I have not attributed any significant weight to the state of the register evidence introduced by the applicant because I do not consider the number or nature of the NOSE marks located by Ms. Luciani to be sufficient to draw any meaningful inferences about the state of the marketplace [see Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432; Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R. (3d) 205 (F.C.T.D.); Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.)]. I have however noted that the applicant's mark has become known to a greater extent and for a longer period of time than has the opponent's mark, although it is questionable as to whom such reputation and use enured. Of course, the test for confusion is one of first impression and imperfect recollection and the legal burden is on the applicant to establish that there would be no reasonable likelihood of confusion between the marks in issue.
[25] The Appellant's position is that confusion with a registered trade mark was not specifically pleaded in the statement of opposition. The Respondent did not file evidence of previous use but merely relied upon a certified copy of its registration.
[26] The Respondent has filed no evidence on appeal on this matter and, considering all of the circumstances, I am not satisfied that the Registrar was wrong in reaching the conclusion she did on the issue of confusion.
ORDER
THIS COURT ORDERS that
1. The Appellant's application to register the NOSE DESIGN mark complies with section 30(b) of the Act and should be allowed to proceed to registration.
2. The Respondent, Roox's Inc., shall pay the Appellant's costs of this Appeal.
"James Russell"
JFC
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET:T-635-02
STYLE OF CAUSE:Sarasin Consultadoria E. Servicos LDA
-and- Roox's Inc. and The Registrar of Trade-Marks
PLACE OF HEARING:Ottawa, Ontario
DATE OF HEARING:February 9, 2004
REASONS:The Honourable Mr. Justice Russell
APPEARANCES:
Mrs. Rose-Marie PerryFOR THE APPELLANT
Mr. Kenneth D. McKayFOR THE RESPONDENT
SOLICITORS OF RECORD:
Gowling Lafleur Henderson LLPFOR THE APPELLANT
Ottawa, Ontario
Sim, Hughes, Ashton & McKay LLPFOR THE RESPONDENT
Toronto, Ontario