Date: 20060105
Ottawa, Ontario, January 5, 2006
PRESENT: THE HONOURABLE MR. JUSTICE SIMON NOËL
BETWEEN:
Applicant
and
REGISTRAR OF TRADE-MARKS
REASONS FOR ORDER AND ORDER
[1] The applicant Maison Cousin (1980) Inc. filed in this Court an appeal under section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 (TMA) of a decision by Jean Carrière, Member of the Trade-marks Opposition Board (Registrar). In his decision dated January 4, 2005, the Registrar allowed in part the opposition dated October 20, 1998 (statement of opposition) of the applicant Maison Cousin (1980) Inc. to the application of the respondent Cousins Submarines (respondent) dated May 29, 1996 (no. 813812). The respondent's application related to the trade-mark COUSINS in association with (submarine) sandwiches, various beverages (milk, coffee and ice tea) and restaurant services. The Registrar found in his decision that only the (submarine) sandwiches could not be registered under the trade-mark COUSINS.
[2] The applicant holds the following marks, which form the basis of the opposition and the application for judicial review (for coherence and clarity, I will designate each mark along with its registration number in parentheses and its registration date in brackets): MAISON COUSIN & DESIGN (TMA 130,985) [May 10, 1963], MAISON COUSIN 1921 & DESIGN (TMA 523,147) [February 15, 2000], MAISON COUSIN & CIE & DESIGN (TMA 576,779) [March 3, 2003], MAISON COUSIN & CO & DESIGN (TMA 576,780) [March 3, 2003] and MAISON COUSIN (TMA 580,508) [May 2, 2003].
[3] The applicant seeks the following from the Court:
1. allow the application for judicial review;
2. amend the statement of opposition to include the marks MAISON COUSIN (TMA 580,508) [May 2, 2003], MAISON COUSIN & CIE & DESIGN (TMA 576,779) [March 3, 2003] and MAISON COUSIN & CO & DESIGN (TMA 576,780) [March 3, 2003], which were registered after this statement was filed;
3. set aside the Registrar's decision in light of his findings dismissing in part the statement of opposition;
4. allow the applicant's opposition;
5. order that the applicant's application no. 813812 be refused and that the necessary entries be made in the Trade-marks Register.
[4] The respondent failed to appear within the 10-day period provided for in the Federal Court Rules, 1998, SOR/98-106. Counsel for the Registrar filed in the court record a letter informing the applicant that she would not file a record, nor would she attend or participate in the hearing. The hearing was held in the absence of the respondents.
ISSUES
[5] The issues are the following:
1. What is the appropriate standard of review for this appeal under section 56 of the TMA, in light of the new evidence?
2. Did the Registrar err in fact and in law in the interpretation and application of paragraph 12(1)(d) TMA?
3. Did the Registrar err in fact and in law in the interpretation and application of subsection 16(3) TMA?
4. Did the Registrar err in fact and in law in interpreting the definition of the distinctive nature of a trade-mark within the meaning of section 2 TMA?
FINDINGS
[6] For the reasons that follow, questions 2, 3 and 4 are answered in the negative.
FACTUAL BACKGROUND
[7] The applicant owns the following trade-marks (I have indicated the wares that are sold under each of the marks, as they appear on the registration certificates):
- For the MAISON COUSIN & DESIGN mark (TMA 130,985) [May 10, 1963]: "French bread, Canadian bread, crusty bread, whole wheat bread, diet bread, rolls, raisin bread, and all types of bread, of all descriptions and all forms in all cases";
- For the MAISON COUSIN 1921 & DESIGN mark (TMA 523,147) [February 15, 2000]: "French bread, Canadian bread, crusty bread, whole wheat bread, diet bread, rolls, raisin bread, and all types of bread, of all descriptions and all forms in all cases; French pastries and cakes of all types, for all occasions, sandwich rolls, croissants, salad loaves, dry petit fours, diet loaves, pies of all types, buns of all types, puff pastries, wedding cakes; frozen precooked bread, cheese bread, cookies of all sorts";
- For the MAISON COUSIN & CIE & DESIGN mark (TMA 576,779) [March 3, 2003]: "(1) Bread, frozen precooked bread, frozen raw bread dough, viennoiseries, croissants, dry petit fours, pies, buns, puff pastries, cookies, galettes, muffins. (2) French pastries, wedding cakes and cakes of all types";
- For the MAISON COUSIN & CO & DESIGN mark (TMA 576,780) [March 3, 2003]: "(1) French pastries, wedding cakes and cakes of all types (2) Bread, frozen precooked bread, viennoiseries, croissants, dry petit fours, pies, buns, puff pastries, cookies, galettes, muffins";
- For the MAISON COUSIN mark (TMA 580,508) [May 2, 2003]: "Bread of all types, French pastries and cakes of all types, sandwich rolls, croissants, dry petit fours, pies of all types, buns of all types, puff pastries, tiered cakes, cookies of all types; cooked meats and meat pâtés of all types, garlic sausage, galantines, potted meats, salamis, meat in slices, tiered cakes for buffets, salads, sandwiches, and all deli items including frozen dishes; candy and chocolate of all types".
In brief, the applicant essentially sells, under the mark that it has owned since the 1960s, various varieties of bread, pastries, deli items, desserts and sandwiches. Under the marks registered more recently, the applicant sells the same types of products.
[8] On May 29, 1996, the respondent filed an application to register the trade-mark COUSINS (Application no. 813,812). As filed, the application describes the associated wares as follows:
Sandwiches, namely, submarine sandwiches; beverages, namely, carbonated beverages, coffee, milk and ice tea.
The registration of the COUSINS trade-mark describes the associated wares as follows:
Sandwiches, namely, submarine sandwiches; beverages.
[9] On October 20, 1998, the applicant filed with the Registrar a statement of opposition against the registration of the COUSINS trade-mark. The statement was based on the following grounds:
- The Mark is not registrable having regard to Subsection 2(1)(d) [TMA] because it is confusing with the Opponent’s (the applicant in this case) registered trade-mark [MAISON COUSIN & DESIGN (TMA 130,985) [May 10, 1963]] [...] in association with [the associated products] (ground of opposition #1);
- The Applicant (the respondent in this case) is not the person entitled to the registration of the Mark having regard to Subsection 16(3)(a) of the [TMA], because it is confusing with the Opponent's previously used trade-mark [MAISON COUSIN & DESIGN (TMA 130,985) [May 10, 1963]], [...] in association with the Opponent's Products and with the trade-mark [MAISON COUSIN 1921 & DESIGN (TMA 523,147) [February 15, 2000]], [...] used since at least as early as May 1987 in association with [the associated products] (ground of opposition #2);
- The Applicant's alleged Mark is not distinctive of the Applicant's Wares and Services and has not been adapted to distinguish the Applicant's Wares and Services from the wares of the Opponent. The Opponent has used its [MAISON COUSIN & DESIGN (TMA 130,985) [May 10, 1963]] and [MAISON COUSIN 1921 & DESIGN (TMA 523,147) [February 15, 2000]] marks as trade-marks in Canada for several years in association with the Opponent's Products [...] (ground of opposition #3).
DECISION UNDER APPEAL
[10] On January 4, 2005, the Registrar decided to deny registration of the COUSINS mark only insofar as "sandwiches, namely, submarine sandwiches" were concerned and to reject the opposition with respect to the other wares. The Registrar noted at the outset that in making his decision, he had only taken into consideration the MAISON COUSIN & DESIGN mark (TMA 130,985) [May 10, 1963], since the Applicant had made no reference to the MAISON COUSIN 1921 & DESIGN mark (TMA 523,147) [February 15, 2000] in its grounds of opposition, nor had it felt the need to seek leave to file an amendment to its statement of opposition.
[11] The Registrar noted first, citing several of the exhibits in the docket, that the evidence of use of those two trade-marks was limited and not particularly convincing, finding no evidence of the length of time they had been in use or the extent to which they had become known. The Registrar then reviewed each of the criteria set out in subsection 6(5) TMA in order to determine whether the trade-marks MAISON COUSIN & DESIGN (TMA 130,985) [May 10, 1963] and MAISON COUSIN 1921 & DESIGN (TMA 523,147) [February 15, 2000] are confusing with the applied-for mark.
[12] The Registrar determined the applicable burden of proof, stating that the initial evidential burden was on the Opponent (the applicant), but that the burden then shifted to the Applicant (the respondent), who had to prove that the grounds of opposition should not prevent registration of the mark.
[13] The Registrar then found that the material dates were as follows:
- For considering the issue of non-entitlement [subsection 16(3) TMA] (ground of opposition #2): the filing date of the application (May 29, 1996);
- For assessing the issue of distinctiveness [section 2 and paragraph 38(2)(d)] (ground of opposition #3): the filing date of the statement of opposition (October 20, 1998)
- For the issue of registrability (12(1)(d) TMA) (ground of opposition #1): the date of the Registrar's decision (January 4, 2005)
The Registrar added that these dates were not a factor in his decision.
[14] The Registrar then reviewed, in light of the jurisprudence, each of the criteria set out in subsection 6(5) TMA to determine whether the trade-marks MAISON COUSIN & DESIGN (TMA 130,985) [May 10, 1963] and MAISON COUSIN 1921 & DESIGN (TMA 523,147) [February 15, 2000] were confusing with the applied-for mark (COUSINS (no. 813812)). The relevant subsection of the TMA reads as follows:
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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 |
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 : |
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(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; |
a) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus; |
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(b) the length of time the trade-marks or trade-names have been in use; |
b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage; |
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(c) the nature of the wares, services or business; |
c) le genre de marchandises, services ou entreprises; |
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(d) the nature of the trade; and |
d) la nature du commerce; |
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(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them. |
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. |
[15] The Registrar found that the factor in paragraph (a) favoured the Opponent insofar as the MAISON COUSIN 1921 & DESIGN mark (TMA 523,147) [February 15, 2000] was concerned. However, he found that there was insufficient evidence to reach the same conclusion with respect to the MAISON COUSIN & DESIGN mark (TMA 130,985) [May 10, 1963].
[16] Analyzing the factor in paragraph (b), the Registrar wrote the following:
There is no evidence of use of the Mark in Canada by the Applicant while there is some limited evidence of use of the COUSIN1921 DESIGN [MAISON COUSIN 1921 & DESIGN (TMA 523,147) [February 15, 2000]] in association with bread. This factor does favour the Opponent.
[17] The Registrar then turned to the factors in paragraphs (c) and (d). He noted that there was "an overlap between submarine sandwiches on one hand and sandwiches on the other hand. There is also an overlap between submarine sandwiches and bread." As for the channels of trade, the Registrar noted that the respondent's submarine sandwiches could eventually be sold in the same places as the applicant's. He also found, on the issue of non-registrability, (subsection 16(3)), that there was no evidence of use of the MAISON COUSIN & DESIGN mark (TMA 130,985) [May 10, 1963] and that he was therefore not obliged to consider whether the products sold under that mark were likely to cause confusion.
[18] The Registrar then addressed the caselaw applicable to paragraph (e) and assessed each trade-mark on the basis of its appearance, sound, and the ideas suggested by it. His findings on that point favoured neither party.
[19] As for the other factors (the list in subsection 6(5) TMA is not exhaustive), the Registrar was not prepared to consider the fact that no instances of confusion had been raised in the United States, given the absence of evidence of use of the trade-marks MAISON COUSIN & DESIGN (TMA 130,985) [May 10, 1963] and MAISON COUSIN 1921 & DESIGN (TMA 523,147) [February 15, 2000]. He also declined to consider the use of the words MAISON COUSIN on the grounds that it would amount to allowing the Opponent to do indirectly what it was not allowed to do directly, given that it had not amended its opposition statement as it had been entitled to do.
[20] Having reviewed the evidence before him, the Registrar dismissed grounds of opposition #2 and #3, noting that the Opponent (the applicant in this case) had not discharged its initial burden of proof. As for ground of opposition #1, the Registrar found that the burden of proof that was initially on the Opponent had been reversed, and that the Applicant had not reversed it burden with respect to the registration of its mark (COUSINS (no. 813812)) in the case of the sandwiches, namely the submarine sandwiches. The Registrar therefore dismissed the opposition insofar as the other wares and services were concerned.
ANALYSIS
1. Standard of review
[21] The Federal Court of Appeal set out the standard of review for decisions of the Registrar in Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145; [2000] F.C.J. No. 159 (F.C.A.). Rothstein J.A. summarizes the principles governing the standard of review at paragraph 51 of his reasons:
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.
[22] That case was followed by the Federal Court and the Federal Court of Appeal (see e.g. Novopharm Ltd. v. Bayer, (2000) 264 N.R. 384; [2000] F.C.J. No. 1864 (F.C.A.), at paragraph 4; Metro-Goldwyn Meyer Inc. v. Stargate Connections Inc., 2004 F.C. 1185, [2004] F.C.J. No. 1422 (F.C.), at paragraph 5). Normally, the appropriate standard of review for decisions of the Board is that of reasonableness simpliciter. However, when additional evidence is adduced, it is necessary to assess its significance and probative value.
[23] The approach taken by Mactavish J. in Telus Corp. v. Orange Personal Communications Services Ltd., 2005 F.C. 590; [2005] F.C.J. No. 722 (F.C.) is appropriate here. In that case, Mactavish J. was inspired by the comments of Evans J. in Garbo Group Inc. v. Harriet Brown & Co., (1999) 176 F.T.R. 80; (1999) 23 Admin. L.R. (3d) 153; [1999] F.C.J. No. 1763 (C.F.), at paragraphs 37 to 39.
As for the impact on the standard of review of the filing of additional evidence on an issue at the appeal, much will depend on the extent to which the additional evidence has a probative significance that extends beyond the material that was before the Registrar. If it adds nothing of significance, but is merely repetitive of existing evidence without enhancing its cogency, its presence should not affect the standard of review applied by the Court on the appeal.
If, on the other hand, the additional evidence goes beyond what was in substance already before the Registrar, then the Court should ask whether, in the light of that material, the Registrar reached the wrong decision on the issue to which that evidence relates and, perhaps, on the ultimate decision as well. The more substantial the additional evidence, the closer the appellate Court may come to making the finding of fact for itself.
[24] If the evidence is sufficiently significant and probative, the standard of review becomes that of correctness. Otherwise, the standard remains that of reasonableness simpliciter.
[25] The applicant submits that the affidavit of Laurent Samson, the applicant’s director of marketing, constitutes new, significant and probative evidence justifying the application of the standard of correctness, since the affidavit [translation] "tends to show that the trade-marks [MAISON COUSIN & DESIGN (TMA 130,985) [May 10, 1963], MAISON COUSIN (TMA 580,508) [May 2, 2003], MAISON COUSIN 1921 & DESIGN (TMA 523,147) [February 15, 2000], MAISON COUSIN & CIE & DESIGN (TMA 576,779) [March 3, 2003] and MAISON COUSIN & CO & DESIGN (TMA 576,780) [March 3, 2003]] of the applicant have been known and used for several years in association with bakery products and services at the relevant dates."
[26] Having examined all the new evidence, I believe that correctness is the appropriate standard to apply. The new evidence introduces 3 new trade-marks, and Mr. Samson’s affidavit provides much more substantial evidence of use of the applicant’s trade-marks than that which had been available to the Registrar.
2. Paragraph 12(1)(d) of the TMA
[27] The applicant raises several arguments against the Registrar’s conclusions concerning paragraph 12(1)(d) of the TMA. That paragraph reads as follows:
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12. (1) Subject to section 13, a trade-mark is registrable if it is not
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12. (1) Sous réserve de l’article 13, une marque de commerce est enregistrable sauf dans l’un ou l’autre des cas suivants :
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(d) confusing with a registered trade-mark;
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d) elle crée de la confusion avec une marque de commerce déposée; |
[28] First I will review each of the grounds of opposition based on this section, and then I will analyze the factors set out in the TMA.
i) The relevant marks
[29] First, it is submitted that the Registrar erred in not considering part of the evidence. More specifically, it is alleged that the Registrar contradicted himself by first refusing to consider the evidence concerning the MAISON COUSIN 1921 & DESIGN mark (TMA 523,147) [February 15, 2000] and then saying at the end of the decision that he had considered it. The passage in which the Registrar claims to have considered the two marks is the following, at page 11:
My conclusion is based on my findings discussed above with respect to the nature of the wares and the trade as well as the degree of resemblance in sound between the Mark and the word portion of the [MAISON COUSIN & DESIGN (TMA 130,985) [May 10, 1963]] and [MAISON COUSIN 1921 & DESIGN (TMA 523,147) [February 15, 2000] marks.
[30] The Registrar’s decision is indeed self-contradictory on that point. The Registrar was bound to bring up to date the grounds of opposition whose wording excluded the MAISON COUSIN 1921 & DESIGN mark (TMA 523,147) [February 15, 2000], which was registered long after the date the statement of opposition was filed. However, this strikes me as being a minor error, since in many places in the decision, it is clear that the Registrar did review the evidence related to the two marks, despite his initial statement that he would not do so. The decision, taken as a whole, convinces me that the evidence concerning the MAISON COUSIN 1921 & DESIGN mark (TMA 523,147) [February 15, 2000] was considered. The Registrar therefore only committed a small error in stating at the outset that he would disregard the evidence, since his decision demonstrates that he did indeed take it into consideration.
ii) The burden of proof
[31] The applicant also claims that the initial burden of proof had been wrongly attributed to it. It nevertheless cites in its factum the following passage from Redsand Inc. v. Dylex Ltd., 74 C.P.R. (3d) 373 (F.C.):
In an opposition proceeding, prior to considering the specific grounds of opposition, the opponent to registration, in this case the appellant, is under an initial evidentiary burden to adduce evidence from which it may reasonably be concluded that the facts alleged to support the grounds of opposition exist.
[32] According to that passage, the Opponent has the initial burden of proof. This is exactly what the Registrar writes in his decision at page 6:
The legal burden is upon the Applicant to show that its application complies with the provisions of Section 30 of the Act, but there is however an initial evidential burden on the Opponent to establish the facts relied upon by it in support of such grounds of opposition. Once this initial burden is met, it shifts to the Applicant who must prove that the particular grounds of opposition should not prevent registration of the Mark.
[33] The Registrar and the applicant therefore agree about the burden of proof: an initial burden of proof lies with the Opponent (to establish the facts relied upon), but they also agree that the real burden of proof is on the person applying for the registration of a mark. In my opinion, there is no basis for having two burdens of proof. There is only one burden of proof, and it lies with the person applying for the registration of a mark. The caselaw on this point absolutely confirms this. In Miss Universe Inc. v. Bonha, [1995] 1 F.C. 614, at paragraph 14 (F.C.A.), Décary J.A. writes:
The onus is always upon an applicant for the registration of a trade-mark to establish that, on the balance of probabilities, there is no likelihood of confusion with a previously used and registered trade-mark.
[34] That does not mean that the Opponent just sits back and waits for the applicant for the registration of a trade-mark to supply the evidence. The Opponent must also present evidence to help the Registrar make a determination about each of the factors set out in subsection 6(5) TMA: that is the ultimate goal of an opposition procedure based on confusion. The Registrar is entitled to draw conclusions in the absence of evidence of the use of a mark or of the length of time of such use. In this case, regarding ground of opposition #1, the Registrar found that the Opponent had met its initial burden of proof and had succeeded in reversing the burden, which meant that it was now up to the Applicant to prove that "there is no reasonable likelihood of confusion". With respect to submarines, the Registrar found that the Applicant had not provided sufficient evidence to meet its burden of proof, which shows that the burden of proof was correctly applied for that ground of opposition. It is true that he should have avoided using the term "burden" to describe the opponent’s obligation to present evidence and should have stuck to weighing the respective evidence of each party. However, that was only a minor error, given that in the impugned decision, the Registrar was guided by subsection 6(5) TMA when he compared the marks at issue, having considered all the evidence.
iii) The relevant evidence
[35] The applicant also alleges that the Registrar erred in evaluating the evidence before him, on the basis that several exhibits demonstrating the use of the trade-marks MAISON COUSIN & DESIGN (TMA 130,985) [May 10, 1963] and MAISON COUSIN 1921 & DESIGN (TMA 523,147) [February 15, 2000] had not been taken into consideration. The TMA defines use of a trade-mark as follows:
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2.
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2.
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"use", in relation to a trade-mark, means any use that by section 4 is deemed to be a use in association with wares or services
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« emploi » ou « usage » À l’égard d’une marque de commerce, tout emploi qui, selon l’article 4, est réputé un emploi en liaison avec des marchandises ou services.
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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. |
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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(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
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(2) Une marque de commerce est réputée employée en liaison avec des services si elle est employée ou montrée dans l’exécution ou l’annonce de ces services.
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(3) A trade-mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares.
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(3) Une marque de commerce mise au Canada sur des marchandises ou sur les colis qui les contiennent est réputée, quand ces marchandises sont exportées du Canada, être employée dans ce pays en liaison avec ces marchandises. |
[36] Accordingly, to be considered by the Registrar, the Opponent’s evidence had to satisfy those criteria on the relevant date. That date, as regards ground of opposition #1, is the date of registration or of refusal of registration, in this case January 4, 2005. So wrote Desjardins J.A. in Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd., [1991] F.C.J. No. 546:
In an opposition to registrability, the view adopted by Heald J.A. in Oshawa appears to me to be the most logical one. I find no fallacy in the possibility of an update of the situation by the parties when the issue is whether statutory recognition should be given to a mark. It is important, it would seem to me, that the decision of the Registrar or the court be taken on an accurate state of the record. Registrability should be decided at the date of registration or at the date of refusal of registration.
[37] The applicant refers to ample evidence available to the Registrar demonstrating the use of the mark prior to the relevant date. It claims that the Registrar did not take it into consideration. In my opinion, the Registrar did consider it but deliberately chose not to attribute much weight to it. At page 4, he writes:
The only exhibits that bear the [MAISON COUSIN & DESIGN mark (TMA 130,985) [May 10, 1963]] are copies of two different letterheads. There are however minor differences between the design appearing on each letterhead and the [MAISON COUSIN & DESIGN mark (TMA 130,985) [May 10, 1963]]. In any event, trade-marks appearing on letterhead do not constitute prior use of a registered trade-mark in association with wares. There has been no packaging or labels bearing the [MAISON COUSIN & DESIGN mark (TMA 130,985) [May 10, 1963]] mark filed in the record. As such I have no evidence of use of the [MAISON COUSIN & DESIGN mark (TMA 130,985) [May 10, 1963]] in association with any of the Opponent’s Products.
Exhibit MD-5 consists of samples of packaging of various types of bread. Two of them, "two cheeses bread" and "Raisin bread" bear the MAISON COUSIN 1921 & DESIGN mark (TMA 523,147) [February 15, 2000]. . The other samples bear either the circle design feature of the MAISON COUSIN 1921 & DESIGN mark (TMA 523,147) [February 15, 2000], or the stylized inscription of MAISON COUSIN appearing on the MAISON COUSIN 1921 & DESIGN trade-mark (TMA 523,147) [February 15, 2000], which use of these modified versions of the Opponent’s trade-marks have not been alleged by the Opponent in support of its grounds of opposition. We have no information as to during which period of time the pertinent samples were used in Canada and to what extent.
Samples of advertising material were filed as Exhibit MD-4. This material is of little assistance to the Opponent as no date of use of such material was provided and the marks appearing on them are, in most instances, different than the [MAISON COUSIN & DESIGN (TMA 130,985) [May 10, 1963]] and the MAISON COUSIN 1921 & DESIGN (TMA 523,147) [February 15, 2000] trade-marks.
This excerpt shows that the whole of the evidence dated prior to January 4, 2005, was considered. The Registrar therefore committed no error on this point.
iv) Detailed analysis of the factors in subsection 6(5) TMA
[38] Under subsection 6(5) TMA, a likelihood of confusion is sufficient to prevent the registration of a mark (Pink Panther Beauty Corp., [1998] 3 F.C. 534; [1998] F.C.J. No. 441 (F.C.A.)). The existence of a likelihood of confusion is a matter of first impression. The factors in subsection 6(5) are used to guide the judge in his or her analysis. In Miss Universe Inc. v. Bohna, [1995] 1 F.C. 614; [1994] F.C.J. No. 1642 (F.C.A.), Décary J.A. explained how the likelihood of confusion between trade-marks should be evaluated:
To decide whether the use of a trade-mark or of a trade-name causes confusion with another trade-mark or another trade-name, the Court must ask itself whether, as a matter of first impression on the minds of an ordinary person having a vague recollection of that other mark or name, the use of both marks or names in the same area in the same manner is likely to lead to the inference that the services associated with those marks or names are performed by the same person, whether or not the services are of the same general class.
In determining whether there is a likelihood of confusion, the Court shall have regard to all the surrounding circumstances, including those described in subsection 6(5) above.
[39] The distinctiveness of a mark may be inherent or acquired. The inherent distinctiveness of a mark refers to its originality. Thus, a mark that is composed of a unique or invented name, such that it can only refer to one thing, will possess more inherent distinctiveness than a word that is commonly used in the trade (ITV Technologies, Inc. v. WIC Television Ltd., 2003 F.C. 1056; [2003] F.C.A. No. 1335 (F.C.), at paragraph 119). A mark that is only descriptive of the wares will be afforded less protection (Pink Panther Beauty, supra, at paragraph 23). In this case, the marks of both the applicant and the respondent have inherent distinctiveness. It is true that all of the marks use the word COUSIN. However, the applied-for mark is distinct in that it is shorter and is not preceded by the word MAISON. Acquired distinctiveness (the extent to which the mark has become known) refers to the mark’s reputation. Evidence of the strength of a mark can be the basis for according greater protection to that mark (Miss Universe Inc. v. Bonha, supra, at paragraphs 12 and 13). The evidence provided by the applicant of the reputation of its marks is insufficient to justify extensive protection.
[40] The length of time the respective marks have been in use clearly favours the applicant. According to Mr. Samson’s uncontradicted affidavit, the trade-marks MAISON COUSIN & DESIGN (TMA 130,985) [May 10, 1963] and MAISON COUSIN 1921 & DESIGN (TMA 523,147) [February 15, 2000] have been used and attached to the applicant’s products since their registration date. As for the respondent’s mark, it has only been registered in the United States since August 18, 1981. This factor therefore favours the applicant.
[41] The applicant challenges the Registrar’s conclusions concerning the factors set out in paragraphs 6(5)(c) and (d). It claims that
[translation]
the Registrar’s finding does not protect consumers from the confusion that could arise with respect to the source of the wares [other than the submarine sandwiches], and that such a finding does not take the realities of the marketplace into consideration, in the sense that the Applicant and the respondent Cousins Submarines both offer a range of food products.
My analysis is different from that of the applicant. With the exception of the submarine sandwiches, the types of products offered by the applicant and the respondent are different. The fact that the wares sold by each company are essentially very different reduces the risk of confusion. In Tradition Fine Foods Ltd. v. Oshawa Group Ltd. [2004] F.C.J. No. 1244, aff’d 2005 FCA 342, O’Reilly J. of this Court had before him facts similar to the facts in this case. That case involved an application based on several provisions of the TMA, including the issue of confusion under section 20 TMA. The applicant operated several bakeries, while the respondent operated grocery stores that sold, among other products, baked goods. Analyzing the factors set out in the TMA, the judge writes the following at paragraph 40:
The plaintiff's business is specialized. Its wares are confined to bakery products: muffins, croissants, danishes, cookies and cakes. The defendants' business is general. They do sell some bakery products, including goods baked on the premises of their 28 stores, but their wares extend to all of the food products and merchandise one would expect to find in a modern grocery store, sold under a myriad of brand names. In my view, the differences in their wares reduces the likelihood of confusion.
In my opinion, these facts resemble the facts in this case, in the sense that O’Reilly J. was able to make a clear distinction between the types of food products sold by the parties, even though the products sold by one were included in the products sold by the other. That reasoning is applicable here. The fact that the general types of food products sold by the parties are different reduces the risk of confusion. Having received, on the one hand, the description of the products sold under the applicant’s trade-marks and the relevant evidence, and on the other hand, the description of the proposed use of the COUSINS mark by the respondent, I conclude that the types of wares sold are, with the exception of the submarine sandwiches, completely different. This factor therefore favours the respondent.
[42] The same goes for the nature of the trade. The products are not sold in the same type of establishment. In the case of the applicant’s products, they are sold in convenience stores and grocery stores, as can be seen by the photographs of the points of sale in support of Mr. Samson’s affidavit. The same affidavit states that [translation] "Maison Cousin has opened, over the years, stores in Montréal and the surrounding area under the banner of Maison cousin, specifically in downtown Montréal, Square Victoria, Square Westmount and in the Rockland Shopping Centre." The applicant’s products are therefore sold in convenience stores, grocery stores and "shops" ["magasins" in the French version], while the respondent’s products are sold in restaurants. This factor favours the respondent, because the fact that the nature of the trade and the points of sale are not of the same types reduces the risk of confusion.
[43] The degree of resemblance between the marks at issue also seems to me, although to a lesser extent, to favour the respondent. Visually, the applicant’s marks are composed of several words, while the applicant’s mark is composed of only a single word. The sound is also different, for the same reason.
[44] Finally, because the list of factors in subsection 6(5) is not exhaustive, I may consider other factors. The logos of each mark are very different, which I believe reduces the risk of confusion even further.
[45] Having considered all of the factors while bearing in mind the appropriate standard of review and burden of proof, I find that there is no cause to review the Registrar’s conclusion. Even though some factors favour the applicant, the first-impression test and the factors analyzed as a whole are more favourable to the respondent. The Federal Court of Appeal recently reiterated, in Tradition Fine Foods Ltd. v. Oshawa Group Ltd. [2004] F.C.J. No. 1244, at paragraph 10, that the issue of confusion, in general, can be stated in the following terms:
The parties agreed at trial that to find confusion the court must answer the following question affirmatively; "If both trade-marks were used in the same area, would the average consumer likely infer that the wares of the two vendors actually have the same source?" This same question has been commonly used in trade-mark cases. (See British Drug Houses Ltd. v. Battle Pharmaceuticals, (1944), 4 CPR 48 (Ex. Ct.); Miss Universe, Inc. v. Bohna, (1994), 58 C.P.R. (3d) 381 (F.C.A.); and Polo Ralph Lauren Corp. v. United States Polo Association et al., (2000), 9 C.P.R. (4th ) 51 (F.C.A.).)
In my opinion, the average consumer is unlikely to believe that the products connected with the applicant’s trade-marks come from the same source as the respondent’s products. That is the substantive question, and the Registrar answered it correctly. It is true that the burden of proof lay with the respondent, and that the latter did not appear. Nevertheless, the evidence available to the Registrar was sufficient to come to this conclusion, even if the new evidence is taken into account.
2. Subsection 16(3) of the TMA
[46] The applicant claims that the Registrar erred in applying subsection 16(3) TMA (ground of opposition #2). That paragraph reads as follows:
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16. (3) Any applicant who has filed an application in accordance with section 30 for registration of a proposed trade-mark that is registrable is entitled, subject to sections 38 and 40, to secure its registration in respect of the wares or services specified in the application, unless at the date of filing of the application it was confusing with |
16. (3) Tout requérant qui a produit une demande selon l’article 30 en vue de l’enregistrement d’une marque de commerce projetée et enregistrable, a droit, sous réserve des articles 38 et 40, d’en obtenir l’enregistrement à l’égard des marchandises ou services spécifiés dans la demande, à moins que, à la date de production de la demande, elle n’ait créé de la confusion : |
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(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person; |
a) soit avec une marque de commerce antérieurement employée ou révélée au Canada par une autre personne; |
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(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or |
b) soit avec une marque de commerce à l’égard de laquelle une demande d’enregistrement a été antérieurement produite au Canada par une autre personne; |
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(c) a trade-name that had been previously used in Canada by any other person.
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c) soit avec un nom commercial antérieurement employé au Canada par une autre personne. |
[47] For the above-mentioned reasons, there is no risk of confusion between the applicant’s marks, taking into consideration all the evidence at the date of the Registrar’s decision, except with respect to submarine sandwiches. There is no error in the Registrar’s reasons on that point, since on the date the application was filed, the evidence was essentially the same. In essence, the wares are different, the points of sale are different, the sound of the marks is different and the logos used do not resemble each other. The average consumer would therefore not be fooled, regardless of the date considered.
[48] The applicant raised the fact that the Registrar committed minor errors in the description and weighing of the evidence. However, those errors are not so serious as to call into question the overall weight that the Registrar assigned to the evidence.
3. Section 2 and paragraph 38(2)(d) TMA
[49] The applicant submits that the Registrar erred in his interpretation of section 2 TMA. The Registrar’s decision on ground of opposition #3 is therefore challenged. Section 2 TMA reads as follows:
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2.
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2.
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[...]
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[...]
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"distinctive", in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them;
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« distinctive » Relativement à une marque de commerce, celle qui distingue véritablement les marchandises ou services en liaison avec lesquels elle est employée par son propriétaire, des marchandises ou services d’autres propriétaires, ou qui est adaptée à les distinguer ainsi.
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[...]
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[...] |
[50] In Havana House Cigar & Tobacco Merchants Ltd. v. Skyway Cigar Store, (1998) 147 F.T.R. 54; [1998] F.C.J. No. 678 (F.C.), rev’d for other reasons by (1999) 251 N.R. 215; [1999] F.C.J. No. 1749 (F.C.A), Teitelbaum J. wrote:
As set out in Philip Morris Inc. v. Imperial Tobacco Ltd. (1985), 7 C.P.R. (3d) 254 (F.C.T.D.), aff'd (1987), 17 C.P.R. (3d) 237 (F.C.A.), aff'd (1987), 17 C.P.R. (3d) 287 (F.C.A.), three conditions must be met to prove distinctiveness (at page 270 (F.C.T.D.)):
(1) that a mark and a product (or ware) be associated; (2) that the "owner" uses this association between the mark and his product and is manufacturing and selling his product; and, (3) that this association enables the owner of the mark to distinguish his product from that of others.
The question of distinctiveness is a question of fact with the test being whether a clear message has been given to the public that the wares with which the trademark is associated and used are the wares of the trade-mark owner and not those of another party.
[51] In this case, the COUSINS mark is associated with the applicant’s products or wares. Also, the owner uses the association, manufactures and sells the product, and that association enables the owner to distinguish his product from that of other manufacturer. The comments made on this point on the issue of confusion are partly applicable here, since the issues of confusion and distinctiveness are similar; in both cases, it is the perceived or apparent source of the products that is at issue.
[52] In this case, the respondent has made it clear to the public that the wares with which its trade-mark is associated are its own and not those of somebody else. For the reasons described above, the fact that the Registrar erred in imposing a "burden" on the shoulders of the applicant is but a minor error.
CONCLUSIONS
[53] Having considered all of the new evidence and the evidence available to the Registrar, I find that despite a few minor errors in the decision, there is no reason to allow this appeal. On the whole, the Registrar took the correct approach, and his findings should not be disturbed.
ORDER
THIS COURT ORDERS that:
- The appeal be dismissed.
"Simon Noël"
Judge
Certified true translation
Francie Gow
FEDERAL COURT
SOLICITORS OF RECORD
STYLE OF CAUSE:
MAISON COUSIN (1980) INC.
Applicant
and
COUSINS SUBMARINES INC.
REGISTRAR OF TRADE-MARKS
Respondent
PLACE OF HEARING: Montréal
DATE OF HEARING: December 14, 2005
REASONS FOR JUDGMENT: The Honourable Mr. Justice Simon Noël
APPEARANCES:
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Benoît Huart |
FOR THE APPLICANT
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FOR THE RESPONDENT |
SOLICITORS OF RECORD:
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Stikeman Elliott LLP - Montréal Bruno Barrette Benoît Huart |
FOR THE APPLICANT |
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FOR THE RESPONDENT
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