Federal Court of Appeal Decisions

Date: 20071119

Docket: A-596-06

Citation: 2007 FCA 367

 

CORAM:       RICHARD C.J.

                        NADON J.A.             

                        PELLETIER J.A.

 

BETWEEN:

ACCESSOIRES D'AUTOS NORDIQUES INC.

Appellant

and

CANADIAN TIRE CORP.

Respondent

 

 

 

Heard at Ottawa, Ontario, on October 31, 2007.

Judgment delivered at Ottawa, Ontario, on November 19, 2007.

 

REASONS FOR JUDGMENT BY:                                                                            RICHARD C.J.

CONCURRED IN BY:                                                                                                  NADON J.A.

                                                                                                                                PELLETIER J.A.

Date: 20071119

Docket: A-596-06

Citation: 2007 FCA 367

 

CORAM:       RICHARD C.J.

                        NADON J.A.             

                        PELLETIER J.A.

 

BETWEEN:

ACCESSOIRES D'AUTOS NORDIQUES INC.

Appellant

and

CANADIAN TIRE CORP.

Respondent

 

 

REASONS FOR JUDGMENT

RICHARD C.J.

[1]               It may not surprise hockey fans that Quebec City’s former National Hockey League team, the Quebec Nordiques, continues to attract the nostalgia of this city’s population, as is shown by a survey produced in evidence in the trade-mark dispute before this court.

 

[2]               This is an appeal of a decision made by Justice Pierre Blais of the Federal Court (Canadian Tire Corp. v. Accessoires d’Autos Nordiques Inc., [2006] F.C.J. 1801, 2006 FC 1431) allowing an appeal by the Respondent, Canadian Tire Corporation, under section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 (The “Act”).

[3]               The judgment set aside a decision made by the Trade-marks Opposition Board acting by the delegated authority of the Registrar of Trade-marks (“Registrar”) on April 12, 2005 which refused Canadian Tire’s trade mark application number 860,710 seeking registration of the trade-mark NORDIC & Snowflake Design.

 

[4]               The Appellant, Accessoires d’Autos Nordiques Inc. (“Nordiques”), is appealing the decision of the Federal Court that the Respondent’s trade-mark does not constitute ‘confusion’ by virtue of section 6(5) of the Trade-Mark Act. 

 

[5]               The trade-marks in issue are as follows;

a)      The registered trade-mark NORDIQUES, Registration No. TMA367,415 is owned by the Appellant Accessoires d’Autos Nordiques Inc. for use with automobile parts and accessories; and

 

 

 

 

b)      The registration of the trade-mark NORDIC & Snowflake Design, application NO. 860, 710, for use with tires, is being sought by Canadian Tire Corporation, Limited, the Respondent.

 

 

Relevant Facts

[6]               The Appellant, Accessoires d’Autos Nordiques Inc., is the owner of the registered trade-mark NORDIQUES, Registration NO. TMA367,415, for use with automobile parts and accessories, as well as the trade-mark NORDIQUES and N Design and the trade name Accessoires d’Autos Nordiques Inc.

 

[7]               On November 6, 1997, Canadian Tire filed an application, based on proposed use, to register the trade-mark NORDIC for use with tires.

 

[8]               On April 19, 2000, Canadian Tire’s NORDIC mark was advertised in the Trade-Marks Journal for opposition purposes. Nordiques opposed the application on the basis of its previously registered and previously used NORDIQUES marks and trade-name.

 

[9]               The principal question before the Registrar was whether there was a likelihood of confusion between the registered mark NORDIQUES and NORDIC, when both are used in association with automobile parts and accessories, as well as tires. The Appellant was successful before the Registrar.

 

[10]           The Registrar made the following findings: (a) that Canadian Tire did not prove, on a balance of probabilities, that there is no likelihood of confusion between the two trade-marks when used in association with automobile parts and accessories; (b) both trade-marks have a commonality of ideas because both suggest that the wares are meant to be used during winter; (c)

 

they are phonetically identical to a monolingual French speaking person; (d) there is overlap between some of the wares covered by the NORDIQUES’ certificate of registration and the wares listed in the NORDIC application; (e) the nature of both parties’ business is similar; and (f) the NORDIC mark is not distinctive within the meaning of s. 2 of the Trade-marks Act.

 

[11]           Central to the Registrar’s determination was his refusal to accept Canadian Tire’s argument that the trade-mark NORDIC evoked the name of the now-defunct National Hockey League team, Quebec Nordiques, and not the tire-concessionaire’s trade-mark NORDIQUES.

 

[12]           On the ground that both NORDIC and NORDIQUES are phonetically identical to a monolingual French speaking person, the Registrar determined that NORDIC, Canadian Tire’s trade-mark, could be confused with NORDIQUES, Accessoires d’Autos Nordiques’ trade-mark.

 

[13]           Canadian Tire appealed this decision to the Federal Court and filed additional evidence in the form of 14 affidavits.

 

[14]           Blais J. labelled subsection 6(5)(e) of the Trade-marks Act, which concerns the degree of resemblance between the Trade-marks in appearance, sound or ideas suggested, the “crucial factor” in this case (Canadian Tire Corp. v. Accessoires d’Autos Nordiques Inc., [2006] F.C.J. No. 1801, 2006 FC 1431, paras. 32-35).

 

[15]           In his review of the possibility of confusion between the trade-marks according to section 6(2) of the Trade-Mark Act, Blais J. agreed with the conclusions of the Registrar on almost all of the criteria of section 6(5) but did not agree with the Registrar’s conclusions with regard to 6(5)(e) of the Act.

 

[16]           The Registrar’s decision was based on the finding that the dominant portion of the Respondent’s mark was the word NORDIC and the sound it made when spoken. However, Blais J. concluded that when considering the possibility of confusion between two trade-marks, each particular trade-mark must be considered as a whole and not broken into their component parts to highlight differences.

 

[17]           He then referred to the Corbin, Laurendeau and Pierce affidavits in the context of 6(5)(e) of the Trade-marks Act and, relying on this new and additional evidence, determined that the trade-marks were very different in appearance, evoked different ideas and that there had been no instance of confusion.

 

[18]           The Corbin survey/affidavits established that the Quebec area where the Appellant’s enterprise was located, the trade-mark NORDIQUES overwhelmingly evoked images of the hockey team, the Quebec Nordiques, and not the Appellant’s trade-mark.

 

 

 

[19]           Blais J. found that the two marks in question were not only dissimilar in appearance but also bring to mind different ideas, which would likely limit the possibility of confusion on the part of consumers. He concluded:

When I weigh all of the elements against the similarity in the pronunciation of the two trade-marks in French and the similarity in the nature of the trades, I find that, on a balance of probabilities, registration of the proposed trade-mark is unlikely to create confusion (para. 45)

 

[20]           In reviewing the Registrar’s finding on this particular issue on a standard of correctness, Blais J. found that the Registrar’s findings were incorrect.

 

Analysis

[21]           Subsection 12(1) (d) of the Act prohibits the registration of a trade-mark if it is confusing with an existing registered trade-mark. Subsection 6(5) of the Act sets out the elements that should be considered by the Registrar in determining whether confusion might arise from the registration:

 

[22]           The applicable standard of proof in a trade-mark opposition is that of a balance of probabilities. In other words, the Registrar has to be reasonably satisfied that, on a balance of probabilities, it is improbable that the registration of the trade-mark will create confusion. In Christian Dior, S.A. v. Dion, Neckwear Ltd., [2002] 3 F.C. 405, (2002), 216 D.L.R. (4^th) 451 (F.C.A.) (“Christian Dior”), the Federal Court of Appeal adopted the Federal Court’s Justice Marceau’s formulation in Playboy Enterprises Inc. v. Germain (1978), 39 C.P.R. (2d) 32 (F.C.T.D.) at para. 38, aff. (1979), 43 C.P.R. (2d) 271 (F.C.A.);

12     The most accurate formulation of the test seems to me to be the one suggested by Marceau J. (as he then was) in Playboy Enterprise Inc. v. Germain […]:       

 

The question whether a mark is likely to be confusing with another mark in the minds of the public and within the meaning of the law, is a question of fact, or more precisely a question of opinion as to probabilities based on the surrounding circumstances and the particular facts of the case.

 

(Christian Dior, para. 12)

 

 

[23]           In considering the possibility of confusion, the trade-marks in question must be considered as a whole. This was stated in British Drug Houses Ltd. v. Battle Pharmaceuticals, [1944] Ex. C.R. 239, at p. 251, affirmed [1946] S.C.R. 50:

It is, I think, firmly established that, when trade marks consist of a combination of elements, it is not a proper approach to the determination of whether they are similar to break them up onto their elements, concentrate attention upon the elements that are different and conclude that, because there are differences in such elements, the marks as a whole are different. Trade Marks may be similar when looked at in their totality even if differences may appear in some of the elements when viewed separately. It is the combination of the elements that constitutes the trade mark and gives distinctiveness to it, and it is the effect of the trade mark as a whole, rather than of any participate part in it, that must be considered (the emphasis is ours) (British Drug Houses, p. 251).

 

[24]           The Federal Court in the case of United States Polo Assn. v. Polo Ralph Lauren Corp. (2000) 9 C.P.R. (4^th) 51, (2000) 215 F.T.R. 160, aff’d [2000] F.C.J. No. 1472 (C.A.) (“United States Polo Assn.”), stated that the “the trade-marks at issue must be considered in their totality” (United States Polo Assn., para. 18, citing United Artists Corp. v. Pink Panther Beauty Corp. [1998] 3 F.C. 534 (F.C.A.). para. 34) and that “the enumerated factors in subsection 6(5) need not be attributed equal weight. Each particular case of confusion might justify greater emphasis being given to one criterion than to others” (United States Polo Assn., para. 18, citing Pink Panther, ibid. para. 38.).

 

[25]           The Supreme Court of Canada has indicated that in the “all surrounding circumstances test”, all of the elements stated in subsection 6(5)(e) must be considered. However the list is not exhaustive. (Mattel Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 772, 49 C.P.R. (4^th) 321 (S.C.C.), paras. 51 and 54).

 

[26]           The standard of review to be applied by appellate courts to findings of fact and inferences of fact is that of palpable and overriding error. Justice Bastarache, at paragraph 15 of Van de Perre v. Edwards, [2001] 2 S.C.R. 1014, defined a palpable and overriding error as one "that gives rise to the reasoned belief that the trial judge must have forgotten, ignored or misconceived the evidence in a way that affected his conclusion." The standard of correctness is applied to pure questions of law or questions of mixed fact and law where the error is related to the characterization of the legal standard to be applied (Housen v. Nikolaisen (2002), 211 D.L.R., (4^th) (S.C.C.), paras. 10, 25, 28, 32-33, Elders Grain Co. v. M/V Ralph Misener (The),[2005] F.C.J. No. 612, 2005 FCA 139, para.11-12).

 

[27]           The question of whether Blais J. applied the proper standard of review to the decision of the Registrar is a question of law which is reviewable by this Court on a correctness standard (Housen v. Nikolaisen, [2002] 2 S.C.R. 235, [2002] S.C.J. No. 31, paras. 19-23, 25).

 

[28]           Blais J. stated the proper principles applicable to the review on appeal of the Registrar’s decision. On an appeal under section 56 of the Trade-marks Act, the Board’s decision is to be reviewed on the standard of reasonableness, unless additional evidence is adduced on appeal that would have materially affected that decision.

 

[29]           The law is succinctly stated in Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145. The Registrar’s decision has to be accorded some deference despite the existence of an express right of appeal provided in section 56 of the Act. Therefore, when no additional evidence is introduced before the Federal Court, the standard of review applicable to the Registrar’s decisions of fact, law or discretion is reasonableness. When such evidence is introduced, however, the standard of review is different as noted by Justice Rothstein:

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 must come to his or her own conclusion as to the correctness of the Registrar’s decision (Molson Breweries, para. 51).

 

 

 

[30]           As this Court held in Maison Cousin (1980) Inc. v. Cousins Submarines Inc., 2006 FCA 409, [2006] F.C.J. No. 1968, where new evidence, which is material to the final decision is filed, the Federal Court is not limited to finding an error in the decision under review. The Court is entitled to draw its own conclusions on the basis of the record before it, which includes the evidence before the Registrar as well as the new evidence. In that context, the Court is obviously called to make the correct decision, but it is not reviewing the decision of the Registrar on the standard of correctness.

 

[31]           In the Federal Court, new evidence pertinent to the analysis conducted under subsection 6(5)(e) of the Act was introduced by Canadian Tire in the form of the Corbin affidavit.  Further evidence was introduced by the supplementary Laurendeau, Simard and Pierce affidavits.

 

[32]           The Registrar had refused to accept Dr. Laurendeau’s conclusions with respect to the ideas suggested by the respective trade-marks, notably that the trade-mark NORDIQUE evoked the now-defunct NHL hockey team and not Accessoires d’Autos Nordique’s trade-mark. The Registrar had refused to accept this argument since “this conclusion is not supported by evidence, including survey evidence” (Registrar’s Decision, Trade-marks Opposition Board, dated April 2005).

 

[33]           In response, the Respondent commissioned a survey from Dr. Corbin to assess the extent to which the word NORDIQUES brings to mind the Nordiques hockey team. This survey demonstrates the inherent distinctiveness of the NORDIQUES trade-mark and the ideas it suggests. The results of the survey showed that “[a]s a matter of first impression, 80 % of Quebec purchasers of auto-parts or tools think of hockey when seeing the word NORDIQUES. […] As a matter of first and second impression combined, 96% think of hockey or some reference to hockey” (Corbin survey, p. 490).

 

[34]           The evidence of Mr. Yves Simard, a brand expert in Quebec, demonstrated that a French-speaking consumer would understand the word NORDIQUES to mean a group of people and in particular, the former Quebec hockey team by the same name.

 

[35]           The Pierce affidavit was relevant to the issue of resemblance between the trade-marks in sound and the weight to be given to this factor. In testifying, Mr. Pierce stated that in his experience, “consumers do not order by telephone and to the extent they rely on a trade mark in the context of a purchasing decision it is the visual representation of the mark which is significant” (Pierce affidavit, p. 21). Mr. Pierce also testified that no inquiries had been received in Canadian Tire’s Quebec City stores as to whether their tires were sold by the Appellant’s business and that no incidences of confusion between the wares of either the Appellant or the Respondent wares had been reported.

 

[36]           The first Laurendeau affidavit had suggested that the word NORDIQUES evoked thoughts of, for the Quebecois, the hockey team. The Appellant had attempted to discredit Dr. Laurendeau’s findings. The additional Laurendeau affidavit suggests that the Nordiques hockey team had become an ethno-cultural stereotype and that “any observer of the ethno-cultural and ethno-linguistic reality of Quebec would corroborate the observation made […] about the close connection between the word ‘Nordiques’ and the former hockey team of Quebec City” (Laurendeau affidavit, p. 28).

[37]           This new evidence shed new light on the analysis of the element of subsection 6(5)(e) of the Act, that which pertains to the degree of resemblance between the trade-marks or trade-names in (1) appearance,  (2) sound or in  (3) the ideas suggested by them.

 

[38]           The new evidence supported Canadian Tire’s argument before the Registrar that that the word NORDIQUES, when read aloud, evoked the NORDIQUES hockey team rather than the Appellant’s NORDIQUES trade-mark.

 

[39]           In considering the new evidence in the affidavits, the judge came to the conclusion that the sound component of the trade-marks in question was not the only deciding factor and that the idea evoked by the trade-mark, as well as their appearance were also factors that should be taken into consideration (Canadian Tire Corp. v. Accessoires d’Autos Nordiques Inc., [2006] F.C.J. No. 1801, 2006 FC 1431, paras. 32-40).

 

[40]           Although the judge agreed with the majority of the conclusions drawn by the Registrar with regard to the elements of subsection 6(5) of the Act concerning confusion, new evidence led the judge to conclude that the Registrar’s application of subsection 6(5)(e) of the Act was incorrect.

 

[41]           As a result, Blais J. properly reviewed the Registrar’s decision under subsection 6(5) of the Act on a correctness standard.

 

[42]           Although surveys were once excluded from an analysis based on section 6(5) of the Act, “The more recent practice is to admit evidence of a survey of public opinion, presented through a qualified expert, provided its findings are relevant to the issues and the survey was properly designed and conducted in an impartial manner” (Mattel, supra, para. 43).

 

[43]           The Appellant did not object to the admissibility of the expert evidence at the Federal Court level. Consequently, “[a]n appeal from a evidentiary error can fail if the party appealing did not object in a timely fashion to the admission of the evidence or to an erroneous jury direction [and that it] is evident that a party identifying an evidentiary error should object in order not only to ensure the proper application of the rules of evidence, but to secure an effective right to appeal” (Paciocco, D.M. & Stuesser, L., The Law of Evidence (4d) 2005, ps. 21-22).

 

[44]           The Registrar based his decision on the fact that the Appellant’s trade-mark was phonetically similar to the Respondent’s trade-mark and did not consider any other aspect of the trade-mark (i.e. the design) in his analysis. Upon receiving additional evidence, Blais J. conducted the appropriate analysis of the issue; he considered the whole trade-mark and all of the criteria of s. 6(5). In doing so, he did not commit any reviewable error.

 

[45]           Accordingly, the appeal will be dismissed with costs.

 

 "J. Richard"

“I agree

M. Nadon J.A.”

 

“I agree

J.D. Denis Pelletier J.A.”

FEDERAL COURT OF APPEAL

 

NAMES OF COUNSEL AND SOLICITORS OF RECORD

 

 

 

DOCKET:                                                                              A-596-06

 

APPEAL FROM A JUDGMENT OF THE FEDERAL COURT DATED NOVEMBER 27, 2006 DOCKET NO T-1003-05.

 

STYLE OF CAUSE:                     ACCESSOIRES D’AUTO NORDIQUES INC.  v. CANADIAN TIRE CORPORATION, LIMITED.      

 

PLACE OF HEARING:                                                        Ottawa, Ontario

 

DATE OF HEARING:                                                          October 31, 2007

 

REASONS FOR JUDGMENT BY:                                     Richard C.J.

 

CONCURRED IN BY:                                                         Nadon J.A.

                                                                                                Pelletier J.A.

 

DATED:                                                                                 November 19, 2007

 

 

APPEARANCES:

 

Mr Bayo Odutola Ms. Céline Deschambeault	FOR THE APPELLANT
Mr. John S. McKeown	FOR THE RESPONDENT

 

SOLICITORS OF RECORD:

 

Odutola Professional Corporation	FOR THE APPELLANT
Cassels Brock & Blackwell LLP	FOR THE RESPONDENT