Date: 20040311
Docket: T-717-02
Citation: 2004 FC 361
BETWEEN:
MATTEL, INC.
Applicant
AND:
3894207 CANADA INC.
AND THE REGISTRAR OF TRADE-MARKS
Respondents
ROULEAU J.
[1] This is an appeal under subsection 56(1) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act), from the decision by the Trade-marks Opposition Board (the Registrar) dismissing the applicant's opposition to the application for registration of the trade-mark BARBIE'S & design in association with restaurants and catering services, filed by the predecessor in title of the corporate respondent (the respondent). The applicant is also asking, by way of an application for judicial review under sections 18 and 18.1 of the Federal Court Act, for an order that Mattel, Inc. be recognized retroactively as the true opponent in these proceedings.
[2] On September 14, 1993, 2858029 Canada Inc. (the corporate respondent's predecessor in title) filed application for registration No. 736,898 for the trade-mark BARBIE'S & design. This application for registration was assigned to the corporate respondent on October 18, 2001.
[3] This application for registration is based on the use of the mark BARBIE'S & design, since October 1992, in association with "restaurant services, take-out restaurant services, catering and banquet services" and was published in the August 10, 1994, issue of the Trade-marks Journal.
[4] On June 23, 1995, Mattel USA, Inc. opposed this application for registration in part on the ground that the mark described in this application for registration caused confusion with several BARBIE trade-marks registered by the applicant in association with dolls, doll accessories and other related products.
[5] In the context of these proceedings before the Federal Court, it was determined that Mattel USA, Inc. did not have any legal existence and that this statement of opposition had been mistakenly filed in the name of Mattel USA, Inc., rather than in the name of the applicant, Mattel, Inc. This explains the judicial review portion of this case.
[6] On March 5, 2002, the Registrar delivered a very well-reasoned decision in which he concluded, after analysing all of the evidence, that the respondent's BARBIE'S & design mark did not cause confusion with the opponent's BARBIE trade-mark, and therefore dismissed the opposition.
[7] In reaching this conclusion, the Registrar, after a careful and thorough analysis of the applicable principles of the caselaw involving oppositions to trade-marks, focussed on the enormous difference that exists between the nature of the applicant's wares and the nature of the respondent's business. Accordingly, at page 7 of his decision, he states:
The nature of the opponent's wares and the applicant's services are quite different. In this regard, the opponent has established that its mark is very well known, if not famous in Canada, in association with dolls and doll accessories. The opponent's target market are children and to some extent adult collectors. By contrast, the applicant is in the restaurant business and its target market are adults.
[8] The applicant submits that the Registrar erred in finding that there was no connection between the applicant's wares and the services offered by the respondent.
[9] Further, the applicant relies on a survey conducted by Mr. Thexton, a part of the new evidence presented before this Court, to argue that this survey is substantial additional evidence that pertains to a relevant question, i.e. the possibility of confusion between the two trade-marks.
[10] The salient statistics of the survey are as follows:
- For 57% of the participants, Barbie dolls came to mind when they saw the Barbie's restaurant logo.
- 36% of the participants believed that the company that manufactured Barbie dolls had something to do with the logo of Barbie's restaurant.
- 99.3% of the participants were familiar with the Barbie dolls.
[11] The respondent, on the other hand, submits that in light of the evidence presented to the Registrar, he was correct to find that the respondent had discharged its onus to establish that there was no reasonable likelihood of confusion between the BARBIE'S & design mark in association with restaurant services and Mattel, Inc.'s BARBIE mark in association with dolls, doll accessories and other related products.
[12] Moreover, the respondent claims that the Registrar would have delivered exactly the same decision if he had had to consider the additional evidence that has been submitted by the parties to the Federal Court.
[13] For the purposes of this appeal, the following provisions of the Act are particularly relevant:
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;
(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.
56(1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
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.
[14] Furthermore, subsection 6(2) of the Act indicates when a trade-mark can cause confusion. This subsection reads as follows:
6(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.
[15] The caselaw responded to this section of the Act with the first impression test and the imperfect recollection of the average consumer test. In Miss Universe Inc. v. Bohna, [1995] 1 F.C. 614, Décary J.A. explained some principles about the probability of confusion between trade-marks:
[9] 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.
[10] 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.
[11] 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.
[16] Thus, the respondent has the onus to establish on a balance of probabilities that there is no reasonable likelihood of confusion between these marks. In other words, any doubt must be interpreted in favour of the opponent in this case, Mattel Inc.
[17] All of the relevant factors listed in subsection 6(5) must be evaluated in each case and the decision must properly consider each of them. One of the key factors in this case is the striking difference between the wares. Protection must be afforded in connection with some wares or some services, because the confusion is less likely when the wares are significantly different, even when the mark is well known.
[18] The nature of the wares compared in order to determine if there may be confusion is relevant and, when the wares are significantly different, this factor must be given considerable weight. This is exactly what led the Registrar to dismiss the opposition.
[19] In effect, the respondent's restaurants are located within the province of Quebec and offer a variety of different meals such as smoked meat, mixed grill, chicken brochettes, souvlaki and grilled steaks, spare ribs, seafood, pizzas, etc., as well as wine, apéritifs, cocktails, beer and various alcoholic beverages.
[20] These restaurants cater to an adult clientele. In fact, the bar occupies a significant part of the square footage of these restaurants and there is nothing about these restaurants that is suggestive of toys, dolls or childhood.
[21] On the other hand, the applicant's BARBIE mark enjoys a very extensive worldwide reputation in association with dolls and related accessories, and obviously targets the market of 3- to 11-year-old girls. Therefore, the nature of the wares, as well as the nature of the business of both parties, could not be more different.
[22] On an appeal of a decision by the Registrar, the intervention of this Court will not be warranted unless the applicant demonstrates that the Registrar erred in law or in weighing the facts of the case. In effect, as the Registrar is a specialized tribunal with an expertise in trade-mark matters, this Court must exercise restraint. Nevertheless, when additional evidence is filed in accordance with subsection 56(5) of the Act, this Court has more latitude in dealing with the Registrar's decision. In this case, each of the parties to the appeal filed additional evidence before this Court.
[23] However, the new evidence must be sufficiently substantial to warrant a trial de novo. In other words, the new evidence must radically change the factual situation in order for the Court to have unfettered discretion to set aside the Registrar's decision.
[24] In Garbo Group Inc. v. Harriet Brown & Co., [1999] F.C.J. No. 1763, Evans J. stated:
[37] 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.
[38] 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.
[25] It is the view of this Court that the additional evidence filed before it by the applicant does not, in itself, add anything new that would warrant a review of the Registrar's decision.
[26] More particularly, it is this Court's opinion that there is no significant conclusion that can be drawn from the survey results contained in Mr. Thexton's affidavit on the issue of confusion.
[27] In effect, this survey, which was meant to analyse the risk of confusion between the trade-marks at issue, has some blatant and determinative shortcomings that undermine its relevance considerably.
[28] More specifically, no information in any form whatsoever was provided to those who responded to the survey at issue regarding the exact nature of the business and the services of the restaurant in association with which the trade-mark BARBIE'S & design was used.
[29] The fact that the respondent's restaurants are restaurants for adults (adult decor, bar section, sale of wine and various alcoholic beverages, late business hours, etc.) is essential information which absolutely should have been revealed to those who participated in the survey in order for the results of this survey to have any merit of any kind.
[30] Moreover, it seems illogical to have excluded individuals who were familiar with any of the respondent's restaurants from being eligible to participate in Mr. Thexton's survey.
[31] The applicant alleges that Mr. Thexton's choice to exclude those who were familiar with the respondent's restaurants as potential participants for the survey was based on the fact that the test for confusion is one of "first impression". This reasoning is baffling. In fact, the application of the "first impression" test does not require that the consumer be unaware of the context and the exact nature of the wares, services or business in association with which the trade-mark at issue is used. This would amount to disregarding the existence of paragraph 6(5)(c) of the Act.
[32] Quite the contrary, it is precisely the participants who were familiar with the services of the respondent's restaurant and business who would have been in the best position to enlighten us about the likelihood of confusion between the two trade-marks. In Walt Disney Productions v. Fantasyland Hotel Inc. [1994] A.J. No. 484, this is precisely what led the Alberta Queen's Bench to disregard a survey carried out, in part, on people who had never visited the defendant's establishment (a hotel), when trying to determine if there was a risk of confusion between the name of this hotel and the plaintiff's trade-mark. At paragraph 271 of his judgement, Rooke J. stated:
Furthermore, if they do not know of the Hotel they fall outside the requirement of being "prospective customers" within the test set out in the Warnink "Advocaat" case (supra). Rather, it is an ordinary person, making an uninformed guess on no information about the Hotel operated by the Defendant. I note that the Safeway case held (headnote and at 1317-8) that evidence of confusion by persons only casually acquainted with the business is entitled to little weight in determining the likelihood of confusion, and that the target universe must consist of people most likely to purchase the defendant's products - in this case, I would take it to mean people who know of the defendant's business.
[33] It is therefore fundamental to understand that such surveys, to have probative value, cannot take place in a vacuum, as was the case here. It is not sufficient to ask abstract questions without revealing the concrete context underlying the issues. Furthermore, many questions included in the survey are suggestive. As Rooke J. pointed out in Walt Disney Productions, supra, the question "should not direct the person answering the question into a field of speculation upon which that person would never have embarked had the question not been put" (paragraph 271).
[34] In short, the effect of the aforementioned deficiencies on the validity of Mr. Thexton's survey means that the survey results are completely inconsistent with the allegations of a relationship between the respective services of the applicant and the respondent. These inconsistencies are especially glaring in that the applicant was unable to present a shred of evidence of any concrete case of confusion, when the parties' marks have coexisted for a period of ten years.
[35] In effect, when these opposition proceedings began, the respondent's predecessor asked the employees of Barbie's restaurants to listen for any comments made by the customers and, where applicable, report to it any confusion with the dolls of the applicant's BARBIE mark indicated by these comments. No such comment was reported to the respondent's predecessor. Similarly, ever since the respondent became the owner of the BARBIE'S & design mark, it has also asked the employees of Barbies' restaurants to remain alert for any comment by customers that would indicate a belief in some connection with the applicant's BARBIE mark and to report it. No such remark was reported to the respondent.
[36] The survey in this case is therefore not conclusive and cannot be used to establish the existence of a real likelihood of confusion, absent any evidence of a concrete case of confusion between the two trade-marks.
[37] Moreover, it is important to point out that by limiting the pool of people surveyed to adults and thereby excluding the group targeted by its wares, i.e. 3- to 11-year-old girls, the applicant itself implicitly recognizes that confusion between the two trade-marks is implausible.
[38] The only conclusion that can be drawn from the survey described in Mr. Thexton's affidavit is that the applicant's BARBIE mark is very well known - indeed, famous - a factor that the Registrar had obviously considered in his decision.
[39] The notoriety of a mark is only one factor that must be taken into consideration. If the fame of a name could prevent any other use of this name, the fundamental concept of granting a trade-mark in association with certain wares would be rendered meaningless.
[40] It cannot be automatically presumed that there will be confusion just because the applicant's mark is famous. Under the circumstances, if we keep in mind that the test to satisfy was the likelihood of confusion (and not the possibility of confusion), the fame of the mark could not act as a marketing trump card such that the other factors are thereby obliterated. In effect, the Federal Court of Appeal stated in Pink Panther Beauty Corp. v. United Artists Corp. [1998] 3 F.C. 534:
[44] [ . . . ] The wide scope of protection afforded by the fame of the appellant's mark only becomes relevant when applying it to a connection between the applicant's and the opponent's trade and services. No matter how famous a mark is, it cannot be used to create a connection that does not exist.
In Playboy Enterprises Inc. v. Germain, [See Note 46 below] the appellant Germain wanted to register "Playboy Men's Hair Stylist" for services defined as "un salon de coiffure pour hommes." Marceau J. upheld the decision of the Registrar that this proposed mark was not confusing with the opponent's mark "Playboy", used in relation to magazines. He stated:
In dealing with these facts and the evidence as a whole, the Registrar found nothing therein that could be taken as establishing any reputation or involvement on the part of the appellant with services similar or related to those of the respondent. There was no proof whatever of any use, or making known, of the opponent's trade mark PLAYBOY in association with barbering or hairdressing services in Canada at any time prior to the applicant's adoption of his trade mark.
The fact that the opponent's mark was world-renowned could not be a factor so important as to make the differences in wares and services irrelevant.
[41] The Federal Court of Appeal reiterated this position in Toyota Jidosha Kabushiki Kaisha v. Lexus Foods Inc.[2001] 2 F.C. 15. In that case, it had to be determined if the mark "Lexus", which the applicant wanted to use in association with canned foods and canned fruit juice, caused confusion with the respondent's mark "Lexus" in association with automobiles. The Court, per Linden J.A., stated:
[9] The Trial Judge's reliance on the finding that the "Lexus" mark was either famous or becoming so led him to be overly protective of it. While the notoriety of a mark may well be a significant factor to consider, as is the length of time it has been used, factors in paragraphs 6(5)(a) and (b), it is not controlling. Famousness alone does not protect a trade-mark absolutely. It is merely a factor that must be weighed in connection with all the rest of the factors. If the fame of a name could prevent any other use of it, the fundamental concept of a trade-mark being granted in relation to certain wares would be rendered meaningless. . . . As the Court said in Pink Panther [at paragraph 53 and 44] in relation to that trade-mark:
To find that such a connection [between beauty products and movies] was sufficient in this case would effectively extend protection to every field of endeavour imaginable. There would be no area that Hollywood's marketing machine would not control. Just because they are well known, the whole world is not barred forever from using words found in the title of a Hollywood film to market unrelated goods.
. . .
No matter how famous a mark is it cannot be used to create a connection that does not exist.
[42] Elsewhere in is judgment, Linden J.A. points out:
[8] . . . In this case, automobiles are sold by automobile dealers all over the world usually in special buildings used for that purpose. The canned goods in question were sold largely to institutional purchasers in the province of Quebec. It is hard to see that anyone about to buy some of the canned fruit juice of the appellant would even entertain the thought that the Japanese automobile manufacturers of "Lexus" was the source of this product. The survey evidence to the effect that the name "Lexus" was associated by the interviewees with an automobile does not establish that there was any confusion between the two products. It merely shows that many people knew about the fine car made by the respondent.
[43] The same reasoning applies in this case; in fact, it is difficult to imagine that an individual would show up at one of the respondent's restaurants intending to buy dolls.
[44] Accordingly, the relevant question is not whether there is, in the abstract, a reasonable likelihood of confusion between the proposed mark and the existing mark, but whether there is a reasonable likelihood that the mark proposed by the applicant will prompt consumers to think that the wares in association with which the mark will be used come from the same source as those covered by the opponent's mark or that they are otherwise associated with the latter's wares.
[45] The applicant argues that there is nothing to prevent the respondent from decorating the walls of its restaurants in pink and to possibly selling dolls there and that, in short, the applicant's trade-mark should have been, at the very least, registered more restrictively.
[46] This Court cannot follow such a speculative and hypothetical approach without crossing the line into the absurd. In effect, a similar argument was dismissed by MacKay J. in Joseph E. Seagram & Sons Ltd. v. Canada (Registrar of Trade) 33 C.P.R. (3d) 454. The appellant in that case had argued that the natural tendency towards corporate diversification would lead the consumer to presume that his alcoholic beverage business was connected with the respondent's real estate business. MacKay J. dismissed this argument, stating at pages 467 and 468:
I do not agree with this proposition. In my view, consideration of future events and possibilities of diversification is [page 468] properly restricted to the potential expansion of existing operations. It should not include speculation as to diversification into entirely new ventures, involving new kinds of wares, services or businesses . . .
[47] In short, the Registrar's decision was reasonable and is worthy of this Court's deference. Furthermore, it is clear from all of the evidence analysed before this Court that there is no reasonable likelihood of confusion between the respondent's mark and that of the applicant.
[48] As mentioned above, the statement of opposition in this case was filed in the name of Mattel U.S.A., Inc. and the applicant became aware of this fact only in the context of this appeal. The applicant requests that this situation be corrected retroactively.
[49] The respondent submits that the company Mattel U.S.A., Inc. did not have sufficient interest to oppose the registration of the respondent's mark because Mattel U.S.A., Inc., is not a "person" in accordance with section 38 of the Act.
[50] Section 38 of the Trade-marks Act provides that:
38.(1) Within two months after the advertisement of an application for the registration of a trade-mark, any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar.
[51] There is no company by the name of Mattel U.S.A., Inc. In fact, at no relevant time did such a company exist, including at the time of the filing of the statement of opposition.
[52] In this case, Mattel U.S.A., Inc. clearly did not have any legal existence at any relevant time, including at the time of the filing of the opposition, and therefore could not have had the requisite interest to oppose the registration of the respondent's mark.
[53] With this in mind, this Court is of the opinion that it would be unfair to dismiss the application for judicial review on such a technical ground, as the situation was brought about by the inadvertence of all of the parties involved, including the employees working at the Opposition Board who proceeded to register the statement of opposition without noticing the problem.
[54] For these reasons, the appeal is dismissed but the application for judicial review is allowed.
[55] Costs are awarded to the respondent.
JUDGE
OTTAWA, Ontario
March 11, 2004
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-717-02
STYLE OF CAUSE:
MATTEL, INC.
Applicant
and
3894207 CANADA INC. and
THE REGISTRAR OF TRADEMARKS
Respondents
PLACE OF HEARING: Montreal, Quebec
DATE OF HEARING: January 7, 2004
REASONS FOR ORDER: MR. JUSTICE ROULEAU
DATE OF REASONS: March 11, 2004
APPEARANCES:
Dan Hitchcock FOR THE APPLICANT
Sophie Picard FOR THE RESPONDENT
SOLICITORS OF RECORD:
Riches, McKenzie, & Herbert LLP
Toronto, Ontario FOR THE APPLICANT
Desjardins Ducharme Stein Monast
Montréal, Quebec FOR THE RESPONDENT