Date: 19980622
Docket: T-748-96
OTTAWA, ONTARIO, MONDAY, this 22nd day of June, 1998
PRESENT: THE HONOURABLE JUSTICE McGILLIS
IN THE MATTER OF an Appeal pursuant to Sections
56 and 59 of the Trade-Marks Act R.S.C. 1985, c.T-13.
- and -
IN THE MATTER OF an Opposition by The Becker
Milk Company Limited to Canadian Trade Mark
Application No. 656,918 for registration of the trade-
mark DOLLY MADISON BAKERY & Design by
Interstate Brands Company - Licensing Co.
BETWEEN:
INTERSTATE BRANDS COMPANY - LICENSING CO.
Appellant
(Applicant)
- and -
THE BECKER MILK COMPANY LIMITED
Respondent
(Opponent)
JUDGMENT
The appeal is dismissed with costs.
_______________________
Judge
Date: 19980622
Docket: T-748-96
IN THE MATTER OF an Appeal pursuant to Sections
56 and 59 of the Trade-Marks Act R.S.C. 1985, c.T-13.
- and -
AND IN THE MATTER OF an Opposition by The Becker
Milk Company Limited to Canadian Trade Mark
Application No. 656,918 for registration of the trade-
mark DOLLY MADISON BAKERY & Design by
Interstate Brands Company - Licensing Co.
BETWEEN:
INTERSTATE BRANDS COMPANY - LICENSING CO.
Appellant
(Applicant)
- and -
THE BECKER MILK COMPANY LIMITED
Respondent
(Opponent)
REASONS FOR JUDGMENT
MCGILLIS, J.
INTRODUCTION
[1] The appellant Interstate Brands Company-Licensing Co. ("Interstate") has appealed under sections 56 and 59 of the Trade-marks Act, R.S.C. 1985, c. T-13, as amended, from a decision of the Registrar of Trade-marks dated January 30, 1996, in which he refused to register the trade-mark DOLLY MADISON BAKERY & Design.[1]
FACTS
[2] Interstate and its predecessors are American companies which have used DOLLY MADISON trade-marks in the United States of America since 1912. Interstate is the owner, by way of assignment, of eleven trade-marks registered in the United States between 1940 and 1987 for use of the name DOLLY MADISON in association with baked goods and snack foods. In particular, Interstate has used and owned the trade-mark DOLLY MADISON BAKERY & Design in the United States since 1987.
[3] Interstate sells DOLLY MADISON brand baked goods to grocery and convenience stores. Interstate's total sales, for the period from 1988 to 1993, exceeded $2,000,000,000.00 US. Its DOLLY MADISON trade-marks are well-known in the United States in association with baked goods. Dolly Madison is an historical figure, who was the wife of James Madison, the fourth President of the United States. She lived from 1768 to 1849.
[4] On March 24, 1931, another American company, Philadelphia Dairy Products Company, Inc., became the registered owner in the United States of a trade-mark registration for the trade-mark DOLLY MADISON for use with the goods ice cream. The registration issued by the United States Patent Office noted that the trade-mark had been used by that company continuously since November 1930. The title to that trade-mark is now held in the United States by Seligco Food Corporation ("Seligco"). The Seligco DOLLY MADISON trade-mark for ice cream has co-existed in the United States with Interstate's DOLLY MADISON trade-marks for baked goods.
[5] On December 21, 1979, The Becker Milk Company Limited ("Becker's"), a Canadian company, applied to register the trade-mark DOLLY MADISON in Canada for use in association with the wares ice cream. Becker's operates retail convenience stores, and sells a wide range of food items, including ice cream, bakery products and frozen cakes. Due to the limited space in the stores, all of the food items are sold in close proximity.
[6] Becker's application to register DOLLY MADISON as a trade-mark in Canada for use in association with the wares ice cream was opposed by Seligco.
[7] On January 19, 1982, Seligco applied in Canada to register the trade-mark DOLLY MADISON for use in association with the wares ice cream, ice milk and frozen yogurt. Becker's opposed that application.
[8] In 1984, the Registrar of Trade-marks rejected Seligco's opposition to Becker's application on the basis that Seligco had failed to establish that its trade-mark was known in Canada and that Becker's trade-mark lacked distinctiveness.[2]
[9] Prior to 1984, Becker's had sold brick ice cream in traditional flavours under the trade-mark BECKER'S. In 1984, Becker's adopted the DOLLY MADISON trade-mark to identify a premium ice cream available in a wide range of flavours, and has used that mark to date in Canada. Becker's introduced the DOLLY MADISON ice cream to give consumers more choice, and to provide competition to certain name brand ice creams. Although Becker's is identified on the packaging as the manufacturer of the ice cream, its name does not otherwise appear on the labelling. As a result, consumers identify DOLLY MADISON as a name brand ice cream. Due to the popularity of its prepackaged DOLLY MADISON ice cream, Becker's installed ice cream coolers in many of its stores, and began selling hand scooped DOLLY MADISON ice cream cones. Becker's has used and promoted the trade-mark DOLLY MADISON as a "house brand" in association with the premium ice cream products manufactured by it and sold in over 650 of its stores in Ontario.
[10] On December 4, 1986, Seligco abandoned its application to register the trade-mark DOLLY MADISON for use in association with the wares ice cream, ice milk and frozen yogurt.
[11] On December 11, 1987, Becker's became the owner in Canada of the trade-mark DOLLY MADISON, registration No. 335,075, for use in association with the wares ice cream. On February 5, 1988, Seligco was recorded as a registered user of Becker's DOLLY MADISON trade-mark, as a result of an agreement which it had negotiated with Becker's.
[12] For the period 1988 to 1991, Becker's total sales of its DOLLY MADISON ice cream were approximately $10,800,000.00. Becker's has also advertised the sale of its DOLLY MADISON ice cream extensively in print and by radio.
[13] On May 9, 1990, Interstate applied in Canada to register the trade-mark DOLLY MADISON BAKERY & Design for use in association with the wares cakes. Interstate based its application on its use and registration of that trade-mark in the United States. On June 26, 1991, it disclaimed the exclusive right to use the word "bakery" apart from the trade-mark as a whole. On November 27, 1991, the application was advertised in the Trade-marks Journal.
[14] On March 27, 1992, Becker's filed a Statement of Opposition on the grounds that the trade-mark DOLLY MADISON BAKERY & Design was confusing with DOLLY MADISON and not registrable under paragraph 12(1)(d) of the Trade-marks Act, that Interstate was not entitled to registration under subsection 16(2) in that its trade-mark was confusing with Becker's previously used and known registered trade-mark, and that it was not distinctive of Interstate's wares.
[15] Interstate filed a Counterstatement in which it denied the allegations raised by Becker's in its Statement of Opposition. Interstate and Becker's each filed affidavit evidence, and an oral hearing was held before the Trade-marks Opposition Board.
[16] On January 30, 1996, the Registrar dismissed Interstate's application to register the DOLLY MADISON BAKERY & Design trade-mark for use in association with the wares cakes.
[17] In his decision, the Registrar noted that the determinative issue was whether Interstate's trade-mark DOLLY MADISON BAKERY & Design for use in association with cakes was confusing with Becker's trade-mark DOLLY MADISON for ice cream. In his analysis of that issue, the Registrar stated, in part, as follows:
The legal onus is on the applicant to show that there would be no reasonable likelihood of confusion, within the meaning of Section 6(2), between the applied for mark DOLLY MADISON BAKERY & Design and the opponent's mark DOLLY MADISON. The presence of a legal onus on the applicant means that if a determinate conclusion cannot be reached once all of the evidence is in, then the issue must be decided against the applicant: see John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 at 297-298 (F.C.T.D.). In determining whether there would be a reasonable likelihood of confusion, I am to have regard to all the surrounding circumstances, including those enumerated in Section 6(5) below:
6(5) In determining whether trade-marks ... are confusing, the ... Registrar ... shall have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trade-marks ... and the extent to which they have become known;
(b) the length of time the trade-marks ... 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 ... in appearance or sound or in the ideas suggested by them.
[Becker's] mark DOLLY MADISON possesses a relatively low degree of inherent distinctiveness since surnames and first names are weak in terms of distinctiveness. The design features of the applied for mark DOLLY MADISON BAKERY & Design add some distinctiveness to [Interstate's] mark, however, the mark as a whole remains relatively weak. The word BAKERY, which is disclaimed in the subject application, adds nothing to the distinctiveness of the applied for mark. Further, the inherent distinctiveness of the parties' marks are lessened to the extent that Canadians would recognize the name Dolly Madison as an American historical figure. There is no doubt that [Becker's] mark had acquired a significant reputation in Canada by the earliest material date May 9, 1990. ....
[18] Following his review of the evidence tendered by Becker's in opposition to the application, the Registrar considered Interstate's evidence, noting that "...DOLLY MADISON BAKERY & Design possessed a significant reputation for baked goods in the United States at all material times." He further noted that the trade-mark DOLLY MADISON BAKERY & Design "...may possibly have been known in Canada at the de minimis level at all material times as a result of Canadians encountering the mark while travelling in the United States." However, with respect to use, the Registrar found that "...the length of time that the marks in issue have been in use in Canada favours [Becker's], its use of the mark DOLLY MADISON dating from at least 1987 while [Interstate] has not evidenced any use of its mark DOLLY MADISON BAKERY & Design in Canada." The Registrar also found that the nature of the wares of the two trade-marks was "fairly closely related", and that there was a "potential for overlap" in the nature of the trades. With respect to paragraph 6(5)(e) of the Trade-marks Act, the Registrar found that the trade-marks resembled each other "...to a high degree in all respects." In particular, he noted that " [Interstate's] mark consists of the entirety of [Becker's] mark together with fairly non-distinctive design matter and a non-distinctive word component (-the word BAKERY)."
[19] The Registrar also considered in his analysis Interstate's submission that the coexistence and concurrent use in the United States of its trade-marks for baked goods and Seligco's trade-mark for ice cream had not led to confusion. In that regard, he stated as follows:
[Interstate] seeks to support its submission by relying on the affidavit of Joseph Vangreen and on Mr. Sutton's evidence. As discussed earlier, the Vangreen affidavit was filed on behalf of Seligo [sic] (qua opponent) in the matter of an opposition between Seligo [sic] and Becker. While the contents of the affidavit may possibly be relevant in proceedings wherein Seligo [sic] is a party, the affidavit is inadmissible for the truth of its contents (and cannot prejudice Becker) in the present proceeding. Other evidence to support [Interstate's] submission that the marks DOLLY MADISON for ice cream and for baked goods, respectively, co-exist without confusion in the United States is found in paragraph 11 of Mr. Sutton's affidavit:
...
Mr. Sutton's evidence does not quantify Seligo's [sic] sales under its marks in the United States, or provide information regarding Seligo's [sic] channels of trade in the United States. Further, Mr. Sutton does not explicitly state that he would have been informed of instances of actual confusion between Seligo's [sic] marks and Interstate's marks or that his organization has a mechanism for reporting instances of confusion to senior management. Even if I were prepared to accept, at face value, Mr. Sutton's assertion that there has been no confusion between the Seligo's [sic] marks and Interstate's marks in the United States, his evidence on this point is insufficient for inferences to be drawn with respect to the potential for confusion in this jurisdiction.
[20] In determining the question of confusion, the Registrar applied the test of "first impression and imperfect recollection", and concluded that Interstate's trade-mark DOLLY MADISON BAKERY & Design was confusing with Becker's trade-mark DOLLY MADISON. As a result, he refused Interstate's application to register the trade-mark DOLLY MADISON BAKERY & Design.
[21] On April 1, 1996, Interstate filed an appeal from the Registrar's decision. In support of its appeal, Interstate filed new evidence in the affidavits of Nancy Montague and Ray Sandy Sutton.
[22] In her affidavit, Ms. Montague swore that she was an employee of Information Resources, Inc. ("I.R.I."), a nationally recognized American market research company which computes market share information from electronic scanners registering sales of foods in grocery stores. Interstate requested I.R.I. "...to identify the number of representative ... markets in the United States in which both Dolly Madison snack cakes and Dolly Madison ice cream are sold." In order to provide Interstate with the requested information, I.R.I. accessed its database which contains information gathered by "...tracking Universal Product Coded products sold in scanning grocery stores contained in I.R.I.'s representative sample stores...". Exhibit "A" to the affidavit outlined the sales of DOLLY MADISON cakes and DOLLY MADISON ice cream in certain stores in the sample markets for a thirteen week period. Sales of DOLLY MADISON ice cream were found in forty of the same markets which had sales of DOLLY MADISON cakes. In her affidavit, Ms. Montague made the following disclaimer with respect to the accuracy of the I.R.I. data:
IRI's InfoScan® methods are based, to the extent practicable, on scientific sampling theory. These methods involve sampling a portion of the desired information and projecting the observed results to a broader area of interest and, as such, are subject to statistical error rates. Further, the sources of information used by IRI in compiling data and preparing reports are varied, and include third party retail outlets. Some sources are not under IRI's control. While IRI believes these sources to be reliable it is not able to directly verify the information obtained from them. Further, although it is IRI's policy to furnish, to the best of its ability, accurate and correct reports using modern techniques consistent with accepted marketing research standards, IRI makes no representation or warranty hereunder, express or implied, as to the accuracy, merchantability or fitness for a particular purpose of the data or results to be obtained from the use of the data.
[23] In his affidavit filed for the purposes of the appeal, Mr. Sutton referred to Exhibit "A" from the Montague affidavit, and swore that there had never been "...any reported confusion in the United States between [Interstate's] trade-mark DOLLY MADISON for snack cakes and the trade-mark DOLLY MADISON for ice cream, notwithstanding the fact that each product has been sold in several common markets." He further stated that any confusion would have been reported to his office as general counsel, given his responsibility for all trade-mark matters. Finally, he stated that Interstate was "...not aware of any reported confusion between the marks or any indication from consumers believing that the products might emanate from the same source."
[24] There was no cross-examination on the affidavits filed on appeal.
ISSUE
[25] The question to be determined on appeal is whether the Registrar committed any error in concluding that Interstate's trade-mark DOLLY MADISON BAKERY & Design was confusing with Becker's trade-mark DOLLY MADISON. In particular, the Court must determine whether its intervention is justified on the basis that the new evidence tendered on appeal is significant or substantially material.
ANALYSIS
[26] On an appeal pursuant to section 56 of the Trade-marks Act, the onus is on the appellant to establish that the Registrar has gone wrong. [See Benson & Hedges (Canada Ltd. v. St. Regis Tobacco Corp., [1969] S.C.R. 192 and Beverly Bedding and Upholstery Ltd. (1982), 60 C.P.R. (2d) 70 (F.C.A.)]. Although the decision of the Registrar is entitled to be given great weight and not set aside lightly unless he has made an error, the judge hearing the appeal must determine the issue having regard to all of the relevant circumstances. [See Benson & Hedges Ltd. v. St. Regis Tobacco Corp., supra; Calumet Manufacturing Ltd. v. Mennen Canada Inc. (1992), 40 C.P.R. 76, 84 (F.C.T.D.)]. The burden on the appellant is not an easy one and the Court must not substitute its own opinion for that of the Registrar. [See Polysar Ltd. v. Gesco Distributing Ltd. (1985), 6 C.P.R. (3d) 289 (F.C.T.D.)]. However, where substantial or significant new evidence is tendered on appeal, a broader scope of review is available on appeal. [See for example Danjaq, S.A.. v. Zervas (1997),75 C.P.R. (3d) 295, 299 (F.C.T.D.); Hugo Boss AG v. Paragon Clothing Ltd. (1994), 58 C.P.R. (3d) 504, 511 (F.C.T.D.); Haskett v. Queenswear International Ltd. (1997), 74 C.P.R. (3d) 472 (F.C.T.D.)].
[27] Counsel for the parties agreed, for the purposes of the appeal, that the coexistence and the concurrent use of trade-marks in the United States is a relevant factor in assessing the question of confusion in Canada. [See Kellogg Co. et al. v. Imperial Oil Ltd. (1996), 67 C.P.R. (3d) 426 (Ont. Ct. Gen. Div.)] Indeed, the Registrar did not take issue with that proposition, but rather concluded that the evidence before him concerning the question of confusion in the United States was "...insufficient for inferences to be drawn with respect to the potential for confusion in this jurisdiction."
[28] In determining whether the Registrar erred in concluding that there was a likelihood of confusion between the two trade-marks, the effect, if any, of the new evidence tendered on appeal must be considered.
[29] Counsel for the parties advanced opposing views with respect to the weight to be given to the new evidence tendered on appeal, as well as its significance.
[30] With respect to the Montague affidavit, counsel for the respondent submitted that the evidence in the affidavit was "worthless" for various reasons. At the outset, he stated that the evidence was in the nature of expert evidence, but that Ms. Montague had indicated simply that she was "an employee" of I.R.I., without indicating her qualifications, if any, to provide the data and the analysis. He further noted that there was no evidence in the affidavit to explain the sample that was chosen or the meaning of the numbers reproduced in Exhibit "A", and that it was impossible to understand the information reproduced in that Exhibit. Finally, he noted that, not only was there no representation or warranty concerning the accuracy of the information, but rather there was a complete disclaimer to the contrary. As a result, he submitted that the evidence in the Montague affidavit was either inadmissible hearsay evidence or evidence that should not be accorded any weight due to its inherent unreliability.
[31] With respect to the Sutton affidavit filed on appeal, counsel for the respondent submitted that the paragraphs in which Mr. Sutton made reference to and relied upon the evidence from the Montague affidavit were either inadmissible or entitled to little or no weight. In relation to the remaining paragraphs of the affidavit, he submitted that the evidence did not differ in any material respect from that which was before the Registrar. In particular, he noted that Mr. Sutton did not indicate whether Interstate had any system in place to provide for the reporting of any confusion, a matter which was of concern to the Registrar. Counsel for the respondent therefore submitted that there was insufficient new evidence tendered on appeal to warrant interfering with the Registrar's decision.
[32] Counsel for the appellant submitted in reply that the Montague affidavit was not tendered as expert evidence, and was relied upon merely to establish that the two products were sold in the jurisdictions in question. He further submitted that Mr. Sutton clearly stated in his affidavit that any confusion would have been reported to his office, and that he was unaware of any instances of confusion.
[33] I have carefully considered the evidence in the affidavits and the submissions of counsel. Even if I were to assume that the evidence in the Montague affidavit is admissible and that it is not expert evidence, I am of the opinion that it ought to be accorded little or no weight for all of the other reasons advanced by counsel for the respondent. Similarly, those portions of the Sutton affidavit which rely on the evidence from the Montague affidavit are also entitled to little or no weight in these proceedings.
[34] The remaining evidence in the Sutton affidavit indicates that there were no instances of actual confusion. However, at the hearing before the Registrar, the evidence tendered by Interstate indicated that "...there has been no confusion..." in the United States between its DOLLY MADISON cake trade-mark and Seligco's DOLLY MADISON ice cream trade-mark. Although Mr. Sutton's affidavit on appeal confirms that there were no actual instances of confusion, the impact of that evidence is diminished by his failure to indicate the existence of any mechanism to facilitate the reporting of confusion to his office. In the circumstances, I have not been persuaded that the new evidence on appeal is either significant or sufficiently material to justify the intervention of the Court.
[35] Having regard to all of the evidence in the record and all of the surrounding circumstances, including the factors outlined in subsection 6(5) of the Act, I have not been persuaded that the Registrar committed any error in determining that Interstate's trade-mark DOLLY MADISON BAKERY & Design was confusing with Becker's trade-mark DOLLY MADISON. I have therefore concluded that the appellant has failed to meet its onus on this appeal of establishing that there is no likelihood of confusion between the two trade-marks in question.
DECISION
[36] The appeal is dismissed with costs.
OTTAWA _____________________________
June 22, 1998 Judge
FEDERAL COURT OF CANADA TRIAL DIVISION
NAMES OF SOLICITORS AND SOLICITORS ON THE RECORD
COURT FILE NO.: T-748-96
STYLE OF CAUSE: INTERSTATE BRANDS COMPANY-LICENSING CO. v. THE BECKER MILK CO. LTD.
PLACE OF HEARING: TORONTO
DATE OF HEARING: JUNE 16, 1998 REASONS FOR JUDGMENT OF McGILLIS J. DATED: JUNE 22, 1998
APPEARANCES:
ROBERT A. MacDONALD FOR APPELLANT
BRIAN W. GRAY FOR RESPONDENT KATHLEEN MURPHY
SOLICITORS OF RECORD:
GOWLING, STRATHY & HENDERSON FOR APPELLANT OTTAWA, ONTARIO
BLAKE, CASSELS & GRAYDON FOR RESPONDENT TORONTO, ONTARIO