Federal Court Decisions

     T-1871-96

IN THE MATTER OF Sections 38 and 56 of the

Trade-marks Act, R.S. 1985, c. T-13

AND IN THE MATTER OF an Appeal from a

Decision rendered on behalf of the Registrar of

Trade-marks dated June 17, 1996

BETWEEN:

     139001 CANADA INC.

     doing business as VINOTHEQUE

     Appellant

     (Applicant)

     - and -

     D & R BREW KING INC.

     Respondent

     (Opponent)

     REASONS FOR JUDGMENT

McGILLIS, J.

         The appellant appeals under section 56 of the Trade-marks Act, R.S.C.1985, c. T-13, as amended ("Act"), from a decision dated June 17, 1996 of a hearing officer at the Trade-marks Opposition Board ("Board"). In her decision, the hearing officer refused to register the trade-mark VILLAGE VINTNER for use in association with wine-making kits.

         In November 1990, the appellant applied to register the trade-mark VILLAGE VINTNER for use in association with wares described as "wine-making kits." The application was based upon proposed use, and was subsequently amended to include a disclaimer of the word "vintner". It was advertised in the Trade-marks Journal in January 1993.

         In June 1993, the respondent opposed the application by filing a Statement of Opposition. The respondent alleged in its Statement of Opposition, among other things, that the proposed trade-mark was not registrable under paragraph 12(1)(d) of the Act, on the basis that

it was confusing with the respondent's trade-mark VINTNERS RESERVE, used in association with home-brewing kits. In the proceedings before the Board, the respondent filed no evidence or written submissions in support of its opposition.

         In her decision, the hearing officer concluded, on the basis of the evidence, that the appellant had not satisfied the burden of establishing that there would be no likelihood of confusion between VILLAGE VINTNER for wine-making kits and VINTNERS RESERVE for home-brewing kits. In her analysis concerning the question of confusion, the hearing officer stated, among other things, as follows:

The [appellant] also contends that the McPhail affidavit establishes that the word VINTNER is common to the wine trade and that as a result, the scope of protection of the opponent's registration should be limited. In Del Monte v. Welch (1992), 44 C.P.R. (3d) 205 (F.C.T.D.), it was held that the existence of a limited number of registrations with no evidence of use was not sufficient to allow the Registrar to infer that any of those marks have been used to any significant extent. In the present case, the McPhail affidavit only evidences two pending applications and three registrations for trade-marks incorporating the word VINTNER for wares similar to those of the trade-marks in issue e.g. fermented alcoholic beverages, wines, etc. In the absence of evidence of use, the existence of this limited number of applications and registrations is far from sufficient to allow me to infer that any of those marks have been used to any significant extent. Consequently, I am unable to conclude that consumers are used to seeing such marks in the marketplace and would therefore be more likely to discriminate one from another.

         The appellant filed an appeal from the decision, and tendered additional evidence. The respondent chose not to participate in the appeal.

         In the new evidence filed on appeal, the appellant established, among other things, that it has used the trade-mark VILLAGE VINTNER since at least as early as May 1991 in association with kits for making red and white wine. VILLAGE VINTNER wine-making kits are sold and promoted in more than 1,200 wine shops located in all of the provinces and territories of Canada. The volume of sales for the kits, which range in price from $25.00 to $31.00, is high, and has steadily increased every year since 1991. Despite its substantial use of the trade-mark since 1991, the appellant is unaware of any instance of confusion concerning the trade-mark. The appellant further established in its evidence filed on appeal that the words "vintner" and "reserve" are descriptive words commonly used in the wine trade.

         In his able argument on appeal, counsel for the appellant submitted, among other things, that the hearing officer erred in her analysis of the scope of protection to be accorded to the respondent's trade-mark, which is based on a descriptive word. In support of his position, he relied on the following passage from General Motors Corp. v. Bellows (1949), 10 C.P.R. 101 (S.C.C.), at pages 115-116 of the decision:

Mr. Fox submitted this basic consideration: that where a party has reached inside the common trade vocabulary for a word mark and seeks to prevent competitors from doing the same thing, the range of protection to be given him should be more limited than in the case of an invented or unique or non-descriptive word; and he has strong judicial support for that proposition: Office Cleaning Services Ltd. v. Westminster Window & Gen'l Cleaners Ltd. (1944), 61 R.P.C. 133 at p. 135; (1946), 63 R.P.C. 39; Br. Vacuum Cleaner Co. v. New Vacuum Cleaner Co., [1907] 2 Ch. 312 at p. 321; Aerators Ltd. v. Tollitt, [1902] 2 Ch. 319. In Office Cleaning Services, 63 R.P.C. at p. 43, Lord Simonds used this language: "It comes in the end, I think, to no more than this, that where a trader adopts words in common use for this trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolize the words. The Court will accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be rendered."

No doubt there is a public interest against confusion of these marks, but on the other hand there is a like interest in the freedom of the individual trader in ordinary trade practices and in particular in using the main stock of the language. If the latter interest is disregarded, a single word might effect a wholesale appropriation of the only apt language available.

         I agree with the submission of counsel for the appellant that the principles enunciated in General Motors Corp. v. Bellows, supra, are applicable to the present case. In applying those principles to the facts before me, I have concluded, on the basis of the new evidence adduced on appeal concerning use and the descriptive nature of the words, that consumers would be able to discriminate between the two trade-marks. Furthermore, having regard to all of the surrounding circumstances including the factors outlined in subsection 6(5) of the Act, I am of the opinion that there is no likelihood of confusion between the two trade-marks. Indeed, if the evidence tendered on appeal had been placed before the hearing officer, she would undoubtedly have reached the same conclusion.

         The appeal is therefore allowed.

OTTAWA

January 30, 1997                          Judge