Date: 20170315
Docket: A-559-15
Citation: 2017 FCA 53
| CORAM:
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DAWSON J.A.
RENNIE J.A.
WOODS J.A.
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| BETWEEN:
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| BENJAMIN MOORE & CO. LIMITED
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| Appellant
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| and
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| HOME HARDWARE STORES LIMITED
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| Respondent
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Heard at Toronto, Ontario, on October 27, 2016.
Judgment delivered at Ottawa, Ontario, on March 15, 2017.
| REASONS FOR JUDGMENT BY:
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WOODS J.A.
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| CONCURRED IN BY:
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DAWSON J.A.
RENNIE J.A.
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Date: 20170315
Docket: A-559-15
Citation: 2017 FCA 53
| CORAM:
|
DAWSON J.A.
RENNIE J.A.
WOODS J.A.
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| BETWEEN:
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| BENJAMIN MOORE & CO. LIMITED
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| Appellant
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| and
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| HOME HARDWARE STORES LIMITED
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| Respondent
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REASONS FOR JUDGMENT
WOODS J.A.
[1]
Benjamin Moore & Co. Limited has applied under section 30 of the Trade-marks Act, R.S.C. 1985, c. T-13 (Act) to register two trademarks: the word mark “BENJAMIN MOORE NATURA,”
and the design mark depicted below. Both marks are to be used in association with interior and exterior paints.
[2]
Home Hardware Stores Limited filed oppositions to the applications pursuant to section 38 of the Act. It asserts, among other things, that the Benjamin Moore marks are confusing with nine of Home Hardware’s trademarks that include the term “natura.”
The Home Hardware marks are set out in Appendix A.
[3]
Seven of the Home Hardware marks are registered design marks bearing two common features, the name of a product or product line and a stylized form of the term “natura.”
A typical example is the design mark that contains the words “natura wood prep”
, which is associated with a preparation to clean exterior wood.
[4]
The other two Home Hardware marks are word marks that are not registered, and were at the relevant time the subject of pending applications for registration.
[5]
One of these marks is “BEAUTI-TONE NATURA,”
which is used in association with paints and paint-related products. It is the only relevant Home Hardware mark used specifically with paints and is also the only relevant mark that includes the term “BEAUTI-TONE,”
which is a Home Hardware brand associated with paints.
[6]
The other relevant Home Hardware word mark is “NATURA.”
In the application for registration, this mark is associated with a diverse group of wares that does not include paints.
I.
Procedural history
[7]
Home Hardware’s oppositions were rejected by the Trade-marks Opposition Board (Board) in a decision dated September 29, 2014 (2014 TMOB 211). Central to the decision was a finding that there was no confusion between any of the Benjamin Moore and Home Hardware trademarks at any of the material dates at which confusion was to be determined.
[8]
Home Hardware appealed this decision to the Federal Court pursuant to subsection 56(1) of the Act. In the Federal Court, Home Hardware introduced new material evidence pursuant to subsection 56(5) of the Act. As a result, the Federal Court undertook a de novo review of the matter.
[9]
In a decision dated December 4, 2015, the Federal Court found that there was confusion between the trademarks, “particularly as those marks are used in association with paint”
(reasons, paragraph 73). Accordingly, the Benjamin Moore applications for registration were refused (Home Hardware Stores Limited v. Benjamin Moore & Co., Limited, 2015 FC 1344, 139 C.P.R. (4th) 109).
[10]
Benjamin Moore has appealed the judgment of the Federal Court to this Court.
II.
Legislative framework
[11]
The relevant statutory provisions are reproduced in Appendix B.
[12]
Under section 38 of the Act, a person may oppose an application for registration of a trademark on any of the following grounds:
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[13]
The grounds of opposition above are linked to other provisions of the Act that provide requirements for registration. The registration requirements that are relevant in this appeal are set out below.
(a) A trademark may not be registered if it is confusing with a registered trademark (paragraphs 38(2)(b) and 12(1)(d) of the Act). The determination of whether trademarks are confusing is made as at
“the date where the matter is disposed of on the evidence adduced”
(Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at 422, 130 N.R. 223 (F.C.A.)).(b) An applicant is not entitled to register a proposed trademark if it is confusing with a trademark that had been previously used in Canada or made known in Canada by any other person (paragraphs 38(2)(c) and 16(3)(a) of the Act). This determination is made at the date of filing the application for registration (subsection 16(3) and Park Avenue Furniture, at 422).
(c) An applicant is not entitled to register a proposed trademark if it is confusing with a trademark in respect of which an application for registration by any other person is pending (paragraphs 38(2)(c) and 16(3)(b), and subsection 16(4) of the Act). This is to be determined at the date of filing the application for registration (subsection 16(3) and Park Avenue Furniture, at 422).
(d) A trademark may not be registered if it is not distinctive. The term
“distinctive”
is defined to mean that the trademark actually distinguishes the goods or services from the goods or services of others, or is adapted to distinguish them (paragraph 38(2)(d) and section 2 of the Act). This is to be determined at the date of filing the statement of opposition (Park Avenue Furniture, at 423-424).
[14]
Section 6 of the Act provides the framework for determining whether one trademark is confusing with another. In general, the test is whether the use of both marks in the same area would be likely to lead to the inference that the relevant goods or services are manufactured or sold by the same person. For this purpose, the term “use”
is given an expansive meaning in section 4 of the Act.
[15]
Subsection 6(5) sets out the considerations to be taken into account in the confusion analysis. It provides that all the surrounding circumstances are to be considered, including:
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III.
Federal Court decision
[16]
As mentioned above, the Federal Court concluded that the Benjamin Moore and Home Hardware trademarks were confusing, particularly the parties’ trademarks used in association with paints.
[17]
The reasons for this conclusion were summarized in paragraphs 72 and 73 of the decision, and are reproduced below at paragraph 27. I need only say that the Federal Court concluded that most of the relevant factors in the confusion analysis favoured Home Hardware.
[18]
Although this conclusion is quite different from the Board’s, it is not disputed that the Federal Court was entitled to undertake a de novo consideration of the matter on the basis that new material evidence was introduced that was not before the Board.
IV.
Position of Benjamin Moore
[19]
In this appeal, Benjamin Moore seeks an order that the Registrar of Trade-marks be directed to allow its applications for registration. It submits that the Federal Court’s reasons contain three main errors of law: (1) there is no separate mark to mark comparative confusion analysis; (2) the grounds of opposition are not analyzed separately; and (3) the proper material dates are not applied when considering each ground of opposition.
V.
Position of Home Hardware
[20]
Home Hardware submits that the Federal Court did not fail to undertake a mark to mark analysis, or to separately address the grounds of opposition, or to apply the proper material dates. It submits that the judge undertook a proper analysis in a pragmatic fashion. Nor did the judge err in his consideration of the term “natura.”
[21]
Further, Home Hardware submits that the Federal Court’s decision is correct because its family of NATURA trademarks provides strong prior established rights.
VI.
Analysis
[22]
In paragraph 73 of its reasons, the Federal Court concluded that there would likely be confusion between the trademarks, and particularly the marks used in association with paints. I will first consider whether there was a proper confusion analysis with respect to the trademarks generally, and then consider the Federal Court’s confusion analysis with respect to the marks used in association with paints.
A.
Did the Federal Court undertake a proper confusion analysis?
[23]
It is well-established that a confusion analysis under the Act must be undertaken on a mark to mark basis (Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27, [2011] 2 S.C.R. 387, paragraph 45) and that the appropriate material dates should be applied to each ground of opposition.
[24]
For the reasons below, I do not agree with Home Hardware that the Federal Court applied a proper mark to mark analysis and took into account the relevant material dates for each ground of opposition. These deficiencies represent errors of law, which are to be reviewed on a standard of correctness (Housen v. Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R. 235).
[25]
In its confusion analysis, the Federal Court undertakes a consideration of each relevant surrounding circumstance as required by subsection 6(5) of the Act. However, distinctions between the parties’ respective marks and particular material dates are expressed in a very general manner. For example, in considering distinctiveness, the Federal Court concludes that the distinctiveness factor “overall favours [Home Hardware], even if only slightly with respect to some of its trade-marks at some of the material dates”
(reasons, paragraph 38).
[26]
This deficiency permeates the entire decision, to the point that I conclude that a proper mark to mark comparison at the appropriate material dates was not undertaken.
[27]
The Federal Court’s conclusion at paragraphs 72 and 73 of the reasons illustrates this.
[72] Summarising the conclusions I reached above:
1) the distinctiveness factor slightly favours the applicant;
2) the length of use factor slightly favours the applicant;
3) the nature of the wares factor weighs in favour of the applicant;
4) there is some overlap in the channels of trade;
5) the degree of resemblance factor favours the applicant; and
6) the “family of trademarks” argument supports the applicant’s position;
[73] Therefore, I find that an ordinary consumer would likely be confused as to whether the parties’ trade-marks originate from the same source, particularly as those marks are used in association with paint, notwithstanding the modifying aspects of BEAUTI-TONE and BENJAMIN MOORE respectively. In my opinion, as a matter of first impression, a casual consumer somewhat in a hurry who encounters BENJAMIN MOORE NATURA paint, when that consumer has no more than an imperfect recollection of BEAUTI-TONE NATURA paint, would likely be confused as to the source of these wares, at least as of the later material dates when the Applicant’s NATURA brand had acquired particular distinctiveness in respect of paint. A consumer would likely be confused as to whether the Respondent’s trade-mark originates from the same source as the Applicant’s trade-mark.
[28]
It is especially important to undertake a separate mark to mark comparison at the appropriate material dates because otherwise it is impossible to undertake a proper weighing of the confusion factors in subsection 6(5).
[29]
Home Hardware suggests that it is not necessary to conduct a separate trademark to trademark confusion analysis in this particular case because it owns a family of “NATURA”
trademarks that have been built up over several years (Respondent’s Memorandum, paragraph 50). In this regard, Home Hardware introduced new evidence in the Federal Court to establish that it had extensively used trademarks with the term “NATURA”
on environmentally-friendly wares, which included wares that were not listed in the statements of opposition.
[30]
The concept of a “family of marks”
has been recognized in the Federal Court for many years. It was almost 20 years ago that the protection afforded by a family of marks was described by this Court in Techniquip Ltd. v. Canadian Olympic Assn., 3 C.P.R. (4th) 298, 1999 CarswellNat 2511:
[15] The notion of a family of marks was developed in the context of proceedings under section 6 of the Act. In Molnlycke Aktiebolag v. Kimberly-Clark of Canada Ltd., Cattanach J. explained:
If these are a series of marks all having the same features and are all owned by the same trader then this is a circumstance which must reflect adversely upon an applicant for a mark containing that common feature since the public might think that such a mark indicated goods coming from the same source as the goods covered by the other marks.
[…]
If those marks which have common characteristics are registered in the names of different owners then the presumption is that the common characteristic is a common feature in the trade and registration ought to be allowed. The fact that the marks are owned by different persons tends to negative any proprietorial significance of the common feature and so assists an applicant.
[31]
Home Hardware’s use of a family of “NATURA”
trademarks is relevant to the mark to mark comparative analysis because such use may increase the likelihood of confusion between Benjamin Moore’s “natura”
products and any or all of Home Hardware’s trademarks set out in Appendix A. Several factors may potentially influence this consideration, including the extent to which the Home Hardware family of marks have become known. In addition, the likelihood of confusion may possibly be decreased because of the fact that the Benjamin Moore trademarks do not use the term “natura”
on their own but in conjunction with the company name, “Benjamin Moore.”
Further, Benjamin Moore submits the likelihood of confusion is decreased because a form of the term “natura”
is commonly used by other companies. All relevant circumstances should be considered in considering how the family of marks affects the confusion analysis.
[32]
Although Home Hardware’s “family of marks”
is relevant to this case, I do not agree with the submission of Home Hardware that as a result it is not necessary to undertake a mark to mark confusion analysis taking into account the relevant material dates. The jurisprudence does not support this and it conflicts with the relevant statutory provisions. The use of a family of marks does not obviate the need to undertake a full comparative confusion analysis on a mark to mark basis for each relevant ground of opposition.
[33]
I now turn to the Federal Court’s specific confusion analysis with respect to the paints trademarks.
B.
Did the Federal Court err in concluding that the paints trademarks were confusing?
[34]
As mentioned earlier, the Federal Court made a specific finding of confusion with respect to trademarks associated with paints (reasons, paragraph 73). The relevant trademarks are the word mark “BENJAMIN MOORE NATURA,”
the related Benjamin Moore design mark, and Home Hardware’s word mark “BEAUTI-TONE NATURA.”
[35]
Since Home Hardware’s paints trademark was not registered, paragraph 16(3)(b) of the Act is the relevant provision relating to confusion.
[36]
The identification of the relevant provision is significant in this case because it affects the material date. This date for the purpose of paragraph 16(3)(b) is the date of Benjamin Moore’s applications for registration, which was January 9, 2009. This is the earliest of all the relevant material dates in this matter and at that date neither party was selling paints with these trademarks. Home Hardware started selling paints using “BEAUTI-TONE NATURA”
shortly after January 9, 2009 and Benjamin Moore commenced sales of paint using “BENJAMIN MOORE NATURA”
in April 2009.
[37]
In my view, the Federal Court erred in its confusion analysis by not limiting its consideration to the earliest material date with respect to the paints trademarks. There are several aspects of the reasons that lead me to this conclusion.
[38]
First, the Federal Court inexplicably does not mention paragraph 16(3)(b) of the Act as being at issue in the appeal (reasons, paragraph 20). This is a significant omission because this is the only provision that requires a confusion analysis for the paints trademarks.
[39]
Second, throughout its confusion analysis the Federal Court refers to actual sales of paint as a factor to be considered. Examples are with respect to distinctiveness (reasons, paragraphs 37 and 38), length of use (reasons, paragraph 41), and resemblance (reasons, paragraph 51). In general, sales are an irrelevant consideration to the confusion analysis with respect to the paints trademarks because neither party was selling paints with these trademarks at the material date.
[40]
Third, in paragraph 73 of the reasons the Federal Court concludes that consumers would likely be confused as to the source of paint associated with these trademarks “at least as of the later material dates.”
The later material dates are not relevant to this analysis. Only the earliest material date, January 9, 2009, is relevant.
[41]
The only conclusion that can reasonably be drawn from the reasons as a whole is that the Federal Court applied the wrong material dates in determining that the paints trademarks were confusing. This is an error of law.
VII.
Conclusion
[42]
The errors in the Federal Court’s reasons go to the heart of its conclusion. However, since most of the surrounding circumstances were found by the Federal Court to be in Home Hardware’s favour, I have considered whether the errors would have made a difference in the outcome. Taking the reasons as a whole into account, and especially the importance that the Federal Court placed on sales of paint, I am not convinced that the overall conclusion would have been the same if a proper analysis had been undertaken.
[43]
The question then is whether this Court should give the judgment that the Federal Court should have given or whether it should return the matter to the Federal Court for an initial determination on the merits. While this Court may give the judgment the Federal Court should have given, it is normally preferable to remit a matter to the Federal Court when the matter involves the assessment of evidence. This is especially the case where the Board did not consider the merits of Home Hardware’s opposition to the marks on the full evidentiary record.
[44]
In the result, I would allow the appeal with costs here and below, set aside the judgment of the Federal Court, and refer the matter back to the Federal Court for redetermination in accordance with these reasons.
"Judith M. Woods"
J.A.
“I agree
Eleanor R. Dawson J.A.”
“I agree
Donald J. Rennie J.A.”
APPENDIX A
Home Hardware Trademarks
APPENDIX B
Trade-marks Act, R.S.C., 1985, c. T-13
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FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND SOLICITORS OF RECORD
| Docket:
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A-559-15
|
APPEAL FROM A JUDGMENT OF THE HONOURABLE MR. JUSTICE CAMP DATED DECEMBER 4, 2015, NO. T-2441-14
| STYLE OF CAUSE:
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BENJAMIN MOORE & CO. LIMITED v. HOME HARDWARE STORES LIMITED
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| PLACE OF HEARING:
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Toronto, Ontario
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||
| DATE OF HEARING:
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October 27, 2016
|
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| REASONS FOR JUDGMENT BY:
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WOODS J.A.
|
||
| CONCURRED IN BY:
|
DAWSON J.A.
RENNIE J.A.
|
||
| DATED:
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march 15, 2017
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APPEARANCES:
| D. Paul Tackaberry
Christopher D. Langan
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For The Appellant
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| Monique M. Couture
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For The Respondent
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SOLICITORS OF RECORD:
| Ridout & Maybee LLP
Toronto, Ontario
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For The Appellant
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| Gowling Lafleur Henderson LLP
Ottawa, Ontario
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For The Respondent
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