Date: 20000622
Docket: A-35-99
CORAM: ROBERTSON J.A.
NOËL J.A.
McDONALD J.A.
BETWEEN:
BAYLOR UNIVERSITY
Appellant
- and -
THE GOVERNOR AND COMPANY OF ADVENTURERS
TRADING INTO HUDSON"S BAY,
commonly called HUDSON"S BAY COMPANY
and THE REGISTRAR OF TRADE-MARKS
Respondents
Heard at Toronto, Ontario, Friday, June 2, 2000
Judgment delivered at Ottawa, Ontario, Thursday, June 22, 2000
REASONS FOR JUDGMENT BY: NOËL J.A.
CONCURRED IN BY: ROBERTSON J.A.
McDONALD J.A.
Date: 20000622
Docket: A-35-99
CORAM: ROBERTSON J.A.
NOËL J.A.
McDONALD J.A.
BETWEEN:
BAYLOR UNIVERSITY
Appellant
- and -
THE GOVERNOR AND COMPANY OF ADVENTURERS
TRADING INTO HUDSON"S BAY,
commonly called HUDSON"S BAY COMPANY
and THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR JUDGMENT
NOËL J.A.
[1] This is an appeal from a decision of the Trial Division dismissing an appeal from an earlier decision of the Trade marks Opposition Board on behalf of the Registrar of Trade marks (the Registrar). The effect of the decision under appeal was to deny the application for registration of the word BAYLOR as a trade mark in Canada insofar as it relates to wares. At issue is whether the Trial Judge correctly held that there was a likelihood of confusion between the proposed mark and those of the respondent.
History of the Proceeding
[2] On August 31, 1992, Baylor University (the appellant) filed an application to register the trade mark BAYLOR for use in association with the following wares and services:
| WARES: (1) Clothing, namely sweaters, sweatshirts, sweatpants, T-shirts, shorts, jackets, hats and shirts. (2) Sweaters, sweatshirts, sweatpants, T-shirts, shorts, jackets, hats and shirts. |
| SERVICES: (1) Educational services, namely conducting college level courses. (2) Educational and entertainment services, namely conducting college level courses and related entertainment services, namely college sports events, fine art productions, concerts and lectures. |
[3] On April 6, 1995, the appellant filed an amended application in which the statement of wares was restricted to collegiate merchandise (i.e. merchandise that displays the name or mark of a college or university in a way that is prominently visible while the merchandise is in use), in particular clothing, namely sweaters, sweatshirts, sweatpants, T-shirts, shorts, jackets, hats and shirts.
[4] The Governor and Company of Adventurers trading in the Hudson"s Bay (the Hudson"s Bay Company) filed a Statement of Opposition on July 16, 1993, and was later granted leave to file an Amended Statement of Opposition. The Hudson"s Bay Company raised a number of grounds of opposition, including the allegation that the trade mark was confusing with its BAYCREST, BAY CLUB, BAYMART, BAY RIDER, BAY SPORT, THE BAY, THE BAY, AND THE BAY Design trade marks (together "The Bay trade marks"). The statutory provisions relied upon by the Hudson"s Bay Company in support of its opposition were paragraphs 12(1)(d), 16(3)(a), 16(3)(c) and subsection 30(i) of the Trade-Marks Act .1
[5] The hearing before the Trade marks Opposition Board took place on September 10, 1997, and the decision of the Registrar was issued on September 29, 1997. The application was rejected with respect to wares, but was allowed with respect to services.
[6] The appellant filed an appeal from that decision to the Federal Court Trial Division insofar as it refused the application with respect to the wares. The appellant filed additional evidence on appeal: the affidavit of Douglas E. Warrington, sworn November 27, 1997.
[7] The appeal to the Federal Court Trial Division was heard on June 16, 1998. By a decision rendered on December 15, 1998, the Trial Division dismissed the appeal.2 This is the decision now under appeal.
Decision Appealed From
[8] The Trial Judge agreed with the Registrar that the Bay trade marks had become well known and indeed famous in Canada in association with the operation of retail outlets distributing clothing and general merchandise.
[9] In contrast, he found that Baylor University could only be known to a limited group of Canadians and that the word "Baylor" alone was good only to cause confusion:
| It is not plausible, to this judge, that many Canadians, except a small minority of sports fanatics, know anything of Baylor University, at Waco, deep in the heart of Texas. ... That Baylor University "is a well known school" may be true in the cities of the U.S. states surrounding Texas, but even in sophisticated Toronto and Montréal it is unlikely, let alone in a myriad of Canadian towns and cities such as St. John's, Fredericton, Charlottetown, Québec, Ottawa, Peterborough, Thunder Bay, Brandon, Weyburn, Medicine Hat, Calgary or Victoria to choose a few at random. The appellant has not shown such familiarity, at any rate. Mr. Warrington confidently expresses "no doubt that there is no [sic - any?] likelihood of confusion whatsoever between the trade mark BAYLOR of Baylor University as used . . .", but the word alone, without the apposition "University" so lacks distinction in Canada as to be good only, or largely, for confusion with the respondent"s many, already historically famous marks.3 |
[10] The Trial Judge also referred extensively to the affidavit of Sandra J. Rick, Department Head of the Watches and Jewellery Department at the Hudson"s Bay Company store in Calgary, Alberta from approximately November 1988 to April of 1991. In paragraphs 3 to 7 of her affidavit, Ms. Rick states the following:
| 3. The first time an individual spoke to me about having a "BAYLOR" watch repaired or requested a refund therefor, which was the first time I saw a watch bearing the trade-mark "BAYLOR", I assumed from the trade-mark "BAYLOR" that the watch was a current or former product of The Bay, with which I was unfamiliar. I telephoned the Watches and Jewellery Department at The Bay in downtown Calgary and asked if the salesperson I spoke with was familiar with a watch sold by The Bay under the trade-mark "BAYLOR". The salesperson had never heard of such a watch. I then inquired of my floor manager whether the watch was a current product of The Bay, or from a discontinued line of watches sold by The Bay. I was informed that it was not. Neither the floor manager nor the salesperson at The [Bay] in downtown Calgary knew the source of the "BAYLOR" watch. I informed the individual who asked about the watch that it was not a product of The Bay. The customer left the store appearing to me to be displeased. |
| 4. For several months after the events described in paragraph 3, whenever an individual asked me about a repair to, or refund for, a "BAYLOR" watch, I informed that individual that it was not a product of The Bay. I subsequently discovered that the watches in question originated from Peoples Jewellers Limited. |
| 5. In many instances, I observed that the individuals seeking the repair of a "BAYLOR" watch or a refund therefor expressed surprise that the "BAYLOR" watch was not a product of The Bay, and often pointed to the "BAY" portion of the name of the watch. |
| 6. I would estimate that I personally received, between approximately July of 1989 and January of 1991, an average of one request every two weeks from individuals bringing watches bearing the trade-mark "BAYLOR" into The Bay South Centre for repair or refund by The Bay. |
| 7. As a salesperson in the women's wear department of The Bay, I am frequently asked, by customers, for The Bay"s clothing in-store brand bearing labels such as BAY CLUB. Based on my experience with the "BAYLOR" watches, I would expect that any clothing marked with a "BAYLOR" trade-mark could lead to same type of confusion - i.e. customers could well be confused into believing that "BAYLOR" was a brand label of The Bay for clothing.4 |
[11] The Trial Judge held the evidence of Ms. Rick"s to be "virtually" determinative. He said, amongst other things, in the course of his judgment:
| Her evidence is virtually fatal to the appellant"s application and appeal. When the chairman and this Court were and are presented with such a vivid factual proof of confusion, what else matters?5 |
| ... |
| Based on Ms. Rick's evidence, unchallenged on cross-examination, the Court may properly conclude, and does conclude, that the appellant's proposed mark and the respondent"s marks are similar, and that the proposed trade mark will cause confusion. Of course, that conclusion would not and does not emanate from a trade mark such as BAYLOR UNIVERSITY which promptly takes one"s mind off BAYCREST, BAYMART, THE BAY and the respondent"s others. Ms. Rick"s evidence shows not merely that the similarity could cause confusion, but that it, in fact, has caused confusion. It matters not that Baylor watches may not be associated with the applicant or its line of merchandise, the word Baylor is objectively identical and causes confusion with the respondent"s lines of trade marked goods whether associated with wrist watches or the appellant"s lines of goods. Real, actual confusion was proved by the respondent.6 |
[12] The Trial Judge found as a fact that both parties apply their respective marks to collegiate clothing which is sold through the same channels of trade.7 After reiterating the fame associated with the Bay trade marks in Canada, the Trial Judge went on to conclude that the appellant had failed to demonstrate that their proposed trade mark would not likely cause confusion.8
Grounds for Appeal
[13] According to the appellant, the Trial Judge, in attributing to the affidavit of Ms. Rick the weight that he did, misconstrued the evidence before him. The appellant also takes the position that the Trial Judge erred in law in failing to have regard to the "relevant consumer" in assessing the likelihood of confusion and submits that when regard is had to the class of persons who purchase collegiate clothing, it becomes clear that the appellant has met the onus of demonstrating that its proposed trade mark will not likely cause confusion.
Relevant Statutory Provision
[14] Section 6 of the Act, when read with section 2, identifies various criteria to be considered in addressing the issue of confusion:
| 2. In this Act, ... "confusing", when applied as an adjective to a trade-mark or trade-name, means a trade-mark or trade-name the use of which would cause confusion in the manner and circumstances described in section 6; ... 6. (1) For the purposes of this Act, a trade-mark or trade- name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade- name in the manner and circumstances described in this section. (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. |
2. Les définitions qui suivent s"appliquent à la présente loi. [...] "créant de la confusion" Relativement à une marque de commerce ou un nom commercial, s"entend au sens de l"article 6. [...] 6. (1) Pour l'application de la présente loi, une marque de commerce ou un nom commercial crée de la confusion avec une autre marque de commerce ou un autre nom commercial si l'emploi de la marque de commerce ou du nom commercial en premier lieu mentionnés cause de la confusion avec la marque de commerce ou le nom commercial en dernier lieu mentionnés, de la manière et dans les circonstances décrites au présent article. (2) L'emploi d'une marque de commerce crée de la confusion avec une autre marque de commerce lorsque l'emploi des deux marques de commerce dans la même région serait susceptible de faire conclure que les marchandises liées à ces marques de commerce sont fabriquées, vendues, données à bail ou louées, ou que les services liés à ces marques sont loués ou exécutés, par la même personne, que ces marchandises ou ces services soient ou non de la même catégorie générale. |
| (3) The use of a trade-mark causes confusion with a trade- name if the use of both the trade-mark and trade-name in the same area would be likely to lead to the inference that the wares or services associated with the trade-mark and those associated with the business carried on under the trade-name are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. |
(3) L'emploi d'une marque de commerce crée de la confusion avec un nom commercial, lorsque l'emploi des deux dans la même région serait susceptible de faire conclure que les marchandises liées à cette marque et les marchandises liées à l'entreprise poursuivie sous ce nom sont fabriquées, vendues, données à bail ou louées, ou que les services liés à cette marque et les services liés à l'entreprise poursuivie sous ce nom sont loués ou exécutés, par la même personne, que ces marchandises ou services soient ou non de la même catégorie générale. |
| (4) The use of a trade-name causes confusion with a trade-mark if the use of both the trade-name and trade-mark in the same area would be likely to lead to the inference that the wares or services associated with the business carried on under the trade-name and those associated with the trade-mark are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. (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
|
(4) L'emploi d'un nom commercial crée de la confusion avec une marque de commerce, lorsque l'emploi des deux dans la même région serait susceptible de faire conclure que les marchandises liées à l'entreprise poursuivie sous ce nom et les marchandises liées à cette marque sont fabriquées, vendues, données à bail ou louées, ou que les services liés à l'entreprise poursuivie sous ce nom et les services liés à cette marque sont loués ou exécutés, par la même personne, que ces marchandises ou services soient ou non de la même catégorie générale (5) En décidant si des marques de commerce ou des noms commerciaux créent de la confusion, le tribunal ou le registraire, selon le cas, tient compte de toutes les circonstances de l'espèce, y compris:
|
[15] Confusion is said to arise in this instance under the following provisions:
Paragraph 12(1)(d):
| 12(1) ..., a trade-mark is registrable if it is not ...
|
12(1) [...], une marque de commerce est enregistrable sauf dans l"un ou l"autre des cas suivants : [...]
|
Paragraphs 16(3)(a) and (c):
| (3) Any applicant who has filed an application in accordance with section 30 for registration of a proposed trade-mark that is registrable is entitled, subject to sections 38 and 40, to secure its registration in respect of the wares or services specified in the application, unless at the date of filing of the application it was confusing with
|
(3) Tout requérant qui a produit une demande selon l'article 30 en vue de l'enregistrement d'une marque de commerce projetée et enregistrable, a droit, sous réserve des articles 38 et 40, d'en obtenir l'enregistrement à l'égard des marchandises ou services spécifiés dans la demande, à moins que, à la date de production de la demande, elle n'ait créé de la confusion:
|
Subsection 30(i):
| 30 An applicant for the registration of a trade-mark shall file with the Registrar an application containing ... i) a statement that the applicant is satisfied that he is entitled to use the trade-mark in Canada in association with the wares or services described in the application. |
30. Quiconque sollicite l"enregistrement d"une marque de commerce produit au bureau du registraire une demande renfermant : [...] i) une déclaration portant que le requérant est convaincu qu'il a droit d'employer la marque de commerce au Canada en liaison avec les marchandises ou services décrits dans la demande. |
Analysis and Decision
[16] The material date for determining whether there is confusion between trade marks pursuant to subsection 6(5) is the date of the Registrar"s decision.9 In determining whether there is a reasonable likelihood of confusion as of the material date, regard must be had to all surrounding circumstances including the criteria enumerated in subsection 6(5) and it is the party seeking registration who bears the burden of establishing that there is no likelihood of confusion.
[17] The first error alleged by the appellant is that the Trial Judge misconstrued the evidence before him in treating the affidavit of Ms. Rick as determinative or virtually determinative of the existence of confusion.
[18] As can be seen from her affidavit, Ms. Rick recounts some 30 instances between November 1988 and April 1991 where clients of the Bay store in Calgary appeared to believe that watches sold by People"s Credit Jewellers bearing the mark BAYLOR were associated with the Hudson"s Bay Company. The watches were brought back to that store either for repairs or to be exchanged.
[19] However, the record before the Trial Judge, as well as before the Registrar, indicated that the watches which would have given rise to those instances of actual confusion were sold throughout Canada and continued to be sold until 1995.10 Despite this, no other instance of confusion was reported anywhere in Canada subsequent to the events disclosed by Ms. Rick in her affidavit.11 This is so even though, according to the evidence, employees of the Hudson"s Bay Company were expected to report any instance of confusion revealed by customers.12
[20] This is what led the Registrar to note in his decision:
| Again, there is no evidence of record which might indicate why the situations referred to by Ms. Rick occurred over a seventeen month period and then appeared to cease or, indeed, why they occurred only in one of the opponent"s stores. |
and to limit the impact which he was willing to give to the Rick affidavit.13
[21] In contrast, the Trial Judge viewed this evidence as being "virtually fatal" to the appellant"s case, "of irresistible significance" and in effect conclusive:
| Based on Ms. Rick"s evidence, unchallenged on cross-examination, the Court may properly conclude, and does conclude, that the appellant"s proposed mark and the respondent"s marks are similar, and that the proposed trade-mark will cause confusion.14 |
[22] Having regard to the record before him, and the issue which he was called upon to decide, it was not open to the Trial Judge to come to this conclusion on the basis of the affidavit of Ms. Rick. First, the material date for the determination which the Trial Judge had to make was, at the earliest, June of 1997 when the Registrar reached his decision.15 What this affidavit establishes at best are instances of confusion occurring some 6 years earlier.
[23] Secondly, as was noted by the Registrar in his decision, the evidence of Ms. Rick was perplexing in that no other similar instances appeared to have occurred anywhere in Canada despite the fact that the watches in question continued to be sold until 1995. This does suggest that the events relayed by Ms. Rick may have been a unique happening. At most, therefore, the affidavit of Ms. Rick was entitled to the limited weight which the Registrar attributed to it.
[24] The second ground of appeal is that the Trial Judge failed to have regard to the relevant consumer. In this respect, the Trial Judge had before him, in addition to the evidence which was before the Registrar, the affidavit of Douglas E. Warrington. Mr. Warrington is the licensing agent in Canada for a number of U.S. colleges, including Baylor University. His task is to negotiate licences on behalf of these colleges, monitor the quality of the merchandise on which the collegiate names or logos are reproduced and collect royalties.
[25] Paragraphs 3 to 7 of Mr. Warrington"s affidavit are particularly relevant to the second ground of appeal raised by the appellant:
| 3. I have been involved in the business of licensing U.S. collegiate merchandise in Canada since approximately 1985. During the late 1980's and early 1990's, I witnessed a very large growth in the popularity to U.S. collegiate merchandise in Canada. Annual Canadian retail sales of collegiate merchandise licensed by my company has averaged well over $10 million Cdn. for the past five years. Such merchandise is sold primarily by athletic shoe and sporting goods specialty stores and also, to a lesser extent, by department stores. |
| 4. Collegiate merchandise sold in Canada is primarily clothing, particularly sweatshirts, t-shirts, jackets and caps. The name or other trade mark of the college is always displayed in a way that is prominently visible. The licensed trade mark is thus incorporated into the design of the garment or other piece of merchandise. The name or other licensed trade mark of the college is never in my experience merely displayed on a label in the manner of a conventional manufacturer"s or retailer"s trade mark. |
| 5. In my experience, the great increase in the popularity of U.S. collegiate merchandise is directly attributable to the increased popularity in Canada of U.S. college athletics, and the increase in media coverage in Canada of U.S. college athletics. I have particularly noted that Canadian sales levels for licensed merchandise bearing the names and trade marks of a particular U.S. college depends on the success of its football team and/or its men"s basketball team. |
| 6. In my experience U.S. collegiate merchandise is purchased and worn in Canada primarily by males in the age category from 15 to 40 years old. Such purchasers are fully aware of the association between the licensed trade marks and the college who owns the trade mark. Whether the purchase of collegiate merchandise shows fan support for an athletic team of a particular college, or whether the display of the name or other mark of the college in the design of the item is more simply a fashion statement, sales of collegiate marketing are team driven. |
| 7. Canadian sales of collegiate merchandise bearing the trade marks of Baylor University have been limited over recent years. However, Baylor University is nevertheless a well known school and important in my company"s licensing program. Baylor University has in the past had a very successful football team, and I am confident that a renewed era of success of its football team would lead to increased sales of licensed Baylor University merchandise in Canada.16 |
[26] It is in reaction to this affidavit that the Trial Judge expressed the view that:
| It is not plausible, to this judge, that many Canadians, except a small minority of sports fanatics, know anything of Baylor University, at Waco, deep in the heart of Texas.17 |
The appellant makes the point that the "minority of sports fanatics" referred to by the Trial Judge in this passage may well constitute the class of consumers which must be borne in mind in addressing the issue of confusion in this case.
[27] It is well established that the issue of confusion arising from the sale of wares under competing trade marks must be determined by reference to persons who are likely to purchase those wares. In Cheung Kong (Holdings) Ltd. v. Living Realty Inc.,18 Evans J. said:
| Counsel for the opponent referred me to cases for the more general proposition that the test for confusion is whether the "average consumer" might be confused, and that this hypothetical person was to be identified in the context of the actual consumers of the product associated with the mark. Thus, whether a mark is likely to cause confusion is a question that is to be asked, not in the abstract, but in respect of the particular market in which the wares or services are offered. |
| Thus, in Canadian Schenley Distilleries Ltd. v. Canada"s Manitoba Distillery Ltd. (1975), 25 C.P.R. (2d) 1 (F.C.T.D.) Cattanach J. said (at page 5): |
| To determine whether two marks are confusing one with the other it is the persons who are [likely] to buy the wares who are to be considered, that is those persons who normally comprise the market, the ultimate consumer.19 |
[28] McKeown J. expressed the same view in McDonald"s Corp. et al. v. Coffee Hut Stores Ltd.20 in relation to the use of surveys. He said at page 475:
| ... I am not satisfied that this survey accurately reflects the views of the "average person" but, in any event, it is not the view of the "average person" which is relevant. |
| Rather it is the view of the consumer which is important in law and it necessarily follows that the correct consumer must be surveyed. In this case, a survey of people who visited a MCBEANS outlet would have constituted a proper survey. As noted by MacKay J. in Joseph E. Seagram & Sons Ltd., supra, at p. 472: |
| The affidavits of the persons who actually conducted the interviews were not offered as evidence by the appellants. The affidavits of Mr. Mayer and Mr. Robertson are of little assistance in determining how representative the results of this survey actually are since they were not present while it was being conducted. Here there was no affidavit from anyone actually involved in the survey"s completion, and no direct evidence of the manner in which questionnaires were completed or the accuracy of the completed returns. It is true they attest that the survey was conducted by trained questioners, and those surveyed were limited to a cohort, chosen at random, of those over 21 years and who were permanent or seasonal residents of the area. That cohort may have more relevance for consumers of alcoholic beverages than for consumers of real estate broker"s services. I do not believe that the opinions of persons who may never have contemplated using the latter services are directly relevant, for they may not encounter any circumstance likely to give rise to confusion from the trade mark as used by the broker : see Carling Breweries Ltd. v. Molson Companies Ltd. (1984), 1 C.P.R. (3d) 191 at p. 198, [1984] 2 F.C., 920 (T.D.), per Strayer J. (emphasis is in the original) |
[29] The evidence of Mr. Warrington is that the market for collegiate merchandise in Canada is primarily clothing (sweatshirts, T-shirts and caps) purchased and worn by males between ages 15 to 40, who have a particular interest in sport. His evidence in this respect is consistent with the evidence of the Hudson"s Bay Company which is to the effect that it also sells collegiate clothing, bearing U.S. university designations such as UCLA, Michigan, Georgetown etc., through its sporting goods department and that typical purchasers are male, between the ages of 10 and 25.21
[30] Whatever else might be said about Mr. Warrington"s affidavit, his evidence, insofar as it seeks to identify the likely consumer, is not "puffery and speculation." It is based on his personal knowledge and experience and is corroborated to a significant extent by the evidence adduced by the party adverse in interest. The point of the Warrington affidavit appears to have been lost on the Trial Judge.
[31] The question which the Trial Judge had to answer is whether, having regard to all the surrounding circumstances including evidence as to the likely purchasers of collegiate clothing, the appellant has discharged the onus of establishing that there was no likelihood of confusion between the trade marks of the parties.
[32] As we have seen, the evidence indicates that collegiate clothing is primarily bought and worn by males between the ages of 10 and 40. Whatever the age, the common thread is an interest in sports. Baylor University, although it does not have the sports fame of major U.S. colleges, has a football team (the BAYLOR BEARS) which has won various championships and played in numerous bowl games, including the Cotton Bowl. U.S. college football games, including those involving the BAYLOR BEARS, are televised in Canada and publicized in magazines such as Sports Illustrated which are distributed in Canada.
[33] Against this background, it is not only plausible but likely, as Mr. Warrington suggests in his affidavit, that those who are interested in purchasing collegiate clothing would tend to be aware of the association between the trade marks displayed on such clothing and the college or university which these trade marks represent.
[34] Turning to the trade marks of the Hudson"s Bay Company which are said to evidence confusion, the record before the Trial Judge indicates that none of these trade marks are shown on wares in a prominently visible way as college trade marks are shown on collegiate clothing. The Hudson"s Bay Company does not display any of its trade marks on collegiate clothing or its wares in a prominent manner;22 these are made to appear on labels and tags only. The Trial Judge seems to have overlooked this distinction when he found that "... both parties apply their respective marks to collegiate clothing ...."23
[35] Furthermore, the evidence surrounding the particular trade marks relied upon by the Hudson"s Bay Company in support of its opposition does not suggest any likelihood of confusion when regard is had to those who are likely to purchase collegiate clothing. Specifically, the evidence indicates that at the material time the BAYCREST mark was only being used on bedding and pantyhose, the BAY CLUB mark was only used on women"s fashion, the BAYMART mark and the BAY RIDER mark were not being used on clothing and the BAY SPORT mark was no longer in use.24
[36] The only remaining question therefore is whether THE BAY marks25 and THE BAY Design mark could support the Trial Judge"s finding of confusion. At the material time, these marks were being used in relation to clothing, including sports clothing, although, as noted, none of them were displayed otherwise than on tags and labels. The answer is a function of both the degree of distinctiveness of the BAYLOR mark and its relative obscurity when compared with these widely recognized marks.
[37] Although the mark BAYLOR bears some resemblance to the THE BAY marks in that it incorporates in the first three letters the dominant element of those marks, the evidence before the Trial Judge was that numerous third parties use trade marks and trade names comprising the element BAY in association with clothing and other wares and services sold by the Hudson"s Bay Company.26 Despite the wide recognition of the THE BAY marks, there is no suggestion that confusion has arisen with respect to the use of any of these marks and in particular no evidence of confusion involving marks commencing with the letters BAY, namely BAYARD, BAYOU and BAYSIDE JACK.27
[38] The word BAYLOR is no less distinctive than any of those marks. Unlike THE BAY marks, it does not bring to mind a reference to a particular bay but suggests the surname of a person28 or the name of the appellant for those who know of Baylor University or its football team. The fame associated with the Hudson"s Bay Company in Canada, while considerable, is not such as to automatically exclude third parties from using any word commencing with the letters BAY.
[39] On the other hand, the relative obscurity of the BAYLOR mark when compared to the BAY marks, while a significant factor in assessing confusion by reference to the average consumer, pales in importance when regard is had to the relevant consumer. Indeed, what the evidence suggests is that those who buy collegiate clothing, because of the particular interest which they share, would tend to be aware of the origin of the trade mark which they choose to "sport." In this respect, it is worth repeating that the Hudson"s Bay Company does not display its marks prominently in a way that could be confused with the marks of U.S. colleges and universities.
[40] Finally, the incidents of confusion surrounding the BAYLOR watches in Calgary cannot in themselves justify a finding of confusion. As we have seen, these events date back to 1991 and the fact that there has been no other reported incident anywhere in Canada since then leads to the clear inference that if there ever was any confusion, it dissipated as of 1991.
[41] I therefore come to the conclusion that when regard is had to all the surrounding circumstances, including the particular market in which the product associated with the BAYLOR mark is to be sold, the only conclusion open to the Trial Judge was that the appellant had discharged the onus of demonstrating that its proposed mark would not likely be confused with those of the Hudson"s Bay Company.
[42] For these reasons, I would allow the appeal, set aside the judgment of the Trial Division, direct the Registrar of trade marks to allow trade mark application No. 711,942 as amended for the trade mark BAYLOR in respect of the wares and services set out therein, the whole with costs before both Divisions.
"Marc Noël"
J.A.
"I agree.
Joseph T. Robertson J.A."
I agree.
F. Joseph McDonald J.A."
__________________2Now reported at (1998), 84 C.P.R. (3d) 354.
3Reasons for Judgment, supra note 2 at 360.
5Reasons for Judgment, supra note 2 at 361.
9Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and the Registrar of Trade-marks, 37 C.P.R. (3d) 413 (F.C.A.) at 422.
10See response letter to undertaking 220, Appeal Book, vol. 4 at 1227.
11See the cross-examination of Brian Crawford Grose, the undertaking therein given and the response to the said undertaking; Appeal Book, vol. 4 at 1242 and 1253 respectively.
12See cross-examination of Brian Crawford Grose, supra note 11 at 1243-1244.
13The Registrar was only prepared to give her affidavit "some weight." Decision of the Registrar, Appeal Book, vol. 1 at 46-47.
14Reasons for Judgment, supra note 2 at 362.
15As the hearing before the Trial Judge was a de novo proceeding where new evidence was adduced, the material date might well be 18 months later when the Trial Judge rendered his decision. See Park Avenue Furniture, supra note 9 at 425 where Desjardins J.A. stated: It is important, it would seem to me, that the decision of the Registrar or the Court be taken on an accurate state of the record. Registrability should be decided at the date of registration or at the date of refusal of registration.
16Affidavit of Douglas E. Warrington, Appeal Book, vol. 4 at 1121.
17Reasons for Judgment, supra note 2 at 360.
21Response to undertakings dated August 14, 1995, Appeal Book, vol. 4, 1253 at 1254.
22Affidavit of Mark Koch, paras. 7-8, Appeal Book, vol. 2 at 311; response to undertaking dated August 14, 1995, para. 1, Appeal Book, vol. 4 at 1252.
23Reasons for Judgment, supra note 2 at 365.
24Response to undertaking dated August 14, 1995, para. 1, Appeal Book, vol. 4 at 1252-1253.
26A search conducted on the Canadian Trade mark"s Office database located over 70 marks of record comprising the term BAY owned by parties other than the Hudson"s Bay Company. Affidavit of Jane Sarjeant, paras. 3-4, exhibit A, Appeal Book, vol. 2 at 263.
27Response to undertaking dated February 1, 1995, Appeal Book, vol. 4 at 1227.