Date: 20041209
Citation: 2004 FCA 415
ROTHSTEIN J.A.
PELLETIER J.A.
BETWEEN:
WAKEFIELD REALTY CORPORATION
Appellant
and
CUSHMAN & WAKEFIELD, INC.
Respondent
Heard at Toronto, Ontario, on November 18, 2004.
Judgment delivered at Ottawa, Ontario, on December 9, 2004.
REASONS FOR JUDGMENT BY: PELLETIER J.A.
CONCURRED IN BY: DESJARDINS J.A.
ROTHSTEIN J.A.
Date: 20041209
Citation: 2004 FCA 415
CORAM: DESJARDINS J.A.
ROTHSTEIN J.A.
PELLETIER J.A.
BETWEEN:
WAKEFIELD REALTY CORPORATION
Appellant
and
CUSHMAN & WAKEFIELD, INC.
Respondent
REASONS FOR JUDGMENT
PELLETIER J.A.
[1] The appellant Wakefield Realty Corporation (Wakefield) appeals from the decision of Harrington J. allowing the registration of Cushman & Wakefield Inc.'s (C & W) trade-marks "CUSHMAN & WAKEFIELD" and "CUSHMAN & WAKEFIELD DESIGN".
[2] Wakefield's primary ground of appeal was that the judge did not properly apply the statutory test for confusion found at subsection 6(5) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act). The test came into play because Wakefield opposed the registration on the ground that:
a) the C & W's marks were not registrable because they were confusing with Wakefield's registered trade-mark, "WAKEFIELD DESIGN" (paragraph 38(2)(b) of the Act);
b) C & W was not the person entitled to registration of the marks because, as of the filing date, the C & W's marks were confusing with the trade-mark "WAKEFIELD" previously used in Canada by Wakefield in association with real estate services (paragraph 38(2)(c) of the Act); and
c) C & W was not the person entitled to registration of the marks because, as of the filing date, the C & W's marks were confusing with the trade name Wakefield Realty Corporation previously used in Canada by Wakefield in connection with real estate services (paragraph 38(2)(c) of the Act).
[3] In support of its primary argument, Wakefield raised two important subsidiary arguments. The first was that the judge wrongly concluded that Cushman & Wakefield Inc. had become known in Canada with respect to real estate services, as opposed to a cross-border referral service. This issue turned on the significance to be attached to the use of the mark "CUSHMAN & WAKEFIELD REALTY WORLDWIDE" in connection with the real estate service offered by Royal Lepage Commercial Inc. (Royal Lepage).
[4] The second subsidiary argument raised by Wakefield was the integrated nature of the real estate industry. This came into play in terms of the nature of the trade, and the likelihood of confusion on the part of a consumer of real estate services.
[5] Wakefield also argued that certain rhetorical flourishes in the judge's reasons indicated that he had improperly characterized the nature of the proceedings before him, and that he had inappropriately applied some of the authorities.
[6] A fair reading of the judge's reasons leads to the conclusion that this appeal must be dismissed. Given the statutory template found in subsection 6(5) of the Act, the judge's reasons did not approach the question of confusion as systematically as they might have. Nonetheless, one finds in them all the elements of the required analysis. Specifically, the judge addressed his mind to:
a) the inherent distinctiveness of the marks (paragraph 6(5)(a) of the Act) and concluded that both were weak marks in that they had family name or geographical connotations (para. 42 of the reasons).
b) the extent to which the marks have been made known (paragraph 6(5)(a) of the Act). He reviewed Wakefield's evidence as to its advertising of its trade-marks and considered the evidence of the use of "CUSHMAN & WAKEFIELD WORLDWIDE" in connection with Royal Lepage's commercial real estate business (para. 23 and 37 of the reasons).
c) the length of time the trade-marks have been in use (paragraph 6(5)(b) of the Act). He noted Wakefield's use of its trade-mark in the Greater Toronto Area since 1977 (para. 23 of the reasons) as well as the use of "CUSHMAN & WAKEFIELD WORLDWIDE" across Canada since 1995 (para. 44 and 46 of the reasons).
d) the nature of the services provided (paragraph 6(5)(c) of the Act) and the nature of the trade (paragraph 6(5)(d) of the Act). The judge accepted that there was a difference between commercial and residential real estate, though less than suggested by C & W, and that consumers could distinguish between vendors of those services (para. 43 of the reasons).
e) the degree of resemblance between the marks, in terms of appearance, sound and ideas suggested (paragraph 6(5)(e) of the Act). The judge properly noted that the first word in a mark is the most important from the point of view of distinguishing between two marks (para. 42 of the reasons).
f) all of the surrounding circumstances (subsection 6(5) of the Act). The judge commented on the merely anecdotal evidence of confusion arising from the registration of "CUSHMAN & WAKEFIELD WORLDWIDE" in Canada (para. 48 of the reasons).
[7] A number of the judge's conclusions turn on the two subsidiary arguments mentioned above. I propose therefore to touch on them briefly. The first was the effect of the use of "CUSHMAN & WAKEFIELD WORLDWIDE" in connection with the services offered by Royal Lepage. Wakefield argued that this use was limited to a cross-border referral service while C & W argued that the use of "CUSHMAN & WAKEFIELD WORLDWIDE" by Royal Lepage was in connection with all of the commercial real estate services provided by Royal Lepage. By virtue of sections 4 and 50 of the Act, that use amounted to use of the mark in Canada by C & W.
[8] Sections 4 and 50 are reproduced below:
| 4. (1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.
(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
...
50. (1) For the purposes of this Act, if an entity is licensed by or with the authority of the owner of a trade-mark to use the trade-mark in a country and the owner has, under the licence, direct or indirect control of the character or quality of the wares or services, then the use, advertisement or display of the trade-mark in that country as or in a trade-mark, trade-name or otherwise by that entity has, and is deemed always to have had, the same effect as such a use, advertisement or display of the trade-mark in that country by the owner. |
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4. (1) Une marque de commerce est réputée employée en liaison avec des marchandises si, lors du transfert de la propriété ou de la possession de ces marchandises, dans la pratique normale du commerce, elle est apposée sur les marchandises mêmes ou sur les colis dans lesquels ces marchandises sont distribuées, ou si elle est, de toute autre manière, liée aux marchandises à tel point qu'avis de liaison est alors donné à la personne à qui la propriété ou possession est transférée.
(2) Une marque de commerce est réputée employée en liaison avec des services si elle est employée ou montrée dans l'exécution ou l'annonce de ces services.
...
50. (1) Pour l'application de la présente loi, si une licence d'emploi d'une marque de commerce est octroyée, pour un pays, à une entité par le propriétaire de la marque, ou avec son autorisation, et que celui-ci, aux termes de la licence, contrôle, directement ou indirectement, les caractéristiques ou la qualité des marchandises et services, l'emploi, la publicité ou l'exposition de la marque, dans ce pays, par cette entité comme marque de commerce, nom commercial - ou partie de ceux-ci - ou autrement ont le même effet et sont réputés avoir toujours eu le même effet que s'il s'agissait de ceux du propriétaire. |
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[9] The evidence before the judge showed that Royal Lepage made extensive use of the "CUSHMAN & WAKEFIELD WORLDWIDE" trade-mark in connection with its commercial real estate business. The trade-mark was included on Royal Lepage's stationery and business cards and was displayed in its major marketing publication. It was also included in newspaper advertising on an ongoing basis. By reason of section 50 of the Act, this use of the trade-mark in connection with Royal Lepage's commercial real estate business is considered to be use of the trade-mark in Canada by C & W in connection with a commercial real estate business. It was therefore open to the motions judge to find, as he did in paragraph 37 of his reasons, that Cushman & Wakefield "either alone or in conjunction with 'Worldwide' was widely known in Canada in the appropriate circles...". That conclusion supports his conclusions as to the extent to which Cushman & Wakefield was made known, and the length of time of its use in Canada.
[10] The other issue that underlies the judge's conclusion is the nature of the trade. Wakefield relied upon its evidence that the real estate industry is integrated. All realtors, whether residential or commercial, are members of the same industry associations and are subject to the same regulator. As Wakefield's evidence makes clear, a real estate broker can, and Wakefield does, sell both residential and commercial real estate. Consequently, Wakefield argued that the description of the services applied for by C & W had to read as applying to all services offered by a real estate broker.
[11] C & W, on the other hand, pointed to the specialized nature of its clientele (pension funds, large institutional investors, and real estate investment trusts) in support of its position that the market in which it operates is distinct from that in which Wakefield operates. This was supported by the evidence of Mr. Freeman, Wakefield's principal, who admitted that his firm did not represent commercial real estate investors such as pension funds and that the majority of its clients would not require the commercial real estate services offered by C & W. On that evidence, it was open to the judge to conclude that "persons currently minded to purchase the services of Wakefield are not likely to approach Cushman & Wakefield who limit themselves to commercial real estate brokerage" (para. 43). This conclusion speaks to both the issue of the services provided and the issue of the nature of the trade.
[12] Taking all of the above into consideration, the motions judge concluded that there was no "significant likelihood of confusion between "CUSHMAN & WAKEFIELD" and "CUSHMAN & WAKEFIELD DESIGN" on the one hand, and "WAKEFIELD REALTY CORPORATION" and "WAKEFIELD DESIGN" on the other." (See para. 48 of his reasons.) To the extent that the judge's conclusions represent a finding of fact, we are bound to apply the standard of palpable and overriding error. Housen v. Nikolaisen, [2002] 2 S.C.R. 235 at paragraph 23. This is true even when the trial judge's decision is based upon affidavit evidence, as opposed to the testimony of witnesses (Housen, para. 25). I am unable to identify any such error in the motion judge's reasons.
[13] In those cases where the judge's conclusions are findings of mixed fact and law, the standard of review remains palpable and overriding error unless an extricable error of law can be identified (Housen, para. 36). In this case, Wakefield identified the judge's failure to properly apply the test for confusion as an extricable error of law. A fair reading of the judge's reasons shows that he did in fact properly apply the test.
[14] The other errors of law identified by Wakefield turned on the judge's literary sorties in the course of his reasons. Wakefield argued that the judge's opening remarks on identity theft created a doubt as whether he had mischaracterized the problem. There is nothing in the balance of the judge's reasons which suggests that he was in any way misled as to the nature of the proceedings before him. Wakefield argued as well that the judge's apparent equation between "fruit loops" and "fruit dots", on the one hand and Wakefield and Cushman & Wakefield, on the other, was an inappropriate use of the jurisprudence to make factual comparisons. When read in context, it is apparent that this reference simply confirms the position taken by the judge in the preceding paragraphs of his reasons. These unfortunate distractions do not amount to errors of law.
[15] In the end result, I am unable to identify any palpable and overriding errors of fact, law or mixed fact and law which would justify this Court's intervention. The errors of law raised by Wakefield do not, in my view, amount to errors of law. In the circumstances, the appeal must be dismissed.
[16] Wakefield argued that even if it did not succeed on the appeal, it should nonetheless be awarded its costs in the Federal Court and in this Court. That contention was based upon the assertion that C & W's success was the result of its putting before the Court the evidence which it ought to have put before the Trade Marks Opposition Board in the first instance. Wakefield relies upon the case of Scott Paper Co. v. Minnesota Mining and Manufacturing Co. (1981), 53 C.P.R. (2d) 26 in support of its argument.
[17] Given that both parties put significant new evidence before the Federal Court, as they were entitled to do, I am not persuaded that I should depart from the normal practice in which costs follow the event. I would therefore award C & W its costs to be assessed.
"J.D. Denis Pelletier"
J.A.
"I agree
Alice Desjardins J.A."
"I agree
Marshall Rothstein J.A."
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: A-132-04
STYLE OF CAUSE: WAKEFIELD REALITY CORPORATION v.
CUSHMAN & WAKEFIELD, INC.
PLACE OF HEARING: TORONTO, ONTARIO
DATE OF HEARING: Thursday November 18, 2004
REASONS FOR JUDGMENT: PELLETIER J.A.
DATED: December 9, 2004
CONCURRED IN BY: DESJARDINS J.A.
ROTHSTEIN J.A.
APPEARANCES:
Mr. David Aylen
Ms. Sarah Chenoweth FOR THE APPELLANT
Ms. Justine Whitehead FOR RESPONDENT
SOLICITORS OF RECORD:
Mr. David Aylen
Gowling Lafleur Henderson LLP
Toronto, Ontario FOR APPELLANT
Ms. Justine Whitehead
Stikeman Elliott
Ottawa, Ontario FOR RESPONDENT