Christian Dior, S.A. v. Dion Neckwear Ltd. (C.A.)  3 F.C. 405
Neutral citation: 2002 FCA 29
CORAM: RICHARD C.J.
DION NECKWEAR LTD.
CHRISTIAN DIOR, S.A.
THE REGISTRAR OF TRADE MARKS
Heard at Montréal, Québec, on November 19, 2001.
Judgment delivered at Ottawa, Ontario, on January 23, 2002.
REASONS FOR JUDGMENT BY: DÉCARY J.A.
CONCURRED IN BY: RICHARD C.J.
Neutral citation: 2002 FCA 29
CORAM: RICHARD C.J.
DION NECKWEAR LTD.
CHRISTIAN DIOR, S.A.
THE REGISTRAR OF TRADE MARKS
REASONS FOR JUDGMENT
 On September 4, 1996, the Registrar of Trade-marks (the Registrar) refused the appellant's application for the registration of the trade-mark DION COLLECTION & Design, pursuant to subsection 38(8) of the Trade-marks Act (R.S.C. 1985, c. T-13). A statement of opposition had been filed by the respondent, Christian Dior, S.A., alleging six grounds: the first two are no longer in issue, the last three have not been dealt with by the Registrar or by the Judge (I shall deal with them later in these reasons) and the third one is the ground eventually retained by the Registrar. It reads:
The applicant's trade-mark is not registrable in view of the provisions of Section 12(1)(d) of the Trade-marks Act in that the applicant's trade-mark is confusing with the following registered trade-marks of the opponent:
[There follows a list of seven marks that include the words CHRISTIAN DIOR (the CHRISTIAN DIOR marks) and of five marks that include only the word DIOR (the DIOR marks), two of which are registered with a Design (the DIOR & Design marks]
 The appellant's mark is based on use in Canada in association with neckties, scarves and ascots and on proposed use in Canada in association with shirts, sweaters, blouses, trousers, slacks, suits, socks, underwear, t-shirts, wallets, umbrellas, belts, watches and glasses. The appellant disclaimed the right to the exclusive use of the word COLLECTION apart from its trade-mark. The mark was advertised as follows in the Trade-marks Journal:
 The DIOR marks (as opposed to the CHRISTIAN DIOR marks) were, in the end, the marks which were found to be the source of the likelihood of confusion. It will be useful to reproduce the two DIOR marks which were registered with a Design:
No. TMA 356,392
(A.B., vol. 1, p. 94)
No. TMA 323,994
(A.B., vol. 1, p. 91)
 Affidavit evidence was filed by both parties before the Registrar. None of the affiants were cross-examined. The Registrar denied the registration of the DION COLLECTION & Design mark essentially for the following reasons:
In view of the above, and even bearing in mind the inherent weakness of the opponent's DIOR trade-marks, I am still left in doubt as to whether there would be a reasonable likelihood of confusion between the applicant's trade-mark DION COLLECTION & Design and the Opponent's registered trade-marks DIOR in view of the degree of visual similarity between the trade-marks as applied to overlapping wares travelling through the same channels of trade. I have concluded, therefore, that the applicant has failed to meet the legal burden upon it in respect of the issue of confusion in relation to the Section 12(1)(d) ground of opposition.
 On the appeal before Mr. Justice Pelletier, the appellant filed two more affidavits. Counsel concedes that this additional evidence is not of a kind that would have materially affected the Registrar's findings of facts or the exercise of his discretion.
 In a decision reported at (2000), 185 F.T.R. 234, the learned judge dismissed the appeal. The last paragraph of his reasons reads as follows:
Having regard to the evidence as a whole, the Registrar's conclusion that he was left in doubt as to the reasonable likelihood of confusion between the appellant's trade mark DION COLLECTION & Design and the respondent's trade mark DIOR cannot be said to be clearly wrong, which is the standard of review applicable to this situation. While a different Registrar could have found for the appellant on the same evidence, this Registrar did not; his decision is not subject to being set aside simply because the evidence is evenly balanced.
 There is no need to expand much on the applicable law as it was recently canvassed by this Court.
 Decisions of the Registrar, whether of facts, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter, which is synonymous to "clearly wrong". Where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's decision, a judge must come to his or her conclusion as to the correctness of the Registrar's decision (see Molson Breweries, A Partnership v. Labatt (John) Ltd. et al. (2000), 252 N.R. 91 (F.C.A.) per Rothstein J.A. at p. 101: United States Polo Assn. v. Polo Ralph Lauren Corp. (2000), 9 C.P.R. (4th) 51, F.C.A., per Malone J.A. at para. 13 and Isaac J.A. at para. 10; Garbo Creations Inc. v. Harriet Brown & Co. (1999), 3 C.P.R. (4th) 224, F.C.T.D., per Evans J. at 234 ).
 In determining whether trade-marks are confusing under section 12(1)(d) of the Act, the Registrar is directed by subsection 6(5) to:
...have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
(b) the length of time the trade-marks or trade-names 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 or trade-names in appearance or sound or in the ideas suggested by them.
Some practical guidelines have been set out by Malone J.A. in para. 18 of his reasons in Polo Ralph Lauren (supra, para. 8):
A review of some of the leading cases also establishes some practical guidelines. For example, the Court is to put itself in the position of an average person who is familiar with the earlier mark but has an imperfect recollection of it; the question is whether the ordinary consumer will, on seeing the later mark, infer as a matter of first impression that the wares with which the second mark is used are in some way associated with the wares of the earlier. With respect to the degree of resemblance in appearance, sound or ideas under subparagraph 6(5)(e), the trade-marks at issue must be considered in their totality. As well, since it is the combination of elements that constitutes a trade-mark and gives distinctiveness to it, it is not correct to lay the trade-marks side by side and compare and observe similarities or differences among the elements or components of the marks when applying the test for confusion. In addition, trade-marks must not be considered in isolation but in association with the wares or services with which they are used. When dealing with famous or well-known marks, it may be more difficult to demonstrate that there is no likelihood of confusion, especially if the nature of the wares are similar. Lastly, the enumerated factors in subsection 6(5) need not be attributed equal weight. Each particular case of confusion might justify greater emphasis being given to one criterion than to others.
 In my view, the Registrar erred in applying a "still in doubt" standard, thereby imposing a burden on the applicant which is more onerous than the one applicable in civil proceedings. I appreciate that there is high authority for the proposition that doubt should be resolved in favour of the opponent (see Eno v. Dunn (1890), 15 App. Cas. 252, per Lord Watson at 257; Freed & Freed Ltd. v. Registrar of Trade Marks (1950), 14 C.P.R. 19, Ex. Ct, per Thorson P., at 24, 25; Sunshine Biscuits, Inc. v. Corporate Foods Ltd. (1982), 61 C.P.R. (2d) 53 (F.C.T.D.), per Cattanach J. at 55 ff.; Conde Nast Publications Inc. v. Union des Éditions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.), per Cattanach J. at 188; Export Import CLIC Inc. v. Effem Foods Ltd. (1993), 110 F.T.R. 71, F.C.T.D., per Pinard J. at 77, 78). But that proposition, starting with Lord Watson in Eno, has always been couched in general terms, as a corollary to the principle that the onus was on the applicant; no one, to my knowledge, has suggested that the standard applicable in civil proceedings was not to apply or that an applicant had to demonstrate beyond doubt that confusion was unlikely. In that regard, I note that when Linden J.A. in Pink Panther Beauty Corp. v. United Artists Corp.,  3 F.C. 534 (C.A.), at para. 12, referred to Eno and to Sunshine Biscuits, it was in support of the proposition that the onus was on the applicant, not in support of the ancillary proposition that any doubt is to be resolved in favour of the opponent.
 In fact, I have not been shown any case where a "beyond doubt" standard was applied as such by a court, as opposed to the standard of balance of probabilities generally applicable in civil matters. As I read the jurisprudence, and in particular the comments of Cattanach J. in Sunshine Biscuits, the difference between opposition proceedings and civil proceedings is not the applicable standard, i.e. balance of probabilities, but the onus, which is not on the party who asserts an allegation (the opponent), but on the party who seeks registration (the applicant).
 The most accurate formulation of the test seems to me to be the one suggested by Marceau J. (as he then was) in Playboy Enterprise Inc. v. Germain (1978), 39 C.P.R. (2d) 32 (F.C.T.D.) at 38, aff. (1979), 43 C.P.R. (2d) 271 (F.C.A.):
The question whether a mark is likely to be confusing with another mark in the minds of the public and within the meaning of the law, is a question of fact, or more precisely a question of opinion as to probabilities based on the surrounding circumstances and the particular facts of the case.
 As noted by Sopinka, Lederman and Bryant in The Law of Evidence in Canada, 2nd ed., Butterworths, 1999, at § 5.41, "Speaking generally, the degree of satisfaction governing civil actions is the lower standard of a balance of probabilities". The learned authors go on, at § 5.43, to explain what this standard is about:
§ 5.43 The degree of probability required to discharge the burden of proof in a civil case has been defined by several leading jurists. Lord Denning defined it in these terms:108
It must carry a reasonable degree of probability but not so high as is required in a criminal case. If the evidence is such that the tribunal can say: ‘we think it more probable than not', the burden is discharged, but if the probabilities are equal it is not.
Cartwright J. in Smith v. Smith,109 articulated the test as follows:110
...that civil cases may be proved by a preponderance of evidence or that a finding in such cases may be made upon the basis of a preponderance of probability and I do not propose to attempt a more precise statement of the rule. I wish, however, to emphasize that in every civil action before the tribunal can safely find the affirmative of an issue of fact required to be proved it must be reasonably satisfied, and that whether or not it will be so satisfied must depend upon the totality of the circumstances on which its judgment is formed including the gravity of the consequences of the finding.
Simply put, the trier of fact must find that "the existence of the contested fact is more probable than its nonexistence."111 Conversely, where a party must prove the negative of an issue, the proponent must prove its absence is more probable than its existence.
108 Miller v. Minister of Pension,  2 All E.R. 372, at 374 (K.B.).
109  2 S.C.R. 312,  3 D.L.R. 449; see also Clark v. R. (1921), 61 S.C.R. 608, at 616, where Duff J. concluded that, in a civil case, a court may act on "such a preponderance of evidence as to shew that the conclusion he seeks to establish is substantially the most probable of the possible views of the facts".
110 Ibid., at 331-32 (S.C.R.); followed in Oakes, supra, note 103 [R. v. Oakes,  S.C.R. 103], at 138 (S.C.R.).
111 McCormick on Evidence, supra, note 104 [John William Strong (ed.), McCormick on Evidence, 4th ed. (St. Paul: West Publishing, 1992), vol. 2], at 439.
 I also understand from the comments of Rothstein J.A. at para. 30 ff. of his reasons in Molson Breweries (supra, para. 8), that even the concept sometimes used of "heavy onus" would not apply to proceedings under subsection 12(1)(d) of the Act.
 The Registrar must therefore be reasonably satisfied that, on a balance of probabilities, the registration is unlikely to create confusion; he need not be satisfied beyond doubt that confusion is unlikely. Should the "beyond doubt" standard be applied, applicants would, in most cases, face an unsurmountable burden because certainty in matters of likelihood of confusion is a rare commodity. At best, it is only where the probabilities are equal that a form of doubt may be said to arise, which is to be resolved in favour of the opponent. But the concept of doubt is a treacherous and confusing one in civil proceedings and a registrar should avoid resorting to it.
 Assuming that the Registrar applied the "beyond doubt" standard in that strict context -- I note that the Motions Judge seemed to believe so for the last words in his reasons were "because the evidence is evenly balanced" -- he still would have been clearly wrong in his decision because the evidence can simply not be found to be evenly balanced.
 The balance of probabilities clearly favours the applicant. Once it is determined by the Registrar, as it was, that the likelihood of confusion, if any, is between the trade-mark DION COLLECTION & Design and the DIOR trade-marks; that the primary significance of the DION COLLECTION & Design mark and the DIOR marks is as a surname and that "neither party is entitled to a monopoly in respect of such an idea"; that both marks possess little inherent distinctiveness; that there is sufficient subject matter in the applicant's trade-marks apart from the word DION to warrant registration as a trade-mark; that the DIOR trade-marks have not acquired the same measure of notoriety as the CHRISTIAN DIOR trade-marks and are secondary to the CHRISTIAN DIOR trade-marks; that "the extent to which the applicant's mark and the DIOR marks have become known does not support either party's position although the length of use of these marks does weigh somewhat in the opponent's favour"; that the DION COLLECTION & Design trade-mark does not have much similarity in sounding with the DIOR marks; and that no evidence of actual confusion was produced despite many years of concurrent use of the marks, the Registrar could only have found in favour of the applicant.
 The factors favouring the opponent were length of use, overlapping of wares travelling through the same channels of trade and similarity in appearance. On the latter point, the Registrar does not explain what it was that made the marks similar in appearance. While I appreciate that the first portion of a trade-mark is the most relevant for purposes of distinction (see Pernod Ricard v. Molson Breweries (1992), 56 F.T.R. 53 (F.C.T.D.), per Denault J. at 70), marks are nevertheless to be considered in their totality and the effect or idea of the whole is to be compared even when words in the marks are disclaimed. (See Standard Coil Products (Canada) Ltd. v. Standard Radio Corp. et al. (1971), 1 C.P.R. (2d) 155, aff. (1976), 26 C.P.R. (2d) 288 (F.C.A.); Sealy Sleep Products Ltd. v. Simpsons-Sears (1960), 33 C.P.R. 129 (Ex. Ct), approved by the Supreme Court of Canada in Ultravite Laboratories Ltd. v. Whitehall Laboratories Ltd. (1965), 44 C.P.R. 189.) In the absence of any explanation by the Registrar, I am left with the strong belief that he focussed solely on the DION element of the DION COLLECTION & Design mark and not on the totality of the mark. DION is not the trade-mark which has been submitted. The similarity in appearance, if any, is at best insignificant.
 With respect to the lack of evidence by the opponent of actual confusion, the Registrar expressed the view that an opponent does not need to file that kind of evidence. This is true in theory, but once an applicant has filed some evidence which may point to unlikelihood of confusion, an opponent is a great risk if, relying on the burden of proof the applicant is subject to, it assumes that it does not need to file any evidence of confusion. While the relevant issue is "likelihood of confusion" and not "actual confusion", the lack of "actual confusion" is a factor which the courts have found of significance when determining the "likelihood of confusion". An adverse inference may be drawn when concurrent use on the evidence is extensive, yet no evidence of confusion has been given by the opponent. (See Pink Panther, supra para. 10, at para. 36; Multiplacant Inc. v. Petit Bateau Valton S.A. (1994), 55 C.P.R. (3d) 372 (F.C.T.D.); Bally Schuhfabriken AG/Bally's Shoe Factories Ltd. v. Big Blue Jeans Ltd. (1992), 41 C.P.R. (3d) 205 (F.C.T.D.); Monsport Inc. v. Vêtements de Sport Bonnie (1978) Ltée (1988), 22 C.P.R. (3d) 356 (F.C.T.D.).) The respondent explained its failure to bring any evidence of actual confusion by the fact that being a foreign corporation, it was "difficult, if not impossible" for it to quote from Canadian consumers. That explanation is untenable.
 When taken together, the surrounding circumstances point to the conclusion that, on a balance of probabilities, there is no likelihood of confusion between DION COLLECTION & Design and the DIOR marks. It was a clear error on the part of the Registrar to find otherwise, an error that should have led in turn to an intervention by the Trial Judge.
 This is not, however, the end of the matter. Because of the conclusions he reached with respect to the likelihood of confusion, the Registrar failed to address grounds 4, 5 and 6 of the Statement of Opposition. These grounds are:
4. The appellant is not the person entitled to registration of the trade mark DION COLLECTION & Design in that, as of the claimed date of first use of August 1, 1989, the appellant's trade mark as applied to "Neckties, scarves and ascots" was confusing with the trade marks of the opponent identified in the third ground which had previously been used in Canada by the opponent and its predecessors-in-title;
5. The appellant is not the person entitled to registration of the trade mark in that, as of the appellant's filing date, the appellant's trade mark as applied to "shirts, sweaters, blouses, trousers, suits, socks, underwear, t-shirts, wallets, umbrellas, belts, watches, and glasses" was confusing with the trade mark of the opponent identified in the third ground which had previously been used in Canada by the opponent and its predecessors-in-title;
6. The appellant's trade mark is not distinctive in that the appellant's trade mark is confusing with the opponent's trade mark identified above.
 The Motions Judge did not address these issues either, nor did counsel in their memoranda of fact and law. It is only at the hearing that the issue was raised by counsel, who suggested for the first time that should the appeal be allowed, the matter be referred back to the Registrar for the determination of these three grounds of opposition.
 I am not prepared to follow the route suggested by counsel. The appeal in the Trial Division and then the appeal to this Court both proceeded on the basis that the sole ground at issue was ground no. 3. The parties were obviously satisfied that the determination of that issue would put an end to the matter. It is too late in the game to raise grounds which have been for all practical purposes abandoned in the Court below. In any event, I am not persuaded that the evidence filed was at all meant to address grounds nos. 4, 5 and 6 and would allow a finding different from that made with respect to ground no. 3.
 I would allow the appeal, set aside the decision of the Trial Division dated March 30, 2000, dismiss the opposition by Christian Dior, S.A., and direct the Registrar to register Dion Neckwear Ltd.'s DION COLLECTION & Design trade-mark on the Register of Trade-marks. The appellant should have its costs here and below.
J. Richard, C.J."
Marc Noël, J.A."
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND SOLICITORS OF RECORD
STYLE OF CAUSE: Dion Neckwear Ltd. v. Christian Dior, S.A. et al.
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: November 19, 2001
REASONS FOR JUDGMENT : Décary, J.A.
CONCURRED IN BY: Richard, C.J.
DATED: January 23, 2002
Mr. J. Douglas Wilson FOR THE APPELLANT (APPLICANT)
Ms. Sophie Picard FOR THE RESPONDENT (OPPONENT)
SOLICITORS OF RECORD:
Ridout & Maybee FOR THE APPELLANT (APPLICANT)
Desjardins Ducharme Stein Monast FOR THE RESPONDENT (OPPONENT)