Date: 20000324
Docket: A-436-98
CORAM: STRAYER J.A.
SEXTON J.A.
EVANS J.A.
BETWEEN:
INTERSTATE BRANDS COMPANY - LICENSING CO.
Appellant
- and -
THE BECKER MILK COMPANY LIMITED
Respondent
Heard at Toronto, Ontario on Friday, March 24, 2000
Judgment delivered at Toronto, Ontario on Friday, March 24, 2000
REASONS FOR JUDGMENT BY: EVANS J.A.
Date: 20000324
Docket: A-436-98
CORAM: STRAYER J.A.
SEXTON J.A.
EVANS J.A.
BETWEEN:
INTERSTATE BRANDS COMPANY - LICENSING CO.
Appellant
- and -
THE BECKER MILK COMPANY LIMITED
Respondent
REASONS FOR JUDGMENT
(Delivered from the Bench at Toronto, Ontario on
Friday, March 24, 2000)
EVANS J.A.:
[1] Since 1984 Becker"s has used the trade mark DOLLY MADISON in Canada on its premium ice cream. Becker"s has advertised DOLLY MADISON ice cream widely and achieved sales of $10.8 million in the years 1988-91.
[2] In 1990 Interstate applied to register in Canada the trade mark DOLLY MADISON & Design for use in association with cakes. Interstate and its predecessors in title have used DOLLY MADISON trade marks in the United States since 1912 in connection with cakes and other baked goods.
[3] Interstate"s application to register its DOLLY MADISON & Design mark in Canada was opposed by Becker"s and was rejected by the Registrar, on the ground that it had failed to establish that there was no reasonable likelihood of confusion in Canada between Interstate"s proposed mark and Becker"s DOLLY MADISON mark within the meaning of subsection 6(2) of the Trade-marks Act R.S.C. c. T-13. Interstate appealed from this decision under section 56 of the Trade-marks Act to the Federal Court, Trial Division and filed two affidavits as new evidence.
[4] McGillis J. dismissed the appeal in view of the evidence before the Registrar, as well as of the new evidence before her, and of all the surrounding circumstances, including the factors prescribed in subsection 6(5). She held that the Registrar had not erred in concluding that Interstate had failed to demonstrate that there was no reasonable likelihood of confusion between the marks.
[5] In this appeal from the decision of McGillis J. dated June 22, 1998 the appellant did not identify any error of law committed by the learned judge in formulating the standard of review or the other legal tests to be applied. Rather, counsel argued that on the evidence before her, including the two affidavits that were not before the Registrar, McGillis J. had been wrong to uphold the Registrar"s conclusion that there was a reasonable likelihood of confusion.
[6] Given the essentially factual nature of the issue in this appeal, the appellant must satisfy us that the judge committed an overriding and palpable error: Stein v. "Kathy K" (The), [1976] 2 S.C.R. 802. We can find no such error in the weight assigned by the judge to the evidence before her, in her understanding of the evidence, or in the ultimate conclusion that she reached on the basis of all the circumstances of the case, including the statutory criteria for determining the existence of a reasonable likelihood of confusion.
[7] In this appeal the appellant relied particularly on the evidence of more than 60 years of concurrent use of DOLLY MADISON trade marks in the United States by Seligco (which is unrelated to Becker"s) in connection with ice cream, and by Interstate in connection with cake. There was some evidence that these goods appear to have been sold in the same retail outlets in various cities in the United States.
[8] McGillis J. saw no reason to question the Registrar"s decision to give little weight to the evidence of coexistence of the marks. She also found that the matter was not much advanced by the new affidavit sworn by a Ms. Montague, an employee of a market research firm engaged by Interstate. The affidavit was submitted to the Court on behalf of the appellant to show the volume and location of sales in the United States of Seligco"s DOLLY MADISON ice cream and Interstate"s DOLLY MADISON cakes. Given the disclaimers of accuracy attached to these sales data, and the absence of an adequate explanation of the nature of the sample on which they were based or of the meaning of the data, we can find no fault in the judge"s treatment of this evidence.
[9] Similarly, we find no palpable and overriding error in the judge"s conclusion that, without more, the affidavit sworn for the purpose of the appeal before McGillis J. by Mr. Sutton, Vice- President and General Counsel of Interstate, added little to the material before the Registrar. Mr. Sutton relied on Ms. Montague"s affidavit to demonstrate that Interstate"s DOLLY MADISON ice cream, and Seligco"s DOLLY MADISON cakes had been sold in the United States in the same establishments for many years. He also stated that reports of customer confusion would have come to his attention as general counsel whose responsibilities included trade marks. In 24 years none had.
[10] McGillis J. noted that the evidential value of this affidavit was limited by the absence of a description of any mechanism to facilitate the reporting of confusion to his office. The weight that she gave to this evidence does not seem to us palpably erroneous. In any event, as the Opposition Board pointed out, it does not necessarily follow from the absence of confusion between marks in another country that there was no reasonable likelihood of confusion between the same marks in Canada.
[11] For these reasons the appeal will be dismissed with costs.
"John M. Evans"
J.A.
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
| DOCKET: A-436-98 |
| STYLE OF CAUSE: INTERSTATE BRANDS COMPANY - |
LICENSING CO.
| - and - |
THE BECKER MILK COMPANY LIMITED
DATE OF HEARING: FRIDAY, MARCH 24, 2000
PLACE OF HEARING: TORONTO, ONTARIO
| REASONS FOR JUDGMENT BY: EVANS J.A. |
Delivered at Toronto, Ontario on
Friday, March 24, 2000
APPEARANCES: Mr. Robert MacDonald
| For the Appellant |
Mr. Brian Gray
| For the Respondent |
| SOLICITORS OF RECORD: Gowling, Strathy & Henderson |
| Barristers & Solicitors |
| 160 Elgin Street, Suite 2600 |
| Ottawa, Ontario |
| K1P 1C3 |
| For the Appellant |
| Blake, Cassels & Graydon |
Barristers & Solicitors
Commerce Court West
2800-199 Bay St.,
PO Box 25, Stn. Commerce Court
Toronto, Ontario
M5L 1A9
| For the Respondent |
FEDERAL COURT OF APPEAL
Date: 20000324
Docket: A-436-98
BETWEEN:
| INTERSTATE BRANDS COMPANY - LICENSING CO. |
Appellant
| - and - |
THE BECKER MILK COMPANY LIMITED
Respondent
REASONS FOR JUDGMENT