A recent appeal from the Trade-mark Opposition Board confirms that in the right circumstances the Federal Court will come to its own conclusions.
The Facts
Boyner Holding Anonim Sirketi of Istanbul, Turkey filed a trade mark application for the following mark
in association with a vast list of wares and services.
The Opposition
The Governor and Company of Adventurers of England Trading into Hudson’s Bay, also known as Hudson’s Bay Company (Hudson’s Bay) opposed the application on the grounds, among others, that the trade mark was not registerable in that it is confusing with Hudson’s Bay registered trade marks consisting of forty-one marks, all of which were or contained the words Bay or The Bay or Baie or La Baie, for a wide variety of wares typically found in a retail department store and various retail department store services.
The evidence filed before the Board was very limited. Hudson’s Bay filed copies of the forty-one registrations owned by it, but filed no other evidence. The applicant filed as its evidence an affidavit of a law student to which was attached, as exhibits, a computer print out of information relating to seventy-eight registered trade marks, all owned by persons other than Hudson’s Bay or the applicant. All of these registered trade-marks included the word BAY in some form.
The hearing officer concluded on the evidence available that the applicant had satisfied its onus to show that, on a balance of probabilities, there was no reasonable likelihood of confusion between the applicant’s marks and the opponent’s marks. This was primarily because of the inherent distinctiveness of the applicant’s mark and the differences existing between the parties’ marks which outweighed other relevant factors.
The Federal Court
Subsection 56(5) of the Trade-Marks Act is unusual in that it provides that, in addition to any evidence that was filed in the opposition proceedings, further evidence may be presented on appeal.
Hudson’s Bay filed evidence to show that it was one of Canada’s leading fashion retailers with approximately 92 stores across the country and with flagship stores located in larger cities. For the last 30 years it has continuously advertised its services across Canada through an extensive flyer delivery program to homes and businesses. Over 50 million dollars has been spent by on printed publications that had been circulated in Canada annually since the year 2000, and between 10 and 25 million dollars has been spent on television, radio and outdoor advertising annually since the year 2000. Samples of the print and broadcast materials were provided which displayed representative wares that were offered for sale in Canada.
Since the new evidence filed by the opponent was not before the Opposition Board and was significant and would have materially affected the underlying decision, the court had an unfettered discretion to consider the matter and come to its own conclusion as to the correctness of the Board’s decision.
The burden was on Hudson’s Bay to persuade the court, on the evidence and pertinent jurisprudence, that the ground that it asserted in opposing the registration of the trade mark in issue was sustainable.
The court started its confusion analysis by finding that the essential part of the trade mark sought to be registered was the word BEYMEN. The rest of the mark added little to this word. The part likely to be remembered by the average consumer was BEYMEN.
The court referred to the recent decisions of the Supreme court of Canada and said that the correct approach to be applied in a confusion analysis was to consider as a matter of first impression the point of view of a casual consumer somewhat in a hurry who sees the mark, at a time when he or she has no more than an imperfect recollection of the senior marks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks. In addition, the court should not tease out each portion of a mark but must considered a mark as a whole, as a matter of first impression. The dominant portion of a mark that affects the overall impression of the average consumer should not be ignored.
The court also considered the statutory factors set out in subsection 6(5) of the Trade-marks Act but said it was avoiding a slavish conformity to them as they are guidelines and not a rigorous formula to be followed in every case:
The following matters were said to be significant
a) Hudson Bay’s trade marks BAY and BAIE have a long history of substantial use and advertising throughout Canada. BEYMEN has none.
b) In many instances the wares and services are closely related and in some cases identical.
c) Phonetically and visually BAY or BAIE and BEYMEN are very close. A logical inference was that BEYMEN is a Hudson Bay menswear branch.
d) While there was no instance of actual confusion, there was no evidence that the BEYMEN mark had ever been used in the Canadian market.
e) The evidence of co-existing BAY marks was of limited value. The additional new evidence showed that a good portion of these registrations have been abandoned or removed from the register and there was no evidence as to the use, or extent of use of any of them.
As a result the court was satisfied that the average consumer, somewhat in a hurry, with an imperfect recollection would likely to be confused in thinking that BEYMEN was in some way connected with Hudson Bay and its marks in respect of their services and wares sold.
Comment
The decision appeal illustrates the current approach to a confusion analysis in the Federal Court. If Hudson Bay had filed the same evidence with the Opposition Board as it did on appeal the Board may have reached a similar conclusion.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer