Date: 19980220
Docket: T-580-96
| IN THE MATTER OF sections 38 and 56 of the Trade-marks Act, R.S.C. 1985 c.T-13 |
| AND IN THE MATTER OF AN APPEAL from a decision of the Registrar of Trade-marks dated January 10, 1996 respecting an opposition by Motorola, Inc. and Motorola Canada Inc. to Canadian Trade-mark Application No. 634,548 for the trade-mark FONOROLA Design |
BETWEEN:
FONOROLA, INC.,
Appellant (Applicant)
- and -
MOTOROLA, INC. and MOTOROLA CANADA INC.
- and -
THE REGISTRAR OF TRADE-MARKS
Respondents (Opponents)
REASONS FOR JUDGMENT
TREMBLAY-LAMER J.:
[1] This is an appeal pursuant to subsection 56(1) of the Trade-Marks Act1 ("Act") from the decision of the Registrar of Trade-Marks refusing the Appellant"s application for registration of the trade-mark "FONOROLA Design" on the basis that it was confusing with the Respondents" registered trade-mark "MOTOROLA".
FACTS
[2] The Appellant, Fonorola Inc., is a publicly traded company incorporated under the laws of Canada with shares on both the Toronto Stock Exchange and the Montreal Stock Exchange. It specializes in the provision of long distance telephone services mainly in the Montreal and Toronto markets. On June 19, 1989, it applied for registration of the trade-mark "FONOROLA Design" in association with "telecommunications services" for proposed use in Canada. The application was accepted by the Trade-Marks Office and advertised for opposition.
[3] A year later, on June 29, 1990, an opposition was commenced by the Respondents. The first Respondent, Motorola Inc., is an American corporation which manufactures a variety of electronic products, such as portable and mobile communication equipment, pagers and cellular phones. It is the owner of the registered trade-marks "MOTOROLA" (Nos. UCA12938 and UCA27656) and "MOTOROLA & "Bat" Design" (No. TMA170,577), covering a variety of electronic products and services related to their maintenance, installation and repair. The second Respondent, Motorola Canada, is the Canadian distributor of Motorola Inc.
[4] The Respondents challenged the Appellant"s application on five grounds. Four of these grounds revolved around the idea that there was a likelihood of confusion between the Appellant"s trade-mark and the Respondents" trade-marks. As a result of this likelihood of confusion, the Respondents alleged that (i) the Appellant"s trade-mark was not registrable under paragraph 12(1)(d) of the Act ; (ii) the Appellant was not entitled to registration pursuant to paragraph 16(3)(a); (iii) the Appellant was not entitled to registration pursuant to paragraph 16(3)(c); and (iv) the Appellant"s trade-mark was not distinctive.
[5] The Registrar allowed the opposition and refused the application. In reaching his decision, he relied solely on the paragraph 12(1)(d) ground of opposition, holding that the Appellant "failed to satisfy the legal burden on it to show that its mark is not confusing with the registered mark MOTOROLA".2 He found that the Appellant"s trade-mark is not inherently strong and that it is only known to some extent in the business communities in Toronto and Montreal. In contrast, the Respondents" trade-mark is inherently distinctive, has been used for many years and is well known throughout Canada in association with a wide range of telecommunications wares and services. The Registrar was also of the opinion that the Appellant"s services associated with its trade-mark were related to the Respondents" wares and services associated with their registered trade-mark and that there could be an overlap in their trades. Finally, he held that there was a visual and phonetic resemblance between the trade-marks.
[6] The Appellant is appealing the decision on the ground that the Registrar erred in finding there was a likelihood of confusion. The parties have been trading side by side throughout the Canadian market for many years without actual confusion. The nature of the wares, services and channels of trade associated with their respective trade-marks are disparate and distinct. Their trade-marks are also not sufficiently similar to give rise to a likelihood of confusion.
[7] The Respondents submit that the Registrar"s decision to allow the opposition is sound and should be upheld. There is a reasonable likelihood of confusion between the two trade-marks when one takes into account their close degree of resemblance, the distinctiveness and fame of the "MOTOROLA" trade-marks and the close relationship and overlap between the wares and services in question.
ANALYSIS
[8] Before determining the issue of confusion, I must decide whether to deal with the appeal as a trial de novo, as suggested by the Appellant. It has been held that where the Court has the benefit of considering new evidence, its discretion is totally unfettered by the previous decision of the Registrar.3 However, the new evidence must be significant enough to warrant a trial de novo. As stated by Strayer J. In Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. et al.:4First, the appellant urged me to treat the matter as completely de novo without regard to the chairman"s decisions. While I accept that these appeals involve determinations of fact which I am entitled as a registrar to make, in my view the court should be reluctant to reverse the finding of the registrar or chairman unless it is clearly satisfied that he came to the wrong conclusion on the facts or unless there is significant new evidence place before the court that was not before the registrar .5 [Emphasis added]
[9] While the Appellant did adduce evidence that was not before the Registrar, I do not find this new evidence to be significant. It consists mainly of additional sales figures confirming that the Appellant"s business is rapidly growing. It does not entitle the Court to treat the matter as a trial de novo without regard to the Registrar"s decision.
[10] I will now examine the first ground of opposition raised by the Respondent. Under paragraph 12(1)(d) of the Act, a trade-mark is not registrable if it is confusing with a registered trade-mark. The relevant date for assessing confusion pursuant to the paragraph 12(1)(d) is the date of the Registrar"s decision, namely January 10, 1996 in the case at bar.6
[11] Confusion is determined in accordance with the test set forth in subsection 6(2) of the Act which states that a trade-mark is confusing if it is likely to lead to the inference that the wares or services associated with the trade-mark are manufactured, sold, leased, hired or performed by the owner of another trade-mark, whether or not the wares or services are of the same general class. This test is to be applied from the perspective of the ordinary customer and is one of first impressions, as stated by Décary J.A. in Miss Universe, Inc. v. Bohna:7To decide whether the use of a trade-mark or of a trade-name causes confusion with another trade-mark or another trade-name, the Court musk ask itself whether, as a matter of first impression on the minds of an ordinary person having a vague recollection of that other mark or name, the use of both marks or names in the same area in the same manner is likely to lead to the inference that the services associated with those marks or names are performed by the same person, whether or not the services are of the same general class.8
[12] The likelihood of confusion is determined after weighing various factors enumerated in subsection 6(5) of the Act and other surrounding circumstances, including evidence of actual confusion:
| 6.(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
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6. (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_:
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[13] Each of the above criteria need not be given equal weight. The facts of each case justify giving greater importance to one criterion over another.9
[14] After having reviewed the criteria at the relevant date, I do not believe that the Registrar wrongly decided the issue of confusion.
1.Inherent distinctiveness of the trade-marks, the extent to which they have become known and the length of time they have been in use
[15] The inherent distinctiveness of a trade-mark refers to its originality. An "invented" or "coined" word has more inherent distinctiveness than a commonly used word. A mark with significant inherent distinctiveness is considered a strong mark and is given a broader scope of protection than a mark lacking inherent distinctiveness, as is evidenced by this statement from A. Lassonde & Fils Inc. v. Imperial Tobacco Ltd. et al.:10First, as regards the distinctiveness of a trade mark, it is settled law that the more distinctive a mark is from other marks in association with the wares and services for which it is used, the more it acquires an intrinsic force which makes it easier to protect. Consequently, a trade mark may be described as weak or strong according to whether it is not distinctive enough or is unquestionably distinguishable because, for example, the words making it up were coined.11
[16] The Appellant argues that the trade-mark "MOTOROLA" does not possess a high degree of inherent distinctiveness and should not benefit from a broad scope of protection. It represents the combination of the word "motor" suggesting "motion" - which is a direct allusion to the car radio for which the trade-mark was coined - and the common suffix "-ola" used in many other trade-marks (for example, COCA-COLA and VICTROLA). I disagree with this proposition.
[17] In my view, the trade-mark "MOTOROLA" is inherently distinctive. It is a coined word which is non-descriptive of the wares and services with which it is associated. The word "motor" does not suggest "motion". It is more suggestive of an object with a motor, like an automobile or a truck, than radios, televisions, pagers or mobile communication equipment.
[18] In contrast, the Appellant"s trade-mark does not possess the same degree of inherent distinctiveness. There is nothing distinctive about the prefix "Fon-". It is suggestive of the word "phone" which is a direct reference to the type of services offered by the Appellant.
[19] As for the extent to which to which the trade-marks have become known and the length of time in which they have been in use, the Appellant"s evidence shows that its trade-mark has been used in Canada since September 1989,12 and primarily in the Toronto and Montreal business communities.13 It has been used in connection with the Appellant"s long distance telephone services, having been reproduced on the company"s invoices, letterhead, business cards, signs etc.14 The trade-mark has also been used in advertising the Appellant"s services in various media.15
[20] The evidence before me indicates that the "MOTOROLA" trade-mark has acquired a wide notoriety in Canada. It has been used in Canada since the late 1930s in association with a variety of communication equipment.16 Its reputation is such that the 1995 ranking of the most valuable brand names by the New York based Financial World placed the "MOTOROLA" trade-mark in fourth position.17 There is also evidence of widespread use of its pagers in the Canadian market.18 In 1995, Motorola paging carriers represented approximately 66"% of the total number of licensed paging carriers in Canada.19
[21] Therefore, I am satisfied that the evidence establishes that the Respondents" trade-mark is inherently distinctive and has acquired wide notoriety over the years. The Appellant"s trade-mark is not as distinctive and has not become known in Canada to the same extent. It should not be afforded the same scope of protection as the Respondents" trade-mark.
| 2. Nature of the wares and services |
[22] The Appellant"s contention is that the parties are not engaged in common fields of activity. The Respondents are in the business of manufacturing and selling electronic equipment, whereas the Appellant operates the network over which long distance telephone communications are carried.
| [23] I disagree with the Appellant. In determining whether there is an overlap, it must be remembered that it is the services listed in the Appellant"s application for registration which must be compared with the wares and services listed in the Respondent"s registration. As stated by Thurlow J.A. in Mr. Submarine Ltd. v. Amandista Investments Ltd.:20 Before addressing these considerations it should be noted that the appellant"s right to the exclusive use of "Mr. Submarine" is not confined to those parts of Canada in which the appellant and its licensees have carried on business but extends throughout Canada. The appellant is thus entitled to its exclusive use in any additional outlets for its sandwiches that it may see fit to establish. Nor is the appellant"s exclusive right confined to the sale of sandwiches by the methods it now employs or has employed in the past. Nothing restricts the appellant from changing the colour of its signs or the style of lettering of "Mr. Submarine" or from engaging in a telephone and delivery system such as that followed by the respondent or any other suitable system for the sale of its sandwiches. Were it to make any of these changes its exclusive right to the use of "Mr. Submarine" would apply just as it applies to its use in the appellant"s business as presently carried on. Whether the respondent"s trade marks or trade names are confusing with the appellant"s registered trade mark must accordingly be considered not only having regard to the appellant"s present business in the area of the respondent"s operations but having regard as well to whether confusion would be likely if the appellant were to operate in that area in any way open to it using its trade mark in association with the sandwiches or services sold or provided in the operation.21 |
[24] The Appellant seeks protection for "telecommunications services" in general. This covers a broad range of activities beyond long distance telephone services. As noted by the Registrar, "telecommunications" is defined in Webster"s Third New International Dictionary22 as "communication at a distance (as by cable, radio, telegraph, telephone, or television)". The Respondents" wares and services are encompassed within this definition.
[25] MOTOROLA Registration No. UCA12938 includes "telecommunications systems" and "apparatus for telecommunications systems". Further, the evidence shows that the Respondents" products could be used in conjunction with long distance telephone services performed by FONOROLA. The Respondents market and distribute their own line of cellular phones. Anyone owning a Motorola cellular phone could use the long distance telephone services provided by Fonorola. There is also evidence of a potential overlap in that MOTOROLA offers a data communication service which could also be used to carry voice.23
| 3. Degree of resemblance between the trade-marks |
[26] The Appellant maintains that the trade-mark "FONOROLA Design" bears little similarity with the Respondents" trade-mark "MOTOROLA". First, the prefixes are both visually and phonetically different. Second, the Appellant"s mark includes a design element. Third, the trade-marks do not suggest similar ideas. The Respondents" trade-mark suggests "motion" and the Appellant"s, something related to "voice" or "sound".
[27] I disagree with the Appellant. It is established that when comparing two trade-marks, one must avoid any attempt to dissect them into their parts. Rather, it is the totality of the marks that must be compared.24 In my opinion, when viewed in their entireties, there is a strong phonetic and visual resemblance between the words "FONOROLA" and "MOTOROLA". Both words have four syllables, both have the vowels "O" and "A" at the end, but more importantly, both have similar pronunciation and appearance arising out of the suffix "-orola".
[28] While I do acknowledge that previous decisions of this Court have indeed stated that the first syllable of a word is far more important for purposes of identifying a trade-mark25 since people have a tendency of slurring the ending of a word, I nevertheless believe that the suffix "-orola" has a significant impact on the impugned marks as a whole . This is due to its uniqueness. As was stated in the Affidavit of Lloyd Kubis, Vice-President of Motorola Canada Limited, the Respondents" trade-mark was the only "-orola" mark on the market, at least until the Appellant applied for registration.26
[29] Therefore, I am convinced that with the combination of all the similarities noted above, someone who has a vague recollection of "MOTOROLA" could easily be confused upon seeing or hearing "FONOROLA". It is likely, in my view, that such a person could mistakenly conclude that the name "FONOROLA" is in some fashion associated with "MOTOROLA".
| 4. Additional surrounding circumstances |
[30] While the Respondents have only provided evidence of one incident of confusion, it is nevertheless probative of a likelihood that confusion will occur. The Affidavit of Joyce Evans27 relates an incident in which her long distance service was changed without her authorization from Bell Canada to another service which she originally identified as Motorola, but which appears to have been Fonorola. She filed a complaint against Motorola. While Ms. Evans later realized that it was Fonorola that was behind the switch, she nevertheless was confused as a matter of first impression.
[31] In light of the foregoing, I am of the opinion that, as of the date of the Registrar"s decision the trade-mark "FONOROLA Design" was likely to create confusion in the minds of the purchasing public who might well associate it with the wares and services of the Respondents. Therefore, I find that the Appellant has failed to meet the onus to show that the Registrar was wrong in refusing the application. Given this conclusion, it is unnecessary to the address the other grounds of opposition.
[32] The appeal is dismissed with costs.
JUDGE
OTTAWA, ONTARIO
February 20, 1998
__________________3 Glen-Warren Productions Ltd. v. Gertex Hosiery Ltd. (1990), 29 C.P.R. (3d) 7 at 11 (F.C.T.D.); Molson Companies Ltd. v. Registrar of Trade Marks et al. (1985), 3 C.P.R. (3d) 216 at 219 (F.C.T.D.).
4 (1987), 14 C.P.R. (3d) 133 (F.C.T.D.).
5 Ibid. at 135. In Glen-Warren Productions, supra note 3 at 11, Dubé J. indicates that the factual situation must be "drastically affected" before the discretion of the Court will be totally unfettered by the Registrar"s decision.
6 Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at 422-424 (F.C.A.).
8 Ibid. at 621-622. See also Mr. Submarine Ltd. v. Amandista Investments Ltd., "1988 > 3 F.C. 91 at 99-100 (C.A.).
9 Kellogg Salada Canada Inc., supra note 4 at 137.
10 (1988), 17 C.P.R. (3d) 8 (F.C.T.D.).
12 Affidavit of Andrée Noël, Certified Record, vol. 1 at par. 2.
13 Affidavit of Lloyd Kubis, Certified Record, vol. 2 at par. 50.
16 Supra note 13 at par. 4, 6.
17 Affidavit of John Rankin, Trial Record, Tab 6 at par. 9.
21 Ibid. at 102-103. See also Henkel Kommanditgesellschaft Auf Aktien v. Super Dragon Import Export Inc. (1987), 12 C.P.R. (3d) 110 at 112 (F.C.A.).
22 (Springfield, Massachusetts: Merriam-Webster, 1986) at 2349.
23 Supra note 13 at par. 34-35.
24 Sealy Sleep Products Ltd. v. Simpson"s-Sears Ltd. (1960), 33 C.P.R. 129 at 135-136 (Ex. Ct.).
25 Conde Nast Publications Inc. v. Union des Editions Modernes (1980), 46 C.P.R. (2d) 183 at 188 (F.C.T.D.).