Federal Court Decisions

                                                                                        T-937-96, T-938-96, T-939-96

                          IN THE MATTER OF SECTIONS 38, 56 AND 59

                                of the Trade-marks Act, R.S.C. 1985, c. T-13

                                                                 - and -

                     IN THE MATTER of an Appeal from the decision issued

                                by Registrar of Trade-marks in an opposition

                                           against Application No. 673,383

                             for the trade mark 007 SUBMARINE & Design

                                                                 - and -

                     IN THE MATTER of an Appeal from the decision issued

                          by the Registrar of Trade-marks in an opposition

                                           against Application No. 673,385

                                                   for the trade mark 007

                                                                 - and -

                     IN THE MATTER of an Appeal from the decision issued

                          by the Registrar of Trade-marks in an opposition

                                           against Application No. 673,388

                          for the trade mark 007 PIZZA & SUBS & Design

BETWEEN:

                                                         DANJAQ INC.

                                                                                                                               Appellant

                                                                 - and -

                          SPIRIDON ZERVAS & DIMITRA ZERVAS IN

                                      PARTNERSHIP TRADING AS 007

                                                                                                                           Respondent

                                          REASONS FOR JUDGMENTS

LUTFY J.:

            The appellant is the owner of the trade mark 007 and GUN Design and other marks associated with JAMES BOND, the fictional character created in Ian Fleming's novels and adapted for movies. The respondent seeks to register: (a) 007; (b) 007 PIZZA & SUBS and Design; and (c)007 SUBMARINE and Design as trade marks for its restaurant business. This appeal is from the decision of the Registrar of Trade-marks rejecting the appellant's opposition to the proposed registration.

The Decision of the Registrar

            The respondent applied for the registration of its trade marks to cover the following wares:

(1)            sandwiches, submarine sandwiches, coffee, milk, tea, flavoured and unflavoured non-alcoholic uncarbonated and carbonated beverages; natural juices, mixtures of natural juices;

(2)            pizzas, panzerotti and pastas; napkins, tablecloths, sandwich and pizza wraps; novelty items, namely pencils, buttons, calendars and thermometers; clothing, namely hats, caps, t-shirts, sweatshirts, shorts, pants, skirts, dresses, swimsuits, sweatpants, socks, scarves, ties

and the following services:

(1)            restaurant services, namely the selling of submarine sandwiches;

(2)            restaurant catering services, namely the selling of pizzas, panzerotti and pastas.

The respondent subsequently disclaimed the words PIZZA, SUBS AND SUBMARINE apart from the trade marks. The respondent claims use of its trade marks since July 15, 1989 concerning the sandwiches and beverages and the restaurant selling of submarine sandwiches. The trade marks are intended to be used for the other wares and services. The applications were filed in January 1991.

            The opposition to the proposed registration raises two principal grounds: (a) the respondent is not entitled to registration because the trade mark 007 had been previously used and made known in Canada; and (b) the respondent's trade marks are not distinctive from those of the appellant.[1]

            The Registrar concluded that the respondent's trade marks are distinctive and not confusing, principally because of the wide disparity in the wares, services and trades of the parties. He also found the appellant's evidence lacking, particularly with respect to the establishment of the use of its trade marks in Canada prior to the material date. In making his findings, he ruled inadmissible certain reply and hearsay evidence.

The Court's Standard of Review and Significant New Evidence

            This Court may intervene if the appellant demonstrates that the Registrar erred in the interpretation of the law or in the assessment of the facts.[2] The restraint often exercised in reviewing the decisions of specialized tribunals may not necessarily apply where evidence, in addition to that adduced before the Registrar, is filed with this Court pursuant to subsection 56(5) of the Trade-marks Act.[3] Where significant new evidence which was not before the Registrar is filed, a broader scope of review will be available upon appeal.[4] As Mr. Justice Joyal stated recently, "[t]he usual result is that the proceeding takes on the flavour of a trial de novo." [5]

            The appellant's bald assertions of its ownership of the trade marks are supplemented in this appeal by evidence of their registration under the appellant's name in several countries in Europe and in Australia, Japan, Taiwan, Mexico and the United States. In particular, the appellant filed the registration in the United States of its trade marks 007 and JAMES BOND 007 with respect to a wide-ranging list of goods and services.

            The Registrar received general information concerning fifteen motion pictures based on the BOND character. The appellant is the joint owner of the copyright in these films with United Artists Corporation. In appeal, the appellant established that these movies grossed over seventy million dollars in Canada between 1962 and 1987.

            The evidence in this Court is that many television stations throughout Canada have made and continue to make available these films for viewing. The affiant's assertion that the films were shown on these broadcasting outlets is on the record. It is not necessary, in my view, to establish the number of viewers for each individual broadcast, even if this information were available. Canadian broadcasting outlets acquired rights with respect to these films. I accept the evidence that the films have been and are being shown in Canada from time to time within the periods indicated.

            Similarly, the appellant's evidence concerning the video rentals of the same fifteen movies is more significant than the information filed with the Registrar. It is now clear that the JAMES BOND 007 with the GUN Design are identified with the trade mark (^tm) symbol on the sleeve packaging for each of the videos. This trade mark is registered by the appellant in various countries, including the United States. The same is true of the trade mark 007 with the GUN Design. The element 007 appears in the credits of at least ten of the fifteen films. References are made to007 either orally or in the credits in each of the films. Throughout the films, where JAMES BOND is speaking with senior officials of the secret service, the character is invariably referred to as 007. Brochures accompanying a collectors' set of certain of these films show the 007 and GUN Design trade mark in addition to the appellant's joint copyright in the 007 GUN logo with United Artists Corporation. There is no evidence that any party other than the appellant has rights in the trade mark.

            Finally, the evidence includes additional media references to the appellant's trade marks from magazines with important circulation within Canada. In my view, the appellant's use of data from the Audit Bureau of Circulations is appropriate for the limited purpose of establishing that Maclean's, Newsweek, Time and People magazines have a broad readership in Canada. I see no merit in an objection to hearsay evidence concerning general information with respect to which a court could just as well take judicial notice. The media stories are from magazines better known in Canada than the ones before the Registrar. These newspaper articles constitute evidence that the trade marks are widely referred to in Canada.[6]

            In summary, I have no hesitation in concluding that the additional information filed on appeal constitutes new significant evidence, relevant to the issues before the Registrar, which allows this Court the latitude of substituting its view for his.

Entitlement to Registration

            The respondent will not be entitled to registration: (a) if the appellant's trade marks were used or made known in Canada prior to the respondent's first use of its marks in July 1989; and (b) if the parties' trade marks are confusing. Where the respondent's use of trade marks is proposed for other wares and services, the material date is January 1991 when its applications were filed. This framework is set out in subsections 16(1) and (3) of the Act. The concepts of use and making known are set out in sections 4 and 5 of the Act.

            On the first point, I am satisfied that JAMES BOND 007 with the GUN Design and007 are trade marks which were used and made known in Canada prior to the respondent's first use. I have viewed the videotape of extracts from the movies. The trade marks are seen and heard on the films. The evidence concerning: (a) the revenues of seventy million dollars prior to 1987 from the distribution of the fifteen films featuring the JAMES BOND character, also known as agent 007; (b) the availability of the movies through television broadcasts and video rentals; and (c) the publicity generated by the print media, establishes both the use and the widespread recognition of the appellant's trade marks. It may have been preferable if the appellant had filed evidence of video rentals of these movies prior to 1993. The evidence of the availability of these video rentals in 1993 and in 1996 establishes the ongoing use of the trade marks. Even without taking judicial notice of the availability of the video rentals prior to 1991, my conclusion with respect to the use and publicity concerning the appellant's trade marks would be the same.

            The respondent challenges whether the presence of the trade marks in the movies and on the video jackets constitutes use, particularly where credit is given to two or more persons.[7] In this case, the trade mark symbol is placed adjacent to 007 with theGUN Design. That trade mark is registered by the appellant in various jurisdictions. In addition, the other side of the video sleeve packaging indicates that copyright in the GUN symbol logo is owned by the appellant and United Artists Corporation. Similarly, copyright in the films is attributed to the appellant and the United Artists Corporation. Different information is being communicated with respect to different rights. There is no indication in the evidence that the rights in the trade mark reside with more than one party. In United Artists Corp. v. Pink Panther Beauty Corp.,[8] my colleague Mr. Justice MacKay reached a similar conclusion where the opponent to the registration of a trade mark was also relying on its prior use in films through television and video rentals:

The appellant adduced evidence indicating that it had used its trade mark THE PINK PANTHER in association with several movie titles. In my view, the functional use of these titles does not derogate from the fact that that trade mark was used to associate the films with the appellant's predecessors, indicating that the films were from the same source. The respondent's suggestion that different individuals and corporations were credited with direction and production of various films does not, in my view, indicate a variety of origins for the films. Nor am I persuaded, as the respondent urged, that use of the trade mark in the title of a movie is not use as a trade mark, for in my view, the authorities cited for this do not support such a conclusion: See Walt Disney Productions v. 468108 Ontario Ltd. (1984), 2 C.P.R. (3d) 472 (T.M.Opp.Bd.), and Science & Health Trade Mk, [1968] R.P.C. 402 (Ch. Div.). In any event, the evidence adduced indicates the appellant's use of the trade marks was more than mere use of the trade mark in the film titles.

                 ...

In my opinion, the films themselves also demonstrate a connection to the trade mark. In Glen-Warren Productions Ltd. v. Gertex Hosiery Ltd. (1990), 29 C.P.R. (3d) 7, 32 F.T.R. 274, 19 A.C.W.S. (3d) 911 (T.D.), the court stated that the televising of the Miss Canada Pageant would cause viewers to associate the MISS CANADA name, a trade mark, with the pageant. Similarly, in this case, I am of the view that the showing of the appellant's films and cartoons, by television or through home video rentals, would lead viewers to associate the films and cartoons with the trade marks.

            On the second issue of confusion between the trade marks, I have reached a conclusion different than that of the Registrar. The relevant criteria in determining whether the competing trade marks are confusing are set out in section 6 of the Act, particularly subsection 6(5).[9] The Registrar appears to have focussed principally on one of these criteria in determining that the trade marks were not confusing because of the wide disparity in the nature of the wares and services of the parties. In my view, this approach is too narrow.

            The nature of the wares and services will be a less important factor where the opponent to the registration has a strong trade mark. It is trite law that the stronger the mark, the greater the ambit of the protection it will be afforded.[10] In this case, the appellant's trade marks are strong. Their inherent distinctiveness is enhanced through their wide recognition.[11] The respondent's first use is relatively recent. The JAMES BOND character, agent 007, has been made well-known through novels and films since 1962. The publicity surrounding the trade marks and their use continue. The likelihood of confusion may be enhanced when one of the marks is strong and even if the parties operate in different businesses.[12] In each of the respondent's three applications, 007 is either the only or the opening element of its trade marks. It proposes their application to some promotional wares which coincide in part with those listed in the appellant's U.S. registration of its marks. The opening element and the sound for the competing marks have a high degree of resemblance with the respondent's trade marks and, in particular, with its trade mark 007. If the respondent's goods and services become more readily available in a larger geographic area, chances of their association with the appellant's trade marks will increase.

            In light of the criteria set out in section 6, I conclude that the use of the parties' trade marks in the same area would likely lead to the inference that the wares or services associated with those marks are produced by the same person. There is, in my view, a strong likelihood of confusion. At the very least, it has not been established on the balance of probabilities that there is no likelihood of confusion. While this finding disposes of the appeal, I will now consider the second issue raised by the parties.

The Issue of Distinctiveness

            According to section 2 of the Act, "distinctive" in relation to a trade mark means a trade mark that actually distinguishes the wares and services in association with which it is used by its owner from the wares or services of others or is adapted so as to distinguish them.

            The respondent's business activity, at least for the moment, is in the restaurant selling of sandwiches and beverages. At first glance, one might be attracted to the disparity between the parties' goods and services and decide that the respondent's trade mark is distinctive. The respondent proposes, however, to use the trade mark with other promotional products. More significantly, the respondent acknowledges that he is "... reasonably well aware of the movies featuring BOND or 007 and in those movies, I never did see any restaurant services performed by 007." From this, I find that the respondent adopted 007 with knowledge of the prior use of the appellant's trade marks. The respondent's choice of 007 was deliberate and not unrelated to the mark's fame. In my view, a chain of 007 pizza, pasta and submarine sandwich outlets would not necessarily be distinguished, within the meaning of section 2, by the public from the applicant's wares and services. In these circumstances, I cannot conclude that the respondent's marks are distinctive even though they have been used with substantially different wares.

            In so deciding, I have relied on the judgment of my colleague Mr. Justice Dubé in Glen-Warren Productions Ltd. v. Gertex Hosiery Ltd.[13] where the applicant sought the registration of MISS CANADA for its ladies' hosiery business. That mark had been made famous by the pageant known by the same name. In the words of Mr. Justice Dubé:

In my view, in the case at bar, even if sales of hosiery would not appear at first blush to be related to a beauty pageant, it is likely that consumers might assume the organizers of the Miss Canada pageant had in some way approved, licensed, or sponsored the use of its trade mark by a business which markets hosiery under the MISS CANADA trade mark, or that there was some business connection between Hosiery and the Miss Canada pageant ... Therefore, I must conclude that Hosiery has not discharged the legal burden upon it of establishing that its trade mark MISS CANADA is really distinctive of its wares. [References omitted.][14]

This view is cogent, in my respectful opinion, in the particular circumstances of this action even though in other decisions concerning the section 2 definition of "distinctive", the wares or services are similar.[15]

            In my opinion, the respondent's trade marks are not distinctive.

Conclusion

            For these reasons, the appeal will be maintained. The decision of the Registrar rejecting the appellant's opposition is set aside. The appellant's opposition is maintained and the Registrar is directed to refuse the respondent's applications. These reasons will apply to the three appeals heard simultaneously with respect to the respondent's three applications.

            There will be no order as to costs.         

                                                                                                                                                                                              Judge

Ottawa, Ontario

July 31, 1997