Federal Court Decisions

     T-2376-96

IN THE MATTER OF Sections 38 and 56 of the Trade-marks Act, R.S. 1985, c. T-13

AND IN THE MATTER OF an Appeal from a Decision rendered on behalf of the Registrar of Trade-marks dated August 27, 1996

BETWEEN:

     PAUL R. HASKETT,

     Appellant

     (Applicant),

AND:

     QUEENSWEAR INTERNATIONAL LTD./LTÉE.

     Respondent

     (Opponent).

     REASONS FOR JUDGMENT

JOYAL, J.:

     In this appeal, the Appellant seeks to set aside a decision of a Trade-marks Hearing Officer in which she refused his application, No. 651,177, to register the trade-mark BAFFIN ISLAND BEACH CLUB ESTABLISHED 20?? for use in association with the following wares:

clothing, namely pants, shorts, skirts, shirts, sweatshirts, T-shirts, sweaters, jackets, bathing suits, coverups, hats, belts, shoes, sandals, socks; tote bags; hampers; beach towels, umbrellas, chairs, tables, beach balls, drinking glasses, trays; sunglasses; sun tan oils and lotion, sunscreen.

     For anyone who has some knowledge of Canadian geography, a casual glance at this mark makes evident a certain whimsical, fanciful and humorous character. Somehow, wares like beach balls, beach towels and bathing suits are not readily identifiable with Baffin Island, any more than a tourist would be tempted to visit a beach club there.

     Nevertheless, an opposition to the application was filed by the Respondent, Queenswear International Ltd./Ltée, on the following grounds:

1.      The mark is confusing with respect to the trade-mark BAFFIN BAY, registered by the Opponent (Respondent) on January 27, 1978, under No. 225,655, in association with substantially identical wares, namely: men's, ladies' and children's wearing apparel, consisting of sweaters, pants, outer-jackets, overcoats, raincoats and suits.

2.      The Applicant (Appellant) is not entitled to registration by reason of this confusion.

3.      The proposed mark is not distinctive.

4.      The application does not comply with the requirements of Section 30 of the Trade-marks Act ("the Act"), and more particularly paragraph 30(e), since the Applicant does not intend to use the trade-mark in Canada in association with its wares.

     The Hearing Officer later came to terms with the issue of the proposed mark's registrability, and on behalf of the Registrar of Trade-marks, refused the application. The Hearing Officer cited two main grounds for this: firstly, that she was left in doubt as to the Applicant's compliance with paragraph 30(e) of the Act, and secondly, that she was not satisfied that the Applicant had met the legal burden of showing that there would be no reasonable likelihood of confusion between the trade-marks at issue.

     As is well recognized, an appeal under section 56 of the Act is normally to consider whether the Registrar was right in his determination of the question, or whether he had failed to act judicially or was manifestly wrong. Otherwise, his decision cannot be treated lightly and considerable weight will attach to the decision. As often happens, however, pursuant to sub-section 56(5), additional evidence is adduced at the appeal stage. The usual result is that the proceeding takes on the flavour of a trial de novo.

     On the first ground for refusal, additional evidence was filed to satisfy this Court that whatever doubts might have remained with respect to compliance with paragraph 30(e), the Registrar need have no more concerns on that score. The Appellant filed as exhibit a sample of a T-shirt with the trade-mark printed in an elaborate design, and the wording "Naturals by Cameo", which is simply the name of the business which prepared the sample, and not a registered user or licensee.

     On the second ground for refusal, that of the onus upon the Applicant to prove that there would be no reasonable likelihood of confusion with the registered trade-mark BAFFIN BAY, the Hearing Officer was quite right in ruling that the burden of remaining within the provisions of the Act rests pretty exclusively on the Applicant, that the wares covered by both marks are substantially the same, and that the Opponent's mark has been used extensively in Canada and has become well-known.

     On appeal, the Appellant added considerably to the pieces of evidence in support of his case. These may be cited as follows:

1.      The one common word in the two marks is BAFFIN, and as with geographical names generally, the field of trade-mark protection is somewhat limited.

2.      Corporate registration records disclose a number of uses of BAFFIN, BAFFIN BAY and BAFFIN ISLAND. The names of some 25 such corporations can be found.

3.      As a trade-mark, the word BAFFIN is found in eight registrations in the Trade-marks Register, covering wares such as winter boots, art works and art services, frozen desserts and a multitude of lines of clothing.

     In these circumstances, the eyes and mind of a casual observer are not directed to the geographical name BAFFIN or BAFFIN BAY or BAFFIN ISLAND, but to BAFFIN ISLAND BEACH CLUB ESTABLISHED 200??. In my view, the whimsy or the humour of it is pretty evident to the reasonable man, that legal fiction found aboard the Claphman Omnibus. It might not be evident to a person completely ignorant of Canadian geography or suffering from some form of intellectual deprivation, but that is neither here nor there. The test of confusion is one of "reasonable" likelihood.

     If on the evidence before her, the Hearing Officer could find that the Appellant had not discharged the burden of disproving a reasonable likelihood of confusion, this Court, with all due respect and on the strength of additional evidence, may reach a different conclusion. Therefore, without implying that the state of the Register is determinative in "confusion" cases, I am satisfied that the burden on the Appellant has now been met.

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     In the circumstances, I should allow the appeal.

     L-Marcel Joyal

     _________________________

     J U D G E

O T T A W A , Ontario

June 27, 1997.