Date: 20000331
Docket: T-2429-96
Ottawa, Ontario, this 31st day of March 2000
| PRESENT: THE HONOURABLE MR. JUSTICE PELLETIER |
IN THE MATTER OF an Opposition by Christian Dior, S.A.
to Application No. 700,373 for registration of the trade mark DION
COLLECTION & DESIGN, filed by Dion Neckwear Ltd.
| AND IN THE MATTER OF Sections 56 and 59 of the Trade-Marks Act, R.S.C. 1985, c. T-13. |
BETWEEN:
DION NECKWEAR LTD.
Appellant
(Applicant)
- and -
CHRISTIAN DIOR, S.A.
Respondent
(Opponent)
- and -
THE REGISTRAR OF TRADE MARKS
Respondent
REASONS FOR ORDER AND ORDER
PELLETIER J.
[1] On March 6, 1992, the appellant, Dion Neckwear Ltd., filed an application to register its trade mark DION COLLECTION & Design based on use of the mark in Canada since at least as early as August 1, 1989 in association with "neckties, scarves and ascots", as well as being based upon proposed use of the trade mark in Canada in association with "shirts, sweaters, blouses, trousers, slacks, suits, socks, underwear, t-shirts, wallets, umbrellas, belts, watches and glasses". The appellant disclaimed the right to the exclusive use of the word COLLECTION apart from its trade mark. The application was advertised in the Trade Marks Journal on February 24, 1993.
[2] The respondent filed a statement of opposition to the proposed registration of such trade mark on March 24, 1993. The grounds of opposition were as follows:
| (a) The appellant"s application does not comply with section 30(i ) of the Trade-Marks Act in that it is false that the appellant has said that it is satisfied that it is entitled to use the mark in Canada in association with the wares covered in the appellant in that, as of the filing date of its application, the appellant should have known that its mark was confusing with the following registered trade marks of the opponent: |
| Trade mark Registration No. |
| DIOR 203,924 |
| CHRISTIAN DIOR 203,925 |
CHRISTIAN DIOR MONSIEUR 190,518
| CHRISTIAN DIOR 203,927 |
| DIOR 203,928 |
| DIOR & Design 323,994 |
| DIOR 2 Design 356,392 |
CHRISTIAN DIOR & Design 362,646
| CHRISTIAN DIOR UCA50698 |
| CHRISTIAN DIOR UCA43937 |
| DIOR UCA50697 |
| (b) The appellant"s trade mark is not registrable in that it is primarily merely the surname of an individual who is living or has died within the preceding thirty years; |
| (c) The appellant"s trade mark is not registrable in view of the provisions of section 12(1)(d ) of the Trade-Marks Act in that the appellant"s trade mark is confusing with the following registered trade marks of the opponent: |
| Trade mark Registration No. |
| DIOR 203,924 |
| CHRISTIAN DIOR 203,925 |
CHRISTIAN DIOR MONSIEUR 190,518
| CHRISTIAN DIOR 203,927 |
| CHRISTIAN DIOR 203,926 |
| DIOR 203,928 |
| DIOR & Design 323,994 |
| DIOR 2 Design 356,392 |
CHRISTIAN DIOR & Design 362,646
| CHRISTIAN DIOR UCA50698 |
| CHRISTIAN DIOR UCA43937 |
| DIOR UCA50697 |
| (d) The appellant is not the person entitled to registration of the trade mark DION COLLECTION & Design in that, as of the claimed date of first use of August 1, 1989, the appellant"s trade mark as applied to "Neckties, scarves and ascots" was confusing with the trade marks of the opponent identified in the third ground which had previously been used in Canada by the opponent and its predecessors-in-title; |
| (e) The appellant is not the person entitled to registration of the trade mark in that, as of the appellant"s filing date, the appellant"s trade mark as applied to "shirts, sweaters, blouses, trousers, suits, socks, underwear, t-shirts, wallets, umbrellas, belts, watches, and glasses" was confusing with the trade mark of the opponent identified in the third ground which had previously been used in Canada by the opponent and its predecessors-in-title; |
| (f) The appellant"s trade mark is not distinctive in that the appellant"s trade mark is confusing with the opponent"s trade mark identified above. |
[3] By counterstatement dated June 1, 1993, the appellant denied the grounds of opposition set out above.
[4] Before the Registrar, the appellant"s evidence consisted of the affidavit of Stuart Nifoussi and the affidavit of Peter Tsihlias in support of the application. There were no cross-examinations on the affidavits.
[5] The respondent filed the affidavit of Faiza Joakim and the affidavit of Fabienne Havet in support of the opposition. As its evidence in reply, the respondent filed a second affidavit of Fabienne Havet. There were no cross-examinations on the affidavits.
| [6] Following the filing of written arguments and the oral hearing, the Registrar rejected the appellant"s application for the registration of the trade mark DION COLLECTION & Design: |
| In view of the above, and even bearing in mind the inherent weakness of the opponent"s DIOR trade-marks, I am still left in doubt as to whether there would be a reasonable likelihood of confusion between the applicant"s trade-mark DION COLLECTION & Design and the opponent"s registered trade-marks DIOR in view of the degree of visual similarity between the trade-marks as applied to overlapping wares travelling through the same channels of trade. I have concluded, therefore, that the applicant has failed to meet the legal burden upon it in respect of the issue of confusion in relation to the Section 12(1)(d) ground of opposition. |
[7] The Registrar therefore refused the appellant"s application on the third ground of the respondent"s statement of opposition.
[8] A notice of appeal was filed on November 4, 1996, in which the appellant alleged that the Registrar erred in fact and in law when he decided that the appellant"s trade mark DION COLLECTION & Design was likely to be confused with the respondent"s DIOR trade marks.
[9] In support of its appeal, the appellant filed a second affidavit of Peter Tsihlias and the affidavit of François Potvin. The affidavit of Peter Tsihlias deposed that DION COLLECTION ties sold for a price in the range of $100 to $140 while Dior ties sold for a price in the range of $60 to $75. Mr. Tsihlias also reported his observations on the placement of Dion merchandise in those cases where one retailer, such as the Bay, sold both lines. It was his evidence that the Dion line was marketed in a more exclusive area of the store while the Dior line was marketed on the main floor, a less exclusive location, in his opinion. The affidavit of François Potvin showed the results of his search of books of names with respect to the names Dion, Dionne, Dionysius and other similar names.
[10] The respondent chose to adduce no further evidence before this Court.
[11] In its Notice of Appeal, the appellant identified fourteen errors which would entitle it to the relief it seeks, registration of its trade mark. A careful reading of those grounds shows that they are either legal conclusions drawn from the evidence before the Registrar i.e. "The applicant"s trade mark DION COLLECTION & Design, when considered in its entirety, possesses little inherent distinctiveness" or findings of fact i.e. "There have been no instances of confusion". The significance of the greatest part of these errors is that they are building blocks for the Registrar"s conclusion on the subject of confusion. I am mindful of the admonition of Joyal J., a very experienced and learned judge in these and other matters, who observed that:
| Nevertheless, as every court of review was reminded by the Supreme Court of Canada in the case of Boulis v. The Minister of Manpower and Immigration, [1974] S.C.R. 875 at 885 per Laskin J., decisions by administrative boards should not be analyzed or parsed microscopically as if one were dealing with a matter of statute interpretation. I view this comment to mean that such decisions must be read as a whole to give them an overall meaning undeterred by a certain lack of precision in the language used, or by the occasional ambiguity of expression or even by a seeming void in one of the more relevant fields of enquiry which the decision-maker is statutorily required to address. What I understand to be the wiser course is to look at all the reasons advanced by the Registrar, analyze these reasons in the context of all the evidence adduced and only thereafter conclude if any of the errors alleged are so material that a court may reasonably infer that the Registrar misdirected himself in weighing the evidence or effectively misapplied the law. |
| Matsushita Electric Industrial Co. v. Panavision, Inc.[1992] F.C.J. No. 19 |
[12] The issue is whether the Registrar erred in his conclusions as to confusion between the appellant"s mark and the opponent"s registered marks. Whether the Registrar was correct in every intermediate step in his reasoning is less important than whether, taking the evidence as a whole, he came to a legally sustainable conclusion. In this case, the conclusion to which he came is that the appellant had not discharged the onus of showing that there was no reasonable likelihood of confusion between the DION COLLECTION & Design mark and the opponent"s DIOR marks. It is this conclusion which is the subject of this appeal.
[13] The standard of review applicable to decisions of the Registrar of Trade-Marks was recently the subject of analysis by my colleague Evans J. (as he then was) in Garbo Group Inc. v. Harriet Brown & Co. [1999] F.C.J. No. 1763. The learned judge reviewed the factors to be considered in a pragmatic and functional analysis of the decision-making power under review and concluded that:
| To conclude, it is my opinion after weighing these factors that, despite the inclusion in the Trade-Marks Act of an untrammelled right of appeal and the right to adduce additional evidence, a considerable degree of deference is called for on the part of the appellate Court when reviewing the Registrar's finding of confusion, provided at least that no significant new evidence has been adduced on a factual issue and it is not alleged that an error of law has been committed. |
| Given, in particular, the expertise of the Registrar on the question of confusion, the reasons for vesting decision-making in the Registrar, and the nature of the rights at stake, "unreasonableness simpliciter", which was said in Southam, supra, to be synonymous with "clearly wrong", is in my opinion the most appropriate of the three standards of review currently available. |
[14] Evans J. also considered the issue of the impact of new evidence, which is alluded to in the passage quoted above. He concluded that new evidence must be significant before it affects the deference accorded to the Registrar"s decision:
| As for the impact on the standard of review of the filing of additional evidence on an issue at the appeal, much will depend on the extent to which the additional evidence has a probative significance that extends beyond the material that was before the Registrar. If it adds nothing of significance, but is merely repetitive of existing evidence without enhancing its cogency, its presence should not affect the standard of review applied by the Court on the appeal. |
| If, on the other hand, the additional evidence goes beyond what was in substance already before the Registrar, then the Court should ask whether, in the light of that material, the Registrar reached the wrong decision on the issue to which that evidence relates and, perhaps, on the ultimate decision as well. The more substantial the additional evidence, the closer the appellate Court may come to making the finding of fact for itself. |
[15] In this case, it is my view that the additional affidavit evidence is of a piece with the evidence which was before the Registrar. The new evidence of Mr. Tsihlias supplements his first affidavit and particularizes his assertion that the DION COLLECTION mark is directed to a more upmarket clientele than Christian Dior (see paragraph 17 Affidavit of Peter Tsihlias sworn May 6, 1994 p. 314 Applicant"s Record). The affidavit of François Potvin relates the results of his comprehensive search of books of names in an attempt to show that Dion is a first name and not a family name (see paragraph 15 Affidavit of Peter Tsihlias supra p. 313 Applicant"s Record). It also speaks to the price of Christian Dior ties and the use of the mark Dior solely in connection with Christian Dior. While there is new material here, it is not such as to cast the facts in a different light. It does not have a "probative significance that extends beyond the material that was before the Registrar". If in the result, I do not agree that no deference should be paid to the decision of the Registrar though, this does not relieve me of the obligation of examining the decision carefully.
[16] All but one of the grounds of opposition to the appellant"s registration have in common the element of confusion, the allegation that the proposed mark is confusing with the opponent"s registered marks. The Trade-Marks Act (the "Act"), R.S.C. c. T-13 defines "confusing"1 and by extension, "confusion" by reference to section 6 of the Act . The statutory definition contains the following elements:
| (2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. (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 (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
(b) the length of time the trade-marks or trade-names have been in use; (c) the nature of the wares, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them. |
| (2) L'emploi d'une marque de commerce crée de la confusion avec une autre marque de commerce lorsque l'emploi des deux marques de commerce dans la même région serait susceptible de faire conclure que les marchandises liées à ces marques de commerce sont fabriquées, vendues, données à bail ou louées, ou que les services liés à ces marques sont loués ou exécutés, par la même personne, que ces marchandises ou ces services soient ou non de la même catégorie générale. (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_: a) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus; b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage; c) le genre de marchandises, services ou entreprises; d) la nature du commerce; e) le degré de ressemblance entre les marques de commerce ou les noms commerciaux dans la présentation ou le son, ou dans les idées qu'ils suggèrent. |
[17] The onus of showing absence of confusion is on the appellant:
| The onus is upon an applicant for the registration of a trade-mark to establish his right thereto and that onus is constant upon him (see Eno v. Dunn (1890), 15 App. Cas. 252) and that includes the onus of showing that confusion is unlikely. |
| But before an opponent can base an objection on prior use under s. 16 the opponent must establish a reputation in the trade under a style with which confusion may result. That to me is not an onus but a burden of proof. An onus never shifts but a burden of proof does. The applicant may rebut the proof proffered by the opponent |
| British American Bank Note Co. Ltd. v. Band of America National Trust and Saving Association et al. (1983) 71 C.P.R. (2d) 26. |
[18] The question of onus is of some significance in this matter because of the Registrar"s finding that he was "left in some doubt as to whether there would be a reasonable likelihood of confusion between the appellant"s trade mark DION COLLECTION & Design and the opponent"s registered trade marks DIOR in view of the degree of visual similarity between the trade marks as applied to overlapping wares travelling through the same channels of trade." He therefore concluded that the appellant had failed to discharge the onus upon it of demonstrating a lack of confusion.
[19] In coming to the conclusion he did, the Registrar made the following observations, which are organized in relation to the various headings in section 6(5):
| 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: |
| ( a) the inherent distinctiveness of the trade marks or trade names and the extent to which they have become known. |
| -the trade marks DION COLLECTON & Design and CHRISTIAN DIOR, DIOR, MONSIEUR, and CHRISTIAN DIOR & Design possess little inherent distinctiveness. |
| -the trade marks DIOR & Design and CHRISTIAN DIOR & Design posses a minor degree of distinctiveness by virtue of the design features which they include. |
| -the CHRISTIAN DIOR trade mark has become relatively well known in Canada in connection with men"s clothing and accessories, the DIOR mark less so. |
| -the DIOR mark has had limited use in the market place and such use as there has been, has generally been secondary to the use of the CHRISTIAN DIOR trade mark. |
| -both trade marks suggest the surname of an individual as their primary significance |
| ( b) the length of time the trade marks or trade names have been in use; |
| -the extent to which the marks have become known and the length of use of the CHRISTIAN DIOR mark, as opposed to the DION COLLECTION mark, favours the respondent. |
| -the extent to which the marks have become known and the the length of use does not favour either party as it relates to the DION COLLECTION & Design and DIOR marks, though DIOR may have a slight advantage with respect to length of use. |
| ( c) the nature of the wares, services or business; |
| -the wares covered by the appellants proposed registration and the respondent"s registration overlap. |
| -the wares of both parties are sold through to the public through the same retail outlets. |
| ( d) the nature of the trade; and |
| -the average consumer would not exercise a great deal of care to distinguish between the wares of the two parties. |
| ( e) the degree of resemblance between the trade marks or trade names in appearance or sound or in the ideas suggested by them. |
| -the DION COLLECTION & Design trade mark is similar in appearance to the respondent"s DIOR trade marks though somewhat less similar in sound. |
| -there is little resemblance in appearance or sound between the DION COLLECTION & Design trade mark and the CHRISTIAN DIOR trade marks. |
| Under the heading of surrounding circumstances, one finds the following conclusion. |
-no evidence of actual confusion was produced despite concurrent use of the marks.
[20] The appellant takes issue with a number of these findings or to the use to which they are put. The appellant is particularly critical of the fact that the Registrar is left in doubt as to a reasonable likelihood of confusion between DION COLLECTION & Design and the DIOR trade mark in circumstances where, the appellant says, there is a gap in the evidence as to the extent of use of the DIOR trade mark. The missing information was within the knowledge of the respondent and was not produced, which should lead to an adverse inference being drawn.
[21] Taking the appellant"s argument to its logical conclusion, what would the result be if the respondent had introduced no evidence at all as to the use of the DIOR trade mark. Would the appellant then be able to argue that it is entitled to registration since there is no evidence on which confusion could be established? The answer is found in the following passage from UAP v. Automaxi (1994) 59 C.P.R.(3d) 82 (F.C.A.), [1993] F.C.J. No. 204, where Létourneau J.A. says:
| It should be noted that s. 6 of the Act assumes, for the purposes of the comparison between the disputed trade marks, that each of them is used in a hypothetical market and the existence of confusion at the date of the Registrar's decision is to be determined on the basis of that assumed use. I adopt these comments by Daniel R. Bereskin: "Also, in Canada, confusion in relation to a registered trade mark is tested in a hypothetical marketplace where the two marks are both deemed to be used." ("Trade Mark Use", published in Trade Marks Law of Canada (Scarborough, Ontario: Carswell Thomson Professional Publishing, 1993), at p. 99.) |
[22] Since the likelihood of confusion is to be assessed in a hypothetical market, deficiencies in the evidence of use cannot per se undermine a finding as to confusion though, as Létourneau J.A. points out, evidence of lack of use could be an element in a finding that confusion would not be likely. That is not the case here.
[23] The appellant attacks the Registrar"s findings on the issue of distinctiveness. Much argument was addressed to the question of whether DION was primarily merely a surname, a finding which would negate distinctiveness and be a bar to registration. The Registrar found that it was but that there was sufficient matter to the trade mark apart from the surname to potentially warrant registration as a trade mark. The appellant"s evidence was that Dion was a contraction of Dionysius, the god of wine in Greek mythology. His affidavit deposes that he chose the name, in part, to honour his friend Dion Zachariou, a Greek performing artist of some reputation. In the circumstances, the appellant contests the finding that Dion"s primary significance is as a surname.
[24] In Standard Oil Co v. Registrar of Trade Marks (1968) 55 C.P.R. 49 (Exch), [1968] 2 Ex. C.R. 523, the Court was faced with the issue of the registrability of FIOR as a trade mark. The evidence of the appellant was that the word was a coined word made by combining the first letters of the words "fluid iron ore reduction" hence FIOR. The opponent tendered evidence showing a small number of occurrences of Fior as a surname in various telephone directories. On the issue of the meaning of "primarily merely", Jackett P. said this:
| Certainly, from the point of view of the people called "Fior" and their immediate circle of friends and acquaintances, the answer is that FIOR is principally if not exclusively a surname, and, from the point of view of the trade mark advisers of the appellant, the answer is that it is principally, if not merely, an invented word. The test, for the purposes of s. 12(1)(a) is not, in my view, the reaction of either of those classes of persons. The test must be what, in the opinion of the respondent or the Court, as the case may be, would be the response of the general public of Canada to the word. My conclusion is that a person in Canada of ordinary intelligence and of ordinary education in English or French would be just as likely, (if the two characters (surname and invented word) are of equal importance, it cannot be said that it is "primarily merely" a surname), if not more likely, to respond to the word by thinking of it as a brand or mark of some business as to respond to it by thinking of some family of people (that is, by thinking of it as being the surname of one or more individuals). |
[25] The test is not what the proponents think the name represents but the impression of the general public, that is a person of ordinary intelligence and education. Nor is the test whether a word has a meaning other than as a surname as contended by the appellant, relying on Nishi v. Robert Morse Appliances Ltd. (1990) 34 C.P.R. (3d) 161 (F.C.T.D.), [1990] F.C.J. No. 1016. The issue in that case was whether Nishi, a Japanese surname which also means "west" was not registrable as being "primarily merely" a surname. It is clear from the Registrar"s analysis, which Teitelbaum J. accepted, that he decided the issue on the basis of the understanding which an ordinary Canadian would have of the significance of the word. While the learned Judge referred to the fact that Nishi means "west", he also spoke of the public reputation of a Mr. Nishi, who was well known in the electronics industry. It is clear that he considered the effect of the name upon the general public to be determinative of the issue. If the general public would recognized the mark as the name of an individual, then the mark may not be registrable. However, if the general public understood the word in some other sense, the fact that it is someone"s name would not be fatal to registration. This is consistent with the approach adopted by Jackett P. in Standard Oil, supra .
[26] In this case, the Registrar found that Dion would generally be perceived to be a surname, especially in Quebec. It cannot be said that he was wrong in this. Nor can it be said that he was wrong in finding that DION COLLECTION & Design lacked distinctiveness due to its primary significance as a surname. As for the extent to which the design features add distinctiveness to the overall trade mark, that is a matter uniquely within the competence of the Registrar, and in the absence of some obvious error, I would not be inclined to disturb his findings. No obvious error has been made out.
[27] This finding as to lack of distinctiveness leads to the conclusion which underlies the Registrar"s position as to confusion: his finding that "the appellant"s trade mark DION COLLECTION & Design is similar in appearance to the opponent"s DIOR trade marks although the marks bear somewhat less similarity in sounding. Further, while both marks suggest the surname of an individual as their primary significance, neither party is entitled to a monopoly in respect of such an idea." This finding is challenged for a number of reasons, some of which have already been dealt with, i.e. the primary significance of the names, and the effect of the design elements. The remaining issues are the arguments relating to the possibility of confusion between DION and DIOR. The appellant argues that it is unlikely that there would be any mistake that wares bearing the DION COLLECTION & Design trade mark would be mistaken for goods originating from the same source as goods bearing the DIOR trade mark. It says this on the basis that the public are skilled at discriminating between personal names and notice small differences, with the result that anyone recognizing a product carrying the Dion name would not confuse it with a product bearing the Dior name. This would be so if the test were whether confusion would result from an accurate perception of the trade marks and the wares. The test however is that of "first impression and imperfect recollection" Mr. Submarine Ltd. v. Amandista Investments Ltd. [1988] 3 F.C. 91 (F.C.A.), [1987] F.C.J. No. 1123. Applying that test and given the findings as to same channels of trade, I am not prepared to say that the Registrar erred.
[28] Having regard to the evidence as a whole, the Registrar"s conclusion that he was left in doubt as to the reasonable likelihood of confusion between the appellant"s trade mark DION COLLECTION & Design and the respondent"s trade mark DIOR cannot be said to be clearly wrong, which is the standard of review applicable to this situation. While a different Registrar could have found for the appellant on the same evidence, this Registrar did not; his decision is not subject to being set aside simply because the evidence is evenly balanced. The appeal is therefore dismissed.
ORDER
The appeal is hereby dismissed with costs to be assessed.
"J.D. Denis Pelletier"
Judge
__________________
1"confusing", when applied as an adjective to a trade mark or trade name, means a trade mark or trade name the use of which would cause confusion in the manner and circumstances described in section 6; "créant de la confusion" Relativement à une marque de commerce ou un nom commercial, s'entend au sens de l'article 6.