Date: 20000706
Docket: T-2503-96
BETWEEN:
CORNELL TRADING LIMITED
Appellant
- and -
SAAN STORES LTD.
and
THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR ORDER
HENEGHAN J.
[1] This is an appeal pursuant to Sections 56 and 59 of the Trade-marks Act, R.S.C. 1985, c. T-13, relative to a decision of the Registrar of Trade-marks ("Registrar") which was delivered on September 18, 1996. In his decision, the Registrar rejected the opposition filed by Cornell Trading Limited (the "Appellant") against application No. 711,186 for registration of the trade-mark "CACHE CREEK", filed by Saan Stores Limited (the "Respondent").
Facts
[2] On August 20, 1992, the Respondent filed Application No. 711,186 (the "application"). This application was to register the trade-mark CACHE CREEK. The intended use of the trade-mark in Canada was in association with the sale of "clothing, namely, sweaters, tops, blouses, shirts, pants, slacks, jackets, coats, jumpsuits, rompers, short sets, shorts, skirts, dresses, skirt sets, suits and T-shirts" in retail stores operated by the Respondent.
[3] The Respondent"s application was advertised in the Trade-marks Journal on April 14, 1993 for opposition purposes.
[4] The Appellant is the owner of registrations No. 339,381 and 349,959 for the trade-mark "LA CACHE". The first registration of the trade-mark LA CACHE is for wares including ladies and mens" apparel (except underwear), household linens and home furnishings, tableware and gift items, and objets d"art.1 The second registration is for the operation of retail stores for the sale of wearing apparel (excluding underwear), household linens, home furnishings, tableware, gift items and objets d"art.2
[5] On June 11, 1993, the Appellant filed a Statement of Opposition, opposing the registration of the proposed trade-mark, CACHE CREEK, based on the following grounds:
| Saan Stores" trade-mark CACHE CREEK is not registrable pursuant to Section 12(1)(d) of theTrade-marks Act, as it is confusing with the Appellants trade-mark LA CACHE which is registered under Registration Nos. 339, 381 and 349,959; |
| Saan Stores is not the person entitled to registration of the trade-mark CACHE CREEK pursuant to section 16(3) of the Trade-marks Act; and |
| Saan Stores" trade-mark CACHE CREEK is not distinctive within the meaning of Section 2 of the Trade-marks Act. |
[6] Both the Appellant, as Opponent, and the Respondent, as Applicant, filed affidavits and written submissions in relation to the opposition proceedings.
[7] The Appellant filed the affidavit of David Hynes, the Comptroller of Cornell Trading Ltd. This affidavit addressed the business of the company, its retail operations, and the approximate sales figures from 1987 to 1993. The affidavit of David Hynes also addressed details as to advertising and promotion of goods bearing the LA CACHE trade-mark and information about expenditures made for advertising and promotional activities from1987 to 1993. The data given for sales and advertising costs for 1993 was stated to be incomplete.
[8] For its part, the Respondent filed the affidavits of Catherine Burnside and Lionel Walz. Ms. Burnside, a trade-mark searcher, provided state of the register evidence concerning trade-marks containing the component "cache" for wares in the clothing field.
[9] In his affidavit, Mr. Walz, the Department Merchandise Manager for children"s wear of Saan Stores Ltd., deposed as to the retail operation of the Respondent in the field of clothing and footwear. Mr. Walz indicated the type of clothing labels used in displaying the CACHE CREEK label as well as the retail dollar value of clothing and footwear sold from September 1, 1993 to October 1994. He provided samples of advertising used in relation to the goods and the cost of advertising during the period September 1993 to October 1994. Finally, Mr. Walz provided evidence of the use in Canada by other manufacturers of trade-marks containing the word "cache".
The Registrar"s Decision
[10] In his decision, the Registrar stated that each of the grounds of opposition raised in the Statement of Opposition turned on the issue of confusion between the applied for mark, CACHE CREEK, and the Opponent"s two registrations for the mark, LA CACHE. However, after considering the evidence and the submissions of counsel, the Registrar concluded that the applied for mark, CACHE CREEK, for clothing and footwear, is not confusing with the Opponent"s mark, LA CACHE used and registered in association with, among other things, clothing and clothing store services.
[11] The Registrar stated his conclusion as follows:
| Considering all of the factors discussed the [sic] above, and keeping in mind that the test for confusion is one of first impression and imperfect recollection, I find that the applied for mark CACHE CREEK for clothing and footwear is not confusing with the opponent"s mark LA CACHE used and registered in association with, among other things, clothing and clothing store services. In arriving at this conclusion, I have had particular regard to the relatively low inherent distinctiveness of the parties" marks as well as to the lack of evidence of acquired distinctiveness of the mark LA CACHE in connection with clothing or the retail sale of clothing; to the different ideas suggested by the marks in issue; to the evidence of at least some use by third parties of the component CACHE for trade-marks for clothing; and to the evidence of the actual businesses conducted by the parties [in this regard see McDonald"s Corporation v. Coffee Hut Stores Ltd. (Court No. A-278-94; June 5, 1996, F.C.A.). |
| In view of the above, the opponent"s opposition is rejected. |
The Notice of Appeal
[12] The Appellant filed its Notice of Appeal in relation to the Registrar"s decision on November 14, 1996. The Appellant raised several grounds of appeal:
| 10. The Respondent The Registrar erred in concluding that the Appellant"s mark LA CACHE as a whole possessed a relatively low degree of inherent distinctiveness in relation to the Appellant"s wares, including clothing items, and the operation of stores. |
| 11. The Respondent the Registrar erred in concluding that the Respondent Saan Stores Ltd."s mark CACHE CREEK possessed a higher degree of inherent distinctiveness than the Appellant"s mark. |
| 12. The Respondent the Registrar erred in concluding that no significant reputation was attached to the Appellant"s mark for a store selling clothing or for clothing per se. |
| 13. The Respondent the Registrar erred in concluding that the use by the Appellant of the trade-mark LA CACHE since 1975 in association with clothing and in association with retail stores since 1978 was not a factor that heavily favoured the Appellant. |
| 14. The Respondent The Registrar erred in concluding that the ideas suggested by the parties marks differed as the Appellant"s mark suggested a hiding place while the Respondent Saan Stores Ltd."s mark suggested a hidden creek. |
| 15. The Respondent The Registrar erred in concluding that the Respondent Saan Stores Ltd."s mark CACHE CREEK for clothing and footwear was not confusing with the Appellant"s mark LA CACHE used and registered in association with, among other things, clothing and clothing store services. |
| 16. The Respondent the Registrar erred in giving weight to the fact that the Appellant did not adduce evidence of instances of actual confusion. By so doing the Respondent the Registrar erred in law in applying improperly the burden of proof in opposition proceedings. For all intents and purposes, the Respondent the Registrar reversed the burden of proof. |
| 17. The Respondent The Registrar should have concluded that Respondent Saan Stores Ltd."s application for the trade-mark CACHE CREEK was not registrable and that the Respondent Saan Stores Ltd. had not met the burden resting upon it on the issue of confusion and entitlement. |
| 18. The Respondent The Registrar should have concluded, taking into account the evidence on hand and the applicable law, that the mark of the Respondent Saan Stores Ltd. was likely to cause confusion with the registered trade-mark of the Appellant Cornell Trading Ltd. under Section 12(1)(d) of the Trade-marks Act and that the Respondent Saan Stores Ltd. was not entitled to secure the registration for its application for the trade-mark CACHE CREEK in view of the prior use in Canada by the Appellant Cornell Trading Ltd. of the LA CACHE trade-mark. |
The Applicant"s Arguments
[13] At the time of the hearing, the Appellant focussed on the following submissions. First, the Appellant submitted that the Registrar erred in finding no evidence of instances of actual confusion between the Appellant"s trade-marks LA CACHE and the proposed trade-mark CACHE CREEK.
[14] Second, the Appellant argued that the Registrar further erred in his finding on the question of inherent distinctiveness in not looking at the two registrations for LA CACHE, one relating to merchandise and the second to the operation of retail stores, in assessing distinctiveness. The Appellant submits that the Registrar did not consider the distinctiveness of the mark in relation to the retail activities and did not consider the evidence concerning the packaging, cards and ribbons used in the retail activities, in reaching his conclusion on inherent distinctiveness.
[15] Third, the Appellant stated that the Registrar erred in his consideration of the question of acquired distinctiveness. In particular, the Appellant argues that the Registrar"s analysis about acquired distinctiveness and the extent to which LA CACHE had become known is the most significant error of his decision. The Registrar commented on the fair reputation acquired by the LA CACHE trade-mark in Canada in association with the operation of retail stores selling a variety of general merchandise. The Appellant says that the Registrar erred in relating the evidence before him specifically to the question of use in association with clothing in reaching his conclusion about the lack of a significant reputation for the Appellant"s trade-mark. In short, the Appellant says that the Registrar did not properly assess reputation in association with clothing or the sale of clothing in determining whether the mark LA CACHE had acquired distinctiveness.
The Respondent"s Arguments
[16] The Respondent submits that the Registrar did not err in determining that the marks were not confusing. The Respondent argues that the marks, through their appearance and sound, suggest different ideas. As well, the Respondent submits that the Appellant"s trade-mark is laudatory of its wares.
[17] The Respondent also alleges that the evidence adduced by the Appellant does not show that the mark has become known to consumer as originating from a particular source.
[18] Furthermore, the Respondent submits that the evidence offered by the Appellant leads to the interpretation that use of the mark has been in association with the operation of a retail store and there is only an estimate that 50% or more of sales in Canada relates to the sale of clothing.
[19] The Respondent also submits that in the case of inherently non-distinctive marks, a mere similarity in goods associated with the trade-marks is insufficient to cause confusion in the market place. The Respondent claims that in assessing the nature of the trade, the entire circumstances of that trade must be taken into account. The Respondent submits the actual business conducted by the parties is quite different, thereby making confusion of the mark more unlikely.
[20] Finally, the Respondent submits that the Board committed no error in giving weight to the fact that no evidence of actual confusion had been adduced by the Appellants.
Standard of Review
[21] The first question to be addressed is the standard of review which applies to an appeal from the Registrar of Trade-marks pursuant to sections 56 and 59 of theTrade-marks Act.
[22] Sections 56 and 59 of the Trade-marks Act read as follows:
| 56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months. |
56. (1) Appel de toute décision rendue par le registraire, sous le régime de la présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui suivent la date où le registraire a expédié l'avis de la décision ou dans tel délai supplémentaire accordé par le tribunal, soit avant, soit après l'expiration des deux mois. |
| 59. (1) Where an appeal is taken under section 56 by the filing of a notice of appeal, or an application is made under section 57 by the filing of an originating notice of motion, the notice shall set out full particulars of the grounds on which relief is sought. (2) Any person on whom a copy of the notice described in subsection (1) has been served and who intends to contest the appeal or application, as the case may be, shall file and serve within the prescribed time or such further time as the court may allow a reply setting out full particulars of the grounds on which he relies. (3) The proceedings on an appeal or application shall be heard and determined summarily on evidence adduced by affidavit unless the court otherwise directs, in which event it may order that any procedure permitted by its rules and practice be made available to the parties, including the introduction of oral evidence generally or in respect of one or more issues specified in the order. |
| 59. (1) Lorsqu'un appel est porté sous le régime de l'article 56 par la production d'un avis d'appel, ou qu'une demande est faite selon l'article 57 par la production d'un avis de requête, l'avis indique tous les détails des motifs sur lesquels la demande de redressement est fondée. (2) Toute personne à qui a été signifiée une copie de cet avis, et qui entend contester l'appel ou la demande, selon le cas, produit et signifie, dans le délai prescrit ou tel nouveau délai accordé par le tribunal, une réplique indiquant tous les détails des motifs sur lesquels elle se fonde. (3) Les procédures sont entendues et décidées par voie sommaire sur une preuve produite par affidavit, à moins que le tribunal n'en ordonne autrement, auquel cas il peut prescrire que toute procédure permise par ses règles et sa pratique soit rendue disponible aux parties, y compris l'introduction d'une preuve orale d'une façon générale ou à l'égard d'une ou de plusieurs questions spécifiées dans l'ordonnance. |
[23] The standard of review accorded to a Registrar"s finding with regard to confusion was reformulated in two recent cases to reflect the pragmatic and functional analysis which has emerged in administrative law. In Garbo Group Inc. v. Harriet Brown & Co.3, Justice Evans wrote:
| 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. |
| I am fortified in reaching this conclusion by the similar views expressed by Lutfy J. in Young Drivers, supra, even though on the facts of that case he did not find it necessary to reach a definitive conclusion on the issue.__He said: |
| If the issue of confusion can properly be characterised as a matter of mixed law and fact, the standard of review may be further down the spectrum from correctness.__The special knowledge and expertise of the Registrar may require greater deference, where no new evidence is adduced on appeal.__The determination on appeal may be closer to whether the Registrar's decision is "clearly wrong" or "unreasonable".4 |
[24] In Molson Breweries v. John Labatt Ltd.5, Justice Rothstein made similar remarks relative to the deference owed to a decision of a Registrar:
| I think the approach in Benson & Hedges v. St. Regis and in McDonald v. Silcorp are consistent with the modern approach to standard of review. Even though there is an express appeal provision in the Trade-marks Act to the Federal Court, expertise on the part of the Registrar has been recognized as requiring some deference. Having regard to the Registrar's expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar's decision.6 |
[25] In light of these two recent decisions, it is necessary to examine the further affidavits introduced by the Appellant and the Respondent on this appeal to determine if the further affidavits are such that they would have materially affected the Registrar"s findings of fact or his discretion.
New Evidence
[26] The additional affidavits submitted by the Appellant consist of the affidavits of Robert White and Clara Gomez. The affidavits of Karen Messer, Karen Paquette-Adams and Jason Gudofsky were filed by the Respondent.
[27] In terms of the new evidence filed by the Appellant, the purpose of the White affidavit was to provide information from the Audit Bureau of Circulation to demonstrate the advertising audience for the LA CACHE marks. The affidavit provided information about circulation figures for advertising of the Appellant"s wares for the period 1986 to 1995. Among other things, the Gomez affidavit purported to correct certain errors in the affidavit of David Hynes concerning annual sales and advertising and promotional expenses.
[28] With respect to the Respondent, two affidavits of Karen Messer, one of Karen Paquette-Adams and one of Jason Gudofsky were filed. The affidavits of Karen Messer, a trade-mark searcher, provided information about the state of the register for trade-marks with the component CACHE in association with clothing, subsequent to the decision of the Registrar.
[29] The affidavit of Karen Paquette-Adams contained information about her attendance at a LA CACHE store in Ottawa and her examination of the clothing at that store. Specifically, she deposed that she found that none of the clothing, nor any other article, bore the LA CACHE label7.
[30] Finally, the Gudofsky affidavit provided information as to the meaning of "cache" as found in both English and French language dictionaries.
[31] The Appellant submits that it has introduced new evidence on this appeal which is of such significance that this Court can treat the matter as a trial de novo. Moreover, the Appellant argues that the Registrar has erred in law, as outlined in the Appellant"s submissions and accordingly, this Court can intervene in relation to the findings on the lack of confusion or distinctiveness.
[32] The Respondent submits that there must be significant new evidence before the court on appeal may exercise its discretion in a totally unfettered manner. The Respondent submits the new evidence is not significantly material and consequently, a high degree of deference should be accorded to the Registrar"s decision.
[33] The standard of review applicable to the present matter is that expressed by this Court in Garbo, supra, and by the Federal Court of Appeal in Molson, supra. The decision of the Registrar is to be reviewed against the standard of reasonableness unless the introduction of new evidence which was not before him would have materially affected the decision.
[34] According to the Federal Court of Appeal in Molson, supra, the introduction of new evidence on an appeal pursuant to section 56(5) of the Trade-marks Act is to be examined from the perspective of whether its introduction before the Registrar would have materially affected his decision.
[35] The new evidence submitted by the Appellant purports to supplement the information initially presented to the Registrar. The affidavit of Clara Gomez contains "new" information about the operation of stores under the trade-mark LA CACHE, that is both those stores owned by the Appellant and those operated under franchise. The affidavit also introduces photographs of certain retail stores. It also provides additional information on annual sales figures relating to the sale of clothing, and illustrations of publicity posters as well as packaging, ribbons, cards and a bag in which purchases are packed. The affidavit of Clara Gomez also contains examples of advertising and promotional material, and information relating to expenditures for trade show activities.
[36] The new evidence introduced by the Appellant is of the same nature and kind, but of greater volume, than the evidence initially provided to the Registrar. There is no material difference between the original evidence of David Hynes and that introduced by the Appellant on this appeal.
[37] In my opinion, the new evidence introduced by the Appellant on this appeal is not such that it would have materially affected the Registrar"s conclusion on the issues of confusion and of distinctiveness.
[38] Having determined that the present matter is not a situation in which I must have regard to the matter de novo, it is necessary to consider the findings made by the Registrar on the key issues of confusion and of distinctiveness to determine if the findings are reasonable.
Issues
[39] The Appellant stated that there are two issues to be determined on this appeal. These issues are as follows:
| (1) Did the Registrar err in holding that Saan Stores" trade-mark CACHE CREEK is distinctive and is not confusing with the Appellant"s registered trade-mark LA CACHE which is also used in association with clothing? |
| (2) Did the Registrar err in holding that Saan Stores" trade-mark CACHE CREEK was registrable on the basis of proposed use in association with clothing? |
Analysis
[1] The key to this appeal is the issue of confusion. Confusion is also the ground upon which the Appellant opposed the Respondent"s application to register the trade-mark CACHE CREEK.
[2] In opposition proceedings, the party who seeks registration of the mark bears the onus of establishing an absence of likelihood of confusion. Accordingly, there is no onus on the objecting party8.
[3] It is for this reason that an opposing party need not show evidence of actual confusion9.
[4] In my opinion, the Registrar correctly stated the test for confusion in his decision. He considered the factors identified in section 6(5) of the Trade-marks Act. He did not base his conclusion that the marks were confusingly similar upon the lack of evidence of actual confusion. It appears that he considered the relevant factors before alluding to the fact that there "is no evidence of instances of actual confusion despite contemporaneous use of the marks since 1993." In my view, the Registrar here simply acknowledged that the evidence shows no actual evidence of confusion; he is not stating that he imported a requirement of actual confusion between the marks as part of his analysis or reasoning.
[5] Having determined that the Registrar did not err in assessing the burden of proof in opposition proceedings, it is necessary to determine whether the Registrar otherwise erred in reaching his conclusion that the mark CACHE CREEK is not confusing with the Opponent"s mark LA CACHE, as registered for both wares and services.
[6] Sections 6 of the Trade-mark Act, particularly subsections (1), (2) and (5) are relevant to this appeal. These subsections provide as follows:
| 6(1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section. (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. |
| 6(1) Pour l'application de la présente loi, une marque de commerce ou un nom commercial crée de la confusion avec une autre marque de commerce ou un autre nom commercial si l'emploi de la marque de commerce ou du nom commercial en premier lieu mentionnés cause de la confusion avec la marque de commerce ou le nom commercial en dernier lieu mentionnés, de la manière et dans les circonstances décrites au présent article. (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. |
[7] The wording of section 6(5) suggest that these factors are not exhaustive and the jurisprudence has confirmed that these factors do not carry equal weight.10
Inherent Distinctiveness
[8] The first factor listed under subsection 6(5) is inherent distinctiveness and the degree to which such marks have become known.
[9] In the present case, the Registrar found, on the evidence before him, that the Appellant"s trade-mark LA CACHE carried a low degree of inherent distinctiveness in relation to the wares and the operation of retail stores.
[10] The Appellant argues that the Registrar erred in that he did not look at the mark in relation to both registrations for the mark LA CACHE, namely the wares and the retail operations.
[11] I do not agree. The Registrar considered both registrations for the mark LA CACHE in determining that the mark possessed a low degree of inherent distinctiveness, and consequently, I am of the opinion that there are no grounds to disturb this conclusion.
[12] I refer to the decision of the Federal Court of Appeal in United Artists v. Pink Panther Beauty Corp.11:
| Marks are inherently distinctive when nothing about them refers the consumer to a multitude of sources. |
[13] Finally, I would note that inherent distinctiveness is only one of the factors enumerated in section 6(5) of the Trade-marks Act and cannot be considered in isolation from the other facts listed in section 6(5).
Acquired Distinctiveness
[14] Moreover, there is no evidence which is before me or which was before the Registrar to indicate that the wares in question, namely clothing, bore the LA CACHE trade-mark.
[15] Section 4(1) defines use of a trade-mark. It reads as follows:
| 4. (1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred. (2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services. (3) A trade-mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares. |
4. (1) Une marque de commerce est réputée employée en liaison avec des marchandises si, lors du transfert de la propriété ou de la possession de ces marchandises, dans la pratique normale du commerce, elle est apposée sur les marchandises mêmes ou sur les colis dans lesquels ces marchandises sont distribuées, ou si elle est, de toute autre manière, liée aux marchandises à tel point qu'avis de liaison est alors donné à la personne à qui la propriété ou possession est transférée. (2) Une marque de commerce est réputée employée en liaison avec des services si elle est employée ou montrée dans l'exécution ou l'annonce de ces services. (3) Une marque de commerce mise au Canada sur des marchandises ou sur les colis qui les contiennent est réputée, quand ces marchandises sont exportées du Canada, être employée dans ce pays en liaison avec ces marchandises. |
[16] The Gomez affidavit states:
| To partly illustrate the use which is now, and has been, effected throughout Canada by the Company of the trade-mark LA CACHE, the following are attached hereto en liasse to form part hereof as exhibits to this my Affidavit: |
| Exhibit CG-11: copies of publicity posters which were posted in various LA CACHE stores; |
| Exhibit CG-12: a pamphlet which was distributed in various LA CACHE stores; |
| Exhibit CG-13: ribbons used for the purposes of gift wrapping in the LA CACHE stores; |
| Exhibit CG-14: cards distributed in various LA CACHE stores; |
| Exhibit CG-15: a bag in which customer purchases are placed at the LA CACHE stores. |
[17] In light of this evidence and the evidence found in the affidavit of Karen Paquette-Adams submitted by the Respondent which indicates that the clothing did not bear the LA CACHE label and actually bore other labels, I cannot conclude, on the evidence submitted, that the Appellant has acquired a significant reputation such that the trade-mark LA CACHE has acquired distinctiveness in relation to clothing or to a store selling clothing.
[18] Therefore, despite the large volume of sales in relation to clothing reported by the Appellant, as well as the costs incurred for advertising and promotion, I still cannot conclude that the Registrar erred in stating that the LA CACHE trade-marks had not acquired distinctiveness, relative to clothing and the retail sale of clothing.
[19] As stated by Mr. Justice Linden in Pink Panther12, supra,
| To establish this acquired distinctiveness, it must be shown that the mark has become known to consumers as originating from one particular source. |
[20] This is not the case here. There are only estimates concerning sales of clothing and for annual sales figures relating to clothing. Instead, the Appellant has provided certain information relating to sales figures and promotional costs and invites the court to infer the existence of acquired distinctiveness from this data. In my opinion, the new evidence submitted by the Appellant does not justify the making of such inferences.
[21] In terms of the other grounds raised by the Appellant, I am of the opinion that the conclusions of the Registrar in relation to the length of time the marks have been in use, the nature of the wares and services, the nature of the trade and degree of resemblance between the marks must stand. No new evidence has been led by the Appellant which would materially affect these conclusions. Moreover, the decision of the Registrar as a whole is reasonable based on the evidence before me.
[22] Accordingly, I am satisfied that the Registrar did not err in concluding that there was no reasonable likelihood of confusion between the applied for mark CACHE CREEK and the Appellant"s mark LA CACHE.
[23] The appeal is dismissed with costs.
"E. Heneghan"
J.F.C.C.
OTTAWA, Ontario
July 6, 2000
__________________1Exhibit DH-1 to the affidavit of David Hynes.
3(1999), 3 C.P.R. (4th) 224 (F.C.T.D.).
5 [2000] F.C.J. No. 159, A-428-98 (February 3, 2000).
7Affidavit of Karen Paquette-Adams, Appellant"s Application Record, p. 952.
8Conde Nast Publications Inc. v. Gozlan Brothers Ltd. (1980), 49 C.P.R. (2d) 250 at 253 (F.C.T.D.).
9Standard Coil Products (Canada) Ltd. v. Standard Radio Corp. (1971), 1 C.P.R. (2d) 155 at 170 (F.C.T.D.), appeal dismissed without reasons (1976), 26 C.P.R. (2d) 288 (F.C.A.).
10 See Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (March 12, 1996, T-19530-94).