BETWEEN:
and
Heard at Edmonton, Alberta, on December 12, 2005.
Judgment delivered at Edmonton, Alberta, on December 12, 2005.
REASONS FOR JUDGMENT BY: NOËL J.A.
CONCURRED IN BY: ROTHSTEIN J.A.
MALONE J.A.
Docket: A-55-05
Citation: 2005 FCA 429
CORAM: ROTHSTEIN J.A.
NOËL J.A.
MALONE J.A.
BETWEEN:
SUZANNE'S INC.
Appellant
and
AULD PHILLIPS LTD.
Respondent
REASONS FOR JUDGMENT
NOËL J.A.
[1] This is an appeal from a decision of Simpson J. of the Federal Court who granted the Respondent's application to expunge the Appellant's trade-mark "Suzanne's" from the Trade-marks Register pursuant to subsection 57(1) of the Trade-marks Act, R.S.C. 1985, c. T-13.
[2] While the Appellant raised a number of grounds of appeal in its memorandum of fact and law, the only arguments pursued on appeal related to the Trial Judge's conclusion that the Appellant's mark had lost its distinctive character and had become publici juris at the date that the Respondent's application had been commenced.
[3] The Appellant, first argues that the Trial Judge made an overriding and palpable error as there was no evidence to support this conclusion. Alternatively, it submits that a single infringer like the Respondent cannot alone be the cause of a loss of distinctiveness.
[4] With respect to the first argument it suffices to say that, contrary to what the Appellant asserts, there was ample evidence to support the Trial Judge's conclusion that confusion was widespread and of sufficient duration to cause the Appellant's mark to lose its distinctiveness. I need only note the rapid expansion of the Respondent's operations in Alberta and the extensive use which the Respondent made of its mark in the market which the Appellant considered as its own.
[5] As to the second argument, the question whether a trade-mark has lost its distinctiveness so as to become publici juris is one of fact [Caricline Ventures Ltd. v. ZZTY Holdings Ltd., [2002] F.C.J. No. 1600 (F.C.A.) at paras. 9 and 12; Novopharm Ltd. v. Bayer v. Bayer Inc. (2000), 9 C.P.R. (4th) 304 (F.C.A.) at para. 6]. Counsel for the Appellant appeared to recognize as much but argued - based on the following quote from Harold J. Fox, The Canadian Law of Trade-marks and Unfair Competition, 3d ed. (Toronto: The Carswell Company Limited, 1972), at 287, n54 - that a single infringer cannot cause a mark to lose its distinctiveness:
A few scattered and unprosecuted infringements by several traders is not sufficient to cause a mark to become publici juris [footnote omitted] nor will extensive infringement by a single trader be sufficient.54 [emphasis added]
[...]
54. Dubiner v. Cheerio Toys and Games Ltd. (1965), 32 Fox Pat. C. 37 at 54; Ford v. Foster (1872), 7 Ch. App. 611 at 625; Treasure Cot Co. Ltd. v. Hamley Bros. Ltd. (1950), 67 R.P.C. at 90, per Harman J.; see also Lazenby v. White (1871), 41 L.J. Ch. 354n; Kuhn & Co.'s Trade Mark (1878), 53 L.J. Ch. 238; Hyde & Co.'s Trade Mark (1878), 7 Ch.D. 724; Re Heaton's Trade Mark (1884), 27 Ch.D. 570; National Starch Mfg.Co. v. Munn's Patent Maizena & Starch Co., [1894] A.C. 275, 11 R.P.C. 281; Singer Mfg. Co. v. Spence (1893), 10 R.P.C. 297; Singer Mfg. Co. v. British Empire Mfg. Co. Ltd. (1903), 20 R.P.C. 313.
[6] I do not believe that the quote in question was meant to exclude the possibility that a single infringer be the cause of the loss of distinctiveness. None of the cases footnoted by Fox stand for that proposition. The rule that runs through all these cases is best reflected by the statement of the Privy Council in National Starch Mfg. Co. and the Glen Cove Mfg. Co. v. Munn's Patent Maizena & Starch Co. and others, [1894] A.C. 275, 11 R.P.C. 281 at 293:
No full or exhaustive definition can be given of the circumstances which will make a word or name publici juris, and each case must depend upon its own facts.
[7] Obviously, it will be a rare occurrence when one party is in a position to cause a mark to lose its distinctiveness, but nothing in principle prevents this result. In the present case, there was evidence to support the conclusion that the Appellant's trade-mark had lost its distinctiveness, and the fact that the Respondent was the sole cause of this loss is of no assistance to the Appellant.
[8] The appeal will be dismissed with costs.
"Marc Noël"
_________________________________
J.A.
"I agree"
"Marshall Rothstein J.A."
"I agree"
"B. Malone J.A."
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: A-55-05
APPEAL FROM A ORDER OF THE HONOURABLE MADAM JUSTICE SIMPSON, DATED JANUARY 17, 2005, DOCKET NO. T-233-04
STYLE OF CAUSE: SUZANNE'S INC. V.
AULD PHILLIPS LTD.
PLACE OF HEARING: EDMONTON, ALBERTA
DATE OF HEARING: DECEMBER 12, 2005
REASONS FOR JUDGMENT BY: NOËL J.A.
CONCURRED IN BY: ROTHSTEIN, MALONE JJ.A.
APPEARANCES:
| FOR THE APPELLANT
|
|
|
THOMAS K. O'REILLY
|
FOR THE RESPONDENT
|
SOLICITORS OF RECORD:
|
KIRWIN & KIRWIN #101; 14310 - 111 AVENUE EDMONTON, ALBERTA T5M 3Z7 |
FOR THE APPELLANT
|
|
FIELD LLP 2000; 10235 101 STREET EDMONTON, ALBERTA T5J 3G1 |
FOR THE RESPONDENT
|