Remo Imports Ltd. v. Jaguar Canada Ltd.

Remo Imports Ltd. v. Jaguar Canada Ltd.
Court (s) Database
Federal Court Decisions
Date
2006-01-16
Neutral citation
2006 FC 21
File numbers
T-1473-91
Decision Content
Date: 20060116
Docket: T-1473-91
Citation: 2006 FC 21
Ottawa, Ontario, January 16, 2006
PRESENT: THE HONOURABLE MR. JUSTICESHORE
BETWEEN:
REMO IMPORTS LTD
Plaintiff/
Defendant by Counterclaim
and
JAGUAR CARS LIMITED and FORDMOTOR COMPANY OF CANADA, LIMITED/FORD DU CANADA LIMITEE carrying on business as JAGUAR CANADA
Defendants/
Plaintiffs by Counterclaim
REASONS FOR JUDGMENT AND JUDGMENT
OVERVIEW
[1] Subsequent to 14 years of preparation time by the parties for this trial, and an eight-week trial that spanned for over a year, after more than 6,000 exhibits, 200 binders, dozens of brochures and tens of actual accessory samples, such as suitcases, briefcases, knapsacks, key chains, vehicle wallets, key fobs and dinky toys, the analysis of the evidence was made possible by the kind assistance of Madame Sylvie Baillargeon and Mr. Alain Dernek, two registrars of the Federal Court. It is they, who catalogued and organized the material, assisted by two most able individuals, who worked as archivists for the respective legal counsel of both parties, Ms. Bettina Murphy and Mr. Tyson Neil. Madame Mireille Legault deserves special mention. It is she who put this judgment into printed format, ensuring that the end notes were included and cited.
In addition, it is noted that due to the fact that for closing arguments, the two parties filed four and eight binders, respectively, for a further twelve binders (six of which consisted of authorities), the parties were asked to submit within a week a summary of closing arguments, in no longer than 90 page memoranda as to what, respectively, they considered essential to their positions. This, both parties, kindly did.
Emerson said the essence of all is found in simplicity.
This trademark case has at its core one question: who has a right to what, when and for what purpose?
(1) who - which company?
(2) what - for which trademark?
(3) when - for what time period and when does it begin?
(4) for what purpose - which products?
TABLE OF CONTENTS
OVERVIEW................................................................................................................................... 1
TABLE OF CONTENTS.............................................................................................................. 3
INTRODUCTION......................................................................................................................... 6
the action and the counterclaim............................................................................ 9
Structure of the decision.......................................................................................... 10
BACKGROUND FACTS............................................................................................................ 10
Fact Witnesses.......................................................................................................................... 10
Remo Witnesses.................................................................................................................................................................. 10
Jaguar Cars Witnesses....................................................................................................................................................... 18
Expert Witnesses...................................................................................................................... 22
Jaguar Experts...................................................................................................................................................................... 22
Remo Experts........................................................................................................................................................................ 26
The reliability and validity of the various surveys................................ 27
The 1998 Jaguar Car Awareness Survey.......................................................................................................................... 28
The 1998 Jaguar Briefcase Survey.................................................................................................................................... 33
The 2004 Jaguar Luggage / Knapsack / Wallet / Key Case Survey............................................................................. 34
The 2004 Jaguar Advertising Survey............................................................................................................................... 36
The Report of Mitch Bergesen (The BAV Data; Marketing Evidence; The Regression Analysis)....................... 43
The Report of Professor Moorthy.................................................................................................................................... 51
Landor Survey...................................................................................................................................................................... 60
Conclusion of the Court - Re Survey Evidence............................................ 61
DETAILED FACTS.................................................................................................................... 62
Jaguar Cars Sales Since 1936................................................................................................... 62
Jaguar Cars considered luxury vehicles.................................................................................. 63
JAGUAR cars have become famous in 1980, 1991 and are at present................................... 65
Agreed Facts........................................................................................................................................................................ 65
Worldwide Promotion.................................................................................................................. 65
Promotion in Canada................................................................................................................... 66
Evidence of Reputation................................................................................................................ 69
Jaguar Cars has been connected with personal accessories including Luggage Wares since at least the 1950's....................................................................................................................................................... 71
Jaguar Cars expanded its accessories line in the early 1980's.................................................. 72
The expansion of Jaguar Cars in the early 1980's and thereafter into a broader range of personal accessories including Luggage Wares was a natural expansion and commercial value to JAGUAR Cars connection for consumers with the famous JAGUAR car mark...................................................................... 75
Uses of Luggage Wares by other car companies........................................................................................................... 75
Remo's acknowledgment.................................................................................................................................................... 76
The Jaguar Cars Registration for some of its personal accessories....................................... 77
Remo has since 1973 sold personal accessories in Canada using the trademarks REMO, BEAU SAC and SACSIBO...................................................................................................................................... 77
Remo adopted the trademark JAGUAR in 1980 claiming no knowledge of the Jaguar Cars mark 78
Remo's registrations................................................................................................................ 79
Remo's Sales............................................................................................................................. 79
Remo's extension application................................................................................................... 80
Remo's Massive Advertising Campaign in 1999..................................................................... 81
Remo's sales have included low end products and low end chain stores................................ 81
Chronology of key dates............................................................................................ 82
ISSUES......................................................................................................................................... 84
ANALYSIS................................................................................................................................... 85
Validity of Remo Trademark Registration............................................................................... 85
Ambit of Protection............................................................................................................................................................. 86
Goodwill................................................................................................................................................................................ 88
Natural expansion of goodwill........................................................................................................................................... 89
Connecting factors between cars and luggage............................................................................................................... 99
Depreciation Factors - General........................................................................................................................................ 101
Taking a Valuable Asset................................................................................................................................................... 104
Lost Exclusivity (Dilution)................................................................................................................................................ 105
Tarnishment........................................................................................................................................................................ 107
Possibility of deception.................................................................................................................................................... 108
Likelihood of Confusion................................................................................................................................................... 112
Surrounding Circumstances............................................................................................................................................. 119
Conclusion concerning confusion.................................................................................................................................. 120
Non-Distinctive.................................................................................................................................................................. 121
Conclusion concerning distinctiveness......................................................................................................................... 126
Invalidity of Remo's Registration................................................................................................................................... 126
Validity of Jaguar Cars Trademark Registrations for the Objected Wares.......................... 127
Depreciation, Infringement and Passing Off by Remo........................................................... 129
No Infringement or Passing Off by Jaguar Cars.................................................................... 132
Costs....................................................................................................................................... 132
CONCLUSION.......................................................................................................................... 132
JUDGMENT.............................................................................................................................. 133
END NOTES.............................................................................................................................. 137
INTRODUCTION
[2] "In cases involving similar, famous trade-marks much of the jurisprudence has little precedential value. The cases turn on the particular and often unique facts. Two marks are seldom similar or dissimilar in the same way. Two cases do not often involve the same types of businesses or the same types of customers. As a result cases decided in the past may be interesting, but not generally helpful with regard to a decision of this kind..." Mr. Justice Linden of the Federal Court of Appeal in Pink Panther Beauty Corp v. United Artists Corp. (C.A.), [1998] 3 F.C. 534, [1998] F.C.J. No. 441 (QL) at p. 566 at para. 39.
[3] After much deliberation and a detailed, in depth, review of the evidence, the closing arguments and the summary closing arguments of both parties, the Court is in agreement with the essence reflected in the Defendants' legal arguments. Although the Court is in disagreement with the Defendants' expert witnesses' analysis in regard to its mandated surveys, that is simply, and only, due to the inherent methodology of the surveys, justified by the experts, and, with which the Court intrinsically disagrees.
[4] The Socratic method, whether used consciously or subconsciously, in any matter, wherein there are two or more sets of experts, requires logic to understand issues of a specific discipline or specialization. When court time is spent by opposing parties to examine the logic of the answers of experts or the consistency of definitions or explanations which forms the basis of the experts "informed" conclusions, in the final analysis of the Court, all answers are not considered equally valid or accorded the same weight. In such an examination, there is acceptance and refutation. Thus, the Socratic method (again, consciously and subconsciously applied) necessitates humility to avoid arbitrariness on the part of the Court. This is to ensure a continuous striving for fairness whereby no premise of an expert, when confronted by one of the parties, is accepted as a given but rather is considered with humility by the Court for the purpose of its assessment.
[5] Therefore, in regard to the surveys and the evidence of the experts, the Court, further to reflection, is in basic agreement with the analysis of the Plaintiff, yet, in and of itself, that does not alter the Court's analysis, reached in conclusion, after consideration of the evidence as a whole. Although the ultimate outcome remains the same as that argued by the Defendants, in terms of the interpretation of the law, doctrine and jurisprudence, it is noted that both parties, respectively, claim that each, at the executive levels, did not know of the existence of the other at the outset of the legal proceedings; and the evidence itself, even if interpreted conversely by the respective parties, did not demonstrate otherwise; thus, the parties should be made to live with the consequences thereof for the past; by corollary, therefore, and even more so, it then becomes readily apparent through the evidence that the respective clienteles of the respective parties were different, as was the marked separation in the market place of the respective products of both parties. Remo sells its accessories, mainly, to low-end and sometimes medium-range retail stores; whereas, Jaguar Cars sells its accessories either through its automobile dealerships or directly to its buyers with no intermediary.
[6] Therefore, the Plaintiff is not ordered to pay any exemplary, punitive or other damages; nevertheless, as explained in the reasons of the judgment below, the Defendants have a right to their "famous" trademark, thus, the Plaintiff's trademark, bearing the name Jaguar is to be expunged.
[7] It is the Court's ultimate conclusion that even if confusion did not take place in the past, it has the potential to exist which, in and of itself, is of major significance. Again, since each party, at its executive levels, claims it did not "consciously" or "directly" know of the existence of the other prior to the outset of legal proceedings, neither party should be financially accountable to the other for the past, nor should either party suffer financial consequences based on that past (other than costs which remain to be determined); with respect to the future that would be a different matter, and therefrom flows the judgment.
the action and the counterclaim
[8] This is an action dated June 5, 1991 by the Plaintiff Remo Imports Ltd. (Remo) against Jaguar Cars Limited and Ford Motor Company of Canada Limited (Jaguar Canada) (jointly Jaguar Cars) for infringement and passing off of Remo's trademark JAGUAR, registration number 263,924, registered on October 30, 1981 for tote bags and luggage, and on January 11, 1984 for hand bags and school bags, by reason of the sale by Jaguar Cars of the wares: driving licence cases, wallet cases, business card holders, belts, credit card holders, key cases, address books, note books, passport holders, beauty cases, document cases, pocket wallets ("Objected Wares") in association with the trademark JAGUAR. Remo also seeks to expunge the Objected Wares from Jaguar Cars registrations 378,643 and 378,644 for JAGUAR and for JAGUAR AND LEAPER DESIGN.
[9] Jaguar Cars' counterclaimed on March 6, 1992 for expungement of Remo's registration on the basis that, as at Remo's adoption of the trademark JAGUAR in 1980 it was and continues to be invalid because it was likely to depreciate the value of the goodwill attaching to Jaguar Cars registration UCA21,618 for JAGUAR for cars, was confusing therewith and deceived the public, and was not distinctive. Jaguar Cars also claim relief for depreciation, infringement and passing off.
[10] The core issue in both the action and the counterclaim which registration is valid. All other issues flow from that result.
Structure of the decision
[11] Due to a most extensive documentation and presentation by the parties, a detailed background is provided prior to a presentation of issues. The validity of the specific trademarks to wares of the respective parties can only be resolved subsequent to an essential examination of the evidence as to whether the Jaguar Cars trademark in Canada was famous at the pertinent time-frame, and, only then, its trademark connection, if any, to its accessory wares. Also essential, at the outset, is an examination of the Remo "JAGUAR" trademark evidence in respect of its wares; and, only after that detailed background setting are the core issues for resolution of the action and counterclaim presented.
BACKGROUND FACTS
Fact Witnesses
Remo Witnesses
[12] Mr. Moise Bassal is and always has been the sole shareholder, President and Chief Executive Officer of Remo.
[13] Mr. Bassal was born in Beirut, Lebanon, on January 30, 1947, and attended elementary and secondary school in Beirut. As a child, he did not recall ever playing with or seeing a toy Jaguar car. As a student in elementary and secondary school, he did not recall seeing pictures, magazines or books about Jaguar cars. Mr. Bassal went to Beirut University, Faculty of Letters, and obtained a Bachelor's degree. He does not recall seeing or traveling in a Jaguar car in Beirut at that time.
[14] After obtaining his Bachelor's degree, Mr. Bassal went to Paris for a year to obtain a degree for teaching. While in Paris, his means of traveling was by subway, not by car and Mr. Bassal does not recall having seen a Jaguar automobile on the streets of Paris.
[15] After Paris, Mr. Bassal returned to Lebanon for two years, where he taught school. From the time Mr. Bassal returned to Lebanon until he left in 1967, he did not recall seeing or driving a Jaguar automobile, nor did he recall pictures, books or magazines about Jaguar cars.
[16] Mr. Bassal left Lebanon and came to Montreal in 1967 and taught high school for four years.
[17] While Mr. Bassal was teaching in Montreal, he also imported into Canada leather handbags from Lebanon, for resale purposes. After four years of teaching, he left that profession and went into the handbag business. Remo Imports Ltd. was incorporated on January 16, 1973.
[18] Between 1967 and 1979, Mr. Bassal bought six different automobiles, but rather than visiting car shows, car dealerships and/or purchasing buy and sell literature about cars, most of his choices were made on the advice of friends or employees. (As is fully outlined in paragraphs 398 and 410-412 of the Plaintiff's original Memorandum of Fact and Law, Volume 1.)
[19] While Mr. Bassal admitted that he did see a Jaguar automobile in Hong Kong, he explained that it was not during his first trip to Hong Kong in 1978. (As is outlined in paragraph 404 of Plaintiff's original Memorandum of Fact and Law, Volume 1.)
[20] Mr. Bassal testified that he did not see or drive a Jaguar car during his first trip to Korea in 1978, as Korea was closed to all foreign imports at that time and as such there were no foreign imported cars on the streets.
[21] Notwithstanding the fact that between 1973 and 1980 Mr. Bassal traveled for his business through Quebec and Ontario, as well as to such European countries as Holland, Belgium and Northern Italy, he maintained that he was not aware of Jaguar cars during such period of time, "as Jaguar cars or any cars were not on my radar, it's not something that mattered to me.".
[22] While Mr. Bassal did read from time to time the Montreal Gazette between 1967 and 1979, he never saw any of the 168 advertisements placed by Jaguar dealers in such newspaper (VSA 31), as he never paid attention to such types of advertisements and did not read that section of the newspaper.
[23] On a business trip to Italy in 1979, Mr. Bassal went to see a friend, Mr. Roberto Gista, who was originally an agent of his. His friend's company in Italy was called Jaguar S.R.L. which was selling luggage in Italy and later in other parts of Europe in association with the trademark "JAGUAR".
[24] During such visit, Mr. Bassal asked Mr. Gista if he minded if he used the same mark for Canada. Mr. Gista said he was not selling in Canada, so there was no problem and Mr. Bassal could do what he wanted.
[25] When Mr. Bassal saw the trademark "JAGUAR" at his friend's premises, it had a logo associated with it. Mr. Bassal identified such logo from exhibit P-46, the Italian registration of Jaguar S.R.L. for the trademark "JAGUAR" & design.
[26] Upon his return to Canada from Italy, Mr. Bassal had a search carried out by his attorney Mr. Charles Wolfson, to determine if Remo could use the trademark "JAGUAR" in Canada for tote bags and baggage. Mr. Wolfson notified him that the trademark was available.
[27] Mr. Bassal does not recall Mr. Wolfson telling him about the existence of any registrations for "JAGUAR" covering automobiles.
[28] Given the favourable search results received from Mr. Wolfson, on October 10, 1980, Remo filed application no. 460, 209 for the registration of the trademark "JAGUAR" covering tote bags and baggage.
[29] Application no. 460,208 matured to registration under no. 263,924 on October 30, 1981, covering tote bags and baggage.
[30] On March 3, 1982, Remo filed an application to extend the wares of its registration no. 263,924 for the trademark "JAGUAR" to cover handbags and school bags. Such extension application was allowed and a certificate of amendment issued on January 11, 1984.
[31] In 1980, Remo began buying "JAGUAR" branded goods from Korea, and in particular polyurethane and nylon oxford bags, all of which bore a "JAGUAR" hangtag as well as a "JAGUAR" logo. When such bags arrived in Canada and were subsequently delivered to Remo's customers, they bore the "JAGUAR" hangtag and logo.
[32] Filed as exhibits P-162, P-163, P-164 and P-165 were sales confirmations covering some of the orders placed by Remo in 1980 for "JAGUAR" branded goods.
[33] Filed as exhibit MB-22.1 (P-50) is a list of Remo's "JAGUAR" branded products for the year 1980.
[34] Exhibit P-102 represents copies of Remo's sales invoices to its customers for the year 1980.
[35] At trial, Mr. Bassal went through each invoice in exhibit P-102 and identified "JAGUAR" branded products as being represented by styles 78508, 78849, 78508, 78700, 78780, 78521, 102, 104, 105, 106, 108, 109, 112 and 114.
[36] Detailed reference was made to relevant exhibits covering the purchase by Remo and its subsequent sale to retail customers in Canada of "JAGUAR" branded leather goods during the years 1981 to 2000. (Paragraphs 482 to 533 of the Plaintiff's original Memorandum of Fact and Law, Volume 1)
[37] Remo has sold and continues to sell to date its "JAGUAR" line of products to department stores, chain retail outlets and specialty stores located across Canada.
[38] The approximate gross sales by Remo of its "JAGUAR" branded line of products for the years 1980 to 1997 inclusive are set out in confidential exhibit DT-32.
[39] During the years 1988 to 1999, Remo participated in co-operative advertising with many of its customers, including Zellers Inc., K-Mart Canada Ltd., Bentley Leathers Inc. and Kotler Canada.
Exhibits P-33 and P-76 (MBA-100) are copies of credit notes from Remo to its customers relating to co-operative advertising for Remo's "JAGUAR" branded products for the years 1988 to 1998.
[40] Between 1980 and 1988, Remo also participated in similar co-operative advertising with its customers, and in particular Zellers and K-Mart.
[41] Copies of credit notes relating to Remo's co-operative advertising for its "JAGUAR" branded products for the years 1997 to 2001 with such customers as K-Mart Canada Ltd., Zellers Inc., Giant Tiger Stores Ltd., Sears Canada Inc., Bentley Leathers Inc. and The Hudson's Bay were also produced as Exhibit P-99.
[42] Since the early 1980's until 1992 inclusive, Remo attended and participated at the Canadian International Footwear Exposition which took place at the Place Bonaventure Hotel in Montreal. At each of these trade shows Remo had a booth at which it displayed its products being offered for sale in association with its trademark "JAGUAR".
[43] Commencing in the year 1986 and continuing to date, Remo attended the Canadian Luggage, Leathergoods, Handbags and Accessory Show, which is held each spring in the City of Toronto, Ontario. At each of these shows Remo had a booth at which it displayed its products being offered for sale in association with its trademark "JAGUAR".
[44] On a regular basis since the 1980's to date, Remo attended smaller open shows in hotel rooms in Quebec City, where it offered for sale its "JAGUAR" branded products.
[45] An illustration of Remo's "JAGUAR AVANT GARDE II" set of luggage appeared in the December 14th, 1999 issue of the National Post.
[46] An illustration of Remo's "JAGUAR AVANT GARDE II" and "JAGUAR PILOT" luggage appeared in December 1999 in those newspapers and on the dates specified in Agreed fact P-849.
[47] Remo began its billboard and bus shelter advertising program for its "JAGUAR" products in August 1999.
[48] Billboard and bus shelter advertisements featuring some of Remo's "JAGUAR" branded products were arranged for and erected by Mediacom, Inc., on behalf of Remo, between August 1999 and December 2000, in the Cities of Halifax and Sydney, Nova Scotia; Moncton and St. Johns, New Brunswick; Thetford Mines, Drummondville, Granby, Beauce, Quebec City, Chicoutimi, Trois-Rivières, Sherbrooke, Montreal and Hull, Province of Quebec; Kingston/Brockville, Belleville, Ottawa, Toronto, Hamilton, Oshawa, Kitchener, St. Catherines/Niagara, London, Windsor, Sarnia, Peterborough/Lindsay, Barrie, Orilla and Thunder Bay, Ontario; Winnipeg, Manitoba; Regina and Saskatoon, Saskatchewan; Moose Jaw, Edmonton and Calgary, Alberta; and Vancouver, British Columbia.
[49] Photographs of Remo's billboard and bus shelter advertisements placed by Mediacom, Inc. were produced as Exhibit P-152.
[50] Subsequent to December 2000 and on a continuous basis to date, Remo concluded arrangements with both Viacom Inc. and Patterson to have billboard and bus shelter advertisements featuring some of its "JAGUAR" products erected across Canada.
[51] Ms. Alice Ann Morlock is a trademark lawyer with McMilliam Binch. In 1987 she was the outside Canadian trademark lawyer for Jaguar Cars. She testified about certain trademark practices. Her communications with her client are privileged and those communications were excluded from evidence.
Jaguar Cars Witnesses
[52] Ms.Vivien Shortt has been employed by Jaguar Canada since 1981 and in charge of Jaguar Canada's full personal accessories lines from the early 1980's to 1990s. Since she started in 1981, Jaguar Car's personal accessory line has extended into a full line of personal accessories including attaché case, folios, briefcases, handbags, license cases, purses, wallets, organizers, document wallets, credit card wallets, cardholders, key rings, key cases, garment bags, sport bags, suitcases, flight bags, travel kits, luggage, belts, clothing, duffel bags, tote bags and the like. This new line of JAGUAR personal accessories has been promoted in Canada since the early 1980's in numerous Jaguar Cars brochures and pamphlets available to consumers at dealer showrooms and car shows. Sales have been made through Jaguar Canada dealerships and Jaguar Cars' licensees with some direct sales by Jaguar Canada. Jaguar Cars has adopted high standards for the manufacture, display, promotion, advertisement and sale of its line of personal accessories bearing the trademark JAGUAR and all authentic, authorized personal accessories offered for sale in Canada bearing the trademark JAGUAR are of the highest quality. Ms. Shortt was not aware of the existence of the Plaintiff or its Canadian sales until the demand letter from Plaintiff's counsel leading to commencement of this action.
[53] Mr. Jim Robertson has been employed by Jaguar Canada from 1976 to present in sales and marketing positions and is currently Marketing, Displays and Training Co-ordinator. He described marketing of Jaguar Cars from 1976 to present. He described the numbers of Jaguar Cars' sales of luxury automobiles in association with the trademarks JAGUAR, from the early 1970s to 1997.
[54] Mr. Craig Manuel is a Toronto lawyer. He discussed many videos in which he identified a Jaguar car in films released as early as 1942.
[55] Mr. John Maries was a senior officer of Jaguar Cars Limited in England in charge of extending the JAGUAR brand into a full line of personal accessories from the late 1970's to 1999. The trademark JAGUAR was used internationally and in Canada in association with a number of personal accessory products by Jaguar Cars or its licensees, some since at least as early as the 1950's, including luggage, model cars, vehicle wallets, key fobs and key chains. He described some of the promotion of personal accessories by Jaguar Cars worldwide from 1950 to 1980. Luxury car competitors of Jaguar Cars such as Mercedes-Benz since before 1980 have extended their famous brands into personal accessories. Jaguar Cars' management decided in the late 1970's to extend their valuable Jaguar brand into a full line of personal accessories. He was in charge of this starting in 1981 and developed the Silver Brochure in 1982. Jaguar Cars has never permitted use of its JAGUAR trademark by Remo. Jaguar Cars had no knowledge of Remo until the demand letters in this action in mid-1990. Had Jaguar Cars known of Remo's use of the JAGUAR trademark, Jaguar Cars would have tried to prevent such use. Jaguar Cars did take steps to stop others from using the JAGUAR trademark where possible.
[56] Mr. Anders Clausager is the archivist of a company related to Jaguar Cars Limited in England. Jaguar Cars and its predecessors in association with the trademarks JAGUAR, LEAPING JAGUAR DESIGN & JAGUAR HEAD DESIGN, have sold cars continuously internationally, including Canada since 1936. He identified the order of magnitude of the sales volumes. Since 1936, Jaguar has been involved in continuous advertising and promotion of Jaguar Cars' automobiles internationally and in Canada in association with the trademark JAGUAR. Numerous accurate books have been written regarding Jaguar Cars and its cars since at least 1959.
[57] Mr. John Mackie was Vice-President Sales and later President of Jaguar Canada from 1965 to about 1997. He described Jaguar Cars' advertising spending and sales numbers of luxury automobiles in association with the trademarks JAGUAR from 1948 to 1997. He described the nature and extent of promotion of Jaguar Cars automobiles in Canada from 1948 to 1997. There are many documents over the years prior to 1980 showing the reputation of Jaguar Cars in Canada and its connection with affluence and quality. The trademark JAGUAR was used in Canada in association with a number of personal accessory products by Jaguar Cars or its licensees since at least as early as the 1950's, including luggage, model cars, vehicle wallets, key fobs and key chains. Jaguar Canada discussed the idea of extending their valuable JAGUAR brand into a full line of personal accessories with Jaguar Cars in about 1981 or 1982. Jaguar Canadahas never permitted or acquiesced to use of its JAGUAR trademark by Remo. Jaguar Canadahad no knowledge of Remo until the demand letters in this action in mid-1990.
[58] Mr. Brian Green was the service general manager of Jaguar Canada from 1968 to 1986, and Vice-President from 1986 to 1994. He described some operations of Jaguar Canada from 1968 to present. The trademark JAGUAR was used in Canada in association with a number of personal accessory products by Jaguar Cars or its licensees since at least as early as the 1950's, including luggage, model cars, vehicle wallets, key fobs and key chains. Luxury car competitors of Jaguar Cars including Mercedes-Benz; BMW; Porsche; Saab since before 1980 have extended their famous brands into personal accessories.
[59] Mr. John Cox was the chief officer and/or owner of Jaguar Cars dealerships in Toronto from 1981 to about 2000. He has been in the car dealership business since 1970. He discussed the operation of the Jaguar Coventry dealership from 1993 to 1998 and the Jaguar on Bay dealership from 1981 to 1992. He described typical annual promotion of JAGUAR brand personal accessories by both of these dealerships. Sales of personal accessories started in the early 1980's and gradually increased after that. From the early to mid-1980's, sales of accessories were made available by Jaguar dealers to their customers from Jaguar catalogues or brochures or price lists including "Jaguar Collection" brochures. He described some of the methods of promotion used by Jaguar Coventry for both cars and accessories including various sporting and cultural events, publications and showroom displays.
Expert Witnesses
Jaguar Experts
[60] Dr. Ruth Corbin is an expert in marketing and consumer behaviour research and analysis, particularly surveys in issues relating to trademarks. She conducted four independent surveys, two in 1998 and two in 2004.
[61] The 1998 Jaguar Car Awareness Survey: From a cross-Canada telephone survey she concluded that in 1980 and 1998, awareness of the name JAGUAR as the name of a car was 89% of the Canadian public within given levels of accuracy.
[62] The 1998 Jaguar Briefcase Survey: From a cross-Canada telephone survey she concluded that:
(1) 5% to 9% of people who encountered JAGUAR briefcases would infer without any prompting that the briefcases were manufactured or licensed by Jaguar Cars;
(2) When questioned, 19% of people (31% of luxury car owners) would infer a relationship between JAGUAR briefcases and Jaguar Cars.
[63] The 2004 Jaguar Luggage/Knapsack/Wallet/Keycase Survey: From a cross-Canada telephone survey, she concluded that:
(1) 4% to 7% of people who encountered JAGUAR luggage, knapsacks or wallets would infer that these products were manufactured or licensed by Jaguar Cars;
(2) When questioned, 35% of people would infer a relationship between Jaguar keycases and Jaguar Cars.
[64] The 2004 Jaguar Advertising Survey: From a mall survey of Canadians who were shown a copy of a Remo billboard ad, she concluded that:
(1) Awareness of Jaguar Cars is 97%;
(2) Jaguar Cars are associated with words like luxurious, elegant, classy, stylish;
(3) Remo's ad for its JAGUAR luggage brings to mind Jaguar Cars among 44% of adults, unprompted;
(4) Even when people are not confused, the majority still link the Jaguar name of the Remo products to the goodwill of Jaguar Cars.
[65] Mr. Mich Bergesen is an expert in brand (trademark) valuation, brand extensions and the valuation of goodwill in brands and brand extensions of well-known trademarks and the measurement of consumer awareness of well-known trademarks in the United States and Canada.[1] He conducted historical research into extensions by well known automotive brands into "Luggage Wares". He described the Brand Asset Valuator (BAV) database which surveyed thousands of brands in Canada and the USfrom 1993 to 2003.
[66] He reported his analysis of the above consumer brand data and other attributes of the trademark JAGUAR for consumers:
(1) The consumer awareness for the brand JAGUAR for cars was 96%;
(2) The level of perceived affluence and quality both in the United States and Canada was very high.
(3) There was significant, measurable value in the goodwill of the trademark JAGUAR in association with cars.
(4) There was a significant, measurable value in the goodwill of the trademark JAGUAR in connection with a brand extension into Luggage Wares.
[67] The data and analysis was extrapolated back to 1980 in Canada. His opinion is that as of 1980, 1991, 1993 and at present in Canada:
(1) A brand valuator would advise Jaguar Cars that it had valuable goodwill in an extension of its JAGUAR brand into Luggage Wares;
(2) A third party using the brand for Luggage Wares would be using goodwill that Jaguar Cars could have licensed or sold for significant value;
(3) There is and has been a strong connection between the trademark JAGUAR used for cars and its use for Luggage Wares such as those to which Jaguar Cars did extend its JAGUAR brand in the 1980's.
[68] Dr. Darmon challenged this extrapolation back to 1980.
[69] Dr. Joachimsthaler is an expert in marketing strategy, building strong brands and extending brands into new categories of goods or services.[2] He considers the methodology used by Mr. Bergesen to be reliable and valid, that there was high awareness of JAGUAR as a premium brand for cars from 1993 to 2004 in Canada and the US and that extrapolation back to 1980 in Canada was appropriate. He concluded that the JAGUAR brand was appropriate for extension into luggage in Canada in 1980; and that when Remo traded in luggage in 1980 under the JAGUAR trademark in Canada, it was engaging in an activity of significant value to Jaguar Cars. Dr. Joachimsthaler confirmed that there was historical and marketing precedent and strong connections for extension by well known automotive brands into luggage prior to 1980 in Canada; and thereby concluded that Remo, by using the JAGUAR brand in luggage in Canada in 1980 depreciated the brand for JAGUAR cars, whether the luggage was of high or low quality, and whether the consumer is confused or not, as there are different types of depreciation. His evidence is set aside for the reasons discussed below in regard to Mr. Bergesen.
[70] Professor Sridhar Moorthy is an expert in marketing generally and branding in particular including brand (trademark) valuation,