Tokai of Canada Ltd v. Kingsford Products Company, LLC

Tokai of Canada Ltd v. Kingsford Products Company, LLC
Court (s) Database
Federal Court Decisions
Date
2021-07-23
Neutral citation
2021 FC 782
File numbers
T-17-19
Notes
A correction was made on July 29, 2021.
Decision Content
Date: 20210723
Docket: T-17-19
Citation: 2021 FC 782
Ottawa, Ontario, July 23, 2021
PRESENT: The Honourable Justice Fuhrer
BETWEEN:
TOKAI OF CANADA LTD
Applicant
and
THE KINGSFORD PRODUCTS COMPANY, LLC
Respondent
JUDGMENT AND REASONS
I. Overview
[1] Tokai of Canada Ltd sought to register the trademark KING for barbeque and fireplace lighters, and for cigarette lighters. The Kingsford Products Company, LLC successfully opposed Tokai’s trademark applications based on several registered trademarks involving KINGSFORD for goods relating to barbecuing and/or charcoal, including charcoal lighters. Tokai now appeals the Registrar’s decisions refusing its trademark applications because of a likelihood of confusion.
[2] Two issues arise in this appeal:
What is the applicable standard of review, taking into account the new evidence filed on appeal?
Did the Registrar err in concluding that, pursuant to paragraph 12(1)(d) of the Trademarks Act, RSC 1985, c T-13 [TMA], that the trademark KING is not registrable because Tokai failed to establish no reasonable likelihood of confusion between KING, as applied for, and KINGSFORD, as registered?
[3] See “Annex A” below for the relevant TMA provisions.
[4] Tokai conceded at the hearing before me that if the Court does not consider its new evidence to be “material,” then the Registrar of Trademarks did not make any palpable and overriding errors. For the more detailed reasons that follow, I find that both parties’ new evidence submitted to the Court is either inadmissible or immaterial. Notwithstanding Tokai’s concession, I further find, on a review of the applicable decisions described below, that the Registrar did not make any palpable and overriding errors. I therefore dismiss Tokai’s appeals.
II. Background
A. The Applications, the Oppositions and Other Related Proceedings
[5] Tokai filed application No. 1,539,953 [953 Application] on August 9, 2011 to register the trademark KING for utility lighters based on use of the trademark in Canada since at least as early as December 30, 2010. Tokai amended the 953 Application on February 7, 2013 to redefine “utility lighters” as “barbeque and fireplace lighters.” The Registrar approved the 953 Application on February 14, 2013 and it was advertised on April 24, 2103 in the Trademarks Journal for opposition purposes.
[6] Kingsford opposed the 953 Application on August 9, 2011 and pleaded grounds of opposition based on the TMA sections 12(1)(d), 16(1)(a), 16(1)(c), 2, as well as 30(i) and 30(b). Kingsford filed the Affidavit of Elenita Anastacio, sworn March 18, 2014; Ms. Anastacio was not cross-examined on her affidavit. Tokai filed the Affidavit of John Tucker, sworn June 11, 2015, a director of Tokai [Tucker Affidavit]; Mr. Tucker was cross-examined on his affidavit on January 18, 2016 and the transcript was filed with the Trademarks Opposition Board [TMOB]. On behalf of the Registrar of Trademarks, the TMOB found in favour of Kingsford, but only in respect of the registrability ground based on the TMA s 12(1)(d); all other grounds were dismissed or rejected: The Kingsford Products Company, LLC v Tokai of Canada Ltd, 2018 TMOB 126 [953 TMOB Decision].
[7] Tokai filed application No. 1,684,990 [990 Application] on July 7, 2014 to register the trademark KING for cigarette lighters based on intention to use the trademark in Canada. The Registrar approved the 990 Application on January 8, 2015 and it was advertised on March 4, 2015 in the Trademarks Journal for opposition purposes.
[8] Kingsford opposed the 990 Application on February 3, 2016 and pleaded grounds of opposition based on the TMA, sections 12(1)(d), 16(3)(a), 16(3)(c), 2, and 30(i). In this case, only Kingsford filed any evidence, the Affidavit of Elenita Anastacio, sworn September 14, 2016; Ms. Anastacio was not cross-examined on her affidavit. Similarly, the TMOB found in favour of Kingsford, but only in respect of the registrability ground based on the TMA s 12(1)(d); all other grounds were dismissed or rejected: The Kingsford Products Company, LLC v Tokai of Canada Ltd, 2018 TMOB 127 [990 TMOB Decision].
[9] The following chart summarizes the registered trademarks on which Kingsford relied in its successful oppositions to Tokai’s trademark applications:
Trademark and Registration Number
Goods
Basis of Registration in Canada
KINGSFORD
TMA195,651
(1) Charcoal and charcoal lighters
Used in Canada since at least June 1, 1953
KINGSFORD & Design
TMA196,359
(1) Charcoal, charcoal lighters
Used in Canada since at least June 1, 1953
KINGSFORD
TMA344,604
(1) Barbecue sauce.
Used in UNITED STATES OF AMERICA. Registered in or for UNITED STATES OF AMERICA on January 06, 1987 under No. 1,424,150
KINGSFORD CHARCOAL BRIQUETS & Design
TMA335,006
(1) Charcoal briquets.
Used in UNITED STATES OF AMERICA. Registered in or for UNITED STATES OF AMERICA on March 19, 1985 under No. 1,325,270
KINGSFORD
TMA386,771
(1) Barbecue grills
Used in UNITED STATES OF AMERICA. Registered in or for UNITED STATES OF AMERICA on April 11, 1989 under No. 1,534,164
[10] Although Tokai filed separate Notices of Application under the TMA s 56(1) to appeal each TMOB decision, the Court consolidated the matters by Order dated November 25, 2019. Tokai seeks to have the TMOB decisions set aside and its trademark applications allowed.
[11] The parties to this consolidated appeal were also involved in an earlier opposition proceeding involving the trademark KING, which was the subject of application number 1,655,739 filed by Tokai for use in association with “butane”: The Kingsford Products Company, LLC v Tokai of Canada Ltd., 2017 TMOB 83 [739 TMOB Decision]. In that case, the TMOB refused the application pursuant to the TMA s 12(1)(d), finding that the applied for trademark KING was likely to be confused with Kingsford’s registered KINGSFORD trademarks. On appeal, the Court upheld the 739 TMOB Decision in Tokai of Canada Ltd v The Kingsford Products Company, LLC, 2018 FC 951 [Tokai FC 2018].
B. The Parties’ New Evidence on Appeal
[12] Both parties filed new evidence in this appeal, further to the TMA s 56(5).
(1) Tokai’s New Evidence
[13] Tokai filed:
(a) The Affidavit of Jon L. Purther, sworn February 4, 2019 [Purther Affidavit], including three exhibits:
Exhibit “A” – Certificate Concerning Code of Conduct for Expert Witness;
Exhibit “B” – Curriculum vitae;
Exhibit “C” – Detailed report of survey results; and
(b) Third party registrations for trademarks containing KING.
[14] Kingsford cross-examined Mr. Purther on his affidavit on September 10, 2019. The transcript of the cross-examination forms part of the Applicant’s record in this matter.
(a) The Purther Affidavit
[15] Mr. Purther is the President and Chief Operating Officer of CorbinPartners Inc [CorbinPartners], a marketing science company that conducts market research and has experience providing forensic research support for trademark litigation. Tokai retained CorbinPartners to plan, design and implement a survey of Canadian adults who had purchased or planned to purchase, a butane lighter.
[16] The survey was conducted online between May 29, 2018 and January 5, 2019, and was comprised of seven hundred and seven (707) online interviews with participants. The survey’s findings and methodology are contained in a report prepared by CorbinPartners dated January 17, 2019 [Butane Lighter Study] which is attached as Exhibit “C” to the Purther Affidavit. The Butane Lighter Study concluded that the survey showed “no statistical evidence of misapprehension as to the source of the ‘KING’ butane lighter, directly attributed to its brand name.”
(b) Third Party Trademark Registrations
[17] Tokai also filed certified copies of ten (10) third party trademark registrations and one (1) allowed trademark application [Third Party Marks]. The chart below contains a summary of the Third Party Marks, with only references to lighters or related goods listed in the “Goods” column.
Trademark and Registration Number
Goods
Basis of Registration in Canada
KINGS
TMA170,636
Various consumer goods, including (6) cigarette lighters
Used since at least as early as May 1984 on goods (6)
THE WHEAT KINGS
TMA587,190
Various consumer goods, including disposable lighters
Used since at least as early as September 1947 on goods and services
GOLDKING
TMA658,880
Various goods relating to smoking, including tobacco products, and smokers’ articles, including lighters
Used in GERMANY. Priority filing date September 02, 2004
OIL KINGS
TMA780,652
Various consumer goods, including (2) lighters
Declaration of use filed October 2010
EDMONTON OIL KINGS
TMA780,653
Various consumer goods, including (2) lighters
Declaration of use filed October 2010
KING OF BEERS
TMA745,897
Lighters for smokers.
Declaration of use filed July 2009
VAPEKING
TMA928,535
Various goods relating to electronic cigarettes products and articles of clothing
Used since at least as early as May 2014 on goods and services
TMA997,832
Various goods relating to smoking, including tobacco products, and smokers’ articles, including lighters and matches.
Declaration of use filed May 2018
LOS ANGELES KINGS
TMA170,637
Various consumer goods, including (6) cigarette lighters
Used since at least as early as May 1984 on goods (6)
KING OF BLUE
TMA745,897
Various consumer goods, including lighters
Declaration of use filed October 2012
THE KING OF CANNABIS
Application No 1,818,905
(3) Smoker articles, including lighters
Used since at least as early as 2014
(2) Kingsford’s New Evidence
[18] Kingsford filed the Affidavit of Maria Golverk, legal assistant, sworn May 3, 2019 [Golverk Affidavit], including six exhibits:
Exhibit “A” – Particulars for Tokai’s 953 Application, 990 Application, and 739 Application obtained from the Canadian Intellectual Property’s Office online trademarks database;
Exhibit “B” –The 953 TMOB Decision and the 990 TMOB Decision;
Exhibit “C” –The Judgment and Reasons of Justice Manson in Tokai FC 2018;
Exhibit “D” –The Tucker Affidavit;
Exhibit “E” –The transcript of the January 18, 2016 cross-examination of Mr. Tucker;
Exhibit “F” –Certified copies of seven KINGSFORD registrations, obtained from the Canadian Intellectual Property Office; although the Golverk Affidavit states that Kingsford owns eight Canadian trademark registrations, the details of which are summarized in the chart below, a certified copy of registration number TMA386,771 is missing from this exhibit.
Trademark and Registration Number
Goods
Basis of Registration in Canada
KINGSFORD
TMA195,651
(1) Charcoal and charcoal lighters
Use in Canada since at least as early as June 1, 1953
TMA196,359
(1) Charcoal, charcoal lighters
Used in Canada since at least June 1, 1953
TMA335,006
(1) Charcoal briquets.
Used in UNITED STATES OF AMERICA. Registered in or for UNITED STATES OF AMERICA on March 19, 1985 under No. 1,325,270.
KINGSFORD
TMA344,604
(1) Barbecue sauce.
Used in UNITED STATES OF AMERICA. Registered in or for UNITED STATES OF AMERICA on January 06, 1987 under No. 1,424,150.
KINGSFORD
TMA386,771
(1) Barbecue grills
Used in UNITED STATES OF AMERICA. Registered in or for UNITED STATES OF AMERICA on April 11, 1989 under No. 1,534,164
TMA767,620
(1) Charcoal briquets
Declaration of Use filed May 5, 2010
TMA810,844
(1) Charcoal barbeque grills; charcoal smokers; charcoal chimneys (chimney starters) fabric grill covers; patio fireplaces.
Declaration of Use filed October 19, 2011
TMA991,526 (1,666,106)
(1) Aluminum foil.
(2) Containers formed of aluminum foil for household use
Used in UNITED STATES OF AMERICA on goods (2). Registered in or for UNITED STATES OF AMERICA on September 01, 2015 under No. 4,804,820 on goods (2).
Declaration of Use filed February 15, 2018 on goods.
III. Analysis
C. Applicable Standard of Review
(1) General Principles
[19] An appellate standard of review applies where, as in the case before me, there is a statutory right of appeal: Canada (Minister of Citizenship and Immigration) v Vavilov, 2019 SCC 65 [Vavilov] paras 36-37, citing Housen v Nikolaisen, 2002 SCC 33, [2002] 2 SCR 235 [Housen]. Vavilov does not displace the previous jurisprudence regarding new evidence filed with the Federal Court on appeal from a decision of the Registrar, but rather necessitates an adjustment: The Clorox Company of Canada, Ltd. v Chloretec SEC, 2020 FCA 76 [Clorox] at paras 19-23. The starting point is a consideration of whether any new evidence would have affected the TMOB’s decision materially: Clorox, above at para 19.
[20] To be considered “material,” the new evidence must be sufficiently substantial and significant, and of probative value: Clorox, above at para 21, citing respectively Vivat Holdings Ltd v Levi Strauss & Co, 2005 FC 707 at para 27 and Tradition Fine Foods Ltd. v. Groupe Tradition’l Inc., 2006 FC 858 at para 58. “[E]vidence that merely supplements or repeats existing evidence will not surpass this threshold”: Scott Paper Limited v Georgia-Pacific Consumer Products LP, 2010 FC 478 [Scott Paper] at paras 48-49. The test is not whether the new evidence would have changed the Registrar’s mind, but rather whether it would have a material effect on the decision: Scott Paper, above, at para 49. In that regard, quality, not quantity, is key: Vivat Holdings Ltd v Levi Strauss & Co, 2005 FC 707 at para 27.
[21] Further to the TMA s 56(5), a finding of materiality permits the Court to “exercise any discretion vested in the Registrar.” Justice de Montigny noted that this entails an appeal de novo calling for the application of the correctness standard: Clorox, above at para 21, referring to Canada (Minister of Citizenship and Immigration) v. Vavilov, 2019 SCC 65 [Vavilov] (and the situations where the presumptive reasonableness standard of review will be rebutted, as summarized at Vavilov para 17). In other words, the Court need not defer to the decision maker’s reasoning process; undertaking its own analysis, the Court may decide whether it agrees with the decision maker’s determinations or whether it will substitute its own views: Dunsmuir v New Brunswick, 2008 SCC 9 at para 50, [2008] 1 SCR 190.
[22] If the new evidence is not material (or if no new evidence is filed), then this is the point at which Vavilov requires an adjustment to the applicable standard: Clorox, above at para 22. Instead of the previous standard of reasonableness, the appellate standard of review applies, with reference to Housen. This means questions of fact or mixed fact and law (except extricable questions of law) will be assessed for “palpable and overriding error.” Palpable means an obvious error, while an overriding error is one that affects the decision-maker’s conclusion; it is a highly deferential standard of review: Mahjoub v Canada (Citizenship and Immigration), 2017 FCA 157 at paras 61-64. Questions of law (including extricable questions of law), on the other hand, will be assessed for correctness according no deference to the conclusions of the underlying decision maker: Clorox, above at para 23; Miller Thomson LLP v Hilton Worldwide Holding LLP, 2020 FCA 134 at para 42.
[23] In sum, I must assess the nature, significance, probative value, and reliability of the parties’ new evidence, in the context of the record, and determine whether it adds “something of significance” and hence, whether it would have affected the TMOB’s decision materially: Seara Alimentos Ltda v Amira Enterprises Inc, 2019 FCA 63 [Seara] at paras 23-26. In other words, would the evidence have enhanced or otherwise clarified the record in a way that might have influenced the Registrar’s conclusions on a finding of fact or exercise of discretion, had it been available at the time of the Decision? Further, even when new evidence is admitted on appeal, this does not necessarily displace the TMOB’s findings in respect of every issue but rather only those issues for which the evidence is provided and admitted: Seara, above at para 22.
(2) Materiality of Parties’ New Evidence
(a) Tokai’s New Evidence
[24] For the more detailed reasons below, I find that deficiencies in the survey impact its reliability and validity and, thus, the Purther Affidavit is inadmissible. I further find the Third Party Marks are not sufficiently significant and probative that they would have affected the TMOB’s decisions materially.
(i) Purther Affidavit
[25] Survey evidence, as a species of expert evidence, must meet the following conjunctive criteria for the Court to find it admissible: (a) relevance; (b) necessity in assisting the trier of fact (in the sense that the evidence is outside the experience and knowledge of a judge); (c) the absence of any exclusionary rule; and (d) a properly qualified expert: Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27 [Masterpiece] at para 75, citing R v Mohan, 1994 CanLII 80 (SCC), [1994] 2 SCR 9. Further, to be considered relevant, the survey must be both reliable (in that if it were repeated it would produce the same results) and valid (in that the right questions were put to the right pool of survey participants in the right way and in the right circumstances to produce the evidence sought): Masterpiece, above at para 94, citing Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 [Mattel] at para 45.
[26] I do not disagree with Tokai that the survey results could have affected the Registrar’s consideration, in a material way, of the applicable surrounding circumstances in the confusion analysis under the TMA s 6(5). The TMOB Member found, in respect of the 990 Application for example, that the probability of confusion between KING and KINGSFORD was evenly balanced. This meant that because Tokai did not satisfy the onus on it of establishing no likelihood of confusion, on a balance of probabilities, that the TMOB Member had no choice but to find against Tokai: 990 TMOB Decision, at para 52. An admissible survey could have been a material factor influencing which way the balance should tip, were such a survey before the TMOB for consideration.
[27] In my view, however, there are both reliability and validity issues with the survey conducted by CorbinPartners that negatively affect its admissibility. I add that Mr. Purther’s qualifications, the reputation of CorbinPartners, and the impartial and independent conduct of the survey, are not in issue. Nor is there any applicable exclusionary rule.
[28] I find that the online survey conducted in this case highlights the challenges in attempting to simulate a consumer’s imperfect recollection at the time when they encounter the products and trademark in issue in the marketplace.
[29] While the Tucker Affidavit explains generally that Tokai manufactures and sells at wholesale to retailers in Canada, it further explains in more detail that Tokai “distributes its products to Wal-Mart Canada Corp., which operates the WALMART chain of department stores in all Canadian provinces.” Although the Tucker Affidavit could have been clearer in this regard, I infer from this statement that the Tokai’s KING Lighters (utility lighters, namely barbecue and fireplace lighters), are distributed wholesale to Wal-Mart Canada and then sold at the retail level at WALMART stores in Canada. There is no mention that the KING Lighters are sold online. The transcript of Mr. Tucker’s re-examination, on the heels of his cross-examination, discloses that KING Lighters are sold only in WALMART stores in Canada.
[30] When asked in cross-examination if he knew what the test for confusion is, Mr. Purther answered generally that he is “well versed in the standards for research purposes that are used to assess confusion.” He further explained that “one definition would be that of an individual with an imperfect recollection of the senior mark would see two separate parties as being one and the same[; e]ither affiliated, one sourced by the other and so on.”
[31] Although Mr. Purther’s explanation of the test is not incorrect, it is incomplete. It is missing the crucial element of “a casual consumer somewhat in a hurry” who sees the name on a storefront or an invoice: Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 [Veuve] at para 20. In other words, it is missing context.
[32] Paraphrasing Veuve, the more complete confusion test is a matter of first impression in the mind of the casual consumer somewhat in a hurry who sees the junior user’s name or mark on a storefront, a shelf in the store or an invoice, at a time when they have no more than an imperfect recollection of the senior user’s name or mark. Such consumer does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks.
[33] In addition, while the Supreme Court has clarified that subsequent research and care may “unconfuse” a consumer, what is relevant for the TMA analysis is the confusion that may have occurred when the consumer first encountered the trademark: Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27 [Masterpiece] at para 87.
[34] Justice Rothstein (as he then was) noted that surveys have the potential to provide empirical evidence demonstrating consumer reactions in the marketplace, something that generally would not be known to a trial judge and, thus, would not run afoul of the second Mohan requirement of necessity: Masterpiece, above at para 93.
[35] Justice Rothstein agreed, however, with Justice Binnie’s observation in Mattel that “often the difficulty with survey evidence is whether it meets the first of the Mohan requirements[,] relevance”: Masterpiece, above at para 94. As further noted by Justice Rothstein, “[s]imulating an ‘imperfect recollection’ through a series of lead-up questions to consumers will rarely be seen as reliable and valid”: Masterpiece, above at para 96. I find this is borne out in the case before me.
[36] In my view, the survey is deficient in four respects: the way in which the term “butane lighters” is used; the discounting or removal of surveys completed too quickly; taking into account surveys completed over a significantly longer period than the 10-minute length indicated for the survey; and notable contextual and other gaps in the effort to simulate the imperfect recollection of a casual consumer in a hurry in an online survey.
“Butane Lighters”
[37] The survey questionnaire itself refers only to “butane lighter(s).” When questioned on cross-examination about whether he did any checking to determine if the term would be understood by participants, Mr. Purther answered that they were comfortable that the phrase was acceptable in describing a lighter, based only on “some initial assessment in on-line investigation to see the usage of ‘butane lighter,’” and because the focal point of the survey was the name King. Participants, however, were not shown a picture of a butane lighter at the outset of the survey.
[38] I find that a lack of common understanding among survey participants as to the meaning of butane lighters (as including both cigarette and utility lighters), could have skewed responses to questions in a way that had a direct impact on CorbinPartners’ analysis of the results. For example, Q2 of the survey questionnaire begins with the question “What do you know, if anything, about a butane lighter with that brand name [i.e. KING]?” There is space for the participant to type an answer or they could choose the answer “I am not aware of a butane lighter with that brand name.” Someone thinking of butane lighters as cigarette lighters only might have chosen the latter answer, while someone thinking of butane lighters as both cigarette and utility or only utility lighters, and aware of KING utility lighters, might have answered differently.
[39] It was not until the end of the survey when a few final questions were posed to participants to categorize their responses, that participants were alerted to the different types of butane lighters at issue with the following question: “Have you purchased any of the following types of butane lighter products in the last 12 months?” This question was followed by “a. Utility lighter” and “b. Cigarette lighter,” with depictions of these types of lighters, and “c. Other – Please specify.” By that point, however, the questions about the brand KING in the context of a “butane lighter” had been asked already. I note that the detailed report of the survey results, attached as Exhibit “C” to the Purther Affidavit, describes that “[p]articipants could not move forward to a subsequent question unless the current question was answered, and could not return to a previous question once proceeding forward in the survey.” [Emphasis added.]
[40] In addition, I note Exhibit “A” to the Tucker Affidavit is comprised of representative photographs of Tokai’s KING Lighters (and their packaging) as they have been sold in Canada. The words “Utility Lighter” are fairly prominent underneath the even more prominent word “King” at the top of the package (with a stylized letter “i” depicting a flame where the dot above the “i” normally would appear). While the packaging cautions “DANGER – Extremely Flammable. Contains Flammable Gas Under Pressure,” there does not appear to be any reference to “butane.” In my view, the casual consumer in a hurry, when confronted with Tokai’s products in the marketplace would see “King” and “Utility Lighter” but likely not much else, even were there a reference to “butane” somewhere on the packaging.
[41] Because the 990 Application covering the goods “cigarette lighters” was based on proposed use, and Tokai did not file any evidence demonstrating the use of KING in association with cigarette lighters in Canada, it is not known how such goods would be presented in the marketplace, if use of the trademark in Canada has commenced.
“Surveys Completed Too Quickly”
[42] When asked in cross-examination if there is a time limit on how long participants can take to answer any particular question, Mr. Purther responded that there is no time limit. He further clarified that they “look out for those that are excessive in their time frame over a couple of days” and they might pull such surveys but that did not happen in this case. He also indicated that, on the other end, “if something is being completed too quickly, someone is straight lining answers [he gave the example of answering C all the way through multiple choice questions], that they would look out to remove that interview as well.”
[43] Although Mr. Purther indicated that they are looking for first impression and do not have an issue with someone giving a first impression (“that’s actually the expectation that’s being made”), they “would look out for someone who is too quickly completing the entire survey.” He further offered that,
“…the research company has a method that they go through where they can see the average time that it’s being done. And if it’s below that certain time, or significantly below that certain time, that they might remove that interview before we even see it. And keep in mind the research company has no idea what the purpose of the survey is. They are just conducting it based under certain rules.”
[44] Based on this explanation, in my view the research partner did not understand the applicable test for confusion and, therefore, may have removed surveys that in its view, or “under certain rules,” were completed too quickly even though they well may have represented first impressions of a casual consumer somewhat in a hurry.
“Surveys Taking Too Long to Complete”
[45] Next, Mr. Purther was asked on cross-examination the following questions about surveys that took a long time to complete:
[46] I find that these questions and answers represent the very issue identified by Justice Rothstein in Masterpiece (at para 87) of a survey participant who might have been confused on first impression but who could “unconfuse” themselves by taking extra care in answering the questions and/or conducting research. By permitting participants to take hours, instead of 10 or even 20 or 30 minutes, to complete what seems to be a fairly short, straight forward survey, in my view strays well outside the stated expectation of someone giving a first impression. There is no evidence of how long any of the 707 survey participants took to complete the survey, thus preventing the Court from considering this issue in any more meaningful way.
“Contextual and Other Gaps”
[47] I find that there were at least two contextual gaps in the survey. First, in my view, the manner in which the survey participant was shown the brand name KING online is not reflective of the manner in which the trademark would be encountered in the marketplace in the applicable circumstances (i.e. on packaging or the goods themselves, potentially along side other similar products, such as on a store shelf). For example, the survey questionnaire begins as follows:
[48] Based on the above, it appears that the survey participant’s first encounter with the trademark KING would have occurred in isolation from anything else. I find this falls within the validity consideration of whether the right questions have been asked “in the right way in the right circumstances to provide the information sought, i.e. not merely showing a design logo without any context and then subsequently immediately removing it from their site and asking questions, …” [emphasis in original]: Imperial Tobacco Canada Limited v Philip Morris Brands SARL, 2018 FC 503 at para 59.
[49] In circumstances where a product would normally be purchased in a store, rather than online, it seems more difficult in my view, although not impossible, to simulate the imperfect recollection of a casual consumer in a hurry at the time when they encounter the relevant trademark in the marketplace.
[50] Second, the Purther Affidavit states that, “[t]he percentage of participants who identified a product type offered by Kingsford as being put out by the company who puts out the KING butane lighter is statistically greater for those stating they had previously purchased a butane lighter named KING than those who hadn’t…; [b]y that I mean, someone who stated they had previously purchased a KING lighter was more likely to identify those lighters with Kingsford, as compared to someone who had not previously purchased a KING lighter.”
[51] The survey was conducted and the results were analyzed in terms of participants who previously had purchased a KING lighter or those who had not made such a purchase. The survey failed to account for those participants who, although they may not have purchased a KING lighter previously, nonetheless were aware of KING lighters having encountered them in the marketplace or even in some other context. In other words, there appears to have been an assumption, unjustified in my view, that participants who had not previously purchased a KING lighter were not familiar with them.
[52] Kingsford advocates another gap regarding the restriction of the survey to butane lighters, lighter fluid, barbecue lighters, charcoal and charcoal briquettes. In other words, the survey and subsequent analysis did not consider the full scope of the goods covered in the 953 application and the 990 application and in the KINGSFORD registrations, all of which, in Kingsford’s view are relevant to the confusion analysis. On cross-examination, Mr. Purther indicated that the survey was restricted to narrower than what Kingsford sells or has in their registrations based on the investigation that they did; those were the core goods CorbinPartners found. Apart from Mr. Purther’s testimony, however, there is little evidence of the investigation conducted by CorbinPartners in this regard. Further, in my view the goods, barbecue grills for example, listed in registration number TMA386,771 for KINGSFORD, could have been relevant as well, although this may not have impacted the survey results perceptibly.
[53] I conclude that all the above deficiencies in the survey evidence cumulatively render it unreliable and invalid, and hence, inadmissible in the circumstances.
(ii) Third Party Marks
[54] Although Tokai’s new evidence of the Third Party Marks is reliable, based on the certified copies submitted and on the operation of the TMA s 54, I find for the reasons below that such evidence is not sufficiently significant or of probative value that it would have influenced the TMOB or had a material effect on the TMOB Member’s reasoning in each case.
[55] In this appeal, Tokai argues that KING and KINGSFORD are inherently weak trademarks, contrary to the 953 TMOB Decision (paras 35-38), the 990 TMOB Decision (paras 31-34), and the Court’s decision in Tokai FC 2018 (paras 31-32). In support of this position, Tokai relies on the eleven (11) Third Party Marks and argues that their coexistence means no single entity can claim strong rights in or to the element KING. This in turn signifies, according to Tokai, that the KINGSFORD trademarks are weak and, thus, comparatively small differences will serve to distinguish them. Further, because Kingsford has not filed evidence that it has used its trademarks, Tokai argues that prior use and advertising of the KINGSFORD trademarks (which has not been evidenced) has not sufficiently enhanced their distinctiveness so as to entitle them to a broad scope of protection.
[56] The Third Party Marks constitute state of the register evidence in these proceedings. State of the register evidence generally may be relevant to the extent that it enables the trier to draw inferences regarding the state of the marketplace: McDowell v Laverana GmbH & Co KG, 2017 FC 327 [McDowell] at para 42. The trier may be inclined to draw inferences about state of the marketplace, however, only where there is evidence of a large number of relevant registrations. In theory, an element that is common in the marketplace may have little distinctiveness, thus causing consumers to pay greater attention to small differences (i.e. other features) between and among trademarks containing or comprised of that element: McDowell, above at para 42; Alticor Inc v Nutravite Pharmaceuticals Inc, 2004 FC 235 [Alticor] at para 59, citing Kellogg Salada Canada Inc v Maximum Nutrition Ltd (1992), 43 CPR (3d) 349 (FCA) [Kellogg].
[57] In Alticor, the state of the register evidence demonstrated in excess of 100 relevant registrations of trademarks with the prefix NUTR, while in Kellogg, there were in excess of 50 relevant trademark registrations and more than 40 trade names involving NUTRI. In McDowell, however, the state of the register evidence involved just seven owners of 10 registered trademarks that included HONEY as a dominant component. Confronted with this evidence, the Court held that it was insufficient to find HONEY common to the trade (and hence, non-distinctive), absent evidence of common use in the marketplace by third parties: McDowell, above at para 44.
[58] In considering Tokai’s state of the register evidence, I note that there are nine owners of 11 registered and applied for trademarks containing KING or KINGS for goods involving lighters. I find this state of the register evidence in line with the evidence considered by the Court in McDowell. In other words, the number of trademarks is insufficient to draw any inferences about the state of the marketplace, especially in the absence of any demonstrated marketplace use: McDowell, above at para 46, citing Hawke & Company Outfitters LLC v Retail Royalty Co, 2012 FC 1539 at para 40.
(b) Kingsford’s New Evidence
[59] I find that only the certified copies of the seven (of eight) KINGSFORD registrations, attached as Exhibit “F” to the Golverk Affidavit, constitute new evidence in this appeal but that such evidence is not material.
[60] Before the TMOB, Kingsford provided evidence of the particulars of its eight KINGSFORD registrations via the Affidavits of Elenita Anastacio [Anastacio Affidavits]. Attached as an exhibit to each of the Anastacio Affidavits were printouts of the full registration particulars from the CD NameSearch Canadian Trademarks Database. The TMOB exercised the Registrar’s discretion to confirm that the KINGSFORD registrations are in good standing: 953 TMOB Decision, at para 29; and 990 TMOB Decision, at para 25.
[61] Notwithstanding the evidentiary advantage afforded certified copies of documents in the Registrar’s official custody (i.e. that they are evidence of the facts set out in the documents), I am not persuaded that in the circumstances they would have had any significant or probative value in the sense that they would have affected the TMOB’s decisions materially. In my view, the TMOB’s conclusions regarding the factor of the extent and length of use, in the likelihood of confusion analysis, turned not so much on the lack of certified copies. Rather, the TMOB’s findings regarding this factor were based primarily on Kingsford’s lack of evidence of actual use in Canada and, in the case of the 953 TMOB Decision, on the fact that several of the registrations for its KINGSFORD trademarks are based solely on use and registration in the United States of America.
[62] Further, the TMOB noted expressly that, “even if the Opponent had provided certified copies of its registrations, and I had given at least de minimis weight to the date of use claimed… this would not affect my finding on this factor”: 990 TMOB Decision, above at para 41. While the TMOB’s reasoning on this point is less explicit in the 953 TMOB Decision, considering the decisions holistically, I find that the same reasoning may be inferred. In my view, it is apparent that the TMOB Member turned their mind to such evidence, and found that it would have no effect on their conclusions.
D. No Palpable and Overriding Errors
[63] Because I find the parties’ new evidence on appeal either inadmissible or immaterial, and because in my view there are no extricable questions of law in issue, the applicable standard of review in this matter is palpable and overriding error. This is “an even more deferential standard of review than the standard of reasonableness”: Clorox, above at para 38.
[64] Tokai’s concession does not absolve the Court from reviewing the decisions for any palpable and overriding errors. For the reasons below, I am not persuaded that the TMOB erred.
[65] The main issue for the Court’s consideration in this regard is whether the TMOB, on behalf of the Registrar, made any palpable and overriding errors in finding a likelihood of confusion in each case, and not whether the Court would have come to a different conclusion based on the record before the TMOB.
[66] Paragraph 12(1)(d) of the TMA provides that a trademark is registrable if it is not confusing with a registered trademark. The material date for assessing confusion under this provision is the date of the decision of the trier of fact. Because I find the parties’ new evidence is either inadmissible or immaterial, the applicable relevant date is the date of the TMOB’s decisions, namely, October 31, 2018. Such date falls well before June 17, 2019 when significant amendments to the TMA came into force. In my view, the amendments to TMA s 12 have little, if any, impact on the TMA s 12(1)(d) analysis.
[67] Further, subsection 6(2) of the TMA provides that the use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.
[68] Having regard to the Supreme Court decisions Veuve and Masterpiece, as well as the Federal Court of Appeal dec