London Drugs Limited v. International Clothiers Inc.

London Drugs Limited v. International Clothiers Inc.
Court (s) Database
Federal Court Decisions
Date
2014-03-06
Neutral citation
2014 FC 223
File numbers
T-1664-11, T-1665-11
Decision Content
Date: 20140306
Dockets:
T-1664-11
T-1665-11
Citation: 2014 FC 223
Ottawa, Ontario, March 6, 2014
PRESENT: The Honourable Mr. Justice de Montigny
BETWEEN:
LONDON DRUGS LIMITED
Applicant
and
INTERNATIONAL CLOTHIERS INC.
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1] This is an appeal pursuant to section 56 of the Trade-marks Act, RSC 1985, c T-13 (the “Act”) of two decisions rendered by the Trade-marks Opposition Board (the “Board”) of the Canadian Intellectual Property Office (“CIPO”) as a delegate of the Registrar of Trade-marks, dated July 26, 2011 and rendered by Ms Andrea Flewelling (the “Officer”) in respect of application numbers 1,280,468 and 1,280,469 (the “Trade-mark Applications”).
Factual background
[2] On November 22, 2005, International Clothiers Inc. (“INC”, the “Respondent”) filed Canadian Trade-mark Application Nos 1,280,468 and 1,280,469, both for the trade-mark SMITH & BARNES LONDON. These Applications were filed on the basis of proposed use in association with “retail clothing store services; retail department store services” (Application No 1,280,468 – the “Services” Application) and with a wide variety of wares (Application No 1,280,469 – the “Wares” Application) that can be categorized as follows: clothing, ladies’ accessories (hats, gloves, hair clips, jewellery, etc.), soft goods (handbags, purses, wallets, briefcases), housewares (cookware, giftware, dinnerware), kitchen accessories, home furnishing (furniture, bedding, pillows, towels, etc.). The full list of wares is included in Appendix A.
[3] The Services Application was advertised in the Canadian Trade-marks Journal on October 17, 2007. An erratum was published on November 7, 2007 correcting an error with the advertisement which had wrongly included disclaimers for the words SMITH and BARNES. The Applicant filed a Statement of Opposition on December 17, 2007. As for the Wares Application, it was advertised on January 9, 2008 and the Applicant filed its Statement of Opposition on February 5, 2008.
[4] The Applicant is a well-known Canadian drugstore and retailer of general merchandise in Western Canada. The grounds of opposition for both Applications can be summarized as follows:
• The trade-mark SMITH & BARNES LONDON is not registrable pursuant to paragraphs 38(2)(b) and 12(1)(d) of the Act, because it is confusing with the Applicant’s trade-mark registrations covering a wide range of wares and services listed in Appendix B below;
• The Respondent is not the person entitled to registration of the trade-mark SMITH and BARNES pursuant to paragraph 38(2)(c) of the Act, because at the date of filing of the Application:
- the applied-for Mark was confusing with the Applicant’s marks which had previously been used in Canada for the goods and services set out in Appendix B and other goods and services which are of the same type as the services and wares including the sale of clothing and clothing accessories, the clothing and clothing accessories, housewares, jewellery and home furnishings (paragraph 16(3)(a));
- the applied-for Mark was confusing with the trade-mark applications previously filed by the Applicant which were pending at the date of advertisement of the application for the Mark, details of which are set out in Appendix C of these reasons (paragraph 16(3)(b)):
i. LONDON DEPARTMENT STORES – 1,095,092 – filed March 6, 2001
ii.LONDON PREMIERE – 1,247,283 – filed February 15, 2005
iii. LONDON GOURMET – 1,204,476 – filed January 28, 2004
iv. – 1,204,845 – filed February 2, 2004
- the applied-for Mark was confusing with the Applicant’s trade names LONDON, LONDON DRUGS and LONDON DRUGS LIMITED (the “Applicant’s Trade Names”) which had previously been used by the Applicant in Canada (paragraph 16(3)(c))
• The trade-mark is not distinctive nor is it adapted to distinguish the wares and services of the Applicant from the wares and services of the Respondent, pursuant to paragraph 38(2)(d) and section 2 of the Act.
[5] In support of its opposition, the Applicant filed with the Board two affidavits (one for each application) of Grant Ball (General Manager, General Merchandise), sworn on September 17, 2008. Mr Ball was not cross-examined on his affidavits. In his affidavits, Mr Ball alleges the following:
• The Applicant is a leading Canadian drugstore and retailer of general merchandise, including but not limited to clothing, footwear, fashion accessories, cosmetics, health & beauty aids, photographic products, photographic development services, housewares, furniture, food, electronic equipment, audio-visual equipment, computers, stationery, books, magazines, jewellery, watches and optical products;
• The Applicant has been in operation since approximately 1946 and has used the LONDON DRUGS trade-mark in association with the operation of a drugstore and the operation of a department store since approximately 1977. This is evidenced by the sample advertising flyers attached to the affidavits, the first of which is from 1977;
• As of the date of swearing his affidavits, the Applicant operates 69 stores in Canada, specifically 25 in British Columbia, 20 in Alberta, 3 in Saskatchewan and 1 in Manitoba. Flyers were provided in cities in which the Applicant operates;
• There is substantial use in Canada of the Applicant’s marks in association with various wares and services;
• On average, approximately three-quarters of a million transactions take place at the retail locations each week;
• In the last 5 years, the total volume of goods sold using the trade-marks related to the Services Application have been well in excess of 150 million unit annually. Annual gross sales from 2003-2007 have been in excess of $1 billion;
• In the last 5 years, the total volume of goods sold using the trade-marks related to the Wares Application have been well in excess of 7 million unit annually. Annual gross sales from 2004-2007 have been in excess of $50 million;
• The Applicant has spent in excess of $50 million on advertising expenditures, including the flyers mentioned previously;
• The Applicant advertises its services on its website (a copy of which was attached to the Ball affidavits) and the number of hits to the website have been in excess of 2, 4, 6 and 8 million respectively in the years 2004 to 2007.
[6] The Respondent filed the affidavit of Gay Owens, a trade-mark searcher hired by the Respondent’s agent. She states that on January 14, 2009, she conducted a State of the Register search for trade-marks including the word “London” in the field of “clothing, housewares, home furnishings, retail clothing store services and/or department store services”. Her search revealed that there were over 50 trade-mark registrations for wares including clothing and/or accessories, headwear, footwear, leather goods, etc. which included the word “London” in the field of “clothing, housewares, home furnishings, retail clothing store services and/or department store services”.
The impugned decision
[7] In both of his decisions dated July 26, 2011, the Officer first addressed the onus and the material dates. The Officer found that an opponent bears an initial evidential burden to adduce sufficient admissible evidence to support the facts alleged in support of each ground of opposition. An applicant then bears the legal onus of establishing, on a balance of probabilities, that the application complies with the requirements of the Act and that the particular grounds of opposition should not prevent registration of the mark. The Officer determined that this onus is applicable to all grounds of opposition.
[8] The Officer also established the following material dates. With respect to the first ground of opposition (registrability/confusion), the material date is that of the Officer's decision. With respect to the second, third and fourth grounds (entitlement to register/confusion), the material date is the application filing date. Finally, the material date for the last ground of opposition (distinctiveness) is the date when the Statement of Opposition was filed.
[9] In addressing the first ground of opposition, the Officer focused her analysis on the trade-mark LONDON DRUGS (TMA311,269) covering the following services “operation of a drugstore and the operation of a department store”, as she found it to be representative of the Applicant’s marks. The Officer also determined that only three of the Applicant’s marks cover limited wares which overlap with the applied-for Marks of the Respondent: LONDON GOLD MINE (TMA370,629), LONDON DRUGS JEWELLERY (TMA300,627) and LONDON PREMIERE & DESIGN (TMA581,005). The question, therefore, was whether or not there is confusion between these marks and the Respondent’s applied-for Mark.
[10] The Officer stated that the test for confusion is one of first impression and imperfect recollection. She summarized subsection 6(2) of the Act and indicated that in applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in subsection 6(5) of the Act. She added that in most instances, the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested is the dominant factor.
[11] Starting with the degree of resemblance, the Officer found that there is no similarity between the SMITH and BARNES elements of the trade-mark SMITH & BARNES LONDON and the DRUGS element of the Applicant’s LONDON DRUGS trade-mark in either appearance or sound. The Officer left aside the word “London” because it possesses little inherent distinctiveness due to its geographical connotation. She further found that, aside from the inclusion of the place name “London”, there is no similarity in the ideas suggested by both trade-marks (drugs for LONDON DRUGS and two individuals by the names of SMITH and BARNES for the trade-mark SMITH & BARNES LONDON). Ultimately, the Officer concluded that the fact that both trade-marks share the word LONDON is not sufficient to find that the parties’ trade-marks share any significant degree of resemblance in either appearance, sound or ideas suggested.
[12] The Officer then analysed the remaining factors and found the following. With respect to paragraph 6(5)(a) (inherent distinctiveness/acquired distinctiveness), she found that the word LONDON present in both parties’ marks is a geographic designation which, as such, is not inherently distinctive. SMITH and BARNES similarly possess little inherent distinctiveness by virtue of their surname significance. DRUGS is also descriptive of the nature of the Applicant’s services and thus possesses little inherent distinctiveness. The same is true of the words GOLD MINE and DRUGS JEWELLERY in the first two of the Applicant’s marks covering wares, as they are suggestive of the associated jewellery wares. As for the word PREMIERE, it does not add either to the inherent distinctiveness of the mark LONDON PREMIERE & Design. As a result, the Officer found that neither of the parties’ marks is inherently strong, and that even small differences will accordingly be sufficient to distinguish between them.
[13] Nevertheless, a trade-mark can have an acquired distinctiveness depending on the extent to which this trade-mark has become known. The Respondent did not file any evidence directed to the use of its applied-for trade-mark, and the Officer was therefore unable to conclude as to the extent to which that Mark has become known. The Applicant, on the other hand, has filed significant evidence of use and was able to establish a significant reputation for the LONDON DRUGS trade-mark in Canada. Based on the evidence submitted by the Applicant, in particular the Ball Affidavits, the Officer was satisfied that the LONDON DRUGS trade-mark had established a significant reputation in Canada in association with the claimed services. With respect to the Applicant’s registrations for relevant wares, the Officer noted significant deficiencies in the evidence, including the fact that the use of the marks in advertising does not qualify as use of the marks in association with wares, and the absence of detailed sales figures for each of the relevant categories of wares.
[14] In the end, the Officer agreed with the Respondent that, “regardless of the extent to which parties’ marks may have become known, the inherent distinctiveness of the marks remains a relevant surrounding circumstance that must be considered in the analysis of the likelihood of confusion between trade-marks” (at para 41 of the “Services” decision and para 45 of the “Wares” decision). The Officer also concluded that the reputation of the Applicant does not extend to the word LONDON but only to the mark itself:
While I agree that a common word, like “London”, can develop strong secondary meaning through extensive use as a trade-mark, it is important to note that, in the context of this opposition proceeding, the Opponent’s reputation extends only to the Opponent’s Marks, not to the word “London” by itself. Through its submissions, the Opponent is essentially attempting to claim a monopoly over the word “London”. While I agree that the Opponent has developed an extensive reputation for the Opponent’s Marks, it has not acquired a reputation for the word “London” by itself sufficient to take it outside of its common meaning. It is important to note that each of the Opponent’s Marks include other elements which serve to create substantial differences between the parties’ marks, as discussed above in the analysis of the s. 6(5)(e) factor.
“Services” Decision, para 42.
[15] As for the length of time each mark has been in use (paragraph 6(5)(b)), the Officer found that this factor favoured the Applicant as of the material date. While the Respondent has not filed any evidence directed to the use of its proposed Mark subsequent to the filing of his applications on November 22, 2005, the Applicant has provided extensive evidence establishing the use of its LONDON DRUGS trade-mark in association with the operation of a drugstore and the operation of a department store since approximately 1977. However, there is no evidence of significant and continuous use of the LONDON GOLD MINE, LONDON DRUGS JEWELLERY and LONDON PREMIERE trade-marks.
[16] With respect to the nature of the wares and services (paragraph 6(5)(c)), the Officer’s starting point is the Respondent’s statement of services and wares as defined in its applications versus the Applicant’s registered wares and services. She found that there is direct overlap between the parties’ services in the form of department store services, and some similarity between the Respondent’s “retail clothing store services” and the Applicant’s “retail department store services”. As for the wares, the Officer found that there is also some similarity between the Respondent’s wares and the Applicant’s “retail department store services”, on the basis of the evidence provided by the Respondent that it sells small leather goods, clothing, headwear, footwear, accessories, housewares and home furnishings in its retail stores. Yet, the majority of these goods are third-party branded products that may or may not display other trade-marks, and therefore it does not constitute use of the Applicant’s marks in association with these products in accordance with subsection 4(1) of the Act. Finally, the Officer was also of the view that there is some overlap in the nature of the parties’ wares with respect to the trade-marks LONDON GOLD MINE, LONDON DRUGS JEWELLERY, and LONDON PREMIERE & DESIGN.
[17] Concerning the nature of the trade (paragraph 6(5)(d)), the Officer noted that neither the Applicant’s registrations nor the Respondent’s applications includes any restriction on the channels of trade. She found, therefore, that the channels of trade associated with the Respondent’s Mark and the Applicant’s marks could overlap given the direct overlap in the parties’ wares and services.
[18] The Officer also looked at some additional surrounding circumstances. With respect to the State of the Register, the Officer held that, in view of the number of co-existing LONDON marks disclosed by the Owens affidavit (over 50 trade-mark registrations for wares including clothing and/or accessories/headwear/footwear/leather goods/etc.), this factor favoured the Respondent in connection with the Wares Application. On the other hand, as few (only three) co-existing LONDON marks were found within the store services field, the Officer found that this did not favour the Respondent in relation to the Services Application.
[19] The second surrounding circumstance considered by the Officer is the Applicant’s alleged family of LONDON trade-marks. The Officer found that the Applicant has succeeded in establishing its ownership of a family of the following four trade-marks: LONDON DRUGS, LONDON PREMIERE, LONDON GOURMET and LONDON HOME. She noted that a family of four “London” trade-marks is insufficient to overcome the fact that the word “London” possesses little inherent distinctiveness and is a geographical word for which the Applicant has not established sufficient reputation therein. She added that the additional elements or these marks are common words which are suggestive of the Applicant’s wares and services and thus possess little inherent distinctiveness.
[20] On the basis of all these factors and surrounding circumstances, the Officer was satisfied that the Respondent had discharged its burden of showing, on a balance of probabilities, that there is no reasonable likelihood of confusion between the applied-for Mark and the Applicant’s marks.
[21] The Officer then addressed the non-entitlement arguments presented by the Applicant. The Officer acknowledged that the Applicant had provided sufficient evidence of use of its trade-marks and of its pending applications to satisfy its evidential burden with respect to each of these three grounds of opposition. Based on her previous finding that there is no likelihood of confusion between the parties’ trade-marks, and given that the different material dates do not materially affect her conclusion in that respect, she dismissed these non-entitlement grounds.
[22] As for the non-distinctiveness ground, the Officer was satisfied that the Applicant had provided sufficient evidence to support a finding that one or more of its marks had become known sufficiently to negate the distinctiveness of the proposed Mark as at the date of filing the Statement of Opposition. Again, this ground was nevertheless dismissed because of the Officer’s prior finding that the proposed Mark is not confusing with the Applicant’s marks.
New evidence
[23] Additional affidavit evidence was filed by both parties as a result of the Notices of Application for an appeal of the TMOB decisions. The Applicant filed the affidavit of Robert Felix (General Manager and Business Unit Manager General Merchandise). The Respondent filed three additional affidavits, that of Jessica Koper (private investigator employed by CKR Global Investigations), of Gay Owens and of Pamela Tuchlin (law clerk at Smart & Biggar). The Applicant cross-examined Jessica Koper on her affidavit.
- The Felix Affidavit
[24] In his affidavit, Mr Felix provides an updated list of trade-mark registrations and applications which are owned by London Drugs in Canada. The trade-marks LONDON PREMIERE, LONDON GOURMET and LONDON GOURMET & Design, which were pending at the time of the Ball Affidavits (see Appendix C), have since been registered with the Canadian Trade-marks Office, while applications for the trade-marks LONDON ORCHARDS, LONDON LOOK, and LONDON PLANTATION were filed based on proposed use after the Ball Affidavits. It is also stated that London Drugs owns registrations and applications that were not included in the Ball Affidavits.
[25] Mr Felix then focuses on a selection of the LONDON Marks and their associated products and services, and sets out a general description and/or examples of the types of products sold by London Drugs within various categories. He then provides a breakdown of the number of units and overall sales for each category of goods sold by London Drugs. He gives the specific locations of London Drugs’ stores, and attaches copies of photographs of exterior signage and of various departments within these stores. He also reiterates and updates the figures already given in the Ball Affidavits with respect to the annual advertising budget, the flyers circulation and the number of annual visits to the London Drugs website. Copies of newspaper articles from 2000 to 2011 with London Drugs as the headline of the story are also attached as exhibits to the affidavit.
[26] Mr Felix also attaches to his affidavit copies of photographs, packaging and/or labels of representative products sold in association with the LONDON DRUGS brand in various categories of wares. He also provides the annual sales for selected categories of goods sold by London Drugs in association with its private label LONDON DRUGS and LONDON DRUGS & Design. The products imported by London Drugs are tracked separately from their ordinary private label products and are not included in the sales figures mentioned above. The majority of the LONDON imports are sold with LONDON DRUGS marked either on a sticker attached to the product packaging or on the hand tag physically attached to the product.
[27] Finally, the Felix Affidavit provides copies of photographs, packaging and/or labels of representative products and services sold in association with the selection of the LONDON marks referred to above. It also provides the volume and gross sales of products or services annually for the past ten years or so. Mr Felix concludes that, to his knowledge, the Applicant is the only general merchandise retailer in Western Canada using the name LONDON in association with a wide variety of products and services, and the only retail department store using LONDON as a trade-mark in association with services. He believes that the use of LONDON in SMITH & BARNES LONDON by a competitor will lead the public to believe or at least question whether the Respondent’s products and services are affiliated with the Applicant.
- The Koper Affidavit and cross-examination
[28] On June 12, 2012, counsel for the Respondent instructed CKR Global Investigations to examine the state of the marketplace in Canada for third party uses of business and corporate names that include the word “LONDON”, in particular those businesses in the fields of clothing and accessories, home furnishings and housewares. Ms Koper searched the yellow pages website, the Registraire des Entreprises du Québec website and did a NUANSsearch of corporations and registered business having the name LONDON in their business or corporate names. She also followed up with further searches to obtain information on the status and the nature of these businesses. She found 46 businesses and corporate names of active businesses that include the word LONDON in the fields of clothing and accessories, home furnishings and/or housewares.
[29] On cross-examination, Ms Koper confirmed that she did not have personal knowledge of whether all the businesses identified in her affidavit were active at the time she swore her affidavit, nor did she have personal knowledge of what they sold, when they commenced business and what their volume of sales were. She did not visit or make a purchase from any of the businesses listed in her affidavit or even look at the store in Google Streetview; she only knows about what the businesses sell from viewing the website or looking at the categories they were in on the Canada 411 listings. She was not aware either of the signage used at these businesses, or whether any of them were actually using a trade name that includes the word LONDON, with a few exceptions when the stores answered the phone.
- The 2012 Owens Affidavit
[30] On June 11, 2012, Ms Owens conducted another computer-assisted State of the Register search using the CDNameSearch Corp system for the purpose of locating active trade-mark registrations and applications containing the word LONDON in the field of clothing, housewares, home furnishings, retail clothing store services and/or department store services. This evidence essentially replaces her previous affidavit filed in 2009 before the Board as part of the opposition. In this new affidavit, there are 134 trade-marks listed containing the word LONDON, of which there are 102 registrations. It appears that none of them relate to retail department store services (in 2009, three were found). Only two relate to a retail clothing business (AQUASCUTUM OF LONDON and AQUASCUTUM OF LONDON, ENGLAND) and one relates to a retail footwear store (SACHA LONDON). The affidavit also establishes that there are numerous co-existing registrations in Canada (more than what was found in 2009) which include the word LONDON within the field of clothing, accessories, soft goods, housewares and home furnishings. For example, with respect to housewares, three related registrations were found and another three relate to home furnishing (in 2009, none were found). It also appears that the word LONDON has been disclaimed in many registrations.
- The Tuchlin Affidavit
[31] The Affidavit of Pamela Tuchlin provides copies of corporation profile reports and business name reports for entities in Canada that include the word LONDON in their corporate and business names. Thirty-seven (37) businesses with the word LONDON in their trade names were found, thirty-three (33) of which were in Ontario, one (1) in Quebec, two (2) in Nova Scotia and one (1) incorporated federally. Most of those were canvassed by Ms Koper’s investigation.
Issues
[32] The issues to be resolved in this appeal are the following:
a) What is the applicable standard of review?
b) Depending on the applicable standard of review, was the Officer’s decision reasonable / correct?
Analysis
a) The standard of review
[33] It is settled law that, in the absence of additional evidence produced on appeal under section 56 of the Act, the reasonableness standard of review applies. It is also well established that when new evidence is submitted, it is necessary to assess the significance and probative value of such evidence. Where the new evidence adduced is sufficiently significant and probative, to the point that it would have materially affected the Board’s findings of fact or the discretion exercised, the standard of review to be applied is correctness. As Mr Justice Rothstein stated (writing for the majority of the Federal Court of Appeal) in Molson Breweries v John Labatt Ltd (2000), 5 CPR(4th) 180, [2000] 3 FC 145, at para 51:
I think the approach in Benson & Hedges v. St. Regis and in McDonald’s Corp. 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.
[34] That decision has been explicitly endorsed by the Supreme Court in Mattel Inc v 3894207 Canada Inc, [2006] 1 SCR 772, at para 41 [Mattel], and it is therefore clear that this Court has an unfettered discretion to come to its own conclusion as to the correctness of the Board’s decision if new evidence has been filed that is significant and would materially affect the Registrar’s decision: see Telus Corp v Orange Personal Personal Communications Services Ltd, 2005 FC 590, at para 397; Bojangles’ International, LLC v Bojangles Café Ltd, 2006 FC 657, at paras 9-10; CEG License Inc v Joey Tomato’s (Canada) Inc, 2012 FC 1541, at para 14-16.
[35] Having considered all of the affidavits filed before this Court, and bearing in mind that the test is one of quality, not of quantity (Wrangler Apparel Corp v The Timberland Company, 2005 FC 722, at paras 7-9), I am of the opinion that the new evidence is not of such significance that it would have materially affected the Officer’s findings of fact or the exercise of her discretion.
[36] At the hearing, counsel for the Respondent readily conceded that the Koper and Tuchlin affidavits do not have much weight and would not be sufficient to call for the application of the correctness test. There was no evidence relating to the state of the marketplace before the Officer, who relied instead on the information presented in relation to the State of the Register. While the Respondent attempted to address this deficiency with the Koper Affidavit, its shortcomings undermine much of its weight. She was not questioned on many of the businesses referred to in her affidavit, but the fact remains that she did not know about the existence or the nature of a large number of the businesses that she identified. Even if, as submitted by the Respondent, 16 of the 46 businesses that include the word LONDON in their names were confirmed by Ms Koper as being active, it is far from clear that this would be sufficient to draw any conclusion as to the state of the marketplace. We do not know what these businesses sell, when they commenced business, what their volume of sales, what their reputation is, etc. Moreover, many of these businesses appear to operate in the area of London, Ontario, and the use of LONDON in their names obviously refers to their geographic location more so than to a trade-mark.
[37] The same is true, to a large extent, of the Tuchlin Affidavit. Much like the businesses referred to in the Koper Affidavit, we do not know the field of business for any of the entities referred to in her affidavit, and whether they are still active. Moreover, the vast majority of these businesses were already canvassed by Ms Koper in her investigation.
[38] As for the second Owens Affidavit, it is essentially an updated version of the first one filed before the Officer. It suggests that, just as in 2009, there are still three relevant registrations for retail clothing store services and/or department store services, a number that was considered by the Officer to be insufficient to infer anything regarding the state of the marketplace. It also adds to a vast number of registrations relating to clothing, soft goods and accessories, three registrations for home furnishings and three others for housewares. The Officer rejected the Applicant’s argument that the absence of registration for housewares or home furnishings and only three relevant registrations for retail clothing store services and/or department store services did not permit the Opposition Board to make any inferences as to the actual use of any of these trade-marks in the Canadian marketplace for these wares and services. Clearly, the addition of registrations for housewares and home furnishings would only reinforce his finding that the extensive use of the word “LONDON” for clothing, accessories, leather goods, etc. serves to decrease the likelihood of confusion between the parties’ marks.
[39] There remains the Felix Affidavit. It will be recalled that the Officer, in his decision on the Wares Application, indicated that the only evidence of use of the Applicant’s LONDON trade-marks on relevant wares, shown in the Ball Affidavits, is in respect of the trade-marks LONDON DRUGS, LONDON DRUGS & Design, and LONDON PREMIERE & Design. In addition, the Officer agreed with the Respondent’s position that the Ball Affidavits did not provide detailed sales figures for each category of wares sold in association with the Applicant’s trade-marks, such that the Applicant’s overall sales may have taken place in categories that do not overlap with the wares of the Respondent. Finally, the Officer also concluded in both of his decisions that the Applicant had only shown use of four members of the family of LONDON trade-marks: LONDON DRUGS, LONDON PREMIERE, LONDON GOURMET, and LONDON HOME.
[40] I do not find that this affidavit would have radically changed the Board’s decision. Counsel for the Applicant submitted that the evidence of use of the Applicant’s LONDON trade-marks is greatly expanded upon in the Felix Affidavit, with a detailed breakdown of sales by different departments. I note, first of all, that some of the new evidence relates to trade-marks that were not even relied upon or pleaded within the Applicant’s Statements of Opposition. More importantly, this new evidence does not substantially address the main grounds upon which the Board’s decision rests. The Officer was aware of the many trade-marks owned by the Applicant and that they are widely used over a broad range of products. Adding more trade-marks to the mix and providing more evidence of their use in relation to even more products would not have altered his view that LONDON possesses little distinctiveness due to its geographical connotation, or that there is no similarity between the SMITH and BARNES elements of the Respondent’s Mark and the DRUGS element of the Applicant’s LONDON DRUGS trade-mark in either appearances or sound.
[41] For those reasons, I am of the view that the Court must consider the merits of these applications on a standard of reasonableness. As a result, the issue to be decided is whether the Board’s decision falls within a range of possible, acceptable outcomes that are defensible with respect to the facts and the law.
b) Was the Officer’s decision reasonable?
- Registrability
[42] As will be recalled, the first ground of opposition raised by the Applicant is that the Mark SMITH & BARNES LONDON is not registrable pursuant to paragraph 38(2)(b) and paragraph 12(1)(d) of the Act because it is confusing with its own trade-mark registrations. These provisions read as follows:
Grounds
38 (2) A statement of opposition may be based on any of the following grounds:
(…)
(b) that the trade-mark is not registrable;
Motifs
38 (2) Cette opposition peut être fondée sur l’un des motifs suivants :
(…)
b) la marque de commerce n’est pas enregistrable;
When trade-mark registrable
12. (1) Subject to section 13, a trade-mark is registrable if it is not
(…)
(d) confusing with a registered trade-mark;
Marque de commerce enregistrable
12. (1) Sous réserve de l’article 13, une marque de commerce est enregistrable sauf dans l’un ou l’autre des cas suivants :
(…)
d) elle crée de la confusion avec une marque de commerce déposée;
[43] Subsection 6(2) of the Act expands on what is meant by a trade-mark that is “confusing with a registered trade-mark”, for the purposes of paragraph 12(1)(d). In considering the issue of “likelihood of confusion”, regard must be had to all the surrounding circumstances, including the factors itemised in subsection 6(5) of the Act:
When mark or name confusing
(…)
Idem
6 (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.
(…)
What to be considered
6 (5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
(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.
Quand une marque ou un nom crée de la confusion
(…)
Idem
6 (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.
(…)
Éléments d’appréciation
6 (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.
[44] In Mattel at paras 56-57, the Supreme Court recognized that confusion is to be considered from the perspective “…of the average person endowed with average intelligence acting with ordinary caution” and that “we owe the average consumer a certain amount of credit” and that “one must not proceed on the assumption that the prospective customers or members of the public generally are completely devoid of intelligence or of normal powers of recollection or are totally unaware or uninformed as to what goes on around them”.
[45] The Officer correctly identified the governing legal principles, and the only issue in this appeal is therefore the reasonableness of his assessment of the facts in light of these principles. I shall therefore turn to each of the factors set out in subsection 6(5) with a view to determine if the conclusions reached by the Officer can be supported by the evidence filed by the parties.
a) Inherent distinctiveness and extent known (paragraph 6(5)(a))
[46] Counsel for the Applicant submitted that the Officer erred in finding that the trade-mark LONDON DRUGS has little inherent distinctiveness. Counsel submitted that a trade-mark incorporating a geographic designation may be distinctive where it is used in association with wares and services that have no pre-existing connection to that geographic designation. It is only where a geographic designation is used in relation to wares or services for which that area is renowned, and merely seeks to capitalize on the existing public association between the two, that the resultant trade-mark will have little inherent distinctiveness.
[47] I agree with the Respondent that such an argument stems from a fundamental misconception and misunderstanding of paragraph 6(5)(a) of the Act and of the very notion of distinctiveness. The distinctiveness of a mark has to do with its originality, uniqueness and inventiveness, not with the absence of deception. As stated by this Court in ITV Technologies Inc v WIC Television Ltd, 2003 FC 1056 (aff’d 2005 FCA 96) at paras 119-121:
The inherent distinctiveness of a mark refers to its originality. A mark that is composed of a unique or invented name, such that it can only refer to one thing, will possess more inherent distinctiveness than a word that is commonly