Beverly Hills Jewellers MFG Ltd. v. Corona Jewellery Company Ltd.

Beverly Hills Jewellers MFG Ltd. v. Corona Jewellery Company Ltd.
Court (s) Database
Federal Court Decisions
Date
2021-06-28
Neutral citation
2021 FC 673
File numbers
T-1491-17
Decision Content
Date: 20210628
Docket: T-1491-17
Citation: 2021 FC 673
Ottawa, Ontario, June 28, 2021
PRESENT: The Honourable Mr. Justice Brown
APPLICATION UNDER Section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13, in relation to application no. 1593806 for the trade-mark TRULY CANADIAN CERTIFIED GOLD & Design
BETWEEN:
BEVERLY HILLS JEWELLERS MFG LTD.
Applicant
and
CORONA JEWELLERY COMPANY LTD.
Respondent
JUDGMENT AND REASONS
Table of Contents
I. Facts and decision under review 4
A. General 4
B. Factors included in a confusion analysis 8
C. Related Diamond Dispute 10
D. TMOB proceedings 10
E. Appeal to the Federal Court under section 56 12
II. Issues 13
III. Standard of review on section 56 appeals 14
A. Housen v Nikolaisen, 2002 SCC 33 establishes two branches of appellate review 14
B. What is meant by palpable and overriding error for questions of fact and mixed fact and law? 15
C. Questions of law are to reviewed on a standard of correctness 17
D. Tests for additional or new evidence 17
(1) What is material new evidence? 17
E. Material dates 21
F. Analysis of materiality of new evidence under subsection 16(1) of the Act 22
(1) Vaccaro 2019 Affidavit filed by the Applicant 24
(2) Singh Affidavit filed by the Applicant 32
(3) Soare 2019 Affidavit filed by the Respondent 32
(4) Summary of analysis and conclusion regarding alleged material new evidence 35
IV. Analysis of the TMOB Decision on the Housen appellate standard of palpable and overriding error 36
A. General 36
B. What constitutes a palpable and overriding error? 37
C. Analysis under subsection 16(1) 38
D. Relevance and consideration of the decision(s) of the Examiner in this appeal 39
E. Subsection 6(5) analysis, part 1 41
(1) Degree of Resemblance, per paragraph 6(5)(e) 42
(2) Inherent distinctiveness and extent to which the marks have become known, per paragraph 6(5)(a) 50
(3) Length of time each mark has been in use, per paragraph 6(5)(b) 59
(4) Nature of the goods and channels of trade, per paragraphs 6(5)(c) and (d) 60
(5) Surrounding Circumstances 70
(a) State of the Register 71
(b) Actual Confusion 74
F. Subsection 6(5) analysis, part 2 75
V. Conclusion 78
VI. Costs 82
[1] This is an appeal of a decision by the Trade-marks Opposition Board [TMOB] in the name of the Registrar of Trade-marks [Registrar]. The TMOB refused the Applicant’s application to register the trade-mark TRULY CANADIAN CERTIFIED GOLD and Design (Application no. 1,593,806) [GOLD Mark]:
The application was refused by the TMOB [Decision] based on an opposition filed by the Respondent [also referred to as Corona] which alleged confusion with the trade-mark CANADIAN CERTIFIED GOLD and Design (TMA767318) [CORONA Mark]:
The TMOB focussed on the CORONA Mark having concluded the Respondent would not succeed on any other of its marks. The TMOB agreed with the Respondent’s opposition, found the Applicant’s GOLD Mark confusing with the CORONA Mark and refused the Applicant’s application.
[2] The Applicant appeals under section 56 of the Trade-marks Act, RSC 1985, c T-13 [Act] for a direction that the TMOB reject the opposition to the GOLD Mark and related relief. The Respondent asks the appeal be dismissed and the applications be refused, with costs.
[3] The Act was amended on June 17, 2019, such that, among other things, it was renamed the Trademarks Act. This Appeal, however, is governed by the former Act with its hyphenated name.
I. Facts and decision under review
A. General
[4] The Applicant filed its application for the GOLD Mark covering “Jewellery; Gold” based on use in Canada since January 1, 2012. The application was filed September 12, 2012.
[5] According to the Certified Tribunal Record [CTR], the application for the GOLD Mark was initially rejected for advertising by the trade-mark examiner [Examiner] because of confusion with the CORONA Mark, and other marks owned by the Government of Northwest Territories [CTR p. 128]. However, the Applicant provided further submissions to the TMOB who allowed advertising [CTR, pp. 114 to 124].
[6] The application was advertised for opposition purposes in the Trade-marks Journal on April 30, 2014.
[7] The Respondent filed a statement of opposition on June 26, 2014 under section 30, paragraph 12(1)(d), subsection 16(1), and section 2 of the Act, based on its CORONA Mark:
[8] The grounds of opposition were confusion with a previously used or known trade-mark per subsection 16(1), confusion with a registered trade-mark per paragraph 12(1)(d), and distinctiveness per section 2. The opposition also relied on subsection 30(i) (bad faith) which was rejected by the TMOB and not pursued on this appeal.
[9] As the TMOB properly held at paragraph 4 of the Decision, “the grounds of opposition as pleaded revolve around the likelihood of confusion between the [GOLD] Mark and the following trade-marks of the [Respondent], used in association with, among other things, ‘jewellery; gold’ (collectively, the CORONA Marks)”. As noted, the TMOB ultimately focussed on only the CORONA Mark.
[10] The core provisions for these three grounds are as follows; I emphasize confusion under subsection 16(1) because it is the basis on which this appeal is decided:
Confusion with a trade-mark previously used or made known: Subsection 16(1) says a person is not entitled to register a trade-mark if, at the date the trade-mark was first used [abbreviated to “first use”], it was confusing with a trade-mark that had been previously used in or made known in Canada. In this case, the CORONA Mark had been previously used or made known at the date of first use of the GOLD Mark:
Registration of marks used or made known in Canada
Enregistrement des marques employées ou révélées au Canada
16 (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with goods or services is entitled, subject to section 38, to secure its registration in respect of those goods or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with
16 (1) Tout requérant qui a produit une demande selon l’article 30 en vue de l’enregistrement d’une marque de commerce qui est enregistrable et que le requérant ou son prédécesseur en titre a employée ou fait connaître au Canada en liaison avec des produits ou services, a droit, sous réserve de l’article 38, d’en obtenir l’enregistrement à l’égard de ces produits ou services, à moins que, à la date où le requérant ou son prédécesseur en titre l’a en premier lieu ainsi employée ou révélée, elle n’ait créé de la confusion :
(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;
a) soit avec une marque de commerce antérieurement employée ou révélée au Canada par une autre personne;
[Emphasis added]
[Je souligne]
Confusion with a registered trade-mark: Paragraph 12(1)(d) states a trade-mark is registrable if, at the date of the Decision, see Park Avenue Furniture Corp. v Wickes/Simmons Bedding Ltd., (1991) 130 NR 223 (FCA) [Desjardins JA] [Park], it is not confusing with a registered trade-mark:
When trade-mark registrable
Marque de commerce enregistrable
12 (1) Subject to section 13, a trade-mark is registrable if it is not
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) confusing with a registered trade-mark;
d) elle crée de la confusion avec une marque de commerce déposée;
…
…
[Emphasis added]
[Je souligne]
3. Distinctiveness: Section 2 is the general definition section and requires a trade-mark to be “distinctive” as of the date of filing of the opposition, see Metro-Goldwyn-Mayer Inc. v Stargate Connections Inc., 2004 FC 1185 [Simpson J] [Stargate]:
trade-mark means:
marque de commerce Selon le cas:
(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish goods or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,
a) marque employée par une personne pour distinguer, ou de façon à distinguer, les produits fabriqués, vendus, donnés à bail ou loués ou les services loués ou exécutés, par elle, des produits fabriqués, vendus, donnés à bail ou loués ou des services loués ou exécutés, par d’autres;
…
…
(c) a distinguishing guise, or
c) signe distinctif;
(d) a proposed trade-mark; (marque de commerce)
d) marque de commerce projetée. (trade-mark)
[Emphasis added]
[Je souligne]
B. Factors included in a confusion analysis
[11] Subsection 6(5) of the Act provides an inclusive list of considerations to use to determine if a trade-mark is confusing. These will be reviewed in detail later in these Reasons. The list is inclusive, which means there may be other relevant circumstances:
When mark or name confusing
Quand une marque ou un nom crée de la confusion
6 (1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.
6 (1) Pour l’application de la présente loi, une marque de commerce ou un nom commercial crée de la confusion avec une autre marque de commerce ou un autre nom commercial si l’emploi de la marque de commerce ou du nom commercial en premier lieu mentionnés cause de la confusion avec la marque de commerce ou le nom commercial en dernier lieu mentionnés, de la manière et dans les circonstances décrites au présent article.
Idem
Idem
(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 goods or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.
(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 produits liés à ces marques de commerce sont fabriqués, vendus, donnés à bail ou loués, ou que les services liés à ces marques sont loués ou exécutés, par la même personne, que ces produits ou ces services soient ou non de la même catégorie générale.
…
…
What to be considered
Éléments d’appréciation
(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
(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) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
a) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus;
(b) the length of time the trade-marks or trade-names have been in use;
b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage;
(c) the nature of the goods, services or business;
c) le genre de produits, services ou entreprises;
(d) the nature of the trade; and
d) la nature du commerce;
(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
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.
[Emphasis added]
[Je souligne]
C. Related Diamond Dispute
[12] This case was heard by the TMOB, and subsequently by this Court, together with another trade-mark dispute between the same parties involving not gold jewellery, but diamond jewellery [Related Diamond Dispute]. The Related Diamond Dispute concerns trade-mark applications for FIRE AND ICE CANADIAN DIAMOND & Design (Application no. 1,615,226) and FIRE ON ICE CANADIAN DIAMOND & Design (Application no. 1,615,229) filed by the same Applicant on February 22, 2013. The Related Diamond Dispute applications were opposed by the Respondent due to confusion with its registered word mark MAPLE LEAF DIAMONDS (TMA688061), and its registered design mark GEOMETRIC Design (TMA677376). The Related Diamond Dispute in this Court is the subject of file number T-1485-17.
[13] The TMOB rejected the Applicant’s application for the GOLD Mark, and also rejected its applications in the Related Diamond Dispute applications. The Applicant has appealed both the TMOB decision concerning to the GOLD Mark application, and the Related Diamond Dispute to this Court under section 56 of the Act. The Court heard the Related Diamond Dispute appeal together with the present appeal regarding the GOLD Mark and CORONA Mark. The Court is releasing judgment in the Related Diamond Dispute at the same time as judgment is released in the present case; both appeals are being dismissed.
D. TMOB proceedings
[14] Affidavit evidence was filed by both parties before the TMOB. The Applicant filed the affidavit of Mr. Giovanni Vaccaro (President of the Applicant) who provided information on the GOLD Mark and background about the company [Vaccaro 2015 Affidavit]. The Applicant also filed the affidavit of Ms. Elenita Anastacio (a trade-mark searcher with the agents for the Applicant) with trade-mark register evidence [Anastacio 2015 Affidavit]. The Respondent filed the affidavit of Ms. Diana Soare (Marketing Director of the Respondent) who provided considerable information about the use of the Respondent’s mark, its sales, advertisements and other information relating to the CORONA Mark [Soare 2014 Affidavit].
[15] There were no cross-examinations on the affidavits filed at the TMOB.
[16] Written arguments were exchanged between the parties at the TMOB. After an oral hearing, the TMOB issued its Decision on July 31, 2017 and refused the application based on confusion between the GOLD Mark and the CORONA Mark. The TMOB found confusion under paragraph 12(1)(d), subsection 16(1) and section 2 of the Act.
[17] On the same day, the TMOB issued its Decision dismissing the application requested in the Related Diamond Dispute because of confusion under paragraph 12(1)(d), subsection 16(3) and section 2 of the Act.
E. Appeal to the Federal Court under section 56
[18] On October 2, 2017, the Applicant filed a Notice of Application appealing the TMOB Decision to this Court under section 56 of the Act. The Applicant filed a Notice of Application in the Related Diamond Dispute on the same day.
[19] Section 56 creates a right of appeal, but with a special feature permitting the filing of additional evidence which, if found to be material and accepted, allows the Court to exercise any discretion vested in the Registrar. The parties agree additional new evidence must be material to be considered on a section 56 appeal. Subsections 56(1) and 56(5) provide:
Appeal
Appel
56 (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
56 (1) Appel de toute décision rendue par le registraire, sous le régime de la présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui suivent la date où le registraire a expédié l’avis de la décision ou dans tel délai supplémentaire accordé par le tribunal, soit avant, soit après l’expiration des deux mois.
…
…
Additional evidence
Preuve additionnelle
(5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.
(5) Lors de l’appel, il peut être apporté une preuve en plus de celle qui a été fournie devant le registraire, et le tribunal peut exercer toute discrétion dont le registraire est investi.
[Emphasis added]
[Je souligne]
[20] The Applicant filed two affidavits on its appeal to this Court, the affidavit of Mr. Vaccaro sworn April 12, 2019 [Vaccaro 2019 Affidavit] and the affidavit of Sandy Singh, an articling student for counsel for the Applicant, sworn April 12, 2019 [Singh Affidavit].
[21] The Respondent also filed new evidence on this appeal, namely the affidavit of Ms. Soare affirmed October 21, 2019 [Soare 2019 Affidavit].
[22] Mr. Vaccaro and Ms. Soare were cross-examined on the affidavits filed in this Court.
[23] The parties helpfully filed a joint record and joint book of authorities containing material relevant to the marks in this case, and in the Related Diamond Dispute. The hearing of the appeal in the Related Diamond Dispute took place by ZOOM videoconference on March 15, 2021 and part of March 16, 2021 in Ottawa and Toronto. The hearing of this appeal continued in the same format and places for the balance of March 16, 2021.
II. Issues
[24] The issues are:
What is the standard of review and legal methodology applicable to this case?
Does the Applicant’s additional evidence meet the test for consideration? and
a) if the additional evidence meets the test for consideration, what is its proper assessment in the present appeal which will be decided on a de novo basis? and
b) if the additional evidence does not meet the test for consideration, what is the proper determination of this appeal having regard to tests for appellate review confirmed in Housen v Nikolaisen, 2002 SCC 33 [Housen], namely correctness for issues of law, and palpable and overriding error for issues of fact, or mixed fact and law including issues where the legal principle is not readily extricable.
III. Standard of review on section 56 appeals
A. Housen v Nikolaisen, 2002 SCC 33 establishes two branches of appellate review
[25] The Supreme Court of Canada in Canada (Minister of Citizenship and Immigration) v Vavilov, 2019 SCC 65 [Vavilov] at para 37 explains what is required of this Court when hearing statutory appeals, such as the current appeal under section 56. Essentially Vavilov confirms that on an appeal there are two appellate review standards, correctness for errors of law, and palpable and overriding error for questions of fact and questions of mixed fact and law where the legal principle is not readily extricable as decided by Housen:
[37] It should therefore be recognized that, where the legislature has provided for an appeal from an administrative decision to a court, a court hearing such an appeal is to apply appellate standards of review to the decision. This means that the applicable standard is to be determined with reference to the nature of the question and to this Court’s jurisprudence on appellate standards of review. Where, for example, a court is hearing an appeal from an administrative decision, it would, in considering questions of law, including questions of statutory interpretation and those concerning the scope of a decision maker’s authority, apply the standard of correctness in accordance with Housen v. Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R. 235, at para. 8. Where the scope of the statutory appeal includes questions of fact, the appellate standard of review for those questions is palpable and overriding error (as it is for questions of mixed fact and law where the legal principle is not readily extricable): see Housen, at paras. 10, 19 and 26-37. Of course, should a legislature intend that a different standard of review apply in a statutory appeal, it is always free to make that intention known by prescribing the applicable standard through statute.
[Emphasis added]
[26] To the same effect is the recent Federal Court of Appeal judgment in The Clorox Company of Canada, Ltd. v Chloretec S.E.C., 2020 FCA 76 [de Montigny JA] [Clorox]:
23 As a result, from now on, it is the Supreme Court’s jurisprudence on appellate standards of review (and in particular Housen v. Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R. 235 (S.C.C.) [Housen]) that both the Federal Court and this Court should apply when dealing with an appeal under subsection 56(1) of the Act. I note that it is, indeed, the standard which the Federal Court has applied in what appears to be the only reported case so far involving an appeal under the regime of the Act: see, Pentastar Transport Ltd. v. FCA US LLC, 2020 FC 367 (F.C.) at paras. 42-45. For questions of fact and mixed fact and law (except for extricable questions of law), the applicable standard is therefore that of the “palpable and overriding error”. For questions of law, the standard is correctness.
[Emphasis added]
B. What is meant by palpable and overriding error for questions of fact and mixed fact and law?
[27] If this Court finds an issue is a question of fact or mixed fact and law, it will review the issue on the appellate standard of palpable and overriding error. Justice Stratas in Canada v South Yukon Forest Corporation, 2012 FCA 165 [South Yukon] explains what the Applicant must show to establish a palpable and overriding error in an appeal (also to be discussed later in these Reasons):
[46] Palpable and overriding error is a highly deferential standard of review: H.L. v. Canada (Attorney General), 2005 SCC 25, [2005] 1 S.C.R. 401; Peart v. Peel Regional Police Services (2006) 2006 CanLII 37566 (ON CA), 217 O.A.C. 269 (C.A.) at paragraphs 158-59; Waxman, supra. “Palpable” means an error that is obvious. “Overriding” means an error that goes to the very core of the outcome of the case. When arguing palpable and overriding error, it is not enough to pull at leaves and branches and leave the tree standing. The entire tree must fall.
[Emphasis added]
[28] This description of palpable and overriding error has been adopted by both the Federal Court and Federal Court of Appeal. See most recently: Spectrum Brands, Inc. v Schneider Electric Industries SAS, 2021 FCA 51 [LeBlanc JA] at para 7, Apotex Inc. v Janssen Inc., 2021 FCA 45 [Locke JA] at para 44, Dixon v TD Bank Group, 2021 FC 101 [Norris J] at para 8.
[29] The Federal Court of Appeal in Clorox also addressed the palpable and overriding error standard of review for errors of fact and mixed fact and law in a section 56 appeal:
[38] The appellant now asks this Court to reweigh the evidence and to come to a different conclusion than that reached by the TMOB and the Federal Court. This is a steep hill to climb, considering that on questions of fact and of mixed fact and law, the standard of review is the standard of palpable and overriding error. In other words, the appellant must convince this Court that the Federal Court made an error that is obvious and that goes to the very core of the outcome of the case: Canada v. South Yukon Forest Corporation, 2012 FCA 165 at para. 46, 431 N.R. 286. This is an even more deferential standard of review than the standard of reasonableness applied by the Federal Court.
[Emphasis added]
C. Questions of law are to reviewed on a standard of correctness
[30] Appellate review of questions of law, including readily extricable errors of law, is conducted on the standard of correctness. This is explained by the Supreme Court of Canada in Housen:
8. On a pure question of law, the basic rule with respect to the review of a trial judge’s findings is that an appellate court is free to replace the opinion of the trial judge with its own. Thus the standard of review on a question of law is that of correctness: Kerans, supra, at p. 90.
[Emphasis added]
D. Tests for additional or new evidence
(1) What is material new evidence?
[31] As noted, three affidavits were filed in this appeal, two from the Applicant and one from the Respondent. However, not all evidence filed by a party is considered on an appeal under section 56. The jurisprudence establishes evidence filed on a section 56 appeal will only be considered if it is “material”, a word not defined in the Act. However, both the Federal Court of Appeal and this Court have addressed the meaning of material evidence in the following cases.
[32] Justice de Montigny in Clorox recently confirmed that to be material, new evidence under section 56 must be “sufficiently substantial and significant” and “of probative value”:
21 When the new evidence is found to be material — which has been interpreted to mean “sufficiently substantial and significant” (Levi Strauss & Co. v. Vivant Holdings Ltd., 2005 FC 707 (F.C.) at para. 27, (2005), 276 F.T.R. 40 (F.C.)) and of “probative value” (Tradition Fine Foods Ltd. c. 3102-6636 Québec Inc., 2006 FC 858 (F.C.) at para. 58, (2006), 51 C.P.R. (4th) 342 (F.C.)) — subsection 56(5) of the Act states that the Federal Court “may exercise any discretion vested in the Registrar”. This is in the nature of an appeal de novo and calls for the correctness standard. In Vavilov, the Supreme Court was clear that reasonableness is the presumptive standard of review when a court reviews the merits of an administrative decision. Such a presumption will be rebutted, however, when the legislature has clearly signalled that a different standard should apply. This is precisely what subsection 56(5) does, and I see no reason not to give effect to this legislative intent.
[Emphasis added]
[33] See also Vivat Holdings Ltd v Levi Strauss & Co, 2005 FC 707 [Vivat] [Layden-Stevenson J] which requires new evidence to be sufficiently substantial and significant, of probative significance, and not merely supplemental or repetitive of existing evidence:
[27] To affect the standard of review, the new evidence must be sufficiently substantial and significant. If the additional evidence does not go beyond what was in substance already before the board and adds nothing of probative significance, but merely supplements or is merely repetitive of existing evidence, then a less deferential standard is not warranted. The test is one of quality, not quantity: Garbo Group Inc. v. Harriet Brown & Co. (1999), 1999 CanLII 8988 (FC), 3 C.P.R. (4th) 224 (F.C.T.D); Canadian Council of Professional Engineers v. APA – Engineered Wood Assn. (2000), 2000 CanLII 15543 (FC), 7 C.P.R. (4th) 239 (F.C.T.D.); Mattel, Inc. v. 3894207 Canada Inc. (2004), 2004 FC 361 (CanLII), 30 C.P.R. (4th) 456 (F.C.).
[Emphasis added]
[34] The Federal Court of Appeal in Seara Alimentos Ltda. v Amira Enterprises Inc., 2019 FCA 63 [Seara] [Gauthier JA] at paras 23 – 25 confirms only evidence that would have materially affected the TMOB’s findings of fact or the exercise of its discretion is material. Materiality is a preliminary test to determine if, on appeal, this Court will have to reassess the evidence on a given issue. This test cannot and should not involve such a reassessment up front to determine if it would ultimately change the result or outcome. The materiality test addresses the significance and probative value of the new evidence. If the proffered evidence merely supplements or confirms the findings of the TMOB, it cannot be said to be “material” enough to warrant being admitted. The additional evidence must not be repetitive and should enhance the overall cogency of the evidence on the record. The Court in Seara put the question this way: could the new evidence, because of its significance and probative value, have had a bearing on a finding of fact or the exercise of discretion of the TMOB?
[23] As mentioned, the test for admitting new evidence pursuant to subsection 56(5) of the Act has been formulated as whether the additional evidence adduced in the Federal Court “would have materially affected the Registrar’s findings of fact or the exercise of his discretion” (Molson Breweries at para. 51, per Rothstein J.A.). The use of “would have” must be understood in its proper context. It is a preliminary test to determine if, on appeal, the Federal Court will have to reassess the evidence on a given issue. This test therefore cannot and should not involve such a reassessment up front to determine if it would ultimately change the result or outcome. This is why in the formulation of the test in French the “would have” has been consistently translated as “aurait pu avoir” (see e.g. Rogers Communications Inc. c. Society of Composers, Authors and Music Publishers of Canada, 2012 CSC 35 at para. 71; Pizzaiolo Restaurants inc. C. Les Restaurants La Pizzaiolle inc., 2016 CAF 265 at para. 2; Brasseries Molson c. John Labatt Ltée, 2000 CanLII 17105 (FCA), [2000] 3 C.F. 145 at para. 51 (C.A.)).
[24] Furthermore, it is well understood that the materiality test addresses the significance and probative value of the new evidence. If the proffered evidence merely supplements or confirms the findings of the TMOB, then it cannot be said to be “material” enough to warrant being admitted (see U-Haul International Inc. v. U Box It Inc., 2017 FCA 170 at para. 26). To be “material”, the additional evidence must not be repetitive and should enhance the overall cogency of the evidence on the record (Cortefiel, S.A. v. Doris Inc., 2013 FC 1107 at para. 33, aff’d 2014 FCA 255; see also Servicemaster Company v. 385229 Ontario Ltd. (Masterclean Service Company), 2015 FCA 114 at paras. 23-24).
[25] The question is thus: could this new evidence, because of its significance and probative value, have had a bearing on a finding of fact or the exercise of discretion of the TMOB? In other words – in the context of the confusion analysis in this case – could this evidence lead to a different conclusion in respect of one or more of the factors set out in subsection 6(5) of the Act and the balancing underpinning the conclusion as to whether confusion was likely?
[Emphasis added]
[35] The following jurisprudence gives further guidance on whether new evidence is material:
(i) Justice de Montigny, as he then was, in Hawke & Company Outfitters LLC v. Retail Royalty Company, 2012 FC 1539 [Hawke] held material evidence is not which pertains to facts posterior to the relevant material date, or that which merely supplements or confirms earlier findings:
[31] It is well established that when additional evidence is filed, the test is “one of quality, not quantity”: see Canadian Council of Professional Engineers v APA – The Engineered Wood Assn, 2000 CanLII 15543 (FC), [2000] FCJ no 1027 (QL), 7 CPR (4th) 239 (FC) at para 36; Wrangler Apparel Corp v Timberland Co, 2005 FC 722 at para 7. Evidence that merely supplements or confirms earlier findings, or which pertains to facts posterior to the relevant material date, will be insufficient to displace the deferential standard of reasonableness.
[Emphasis added]
(ii) Justice LeBlanc, as he then was, followed Justice de Montigny in Kabushiki Kaisha Mitsukan Group Honsha v Sakura-Nakaya Alimentos Ltda., 2016 FC 20 [Kabushiki] and held that evidence that merely supplements or confirms earlier findings, or which pertains to facts posterior to the relevant material date, in not material:
[19] … In other words, evidence that “merely supplements or confirms earlier findings, or which pertains to facts posterior to the relevant material date” is not sufficient to displace the burden. Moreover, the test is “one of quality, not quantity” (Canadian Council of Professional Engineers v Apa – The Engineered Wood Assn, 2000 CanLII 15543 (FC), [2000] 184 FTR 55, at para 36, 7 CPR (4th) 239; Timberland Co v Wrangler Apparel Corp, 2005 FC 722, at para 7, 272 FTR 270).
[Emphasis added]
[36] In summary, new evidence may be material if it is sufficiently substantial and significant and of probative value (Clorox at para 21; Seara at para 24; Vivat at para 27). The evidence must be that which would have materially affected the Registrar’s findings of fact or exercise of discretion (as explained in Seara at para 23). It must not merely supplement or confirm earlier evidence (Seara at para 24; Vivat at para 27; Hawke at para 31; Kabushiki at para 19), must not pertain to facts posterior to the relevant material date (Hawke at para 31; Kabushiki at para 19), and must not be repetitive (Seara at para 24). The test for materiality is one of quality not quantity (Vivat at para 27; Hawke at para 31; Kabushiki at para 19) and it should enhance the overall cogency of the evidence on the record (Seara at para 24). The question is “could this new evidence, because of its significance and probative value, have had a bearing on a finding of fact or the exercise of a discretion of the TMOB?” (Seara at para 25).
E. Material dates
[37] Material new evidence is to be assessed as of certain material dates. The parties agree on the material dates for each ground of opposition:
Subsection 16(1): the material date for confusion with a trade-mark previously known or made known is established in subsection 16(1) of the Act itself as “at the date on which he or his predecessor in title first so used it or made it known”. I refer to this as the date of first use. In this case the material date of first use is January 1, 2012;
Section 2: the material date for distinctiveness of the trade-mark is the date of filing of the opposition, see Stargate, in this case June 26, 2014;
Paragraph 12(1)(d): the material date for confusion with registered trade-mark is the date of the Decision of the TMOB, see Park, in this case July 31, 2017.
F. Analysis of materiality of new evidence under subsection 16(1) of the Act
[38] Because it has the earliest of the three material dates, I will first assess the materiality of the new evidence in terms of subsection 16(1) of the Act and do so as of its material date. The material date is the date of first use. The parties agree the material date of first use was January 1, 2012. Subsection 16(1) provides:
Registration of marks used or made known in Canada
Enregistrement des marques employées ou révélées au Canada
16 (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with goods or services is entitled, subject to section 38, to secure its registration in respect of those goods or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with
16 (1) Tout requérant qui a produit une demande selon l’article 30 en vue de l’enregistrement d’une marque de commerce qui est enregistrable et que le requérant ou son prédécesseur en titre a employée ou fait connaître au Canada en liaison avec des produits ou services, a droit, sous réserve de l’article 38, d’en obtenir l’enregistrement à l’égard de ces produits ou services, à moins que, à la date où le requérant ou son prédécesseur en titre l’a en premier lieu ainsi employée ou révélée, elle n’ait créé de la confusion:
(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;
a) soit avec une marque de commerce antérieurement employée ou révélée au Canada par une autre personne;
[Emphasis added]
[Je souligne]
[39] It may be useful to repeat here the summary of jurisprudence on material evidence determined above. New evidence may be material if it is sufficiently substantial and significant and of probative value (Clorox at para 21; Seara at para 24; Vivat at para 27). The evidence must be such that it would have materially affected the Registrar’s findings of fact or exercise of discretion (as explained in Seara at para 23). It must not merely supplement or confirm earlier evidence (Seara at para 24; Vivat at para 27; Hawke at para 31; Kabushiki at para 19). It must not pertain to facts posterior to the relevant material date (Hawke at para 31; Kabushiki at para 19), and must not be repetitive (Seara at para 24). The test for materiality is one of quality not quantity (Vivat at para 27; Hawke at para 31; Kabushiki at para 19) and it should enhance the overall cogency of the evidence on the record (Seara at para 24).
[40] At this point, the Court will conduct a preliminary analysis in respect of which the question is: “could this new evidence, because of its significance and probative value, have had a bearing on a finding of fact or the exercise of a discretion of the TMOB?” (Seara at para 25).
[41] In the following analysis, I find almost all the Applicant’s additional or new evidence fails to meet the test of materiality per subsection 16(1) primarily because it pertains to facts posterior to the date of first use contrary to Hawke at para 31, Kabushiki at para 19 and subsection 16(1) itself. It is also inadmissible to the extent it repeats what he filed in the Vaccaro 2015 Affidavit. I note some of the alleged new evidence may be relevant to submissions under section 2 and paragraph 12(1)(d) of the Act. However, because the Applicant fails in its appeal under subsection 16(1), these additional grounds are not considered further.
(1) Vaccaro 2019 Affidavit filed by the Applicant
[42] I will start with the Vaccaro 2019 Affidavit filed in this Court. Mr. Vaccaro also filed the Vaccaro 2015 Affidavit that was before the TMOB.
[43] The Applicant submits the Vaccaro 2019 Affidavit consists of substantive new evidence addressing the TMOB’s refusal of the applications. The Respondent disputes the materiality of the Applicant’s new evidence to the subsection 16(1) analysis, submitting all his evidence pertains to facts after the material date and is therefore inadmissible. The material date under subsection 16(1) is the date of first use, namely January 1, 2012.
[44] To recall, the subsection 16(1) analysis asks whether a trade-mark is confusing with a trade-mark previously used in Canada or made known in Canada. If it is, the Applicant is not entitled to register the mark:
Registration of marks used or made known in Canada
Enregistrement des marques employées ou révélées au Canada
16 (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with goods or services is entitled, subject to section 38, to secure its registration in respect of those goods or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with
16 (1) Tout requérant qui a produit une demande selon l’article 30 en vue de l’enregistrement d’une marque de commerce qui est enregistrable et que le requérant ou son prédécesseur en titre a employée ou fait connaître au Canada en liaison avec des produits ou services, a droit, sous réserve de l’article 38, d’en obtenir l’enregistrement à l’égard de ces produits ou services, à moins que, à la date où le requérant ou son prédécesseur en titre l’a en premier lieu ainsi employée ou révélée, elle n’ait créé de la confusion:
(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;
a) soit avec une marque de commerce antérieurement employée ou révélée au Canada par une autre personne;
[Emphasis added]
[Je souligne]
[45] The Vaccaro 2019 Affidavit provides allegedly new evidence under a number of headings. Mr. Vaccaro first explained his role as the President of the Applicant, explained his day-to-day responsibilities, and outlined his knowledge of the business, which put him in the position to provide an affidavit about the business. He then provided the following additional information:
1. Background of the Applicant (paras 4 - 9): Mr. Vaccaro expl