Fairmont Resort Properties Ltd. v. Fairmont Hotel Management, L.P.

Fairmont Resort Properties Ltd. v. Fairmont Hotel Management, L.P.
Court (s) Database
Federal Court Decisions
Date
2008-07-21
Neutral citation
2008 FC 876
File numbers
T-1041-05
Decision Content
Date: 20080721
Docket: T-1041-05
Citation: 2008 FC 876
BETWEEN:
FAIRMONT RESORT PROPERTIES LTD.
Applicant
and
FAIRMONT HOTEL MANAGEMENT, L.P.
Respondent
REASONS FOR ORDER
GIBSON J.
INTRODUCTION
[1] These reasons follow the hearing of an application pursuant to subsection 57(1) of the Trade-marks Act[1] (the “Act”), by Fairmont Resort Properties Ltd. (the “Applicant”), to strike three (3) registrations from the Trade-marks Register, originally registered to Fairmont Hotel Management, L.P (the “Respondent” or “Fairmont Hotels”). The hearing was held at Calgary, Alberta on the 9th, 10th and 11th of June, 2008.
THE REGISTERED TRADE-MARKS AT ISSUE
[2] The trade-marks at issue (collectively the “Hotel Marks”) are the following:
While originally registered in the name of the Respondent, the Hotel Marks were assigned to Fairmont Hotels Inc. as of the 1st of September, 2005. Each of the Hotel Marks is registered in respect of “hotel services associated with a chain of luxury hotels”.
THE PARTIES
a) The Applicant
[3] The Applicant was incorporated in Alberta on the 5th of February, 1979 as 200959 Holdings Ltd., for the purpose of marketing timeshare units constructed by Fairmont Hot Springs Resort Ltd. After two (2) intermediate name changes, its name was changed to Fairmont Resort Properties Ltd. on the 1st of August, 1985 with the filed consent of Fairmont Hot Springs Resort Ltd., a company under common ownership and control with the Applicant at that time. By some time in 1996, the Applicant became fully independently owned from Fairmont Hot Springs Resort Ltd.
[4] Starting in 1979, Fairmont Hot Springs Resort Ltd., and later the Applicant, developed four (4) timeshare resort properties in, or in proximity to, Fairmont, or Fairmont Hot Springs, British Columbia, known respectively as Fairmont Vacation Villas at Mountainside, Fairmont Vacation Villas at Riverside, Fairmount Vacation Villas at Hillside and Fairmont Vacation Villas at Riverview. The Applicant, at least as at the 8th of July, 2005, owned and managed Fairmont Vacation Villas at Riverside, Fairmont Vacation Villas at Hillside and Fairmont Vacation Villas at Riverview in association with the unregistered trade-marks FAIRMONT VILLAS and FAIRMONT VACATION VILLAS and the trade-name FAIRMONT RESORT PROPERTIES LTD. The original development, Fairmont Vacation Villas at Mountainside, was, at that date, managed by another company but the Applicant continued to handle sales and transfers of the timeshare units in that development.
[5] The President of the Applicant attests that, once again as at the 8th of July 2005, the Applicant spent approximately $3 million per year in marketing its properties through extensive direct mailings, telemarketing, magazine and newspaper advertising and internet web site operations. It also participated extensively in “coupon book” promotions. As at the same date, it employed more than eighty (80) employees at its Fairmont, British Columbia location and had annual revenues of over $10 million for more than fifteen (15) years and total sales of time share units of about $200 million Canadian dollars.
[6] The Applicant cites numerous instances of confusion in the minds of third parties between its operations and those of Fairmont Hotels.
[7] The Applicant does not allege, and has provided no evidence to support the proposition, that it has conducted its business in association with the single word “Fairmont” in any form, used in a trade-mark sense.
b) The Respondent
[8] The Respondent is a wholly-owned subsidiary of Fairmont Hotels & Resorts Inc. It has a principle place of business in San Francisco, California. Fairmont Hotels & Resorts Inc. is a Canadian corporation, the shares of which are listed and traded on the NEW YORK STOCK EXCHANGE and the TORONTO STOCK EXCHANGE. Through the Respondent, Fairmont Hotel Management, L.P., Fairmont Hotels & Resorts Inc. claims to be North America’s largest luxury hotel management company. It is headquartered in Toronto, Ontario. Directly and through its subsidiaries, as at the 24th of October, 2005, its portfolio consisted of eighty-eight (88) “luxury and first class properties” with approximately thirty-three thousand (33,000) rooms in Canada, United States, Mexico, Bermuda, Barbados, United Kingdom, Monaco, Kenya and the United Arab Emirates. Its portfolio in Canada, as at the same date, is listed in Schedule B to these reasons.
THE BACKGROUND
a) Fairmont Hot Springs
[9] Fairmont Hot Springs, also often referred to only as Fairmont, is an unincorporated community and resort site or region in the Columbia River valley in British Columbia. It first attracted attention as a potential resort center in the early 1900s based in part on its natural hot springs which continue to form part of the Fairmont Hot Springs Resort Ltd. property. The original resort property and facilities, consisting of approximately two thousand (2,000) acres, were purchased by the Wilder family in 1957. That family continued to operate the resort property as recently as January, 2007.
b) Fairmont Hot Springs Resort Ltd.
[10] Fairmont Hot Springs Resort Ltd. was incorporated by the Wilder family and partners to operate and further development of the resort. That company continued as at January, 2007 to operate the resort. At that time, the resort included accommodation and conference and spa facilities with related restaurant and lounge facilities, a natural hot spring pool complex, championship golf courses, a ski complex including a deluxe ski lounge, a recreational vehicle park, stables, tennis courts and other sporting amenities. The resort is supported by a private sewage treatment plant and private water utility, an air strip and a developed town site. At January, 2007, Fairmont Hot Springs Resort Ltd. employed over two hundred thirty (230) full time employees, hosted an estimated seven hundred and fifty thousand (750,000) persons per year from worldwide locations and reported annual sales revenues in excess of twelve million dollars ($12,000,000). It conducts extensive print advertising.
c) Fairmont Hot Springs Timeshares
[11] The extensive timeshare facilities in or proximate to Fairmont Hot Springs were earlier commented on in the description of the activities of the Applicant. The development of the timeshare facilities originated with Fairmont Hot Springs Resort Ltd. It was Fairmont Hot Springs Resort Ltd. that originally secured incorporation of a separate body to develop and operate the timeshare facilities. It was Fairmont Hot Springs Resort Ltd. that consented to the change to the current name of the Applicant which, at the time, was wholly owned by Fairmont Hot Springs Resort Ltd., alone or in combination with its shareholders. It was Fairmont Hot Springs Resort Ltd., and perhaps its shareholders, that eventually sold its interest in the Applicant to create the separately owned entity the business of which is described above.
d) Fairmont Hotels
[12] The Fairmont Hotel chain originated with the Fairmont Hotel on Knob Hill in San Francisco. It was the vision of two (2) San Francisco women, Tessie and Virginia Fair. “Fairmont”, in the context of the hotel, and thus in the context of the current hotel and resort operations, is alleged to have been a “coined” word created from the surname of the Misses Fair and a description of Knob Hill as a “mont” or mount.
[13] The Fairmont in San Francisco was purchased by an American entrepreneur in 1945. From the base of that acquisition, the entrepreneur began the assembly of the portfolio of hotel properties which he chose to identify as the “Fairmont” hotel chain.
[14] In the fall of 1999, Canadian Pacific Hotels acquired the U.S. based Fairmont hotel chain and, after a series of corporate restructurings, Fairmont Hotels & Resorts Inc. became the parent corporation of Fairmont Hotel Management, L.P., the Respondent, and Fairmont Hotels Inc., among other corporate entities.
[15] In 2004, Fairmont Hotels & Resorts Inc. earned revenue of approximately $323.6 million, U.S., from its hotel and resort operations in Canada and spent in excess of $15 million Canadian dollars on advertising and marketing its hotel and resort operations around the world with 40% (forty percent) of that amount spent in Canada.
e) An agreement between Fairmont Hotels & Resorts Inc. and Fairmont Hot Springs Resort Ltd.
[16] On the 31st of March, 2000, by agreements copies of which are before the Court, Fairmont Hot Springs Resort Ltd. transferred to Fairmont Hotels Inc., a subsidiary and associated corporation of Fairmont Hotels & Resorts Inc. and Fairmont Hotel Management, L.P., the Respondent, all the right, title and interest of Fairmont Hot Springs Resort Ltd. in and to its trade-marks, if any, together with the good will associated therewith. It also agreed to withdraw and discontinue its opposition in the Canadian Trade-marks Office to the registration of the Hotel Marks. In return, Fairmont Hotels Inc. granted Fairmont Hot Springs Resort Ltd. a licence in respect of all of the assigned marks.
THE EVIDENCE BEFORE THE COURT
[17] The Applicant filed three (3) affidavits on this application. The Respondent filed six (6) affidavits. A substantial portion of the affidavit evidence, supported by related exhibits, is reflected in these reasons under the headings “The Registered Trade-marks at Issue”, “The Parties” and “The Background”.
[18] The Applicant filed the affidavit of Collin Knight, the President of the Applicant as at the 8th of July, 2005, the date he swore his affidavit. At that time, Mr. Knight had held his position as President of the Applicant for “about sixteen years”. Mr. Knight attested briefly as to the development of the four (4) timeshare resort properties in, or proximate to, Fairmont, British Columbia in which the Applicant participated and remains interested. He attested that, as at some time in 1996:
…the current shareholders of the Applicant acquired all the shares of the Applicant, including those held by the shareholders of Fairmont Hot Springs Ltd.
presumably a reference to Fairmont Hot Springs Resort Ltd. He attested:
No licence or control over, or restriction on, the use of any of the names comprising the word “Fairmont” by the Applicant was imposed at any time by Fairmont Hot Springs Ltd.
[19] Mr. Knight attested as to the current, as at the date of swearing of his affidavit, operations of the Applicant, including as to the ability of “owners” of timeshare units to exchange their timeshare units for time in about two thousand (2,000) other timeshare units in resorts in sixty-eight (68) different countries.
[20] Mr. Knight further attested to the Applicant’s expenditures on marketing timeshare interests, as to the value of its total sales of timeshare units and as to its marketing position as the “…largest and most successful timeshare developer in Canada.”
[21] Finally, Mr. Knight attested at some length to the “numerous instances of confusion” between the trade-marks and the trade name of the Applicant and the Hotel Marks.
[22] He concluded his affidavit with the following paragraph:
It is currently common for those in the hotel business to also be in the timeshare business. The Marriott, Hilton, Hyatt, Sheraton, Ramada and Four Seasons hotel chains have all entered into the timeshare business. Fairmont Hotel[s] and Resorts first entry into the timeshare business is in Acapulco, Mexico. I know that there has been discussions by Fairmont Hotels and Resorts to enter into the timeshare business in Canada.
[23] Mr. Knight provided no evidence whatsoever to support the allegations in this closing paragraph of his affidavit.
[24] The Applicant’s second affidavit was sworn by Margaret M. Cardell, who attested that, as at the 11th of August, 2005, the date she swore her affidavit, she was Director of Marketing for the Applicant and that she had been an independent contractor or employee of the Applicant for over twenty-one (21) years. Ms. Cardell attested at some length as to experiences of confusion that she was aware of between the Respondent’s interests and those of the Applicant and as to the advertising and marketing activities of the Applicant.
[25] Finally, the Applicant filed the affidavit of Jeffrey W.T. Robinson who was, at the 9th of August, 2005, a law student employed by the firm of solicitors then representing the Applicant. Mr. Robinson exhibited to his affidavit an informal map, drawn from the internet, of a portion of the Columbia River Valley in British Columbia, locating “Fairmont” and “Fairmont Hot Springs” in that valley, incidentally, in close proximity to a community identified as “Fairmont Springs”, and brief excerpts from the “Telus Pages” of the 2000/2001 Cranbrook/Kimberley Area directory which included listings for the Fairmont Hot Springs region. These listings include eleven (11) entries for businesses carried on under names commencing with the word “Fairmont”, with the entry for Fairmont Hot Springs Resort Ltd. being prominent, as is the listing for Fairmont Bungalows, and with all other “Fairmont” business entries, including that of the Applicant, being in small type.
[26] Mr. Knight and Ms. Cardell were cross-examined on their affidavits, Mr. Robinson was not.
[27] The Respondent filed affidavits of five (5) affiants, with one (1) of those affiants, Mr. Thomas C. Griffiths, filing two (2) affidavits.
[28] Mr. Griffiths swore his affidavits on the 24th of October, 2004 and on the 29th of January, 2007. In each affidavit, he described himself as Assistant Secretary of Fairmont Hotels & Resorts Inc.
[29] In his first affidavit, Mr. Griffiths described what he entitled “The Fairmont Legacy” which, according to his attestation, extended back “for over 117 years.” That “legacy” is briefly summarized earlier in these reasons as commencing with the opening for business of the Fairmont San Francisco hotel in 1907.
[30] Mr. Griffiths attests as to the Canadian registered trade-marks of the Respondent, or its associates, and as to the assignment of trade-mark rights to Fairmont Hotels Inc. from Fairmont Hot Springs Resort Ltd. of any trade-mark rights it might have had. He attests as to trade-mark registration applications filed by the Respondent or its associates by reason of that assignment and as to the opposition to those trade-mark applications filed by the Applicant. He also attests as to an application by the Applicant to compel a change of the Fairmont Hotel and Resorts Inc. corporate name. That application was contested and remained outstanding at the date on which Mr. Griffith’s first affidavit was sworn.
[31] Finally, in his first affidavit, Mr. Griffiths responds to the allegations of confusion contained in the Applicant’s affiants’ affidavits in the following terms:
I am advised that in the time period between 2000 and 2005, Fairmont (presumably the Respondent and its associates) has received a number of phone calls, letters or other communications in which there was confusion between Fairmont and FRP (presumably the Applicant) or FHSR (presumably Fairmont Hot Springs Resort Ltd.). For example, one such inquiry was made on January 5, 2005, when Fairmont received a phone call from an individual inquiring whether Fairmont managed the Lake Okanogan Resort in Kelowna, B.C. Fairmont has never managed this hotel/resort; however, FRP operated and/or continues to operate a houseboat business in the Kelowna area that is causing confusion with the Fairmont trade-marks.
As a further example, I am advised that Fairmont has received complaints from people in connection with Fairmont Vacation Villas a.k.a. FRP. One such complaint was made in August 2004, where the complainant had been operating under the misunderstanding that Fairmont was in some way affiliated with Fairmont Vacation Villas. The individual complained about, among other things, poor service.
[32] In his second affidavit, Mr. Griffiths returns to what he describes in that affidavit as “the Fairmont legacy – United States”. Finally, he turns to advertising associated with and flowing from that legacy, or perhaps contributing to the creation of the legacy, which, he attests, has appeared “…in both local and international market places.” He annexes a selection of such advertising in exhibits to his affidavit.
[33] The Respondent’s second affiant is Terrance J. McManus who was, at the time he swore his affidavit, the 24th of October, 2005, counsel to a firm of lawyers in Ottawa. Mr. McManus had, at that time, long experience in the practice of law in Ontario. He attests that, in and around the 1st of April, 2000, he travelled with a colleague to Fairmont Hot Springs, British Columbia “…to conduct a due diligence investigation with respect to the representations and warranties as to trade-mark use made by Fairmont Hot Springs Resort Ltd….in its Agreement with Fairmont Hotels Inc….”. Mr. McManus attests at some length as to background information that he and his colleague gained in the course of that visit.
[34] Sharon O’Connor attested in an affidavit sworn the 24th of October, 2005 as to information obtained from various websites including those of Fairmont Hotels & Resorts, Fairmont Vacation Resort Properties Ltd., presumably the Applicant, Fairmont Hot Springs Resort Ltd., a website regarding accommodations for the Kootenay Rockies region of British Columbia, and the like.
[35] Carol W. Seable swore her affidavit on the 22nd of January, 2007. She attests that she was then the President of Fairmont Hot Springs Resort Ltd. and had held that title since 1995. Mrs. Seable attests at some length to the history of Fairmont Hot Springs and Fairmont Hot Springs Resort dating back to 1887 when George Geary homesteaded what was, at the time she swore her affidavit, part of the lands used by Fairmont Hot Springs Resort Ltd. to operate the Fairmont Hot Springs Resort. Mrs. Seable attests that resort-like usages that can be traced forward to those of the current Fairmont Hot Springs Resort Ltd. can be traced back to at least 1923 when:
…a cement swimming pool was constructed to harness the hot mineral water bubbling naturally to the surface of the bedrock of Mr. Holland’s property. The swimming pool measured 40 x 60 feet and was located in the same spot as the pool complex at the Fairmont Hot Springs Resort today.
[36] Mrs. Seable also attests to the circumstances surrounding the agreement entered into between Fairmont Hot Springs Hotel Ltd. and Fairmont Hotels Inc. regarding the assignment of trade-marks and licensing back.
[37] Finally, Mrs. Seable supports the findings contained in the affidavit of Terrence J. McManus.
[38] The final affidavit filed on behalf of the Respondent was sworn by Jeffery Ian Barlow, on the 8th of December, 2006. Mr. Barlow attests that he has been working in the travel industry, both in the United Kingdom and later in Canada, since 1957. He attests that he has “…dealt with and continue[s] to deal with travel agents across Canada.”
[39] Mr. Barlow attests as to travel industry resources and practices from the 1960s to 1980s when the vast majority of international travel arrangements were made through travel agents, with such arrangements including hotel reservations. He attests as to the importance to travel agents in that period of publications made available to them providing hotel listings grouped by major cities in the United States, Canada, Mexico and the rest of the world. He attests as to his experience in the use of the foremost of those publications which he refers to as “The Index” and “The Guide” both of which included extensive references to the then U.S. based Fairmont chain of “luxury class hotel[s]”.
[40] Mr. Barlow strongly urges that the “Fairmont brand” would have been well known to Canadian travel agents, and thus, to Canadian business travellers through their agents, “[over] the past 50 years…”.
[41] Much of Mr. Barlow’s attestation is on information and belief. In effect, he attests as an expert in the travel agency business. Unfortunately, although Mr. Barlow was cross-examined on his affidavit, no effort was made to qualify him as an expert and therefore to put him at liberty to attest on information and belief. More will be said about this later in these reasons.
[42] Each of the Respondents’ affiants was cross-examined on his or her affidavit or affidavits.
THE ISSUES
[43] The Applicant and the Respondent each elaborated the issues before the Court on this application. Although they used different terminology, I am satisfied that there was no substantive difference between the parties as to the issues. I would summarize the issues in the following terms:
a) first, is the Applicant a “person interested” and does it thus have standing to bring this application under subsection 57(1) of the Act;
b) second, is the “information and belief” testimony of Mr. Barlow admissible and if so, what weight should be given to it;
c) third, where does the burden of proof lie on an application such as this, what is the nature of that burden and what is the effect of registration pursuant to subsections 17(1) and (2) and section 19 of the Act;
d) fourth, were the Hotel Marks and each of them, registrable at the date of registration;
e) fifth, were each of the Hotel Marks distinctive at the time this proceeding was commenced; and
f) finally, was the Respondent the person entitled to secure the registration of the Hotel Marks and each of them.
THE LEGISLATIVE SCHEME
[44] The Trade-marks Act is a complex statute, many provisions of which are applicable to the issues here before the Court. The applicable provisions are set out in full in Schedule A to these reasons. For ease of reference, the provision of the Act under which this application was commenced is also set out here:
57. (1) The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark.
57. (1) La Cour fédérale a une compétence initiale exclusive, sur demande du registraire ou de toute personne intéressée, pour ordonner qu’une inscription dans le registre soit biffée ou modifiée, parce que, à la date de cette demande, l’inscription figurant au registre n’exprime ou ne définit pas exactement les droits existants de la personne paraissant être le propriétaire inscrit de la marquee.
(2) No person is entitled to institute under this section any proceeding calling into question any decision given by the Registrar of which that person had express notice and from which he had a right to appeal.
(2) Personne n’a le droit d’intenter, en vertu du présent article, des procédures mettant en question une décision rendue par le registraire, de laquelle cette personne avait reçu un avis formel et dont elle avait le droit d’interjeter appel.
It was not alleged on behalf of the Respondent that subsection 57(2) of the Act has any application on the facts of this matter and I am satisfied that it has no application. The Applicant did not oppose the registration of the Hotel Marks, or any of them. Thus, the Applicant was not a person who had express notice of the registration of the Hotel Marks or who had a right of appeal from the registration of those marks.
ANALYSIS
a) “Person interested”
[45] Subsection 57(1) of the Act, reproduced in Schedule A and earlier in these reasons under the heading “The Legislative Scheme”, provides that the Registrar of Trade-marks or “any person interested” may apply to this Court to expunge the registration of a trade-mark on the ground that, at the date of the application, the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark. As earlier noted, subsection 57(2) is not here at issue and equally, it is clear that the Applicant is not the Registrar. The question then arises whether the Applicant is a “person interested” and the Respondent has put that question in issue.
[46] “Person interested” is defined in section 2 of the Act. That definition is reproduced in Schedule A to these reasons. A corporation such as the Applicant is a “person interested” if it may be affected by any entry on the register or reasonably apprehends that it may be affected by any act or omission or contemplated act or omission under or contrary to the Act.
[47] Counsel for the Applicant referred the Court to Omega Engineering, Inc. v. Omega SA[2] where Justice Blais, then of this Court, wrote at paragraph 11 of his reasons:
The jurisprudence confirms that there is a de minimis threshold which the applicant must satisfy to establish that it is a person interested… . In the case at bar, both parties are owners of similar marks. Further, the respondent has already initiated opposition proceedings against the applicant in respect of the TMDA05009 trade-mark. It is clear, therefore that the applicant in this case is an interested party capable of instituting this application.
[citation omitted]
[48] Counsel also referred the Court to Hartco Enterprises Inc. v. Becterm Inc.[3] where Justice Dubé wrote at pages 228 and 229:
It is well established that the likelihood of confusion is a question of fact and may exist between trade marks or trade names or both and the actual confusion need not be proved:…
In the instant case, the trade marks being identical (except for the hyphen) there was clearly a likelihood of confusion at the time the Respondent applied for the registration of the trade mark. …
Moreover, the “raison d’être” of the Act is primarily to protect the public: there is a strong public interest in maintaining the purity of the register. …
[citations and some text omitted]
In the circumstances, Justice Dubé found the Applicant under subsection 57(1) of the Act to be a “person interested”.
[49] By contrast, counsel for the Respondent relied on the same authority for the proposition that, to be a “person interested”, the Applicant must be a “…person whose rights may be restricted by a registration or who may reasonably apprehend that he may be affected by a registration…”, a proposition espoused by Justice Dubé, citing substantial authority, at page 226 of the reported decision.
[50] Counsel for the Respondent noted that the Applicant did not oppose in the Trade-marks Office the applications for the Hotel Marks. That being said, Collin H. Knight, President of the Applicant when he swore an affidavit in this matter, testified on cross-examination on his affidavit that his instructions, presumably to counsel, were:
…to protect our name from what I thought was a very aggressive firm [the Respondent] coming into our area in the same business. And my instructions to lawyers was [sic] to watch what was happening and to oppose anything that they were doing that could affect jeopardy of our having or not having our name, or influencing anything in our market place and causing us extra work as it is doing every day.[4]
[emphasis added]
[51] Counsel for the Respondent referred the Court to John Labatt Ltd. v. Carling Breweries Ltd.[5] where Justice Cattanach wrote at page 25:
My brother Walsh, in Burmah-Castrol (Canada) Ltd. v. Nasolco Inc. …, in dealing with the meaning of “person interested” after reading the cases referred to him, said at p. 41:
…it is evident that what constitutes a “person interested” depends on the facts of each case and it is not necessary to go farther than the definition and examine same in the light of the allegations contained in the amended originating notice of motion and amended statement of allegations of fact relied on by applicant to determine whether these allegations indicate that applicant may be “affected or reasonably apprehends that he may be affected” by the entry in the register of respondent’s trade mark which applicant seeks to have expunged from the register.
To be a “person interested” there must be a reasonable apprehension that the person will be affected by the registered trade mark. The entry must be shown to stand in the way of the person seeking to expunge it.
[emphasis added]
[52] Finally, counsel for the Respondent referred the Court to Mihaljevic v. British Columbia[6] where Justice Pratte, for the Court, wrote at page 56:
A person is interested within the meaning of s. 2 [of the Act] if there is a reasonable apprehension that he will suffer a prejudice of some sort if a trade mark is not removed from the register. In the present case, whether or not the respondent’s trade marks remain on the register, the appellant’s situation will remain the same: he will be unable to use his mark because the expungement of the respondent’s trade marks will not affect the existence of the official mark EXPO. The presence of the respondent’s trade marks on the register does not diminish or limit in any way the rights of the appellant which would not be greater if those trade marks were struck. It cannot be said, therefore, that the appellant is a “person interested” within the meaning of s. 2 of the Act:…
[citations omitted]
[53] Mr. Knight appears to acknowledge on cross-examination on his affidavit that the Applicant has not used the FAIRMONT design trade-marks[7]. Indeed, the evidence before the Court would appear to be that the Applicant acknowledges that it, like a number of other businesses carried on in the same region of British Columbia, uses the word “Fairmont”, only as a geographical descriptor, not in a trade-mark sense. The Applicant has never applied for registration of a trade-mark consisting of or incorporating the word Fairmont. Until very recently, and only after the assignment of Fairmont Hot Springs Resort Ltd.’s trade-marks to the Respondent, there is no evidence that the Applicant ever objected to the Resort company’s, or any other business’s extensive use of the word Fairmont in association with its business.
[54] The Applicant, as noted earlier, did not oppose the registration of the Hotel Marks and I am unsympathetic to Mr. Knight’s assertion that that was somebody else’s oversight, not his. The Applicant waited only one (1) day short five of (5) years after the registration of the Hotel Marks to commence this proceeding.
[55] In short, the Applicant has simply not acted as if it perceives itself to be a person affected, or who reasonably apprehends that it may be affected, by the entry of the Hotel Marks on the register or, indeed, by the use of “Fairmont”, at least until quite recently, by any other business operating in the same geographical region. Any fear the Applicant may actually possess or any apprehension it may have, would appear to be of a possible act by the Respondent, that is to say its possible entry into the timeshare business, in Canada, in circumstances where there is no evidence whatsoever before the Court that such fear is well grounded. In the words quoted from Justice Pratte in Mihaljevic v. British Columbia, above, I can find no reason on the facts of this matter to conclude other than:
…whether or not [the Respondent’s] trademarks remain on the register, [the Applicant’s] situation will remain the same:... . The presence of the [Respondent’s] trademarks on the register does not diminish or limit in any way the rights of the [Applicant] which would not be greater if those trademarks were struck.
[56] For the foregoing reasons, and noting, as cited in the foregoing authorities, that an analysis of “person interested” such as this turns on the facts of each particular case, I am not satisfied that the Applicant is a “person interested” and therefore a person entitled to bring this application. On that basis alone, this application must be dismissed.
[57] I acknowledge the line of authority for the proposition that “person interested” is a low threshold, a proposition that I myself have endorsed[8]. In light of that line of authority, I will nonetheless deal with the remaining issues before the Court.
b) The “Information and Belief” Testimony of Mr. Barlow
[58] By reference to the opening paragraphs of Mr. Barlow’s affidavit found at tab 20 of the Respondent’s Record, there can be no doubt about the length, breadth and depth of Mr. Barlow’s experience in the travel agency environment. That being said, that length, breadth and depth, in and of itself, does not qualify Mr. Barlow to testify or attest as an expert before this Court. A procedure to so qualify persons such as Mr. Barlow is set out in some detail in the Federal Courts Rules[9] with respect to actions but not with respect to applications such as this. Those Rules provide that there shall be no cross-examination on experts’ affidavits prior to trial, except with leave of the Court.[10] Here, Mr. Barlow was cross-examined on his affidavit.
[59] Subsection 59(3) of the Act provides that proceedings on an application such as this shall be heard and determined summarily on evidence adduced by affidavit “…unless the Court otherwise directs…” in which event the Court may order that any procedure permitted by its rules and practice be made available to the parties, including the introduction of oral evidence generally or in respect of one or more issues specified in the Court’s order. It was open to the Respondent to approach the Court with a proposal to qualify Mr. Barlow as an expert and to seek establishment of a procedure to accomplish that end. The Applicant could have responded to any such proposal. The Respondent did not see fit to take advantage of subsection 59(3) and the flexibility that that subsection provides. In the result, the Court finds itself to be substantially disadvantaged in evaluating Mr. Barlow’s evidence.
[60] Mr. Barlow concludes his affidavit with the following paragraph:
In my opinion, Fairmont hotels and the Fairmont brand are well known to Canadians and have been certainly since well before 1985. Some of the reasons for which I believe Fairmont is well known in Canada are set out below:
· San Francisco is a popular destination for many Canadian business and leisure travellers from across the country and has been for decades.
· Since the 1960’s, if I had a client looking for the “best” in San Francisco hotels, the famous Fairmont Hotel would have been one of my top choices.
· The Fairmont Hotel in San Francisco was and is well known, so much so, that tourists visiting San Francisco often visit the Fairmont even if they are not registered guests at the hotel.
· I personally, along with other Canadian travel agents across the country, recommended and continue to recommend Fairmont hotels to clients.
· One of the reasons that travel agents in Canada were aware of the Fairmont name and reputation dating back to as early as the 1960’s was due to its popular status and the advertisement and listings in the Index and the Guide, the two primary authoritative travel publications in the pre-Internet era.
· In my view, both personally and professionally, popular culture also brought the Fairmont name to Canadians through movies, television shows and novels which were based on or featured Fairmont hotels.
· I am of the opinion that the Fairmont name has always signified the best in city hotels in places like San Francisco, Dallas and New York City.
The foregoing is only an example of the information and belief evidence included in the affidavit of Mr. Barlow.
[61] In the Law of Evidence in Canada[11], at page 609, the learned authors state:
Courts now have greater freedom to receive lay witnesses’ opinions if: (1) the witness has personal knowledge; (2) the witness is in a better position than the trier of fact to form the opinions; (3) the witness has the necessary experimental capacity to make the conclusion; and (4) the opinion is a compendious mode of speaking and the witness could not as accurately, adequately and with reasonable facility describe the facts she or he is testifying about. But as such evidence approaches the central issues that the courts must decide, one can still expect an insistence that the witnesses stick to the primary facts and refrain from giving their inferences. It is always a matter of degree. As the testimony shades towards a legal conclusion, resistance to admissibility develops.
[emphasis added]
[62] In Saputo Groupe Boulangerie v. National Importers Inc.[12], my colleague Justice Nöel wrote at paragraphs 52 and 53 of his reasons:
A lay witness may, in some circumstances, express opinions about the facts in dispute. In R. v. Graat…, Mr. Justice Dickson notes that the boundary between opinions and facts is a fine one:
Except for the sake of convenience, there is little, if any, virtue in any distinction resting on the tenuous, and frequently false, antithesis between fact and opinion. The line between “fact” and “opinion” is not clear.
…Admissibility is determined, first, by asking whether the evidence sought to be admitted is relevant. This is a matter of applying logic and experience to the circumstances of the particular case. The question which must then be asked is whether, though probative, the evidence must be excluded by a clear ground of policy or of law.
Further on in that decision, the Supreme Court urges that courts not blindly exclude some testimony on the pretext that it contains opinions on the disputed facts. So the rule that opinions of lay witnesses are inadmissible as evidence is not one of absolute rigidity. The rule has evolved somewhat, and the courts may now admit the opinions of lay witnesses if certain conditions are satisfied although it must be kept in mind, to complete the analysis, that the courts must show some flexibility in determining the admissibility of those opinions.
The flexibility of the rule on the admissibility of lay witnesses’ opinions is intended to allow the admission of facts necessary to the resolution of the case that would be inadmissible if the rule were applied too strictly. It is not intended to allow ordinary witnesses to express opinions without restraint or to organize the facts from an angle that is favorable to them. Notwithstanding all my willingness to display flexibility in the taking of evidence, Mr. Lanctôt’s opinions clearly contravene the rules of evidence and cannot be admitted.
[emphasis added, one citation omitted]
[63] I reach the same conclusion on the facts of this matter as did my colleague Justice Nöel in the above quotation.
[64] In the absence of the adoption by the Respondent of the procedure provided in subsection 59(3) of the Act to qualify Mr. Barlow as an expert with the approval of this Court, I regard his information and belief opinions as highly prejudicial, a position at least impliedly adopted by counsel for the Applicant. In the circumstances, I reject such evidence outright.
c) Burden of Proof and Effect of Registration
[65] Pursuant to section 19 of the Act, the registrations of the Hotel Marks in respect of “hotel services associated with a chain of luxury hotels” are, subject to certain exceptions which are not at issue here, valid unless shown to be invalid. They confer on the owner the exclusive right to the use throughout Canada of the Hotel Marks in respect of those services. Thus, the burden rests on an applicant in proceedings such as this. That such is the case is confirmed by subsection 17(1) of the Act.
[66] In Compulife Software Inc. v. CompuOffice Software Inc.[13], Justice Muldoon wrote at paragraph [11] of his reasons:
In expungement proceedings, the trade-mark is presumed to be valid, and the onus lies on the party attacking the registration to