1196278 Ontario Inc (Sassafraz) v. 815470 Ontario Ltd (Sassafras Coastal Kitchen & Bar)

1196278 Ontario Inc (Sassafraz) v. 815470 Ontario Ltd (Sassafras Coastal Kitchen & Bar)
Court (s) Database
Federal Court Decisions
Date
2022-02-02
Neutral citation
2022 FC 116
File numbers
T-1548-20
Decision Content
Date: 20220202
Docket: T-1548-20
Citation: 2022 FC 116
Ottawa, Ontario, February 2, 2022
PRESENT: THE CHIEF JUSTICE
BETWEEN:
1196278 ONTARIO INC DBA SASSAFRAZ
Applicant
and
815470 ONTARIO LTD DBA SASSAFRAS COASTAL KITCHEN AND BAR
Respondent
JUDGMENT AND REASONS
I. Introduction
[1] The Applicant is the operator of the well-known restaurant SASSAFRAZ, which is located in the Yorkville district of Toronto, Ontario. The Respondent operates a restaurant in the Niagara Peninsula region in association with various trademarks and trade names that include the word SASSAFRAS.
[2] The Applicant alleges that the Respondent has infringed its registered SASSAFRAZ trademark and depreciated the goodwill associated with that trademark, contrary to the Trademarks Act, RSC 1985, c T-13 [the TM Act].
[3] For the reasons set forth below, I agree. Accordingly, I will grant the declaratory and injunctive relieve sought by the Applicant, together with certain ancillary relief and nominal damages in the amount of $15,000.00.
II. Background
[4] The Applicant opened its SASSAFRAZ restaurant in Yorkville in 1997. Since that time, the restaurant has been operated in association with a family of registered and unregistered trademarks consisting of or comprising SASSAFRAZ as well as the trade name Sassafraz.
[5] According to an affidavit sworn by Mr. Zoran Kocovski [the Kocovski Affidavit], President of the Applicant, the restaurant has evolved and expanded over the years to become a well-known local landmark and one of the most popular dining destinations in Toronto. From the outset, it has focused on “contemporary French-inspired Canadian cuisine” and a superior “fine dining” experience. In late 2005, it expanded into hosting and catering private events. In May 2009, it added the “S-Café” bar in a separate area of the restaurant, to cater to trends away from fine dining towards more casual dining experiences.
[6] As a result of its extensive print, radio, television and social media advertising, the SASSAFRAZ restaurant has received very significant press coverage and mentions in local and national Canadian newspapers and magazines. It has also received similar international press coverage. In addition, its website received approximately 120,000 unique visitors per year in recent years. The restaurant’s profile and reputation have also been bolstered through direct marketing to approximately 16,000 existing and prospective customers, as well as by being an official hospitality partner of the Toronto International Film Festival since the 1990s. Due to its long list of international celebrity clientele, SASSAFRAZ has become known as a place “to see and be seen” during that festival.
[7] In June 2011, the Applicant registered SASSAFRAZ trademark (TMA799,485) in connection with “(1) Catering services, and (2) Restaurant and bar services; hosting of private receptions.” The extract from the register of trademarks that is attached to the certification for that trademark states that the mark has been in use since at least as early as June 1997. That evidence has not been contested in this proceeding.
[8] In June 2020, the Applicant learned that the Respondent was operating a restaurant under various names and marks consisting of or comprising "SASSAFRAS" including SASSAFRAS, SASSAFRAS COASTAL KITCHEN AND BAR, SASSAFRAS BEAMSVILLE and logo formats or design marks incorporating "SASSAFRAS" [collectively, the SASSAFRAS Marks]. This came to the Applicant’s attention when one of its employees was travelling through the village of Beamsville in the Niagara region and noticed the Respondent's restaurant and signage.
[9] According to the affidavit of Scott Brownlee [the Brownlee Affidavit], who is the “principal and guiding mind” of the Respondent, Sassafras Coastal Kitchen and Bar [SCKB] has been in operation since June 23, 2020. Its Facebook page has been in existence since February 20, 2020, which is also the date upon which its Instagram account was opened.
[10] SCKB serves American southern-style cuisine. Its name was inspired by the sassafras tree, which grows in a region that extends from the Southern United States to the Niagara Peninsula. Mr. Brownlee maintains that the roots and leaves of that tree are important ingredients in some foods and beverages, most notably traditional root beer and many Louisiana Creole dishes.
[11] A comparison of the menus of SCKB and SASSAFRAZ reveals that SCKB is positioned in a somewhat lower price/quality segment of the restaurant industry than is SASSAFRAZ, although some of the items are in an overlapping price range.
[12] As a result of the COVID-19 pandemic, the parties’ restaurants have been forced to develop innovative offerings. For SASSAFRAZ, these have included a delivery and takeout program that provides both regular prepared meals and “meal kits.” For SCKB’s part, it has placed heavy reliance on its web presence and delivery services through Skip the Dishes. In addition, the Respondent began operating “Beamsville Market by Sassafras” from the same premises as SCKB, early in 2021. Among other things, that market sells various prepared food items, prepackaged food products, wine and beer.
[13] It is uncontested that the Applicant contacted the Respondent through counsel on June 26, 2020, immediately after learning of the existence of the SCKB restaurant. At that time, the Respondent was advised of the Applicant’s rights in the SASSAFRAZ trademarks (including its trademark registration for SASSAFRAZ). The Applicant also requested that the Respondent agree to immediately cease and desist using “SASSAFRAS” in association with its restaurant. On the same date, the Respondent communicated its refusal to comply with the Applicant’s requests. According to a news article included at Exhibit 48 to the Kocovski Affidavit, SCKB opened the following day.
[14] The Respondent does not question the validity of the Applicant’s SASSAFRAZ trademark.
III. Issues
[15] The issues raised in this Application are as follows:
a) Has the Respondent infringed the Applicant’s registered SASSAFRAZ Trademark, as contemplated by section 20 of the TM Act?
b) Has the Respondent depreciated the goodwill associated with the SASSAFRAZ Trademark, as contemplated by section 22 of the TM Act?
c) What, if any, are the appropriate remedies?
[16] In its Notice of Application, the Applicant also alleged that the Respondent has engaged in passing off, as contemplated by the prohibition in paragraph 7(b) of the TM Act. However, during the hearing, the Applicant conceded that the overlap between its allegations under subsection 20(1) and under paragraph 7(b) is such that it is not necessary for the Court to address the latter claim. Accordingly, it will not be further discussed in these reasons for judgment.
IV. Analysis
A. The Respondent’s Alleged Infringement of the SASSAFRAZ Trademark (s. 20)
(1) Introduction and Applicable Legal Principles
[17] In its Application, the Applicant sought a declaration that the Respondent has infringed its SASSAFRAZ registered trademark, contrary to sections 19 and 20 of the TM Act. However, its written submissions focus on section 20 and during the hearing the Applicant confirmed that it is seeking a declaration of infringement solely under section 20.
[18] Section 19 remains relevant to this Application because it provides the Applicant with the exclusive right to use the SASSAFRAZ trademark throughout Canada in respect of “(1) Catering services, and (2) Restaurant and bar services; hosting of private receptions.” The full text of section 19 and the other provisions discussed below is set forth in Appendix 1 hereto.
[19] The specific provision of section 20 relied upon by the Applicant is paragraph 20(1)(a). That provision deems the exclusive right described immediately above to be infringed by any person who is not entitled to use the SASSAFRAZ trademark and who sells, distributes or advertises any goods or services in association with a confusing trademark or trade name.
[20] Consequently, the key infringement issue in this Application is whether the Respondent’s operation of its restaurant in association with one or more of the SASSAFRAS Marks is likely to give rise to confusion with the Applicant’s registered trademark SASSAFRAZ, as contemplated by paragraph 20(1)(a).
[21] In this regard, section 6 of the TM Act provides some important parameters. In particular, subsection 6(2) states as follows:
Confusion – trademark with other trademark
Marque de commerce créant de la confusion avec une autre
(2) The use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.
(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 services soient ou non de la même catégorie générale ou figurent ou non dans la même classe de la classification de Nice.
[22] Subsection 6(3) articulates essentially the same test with respect to confusion caused by the use of a trademark, relative to an existing trade name. The same is true regarding subsection 6(4), albeit in relation to the confusion caused by the use of a trade name, relative to an existing trademark.
[23] The factors to be assessed in determining whether trademarks or trade names are confusing are set forth in subsection 6(5), which states as follows:
What to be considered
Éléments d’appréciation
(5) In determining whether trademarks 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 trademarks 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 trademarks 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 trademarks or trade names, including 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, notamment dans la présentation ou le son, ou dans les idées qu’ils suggèrent.
[24] Some of the foregoing factors may not be particularly relevant in a specific case. In any event, their weight will vary with “all the surrounding circumstances”: Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 at para 27 [Veuve Clicquot].
[25] In considering the relevant factors and the other surrounding circumstances, the Court’s perspective must be that of a casual consumer, somewhat in a hurry. More specifically:
The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the [word SASSAFRAS on the Respondent’s] storefront or invoice, at a time when he or she has no more than an imperfect recollection of the [SASSAFRAS] trade-marks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks.
Veuve Clicquot, above, at para 20; see also Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27 at para 40 [Masterpiece].
[26] In applying this test, the Court is required to consider the hypothetical scenario in which the SASSAFRAS Marks are being used in the same area as the SASSAFRAZ registered trademark, regardless of whether the goods or services associated with those trademarks/tradenames are of the same general class: TM Act, ss 6(2) - (4); Masterpiece, above, at para 30.
[27] For greater certainty, that hypothetical scenario must be considered in connection with the entire scope of exclusive rights that were granted to the Applicant under its SASSAFRAZ trademark registration, rather than simply in connection with the Applicant’s actual use of that trademark: Masterpiece, above, at paras 53–59.
[28] The relevant confusion is with respect to the source of the goods in question, rather than the trademarks, trade names, or goods that are being used in association with the trademark(s) being asserted: Masterpiece, above, at paras 41, 67, 73 and 104–105.
[29] The evidentiary burden is upon the Applicant to establish a likelihood – rather than a mere possibility – of confusion, on a balance of probabilities: Loblaws Inc v Columbia Insurance Company, 2019 FC 961 at para 44 [Loblaws], aff’d 2021 FCA 29; Toys “R” Us (Canada) Ltd v Herbs “R” Us Wellness Society, 2020 FC 682 at para 6 [Toys “R” Us]. However, it is not necessary for the Applicant to demonstrate actual confusion: Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 at paras 55 and 89 [Mattel]; Veuve Clicquot, above, at para 6.
(2) Analysis
[30] In Masterpiece, it was suggested that an assessment of the various factors set forth in subsection 6(5) of the TM Act should begin with the “degree of resemblance” factor set forth in paragraph 6(5)(e). This is because “if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion”: Masterpiece, above at para 49.
(a) Degree of resemblance (s. 6(5)(e))
[31] An assessment of the degree of resemblance between SASSAFRAS and SASSAFRAZ must include the appearance and sound of these words, as well as the ideas suggested by them: TM Act, s 6(5)(e).
[32] On cross-examination, Mr. Kocovski acknowledged that the Applicant purposely misspelled the noun Sassafras, by changing the last letter. He conceded that this was done so that the trademark SASSAFRAZ would be distinct and that SASSAFRAZ is an invented word. He further acknowledged that SASSAFRAZ is pronounced with a “Z as opposed to a soft C, so buzz instead of bus.”
[33] The Respondent maintains that this evidence supports a finding that there is a low degree of resemblance between the words SASSAFRAZ and SASSAFRAS. The Respondent requests the Court to infer from this that there is no prospect for any confusion to arise in the mind of a casual consumer who is somewhat in a hurry. The Respondent maintains that such a finding is further supported by the definition of the term “distinctive” in the TM Act. Specifically, a “distinctive” trademark is defined to be one “that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them” : TM Act, s 2. The Respondent adds that the term “trademark” is defined to include “a sign or combination of signs” used by a person for this purpose, and that in turn, the word “sign” is defined to include “a letter” and “a sound.”
[34] I am not persuaded by the Respondent’s submissions. In my view, the casual consumer who is somewhat in a hurry would likely consider the words SASSAFRAS and SASSAFRAZ to have a substantial degree of resemblance.
[35] The relevant assessment should not be conducted on a “syllable by syllable” basis, but rather as a whole: Reynolds Presto Products Inc v PRS Mediterranean Ltd, 2013 FCA 119 at para 31 [Reynolds]. Stated differently, the Court’s task is not to “tease out and analyze each portion of a mark alone,” but rather to “consider the mark as it is encountered by the consumer – as a whole, and as a matter of first impression”: Masterpiece, above, at para 83.
[36] I recognize that some or all of the Respondent’s SASSAFRAS Marks have more than one word. This includes the sign outside the Respondent’s restaurant, which appears as follows:
[37] The same logo/marking appears on Mr. Brownlee’s business card, on his restaurant’s Instagram and Facebook pages, and on its website.
[38] I consider that the visual dominance of the word Sassafras in that logo/signage/marking serves to more than offset the presence of the other words therein, which are clearly descriptive and non-distinctive in association with the wares and services supplied by the parties: Masterpiece, above, at para 84. Indeed, it does so to an extent that it would increase the probability that a casual consumer who is somewhat in a hurry would likely consider the source of that logo/signage/marking to be the same as that of the Applicant’s SASSAFRAZ restaurant. This is particularly so as a matter of first impression for the consumer who “has no more than an imperfect recollection” of the Applicant’s SASSAFRAZ trademark: Masterpiece, above, at para 41. The fact that the word SASSAFRAS is at the beginning of the name SASSAFRAS Coastal Kitchen Bar would likely contribute to this effect on such a consumer in this particular case: Masterpiece, above, at paras 63–64; Zara Natural Stones Inc v Industria de Diseno Textil, SA, 2021 FCA 232 at paras 21–22.
[39] For each of the SASSAFRAS Marks, it is the word SASSAFRAS that “provides the content and punch”: Masterpiece, above, at para 84. Indeed, objective support for this view is provided by a news article reporting on the launch of the Respondent’s restaurant, which is entitled “Sassafras bringing southern-style food to Beamsville.” This view is also supported by the fact that the signage on the door of the Respondent’s restaurant simply says “SASSAFRAS RESTAURANT ENTRANCE.” The Respondent also uses the word “sassafras” without the words Coastal Kitchen Bar in the Internet domain name for its restaurant, which is www.sassafrasbeamsville.com.
[40] For the casual consumer described above, the difference in the last letter of SASSAFRAS and SASSAFRAZ, respectively, is likely to be perceived to be relatively minor, if it is readily apprehended at all, as a matter of first impression. Given the much more significant similarities between the two words, such a consumer is likely to consider those words to have a substantial degree of resemblance, despite the fact that the last letter of the words is different and is associated with a somewhat different sound. My conclusion in this regard is reinforced by the fact that the casual consumer in question is one who has an imperfect recollection and is not in position to do a “side by side comparison”: Diageo Canada Inc v Heaven Hill Distilleries, Inc, 2017 FC 571 at para 133.
[41] The significant similarities between the words SASSAFRAS and SASSAFRAZ include the identical spelling of their first eight letters, the high degree of phonetic similarity in the pronunciation of the three syllables in the words, and the fact that the two words are capitalized. Given these similarities, the words SASSAFRAS and SASSAFRAZ are particularly striking and unique in essentially the same way, particularly in the Canadian markets for catering services, restaurant and bar services, and the hosting of private receptions: Masterpiece, above, at paras 64–65.
[42] I acknowledge that there are some situations in which a small difference between two marks can reduce the degree of resemblance between them in an important way. Such situations include “[w]here marks possess little or no inherent distinctiveness” and where consumers “are accustomed to making fine distinctions between [similar] trade marks in the marketplace”: Kellogg Salada Canada Inc v Maximum Nutrition Ltd, [1992] 3 FC 442, 43 CPR (3d) 349 at paras 14–15 (FCA). However, I do not consider the present case to involve one of those situations. There is no evidence to suggest otherwise.
[43] The three cases relied upon by the Respondent in this regard are each distinguishable from the present circumstances. In Bally Schuhfabriken AG/ Bally’s Shoe Factories Ltd v Big Blue Jeans Ltd/Ltée, [1992] FCJ No 127 (TD) [Bally], this Court upheld a decision by the Trademarks Opposition Board that the trademarks “Wallys” and “Bally” were not confusing. The Court reached that conclusion despite the respondent’s admission that there was “a great degree of resemblance in appearance” between the two marks, and despite expert evidence that the two words were phonetically similar: Bally, above, at para 21. Notwithstanding these factors in favour of the appellant, the court rejected the appeal based on evidence pertaining to the factors set forth in paragraphs 6(5)(a), (c) and (d) of the TM Act, and the absence of actual confusion over a long period of time. There is no similar evidence favouring the Respondent in the present proceeding.
[44] The Respondent also relies on General Motors Corp v Bellows, [1949] SCR 678 at para 28 [General Motors], where the Court approvingly quoted Lord Simonds’ observation that “[t]he Court will accept comparatively small differences as sufficient to avert confusion.” However, that case involved the words “Frigidaire” and “Frozenaire,” which are significantly less similar to each other than are the words SASSAFRAS and SASSAFRAZ. Among other things, the Court observed that the components of the word “Frozenaire” convey “a certain ruggedness and familiarity in appearance, sound and idea” that are not conveyed by the less familiar components of the word “Frigidaire”: General Motors, above, at para 31. In the context in which the words “Frigidaire” and “Frozenaire” were very descriptive and suggestive of the wares in respect of which they were being used (refrigerators and refrigerating equipment), the Court concluded that there was no reasonable likelihood of objectionable association by consumers. As discussed below, there is no evidence that the words SASSAFRAS and SASSAFRAZ are descriptive or suggestive of catering, restaurant or bar services in Canada, or the hosting of private receptions. Rather, the SASSAFRAZ trademark is not only inherently distinct, but has also achieved a considerable degree of acquired distinctiveness.
[45] The third case relied upon by the Respondent in support of its position regarding the small differences between trademarked words is A&W Food Services of Canada Inc v McDonalds’s Restaurants of Canada Ltd, 2005 FC 406 [A&W]. There, the plaintiff alleged, among other things, that the defendant’s use of the term “Chicken McGrill” caused some of the plaintiff’s customers to believe that its “Chicken Grill” trademarked product comes from the defendant. In discussing the degree of resemblance factor, the Court acknowledged that the terms “Chicken Grill” and “Chicken McGrill” were similar and suggestive of similar qualities and characteristics. However, it proceeded to conclude that “the ‘Mc’ prefix minimizes the likelihood of any forward confusion” with the plaintiff’s “Chicken Grill product” and provides “a clear and well-recognized signal that the source of the product is McDonald’s”: A&W, above, at para 83. As for “reverse” confusion, the Court added that there was “nothing inherent in the words ‘chicken’ and ‘grill’ that points to McDonald’s”: A&W, above, at para 84. In my view, the same cannot be said with respect to the words SASSAFRAS and SASSAFRAZ. For greater certainty, the Respondent provided no evidence that either the “S” at the end of its SASSAFRAS Marks, or the “Z” at the end of the Applicant’s registered trademark, is a clear and well-recognized signal that would materially reduce the likelihood of confusion for a casual consumer who is somewhat in a hurry.
[46] The Respondent also asserts that the ideas evoked by the words SASSAFRAS and SASSAFRAZ, respectively, are different. Specifically, it states that the common noun sassafras is a tree associated with the American South and its cuisine, whereas SASSAFRAZ is associated with a Toronto restaurant that serves contemporary French-inspired Canadian cuisine to an allegedly elite clientele. The Respondent insists that a consumer looking to dine on “contemporary French-inspired Canadian cuisine” in the upscale Yorkville district of Toronto is unlikely to be confused upon seeing the sign SASSAFRAS Coastal Kitchen and Bar in Beamsville.
[47] I disagree. The Respondent did not provide any meaningful evidence that consumers in Canada associate its SASSAFRAS Marks with the American F South and its cuisine. In this regard, Mr. Brownlee provided only two examples of the use of “Sassafras” as a trademark or a trade name in Canada. In each case, he did not provide any evidence to show how long the businesses have been in operation, or the extent to which they may have become known in Canada.
[48] The evidence provided in respect of the first of the two examples consisted of a copy of the search results for the term “sassafras food fair Vancouver,” together with a copy of some “Photos for Sassafras Food Fair” that appear on Yelp. Those search results and photos indicate that this establishment is a cafeteria at Vancouver General Hospital. The evidence pertaining to the second example simply consisted of a copy of the search results for the term “Sassafras Savouries prince george.” Those search results indicate that the establishment is “permanently closed.” This evidence does not suggest, let alone demonstrate, that consumers in Canada associate the word “sassafras” with the American South and its cuisine. In the absence of such additional evidence, there is no support for the proposition that either SASSAFRAZ or SASSAFRAS suggest or describe the nature or character of the parties’ respective services. Consequently, I agree with the Applicant that whatever ideas are suggested to consumers by the use of the words SASSAFRAS and SASSAFRAZ, they are likely to be the same, at least when those terms are used in relation to catering services, restaurant and bar services, and the hosting of private receptions.
[49] It is relevant to note in passing that when Mr. Kocovski was asked on cross-examination whether he was aware that “there are many businesses that are associated with American southern-style food that associate their business with Sassafras with an S,” he replied: “Not in Canada.” That evidence was not contradicted.
[50] In summary, for the reasons provided above, I consider that a casual consumer who is somewhat in a hurry and has an imperfect recollection is likely to perceive the words SASSAFRAS and SASSAFRAZ to have high degree of resemblance in appearance and sound. Such a consumer is not likely to consider the small difference in the sound made at the end of the third syllable of those words to be significant. Stated differently, that difference is not such as to be likely to lead such a consumer to consider the degree of resemblance between the two otherwise identical words to be materially less than if the Respondent had used the term SASSAFRAZ in connection with its wares and services. These findings weigh in favour the Applicant.
(b) The inherent distinctiveness of the trademarks or trade names and the extent to which they have become known (s. 6(5)(a))
[51] The Respondent acknowledges that the SASSAFRAZ trademark is an invented term that is distinct. During the hearing of this Application, the Respondent conceded that this trademark is “no doubt very strong.” However, it maintains that SASSAFRAS is a common noun over which the Applicant cannot claim proprietary rights. I disagree.
[52] The uncontested evidence from Mr. Kocovski is that the Applicant has invested heavily in promoting the coined term SASSAFRAZ in association with restaurant and bar services, since it opened its restaurant in June 1997. In 2005, it expanded into the hosting and catering of private events such as corporate events and weddings. Through print, radio and television advertising, as well as its promotional activities on its website and social media, it has created substantial local, national and international awareness of its inherently distinct SASSAFRAZ mark and its association with restaurant/bar/catering services and the hosting of private events. As a result, that mark has also achieved a considerable degree of acquired distinctiveness.
[53] There is no evidence that the term SASSAFRAZ has any descriptive or suggestive meaning in association with such services or events in Canada. For all intents and purposes, the same is true of the Respondent’s SASSAFRAS Marks.
[54] Therefore, the Applicant is entitled to fully enforce its right to national exclusivity in respect of the use of the SASSAFRAZ or any confusingly similar mark in association with such services and events.
[55] For greater certainty, the casual consumer who is aware of the inherently distinct term SASSAFRAZ and who is somewhat in a hurry is likely to make an association between that mark and the Respondent’s SASSAFRAS Marks. Therefore, this factor favours the Applicant.
(c) The length of time the trademarks or trade names have been in use (s. 6(5)(b))
[56] As discussed above, the Applicant’s SASSAFRAZ trademark has been in use for over 25 years in connection with restaurant and bar services. It has also been in use for over 16 years in connection with the hosting and catering of private events. By contrast, the Respondent began to use its SASSAFRAS Marks in February 2020, in connection with the restaurant that it opened in June 2020, the same week that it was advised of the Applicant’s rights in the SASSAFRAZ trademarks (including its trademark registration for SASSAFRAZ).
[57] This factor favours the Applicant.
(d) The nature of the goods, services or business (s. 6(5)(c))
[58] The Respondent maintains that the difference in the types of cuisine that it and the Applicant sell and market are such that a casual consumer who is somewhat in a hurry is unlikely to be confused with respect to the sources of their respective wares and services. In this regard, the Respondent notes that its restaurant specializes in American southern-style food. Its marketing activities emphasize that specialization. By comparison, the focus of the Applicant’s SASSAFRAZ restaurant is upon “contemporary French-inspired Canadian cuisine.”
[59] I disagree with the Respondent’s position. Despite the differences in the type of cuisine sold by the parties, there is material scope for consumers who are aware of the Applicant’s SASSAFRAZ restaurant to be confused when they encounter the SASSAFRAS Marks above and within its restaurant, on the Internet, and elsewhere. This is because the SASSAFRAZ and SASSAFRAS marks are being used in relation to the same or substantially the same type of products and services (prepared meals sold in restaurants): Reynolds, above, at paras 30 and 32. Put differently, the fact that the Applicant’s restaurant competes with restaurants offering other types of cuisine than what it offers creates meaningful scope for confusion among casual consumers who are somewhat in a hurry. This is particularly so as a matter of first impression. This scope for confusion is increased by the fact that there is some overlap in the menu items offered by the parties. In this regard, they each have fish, seafood, chicken and steak offerings.
[60] Consequently, I consider that this factor weighs in favour of the Applicant.
[61] However, the extent to which this is so is reduced by the fact that consumers who have actually been in the SASSAFRAZ establishment or seen its menu online would not likely confuse it with the Respondent’s restaurant, once they have been in the latter establishment or seen its menu. Both of these have a “look and feel” that is not consistent with the type of upscale, fine-dining experience cultivated by the Applicant.
(e) The nature of the trade (s. 6(5)(d))
[62] The Respondent maintains that it and the Applicant focus on two different classes of customers. Specifically, it asserts that the Applicant has positioned its restaurant at the high-end of that business, whereas the Respondent operates in a less expensive segment of that business. The Respondent asserts that this eliminates any likelihood of confusion for consumers. The Respondent suggests that, like purchasers of many other types of expensive goods, the high-end clientele who frequent the Applicant’s restaurant are less likely to be confused when they encounter its SASSAFRAS Marks: Masterpiece, above, at para 70.
[63] In addition, the Respondent notes that as a result of the COVID-19 pandemic, it has been forced to focus on take-out and delivery services. In so doing, it uses modest takeout packaging and Skip the Dishes delivery service. The Respondent submits that this further reduces the possibility of any confusion between its services and those of the Applicant.
[64] I disagree. The differences in the positioning of the parties’ restaurants on the price/quality spectrum are not as substantial as the Respondent has asserted. Among other things, the Respondent advertises its Beamsville Market as being a “gourmet market.” In addition, the overlap between the items and price points of some the main courses in the parties’ menus is not insignificant. [1] The same is true with respect to some of the appetizers. [2]
[65] Furthermore, it is reasonable to assume that people who are aware of the Applicant’s SASSAFRAZ restaurant would expect that any establishment it might open in a local village such as Beamsville could well be somewhat more casual and less pricey than the venue in the upscale Yorkville district of Toronto.
[66] In brief, despite differences in how the parties have positioned their respective products along the price/quality spectrum, there is meaningful scope for casual consumers who are somewhat in a hurry to associate the source of the Respondent’s SASSAFRAS Marks with the source of the Applicant’s registered SASSAFRAZ trademark. This is particularly so as a matter of first impression: Masterpiece, above, at para 70.
[67] In support of its position, the Respondent relies on Loblaws, above, where this Court held that confusion was unlikely, despite the fact that the disputed short form trademarks were very similar. Specifically, each of the parties used the trademark “PC” in connection with its wares. The Respondent maintains that the Court in that case “reaffirmed its faith in the intellectual competence of customers” when it dismissed the plaintiff’s infringement claim under section 20 of the TM Act. However, that case is distinguishable because the Court based its decision primarily on evidence of (i) significant differences in the trade channels used by the parties to sell their products (the traditional retail channel for the plaintiff versus the direct sales channel for the defendant), and (ii) the fact that the short form trademarks were often used together with the defendant’s corporate name “Pampered Chef” or its long form mark bearing that name. In addition, there was no evidence of actual confusion, notwithstanding a significant period of concurrent use of the disputed marks in the marketplace: Loblaws, above, at paras 108, 137 and 155.
[68] Having regard to all of the foregoing, the “nature of the trade” factor weighs in favour of the Applicant.
(f) Alleged additional relevant surrounding circumstances
[69] The Respondent maintains that the absence of any evidence of market confusion ought to play an important role in the Court’s confusion analysis. In his affidavit, Mr. Brownlee adds that he is not aware of anyone having attempted to order “contemporary French-inspired Canadian cuisine” from the Respondent’s restaurant.
[70] It is not necessary for a party alleging a likelihood of confusion as between two or more marks to provide evidence of actual confusion: Mattel, above, at para 55. While an adverse inference may be drawn from the lack of such evidence “when concurrent use on the evidence is extensive,” the evidence of concurrent use does not rise to that level in this case: Dion Neckwear Ltd v Christian Dior SA, 2002 FCA 29 at para 19; quoted with approval in Mattel, above at para 89.
[71] As noted at paragraph 9 above, Respondent’s Facebook page has been in existence since February 20, 2020. That is also the date upon which its Instagram account was opened. However, it did not open its restaurant in Beamsville for another four months. In the meantime, the COVID-19 pandemic broke out in Canada in March 2020 and a lockdown was imposed. Although restrictions were subsequently eased at various points in time, they have also been tightened as successive waves of the pandemic have emerged. Mr. Kocovski’s uncontested evidence is these restrictions have included lengthy shutdowns and major disruptions of the normal business operations of restaurants in the province, including the Applicant’s restaurant. When he swore his affidavit in March 2021, the Applicant’s restaurant was closed. In such circumstances, I do not consider it to be appropriate to draw any adverse inference from the absence of evidence of actual consumer confusion.
[72] I will pause to add that I agree with the Applicant that the fact that it has not been made aware of any instances of actual confusion does not mean that actual confusion has not resulted.
[73] The Respondent also maintains that the likelihood of consumer confusion is very low because its restaurant is located within the Niagara Peninsula, approximately 100 kilometres from the Applicant's restaurant in Toronto. However, the “geographical separation in the use of otherwise confusingly similar trade-names and trade-marks does not play a role in [the] hypothetical test” contemplated by subsections 6(2) – (4) of the TM Act: Masterpiece, above, at para 30. This is because that test is based on the assumption that the trademarks/tradenames in dispute are used “in the same area”: see paragraph 26 above.
[74] Finally, Mr. Brownlee states that he was unaware of the SASSAFRAZ trademark prior to being contacted by the Applicant’s legal counsel on June 26, 2020. However, “[m]ens rea is of little relevance to the issue of confusion”: Mattel, above, at para 90. This applies equally to the acknowledged intention of the Applicant to substitute a “z” for an “s” at the end of its SASSAFRAZ trademark, so as to distinguish its mark from the common noun “sassafras.”
(g) Summary and conclusion regarding confusion and the alleged infringement
[75] In summary, each of the five factors to be considered in determining whether trademarks or trade names are confusing, as set forth in paragraphs 6(5)(a) – (e) of the TM Act, weigh in favour of the Applicant.
[76] In brief, the following factors, individually and even more so collectively, give rise to material scope for the casual consumer who is somewhat in a hurry to be confused, as a matter of first impression, as to whether the source of the Respondent’s SASSAFRAS Marks is the same as the source of the Applicant’s SASSAFRAZ registered trademark:
a) The SASSAFRAZ trademark is inherently distinct and it has become widely known locally, nationally and internationally. There is no evidence that the Respondent’s SASSAFRAS Marks have any descriptive or suggestive meaning in association with catering services, restaurant or bar services, or hosted private events, in Canada. The same