Wenger S.A. v. Travel Way Group International Inc.

Wenger S.A. v. Travel Way Group International Inc.
Court (s) Database
Federal Court Decisions
Date
2016-03-24
Neutral citation
2016 FC 347
File numbers
T-1380-13
Decision Content
Date: 20160324
Docket: T-1380-13
Citation: 2016 FC 347
Montréal, Quebec, March 24, 2016
PRESENT: The Honourable Madam Justice St-Louis
BETWEEN:
WENGER S.A., GROUP III INTERNATIONAL LTD., AND HOLIDAY GROUP INC.
Applicants
and
TRAVELWAY GROUP INTERNATIONAL INC.
Respondent
JUDGMENT AND REASONS
I. Overview [1] The applicants, Wenger S.A. [Wenger], Group III International Ltd. [Group III], and Holiday Group Inc. [Holiday] filed an application before this Court seeking (1) a declaration that the respondent, Travelway Group International Inc. [Travelway] has infringed the Wenger Trade-marks [Wenger Marks], (2) a permanent injunction restraining Travelway from infringing the Wenger Marks, (3) an order expunging registration numbers TMA740206 and TMA740200 from the trade-marks register, (4) an order requiring Travelway to destroy or to deliver to the applicants all products marked with any mark similar to the Wenger Marks, in its possession, power or control, (5) an order for the payment of damages and for aggravated, punitive and exemplary damages, and (6) costs on the highest scale.
[2] As per their submissions, the applicants seek the aid of the Court and the shelter of the Trade-marks Act, RSC 1985, c T-13 [the Act] to protect the Wenger Cross Logo, hereinafter described, and brand against what it considers Travelway’s infringing, deceptive and unfair actions. In essence, they submit that since 2008, and particularly since 2012, Travelway has engaged in a deliberate and planned scheme to unfairly hijack the reputation of Wenger’s Cross Logo, and claim it for itself.
[3] Travelway contends on the contrary that its trade-marks have been registered since 2009, and that the applicants had not objected to their use for at least two years after they first appeared. It submits, in essence, that it is legitimately using its trade-marks under the shield of the registrations it obtained, and that the applicants have not met their burden to show that a likelihood of confusion exists.
[4] For the reasons set out below, this application will be dismissed.
II. Background A. The parties (1) The applicants [5] Holiday is Canada’s largest luggage and soft bag supplier, employing over 150 people and selling its wares across Canada in over 4,000 points of sale. Group International has been in the business of designing, manufacturing and distributing luggage and bags for nearly thirty years, and is the master global licensee of the Wenger Marks in relation to luggage and bags.
[6] Wenger is a Swiss company who, over 100 years ago, received a contract from the Swiss army to produce multi-function knives for its soldiers. Those knives became famous and known as the “Swiss Army Knives”, and particularly, as the “Genuine Swiss Army Knife”.
[7] At least as early as the 1970s, Wenger adopted a logo comprised of a cross in a rounded quadrilateral and surrounded by an inlaid border [the Wenger Cross Logo]. The Wenger Cross Logo is typically presented featuring a white or metallic cross and border, set against a black or red background.
[8] Wenger owns a number of trade-marks in Canada of which three are registered in association with luggage and various kinds of bags and feature the Wenger Cross Logo [the Wenger Cross Luggage Marks]. These three marks are the ones at issue in these proceedings and they are the following.
[9] It is undisputed that the applicants have continuously used the Wenger Cross Luggage Marks throughout Canada, on and in association with luggage and bags, since 2003. They were registered at different dates from 2007 to 2012.
[10] In addition, Wenger also owns and uses various unregistered marks in Canada, including the word marks “SWISSGEAR” and “From the maker of the Genuine Swiss Army Knife”.
(2) The respondent [11] Travelway was founded in the late 1970s. It mainly manufactures and distributes luggage and travel-related products, both under its own labels and as a licensee for others.
[12] In 2008, Travelway became involved in what it described as a strategic alliance with the Swiss company World Connect AG [World Connect] whereby it agreed to assist World Connect in designing products for its “Swiss Travel Products” brand, which is a registered trade-mark in Canada under the name of World Connect. It developed two new logos: the first, known as the “S in Cross”, and the second, known as the “S in Cross on Triangle”.
[13] The “S in Cross” features a rounded square, in the center of a cross, and an “S” in that round square. It has no contour.
[14] The “S in Cross on Triangle” represents the “S in Cross” featured in white against a greyscale-background with a surrounding darker border, in the form of a rounded triangle.
[15] Travelway has used these logos since 2009. In December 2008, its trade-mark applications were published in the Trade-marks Journal, and in April and May 2009, they were registered (TMA 740206 and TMA 740200). These trade-marks were not challenged.
B. Relevant facts [16] In February 2012, Travelway allegedly modified the logos appearing on its luggage and bags. Most notably, the prominent “S” feature was altered making the “S” difficult to see, this being referred to as the “Disappearing S” logo, or it was eliminated, this being referred to as the “Missing S” logo.
[17] The applicants had not challenged Travelway’s trade-mark registrations, but this change in Travelway’s logos prompted them to seek the protection of the Court.
III. Issues [18] As per the representations of the parties, this matter raises the following issues:
1. Is Holiday a proper party in this case?
2. Is there a likelihood of confusion among consumers between Travelway’s and Wenger’s luggage wares such that Travelway has infringed the Wenger Cross Luggage Marks, in contravention to section 20 of the Act?
3. Has Travelway passed off its wares as and for those of the applicants, in contravention to section 7 of the Act?
4. Are the two Travelway registered trade-marks valid and enforceable?
5. What are the proper reliefs?
IV. Submissions of the Parties A. Applicants’ submissions [19] The applicants submit that (1) Holiday is a valid party to these proceedings, (2) Travelway infringes the Wenger Cross Luggage Marks through its use of confusing marks, contrary to section 20 of the Act, (3) Travelway has passed off its wares as and for the applicants’, contrary to section 7(c) of the Act, and (4) the registration of Travelway’s marks is invalid, pursuant to section 18 of the Act.
[20] The applicants believe the appropriate reliefs to be a permanent injunction restraining Travelway from using its registered and non-registered trade-marks, a declaration of invalidity of the registered trade-marks, the expungement of the registered trade-marks, and damages.
[21] In support of their Application, the applicants tendered the affidavits of Mr. Raymond Durocher, president of Holiday, Dr. Ruth Corbin of CorbinPartners Inc., and Ms. Keri Blackburn, and the exhibits thereto.
(1) Holiday is a proper party to these proceedings [22] The applicants assert that Holiday is an “interested person” as per section 53.2 of the Act (reproduced in Annex), as the definition set out in section 2 of the Act is not limited to the holders or the owners of a trade-mark, but quite the contrary, is intentionally broader, and includes Holiday as it may be affected or reasonably apprehend that it will be. The applicants rely on Mr. Durocher’s affidavit, on clause 3 of the distribution contract, and on the fact that Holiday pays for the Wenger Marks, that it invested, and holds significant interest as Wenger’s eyes and ears in Canada. In essence, the applicants submit the distributor, Holiday, shares in the reputation and goodwill, has an interest, is involved, and meets the test set forth in the relevant case law, namely Natural Waters of Viti v CEO International Holdings Inc, 190 FTR 300 at para 19 [Natural Waters] and Osiris Inc v International Edge Inc, 2009 OJ no 3916 at para 28 [Osiris]. The applicants distinguish this case law as being one in which the party consisted of sales agents, and were not involved whereas Holiday is not merely a sales agent, and is involved.
(2) There is confusion in that Travelway infringes the Wenger Cross Luggage Marks [23] Wenger submits that Travelway infringes its trade-marks as both its registered and non-registered marks bear a high degree of resemblance to Wenger’s Cross Luggage Marks using the Cross Logo, and that the test for confusion is thus satisfied.
(a) Legal test for confusion [24] The applicants submit that the test for confusion under the Act is settled. Whether a trade-mark is confusing with another is a matter of “first impression in the mind of a casual consumer somewhat in a hurry who sees the mark at a time when he or she has no more than an imperfect recollection of the prior 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”. It is not necessary that actual confusion be proven; a likelihood of confusion is enough (Veuve Clicquot Ponsardin v Boutique Cliquot Ltee, [2006] 1 SCR 824 [Veuve Clicquot] at para 20).
[25] Subsection 6(5) of the Act (reproduced in Annex) enumerates the factors that must be considered in a confusion analysis between one trade-mark and another. The analysis usually begins with an assessment of the degree of resemblance. If the trade-marks do not resemble each other, it is unlikely that the other factors would lead to a finding of likelihood or confusion. The other factors become significant once the threshold of similarity has been established (Masterpiece Inc v Alavida Lifestyles Inc, [2011] 2 SCR 387 [Masterpiece] at para 49).
(b) Application of the test [26] The applicants submit that Travelway’s marks do confuse the “casual consumer somewhat in a hurry” by (i) the degree of resemblance between Travelway’s and Wenger’s trade-marks, (ii) the inherent distinctiveness of Wenger’s trade-marks and the extent to which they have become known, (iii) the length of time the trade-marks have been known, (iv) the nature of the wares, and (v) the nature of the trade.
(i) The degree of resemblance between Travelway’s and Wenger’s trade-marks [27] Resemblance is defined as the quality of being either like or similar. The term “degree of resemblance” under section 6(5) of the Act implies that likelihood of confusion does not arise exclusively from identical trade-marks. Rather, it recognizes that marks with some differences may still result in likely confusion (Masterpiece, at para 62).
[28] The applicants submit that the Court must perform a resemblance analysis for each of the marks. The dominant feature of each of Wenger Cross Luggage Marks at issue is the Cross Logo, which is common to all the marks. Thus, the analysis need only be performed by reference to the Cross Logo.
[29] The applicants submit that all of the Travelway trade-marks bear a high degree of resemblance to each of the Wenger Cross Luggage Marks using the Cross Logo. The degree of resemblance is progressively more intense, from the “S in Cross” mark to the “Missing S” one used on Travelway’s zipper pulls.
[30] The applicants submit that Travelway’s “S in Cross” mark closely resembles, in the mind of a consumer, Wenger’s Cross Logo. In each one, the cross, which is of similar style and proportion, is the dominant feature.
[31] Travelway’s “S in Cross on Triangle” mark resembles even more closely the Cross Logo, since it features the same cross shape as the “S in Cross” mark, and since the cross is set on a round edged, shield-type background with a border, just like Wenger’s Cross Logo.
[32] The “Disappearing S” has been used on luggage and bags since 2012. Its cross is narrower and longer than the one used in the registered marks, and its shape closer to that of the Wenger Cross Logo although the shape of the triangle background is less pronounced, the border is metallic and identical in tone to the cross and the S is difficult or impossible to see.
[33] As for the “Missing S” logo, it has been used on zipper pulls of luggage and bags since 2012 as well. The applicants contend that it is effectively identical to Wenger’s Cross Logo. Both feature a cross with no other distinguishing features against a background plate with rounded corners and a contrasting colour.
(ii) The inherent distinctiveness of Wenger’s trade-marks and the extent to which they have become known [34] Inherent distinctiveness under paragraph 6(5)(a) of the Act is concerned both with the inherent distinctiveness of the mark, and its acquired distinctiveness. Marks are inherently distinctive when nothing about them refers the consumer to a multitude of sources. Where a mark does not have inherent distinctiveness, it may still acquire distinctiveness through continual use in the marketplace. To establish this acquired distinctiveness, it must be shown that the mark has become known to consumers as originating from one particular source (Pink Panther Beauty Corp v United Artists Corp, [1998] FCJ No 441 at paras 23-24).
[35] The applicants submit that the Wenger Cross Luggage Marks have acquired distinctiveness through continuous use in the luggage and bag market in Canada since 2003. Holiday has sold over five million units of Wenger luggage wares since 2003, and the Cross Logo has become well known and recognized across Canada. Holiday makes substantial investments every year in the marketing and promotion of its Wenger luggage wares, and Wenger Cross Luggage Marks are thus known to consumers as a unique identifier of luggage and bags emanating from Wenger and continuing the Swiss Army Knife tradition.
[36] According to the applicants, the Travelway marks are not distinct, but very similar or nearly identical to the Cross Logo and do not distinguish the Travelway from the Wenger luggage wares.
(iii) The length of time the trade-marks have been known [37] The applicants submit that the Cross Logo was first used by Wenger in the 1970s and was first introduced in Canada on luggage and bags in 2003. In the years before Travelway luggage wares entered the Canadian market, Holiday sold countless Wenger luggage wares bearing the Cross Logo.
(iv) The nature of the wares [38] The applicants submit that the registration particulars show that the parties use their respective logos in association with identical products namely, luggage, backpacks, briefcases, computer cases, luggage tags, umbrellas and other similar wares. Because of Travelway’s infringement of Wenger’s trade-marks, it is not just the general categories of wares that are identical; the products themselves are nearly identical in the mind of an ordinary consumer. According to the applicants, the Travelway luggage wares replicate the functionality and design features of many Wenger luggage wares.
(v) The nature of the trade [39] The applicants submit that Holiday and Travelway are engaged in identical trade using the same distribution channels for their luggage products and have the same consumer purchase points, both retail and internet. The Wenger and the Travelway luggage wares are found in the same retail stores (for example, Costco and Bentley); they appear side-by-side in store displays, and they turn up on the same internet search and e-commerce pages.
(c) Evidence of actual confusion [40] The applicants have presented evidence of confusion in the form of affidavits by Mr. Raymond Durocher, president of Holiday, and Dr. Ruth Corbin, who have both been-cross examined. Mr. Durocher testified namely to report three (3) instances where there was evidence of actual confusion in the marketplace between the Travelway and the Wenger luggage wares, namely mistakes in two Canadian Tire flyers, in June 2012 and in January 2014, and in one Walmart flyer in August 2013.
[41] Dr. Corbin testified in relation to the mystery shopping study conducted by the CorbinPartners firm to assess the likelihood that luggage salespeople would confuse the Wenger luggage wares with the Travelway ones. Dr. Corbin’s study found that 51% of luggage salespeople did confuse Travelway and Wenger luggage wares, and that the flyers are a potential source of “transmitted confusion” as they risk confusing as many consumers as they reach.
[42] In her affidavit, Dr. Corbin asserts that the study demonstrates a relatively high likelihood that salespeople will confuse the two brands, based on the branding indicia of Swiss Travel Products. She considers that evidence noteworthy because (1) luggage salespeople have specialized knowledge and one would anticipate a lower level of confusion among them as compared to ordinary customers, and (2) salespeople’s confusion has the potential to be transmitted to hundreds of consumers each day.
(d) Conclusion on confusion and infringement [43] The applicants remind the Court that, although useful, the expert evidence or survey is not necessary and that it falls upon the Court to evaluate the likelihood of confusion, i.e. if the “casual consumer somewhat in a hurry” who sees the Travelway luggage wares would likely think that they are from the same source as the Wenger ones.
[44] However, they assert there is not only evidence of likelihood of confusion, but also of multiple instances of actual confusion. In Canada Post Corp v Paxton Developments Inc (2000), 198 FTR 72, this Court relied on survey information indicating that 9% of those surveyed were confused as sufficient evidence of actual confusion by a significant number of consumers.
[45] They contend that Wenger has the right to exclusive use of the Wenger Cross Luggage Marks under sections 19 and 20 of the Act (both reproduced in Annex), and Travelway has infringed that right through its use of confusing marks.
(3) Travelway has passed off its wares as and for the applicants’, contrary to section 7 of the Act (a) Legal test for passing off [46] The applicants state that it is well recognized in trade-mark law that “nobody has the right to represent his goods as the goods of somebody else” (AG Spalding Brothers v AW Gamage Ltd (1915), [1914-15] All ER Rep 147 at 149 (HL)). The common law and section 7 of the Act (reproduced in Annex) prohibit any person from passing off its wares as and for those of another.
[47] The applicants contend having established the necessary three elements to make out a case of passing off: (i) the goodwill or reputation attached to the applicants’ goods in the mind of the purchasing public; (ii) Travelway has made a representation to the public, and (iii) the applicants suffered or are likely to suffer damage as a result of the Travelway’s misrepresentation (Ciba-Geigy Ltd v Apotex Inc, [1992] 3 SCR 120 [Ciba-Geigy] at para 33).
(i) The goodwill or reputation attached to the applicants’ goods in the mind of the purchasing public [48] The applicants rely on Dr. Corbin’s affidavit to establish that their marks and wares have substantial goodwill and reputation in the mind of the purchasing public. Dr. Corbin explains that famous or well-known brands have acquired an embedded trust, a cachet, that allows their owners to add a price premium and to generate a higher level of sales from a given marketing investment than lesser known brands would generate.
[49] The Wenger Cross Luggage Marks have been used on luggage and bags since 2003 and are readily identifiable. They have goodwill in their own right, amplified through the association of the Cross Logo with the legacy of Wenger’s Swiss Army Knives.
(ii) Travelway has made a representation to the public [50] The applicants submit they need not show any intentional misconduct or deliberate deceitful acts by Travelway. The mere adoption and use by Travelway of a mark or name that is likely to be confused with Wenger’s is sufficient (Molson Canada v Oland Breweries Ltd, [2001] OJ no 431 at paras 20-24). However, Travelway’s false claims of “Swissness”, the “Disappearing S” logo on its bags and the “Missing S” logo on its zipper pulls are all intentional efforts to deceive the public. By deliberately making “Swiss” claims about its products and using logos that are similar to the Wenger Cross Luggage Marks, Travelway is misrepresenting its wares, and has done so in full knowledge of the Wenger Marks as used on the same kind of wares.
(iii) The applicants suffered or are likely to suffer damage as a result of Travelway’s misrepresentation [51] The applicants must show that, as a result of the misrepresentation, they have suffered or are likely to suffer damage. Where the defendant is in direct competition with the plaintiff, damage can be established by showing a likely loss of sales to a competitor. This criterion can also be satisfied where the misrepresentation results in a plaintiff’s loss of control over the use of its name or mark or in an obstacle to a plaintiff’s use of its own name or mark (Orkin Exterminating Co Inc v Pestco Co of Canada, [1985] OJ no 2536 at para 37). The applicants believe both forms of damage are established in this case.
[52] The applicants believe that damage to goodwill and position in the market, through direct loss of sales, can be inferred from evidence that the infringer is a direct competitor in the same markets and uses the same distribution channels. Confusion on the part of retailers and salespersons, transmitted confusion to customers, and a customer’s own confusion will likely lead to purchases of Travelway luggage wares instead of the Wenger luggage wares. Damage will likely also arise from harm to the goodwill of the Wenger Cross Luggage Marks, and in this regard, Dr. Corbin confirmed and explained that loss of trust in a brand and image is a matter of perception, and can be permanent.
[53] Hence, Travelway’s intentionally varied uses of its marks that omit or obscure the “S” and its use of those marks in association with false claims of Swissness are a deliberate effort to affect the applicants’ control over the Wenger Cross Luggage Marks. One particularly notable aspect of Travelway’s conduct is its persistent use of zipper pulls with no “S” in the cross logo, which are a direct infringement of the Wenger Cross Luggage Marks. The fact that elsewhere on the product there might be a version of the Travelway registered marks does not absolve the use of another directly infringing mark on the same product.
[54] In view of all the above evidence, the applicants believe that Travelway has passed off its wares as theirs, in an effort to obtain financial gain to the applicants’ considerable detriment.
(4) The registration of Travelway’s marks is invalid [55] The applicants submit that the registration of Travelway’s Cross marks are invalid under subsection 18(1) of the Act (reproduced in Annex) because they are confusing, and not distinctive of Travelway’s wares. Travelway was thus not entitled under subsection 16(1) of the Act (reproduced in Annex) to secure their registration. As a result, the registration cannot act as a defence to Travelway’s infringement and passing off. The applicants submit that the registrations of the Travelway Cross marks can be declared invalid on the basis that Travelway has abused the rights of registration. It obtained the rights of registration on representation that it would use the “S in Cross” and the “S in Cross on Triangle” marks, but used distortions of their marks and in doing so, infringed the Wenger Cross Luggage Marks.
(5) The appropriate reliefs [56] The applicants seek (a) a permanent injunction against Travelway, (b) a declaration of invalidity and expungement and (c) damages.
(a) Permanent injunction [57] The applicants seek a permanent injunction against Travelway restraining it from using, directly, indirectly or via licence, the Travelway Cross marks and their common law equivalent, pursuant to sections 10, 11 and 53.2 of the Act (all reproduced in Annex).
(b) Declaration of invalidity and expungement [58] The applicants seek a declaration of invalidity and an order that registration numbers TMA740206 and TMA740200 be struck from the Trade-marks register pursuant to subsection 57(1) of the Act (reproduced in Annex), since the registrations are invalid.
(c) Damages [59] The applicants submit that section 53.2 of the Act allows a successful plaintiff to seek damages or an accounting of profits as remedies for trade-mark infringement. Compensation for trade-mark infringement is based on two principles: (1) restoration of the affected party into the same position it would have been but for the infringement and (2) compensation by way of price or hire for the use made of the affected party’s property (Electric Chain Co of Canada Ltd v Art Metal Works Inc et al, [1933] SCR 581 at 590).
[60] The applicants ask that if the Court finds Travelway liable for infringement, it directs a reference, under Rule 153 of the Federal Courts Rules, SOR/98-106 [the Rules], to assess the applicants’ damages, Travelway’s profits and the compensation due to the applicants.
[61] The applicants also seek punitive damages, but want this question to be made an issue for the referee. The applicants believe that punitive damages are appropriate in this case because Travelway’s conduct was part of a scheme to confuse consumers, to create mischief in the marketplace and to divert actual revenue, sales and goodwill to Travelway.
B. Travelway’s submissions [62] Travelway submits that (1) Holiday is not a proper party to the proceedings, (2) the Travelway marks are valid and used, (3) no evidence of actual, likely or self-evident confusion exists, (4) there is no infringement, (5) there is no passing off and (6) there is no evidence of damage.
[63] Travelway requests that the Court declare their marks valid and enforceable and dismiss the applicants’ application.
[64] In support of its arguments, Travelway tendered affidavits and exhibits from Mr. Bruce Shadeed, president of Travelway, and from Mr. Christian Bourque, an expert in the field of surveys.
(1) Holiday is not a proper party to the proceedings [65] Travelway submits that section 53.2 of the Act mentions that “any interested person” can file an application for the court to grant relief for any act done contrary to the Act, but in order to obtain a relief, an “interested person” must necessarily have an interest in the trade-mark or the indicia sought to be protected through the action for infringement or passing off (Osiris Inc v International Edge Inc, 2009 CanLII 50224 (ON SC) at paras 21-29). Group III is a licensee of Wenger, but has no right to sub-license the Wenger Marks. It has the possibility to enter into a distribution agreement with a third party, which it did with Holiday, but does not have the right to sub-license the Wenger Marks to Holiday.
[66] Travelway relies on the confidential agreement (filed under seal) to contend that Holiday is not a licensee of Group III (section 6.3 of the Distributor Agreement). The applicants’ statement that Group III has granted Holiday the exclusive right to use the Wenger Marks with Wenger’s consent within Canada is false and misleading. On the contrary, Holiday is the distributor of the products made for or by Group III, the distribution rights do not include rights to the trade-marks, and Holiday is therefore not an interested party to these proceedings.
[67] Travelway also submits that a trade-mark is that of the manufacturer, not that of the distributor; a distributor is not a proper party to a passing off action based on the fact that a distributor does not share the reputation and goodwill of a trade-mark owner (Natural Waters at paras 11-15).
[68] Travelway portrays that the applicants submitted only Mr. Durocher’s testimony and chose not to submit any from executives of either Wenger or Group IIII. Travelway contends that Mr. Durocher is not qualified to speak of the use of the other applicants’ marks in Canada, nor of the impact of the alleged Travelway’s actions on the other applicants’ reputation and goodwill.
[69] In the present case, Travelway takes issue with the fact that Mr. Durocher confirmed in his cross-examination that representatives of Group III and Wenger are “alive and well”, and could have provided first-hand knowledge on issues such as the alleged goodwill and reputation of the Wenger Marks, as well as the alleged confusion. Pursuant to rule 81(2) of the Rules, an adverse inference must be drawn from the failure of the applicants to provide such evidence.
(2) Travelway marks are valid and used [70] Under section 19 of the Act, the registration of a trade-mark affords the person identified as its owner to exclusively use the trade-mark across Canada. A registration affords a presumption of validity and the person contesting the registrations bears the burden to prove that the marks should not have been registered in the first place.
(a) Registration of the Travelway marks in 2009 [71] The Travelway marks were registered in 2009, without any objection from the applicants, who objected to the use of the marks only in late November 2012, three years after their registration.
(b) Travelway’s use of its trade-marks [72] Travelway submits that it always includes its name on hang tags affixed to each piece of luggage, that Holiday recognized that the majority of Travelway’s products are identified by labels, warranty leaflets and country of origin labels as well as an indicator of the manufacturer of the source, and that the images produced by the applicants in their proceedings and used in their survey are misleading since the markings, tickets, labels and warranty attached to the products are not shown in the pictures.
[73] As for the “Missing S” and the “Disappearing S” logos, Travelway contends that, in September 2011 and in May 2012, it experimented with different zipper pulls and plates, all bearing the registered Travelway marks. For technical reasons, the “S” of the Travelway marks had to be etched onto the cross of the enamel logo affixed to the luggage. Since the enamel logo on the zipper pulls was too small, no “S” could be applied. As a result of a letter received by Walmart in November 2012, Travelway modified once more the logo button, but was still faced with the same technical constraints regarding the zipper pulls.
[74] In spite of these experiments, Travelway asserts its marks were at all times used as registered; the changes constitute inconsequential variations. “The law of trade-marks does not require the maintaining of absolute identity of marks in order to avoid abandonment, nor does it look to miniscule differences to catch out a registered trade mark owner acting in good faith and in response to fashion and other trends. It demands only such identity as maintains recognizability and avoids confusion on the part of unaware purchasers” (Promafil Canada Ltée v Munsingwear Inc, [1992] FCJ No 611 at p 11).
[75] Travelway submits that the minimal changes made for practical reasons on their zipper pulls cannot be construed as revamping their trade-marks which would confuse the unwary consumer.
(3) No evidence of actual, likely or self-evident confusion (a) Legal test for confusion [76] Travelway agrees with the applicants that subsection 6(5) of the Act serves as the basis for assessing confusion, for both infringement and passing off. Travelway also agrees with the applicants that the Court must place itself in the shoes of the average consumer, somewhat in a hurry with an imperfect recollection of the trade-marks [Veuve Clicquot, at para 20], but it disagrees with the applicants in that there is no confusion.
(b) Application of the test (i) Resemblance between Travelway’s and Wenger’s trade-marks [77] Travelway submits that its and Wenger’s trade-marks are different. Although no side by side comparison of trade-marks must be done, the overall visuals of the Wenger Marks and the Travelway marks leave entirely different impressions, especially considering the number of other cross logos registered and used in Canada.
(ii) The inherent distinctiveness of Wenger’s trade-marks and the extent to which they have become known [78] Travelway submits that evidence of fame regarding their trade-marks is absent from the applicants’ record, and that the Canadian market is inundated with trade-marks that have the same “look and feel” as the Wenger Marks. The distinctive character of the Wenger Marks is diluted and the protection that may be offered to them is therefore narrow.
[79] Travelway submits that Wenger Marks possess a low level of distinctiveness. The indicia over which the applicants claim exclusivity are commonly used as part of a logo or trade-mark. There exist a number of products bearing a cross as part of a logo or trade-mark such as Tissot, Victorinox, Swatch, Strellon; the colour red or black, or chrome, as a background or accent colour for a logo or trade-mark is also very commonly used as a marketing tool in the travel gear industry as is grey a common colour for luggage lining, and there are several trade-marks registered in Canada using a cross, the word “Swiss” or a combination of these for products related to travel bags and accessories.
(iii) The length of time the trade-marks have been known [80] Travelway admits that the Wenger Marks have been used in Canada for a longer period of time (since 2003 for the Wenger Marks and since 2009 for the Travelway marks). However, the Court must also consider the length of time during which the trade-marks also co-existed on the Canadian market, during which there was no objection to the use of the Travelway marks, namely the period from 2009 to 2012.
(iv) The nature of the wares [81] Travelway acknowledges that the nature of the wares is the same.
(v) The nature of the trade [82] Travelway acknowledges that the nature of the trade is the same.
(c) Survey evidence is unreliable and unnecessary [83] Travelway submits that four requirements must be met before expert evidence is accepted in a trial: (a) relevance; (b) necessity in assisting the trier of fact; (c) the absence of any exclusionary rule; and (d) a properly qualified expert (Masterpiece, at para 75), and that Dr. Corbin’s affidavit fails to fulfill these requirements. More specifically, Dr. Corbin’s affidavit is (i) irrelevant, (ii) unnecessary and (iii) based on second-hand information.
(i) Relevance [84] Travelway points out that the answers to Dr. Corbin’s survey were vague, that the surveyed population was incomplete and that the only criterion of selection of the interviewed sales associates was their availability, not their knowledge in luggage. Moreover, there is no information as to whether the surveyed sales associates were specifically “luggage salespeople” and there is no evidence that the surveyed population is representative of the average Canadian consumer of luggage and travel products. An average person is not the relevant person in the assessment of confusion and opinions of people who may never have contemplated buying these particular products are irrelevant (McDonald’s Corp v Coffee Hut Stores Ltd, (1994) 76 FTR 281 at paras 36-37). Travelway submits that by surveying the wrong public, the survey is irrelevant and does not meet the first prerequisite of relevance.
(ii) Necessity [85] Travelway submits that, in assessing necessity, judges should use their common sense in considering whether the casual consumer would likely be confused. The judge has the ability to put himself/herself in the position of the average person purchasing the goods and expert evidence is unnecessary (Masterpiece, at para 92). Survey evidence should thus be applied with caution, as it has the potential to provide empirical evidence which demonstrates consumer reactions in the marketplace (Masterpiece, at 93). However such empirical evidence is not provided in the Corbin affidavit and survey; no evidence of consumer reactions was provided. This survey does not deal with possibilities of confusion of consumers; the study is lacking information and does not meet the prerequisite of necessity.
(iii) Second-hand information [86] Travelway submits that the courts have disregarded surveys presented as evidence in the form of affidavits sworn by representatives of the company retained to supervise the study, and not the persons who actually conducted the interviews (Joseph E. Seagram & Sons Ltd v Canada (Registrar of Trade Marks (1990), 38 FTR 96 at paras 45-48). Dr. Corbin did not interview any of the surveyed salespeople, nor did she design, conduct or supervise the study. The survey was conducted by an external field service company, Market Plus Inc., and was directed and analyzed by Mr. Jon Purther, another representative of CorbinPartners Inc. No affidavit evidence of persons with either direct or indirect knowledge of the conducted interviews was provided and Travelway was unable to cross-examine the appropriate witnesses. Travelway submits that considering the several vague open-ended answers given to the questions asked in the survey, and the lack of explanations as to why some sales associates provided the wrong information to customers, such testimony would have been important.
(d) No actual confusion [87] Travelway submits that there is no evidence of actual confusion between Wenger’s and Travelway’s trade-marks despite years of concurrent use. Mr. Durocher has alleged multiple instances of confusion, but not a single one has been documented, even after the proceedings were initiated; hence, allegations of confusion by customers in the context of defective product returns or advertising are mere speculations. No witness was called upon to explain erroneous product returns or erroneous product identification in advertisements.
[88] Travelway believes that had such confusion existed, it would have been shown with proper evidence. If confusion has not occurred in all of the years of concurrent use, the Court may draw an adverse inference as to the likelihood of confusion (Christian Dior SA v Dion Neckwear Ltd, 2002 FCA 229 at para 19).
(e) No self-evident confusion [89] Travelway believes that Wenger’s and Travelway’s marks are not identical and do not leave the same impression. Some of the notable differences are the letter “S” in the cross (except on the zipper pulls), the relative proportions and the overall shape of the trade-mark design.
[90] Travelway submits that the red colour for background and the colour white for the cross are irrelevant as Wenger has not claimed a colour combination as a feature of its registered trade-marks. Travelway also submits that the context of the use of the trade-mark is particularly relevant in passing off (Mr Submarine Ltd v Amandista Investments Ltd, 1987 FCJ 1123).
(f) Conclusion on confusion and infringement [91] Travelway submits that since the Wenger and the Travelway marks are not identical, there can be no finding of infringement under section 19 of the Act. Also, since the applicants failed to discharge their burden of proving actual or likely confusion, there can be no finding of infringement under section 20 of the Act.
(4) No passing off (a) Legal test for passing off [92] Travelway agrees with the applicants that passing off is prohibited by section 7 of the Act. It adds that this provision has a timing component, in addition to the conduct and confusion component (Ciba-Geigy, at para 33). The applicants must prove that confusion was likely at the time Travelway commenced using their marks.
(b) Travelway has not made a representation to the public [93] Travelway submits that the only “Swiss” reference appearing on their products is the “Swiss Travel Products” trade-mark, which it is entitled to use, and that the applicants do not have a monopoly on an ambiguous refe