Auberge & Spa Le Nordik Inc v. Therme Development (Cy) Ltd.

Auberge & Spa Le Nordik Inc. v. THERME Development (CY) Ltd.
Court (s) Database
Federal Court Decisions
Date
2024-11-06
Neutral citation
2024 FC 1765
File numbers
T-225-23
Decision Content
Date: 20241106
Docket: T-225-23
Citation: 2024 FC 1765
Ottawa, Ontario, November 6, 2024
PRESENT: The Honourable Madam Justice Tsimberis
BETWEEN:
AUBERGE & SPA LE NORDIK INC. AND NORDIK IMMOBILIERS WINNIPEG INC.
Applicants
and
THERME DEVELOPMENT (CY) LTD.
Respondent
JUDGMENT AND REASONS
I. Overview [1] This is an application by Auberge & Spa Le Nordik Inc. and Nordik Immobiliers Winnipeg Inc. [collectively, Nordik or Applicants], under sections 57 and 58 of the Trademarks Act, RSC 1985, c T-13 [TMA] to expunge certain registered services from trademark registrations TMA1110500 for THERME [THERME mark], TMA1110501 for THERME GROUP [THERME GROUP mark], TMA1110502 for THERME WOMANS HEAD LOGO [THERME Woman’s Head mark] and TMA1110061 for THERME WOMAN LOGO [THERME Woman mark], [collectively, THERME Trademarks and THERME Registrations], owned by the Respondent, THERME Development (CY) Ltd. [TD]. The THERME Registrations are annexed hereto as Schedule “A”. The table hereinafter reproduces the THERME Trademarks and references the relevant filing and registration dates for each of TD’s THERME Registrations.
THERME Registrations
Registration No.
Relevant Dates
THERME
TMA1110500
Filed: 2018‑03‑16
Registered : 2021‑09‑29
THERME GROUP
TMA1110501
Filed : 2018‑03‑16
Registered : 2021‑09‑29
TMA1110061
Filed: 2018‑03‑16
Registered : 2021‑09‑22
TMA1110502
Filed : 2018‑03‑16
Registered : 2021‑09‑29
[2] TD (and/or related companies) is a resort developer and currently involved in the revitalization of Ontario Place in Toronto as a well-being destination. The THERME Registrations at issue cover the THERME Trademarks adopted by TD for use in association with various services and goods to be offered at Ontario Place. TD advertised its THERME CANADA complex at Ontario Place, which Nordik became aware of and took issue with.
[3] Nordik seeks an Order from this Court striking out only the following registered services reproduced and underlined below [collectively, Impugned Services] from TD’s THERME Registrations:
35 (1) Business management and hotel management.
37 (2) Development and construction of health spa resorts, health and wellness centres which provide health spa services for the health and wellness of the body and spirit, thermal baths, hotels, and recreational areas in the nature of spas, swimming baths, waterparks, waterslides, landscaped gardens, play areas for children, courts for ball sports and launch areas for watercraft.
39 (3) Operation of launch areas for watercraft.
41 (4) Operation of recreational areas in the nature of swimming baths, waterparks, waterslides, landscaped gardens, play areas for children, and courts for ball sports; Operation of swimming baths, waterparks, waterslides, landscaped gardens, play areas for children, and courts for ball sports.
42 (5) Design of health spa resorts, health and wellness centres which provide health spa services for the health and wellness of the body and spirit, thermal baths, hotels, and recreational areas in the nature of spas, swimming baths, waterparks, waterslides, landscaped gardens, play areas for children, courts for ball sports and launch areas for watercraft.
43 (6) Restaurant services, take-out restaurant services and snack bar services, namely, bar and café services; Hotel services; Operation of hotels.
44 (7) Health spa resorts incorporating thermal baths, swimming pools, waterslides, sauna, Turkish bath, mineral pool and hot tub facilities, health and beauty care services provided by health spas, saunas, beauty salons, sanatoriums, hairdressing salons and massage parlors, medical treatment services provided by a health spa, massage, hydrotherapy, light therapy and cosmetic skin tanning services, and performance measurement evaluations in the field of physical fitness; Operation of health and wellness centres which provide health spa services for the health and wellness of the body and spirit; Operation of health spa resorts, thermal baths, and recreational areas in the nature of spas.
[4] Nordik is the owner of trademark registrations TMA897305 for THERMËA [THERMËA mark] and TMA897306 for THERMËA & Design [THERMËA & Design mark], [collectively, THERMËA Trademarks and THERMËA Registrations]. The THERMËA Trademarks are registered in association with the services: “(1) Operation of a boutique offering bathrobes and sandals; (2) Resto-bar services; (3) Operation of a spa and wellness center offering saunas, therapeutic baths, whirlpool and cold baths, steam baths, floating baths, relaxing and therapeutic massages; body treatments for face, body and feet.”, and the goods: “(1) Candles; (2) Water bottles; (3) Bathrobes; sandals.” The THERMËA Registrations are annexed hereto as Schedule “B”. The table hereinafter references the relevant filing and registration dates for each of Nordik’s THERMËA Registrations:
THERMËA Registrations
Registration Nos.
Relevant Dates
THERMËA
TMA897305
Filed: 2013‑05‑30 Registration : 2015‑02‑24
TMA897306
Filed : 2013‑05‑30 Registration : 2015‑02‑24
[5] Nordik alleges that the THERME Registrations are invalid, in part – as far as they are registered in relation to the Impugned Services. Nordik alleges the THERME Registrations are invalid pursuant to section 18(1) of the TMA because they are (a) clearly descriptive or deceptively misdescriptive in the French language of the character of the Impugned Services, (b) they are the name in any language of some of the Impugned Services, (c) they are confusing with the THERMËA Trademarks subject of Nordik’s THERMËA Registrations and previously used in Canada by Nordik, and (d) they are not distinctive.
[6] For the reasons that follow, I grant Nordik’s application, in part.
II. Issues [7] More specifically, the issues are as follows:
1)Issue 1: What are the applicable legal and evidentiary burdens?
2)Issue 2: Whether any of the Respondent’s THERME Registrations are invalid with the Impugned Services because:
a)The THERME Trademarks are clearly descriptive or deceptively misdescriptive in the French language of the character of the Impugned Services in association with which they are used or proposed to be used, and therefore unregistrable at the date of their registration in September 2021, contrary to sections 12(1)(b) and 18(1)(a) of the TMA?
b)The THERME Trademarks are the name in the French language of some of the Impugned Services and therefore unregistrable at the date of their registration in September 2021, contrary to sections 12(1)(c) and 18(1)(a) of the TMA?
c)The THERME Trademarks are confusing with the THERMËA Trademarks, subject of Nordik's THERMËA Registrations, and therefore unregistrable at the date of their registration in September 2021, contrary to sections 12(1)(d) and 18(1)(a) of the TMA?
d)TD was not the person entitled to secure the THERME Registrations because, at the date of the filing of the relevant applications for the THERME Trademarks, namely on March 16, 2018, the THERME Trademarks were confusing with the THERMËA Trademarks of Nordik that had been previously used, under license of Nordik, by Spa Winnipeg as a trademark and tradename, contrary to sections 16(1)(a), 16(1)(c) and 18(1)(d) of the TMA?
e)The THERME Trademarks were not distinctive on the date these expungement proceedings were commenced, namely on February 1, 2023, contrary to sections 2 and 18(1)(b) of the TMA?
[8] Before analysing these questions, I will review the evidence on the record, beginning with Nordik’s evidence and followed by TD’s evidence.
III. The Evidence A. Nordik’s Evidence (1) Affidavit of Alexandre Cantin dated March 20, 2023 – Chief Operating Officer [9] Alexandre Cantin [Mr. Cantin] has been employed by Auberge & Spa Le Nordik Inc. since December 12, 2016 and has been its Chief Operating Officer since October 2021. His affidavit attaches printouts from the online Canadian Trademarks Register Database of the THERMËA Registrations registered on February 24, 2015 as well as the corporate registrations for the Applicants Auberge & Spa Le Nordik Inc. [Le Nordik] incorporated in 2002 and Nordik Immobiliers – Winnipeg Inc. [Spa Winnipeg] incorporated in 2013.
[10] Mr. Cantin attests that starting in early 2015, Le Nordik, through its sister company, Spa Winnipeg, opened a spa and wellness center in Winnipeg operating under the name THERMËA [THERMËA Winnipeg] and offers products and services, including spa (thermal baths, saunas, massage therapy, body care treatments), restaurant and accommodations services, in association with the THERMËA Trademarks. Mr. Cantin attests that Le Nordik, through its sister company, Thermëa Spa Village Whitby Inc. [Spa Whitby], opened another spa and wellness center in Whitby, near Toronto, whose opening was delayed until October 6, 2022 due to the Covid-19 pandemic. His affidavit attaches contemporaneous screenshots of their websites www.thermea.ca and www.thermea.com showing the THERMËA mark as well as printouts from the WayBack machine for www.thermea.ca, the first being from January 16, 2015 showing the THERMËA mark being used and depicting tabs entitled “Experience Bath, Treatments, Restaurant”, “Online boutique Spa essentials and Gifts” and “Reservation Massages, treatments, activities” marks. In support of Mr. Cantin’s attestation that Spa Winnipeg offers accommodation services in partnership with Winnipeg hotels since May 13, 2019, he attaches a printout from the WayBack machine for www.thermea.ca from May 13, 2019 showing the THERMËA mark being used with an additional tab of Accommodations. He attests and shows through the above-mentioned websites and through pictures that merchandising products such as bottles, sandals, bathrobes are sold in their Spa Winnipeg boutique.
[11] Mr. Cantin attests that Spa Winnipeg and Spa Whitby use the THERMËA Trademarks under licence of Le Nordik and attaches the licences in question and attests to the control he has exercised over their use of the THERMËA Trademarks.
[12] Mr. Cantin provides advertising and promotional activities, including Instagram and Facebook social media accounts for both the Spa Winnipeg and Spa Whitby showing the use and promotion of the THERMËA Trademarks along with the numbers of subscribers. Mr. Cantin describes and shows advertising done starting in 2016 at THERMËA booths and storefronts in local shopping malls, on billboards and in transit systems advertising and promote the THERMËA Trademarks and offering for sale the THERMËA services first for the Spa Winnipeg and then Spa Whitby.
[13] Rather than providing its sales in dollars, Mr. Cantin provides the number of visitors to the THERMËA Spa Winnipeg and Spa Whitby resorts by year (October to September) from 2018 to 2023, explaining that there were less visits in the years 2020 to 2022 due to the Covid-19 pandemic and the mandatory closures:
Year
THERMËA Spa Winnipeg
THERMËA Spa Whitby
2018
100 486
Not applicable
2019
102 682
Not applicable
2020
68 710
Not applicable
2021
30 938
Not applicable
2022
87 536
Not applicable
2023
(October 2022-February 2023)
47 330
30 150
[14] Mr. Cantin attests that in mid-April 2022, he became aware for the first time of a promotional video on TD’s website www.thermecanada.com in which one hears the way the THERME mark is pronounced, namely as THERMA, which he attests is similar to the pronunciation of the word THERMËA. Mr. Cantin attached video and audio files of TD’s advertisements available on its website.
[15] Lastly, Mr. Cantin files online printouts from three French dictionaries of definitions of the word “thermes” reproduced, which are reproduced below in French:
Larousse
Nom masculin pluriel
(latin thermae, du grec thermos, chaud)
Établissement de bains caractéristique de la civilisation impériale romaine.
Nom de certains établissements où l’on fait une cure thermale : Les thermes de Luchon.
Le Robert
Nom masculine pluriel
Établissement de bains publics de l’Antiquité.
Établissement thermal.
Le Nouvel Observateur – La conjugaison
thermes est employé comme nom masculine pluriel
dans l’Antiquité, bains publics
établissement thermal
[16] Mr. Cantin was not cross-examined by the Respondent on his affidavit. The Respondent’s position on Mr. Cantin’s evidence is that it provides details of the Applicants’ modest activities in association with the THERMËA Trademarks since 2015. In addition, the Respondent argued that the table of number of visitors per year only starts at 2018 (despite the fact that the alleged use dates back to 2015), there is no evidence that the visitors are unique/non-repeat visitors and there is no evidence as to which of the services (e.g. spa vs restaurant) the visitors used. TD’s position concerning the dictionary definitions of THERME in evidence is that the word “thermes” is an obscure, archaic, antique or specialized term in the French language and is not a term known or used by ordinary Canadian consumers in common parlance. Therefore, it should not matter even if TD’s THERME mark is considered the phonetic equivalent of the word “thermes” appearing in the dictionaries.
B. TD’s Evidence (1) Affidavit of Jane Buckingham sworn May 4, 2023 – trademark searcher [17] Jane Buckingham [Ms. Buckingham] is a trademark searcher employed by the Respondent’s solicitors and provides search results of the Canadian Trademarks Register Database for any active THERM- prefixed marks. Ms. Buckingham describes her search parameters and attaches her search results that identified: (i) 83 active applications/registrations, which incorporate THERM- as a prefix in health, wellness, spa, fitness, pool, water-related goods and services (Exhibit A); and (ii) 660 active registrations incorporating THERM as a prefix for any goods or services (Exhibit B). In addition, Ms. Buckingham attaches the complete file histories for each of the THERME Registrations.
[18] Ms. Buckingham was not cross-examined by the Applicants. The Applicants’ position on Ms. Buckingham’s affidavit is: (1) that she does not provide any evidence that the trademarks incorporating THERM- as a prefix in her search results of the Trademarks Register are in use in Canada; and (2) that the large majority of the results are not relevant to the spa and wellness services at issue between the parties, revealing only three potentially relevant third party trademark registrations.
(2) Affidavit of Jessica San Agustin sworn May 4, 2023 – private investigator [19] Jessica San Agustin [Ms. San Agustin] is a private investigator retained by the Respondent’s solicitors to access various websites, obtain screen captures of the pages on websites accessed and to investigate the accessibility and availability of product and service offerings for purchase in Canada. In her affidavit, Ms. San Agustin provides the websites and her observations confirming the accessibility and availability to Canadians of over 50 websites and businesses offering goods and services in association with THERM-prefixed business names and marks, which TD submits is in related fields to those of the Applicants.
[20] Ms. San Agustin was not cross-examined by the Applicants. The Applicants’ position on Ms. San Agustin’s evidence is similar to its position on the evidence of Ms. Buckingham.
(3) Affidavit of Dr. Shana Poplack sworn May 4, 2023 - Expert Evidence of Linguist and Sociolinguist [21] Doctor Shana Poplack [Dr. Poplack], is a Professor and Canada Research Chair in Linguistics at the University of Ottawa, who swore her affidavit on May 4, 2023. In 1982, she founded the Sociolinguistics Laboratory at the University of Ottawa, which hosts twenty-one major databases of spoken and written materials in a variety of languages. A major research focus is on the (socio) linguistic structure of French and English. She is a frequent speaker and publisher on a variety of linguistic and language-related topics. She attests that much of her work has focused on the history, structure and development of the French language, in Canada and elsewhere. Dr. Poplack’s educational degrees of M.A. and Ph.D. in Linguistics were obtained from US universities with both degrees involving French, and she lived and studied at the Sorbonne in Paris for seven years. As such, she attests to speaking French fluently and has taught, lectured and published in French for many years, as referenced in her curriculum vitae (Exhibit B). She has previously been accepted as an expert in linguistics and sociolinguists by the Trademarks Opposition Board [Board] in Coors Global Properties, Inc. v Drummong Brewing Company Ltd., 2011 TMOB 44.
[22] In this matter, according to her affidavit, Dr. Poplack’s mandate was “to provide an expert opinion as a sociolinguist on the degree of resemblance between the trademarks THERME and THERMËA, as concerns appearance, sound, and ideas suggested”.
[23] Dr. Poplack notably opines:
I also consulted some legal literature provided or suggested to me by counsel, specifically, the Supreme Court of Canada’s decision in Masterpiece Inc. v Alavida Lifestyles Inc., 2011 SCC 27. My linguistic research and analyses of these trademarks lead me to opine that there is little resemblance between the trademarks THERME and THERMËA as concerns appearance, sound or ideas suggested. For the reasons discussed in detail below, I consider both marks to be unique, albeit in different ways, by virtue of what could be informally described as their “foreign” flavour. Indeed, in appearance, neither is readily identifiable as either a French or an English word, nor is one particularly reminiscent of the other, despite the identity of their first five letters. While the sequence THERM in the marks may be argued – upon technical etymological analysis – to share some common features of meaning, these would not in my opinion be readily available to the average Canadian, anglophone or francophone. The marks also differ from each other in terms of pronunciation, in both French and English.
[24] An extract of some of Dr. Poplack’s conclusions with respect to the degree of resemblance between the respective marks is reproduced hereinafter:
(a) Striking or unique aspects of the trademarks: When considered as a whole the most striking feature of THERMËA is its unusual “ËA” ending including, and particularly, the two-dot diacritic over the E (namely, the Ë). With respect to THERME, the addition of the “silent E” after ERM is unusual; this feature renders THERME striking in its own right. Most notably, however, THERME lacks the salient and striking ËA ending of THERMËA. For these and other reasons, detailed below, I consider it most likely that the average Canadian (Francophone or Anglophone) would see both marks as coined, but different, words.
(b) Diareses, Umlauts, and Branding: THERMËA’s two-dot diacritic over the E (namely, Ë) could be interpreted as a diaeresis (used to indicate that two adjacent vowels should each be pronounced as a distinct vowel in a separate syllable) and/or an umlaut (which changes the quality or pronunciation of a vowel). Diacritics can play an important role in branding. The Ë in THERMËA is a prominent and striking feature of this trademark that significantly impacts its appearance, sounds and ideas suggested. The absence of this diacritic in the mark THERME is a major distinguishing feature between the two.
(c) Prevalence of –therm- formative words and marks: The shared element THERM of both marks is widely used in both French and English as a prefix, a suffix and word-internally (e.g. thermal, thermometer, thermostat, thermodynamics, thermal, isotherm, geotherm, hypothermia). It also appears frequently in other marks and names associated with a variety of goods or services. I have also been provided with search results from the Canadian Trademark Registry showing a large number of Canadian trademarks containing the first element THERM. The very frequency of the component THERM in such a wide variety of applications supports my view that consumers appeal to other elements of the marks or words to distinguish them, as opposed to relying solely, or even primarily, on the shared sequence THERM.
(d) Appearance: THERMËA and THERME differ significantly in appearance. Any visual similarity between THERMËA and THERME deriving from their first five letters is far outweighed by the differences between them having regard to the striking features of the marks, the visual significance of the diaeresis or umlaut in THERMËA as well as its “ËA” combination.
IV. Analysis A. Preliminary Issue - Dr. Poplack's Affidavit is inadmissible [25] The expert sociolinguist evidence put forth in Dr. Poplack’s affidavit, like all expert evidence, must meet the following four conjunctive requirements set out by the Supreme Court of Canada for the Court to find it admissible:
Relevance;
Necessity in assisting the trier of fact (in the sense that the evidence is outside the experience and knowledge of a judge);
The absence of any exclusionary rule; and,
A properly qualified expert.
(Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27, 92 CPR (4th) 361 (SCC) [Masterpiece] at para 75, citing R v Mohan, 1994 CanLII 80 (SCC), [1994] 2 SCR 9 [Mohan] at 20).
[26] The Applicants take the position that Dr. Poplack's affidavit evidence is inadmissible and should be given no weight principally because the confusion test is a legal test that should be decided by the trier of fact from the perspective of an average consumer, and not by the expert. They argue that the role of expert testimony in trademark cases is limited, especially when the average consumer is not sophisticated and the services at issue do not fall within a specialized market. To support their contention, the Applicants rely on Cathay Pacific Airways Limited v Air Miles International Trading B.V., 2016 FC 1125 [Cathay Pacific]:
[80] The remaining affidavit to be considered is the sole new affidavit filed by Air Miles, that of John K. Chambers, a professor of linguistics at the University of Toronto. Air Miles offers Mr. Chambers’ affidavit as expert evidence as to the degree of resemblance (if any) between the trade-marks AIR MILES and ASIA MILES in appearance and/or sound and/or in the ideas suggested by them.
[81] Cathay Pacific takes the position that Mr. Chambers’ affidavit is either inadmissible or should be given no weight, arguing principally that it provides no relevant information that is beyond the knowledge of the Court, contrary to the purpose of expert evidence as explained in Masterpiece.
[82] I agree with Cathay Pacific’s position on this issue. In Masterpiece, at paragraphs 75 to 77, Justice Rothstein explained the application of the requirements from R. v Mohan, 1994 CanLII 80 (SCC), [1994] 2 SCR 9 to the tendering of expert evidence in trade-mark cases and emphasized in particular the requirement of “necessity”, such that an expert should not be permitted to testify if the testimony is not likely to be outside the experience and knowledge of a judge. In considering the particular expert evidence at issue in Masterpiece, Justice Rothstein held at paragraph 80 that, in a case where the casual consumer, through whose eyes the issue of confusion must be assessed, is not expected to be particularly skilled or knowledgeable, and where there is a resemblance between the marks, expert evidence which simply assesses that resemblance will not generally be necessary. At paragraph 88, the Court distinguished this from a situation which involved goods sold in a specialized market of sophisticated consumers engaged in a particular trade, where evidence about the special knowledge or sophistication of the targeted consumers may be essential to determining when confusion would be likely to arise.
[83] The case at hand does not involve trade-marks or services that are employed in specialized markets. Bearing in mind that the test for confusion under the Act is a matter of first impression in the mind of a casual consumer, I find no necessity for the receipt of an expert linguist’s opinion on the degree of resemblance between the marks, and I therefore conclude that Mr. Chambers’ affidavit is inadmissible.
(Cathay Pacific at paras 80-83, emphasis added).
[27] I agree with the Applicants for much the same reasons as Justice Southcott in Cathay Pacific, which I reproduced above. Indeed, Dr. Poplack’s mandate is identical to the expert’s mandate in Cathay Pacific. There is no evidence that the average consumer of any of the Impugned Services is “expected to be particularly skilled or requiring specialized knowledge”, and the Impugned Services are not offered in a specialized market of sophisticated consumers engaged in a particular trade. Dr. Poplack offered a skilled linguistic analysis of the trademarks at issue in this case, but in so doing, forgot that it is not her opinion that determines degree of resemblance but that of the “casual consumer through whose eyes the issue of confusion must be assessed” (Cathay Pacific at para 82, citing Masterpiece at para 80). For example, Dr. Poplack treats the letter “Ë” with the umlaut in the THERMËA mark as a different character than the similarly positioned letter “E” (sans-umlaut) in the THERME mark disregarding that the casual consumer will have seen the shared second letter “E” that is common to both parties’ marks. The entirety of TD’s word mark THERME can be found visually in the Nordik’s word mark THERMËA. The first six (not five) letters of each mark (THERME) are the same, with the only differences between them being an umlaut accent (two regularly sized dots) above the second “E” and the letter “A”. I am unable to accept that the “casual consumer through whose eyes the issue of confusion must be assessed” would not see the second letter “E” as the same between the marks just because it has a foreign accent or two dots above it.
[28] As discussed in Masterpiece at paragraph 80:
[80] The first problem was that much of the expert testimony did not meet the second Mohan requirement of being necessary. In a case such as this, where the “casual consumer” is not expected to be particularly skilled or knowledgeable, and there is a resemblance between the marks, expert evidence which simply assesses that resemblance will not generally be necessary. And it will be positively unhelpful if the expert engages in an analysis that distracts from the hypothetical question of likelihood of confusion at the centre of the analysis.
(Emphasis added).
[29] In considering the necessity of the expert’s evidence, it is imperative to ensure that “an expert should not be permitted to testify if their testimony is not ‘likely to be outside the experience and knowledge of a judge’” (Masterpiece at para 75, citing Mohan at 23). As defined, Dr. Poplack’s mandate serves to usurp the role of the Court that is tasked with deciding one of the central issues in this matter, which is the resemblance between the parties’ respective trademarks. Mohan highlighted the importance of this concern:
There is also a concern inherent in the application of this criterion that experts not be permitted to usurp the functions of the trier of fact. Too liberal an approach could result in a trial's becoming nothing more than a contest of experts with the trier of fact acting as referee in deciding which expert to accept.
(Mohan at 24, emphasis added).
[30] The Respondent argues that Masterpiece did not set down a general rule that expert evidence (from a linguist or otherwise) is inadmissible in all trademark confusion cases, or that such expert evidence will never meet the standard of admissibility and refers to Fox, Harold G, Fox on Canadian Law of Trade-marks and Unfair Competition, 4th ed, loose-leaf (Toronto: Thomson Reuters, 2021) [Fox on Trade-marks] at § 8.35:
While the Court chastised the use of expert evidence on semantics and morphology (amongst others) in this context, no doubt such expert evidence could still meet the standard for admissibility if the marks at issue were coined terms and/or the wares or services of a highly specialized nature (…)
(Emphasis added).
[31] The Respondent further argues that Dr. Poplack’s evidence here meets the tests of necessity and relevance because her testimony concerns the meaning and visual and phonetic effect of each party’s coined (invented) mark, including in particular the unusual “-ËA” ending of the Applicants’ THERMËA Marks and the use of the diacritic (or umlaut) on the letter “Ë”. The Respondent submits that Dr. Poplack’s evidence in turn informs and assists the Court as to how the consumer is going to react to these marks.
[32] I disagree. First, Dr. Poplack does not bring expert survey evidence to this matter as to the relevant consumers’ reactions or perceptions of either party’s trademarks. Such survey expert evidence could potentially assist the Court in understanding how the casual consumer of the Impugned Services would perceive or react to these marks, which would be helpful to the Court in analyzing either the likelihood of confusion between the marks or whether the Respondent’s marks are clearly descriptive or deceptively misdescriptive. Second, Dr. Poplack was not proffered as an expert on the meaning of the marks; rather, she was retained for the purpose of analyzing the degree of resemblance between the marks, including the distinction in one mark having an umlaut. Third, Dr. Poplack relies on marketing and branding strategy materials of third parties like Labatt (Nütrl vodka-based seltzer) and Ultima (iÖGO yogurt) making use of the umlaut in their brands and her own interpretations thereof, to which the Court notes Dr. Poplack has not been put forth nor is she qualified as a marketing expert. The Court also notes that, unlike Labatt and Ultima, there is no evidence that the Applicants utilize the umlaut as a brand icon in its use or marketing of the THERMËA Marks.
[33] During oral submissions, the Respondent also suggested Dr. Poplack’s evidence was necessary for the analysis of the clearly descriptive or deceptively misdescriptive issue. Again, I disagree. This is a new submission, as Dr. Poplack’s above-mentioned mandate and the Respondent was clear at paragraph 16 of their Memorandum of Fact and Law that “the evidence of Professor Poplack is useful to provide the Court with evidence on the resemblance between the parties’ marks in accordance with the principles set out in Masterpiece. Unlike cases where the marks at issue are comprised of ordinary, dictionary words, such information is unlikely to be within the experience and knowledge of the Court.” Contrary to the Respondent’s later submission, they put forward Dr. Poplack’s evidence expressly because they claim she did not deal with the meaning of ordinary, dictionary words, which makes it a little difficult to understand how she could be assisting the Court with whether the Respondent’s marks are clearly descriptive or deceptively misdescriptive.
[34] Despite the argument that the umlaut is not a diacritic known to the modern English language, Dr. Poplack’s mandate was not to assist the Court with the pronunciation of the umlaut, which may potentially have been helpful. Her mandate and, as a result, her entire analysis and the whole of her evidence do not inform the Court, but are a concerted effort to replace the Court as the trier of fact in determining the conclusions of the alleged issues of confusion from the eyes of the casual consumer and whether the Respondent’s marks are clearly descriptive or deceptively misdescriptive.
[35] In addition to Dr. Poplack’s problematic mandate and ensuing evidence, it bears mentioning that Dr. Poplack’s expertise does not extend to trademarks law, which becomes apparent from her analysis of the marks at issue, having teased out and analyzed each portion of the marks at issue separately. For example, see below to the left an extract from Dr. Poplack’s summary of opinion, which approach was prohibited following the excerpt from Masterpiece to the right:
(d) Appearance: THERMËA and THERME differ significantly in appearance. Any visual similarity between THERMËA and THERME deriving from their first five letters is far outweighed by the differences between them having regard to the striking features of the marks, the visual significance of the diaeresis or umlaut in THERMËA as well as its “ËA” combination.
[83] Neither an expert, nor a court, should tease out and analyze each portion of a mark alone. Rather, it should consider the mark as it is encountered by the consumer — as a whole, and as a matter of first impression. In Ultravite Laboratories Ltd. v. Whitehall Laboratories Ltd., 1965 CanLII 43 (SCC), [1965] S.C.R. 734, Spence J., in deciding whether the words “DANDRESS” and “RESDAN” for removal of dandruff were confusing, succinctly made the point, at pp. 737-38: “[T]he test to be applied is with the average person who goes into the market and not one skilled in semantics.”
(Masterpiece at para 83, emphasis added)
[36] Dr. Poplack is not unique in making this error; in similar cases drawn to the Court’s attention by the Applicants, linguistic experts have had difficulty walking the line to provide a helpful linguistic analysis and offering expert conclusions while properly adhering to the principles underlying trademark law. One such case was Pierre Fabre Médicament v Smithkline Beecham Corp., 2004 FC 811:
[29] The degree of similarity has to be analysed in terms of appearance, sound and ideas. The submission of expert opinions in linguistics is admissible to present evidence of similarity (Coca-Cola Ltd. v. Brasseries Kronenbourg, une société anonyme (1994), 55 C.P.R. (3d) 544).
[30] However, since the question is one of general impression, the comparison must be made in general terms: the marks should not be dissected. Accordingly, the Court should treat linguistic expert opinions with caution since their function is precisely that of dissecting words syllable by syllable, letter by letter.
(Emphasis added).
[37] This same difficulty was exhibited in Mövenpick Holding AG v Exxon Mobil Corporation, 2011 FC 1397 [Mövenpick], demonstrating the reality that lines increasingly blur between helpful linguistic evidence that informs the Court and expert evidence that fails to consider the perspective of the average consumer:
[23] Both sides produced affidavits from linguists, who were cross-examined. Their evidence relates to both the clearly descriptive and confusion aspects of the case. In my opinion, they add little to the debate and would not have persuaded the Registrar to change her mind. In this case, where the objective is to assess the meaning of the words “marché express” in the French language as perceived on first impression by the reasonable everyday user of the services, expert evidence which mainly consists of a discussion of rules of grammar, semantics and linguistic constructions regarding the interpretation of these words is unnecessary and not particularly helpful.
(Mövenpick at para 23, emphasis added).
[38] In addition to Dr. Poplack’s affidavit running afoul of the second Mohan requirement, Dr. Poplack’s affidavit fails to comply with Rule 52.2(1)(b) of the Federal Courts Rules, SOR/98-106: “set out the expert’s qualifications and the areas in respect of which it is proposed that he or she be qualified as an expert”. While the affidavit is clearly providing evidence of one who is trained in the field of linguistics, the affidavit offers no explanation of what specifically a “sociolinguist” is, what areas a sociolinguist proposes to be qualified as an expert in, what evidence a sociolinguist is qualified to conduct or analyze, what conclusions a sociolinguist can draw from said analyses and how they are drawn, or what qualifies a sociolinguist to offer their conclusions on the linguistic analysis of trademarks as the likely perceptions for a casual consumer of the parties’ services. Such information would have been necessary to satisfy the Court that Dr. Poplack’s evidence was, indeed, expert in nature, if said evidence was necessary in the first place.
[39] As such, Dr. Poplack’s affidavit is inadmissible for failing to meet the fundamental requirement of necessity of assisting the Court with the confusion analysis.
B. The Applicants bear the legal onus and burden of proof [40] The Applicants rely on different grounds of invalidity found in sections 18(1)(a), (b), and (d) of the TMA in their assertion that each of the THERME Registrations is invalid (in part), only with the Impugned Services. At the beginning of this analysis, it is useful to set out certain applicable legal principles relating to their legal onus and burden of proof.
[41] Section 19 of the TMA confers a weak presumption of validity on registered trademarks, and any doubts must be resolved in favour of the validity of the registrations (Travel Leaders Group, LLC v 2042923 Ontario Inc, 2023 FC 319 [Travel Leaders] at para 129, citing Bedessee Imports Ltd v Glaxosmithkline Consumer Healthcare (UK) IP Limited, 2019 FC 206 [Bedessee] at para 13). As Justice Binnie indicated in Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 [Veuve Clicquot] at paragraph 5: “Under s. 19 of the Act, the respondent’s marks are presumptively valid, and entitles them to use the marks…” I agree with the Respondent that the starting point for the assessment of any of the Applicants’ allegations of invalidity is that the THERME Registrations are valid until proven otherwise (Travel Leaders, at para 60). However, the statutory presumption of validity is a weakly worded one that adds little to the onus already resting on the party attacking the validity of the registration (Emall.ca Inc. v Cheaptickets and Travel Inc., 2008 FCA 50 at paras 11-12; Glaxo Group Limited v Apotex Inc., 2010 FCA 313 at para 5).
[42] As the party alleging the invalidity of the registered trademark, the Applicants bear the legal onus of proving with cogent evidence, on a balance of probabilities, that the THERME Registrations are invalid (Travel Leaders at para 61 citing Techno-Pieux Inc. v Techno Piles Inc., 2022 FC 721 at para 172 and Bedessee Imports Ltd. v GlaxoSmithKline Consumer Healthcare (UK) IP Limited, 2020 FCA 94 at para 18). I also agree with the Respondent that, to the extent that there are any doubts about their validity, those doubts must be resolved in favour of validity and preserving the registrations on the Trademarks Register.
C. Are any of the THERME Trademarks clearly descriptive or deceptively misdescriptive in the French language of the character of the Impugned Services in association with which they are used or proposed to be used, and therefore unregistrable at the date of their registration in September 2021, contrary to sections 12(1)(b) and 18(1)(a) of the TMA? [43] Section 12(1)(b) of the TMA stipulates:
12 (1) Subject to subsection (2), a trademark is registrable if it is not
(…)
(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
(Emphasis added).
[44] In section 12(1)(b), the word “clearly” in “clearly descriptive” means "easy to understand, self-evident or plain" (rather than “accurately”) and the word “descriptive” is considered in relation to the wares and/or services with which the trademark is used or proposed to be used. The word “character” means a feature, trait or characteristic of the goods and/or services (Drackett Co. of Canada Ltd v American Home Products Corp. [1968], 2 Ex.C.R. 89 at paras 21, 22; Ottawa Athletic Club Inc. v Athletic Group Inc., 2014 FC 672 [