PRESENT: The Honourable Madam Justice Heneghan
BETWEEN:
YEE HONG CENTRE FOR GERIATRIC CARE
and
REASONS FOR ORDER AND ORDER
[1] Yee Hong Centre for Geriatric Care (the "Plaintiff") brings this motion for summary judgment, pursuant to the Federal Courts Rules, SOR/98-106 (the "Rules") against Grace Christian Chapel (the "Defendant").
II. Facts
[2] The Plaintiff is a body corporate incorporated under the laws of Ontario. It provides services for seniors and persons with disabilities through nursing home services, community centres, medical centres and other related services. At the relevant time, these services were provided to individuals in their own homes or through facilities that are located in Ontario and British Columbia. The names of these facilities include the words "yee hong" in roman letters and in Chinese characters. "Yee" is the English transliteration of the Chinese word meaning peacefulness or tranquility. "Hong" is the English transliteration of the Chinese word meaning health as pronounced in the Cantonese dialect.
[3] On February 26, 1999, the Plaintiff filed applications with the Canadian Intellectual Property Office for the registration of "YEE HONG" and "YEE HONG CENTRE for GERIATRIC CARE". Registration for each trade mark was granted on December 4, 2000. The Plaintiff holds two registered trade marks, one for the words "yee hong" for use with goods, that is packaged and prepared food products, and services, that is nursing home and related services. It holds a registered trade mark for the design for use with the same goods and services; the registered design features the Chinese characters for "yee" and "hong". Both registrations feature a trade mark description which explains the English transliteration of the Chinese characters. The Plaintiff's use of these marks with goods results from a licensing agreement that it entered with Ellen's Health Food.
[4] The Defendant is a non-profit society registered in British Columbia. It manages four nursing homes in the Lower Mainland region of British Columbia. These facilities are operated under the trade name "Grace Christian Chapel".
[5] On or about December 5, 2003, the Defendant began to advertise its two nursing homes in Vancouver and Richmond. The advertisements contained a statement "two yee hong centres complete in Vancouver", as translated into English. The words "yee hong" appear in Chinese characters. These advertisements appeared in the Chinese language newspaper, Ming Pao Daily News, that appeals to Cantonese speakers of the Chinese community.
[6] Representatives of the Plaintiff were contacted by some of its tenants and members of the community who inquired whether there was a connection between the Plaintiff and the advertised centres. The Plaintiff was concerned and instructed its legal counsel to take steps to stop the Defendant from using the words "yee hong" in its advertisements. Accordingly, counsel for the Plaintiff sent a "cease and desist" letter to the Defendant on December 9, 2003. By letter dated December 19, 2003, counsel for the Defendant responded and indicated that the Defendant would not comply with the cease and desist request. The Defendant took the position that its business name was not confusing with the Plaintiff's operations, particularly with speakers of Chinese dialects other than Mandarin, as the pronunciations would be different.
[7] Further advertisements appeared on the Defendant's website. These advertisements included the Chinese characters for "yee hong". In or about the week of December 22, 2003, radio advertisements aired on a Toronto radio station, promoting the Defendant's "yee hong" centre. Following the broadcast of these advertisements, the Plaintiff received a large number of calls inquiring about the Defendant's new centres. The Plaintiff perceived that there was public confusion between its operations and those of the Defendant, and in response, the Plaintiff held a news conference on January 8, 2004 to confirm that there was no connection between its operations and those of the Defendant.
[8] On December 31, 2003, counsel for the Plaintiff sent another cease and desist letter to the Defendant. The Plaintiff did not receive a commitment that the Defendant would stop using the words "yee hong" in connection with its operation. Accordingly, on April 14, 2004, the Plaintiff commenced this action.
[9] In its statement of claim, the Plaintiff alleged that the Defendant was infringing upon its registered trade marks by passing off its own business for that of the Plaintiff, contrary to subsection 7(c) of the Trade Marks Act, R.S.C. 1985, c. T-13, as amended (the "Act"). The Plaintiff took the position that its extensive marketing efforts had resulted in the establishment of a reputation of the "yee hong" trade name and mark in the Chinese community, as well as an exclusive reference to its operations. The Plaintiff, in its statement of claim, seeks an order restraining the Defendant from utilizing the phrase "yee hong" in connection with its nursing home operations.
[10] The Defendant filed its statement of defence on May 14, 2004, in which it denied the Plaintiff's assertion that its conduct amounted to passing off. The Plaintiff stated that the English version of its business name was "Grace Seniors Home" not "Grace Yee Hong Seniors Home". When this business name is produced in Chinese characters, it consists of five characters, two of which are the same as the characters used by the Plaintiff in its "yee hong" mark. It says that the direct transliteration of the five characters that it uses is "Tian En Yi Kang Yuan".
[11] The Defendant asserts that these characters are generic with reference to rest homes and nursing homes. The phrase in question allows for the communication of the idea of rest home services without using the character for "old" which carries a negative connotation.
[12] Relying on the generic nature of the characters, the Defendant denies that there is any confusion between its operations and those of the Plaintiff. It also denies that the public assumed a connection between it and the Plaintiff as the result of its activities. It questions the extensive goodwill described by the Plaintiff and says that it was not aware of the Plaintiff or its activities until it received correspondence from the Plaintiff's solicitors. Further, the Defendant denies that it attempted to pass off its services as those of the Plaintiff or that it infringed the Plaintiff's trade mark rights in any way.
[13] The Plaintiff filed a reply on May 25, 2004 and pointed out that the Defendant used the Mandarin transliteration of the "yee hong" characters, rather than the Cantonese transliteration. The Plaintiff maintained its position that the Defendant is marketing to the Cantonese community and further, denied that the "yee hong" characters were generic. It said that its trade mark registrations were valid and that validity was not challenged by the Defendant. Further, it says that the registration of the mark is prima facie evidence that "yee hong" is not generic or descriptive of nursing home services in Canada or elsewhere.
[14] The Plaintiff filed a motion for summary judgment on December 20, 2004. That motion was adjourned on February 10, 2005, so that the parties could attempt to resolve the matter through mediation. That effort was unsuccessful and the litigation continued.
[15] An amended statement of defence was filed, upon consent, on February 4, 2005. In its amended defence, the Defendant claimed that the Plaintiff's trade marks were invalid as they were not distinctive at the time of registration. The Defendant repeated its previous pleading that there was no confusion between its services and those of the Defendant, that it was not engaged in passing off and that it had not infringed, in any way, upon the trade mark rights of the Plaintiff.
[16] The parties have obtained expert reports, addressing the meaning and use of the Chinese characters for "yi kang/yee hong". Dr. Zhenyi Li, Associate Director, Canadian and International Cooperative, of the Centre of Intercultural Communication, with the University of British Columbia, provided a report on behalf of the Plaintiff. Dr. Alice Siu-Ping Wong, a language instructor and University Administrator at Kwantlen University College, provided a report on behalf of the Defendant. Both Dr. Li and Dr. Wong were cross-examined upon their respective reports.
[17] In short, Dr. Li expressed the opinion that the Chinese characters for "yee hong" do not constitute a generic expression for "senior home". The combination of these characters can be used to name a variety of industries or services. He commented on the nature of the Chinese language which uses characters to express ideas and concepts. He noted that the combination of two Chinese
characters will not necessarily form a word in the Chinese language. He concluded that the combination of "yee" and "hong" is an expression, not a word or a term.
[18] Dr. Wong reached a different conclusion. She expressed the opinion that the term "yi kang yuan" is a generic term meaning "Senior's Home".
III. Issues
[19] The parties addressed the following issues in this motion for summary judgment:
1. Is there a genuine issue for trial, having regard to the pleadings and evidence submitted in support of the motion?
2. Should summary judgment be granted in favour of the Plaintiff?
3. If summary judgment is granted, what is the appropriate quantum of damages?
IV. Submissions
A. Plaintiff's Submissions
[20] The Plaintiff argues that is no genuine issue for trial as the Defendant continues to use the "yee hong" mark in association with its nursing home services. It further submits that the Defendant is passing off its services as and for the services of the Plaintiff, thereby infringing the "yee hong" mark. It argues that its rights with respect to these marks have been established through extensive use and registration.
[21] The Plaintiff relies on the decision in Ciba-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120, which sets out the required elements for a passing off action and submits that it has established these three requirements. It argues that its organization is distinctive and known in Canada, with an established reputation. It submits that there is a likelihood of confusion between the services provided by it and those provided by the Defendant. Relying on Source Perrier (Société Anonyme) v. Canada Dry Ltd. (1982), 36 O.R. (2d) 695 (Ont. H.C). The Plaintiff argues that the likelihood of success must be decided as a matter of first impression, applying the standard of the ordinary person. However, it submits that in this case, actual confusion has occurred. Further, it argues that it will suffer irreparable harm, arising from the loss of good will associated with the mark, if the Defendant's actions are not stopped.
[22] The Plaintiff submits that it has met the test for the entry of summary judgment, having regard to Rule 213(1). The Plaintiff says that summary judgment should be granted when the moving party has shown that there is no genuine issue of material fact requiring a trial. Once the moving party has met this burden, then the responding party must show that its claim has a real chance of success; see Guarantee Co. of North America v. Gordon Capital Corp., [1999] 3 S.C.R. 423.
[23] The Plaintiff argues that the Defendant has done no more than deny its claim, without raising any substantive defence. It submits that the Defendant's allegation that the term "yee hong" is generic is without foundation, as the trade mark registration of this term serves as prima facie indication of the distinctiveness of the mark.
[24] The Plaintiff seeks damages. It argues that when trade mark infringement, passing off, unfair competition and dilution of goodwill have been established, the trade mark owner is entitled to damages or an accounting of profits, at its election. Relying on the decision in Hershbain v. Robert Simpson Montreal Limited (1959), 19 Fox Pat. C. 154 (Que. S.C.), it submits that the Court is entitled to make any damage award it considers appropriate.
[25] Further, it argues that actual damages need not be established if the infringement or passing off has been established. In cases where a defendant's conduct cannot be characterized as innocent, an increased damages award may be appropriate.
[26] In assessing damages, the Plaintiff submits that courts have considered whether the defendants were competitors of the plaintiff, whether the plaintiff's mark was well known, and whether loss of confidence in the plaintiff's services could have adverse consequences for the value of the goodwill associated with the mark. In this regard, the Plaintiff relies on the decisions in Lee's Food Products Ltd. v. Shafer-Haggart Ltd. (1984), 81 C.P.R. (2d) 204 (Ont. H.C.), Canwest Telephone Co. Inc. v. Canwest Commercial Phone Centre Ltd. (1985), 8 C.P.R. (3d) 360 (B.C.S.C.). The Plaintiff submits that all these criteria are met in the present case. Finally, it argues
that what it terms the "blatant illegal activities" of the Defendant justify an award of solicitor and client costs.
B. Defendant's Submissions
[27] The Defendant argues that there is credible evidence showing that a genuine issue for trial exists in this case. First, it argues that it has not used the Plaintiff's mark in association with its nursing home services. Second, it submits that the Canadian public has not been and is not likely to be confused by its use of the Chinese characters in question or as to the source of its services. Finally, the Defendant argues that the Plaintiff's marks are invalid by reason that they are not distinctive or were not registerable at the time they were registered.
[28] The Defendant argues that there are triable issues with respect to its defence that are supported by credible evidence. Accordingly, this matter is not appropriate for the entry of summary judgment.
[29] The Defendant argues that in order for the Plaintiff to succeed in an action for trade mark infringement under sections 19 or 20 of the Act, it must show that the Defendant used the "yee hong" mark as a trade mark and in such a way as to distinguish its nursing home services from those of others, or for the purpose of showing the origin of its services. The Defendant submits that it has provided credible evidence that it has not used the Plaintiff's marks in such a way as to distinguish
its nursing home services from those of others or for the purpose of demonstrating the origin of its services.
[30] In this regard, the Defendant refers to the evidence. It argues that according to the evidence, the essential element of its trade name is the English word "Grace" and its equivalent Chinese symbol. It also argues that, according to the evidence, the only use it has made of the Chinese symbols equivalent to "yee hong" has been in conjunction with another Chinese symbol. Collectively, it refers to these characters as "promotional characters" which, when read together, are a generic term for "rest home". As well, it submits that its only use of the promotional characters has been bona fide and as an accurate description of the quality and character of its services, not as a way of distinguishing its services from those of others.
[31] The Defendant also argues that in order to succeed under section 19 of the Act, the Plaintiff must show that the Defendant used marks identical to its own. Variations in the trade mark will be sufficient to avoid infringement pursuant to section 19; see Meubles Domani's v. Guiccio Gucci S.P.A. (1992), 43 C.P.R. (3d) 372 (F.C.A.). The Defendant argues that it has not used marks identical to those of the Plaintiff in the marketing of its nursing homes or at all.
[32] The Defendant further submits that there are significant differences in form and pronunciation between the Plaintiff's registered trade mark and the promotional characters it uses as part of its home name. It argues that the trade mark and the promotional characters must be viewed
in their entirety and as such, the promotional characters mean "rest home". Their meaning is distinct from the meaning that the Plaintiff ascribes to its marks.
[33] The Defendant argues that it has provided credible evidence to refute the Plaintiff's allegations of confusion, that is evidence sufficient to show that there has been no confusion nor likelihood of confusion. It further submits that the lack of inherent distinctiveness of the Plaintiff's marks affects the scope of protection which the Court may grant them. It argues that the Chinese characters for "yee hong" and their Cantonese pronunciation are commonly descriptive of the concept of seniors' well being. It takes the position that small differences between its own marks and those of the Plaintiff are sufficient to distinguish one from the other.
[34] The Defendant further argues that there is credible evidence that an ordinary purchaser of the Plaintiff's or Defendant's nursing home services would not find the Plaintiff's mark to be confusing with the promotional characters. It submits that typically, the Court will look to an ordinary member of the Canadian public when considering whether or not a purchaser would be confused. The Court will not necessarily impute the purchaser with the knowledge of a specific language; see Cheung's Bakery Products Ltd. v. Saint Anna Bakery Ltd. (1992), 46 C.P.R. (3d) 261 (T.M.O.B.).
[35] The Defendant argues that for an ordinary purchaser who does not speak a Chinese dialect, there is no resemblance between its promotional characters and the marks of the Plaintiff. Due to pronunciation differences among Chinese dialects, the Plaintiff's word mark would be meaningless to a non-Cantonese speaker. As a result, it is not confusing with the Defendant's promotional characters. In this regard, the Defendant submits that the differences between the marks and promotional characters are sufficiently substantial that a speaker or reader, Cantonese or otherwise, would not be confused, on first impression, by any similarity. This point was addressed in the expert opinion provided by Dr. Wong.
[36] Finally, the Defendant focused on the distinctiveness of the Plaintiff's mark. It argues that these marks are invalid because they were not distinctive at the time the proceedings were commenced and that they are the name in Chinese for the Plaintiff's services. Pursuant to section 18 of the Act, the registration of a trade mark is invalid if the mark is not distinct at the time proceedings are commenced to challenge the validity of the mark. Under paragraph 12(1)(c) of the Act, a person cannot register the name of a mark in any language of the services in connection with which it is used. The Defendant relies on the cited evidence that the marks are generic in Chinese and are descriptive of the Plaintiff's services in that language.
[37] As for damages, the Defendant submits, that if summary judgment is granted, there is no basis for increased damages nor an award of solicitor-client costs. There is no evidence of blatantly illegal activity on the part of the Defendant. As well, it submits that there is no evidence that there will be a loss of confidence in the Plaintiff's services or adverse consequences to the value of its goodwill.
V. Discussion and Disposition
[38] The Plaintiff brings this motion for summary judgment pursuant to the Rules. Rule 216(1) sets out the basis upon which summary judgment may be granted, as follows:
| 216. (1) Where on a motion for summary judgment the Court is satisfied that there is no genuine issue for trial with respect to a claim or defence, the Court shall grant summary judgment accordingly. |
216. (1) Lorsque, par suite d'une requête en jugement sommaire, la Cour est convaincue qu'il n'existe pas de véritable question litigieuse quant à une déclaration ou à une défense, elle rend un jugement sommaire en conséquence. |
[39] The general principles associated with granting summary judgment were summarized in Granville Shipping Co. v. Pegasus Lines Ltd., [1996] 2 F.C. 853 (T.D.). The key is whether there is a genuine issue for trial.
[40] In MacNeil Estate v. Canada (Department of Indian and Northern Affairs), [2004] 3 F.C.R. 3 (F.C.A.), the Federal Court of Appeal commented upon the difficulty that arises when a judge finds that there is a genuine issue for trial and is faced with an application for summary judgment, upon the basis that sufficient evidence has been submitted to support the entry of summary judgment pursuant to Rule 216(3). At para. 36, the Court said the following:
... It would be very difficult for a judge to know whether he really has sufficient evidence to make such a decision, keeping in mind that the respondent was not obliged to file all of their evidence.
[41] In the present case, each party has provided expert evidence concerning the meaning of the Chinese characters in question. The parties have also addressed the issue of the sound of those characters. There is conflicting evidence with respect to each of these issues.
[42] Without commenting upon the credibility and weight of the evidence submitted, I am satisfied that the evidence, at this stage, shows that there is a dispute between the parties as to the meaning of these words. The status of the words "yee hong" as a generic term or otherwise is a critical question touching upon the issues of both distinctiveness and confusion. The resolution of these questions in favour of the Plaintiff is essential for its success in its passing-off action.
[43] There is disagreement as to whether the Plaintiff's trade marks are distinctive and whether the Defendant's use of the words "yee" and "hong" could reasonably give rise to confusion among the public. In short, there is conflicting evidence with respect to the principal issues raised in this action. Those conflicts should be resolved only upon the submission of a full evidentiary record at trial.
[44] I am not satisfied that the Plaintiff has adduced sufficient probative evidence to justify the granting of its motion for summary judgment. Accordingly, it is not necessary to address the question of damages. The motion is dismissed, with costs to the Defendant.
ORDER
The motion is dismissed, with costs to the Defendant.
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-759-04
STYLE OF CAUSE: Yee Hong Centre for Geriatric Care and
Grace Christian Chapel
PLACE OF HEARING: Vancouver, British Columbia
DATE OF HEARING: November 29, 2005
APPEARANCES:
|
Mr. David Wotherspoon |
FOR THE PLAINTIFF |
|
Mr. Trevor M. Kaatz |
FOR THE DEFENDANT |
SOLICITORS OF RECORD:
| Fasken Martineau DuMoulin LLP Barristers and Solicitors Toronto, Ontario |
FOR THE PLAINTIFF |
|
Boughton Peterson Yang Anderson Law Corporation Vancouver, B.C. |
FOR THE DEFENDANT |