Date: 19991202
Docket: T-182-94
BETWEEN:
CANADIAN OLYMPIC ASSOCIATION
Appellant
- and -
LOGO-MOTIFS LIMITED and
THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR ORDER
REED, J.:
[1] The appellant appeals a decision of the Registrar of Trade-Marks. That decision rejected the appellant's opposition to Logo-Motifs registration of the trade-mark depicted in paragraph 12 below.
[2] No one appeared for Logo-Motifs on the hearing of the appeal. In an order dated May 6, 1994, the Court had refused to allow either Mr. Dirk Kieft, a Director of Logo-Motifs, or Ms. Anne Wasson, not being lawyers, to represent the corporate respondent. At the commencement of the appeal, counsel for the appellant argued that in the light of that order, I should ignore the written representations sent to the Court by Dirk Kieft on November 15, 1999. I agreed, and I have not considered those submissions.
[3] I also agree with counsel for the appellant that the Registrar of Trade-Marks applied the wrong test when he rejected the appellant's opposition.
[4] Section 9 of the Trade-marks Act, R.S.C. 1985, c. T-13, states that no person shall adopt as a trade-mark "any mark consisting of, or so nearly resembling as to be likely to be mistaken for [an official mark] ...".
[5] The Registrar expressly disagreed with Mr. Justice Rothstein's decision in Canadian Olympic Association v. Health Care Employees Union of Alberta (1992), 46 C.P.R. (3d) 12, where it was held that the "first impression and imperfect recollection" test was applicable to official marks. The Registrar phrased the test as being "is the applicant's mark identical to, or almost the same as, the [appellant's] official mark?" At times he referred to this as a straight comparison test. He concluded:
| The applicant's mark is not identical to the opponent's official mark. Furthermore, although there are some superficial similarities between the two marks, I also consider that the applicant's mark is not almost the same as the opponents official mark. |
[6] The most recent consideration of the applicable law with respect to the applicable test is set out in the Federal Court of Appeal decision in Canadian Olympic Association v. Techniquip Limited (A-226-98, November 10, 1999). The Court held that the "first impression and imperfect recollection" test was appropriate when assessing resemblance for section 9 purposes.
[7] The Registrar also expressly disagreed with Mr. Justice Rothstein's statement in Canadian Olympic Association v. Health Care Employees Union of Alberta that a family of official marks was relevant when considering whether or not resemblance exists for the purposes of section 9. Nevertheless, the Registrar reluctantly did consider the appellant's family of marks when making his decision.
[8] The most recent consideration of the applicable law with respect to the relevance of a family of marks is set out in the Federal Court of Appeal decision Canadian Olympic Association v. Techniquip, supra. The appellant relied upon its family of marks as part of its opposition submissions. The Court held that when the existence of a family of marks is relied upon in an opposition proceeding, "use" had to be established, and in that context, the state of the Trade-marks Register and the state of the market are highly relevant. The court stated:
| The notion of a family of marks was developed in the context of proceedings under section 6 of the Act. In Molnlycke Aktiebolag v. Kimberly-Clark of Canada Ltd., Cattanach J. explained:10 |
| If these are a series of marks all having the same features and are all owned by the same trader then this is a circumstance which must reflect adversely upon an applicant for a mark containing that common feature since the public might think that such a mark indicated goods coming from the same source as the goods covered by the other marks. |
| [...] |
| If those marks which have common characteristics are registered in the names of different owners then the presumption is that the common characteristic is a common feature in the trade and registration ought to be allowed. The fact that the marks are owned by different persons tends to negative any proprietorial significance of the common feature and so assists an applicant. [Footnote omitted.] |
[9] A relevant consideration, then, is whether characteristics common to the appellant's official marks (in this case stick figures) are found in trade-marks owned by others.
[10] The appellant has a family of official marks, pictograms of stick figures engaged in various sporting activities. Some examples are:
[11] Counsel also referred to the family of official marks registered by the Organizing Committee of the 1976 Olympic Games ("COJO"), which are similar to the appellant's marks although they comprise black figures on a white background. And, I was referred to the various marks that appear on the Trade-marks Register found in the affidavit of Lynda Palmer, marks owned by others that contain pictographs of human figures. No evidence of the use of trade-marks in the market place was adduced.
[12] The respondent's mark, which the Registrar accepted for registration is:
[13] The role of a judge on an appeal of a decision by the Registrar is set out in McDonald's Corp. v. Silcorp Ltd. (1989), 25 F.T.R. 151, aff'd (1992), 139 N.R. 319 (F.C.A.); see also Young Drivers of Canada Enterprises Ltd. v. Chan, [1999] F.C.J. No. 1321 (F.C.T.D.), and London Life Insurance Co. v. Manufacturers Life Insurance Co., [1999] F.C.J. No. 394 (F.C.T.D.). Unlike those decisions, the present appeal alleges an error of law rather than a misapprehension of the facts. The Registrar having clearly applied the wrong test in assessing resemblance for section 9 purposes, I will assess the relevant evidence, which does not differ from that before the Registrar, and make the decision.
[14] Applying the law as articulated in the Techniquip decision, and keeping in mind that the burden of proof is on the respondent, I cannot conclude that the respondent's mark so nearly resembles the applicant's marks as to be likely to be mistaken for the official marks of the applicant. I need make only three observations. First, the stance of human figures found in the appellant's and the respondent's trade-marks is quite different. The appellant's figures are all active, engaged in sporting activities, while the respondent's figures are stationary. The respondent's figures appear to be individuals of different height (possibly a family) holding or embracing one another. Second, the respondent's stick figures, unlike the appellant's, all have heads that are attached to the bodies of the figures and unified torsos, with no separation at the waist. Third, the arrangement of the figures in the respondent's mark gives that mark a three dimensional quality that is quite different from the appellant's marks.
[15] Applying the first impression and imperfect recollection test, I conclude that the registration of the respondent's trade-mark is not contrary to section 9 of the Trade-marks Act.
[16] For the reasons given, the appeal is dismissed.
Judge
OTTAWA, ONTARIO
December 2, 1999
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
| COURT NO: T-182-94 |
| STYLE OF CAUSE: CANADIAN OLYMPIC ASSOCIATION |
- and -
LOGO-MOTIFS LIMITED and
THE REGISTRAR OF TRADE-MARKS
| DATE OF HEARING: WEDNESDAY, NOVEMBER 17, 1999 |
| PLACE OF HEARING: TORONTO, ONTARIO |
| REASONS FOR ORDER BY: REED J. |
DATED: THURSDAY, DECEMBER 2, 1999
| APPEARANCES: Mr. Kenneth D. McKay |
| For the Appellant |
| No One |
| For the Respondents |
| SOLICITORS OF RECORD: Sim, Hughes, Ashton & McKay |
Barristers and Solicitors
6 th Floor, 330 University Avenue
Toronto, Ontario
M5G 1R7
| For the Appellant |
| Morris Rosenberg |
| Deputy Attorney General of Canada |
| For the Respondents |