Jewelry Trademark Appeals Dismissed

1. Does the Applicant’s additional evidence meet the test for consideration?
2. If the additional evidence meets the test for consideration, what is its proper assessment in the present appeal which will be decided on a de novo basis?
3. If the additional evidence does not meet the test for consideration, what is the proper determination of this appeal having regard to tests for appellate review, as confirmed in Housen v Nikolaisen, 2002 SCC 33, namely correctness for issues of law, and palpable and overriding error for issues of fact, or mixed fact and law including issues where the legal principle is not readily extricable.

ANALYSIS

The matters at issue on the appeal were questions of mixed fact and law, which called for a “palpable and overriding error” standard of review.

Materiality of Evidence

New evidence in an appeal under section 56 will only be considered if it is “material”.

In Seara Alimentos Ltda. v Amira Enterprises Inc., 2019 FCA 63, the Federal Court of Appeal posed the question regarding materiality as follows: could the new evidence, because of its significance and probative value, have had a bearing on a finding of fact or the exercise of discretion of the TMOB?

The Court considered the proposed new evidence put forth by both parties for the appeals at hand. The proposed new evidence was found to be inadmissible on the subsection 16(1) and 16(3) grounds of appeal because it pertained to facts posterior to the material dates per subsections 16(1) and 16(3) – January 1, 2012 and February 22, 2013.

The Law on Confusion

Under subsection 6(5) of the Act and the surrounding jurisprudence, confusion is to be evaluated taking into consideration the following six factors, which are discussed below. In both decisions, the Court considered each of these factors and ultimately upheld the TMOB’s decision.

a. The inherent distinctiveness of the trademarks and the extent to which they have become known

In both cases, the TMOB found that there was some level of inherent distinctiveness in the competing marks, but ultimately held that the distinctiveness of the Beverly marks did not overcome that of the existing Corona marks.

b. The length of time the trademarks have been in use

For both the DIAMOND Marks and the GOLD Mark, the TMOB favoured Corona on this point. Corona provided material evidence to the use of the mark for four years prior to Beverly in the case of the GOLD mark and for nine years in the case of the DIAMOND marks.

c. The nature of the goods, services, or business;

d. The nature of the trade

Both sides agreed that the nature of their goods and trade, being expensive jewelry, was the same.

e. The degree of resemblance between the trademarks, including in appearance or sound or in the ideas suggested by them

With respect to the GOLD Mark, the TMOB found that “when considering the totality of the marks, they are highly similar in appearance, when sounded, and in the ideas suggested”. The Court found no error with this finding. The Court added that assessing resemblance is a subjective decision and deferred to the TMOB’s subjectivity on the matter after confirming that it saw no palpable and overriding error.

The TMOB notably found that none of the individual elements of the marks was strikingly similar, however the test for resemblance requires a view for the marks in their totality. The Court agreed with the TMOB that the differentiation between a 10 point maple leaf and an 11 point maple leaf would not be a noticeable distinction to a customer in a hurry. The Court also agreed with the TMOB that the addition of the word “Truly” to Beverly’s mark did not differentiate it, but rather emphasized the rest of the mark, which is textually identical to Corona’s mark. The TMOB concluded by stating the following:

As alluded to earlier, the test to be applied is a matter of first impression in the mind of the casual consumer somewhat in a hurry, who sees the Mark when he or she has no more than an imperfect recollection of the Opponent’s CANADIAN CERTIFIED GOLD Design mark, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks.

With respect to the DIAMOND Marks, the TMOB evaluated the phonetic and visual resemblance of the marks as well as the ideas suggested by them. On the points of visual resemblance and resemblance of ideas suggested by the marks, the TMOB found in favour of Corona since the marks were both stylized maple leafs. On the point of phonetic resemblance, the Court sided with Beverly by stating that the marks do not resemble each other when spoken since Corona’s mark did not contain text. However, the TMOB and Court agreed that, when viewed in their totality, the Beverly mark does resemble the Corona mark and so they found in Corona’s favour.

f. Surrounding Circumstances

With respect to the GOLD Mark, the surrounding circumstances included the State of the Register and Evidence of Actual Confusion.

The State of the Register is only to be evaluated in cases where there are a large number of relevant registered marks, which was not the case here. As such, the TMOB emphasized that the “state of the register evidence [is not of] any assistance to the Applicant”. The Court agreed and reiterated that Beverly was unable to find even one registration with respect to “Canadian Certified Gold”. Beverly further argued that the TMOB’s decision gives an unreasonable monopoly to Corona over its mark. The Court noted that all trademarks confer a limited monopoly to their owners and this registration is adequately limited to the specific words “Canadian Certified Gold” in combination with a stylized maple leaf design.

Beverly brought forth no material and admissible evidence of actual confusion and, as such, the TMOB and the Court drew an adverse inference with respect to the likelihood of confusion.

With respect to the DIAMOND Marks, the TMOB and the Court found that the state of the register favoured Corona since there were insufficient numbers of relevant registrations from which to draw an inference based on the state of the register.

The TMOB and the Court also drew an adverse inference from the lack of evidence of confusion put forth by Beverly.

The TMOB also considered an additional surrounding circumstance in this case: “Shop-in-Shops” which refers to the way the applicant displayed the products in retail stores. This evidence favoured Beverly’s argument for confusion since the store displays looked similar enough to be confused.

However, the TMOB and the Court nonetheless favoured Corona on this point because the evidence was pertaining to facts posterior to the material date of filing and hence inadmissible.

CONCLUSION

In both cases, the Court found no palpable and overriding error in the TMOB’s decision. As such, both appeals were dismissed and Beverly’s marks were not registered.

Author: Tommy Friedlich, 2021 Summer Student-at-law