Date: 20011107
Docket: T-2189-99
Neutral Citation: 2001 FCT 1218
BETWEEN:
SUNBEAM PRODUCTS, INC.
Applicant
- and -
MISTER COFFEE & SERVICES INC.
Respondent
APPLICATION UNDER section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13, as amended, from a Decision of the Registrar of Trade-marks dated 15 October 1999, allowing an opposition by Mister Coffee & Services Inc., to Trademark Application No. 672,763 for the mark MR. COFFEE by Sunbeam Products, Inc.
REASONS FOR ORDER AND ORDER
KELEN J.
[1] This is an appeal under section 56 of the Trade-marks Act, R.S.C. 1985, c.T-13, by the applicant from a decision of the Registrar of Trade-marks dated October 15, 1999 which refused the applicant's trade-mark application No. 672,763 for the trade-mark MR. COFFEE for use in association with "coffee". This appeal was heard with a companion appeal, Federal Court File No.T-2188-99, from a decision of the Registrar of Trade-marks dated October 15, 1999 which refused the applicant's trade-mark application No. 672,703 for the trade-mark MR. COFFEE for use in association with "cleaning compositions for coffee and/or tea brewing apparatus".
[2] On December 14, 1990 the applicant's predecessor in title filed the trade-mark applications which are the subject of the Registrar's decisions.
[3] The applicant is already the registered owner of the trade-mark MR. COFFEE, registration no. 214,811 dated July 16, 1976 for use in association with "coffee brewers and disposable coffee filters", and registration no. 231,109 dated December 1, 1978 for use in association with "decanters".
[4] In 1992, the respondent filed statements of opposition to the trade-mark applications.
The Evidence
[5] The applicant's predecessors in title have manufactured, distributed and sold MR. COFFEE brewing equipment, decanters and disposable coffee filters since about 1972, and became the largest maker of coffee brewing equipment including decanters, with approximately one million units sold in Canada as of 1993.
[6] The respondent, Mister Coffee and Services Inc., was incorporated in Ontario on November 5, 1980 and has used this trading name and trade-mark in association with its business since that time. In the first ten (10) years of operation, the company offered a complete office supply line in association with the MISTER COFFEE trade-mark, including a complete coffee supply service for offices.
[7] The applicant's memorandum of fact and law (paragraphs 16 and 17 under the heading "Summary of Evidence") acknowledges that:
"[...]persons in Canada would inevitably mistakenly believe that the respondent, Mister Coffee & Services Inc., is affiliated with, or is an authorized representative of, the company making famous MR. COFFEE products."
[8] The respondent had used its trade-name MISTER COFFEE in association with coffee equipment, coffee and other coffee supply services for a period of ten (10) years prior to the trade-mark applications in issue. The applicant's predecessors in title had tolerated, without legal objection, the co-existence of its MR. COFFEE trade-mark with the respondent's use of the trade-name MISTER COFFEE. The evidence raises issues of credibility about the tolerance of this co-existence. The fact is that MR. COFFEE and MISTER COFFEE had coexisted Canada, for at least ten (10) years prior to this dispute.
Standard of Review
[9] The Federal Court of Appeal in Molson Breweries v. John Labatt Limited, [2000] 3 F.C. 145 (F.C.A.) set out the approach to standard of review with respect to appeals from the Registrar of Trade-marks. At page 168, paragraph 51, Mr. Justice Rothstein said:
"Having regard to the Registrar's expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Judge must come to his or her own conclusion as to the correctness of the Registar's decision."
Effect of Additional Evidence Filed at the Trial Division
[10] The additional evidence filed by the applicant was the Affidavit of Christine Waldo, a legal secretary. This affidavit simply and only attached the pleadings in Federal Court File Number T-1182-95, an action for a trade-mark infringement commenced by a predecessor in title of the applicant against Mr. Coffee and Services Inc. This action was commenced on June 6, 1995, several years after the applicant knew of the respondent's use of the trade-name MISTER COFFEE, and three (3) years after the respondent's statements of opposition were filed before the Registrar in this matter.
[11] The material date for determining whether the applicant is entitled to register the trade-mark is the date of the application, i.e. December 14, 1990. At that material date, this Federal Court action did not exist, and accordingly is not relevant to this matter. In any event, the Federal Court infringement proceedings only beg the question "what is the legal status of the trade-mark MR. COFFEE and trade-name MISTER COFFEE?".
[12] The additional evidence filed by the applicant before the Trial Division would not have materially affected the Registrar's decision as to whether the use of the trade-mark MISTER COFFEE by the respondent was lawful.
[13] The additional evidence filed by the respondent before the Trial Division restated and strengthened the existing evidence from the respondent about its use of the trade-name MISTER COFFEE. This additional evidence would not have materially affected or changed the Registrar's findings of fact or the exercise of his discretion.
[14] Since the additional evidence would not have materially affected or changed the Registrar's decision, the standard of review in this appeal is reasonableness simplicter.
Decision of the Registrar
[15] The decision of the Registrar made findings which will be reviewed according to the standard of reasonableness, which instructs reviewing courts to accord deference to the Registrar's expertise and to set aside if the decision is unreasonable, or "clearly wrong", Astrazeneca AB v. Novopharm Limited and Registrar of Trade-marks; Ciba-Geigy Canada Ltd. v. Apotex Inc. and Registrar of Trade-marks; Ciba-Geigy Canada Ltd. v. Novopharm Limited and Registrar of Trade-marks 2001 FCA 296, [2001] F.C.J. No. 1580 (October 18, 2001) (F.C.A.) at paragraphs 32-33.
(A) First Finding
[16] The Registrar expressed doubt about the lawfulness of the respondent's use of the trade-name MISTER COFFEE, but found that this issue was not within jurisdiction. At page 6 in the decision:
"While I have my doubts as to whether the opponent's activities in the present case were in fact lawful, there is no finding of infringement by any Court and I do not consider that it is within my jurisdiction to make such a finding. I do consider it surprising, I might add, that in view of the relatively significant concurrent use by the opponent of the name Mister Coffee and Services Inc. and the mark MISTER COFFEE in association with wares and services which overlap those of the applicant, the applicant did not take any steps to prevent the opponent from using its mark or name (e.g. it did not launch an infringement action against the opponent) during the several year period the marks had co-existed in the marketplace prior to the filing date of the applications."
This finding is reasonable and I defer to the Registrar's expertise in matters related to trade-marks. It is reasonable to conclude that the applicant would have known about the use of the trade-name MISTER COFFEE by Mister Coffee and Services Inc., and that the applicant would have sought an injunction, a passing-off action, or an infringement action if the applicant did not acquiesce or agree to the respondent's use of the very similar trade-name. The respondent states that the applicant communicated with the respondent in 1984 and indicated that it would allow the respondent concurrent use of its name with the registered trade-mark of the applicant. This evidence raises questions which warrant a hearing in the appropriate form, probably the Federal Court, in the infringement action which the applicant commenced in 1995. This action will resolve the question of the lawfulness of the trade-name used by Mister Coffee and Services Inc.
Jurisdiction of the Registrar to Find the Use of a Trade-mark Unlawful in an Opposition Proceeding
[17] The applicant submits that the Registrar did have the jurisdiction to find that the respondent's use of the trade-name MISTER COFFEE was unlawful. The applicant relies upon McCabe v. Yamamoto & Co. (America) Inc. (1989), 23 C.P.R. (3d) 498 (F.C.T.D.) and Lunettes Cartier Ltée v. Cartier , Inc. (1991), 36 C.P.R. (3d) 391 (T.M.O.B.) where the Registrar did find unlawful the use of a trade-mark by an opponent in an opposition proceeding. In McCabe, the Federal Court had evidence of a finding by a U.S. Court that the respondent's use of the trade-mark was an infringement of the appellant's rights. In the Lunettes Cartier case, the Opposition Board had evidence that the respondent was subject to an injunction from the Federal Court enjoining the respondent's use of the trade-marks, the same trade-marks which the respondent was relying upon in support of its opposition.
[18] In the case at bar, there is not clear evidence that the use of the trade-mark MISTER COFFEE by the respondent is unlawful. This question requires a proper hearing. The fact that the applicant has not sought an interlocutory injunction or taken legal action prior to 1995, raise questions which need answers in an appropriate legal forum. The Registrar, in the course of opposition proceedings under s. 38 of the Trade-marks Act, does not have the jurisdiction to conduct a full hearing with viva voce evidence to determine the lawfulness of the respondent's use of the trade-mark. If the lawfulness issue was clear, then the Registrar has the jurisdiction to state that the respondent cannot rely upon its use of the trade mark because its use is not lawful. In the case at bar, the Registrar cannot come to that clear conclusion in this opposition proceeding.
(B) Second Finding
[19] The Registrar found that the applicant may have acquiesced to the respondent's use of the trade-name. At page 6 in the decision:
"In my view, in the absence of any indication from the applicant that it was not aware of the opponent's activities, the applicant's failure to act during this period could be seen as an acquiescence of the opponent's use of its mark and name."
[20] The Registrar decided reasonably in finding that the applicant's failure to protect its trade-mark could have legal ramifications. Implicitly, the Registrar is finding that this issue needs to be explored in the appropriate forum, which is not an opposition proceeding to an application for a new trade-mark.
(C) Third Finding
[21] The Registrar found a likelihood of confusion. At page 7 in the decision:
"In view of the overlap in the parties' wares and services, and the strong resemblance between the applicant's marks and opponent's mark and name in appearance, sound and idea suggested, I find there is a reasonable likelihood of confusion between the marks at issue."
This is a reasonable finding, confirmed by the applicant in paragraph 17 of its
memorandum of fact and law:
"That persons in Canada would inevitably mistakenly believe that the respondent, Mr. Coffee and Services Inc., is affiliated with, or is an authorized representative of, the company making famous MR. COFFEE products."
The confusion is obvious, both companies are providing coffee makers and coffee supplies, and have coexisted in Canada for approximately ten (10) years prior to the trade-mark applications in issue.
(D) Fourth Finding
[22] The Registrar found that the proposed trade-marks were not distinctive. At page 8 in the decision:
"As I find that the opponent's evidence shows that its MISTER COFFEE mark has become known sufficiently by the relevant date to negate the distinctiveness of the applicant's marks, I am satisfied that the opponent has met the evidential burden upon it in respect of this ground."
"[...] although I find that the applicant has shown considerable use of its other MR. COFFEE trade-marks in Canada in association with coffee brewing equipment, the opponent has also shown relatively significant concurrent use during a several year period of its MISTER COFFEE trade-mark and trade-name in association with wears and services which overlap those of the applicant".
This is a reasonable finding. For the same reasons that the marks are confusing, the marks have lost their distinctiveness.
[23] The respondent's use of the name MISTER COFFEE commenced in association with services, but evolved to include wares in association with coffee. The applicant's use of the name MR. COFFEE has always been in association with wares, viz. coffee-makers and coffee decanters, but the applicant now seeks to extend the trade-mark to other wares, viz. coffee and cleaning compositions. The applicant and the respondent have both evolved and grown to the point where their businesses are colliding. Accordingly, their respective use of the trade-mark MR. COFFEE and trade-name MISTER COFFEE requires a full legal hearing and determination of the parties' respective rights.
ORDER
[24] For these reasons, this appeal is dismissed with costs and the decision of the Registrar is upheld.
"Michael A. Kelen"
JUDGE
OTTAWA, ONTARIO
NOVEMBER 7, 2001