Date: 20031107
Docket: T-913-01
Citation: 2003 FC 1318
Ottawa, Ontario, the 7th day of November 2003
PRESENT: THE HONOURABLE MADAM JUSTICE JOHANNE GAUTHIER
BETWEEN:
CHAMPAGNE MOËT & CHANDON
Applicant
AND
CHATAM INTERNATIONAL INCORPORATED
Respondent
ORDER
IN VIEW OF the reasons for the order of today's date;
THE COURT ORDERS THAT:
1. The application for judicial review is dismissed with costs.
"Johanne Gauthier"
Judge
Certified true translation
Suzanne M. Gauthier, C.Tr., LL.L.
Date: 20031107
Docket: T-913-01
Citation: 2003 FC 1318
Ottawa, Ontario, the 7th day of November 2003
BETWEEN:
CHAMPAGNE MOËT & CHANDON
Applicant
AND
CHATAM INTERNATIONAL INCORPORATED
Respondent
REASONS FOR ORDER
GAUTHIER J.
[1] Champagne Moët & Chandon appeal from the decision of the Registrar of Trade-marks dismissing the objection it had made and allowing the respondent to register the trade-mark CANTON (TMO 799,970) in association with a liqueur.
[2] The applicant is the owner of a number of associated marks, including MOËT & CHANDON (TMA 331,621) for wines, champagne wines and sparkling wines and "CHANDON" (TMA 366,551) for alcoholic beverages including sparkling wines, which it has been using throughout Canada since 1891, in the case of MOËT & CHANDON, and since 1990 in the case of CHANDON.
[3] The respondent has been using the trade-mark CANTON in Canada in association with a ginger-based liqueur since September 1994.
[4] Champagne Moët & Chandon argues that the Registrar erred as follows:
(i) he failed to appreciate the inherent distinctiveness of CHANDON;
(ii) he misunderstood the facts (he thought the applicant had sold 12,000 bottles with the CHANDON mark between 1991 and 1996 when it sold 12,000 cases or 144,000 bottles) leading him to find erroneously that the CHANDON mark was not better known than the CANTON mark;
(iii) he applied the wrong test, that of the bilingual Canadian consumer, relying on the decision in Les Vins La Salle Inc. v. Les Vignobles Chantecler Ltée, [1995], 6 C.P.R. (3d) 533 (T.M.O.B.), when, as the Federal Court of Appeal held in Pierre Fabre Médicament v. Smithkline Beecham Corp., [2001] 2 F.C. 636, [2001] F.C.J. No. 225 at para. 14 (QL), that a mark is not registrable if it is confusing to unilingual Francophone consumers or unilingual Anglophone consumers or, in some special cases (not relevant here) to bilingual Canadian consumers;
(iv) he mistakenly found that the applicant had established, on a balance of probabilities, that there was no risk of confusion between the CHANDON and MOËT & CHANDON marks and the CANTON mark.
[5] The applicable standard of review is the one adopted by the Federal Court of Appeal in Molson Breweries v. John Labatt Ltd., [2003] 3 F.C. 145, [2000] F.C.J. No. 159, at para. 51 (QL):
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 Division judge must come to his or her own conclusion as to the correctness of the Registrar's decision.
[6] In the case at bar, the applicant filed some additional evidence that can be summarized as follows:
(i) Certificate of authenticity in relation to the registration of TMA 366,551;
(ii) Affidavit of Philippe Barbeau, an expert in linguistics, who, after comparing the CANTON and CHANDON marks, concludes that there is a risk of confusion, situated at a 3 on a scale of 0 to 5, in the minds of Francophone consumers owing to the standard pronunciation of the two marks;
(iii) Affidavit of Catherine Bergeron, who states that she was able to locate only four individuals in Canada bearing the surname Chandon and that this word does not appear in the dictionaries of proper names or common names;
(iv) Affidavit of Julie-Lise Poirier, who introduces in evidence a photo of a label affixed to the lower part of a bottle of California sparkling wine bearing the CHANDON mark as well as various recipes of drinks made with the liqueur (including a ginger liqueur) and sparkling wine or champagne;
(v) Affidavit of Charles De Ponteves, who updates the sales figures for wines bearing a label with the CHANDON mark in Canada for the years 1998, 1999 and 2000.
[7] In his decision, the Registrar tells us that the CANTON mark has a fairly pronounced inherent distinctiveness in association with liqueur, even though it is a word that is defined in English and French dictionaries and might evoke, for some consumers, a relationship with some Cantonese dishes.
[8] In regard to the CHANDON and MOËT & CHANDON marks, the Registrar comments:
[translation] The CHANDON and MOËT & CHANDON marks of the objector have a relatively unpronounced inherent distinctiveness since these marks include the surnames of Messrs. Chandon and Moët, the founders of the firm that produces champagne under the trade-mark MOËT & CHANDON. Furthermore, the combination of the two surnames in the MOËT & CHANDON mark draws further attention to the importance of Moët and Chandon as surnames.
[9] As to the degree to which these marks have become known, and considering the sale of 12,000 "bottles" between 1991 and 1996 by the applicant and the comparable level of sales and expenditures of the respondent, the Registrar notes that this factor weighs in favour of the objector insofar as its mark MOËT & CHANDON is concerned but does not weigh in favour of either party in regard to their CANTON and CHANDON marks.
[10] At the end of his analysis, the Registrar concludes, at page 10 of his decision:
[translation] Concerning the registered trade-mark CHANDON, I similarly find that the applicant has discharged the legal onus on it to persuade the Registrar that there would be no reasonable risk of confusion between its mark and the registered trade-mark CHANDON. In this regard, the CHANDON mark is a weak mark for which there is no authority to grant anything other than low-level protection; further, there is little resemblance in presentation or sound between the CANTON mark and the registered trade-mark CHANDON and no resemblance in the ideas suggested by the marks, given that the word CANTON is defined in both French and English dictionaries.
[No emphasis in original]
[11] In view of the Registrar's comments and his conclusion above, I am satisfied that the new evidence showing the more appreciable level of the sales of products bearing the CHANDON mark between 1998 and 2000 combined with the factual error (12,000 bottles rather than 144,000 bottles) in regard to the sales made by the applicant between 1991 and 1996, might have had an impact on the Registrar's decision and that in the circumstances I must draw my own conclusions from the evidence as a whole now on the record and examine whether the Registrar's decision is correct.
[12] In this analysis, the Court will be guided by the following principles:
[13] To determine whether the use of a trade-mark causes confusion with another trade-mark, the Court must ask itself whether, as a first impression in the mind of an ordinary person having a vague memory of the other mark, the use of the two marks in the same area and in the same way would be likely to give the impression that the services associated with those trade-marks are provided by the same person, whether or not these services are of the same general class: subsection 6(2) of the Trade-marks Act, R.S.C., c. T-10 (the Act) (all the relevant provisions are appended to this judgment).
[14] To answer this question, the Court shall have regard to all the surrounding circumstances, including those enumerated in subsection 6(5) of the Act. Not all of the factors listed in paragraphs 6(5)(a) to (e) of the Act need be interpreted as having the same weight in all circumstances.
[15] The onus of establishing that there is no probability of confusion with another trade-mark rests on the person applying to register a trade-mark.
Inherent distinctiveness: (paragraph 6(5)(a) of the Act)
[16] I agree with the Registrar that although the word CANTON is in the dictionaries, it nevertheless has a certain distinctiveness when associated with a liqueur.
[17] However, the Registrar erred when he found that the inherent distinctiveness of the CHANDON mark is weak.
[18] The applicant submits that the Court should recognize the very pronounced inherent distinctiveness of its CHANDON mark because this is a unique or invented word, particularly when associated with a sparkling wine from California.
[19] It is obvious that the name Chandon is an uncommon word in Canada. So it would not be associated solely or principally with a surname within the meaning of paragraph 12(1)(a) of the Act. However, it must be acknowledged, as the Registrar did, that the applicant has to some degree educated Canadian consumers on the meaning of this word by focussing its advertising on the origins of the Moët and Chandon firm and its founders. Furthermore, by juxtaposing the words Moët and Chandon in its best known mark, MOËT & CHANDON, it has accentuated the surname aspect of the word Chandon.
[20] Even though few people may have a particular surname, it can become sufficiently famous to be a name recognized by consumers as a surname. The respondent submits the example of Mr. Gretsky. I do not think the notoriety of Messrs. Moët and Chandon has reached this level with Canadians.
[21] However, I am not prepared to grant it an inherent distinctiveness as pronounced as the distinctiveness I would attribute to a word such as Kit Kat. At the end of the day, even having regard for the new evidence, this factor does not really favour either of the parties.
The extent to which the two marks have become known and the length of time they have been in use: (paragraph 6(5)(a) and (b) of the Act)
[22] Even in the absence of any evidence concerning the level of sales for products bearing the CANTON mark between 1998 and 2000, I am satisfied that this criterion favours MOËT & CHANDON and CHANDON. The first is a well-known mark while the second is a known mark. But it is clear that CHANDON is not a famous mark and that it has not achieved the degree of notoriety of MOËT & CHANDON.
[23] The length of time of use does not really favour the MOËT & CHANDON mark.
Nature of the ware and nature of the trade: (paragraph 6(5)(c) and (d) of the Act)
[24] In this case, the wares are not identical but they are nevertheless part of the same general class, alcoholic beverages. Like the Registrar, I also think there is a possibility of overlap in the distribution channels. It should be noted, incidentally, that the similarity in the wares and the nature of the trade is of little importance in the case of MOËT & CHANDON, a well-known mark, and of relative importance in the case of a known mark like CHANDON.
Degree of resemblance(paragraph 6(5)(e) of the Act)
[25] This criterion, while it is the last in the list of circumstances mentioned in section 6 of the Act, is often the most important because if there is no resemblance there can be no confusion. I do not think it can be argued that there is a resemblance between MOËT & CHANDON and CANTON. I agree with the Registrar, who found there is none.
[26] The Registrar's conclusion that there was little resemblance between the CANTON and CHANDON marks in English was not disputed in this Court. I will not linger on this issue, since the applicant's argument is that there is a risk of confusion in terms of the standard pronunciation for Francophone Canadian consumers between the CANTON and CHANDON marks and that this is sufficient to bar the registration of the CANTON mark.
[27] I am unable to conclude that, from the standpoint of the Francophone Canadian consumer, there is a resemblance in terms of the ideas evoked by these two marks.
[28] Concerning the possibility of confusion in terms of sounds, the conclusion of the expert witness Mr. Barbeau is based on the following facts (page 6 of his affidavit):
[translation]
1. The spelling of the two words is 86% similar;
2. Their syllabic structure is the same (100%);
3. Their vowel content is the same (100%);
4. They are both logatoms.
Only the consonantal content differs in a relevant way, notwithstanding the homorganic nature of the phonemes in question.
[29] At the hearing the applicant conceded that its expert evidence pointed to the conclusion that the pronunciation of any trade-mark composed of a single word with two syllables including the "an" or "on" sound in that order would create confusion with the CHANDON mark. Thus, by accepting this argument, the Court would be upholding a monopoly over all such words as rançon, lançons, tampon, menton, manchon, bandons, dansons, etc., since there is no basis in Mr. Barbeau's affidavit to conclude that these phonemes would be marked differently on a scale of 0 to 5 (other than menton, which might have a lower percentage in terms of spelling (see paragraph 28 above) because of the e, while manchon might have a higher percentage.
[30] Let us begin by saying that Mr. Barbeau does not indicate how he defines his ordinary consumer, nor does he tell us whether his assessment criterion is that of the imperfect memory.
[31] I have great difficulty in seeing how the first impression of the ordinary consumer is influenced by the fact that CHANDON and CANTON are logatoms, an expression defined in the affidavit as "[translation] words whose meaning cannot be inferred through morphemes (radical, prefix or suffix)". This word does not appear in the Petit Robert dictionary, and I was not aware of this meaning for it. It is defined in the Grand Robert as follows:
Suite de sons, syllabe ou suite de syllabes conforme au système phonétique d'une langue mais ne correspondant pas à un signe (mot, syntagme) ...
[A meaningless syllable formed arbitrarily, usually from initial and final consonants and a vowel... - Oxford English Dictionary, 2nd ed.]
[32] It is curious that this element (two logatoms) is in the list of facts that led Mr. Barbeau to his conclusion, since he says at page 3 of his affidavit that although linguistics normally implies an analysis at four levels (phonography, morphology, lexical semantics and syntax), in this case "[translation] it locates the main issue at the level of the phonography of the French" because "[translation] the morphological and semantic levels prove to be of less relevance here not only because of the lack of morphemes (radical, prefix or suffix) but also because of the arbitrariness of its lexical meaning".
[33] I do not understand why, at the level of semantics, the obvious difference in the idea evoked by CANTON as opposed to CHANDON is not taken into account.
[34] Even if the meaning of CANTON is arbitrary, it would be understood by a Francophone consumer. And if the semantics are not taken into account, why then should we take account of the lack of morphemes (these marks are logatoms)?
[35] I note as well that Mr. Barbeau clearly states that these two words have "[translation] a fairly pronounced consonantal dissimilarity, since it is impossible for a Francophone, in the normal conditions of articulation, to confuse the sounds ch[*] and c[k] e.g. chant/quand on the one hand, or the nouns [d] and [t] on the other hand e.g. dort/tort". According to this expert, the consonantal dissimilarity is not as complete as it would be with a word like rançon. But he does not explain what weight he gave to each and every one of the factors he considered. The Court is therefore not in a position to verify the impact of the "logatom" factor or the impossibility of confusing the two consonants from the two syllables in question on the expert's conclusion.
[36] Finally, I note, as Mr. Justice Addy did in Monsport Inc. v. Vêtements de Sport Bonnie (1978) Ltée, [1988] F.C.J. No. 1077, (1988) 22 C.P.R. (3d) 356 at p. 363 (QL) (F.C.T.D.):
This evidence may be helpful in a comparison of the marks, but the question of the confusion in the mind of the public falls to be determined by the court, and is not a matter for expert evidence.
[37] I assign little weight to this evidence and simply conclude that there is some resemblance between CANTON and CHANDON but at a low level.
[38] Having weighed up all the factors described above and the evidence on the record as a whole, I reach the same conclusion as the Registrar, although his evaluation differs in regard to some of the factors. I am satisfied, therefore, that the Registrar did not err when he decided that the respondent had established that there was no probability of confusion between the CHANDON and CANTON mark or between CANTON and MOËT & CHANDON.
[39] For these reasons, the application for judicial review is dismissed with costs.
"Johanne Gauthier"
Judge
Certified true translation
Suzanne M. Gauthier, C.Tr., LL.L.
APPENDIX
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6(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
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[...]
6(2) L'emploi d'une marque de commerce crée de la confusion avec une autre marque de commerce lorsque l'emploi des deux marques de commerce dans la même région serait susceptible de faire conclure que les marchandises liées à ces marques de commerce sont fabriquées, vendues, données à bail ou louées, ou que les services liés à ces marques sont loués ou exécutés, par la même personne, que ces marchandises ou ces services soient ou non de la même catégorie générale.
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| 6.(5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including |
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6.(5) En décidant si des marques de commerce ou des noms commerciaux créent de la confusion, le tribunal ou le registraire, selon le cas, tient compte de toutes les circonstances de l'espèce, y compris : |
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| (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; |
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a) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus; |
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| (b) the length of time the trade-marks or trade-names have been in use; |
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b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage; |
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| (c) the nature of the wares, services or business; |
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c) le genre de marchandises, services ou entreprises; |
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| (d) the nature of the trade; and |
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d) la nature du commerce; |
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| (e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
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e) le degré de ressemblance entre les marques de commerce ou les noms commerciaux dans la présentation ou le son, ou dans les idées qu'ils suggèrent.
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| 12. (1) Subject to section 13, a trade-mark is registrable if it is not |
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12. (1) Sous réserve de l'article 13, une marque de commerce est enregistrable sauf dans l'un ou l'autre des cas suivants : |
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| (a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;
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a) elle est constituée d'un mot n'étant principalement que le nom ou le nom de famille d'un particulier vivant ou qui est décédé dans les trente années précédentes;
[...] |
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FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-913-01
STYLE: CHAMPAGNE MOËT ET CHANDON
v. CHATAM INTERNATIONAL INC.
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: May 21, 2003
REASONS: The Honourable Madam Justice Johanne Gauthier
DATED: November 7, 2003
APPEARANCES:
Barry Gamache FOR THE APPLICANT
Dan Hitchcock FOR THE RESPONDENT
SOLICITORS OF RECORD:
Barry Gamache FOR THE APPLICANT
Montréal, Quebec
Dan Hitchcock FOR THE RESPONDENT
Toronto, Ontario
Date: 20031107
Docket: T-913-01
Between:
CHAMPAGNE MOËT & CHANDON
Applicant
AND
CHATAM INTERNATIONAL INCORPORATED
Respondent
REASONS FOR ORDER