Date: 20030627
Docket: T-509-02
Citation: 2003 FCT 798
OTTAWA, Ontario, Friday, this 27th day of June, 2003
Present: THE HONOURABLE MR. JUSTICE KELEN
BETWEEN:
4-YOU A/S
Applicant
- and -
CHRISTINA AMÉRIQUE INC. / CHRISTINA AMERICA INC.
Respondent
REASONS FOR ORDER AND ORDER
[1] This is an application pursuant to subsection 57(1) of the Trade-marks Act, R.S.C. 1985, c. T-13 as amended (the "Act") to expunge the respondent's trade-mark CHRISTINA 4 YOU & Design, Registration No. TMA473,655 from the Register of Trade-marks. The sole issue in this application is whether the respondent's trade-mark was confusing at its date of filing with the applicant's trade-mark 4 YOU Design, and thereby not entitled to registration by virtue of paragraph 16(3)(b) of the Act.
FACTS
[2] On December 12, 1995, the respondent's predecessor-in-title filed an application to register the trade-mark CHRISTINA 4 YOU & Design on the basis of proposed use. The trade-mark CHRISTINA 4 YOU & Design was registered on March 25, 1997 for use in association with:
swimwear and beachwear namely swimsuits, shorts, skirts, shirts, t-shirts, cover-ups, caps, towels and beach bags.
[3] The applicant alleges that the respondent's trade-mark is confusing with its then-proposed trade-mark 4 YOU Design, an application filed on January 24, 1995. The 4 YOU Design mark later matured into Canada trade-mark Registration No. TMA490,947 and was issued on March 5, 1998 for use in association with:
jackets, blazers, trousers, jeans, shorts, coats, overcoats, windbreakers, sweatshirts, shirts, T-shirts, belts, socks, ties, and knitwear, namely knitted pullovers, knitted waistcoats, knitted cardigans, knitted socks, knitted ties, knitted hats, knitted caps, knitted gloves, knitted scarves, knitted underwear and knitted jackets.
[4] The two design marks are shown here:
The respondent's The applicant's
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[5] The impetus for this case is the respondent's subsequent application for registration of the word mark 4 YOU with no design. The application was filed on July 12, 2000 for use in association with:
sunglasses and spectacles cases; watches and clocks, cases for watches and clocks, jewellery, tiepins and clips, cuff links, keyrings, trinkets (jewellery); clothing, namely suits, tuxedos, jackets, blazers, trousers, jeans, shorts, coats, overcoats, raincoats, parkas, windbreakers, weatshirts, sweatpants, shirts, T-shirts, poloshirts, belts, suspenders, ties, scarves, socks and knitwear, namely knitted pullovers, knitted waistcoats, knitted cardigans, knitted socks, knitted ties, knitted hats, knitted caps, knitted gloves, knitted scarves, knitted underwear and knitted jackets sleepwear, pyjamas; swimwear namely swim trunks; underclothing, footwear and headwear.
[6] The Trade-marks Office is currently refusing to register this mark because the application is confusing with the respondent's trade-mark CHRISTINA 4 YOU & Design. In response the applicant is seeking to expunge the respondent's trade-mark on basis of paragraph 16(3)(b) of the Act, which states:
Proposed marks
(3) Any applicant who has filed an application in accordance with section 30 for registration of a proposed trade-mark that is registrable is entitled, subject to sections 38 and 40, to secure its registration in respect of the wares or services specified in the application, unless at the date of filing of the application it was confusing with
(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or
Marques projetées
(3) Tout requérant qui a produit une demande selon l'article 30 en vue de l'enregistrement d'une marque de commerce projetée et enregistrable, a droit, sous réserve des articles 38 et 40, d'en obtenir l'enregistrement à l'égard des marchandises ou services spécifiés dans la demande, à moins que, à la date de production de la demande, elle n'ait créé de la confusion_:
b) soit avec une marque de commerce à l'égard de laquelle une demande d'enregistrement a été antérieurement produite au Canada par une autre personne;
The parties are in agreement that the relevant date at which confusion is to be determined is December 12, 1995, the date of filing for the trade-mark CHRISTINA 4 YOU & Design, and that the applicant's trade-mark 4 YOU Design had been filed prior to that date.
ISSUE
[8] The only point of dispute is whether the respondent's design trade-mark was confusing with the applicant's design trade-mark on December 12, 1995.
TEST FOR CONFUSION
[9] The test for confusion is whether the ordinary customer or unwary purchaser would believe the product or service of one trade is likely to be related to the product or service of another trade: Rowntree Co. v. Paulin Chambers Co. (1967), [1968] S.C.R. 134, 54 C.P.R. 43. Evaluating confusion is a matter of first impression and imperfect recollection: Battle Pharmaceuticals v. British Drug Houses, Ltd. (1945), [1946] S.C.R. 50, 5 C.P.R. 71. The test was summarized by Décary J.A. in Miss Universe v. Bohna (1994), 58 C.P.R. (3d) 381 at p. 387 (F.C.A.):
To decide whether the use of a trade-mark or of a trade-name causes confusion with another trade-mark or another trade-name, the Court must ask itself whether, as a matter of first impression on the minds of an ordinary person having a vague recollection of that other mark or name, the use of both marks or names in the same area in the same manner is likely to lead to the inference that the services associated with those marks or names are performed by the same person, whether or not the services are of the same general class. [Footnotes omitted.]
[10] Subsection 6(5) of the Act contains a list of the factors to be considered when determining whether confusion exists:
What to be considered
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
(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
(b) the length of time the trade-marks or trade-names have been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
Éléments d'appréciation
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_:
a) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus;
b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage;
c) le genre de marchandises, services ou entreprises;
d) la nature du commerce;
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.
[11] The factors enumerated in subsection 6(5) need not be attributed equal weight: Polysar v. Gesco Distributing Ltd. (1985), 6 C.P.R. (3d) 289 at p. 298 (F.C.T.D.); and United Artists Corp. v. Pink Panther Beauty Corp., [1998] 3 F.C. 534, 80 C.P.R. (3d) 247 at para. 38 (C.A.) In each case of confusion, the relative weight given to the individual factors may vary. Moreover, the list of factors in subsection 6(5) is not intended to be exhaustive. The Court should make an effort to examine all surrounding circumstances of the case: Molson Breweries v. Labatt Brewing Co. (1996), 115 F.T.R. 33, 68 C.P.R. (3d) 202.
ANALYSIS
[12] The Court will analyse the likelihood of confusion with respect to the criteria set out in subsection 6(5). For the reasons that follow, this application must fail and the respondent's design trade-mark should remain on the Register.
Inherent distinctiveness
The applicant submitted that the words in the trade-mark 4 YOU Design possess a high degree of inherent distinctiveness. I disagree. The phrase "4 YOU" (and the phonetic equivalents of "FOR YOU", "FOR U" and "4 U") is a common expression in the English language that conveys an obvious meaning other than that provided by the applicant's products. Words in common use will enjoy less protection than an invented, unique or non-descriptive word: General Motors Corp. v. Bellows, [1949] S.C.R. 678, 10 C.P.R. 101 at pp. 115-116. The inherent distinctiveness of the applicant's trade-mark originates from the elements of its design, specifically the use of stylized font and the distinct arrangement of "4 YOU", not from the actual words utilized. Accordingly, the words are not entitled to a high degree of protection under this first criterion.
[14] I agree with the applicant that the evidence regarding the state of the Register with respect to trade-marks incorporating expressions "4YOU", or "4 You" is hearsay and therefore inadmissible. Accordingly, I have not considered this evidence, which may not have been relevant in any event since there was no evidence that the trade-marks on the Register are commonly used in the market.
Length of time the marks have been in use
The applicant has not provided evidence that demonstrates its design trade-mark was well-known on December 12, 1995. As its application was filed less than a year prior to December 12, 1995 and was based on proposed use, it can be surmised that the applicant's design trade-mark was not well-known in Canada. This means that it is not entitled to a high degree of protection.
Nature of the wares
[16] The Court is satisfied that the nature of the wares is not significantly different for the purposes of trade-mark law. As held in Miss Universe, supra, when both marks are used in precisely the same industry or business, it is erroneous to concentrate on differences in the nature of the wares such as swimwear compared with outer wear. Accordingly, the Court finds the nature of the wares or business is the same. This factor favours a finding of confusion.
Nature of the trade
[17] For the same reason, the nature of the trade is the same. The goods associated with both trade-mark designs are sold in the same channels, i.e. department stores, clothing stores and boutiques. This factor also favours a finding of confusion.
The degree of resemblance
[18] The two trade-marks are design trade-marks. Their respective designs are their prominent and dominant features. The two trade-marks do not resemble each other in appearance or in the ideas suggested by them.
[19] The applicant's trade-mark is completely different. It is a stylization and design using a number and letters. The stylization is tubular or sausage-like. It is a design that suggests a functional Scandinavian design such as found at IKEA. The respondent's design trade-mark is bordered by a diamond shape. It is more than the stylization of a number and letters. It contains scroll work inside the diamond shape and it uses a flower in the form of the letter "O". It suggests a summer carefree flower-child such as found at the Woodstock music festival in 1969. This is a theme quite unlike the tubular functional Scandinavian theme.
[20] Another important difference is the inclusion of the first word "CHRISTINA" in the respondent's design trade-mark. Given its place as the first word in the text, it plays a prominent role in distinguishing the mark from others that incorporate the expression "4 YOU". In Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 at p. 188 (F.C.T.D.), Cattanach J. held:
It is axiomatic that the first word or the first syllable in a trade mark is far the more important for the purpose of distinction.
[21] Accordingly, the two trademarks bear no degree of resemblance in appearance or the ideas suggested by them. Since this difference is so significant, greater weight will be accorded to this factor than the other criteria under subsection 6(5) of the Act. For this reason, the Court is satisfied that there is no likelihood that an ordinary person with a vague recollection would be confused that the goods bearing the respondent's trademark are associated with the applicant's wares.
CONCLUSION
[22] Accordingly, the respondent's trade-mark CHRISTINA 4 YOU & Design was not confusing with the applicant's trade-mark 4 YOU Design as of December 12, 1995, and should not be expunged from the Register of Trade-marks.
ORDER
THIS COURT HEREBY ORDERS THAT:
This application is dismissed with costs.
"Michael A. Kelen" ______________________________
J.F.C.C.
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-509-02
STYLE OF CAUSE: 4-YOU A/S v. CHRISTINA AMÉRIQUE INC. /
CHRISTINA AMERICA INC.
PLACE OF HEARING: OTTAWA
DATE OF HEARING: JUNE 18, 2003
REASONS FOR ORDER
AND ORDER BY: THE HONOURABLE MR. JUSTICE KELEN
APPEARANCES:
Mr. A. David Morrow FOR THE APPLICANT
Mr. Richard S. Levy FOR THE RESPONDENT
SOLICITORS OF RECORD:
Smart & Biggar FOR THE APPLICANT
Ottawa, Ontario
Spiegel Sohmer FOR RESPONDENT
Montréal, Québec
FEDERAL COURT OF CANADA
Date: 20030627
Docket: T-509-02
BETWEEN:
4-YOU A/S
Applicant
- and -
CHRISTINA AMÉRIQUE INC. /
CHRISTINA AMERICA INC.
Respondent
REASONS FOR ORDER
AND ORDER