Advance Magazine Publishers Inc. v. Wise Gourmet Inc., (2009) 356 F.T.R. 270 (FC)

• Judge: Mainville, J.
• Court: Federal Court (Canada)
• Case Date: October 28, 2009
• Jurisdiction: Canada (Federal)
• Citations: (2009), 356 F.T.R. 270 (FC);2009 FC 1208

Advance Magazine Publ. v. Wise Gourmet (2009), 356 F.T.R. 270 (FC)

MLB headnote and full text

Temp. Cite: [2009] F.T.R. TBEd. NO.050

Advance Magazine Publishers, Inc. (applicant) v. Wise Gourmet Inc. (respondent)

(T-1159-08; 2009 FC 1208)

Indexed As: Advance Magazine Publishers Inc. v. Wise Gourmet Inc.

Federal Court

Mainville, J.

November 24, 2009.

Summary:

Advance Magazine Publishers, publisher of "Gourmet" magazine and "Gourmet" cookbooks, opposed Wise Gourmet Inc.'s registration of "Wise Gourmet" as a trademark. The Registrar of Trademarks dismissed the opposition to the registration. Advance Magazine Publishers appealed and submitted new evidence in the form of two lengthy affidavits which were not before the Registrar, as it was entitled to do pursuant to s. 56(5) of the Trade-marks Act.

The Federal Court allowed the appeal.

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - General - Conditions precedent - Lack of confusion with other marks - Advance Magazine Publishers, publisher of "Gourmet" magazine and "Gourmet" cookbooks, opposed Wise Gourmet Inc.'s registration of "Wise Gourmet" as a trademark - The Registrar of Trademarks dismissed the opposition to the registration - Advance Magazine Publishers appealed and submitted new evidence in the form of two lengthy affidavits which were not before the Registrar, as it was entitled to do pursuant to s. 56(5) of the Trade-marks Act - The Federal Court determined the issue de novo, based on the new relevant and substantial evidence, and allowed the appeal - Though the "Gourmet" trademark was not inherently distinctive, its use over time by Advance Magazine Publishers had allowed it to gain a certain reputation in Canada related to its magazine and associated wares and services - Though the word "gourmet" was in common usage in regard to food and related products and services, Advance Magazine Publishers had demonstrated that its trademark "Gourmet" had become well known in Canada through its magazine - Furthermore, the "Gourmet" trademark had been in use for a long time in Canada while Wise Gourmet Inc.'s mark was a new entrant in the market - Taking into account the nature of the wares and services and that the trade related to both marks overlapped to a considerable degree, the fact that there was a fair degree of resemblance between both marks, and the absence of any evidence or submissions by Wise Gourmet Inc. to challenge the new evidence, the court found a likelihood of confusion between Wise Gourmet Inc.'s mark "Wise Gourmet" and the registered trademark "Gourmet".

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - General - Conditions precedent - Lack of confusion with other marks - [See Trademarks, Names and Designs - Topic 985 ].

Trademarks, Names and Designs - Topic 985

Trademarks - Registration - Appeals or judicial review - Admissibility of fresh evidence - Advance Magazine Publishers, publisher of "Gourmet" magazine and "Gourmet" cookbooks, opposed Wise Gourmet Inc.'s registration of "Wise Gourmet" as a trademark - The Registrar of Trademarks dismissed the opposition to the registration - Advance Magazine Publishers appealed and submitted new evidence in the form of two lengthy affidavits which were not before the Registrar, as it was entitled to do pursuant to s. 56(5) of the Trade-marks Act - In a letter submitted a few days before the hearing, Wise Gourmet Inc. represented that Advance Magazine Publishers was ceasing to publish Gourmet magazine after its November 2009 edition, thus consequently ceasing to use its trademark Gourmet in association with the wares or services for which it was registered in Canada, namely magazines - The Federal Court decided not to accept into evidence this letter and the fact that it attempted to place before the court - However, if the court had erred in this regard, this fact would not have affected the outcome even if it had been deemed part of the evidence - For the purposes of s. 16(1)(a) or s. 16(3) of the Act, the material dates of the confusion analysis were the date of first use by Advance Magazine Publishers for registration, or as the case might be, the date of filing of the registration application - At both these dates, the new evidence submitted by Advance Magazine Publishers conclusively showed that Gourmet magazine was widely circulated in Canada - See paragraphs 70 to 73.

Trademarks, Names and Designs - Topic 988

Trademarks - Registration - Appeals or judicial review - Scope of review of decision of registrar - Advance Magazine Publishers, publisher of "Gourmet" magazine and "Gourmet" cookbooks, opposed Wise Gourmet Inc.'s registration of "Wise Gourmet" as a trademark - The Registrar of Trademarks dismissed the opposition to the registration - Advance Magazine Publishers appealed and submitted new evidence in the form of two lengthy affidavits which were not before the Registrar, as it was entitled to do pursuant to s. 56(5) of the Trade-marks Act - Consequently, the court had to examine the standard under which it had to review the Registrar's decision in light of the new evidence - The Federal Court found that the Registrar's findings regarding the issues of use and confusion were largely negated by the new evidence - A new determination on a de novo or fresh basis was required - However, the Registrar's findings on those issues which remained unaffected by the new evidence presented on appeal still deserved some deference, and the court would refer to such findings where appropriate - See paragraphs 34 to 45.

Cases Noticed:

Canadian Schenley Distilleries Ltd. v. Canada's Manitoba Distillery Ltd. (1975), 25 C.P.R.(2d) 1 (F.C.T.D.), refd to. [para. 32].

New Brunswick (Board of Management) v. Dunsmuir, [2008] 1 S.C.R. 190; 372 N.R. 1; 329 N.B.R.(2d) 1; 844 A.P.R. 1; 291 D.L.R.(4th) 577; 2008 CarswellNB 124, refd to. [para. 34].

Mattel Inc. v. 3894207 Canada Inc. et al., [2006] 1 S.C.R. 772; 348 N.R. 340; 49 C.P.R.(4th) 321; 2006 SCC 22, refd to. [para. 35].

Molson Breweries, A Partnership v. Labatt (John) Ltd. et al., [2000] 3 F.C. 145; 252 N.R. 91; 5 C.P.R.(4th) 180 (F.C.A.), refd to. [para. 37].

Maison Cousin (1980) Inc. v. Cousins Submarines Inc. (2006), 366 N.R. 153; 60 C.P.R.(4th) 369; 2006 FCA 409, refd to. [para. 38].

Shell Canada Ltd. v. P.T. Sari Incofood Corp. (2008), 380 N.R. 317; 68 C.P.R.(4th) 390; 2008 FCA 279, refd to. [para. 39].

Canadian Tire Corp. v. Accessoires d'autos Nordiques Inc. (2007), 370 N.R. 304; 62 C.P.R.(4th) 436; 2007 FCA 367, refd to. [para. 39].

Curb v. Smart & Biggar (2009), 339 F.T.R. 224; 72 C.P.R.(4th) 176; 2009 FC 47, refd to. [para. 39].

Vêtement Multi-Wear Inc. v. Riches, McKenzie & Herbert LLP, [2008] F.T.R. Uned. 926; 73 C.P.R.(4th) 3; 2008 FC 1237, refd to. [para. 39].

Guido Berlucchi & C. S.r.l. v. Brouillette Kosie Prince (2007), 310 F.T.R. 70; 56 C.P.R.(4th) 401; 2007 FC 245, refd to. [para. 39].

Gainers Inc. v. Marchildon (1996), 66 C.P.R.(3d) 308 (F.C.T.D.), refd to. [para. 47].

Veuve Clicquot Ponsardin v. Boutiques Cliquot ltée et al., [2006] 1 S.C.R. 824; 349 N.R. 111; 49 C.P.R.(4th) 401; 2006 SCC 23, refd to. [para. 48].

Masterpiece Inc. v. Alavida Lifestyles Inc. (2009), 379 N.R. 180; 2009 FCA 290, folld. [para. 71].

Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 130 N.R. 223; 37 C.P.R.(3d) 413 (F.C.A.), refd to. [para. 72].

Authors and Works Noticed:

Fox, Harold George, The Canadian Law of Trade Marks and Unfair Competition (4th Ed. 2002) (Looseleaf Ed.), pp. 6-20.7 to 6-20.8, para. 6-2.(d.1) [para. 72]; 6-34.1, para. 6.8(d) [para. 32].

Counsel:

Rohit Parekh, for the applicant;

No one appearing for the respondent.

Solicitors of Record:

Sim, Lowman, Ashton & McKay, Toronto, Ontario, for the applicant.

This appeal was heard at Toronto, Ontario, on October 28, 2009, by Mainville, J., of the Federal Court, who delivered the following decision, at Montrèal, Quebec, on November 24, 2009.