Carbon Trust v. Pacific Carbon Trust Inc., (2013) 439 F.T.R. 101 (FC)

• Judge: Mactavish, J.
• Court: Federal Court (Canada)
• Case Date: June 20, 2013
• Jurisdiction: Canada (Federal)
• Citations: (2013), 439 F.T.R. 101 (FC);2013 FC 946

Carbon Trust v. Pacific Carbon Trust (2013), 439 F.T.R. 101 (FC)

MLB headnote and full text

[French language version follows English language version]

[La version française vient à la suite de la version anglaise]

.........................

Temp. Cite: [2013] F.T.R. TBEd. SE.026

The Carbon Trust (applicant) v. Pacific Carbon Trust Inc. (respondent)

(T-1493-12; 2013 FC 946; 2013 CF 946)

Indexed As: Carbon Trust v. Pacific Carbon Trust Inc.

Federal Court

Mactavish, J.

September 11, 2013.

Summary:

The Registrar of Trade-marks, sitting as the Trade-marks Opposition Board, refused the Carbon Trust's application to register its "'working with the Carbon Trust' and footprint design" as a trademark. The refusal was based on ss. 38(2)(c) and 16(3)(c) of the Trade-marks Act, with the Board finding that the Carbon Trust mark was confusing with the "Pacific Carbon Trust" trade name of the Pacific Carbon Trust Inc. The Carbon Trust appealed, claiming that the Board: (1) erred in refusing the registration of the Carbon Trust mark, asserting that the Pacific Carbon Trust did not own a trade name as defined in the Act, as it was not a "business" nor did it carry on a "business" as contemplated by s. 2 of the Act; (2) erred in finding that the Pacific Carbon Trust had used its trade name prior to the September 22, 2008 application date; and (3) misapplied the test for confusion in ss. 6(4) and 6(5) of the Act.

The Federal Court dismissed the appeal.

Statutes - Topic 2265

Interpretation - Presumptions and rules in aid - Against change in terminological usage (consistent expression) - [See Trademarks, Names and Designs - Topic 5003 ].

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - General - Conditions precedent - Lack of confusion with other marks - The Registrar of Trade-marks, sitting as the Trade-marks Opposition Board, refused Carbon Trust's  application to register its "'working with the Carbon Trust' and footprint design" as a trademark - The refusal was based on ss. 38(2)(c) and 16(3)(c) of the Trade-marks Act, with the Board finding that the Carbon Trust mark was confusing with the "Pacific Carbon Trust" trade name of the Pacific Carbon Trust Inc. - The Federal Court agreed - Services offered by the parties were related and could overlap, as both parties operated in the carbon emissions field and both offered services certifying companies with respect to carbon emissions - Moreover, the users of the services could be the same - Although the cost of wares or services could be relevant (i.e., there was a possibility of subsequent research by an attentive consumer of expensive wares or services), the test was still one of "first impression and imperfect recollection" - In assessing confusion, regard had to be had to the persons who were likely to make a purchase - Having regard to the other factors in s. 6(5) of the Act, the court held that the "universe of consumers" in the market for services of the type provided by the parties, upon encountering the Carbon Trust mark, with an imperfect recollection of the Pacific Carbon Trust trade name, would be confused - See paragraphs 79 to 109.

Trademarks, Names and Designs - Topic 988

Trademarks - Registration - Appeals or judicial review - Scope of review of decision of registrar (incl. Opposition Board) - The Federal Court set out the standard of review of appeals under s. 56 of the Trade-marks Act from decisions of the Registrar of Trade-marks sitting as the Trade-marks Opposition Board, and determined in prior cases, as follows: "... where no new evidence is filed on an appeal that would have materially affected the Board's findings of fact or the exercise of its discretion, the test is whether the Board was clearly wrong. However, where additional evidence is filed on the appeal that would have materially affected the Board's findings of fact or law, or the exercise of the Board's discretion, the standard of review is that of correctness. Although not an entirely apt description, some cases refer to this as a hearing de novo. In such cases, the Court is entitled to substitute its opinion for that of the Board." - See paragraphs 46 to 48.

Trademarks, Names and Designs - Topic 5003

Trade names - General - Business - What constitutes - Section 2 of the Trade-marks Act defined a "trade-name" as "the name under which any business is carried on, whether or not it is the name of a corporation, a partnership or an individual" - The Federal Court stated that "... recent Board decisions have adopted a broader definition of 'business' as one which 'could encompass any purposeful activity which might well ... be charitable or educational in purpose' ... . I acknowledge that this comment was made in relation to the use of the word 'business' in the definition of 'person' in section 2 of the Trade-marks Act (which defines 'person' as including 'any lawful trade union and any lawful association engaged in trade or business or the promotion thereof ...'). However, the principle of consistent expression would suggest that unless there is a clear indication otherwise, words should have the same meaning throughout a statute ... . There is no such clear indication in the Trade-marks Act." - See paragraphs 40 and 41.

Words and Phrases

Business - The Federal Court discussed the meaning of this word as found in s. 2 of the  Trade-marks Act, R.S.C. 1985, c. T-13 - See paragraphs 40 and 41.

Cases Noticed:

Heritage Life Assurance Co. v. Heritage Life Insurance Co. (1978), 43 C.P.R.(2d) 203 (T.M.O.B.), refd to. [para. 37].

Harvard Club of Montreal v. Vêtements Howick Apparel Ltd./Ltée, 8 C.P.R.(3d) 493 (T.M.O.B.), refd to. [para. 40].

Thomson v. Canada (Minister of Agriculture), [1992] 1 S.C.R. 385; 133 N.R. 345; 89 D.L.R.(4th) 218, refd to. [para. 41].

R. v. Zeolkowski, [1989] 1 S.C.R. 1378; 95 N.R. 149; 58 Man.R.(2d) 63; 61 D.L.R.(4th) 725, refd to. [para. 41].

Labatt (John) Ltd. v. Molson Companies Ltd. (1990), 36 F.T.R. 70; 30 C.P.R.(3d) 293 (T.D.), refd to. [para. 46].

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. 46].

Garbo Group Inc. et al. v. Brown (Harriet) & Co. et al. (1999), 176 F.T.R. 80; 3 C.P.R.(4th) 224 (T.D.), refd to. [para. 50].

Mirabed AG v. Springwall Sleep Products Ltd., 1985 CarswellNat 1096; 4 C.P.R.(3d) 45  (T.M.O.B.), refd to. [para. 63].

Professional Publishing Associates Ltd. v. Toronto Parent Magazine Inc. (1986), 8 F.T.R. 207; 9 C.P.R.(3d) 207 (T.D.), refd to. [para. 65].

J.C. Penney Co. v. Gaberdine Clothing Co. (2001), 213 F.T.R. 189; 2001 FCT 1333, refd to. [para. 65].

British Petroleum Co. Ltd. v. Bombardier Ltd. (1971), 4 C.P.R.(2d) 204; 1971 CarswellNat 511 (F.C.T.D.), refd to. [para. 67].

Kelly v. Alexander, [2001] T.M.O.B. No. 129; 14 C.P.R.(4th) 567, refd to. [para. 67].

Mattel Inc. v. 3894207 Canada Inc. et al. (2006), 348 N.R. 340; 2006 SCC 22, refd to. [para. 79].

Veuve Clicquot Ponsardin v. Boutiques Cliquot ltée et al., [2006] 1 S.C.R. 824; 349 N.R. 111; 2006 SCC 23, refd to. [para. 79].

Masterpiece Inc. v. Alavida Lifestyles Inc., [2011] 2 S.C.R. 387; 416 N.R. 307; 2011 SCC 27, refd to. [para. 81].

Sarah Coventry v. Abrahamian (1984), 1 C.P.R.(3d) 238 (F.C.T.D.), refd to. [para. 82].

Via Rail Canada Inc. v. Location Via-Route Inc. et al. (1992), 50 Q.A.C. 101; 45 C.P.R.(3d) 96 (C.A.), refd to. [para. 90].

Immuno AG v. Medicorp Sciences Inc./Sciences Medicorp Inc. (1995), 60 C.P.R.(3d) 527; 1995 CarswellNat 2938 (T.M.O.B.), refd to. [para. 90].

BBM Canada v. Research In Motion Ltd. (2012), 408 F.T.R. 300;  2012 FC 666, refd to. [para. 104].

Counsel:

Ian MacPhee, for the applicant;

Christopher S. Wilson and Kwan T. Loh, for the respondent.

Solicitors of Record:

Lapointe Rosenstein Marchand Melançon LLP, Montreal, Quebec, for the applicant;

Bull, Housser & Tupper LLP, Vancouver, British Columbia, for the respondent.

This appeal was heard on June 20, 2013, at Vancouver, British Columbia, by Mactavish, J., of the Federal Court, who delivered the following decision at Toronto, Ontario, on September 11, 2013.