Chamberlain Group Inc. v. Lynx Industries Inc., (2010) 379 F.T.R. 270 (FC)

• Judge: Hughes, J.
• Court: Federal Court (Canada)
• Case Date: December 20, 2010
• Jurisdiction: Canada (Federal)
• Citations: (2010), 379 F.T.R. 270 (FC);2010 FC 1287

Chamberlain Group v. Lynx Ind. Inc. (2010), 379 F.T.R. 270 (FC)

MLB headnote and full text

Temp. Cite: [2010] F.T.R. TBEd. DE.054

The Chamberlain Group, Inc. (applicant) v. Lynx Industries Inc. (respondent)

(T-2140-09; T-2141-09; 2010 FC 1287)

Indexed As: Chamberlain Group Inc. v. Lynx Industries Inc.

Federal Court

Hughes, J.

December 20, 2010.

Summary:

Lynx Industries Inc. applied to register two trademarks for use in association with its garage door openers: "Lynxmaster" and "Lynxmaster" in a design form. Chamberlain Group Inc. opposed the application on the basis of, inter alia, confusion with trademarks previously registered by Chamberlain for the words "Liftmaster" and "Garagemaster", both for garage door openers. The Trademarks Opposition Board rejected Chamberlain's oppositions.

The Federal Court allowed Chamberlain's appeal, rejecting Lynx's applications.

Editor's Note: For a related decision involving these parties, see (2010), 368 F.T.R. 319.

Courts - Topic 7.3

Stare decisis - Authority of judicial decisions - General principles - Authority and use of precedents - Trademarks cases - [See Trademarks, Names and Designs - Topic 10 ].

Practice - Topic 7029.2

Costs - Party and party costs - Entitlement to party and party costs - Successful party - Exceptions - Delay in raising issue - [See Trademarks, Names and Designs - Topic 4424 ].

Trademarks, Names and Designs - Topic 10

Trademarks - General - Trademark decisions (incl. foreign) - Lynx Industries Inc. applied to register two trademarks for use in association with its garage door openers: "Lynxmaster" and "Lynxmaster" in a design form - Chamberlain Group Inc. opposed the application on the basis of, inter alia, confusion with trademarks previously registered by Chamberlain for the words "Liftmaster" and "Garagemaster", both for garage door openers - The Trademarks Opposition Board rejected Chamberlain's oppositions - At issue on Chamberlain's appeal was whether a decision of the United States Trademark Trial and Appeal Board had precedential value - That decision found "Lynxmaster" to be confusing with "Liftmaster" - The Federal Court stated that "the U.S. decision had no precedential binding authority and need not be discussed further" - See paragraphs 48 to 51.

Trademarks, Names and Designs - Topic 702

Trademarks - Registration - General - Application - General - The Federal Court discussed s. 30(i) of the Trade-marks Act, which required an applicant for registration of a trademark to provide, in the application, a statement that the applicant was satisfied that he or she was entitled to use the trademark in Canada - The court stated that s. 30(i) had "sometimes been relied upon by those opposing the registration of a trademark as imposing a duty of good faith on the applicant. That may well be the case in a situation, for instance, where an applicant is simply attempting to appropriate a mark that it knows belongs to another. However, different considerations apply when the issue is really one of confusion. If a trade-mark sought to be registered is not confusing with another trademark, no amount of bad faith can make it confusing. Similarly, if a trademark sought to be registered is confusing with another trademark, good faith or bad faith is irrelevant." - See paragraphs 52 to 56.

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - General - Conditions precedent - Lack of confusion with other marks - [See Trademarks, Names and Designs - Topic 702 ].

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - General - Conditions precedent - Lack of confusion with other marks - Lynx Industries Inc. applied to register two trademarks for use in association with its garage door openers: "Lynxmaster" and "Lynxmaster" in a design form - Chamberlain Group Inc. opposed the application on the basis of, inter alia, confusion with trademarks previously registered by Chamberlain for the words "Liftmaster" and "Garagemaster", both for garage door openers - The Trademarks Opposition Board rejected Chamberlain's oppositions - The Federal Court allowed Chamberlain's appeal, rejecting Lynx's applications - The Board committed a number of errors in dealing with the issue of confusion - While correctly stating that the trademarks had to be viewed in their totality, the Board dissected them into "Lift" and "Lynx" and "Master", finding without evidentiary support that "Master" was laudatory and "Lynx" was distinctive enough to create a distinction between "Lynxmaster" and "Liftmaster" - The Board failed to give sufficient weight to the 15 years of significant sales and advertising in Canada of "Liftmaster", compared to none whatsoever for Lynx's trademarks - The Board failed to give sufficient regard to (i) the fact that the wares were identical and that the channels of trade were the same; (ii) the lack of any significant use or registration by any party in the garage door opener field of a "Master" containing trademark and (iii) the onus borne by Lynx - The Board's decision did not withstand a "somewhat probing examination" - The trademarks were likely to be confusing - See paragraphs 33 to 47.

Trademarks, Names and Designs - Topic 715

Trademarks - Registration - General - Opposition - Grounds - [See second Trademarks, Names and Designs - Topic 706 ].

Trademarks, Names and Designs - Topic 983

Trademarks - Registration - Appeals or judicial review - Circumstances justifying intervention of appeal court - [See second Trademarks, Names and Designs - Topic 706 ].

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 discussed the standard of review on an appeal under s. 56 of the Trade-marks Act - Under rule 300(d) of the Federal Courts Rules, the form of the appeal was that of an application - Under s. 56(5) of the Act, evidence in addition to that addressed by the Trademarks Opposition Board could be adduced - Whether or not new evidence was led, the Board's decision had to undergo a somewhat probing examination - If new evidence was led that significantly changed the factual basis for the Board's decision, then the court had to decide the matter de novo - Throughout, the applicant bore the onus of demonstrating that its application was not confusing - See paragraphs 25 to 32.

Trademarks, Names and Designs - Topic 4414

Trademarks - Practice - Appeals or judicial review - [See Trademarks, Names and Designs - Topic 988 ].

Trademarks, Names and Designs - Topic 4424

Trademarks - Practice - Costs - Lynx Industries Inc. applied to register two trademarks for use in association with its garage door openers: "Lynxmaster" and "Lynxmaster" in a design form - Chamberlain Group Inc. opposed the application on the basis of, inter alia, confusion with trademarks previously registered by Chamberlain for the words "Liftmaster" and "Garagemaster", both for garage door openers - The Trademarks Opposition Board rejected Chamberlain's oppositions - The Federal Court allowed Chamberlain's appeal, rejecting Lynx's applications - The court refused to award costs to Chamberlain, although it had been successful - This was due to the fact that Chamberlain had changed counsel a few weeks prior to the hearing - At the hearing, Chamberlain's new counsel had presented new written argument without notice to Lynx, which required an adjournment of the hearing - As a result of the costs thrown away, Chamberlain was not entitled to its costs - See paragraph 58.

Cases Noticed:

Worldwide Diamond Trademarks Ltd. v. Canadian Jewellers Association (2010), 414 N.R. 161; 2010 FCA 326, refd to. [para. 4].

Molson Breweries, A Partnership v. Labatt (John) Ltd. et al. (2000), 252 N.R. 91; 5 C.P.R.(4th) 180 (F.C.A.), refd to. [para. 28].

Brouillette Kosie Prince v. Orange Cove-Sanger Citrus Association (2007), 322 F.T.R. 212; 2007 FC 1229, refd to. [para. 29].

Mattel Inc. v. 3894207 Canada Inc. et al., [2006] 1 S.C.R. 772; 348 N.R. 340, refd to. [para. 30].

Masterpiece Inc. v. Alavida Lifestyles Inc. (2009), 379 N.R. 180; 2009 FCA 290, leave to appeal granted (2010), 406 N.R. 392 (S.C.C.), refd to. [para. 32].

Veuve Clicquot Ponsardin v. Boutiques Cliquot ltée et al., [2006] 1 S.C.R. 824; 349 N.R. 111, refd to. [para. 35].

Beverley Bedding & Upholstery Co. v. Regal Bedding & Upholstering Ltd. (1980), 47 C.P.R.(2d) 145 (F.C.T.D.), refd to. [para. 44].

Great Atlantic & Pacific Co. of Canada v. Effem Foods Ltd. (1993), 49 C.P.R.(3d) 277 (T.M. Opp. Bd.), refd to. [para. 45].

Procter & Gamble Inc. v. Colgate-Palmolive Canada Inc. (2010), 364 F.T.R. 288; 81 C.P.R.(4th) 343 (F.C.), refd to. [para. 54].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 30(i) [para. 52].

Counsel:

J. Guy Potvin, for the applicant;

Karen Groulx, for the respondent.

Solicitors of Record:

Miltons IP, Ottawa, Ontario, for the applicant;

Pallett Valo, LLP, Mississauga, Ontario, for the respondent.

These appeals was heard at Toronto, Ontario, on December 8 and 15, 2010, by Hughes, J., of the Federal Court, who delivered the following amended reasons for judgment on December 20, 2010.