ConAgra Inc. v. McCain Foods Ltd., (2001) 210 F.T.R. 227 (TD)

• Judge: Blais, J.
• Court: Federal Court (Canada)
• Case Date: May 29, 2001
• Jurisdiction: Canada (Federal)
• Citations: (2001), 210 F.T.R. 227 (TD)

ConAgra Inc. v. McCain Foods (2001), 210 F.T.R. 227 (TD)

MLB headnote and full text

Temp. Cite: [2001] F.T.R. TBEd. SE.010

ConAgra Inc. (applicant) v. McCain Foods Limited (respondent)

(T-1501-00; 2001 FCT 963)

Indexed As: ConAgra Inc. v. McCain Foods Ltd.

Federal Court of Canada

Trial Division

Blais, J.

August 29, 2001.

Summary:

McCain Foods applied to register the trademark "Healthy Decisions" for use in association with its line of mostly frozen food products. ConAgra, which sold similar food products under trademarks incorporating the words "Healthy Choice", opposed registration on the grounds of, inter alia, confusion (Trade-marks Act, s. 16(3)) and nondistinctiveness (s. 30). The Registrar of Trade-marks allowed the opposition in part. ConAgra established a likelihood of confusion respecting overlapping products sold by each. No confusion was found respecting products sold by McCain (e.g. frozen juice, juice bars, etc.) which ConAgra did not sell (unrelated wares). Accordingly, registration of the trademark "Healthy Decision" was allowed for these latter products. ConAgra appealed.

The Federal Court of Canada, Trial Division, allowed the appeal, set aside the decision and directed that McCain's registration application be dismissed in its entirety. Given that the "unrelated wares" were not intrinsically different, were sold in the same section or aisle of the grocery store (or in close proximity) and were marketed in similar fashion, the Registrar's failure to find a reasonable likelihood of confusion between the trademarks respecting the "unrelated wares" was unreasonable.

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - General - Conditions precedent - Lack of confusion with other marks - McCain Foods applied to register the trademark "Healthy Decisions" for use in association with its line of food products - ConAgra, which sold similar products under trademarks incorporating the words "Healthy Choice", opposed registration on the ground of confusion (Trade-marks Act, s. 16(3)) - The Registrar of Trade-marks allowed the opposition in part - ConAgra established a likelihood of confusion respecting overlapping products sold by each - No confusion was found respecting products sold by McCain (e.g. frozen juice, juice bars, etc.) which ConAgra did not sell (unrelated wares) - Accordingly, registration of the trademark "Healthy Decision" was allowed for these latter products - ConAgra appealed - The Federal Court of Canada, Trial Division, allowed the appeal and directed that McCain's registration application be dismissed in its entirety - Given that the "unrelated wares" were not intrinsically different, were sold in the same section or aisle of the grocery store (or in close proximity) and were marketed in similar fashion, the Registrar's failure to find a reasonable likelihood of confusion between the trademarks respecting the "unrelated wares" was unreasonable.

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - General - Conditions precedent - Lack of confusion with other marks - McCain Food filed an application for registration of a trademark in 1994 - ConAgra opposed registration on the ground of confusion with its prior pending trademarks - The Registrar, in assessing confusion, considered ConAgra's 1999 abandonment of certain trademark applications - ConAgra submitted that the Trade-marks Act did not require that the prior pending applications be in good standing at the time of the Registrar's decision - The Federal Court of Canada, Trial Division, stated that "had the intention of the legislator been that the abandonment of the application be considered at the time of the decision, it would have stated so" - The Registrar erred in considering the 1999 abandonment of certain trademark applications in assessing the likelihood of confusion as of the 1994 date of McCain's filing of its application - See paragraphs 84 to 116.

Trademarks, Names and Designs - Topic 988

Trademarks - Registration - Appeals - Scope of review of decision of registrar - The Federal Court of Canada, Trial Division, referred to the scope of review of a Registrar's decision as follows: "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." - See paragraph 151.

Cases Noticed:

Molson Breweries, A Partnership v. Labatt Brewing Co. (1996), 115 F.T.R. 33; 68 C.P.R.(3d) 202 (T.D.), refd to. [para. 41].

Demerino v. Liv Group Inc., trading as the Panhandler Shoppes (1984), 4 C.P.R.(3d) 400 (T.M.O.B.), refd to. [para. 95].

Unitel International Inc. v. Registrar of Trademarks (2000), 261 N.R. 95 (F.C.A.), refd to. [para. 111].

Prologic Systems Ltd. v. Prologic Corp. (1998), 141 F.T.R. 72; 78 C.P.R.(3d) 435 (T.D.), refd to. [para. 120].

United Artists Corp. v. Pink Panther Beauty Corp. et al., [1998] 3 F.C. 534; 225 N.R. 82 (F.C.A.), refd to. [para. 122].

Oshawa Group Ltd. v. Creative Resources Co. (1982), 46 N.R. 426; 61 C.P.R.(2d) 29 (F.C.A.), refd to. [para. 147].

Miss Universe Inc. v. Bohna (1994), 176 N.R. 35; 58 C.P.R.(3d) 381 (F.C.A.), refd to. [para. 149].

Molson Breweries, A Partnership v. Labatt (John) Ltd. et al. (2000), 252 N.R. 91 (F.C.A.), refd to. [para. 151].

Garbo Group Inc. v. Brown (Harriet) & Co. et al. (1999), 176 F.T.R. 80; 3 C.P.R.(4th) 224 (T.D.), refd to. [para. 152].

Clorox Co. v. Sears Canada Inc. (1992), 53 F.T.R. 105 (T.D.), dist. [para. 158].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 6(2) [para. 85]; sect. 6(5) [paras. 86, 121]; sect. 16(3) [para. 84].

Counsel:

Mirko Bibic and Justine Whitehead, for the applicant;

Colleen Spring-Zimmerman, for the respondent.

Solicitors of Record:

Stikeman Elliott, Ottawa, Ontario, for the applicant;

Fasken Martineau DuMoulin LLP, Toronto, Ontario, for the respondent.

This appeal was heard on May 29, 2001, at Ottawa, Ontario, before Blais, J., of the Federal Court of Canada, Trial Division, who delivered the following judgment on August 29, 2001.