Gemological Institute of America v. Gemology Headquarters International, 2014 FC 1153

• Judge: Kane, J.
• Court: Federal Court (Canada)
• Case Date: October 28, 2014
• Jurisdiction: Canada (Federal)
• Citations: 2014 FC 1153;(2014), 469 F.T.R. 218 (FC)

Gemological Inst. v. Gemology Headquarters (2014), 469 F.T.R. 218 (FC)

MLB headnote and full text

Temp. Cite: [2014] F.T.R. TBEd. DE.016

Gemological Institute of America (applicant) v. Gemology Headquarters International (respondent)

(T-2212-12; 2014 FC 1153)

Indexed As: Gemological Institute of America v. Gemology Headquarters International

Federal Court

Kane, J.

December 2, 2014.

Summary:

The Gemological Institute of America (GIA), owner of the trademark GIA, opposed registration of the trademark GHI by the Gemology Headquarters International (GHI). Both organizations were involved in the business of grading diamonds, issuing grading certificates, etc. The Trade-Marks Opposition Board rejected the opposition on the ground that GHI established that there was no reasonable likelihood of confusion between the two trademarks. GIA appealed.

The Federal Court, following a de novo review with new evidence which would have materially affected the decision, allowed the appeal on the ground that GHI failed to establish that there was no reasonable likelihood of confusion between the two trademarks.

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - General - Conditions precedent - Lack of confusion with other marks - The Gemological Institute of America (GIA), owner of the trademark GIA, opposed registration of the trademark GHI by the Gemology Headquarters International (GHI) - Both organizations were involved in the business of grading diamonds, issuing grading certificates, etc - The Trade-Marks Opposition Board rejected the opposition on the ground that GHI established that there was no reasonable likelihood of confusion between the two trademarks - The Board determined that the two trademarks lacked inherent distinctiveness and were weak because they consisted only of letters - There was no use or promotion of GIA in Canada to enhance the distinctiveness of the GIA trademark - The Federal Court, following a de novo review with new evidence which would have materially affected the decision, allowed GIA's appeal on the ground that GHI failed to establish that there was no reasonable likelihood of confusion between the two trademarks - The new evidence addressed the Board's concern over the lack of acquired distinctiveness through lack of use and promotion in Canada - The new evidence demonstrated that the GIA trademark was more well known than the Board determined, that the target market was individual end consumers, not just wholesalers and retailers, and that the trademark was in use for decades, not just since 2003 - The Board would have approached its analysis of the strength of the GIA trademark differently had it recognized the reputation of the GIA trademark - The test for confusion was first impression based on imperfect recollection - On the basis of the new evidence, GHI failed to prove on a balance of probabilities that there was no reasonable likelihood of confusion - See paragraphs 26 to 125.

Trademarks, Names and Designs - Topic 985

Trademarks - Registration - Appeals or judicial review - Admissibility of fresh evidence - [See Trademarks, Names and Designs - Topic 706 ].

Trademarks, Names and Designs - Topic 985

Trademarks - Registration - Appeals or judicial review - Admissibility of fresh evidence - The Federal Court stated that "In order to determine whether new evidence would have materially affected the Board's decision, the Court must consider the evidence's nature and quality, taking into account its significance, probative value and reliability. ... The test is one of quality not quantity. ... the new evidence cannot be merely repetitive or supplementary to the material that was before the Board, but must add something of significance and enhance its cogency." - See paragraph 25.

Trademarks, Names and Designs - Topic 985

Trademarks - Registration - Appeals or judicial review - Admissibility of fresh evidence - [See Trademarks, Names and Designs - Topic 988 ].

Trademarks, Names and Designs - Topic 988

Trademarks - Registration - Appeals or judicial review - Scope of review of decision of registrar (incl. Opposition Board) - A trademark owner appealed a decision of the Trade-Marks Opposition Board (TMOB) that a competitor's trademark was registrable on the ground that there was no reasonable likelihood of confusion between the two trademarks - The owner appealed and relied on new evidence - The Federal Court stated that "where the Court finds that the new evidence would have materially affected the decision of the TMOB, the Court must conduct the de novo review, and it is not an option to send the matter back to the TMOB for redetermination ... On the other hand, where the Court finds that the new evidence would not have materially affected the decision, the TMOB's decision will be reviewed on a reasonableness standard and deference is owed. Where the decision is justified, transparent and intelligible and the outcome falls within a range of possible, acceptable outcomes which are defensible in accordance with the facts and the law, the decision will not be disturbed." - See paragraphs 23 to 24.

Cases Noticed:

GSW Ltd. v. Great West Steel Industries Ltd. (1975), 22 C.P.R.(2d) 154, refd to. [para. 11].

Molson Breweries, A Partnership v. Labatt (John) Ltd. et al., [2000] 3 F.C. 145; 252 N.R. 91; 2000 CanLII 17105 (C.A.), refd to. [para. 21].

CEG License Inc. v. Joey Tomato's (Canada) Inc. (2012), 424 F.T.R. 182; 2012 FC 1541, refd to. [para. 22].

Hudson's Bay Co. v. Anonim Sirketi (2013), 427 F.T.R. 73; 2013 FC 125, refd to. [para. 22].

Saint Honore Cake Shop Ltd. v. Cheung's Bakery Products Ltd., [2013] F.T.R. Uned. 635; 232 A.C.W.S.(3d) 767; 2013 FC 935, refd to. [para. 22].

Advance Magazine Publishers Inc. v. Wise Gourmet Inc. (2009), 356 F.T.R. 270; 2009 FC 1208, refd to. [para. 23].

London Drugs Ltd. v. International Clothiers Inc. (2014), 449 F.T.R. 136; 238 A.C.W.S.(3d) 203; 2014 FC 223, refd to. [para. 23].

Bojangles' International LLC et al. v. Bojangles Café Ltd. (2006), 293 F.T.R. 234; 2006 FC 657, refd to. [para. 25].

Hawke & Co. Outfitters LLC v. Retail Royalty Company et al. (2012), 424 F.T.R. 164; 2012 FC 1539, refd to. [para. 25].

Telus Corp. et al. v. Orange Personal Communications Services Ltd. (2005), 273 F.T.R. 228; 39 C.P.R.(4th) 389 (F.C.), refd to. [para. 25].

Rothmans, Benson & Hedges Inc. v. Imperial Tobacco Products Ltd. (2014), 452 F.T.R. 63; 239 A.C.W.S.(3d) 473; 2014 FC 300, refd to. [para. 25].

Vivat Holdings Ltd. v. Levi Strauss & Co. (2005), 276 F.T.R. 40; 139 A.C.W.S.(3d) 93; 2005 FC 707, refd to. [para. 25].

Brouillette Kosie Prince v. Orange Cove-Sanger Citrus Association (2007), 322 F.T.R. 212; 2007 FC 1229, refd to. [para. 25].

Chamberlain Group Inc. v. Lynx Industries Inc. (2010), 379 F.T.R. 270; 2010 FC 1287, refd to. [para. 25].

Masterpiece Inc. v. Alavida Lifestyles Inc., [2011] 2 S.C.R. 387; 416 N.R. 307; 2011 SCC 27, refd to. [para. 46].

Mattel Inc. v. 3894207 Canada Inc. et al., [2006] 1 S.C.R. 772; 348 N.R. 340; 2006 SCC 22, refd to. [para. 85].

Canada Post Corp. v. Paxton Developments Inc. (2000), 198 F.T.R. 72; 101 A.C.W.S.(3d) 1160 (T.D.), refd to. [para. 91].

Lee Canada Inc. v. Jones Investments co. (2008), 71 C.P.R.(4th) 112 (T.M.O.B.), refd to. [para. 92].

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. 105].

Counsel:

Daniel M. Anthony, for the applicant;

Janet M. Fuhrer, for the respondent.

Solicitors of Record:

Smart & Biggar, Ottawa, Ontario, for the applicant;

Ridout & Maybee LLP, Ottawa, Ontario, for the respondent.

This appeal was heard on October 28, 2014, at Ottawa, Ontario, before Kane, J., of the Federal Court, who delivered the following judgment on December 2, 2014.