J.C. Penney Co. v. Gaberdine Clothing Co., (2001) 213 F.T.R. 189 (TD)

• Judge: Nadon, J.
• Court: Federal Court (Canada)
• Case Date: May 14, 2001
• Jurisdiction: Canada (Federal)
• Citations: (2001), 213 F.T.R. 189 (TD)

JC Penney Co. v. Gaberdine Clothing (2001), 213 F.T.R. 189 (TD)

MLB headnote and full text

Temp. Cite: [2001] F.T.R. TBEd. DE.051

J.C. Penney Company Inc. (applicant) v. Gaberdine Clothing Co. Inc. (respondent)

(T-282-00; 2001 FCT 1333)

Indexed As: J.C. Penney Co. v. Gaberdine Clothing Co.

Federal Court of Canada

Trial Division

Nadon, J.

December 4, 2001.

Summary:

The applicant applied pursuant to s. 57(1) of the Trade-marks Act for expungement of the respondent's registered trademark "Arizona Blues Jeanswear Co." on the ground that at the filing date of the respondent's application (December 21, 1993), the applied for mark was confusing with the trademark "The Original Arizona Jean Company", previously used or made known in Canada by the applicant (s. 16(3)).

The Federal Court of Canada, Trial Division, granted the expungement application. The court found that the applicant used its trademark in Canada prior to December 21, 1993, and that the respondent's trademark was confusing with the applicant's trademark when the respondent applied for registration of its trademark.

Trademarks, Names and Designs - Topic 889.2

Trademarks - Registration - Expungement of mark - Grounds - Prior use - The applicant applied for expungement of the respondent's registered trademark "Arizona Blues Jeanswear Co." on the ground that at the filing date of the respondent's application, the applied for mark was confusing with the trademark "The Original Arizona Jean Company", previously used or made known in Canada by the applicant (Trade-marks Act, s. 16(3)) - In considering whether the applicant had established previous use of its trademark in Canada, the Federal Court of Canada, Trial Division, stated that evidence of distribution of the applicant's catalogue in Canada, in which wares bearing the trademark "The Original Arizona Jean Company" were advertised, was not relevant as the advertisement of the wares alone did not constitute use of the trademark - See paragraph 76.

Trademarks, Names and Designs - Topic 889.2

Trademarks - Registration - Expungement of mark - Grounds - Prior use - The applicant applied for expungement of the respondent's registered trademark "Arizona Blues Jeanswear Co." on the ground that at the filing date of the respondent's application, the applied for mark was confusing with the trademark "The Original Arizona Jean Company", previously used or made known in Canada by the applicant (Trade-marks Act, s. 16(3)) - The Federal Court of Canada, Trial Division, held that 19 invoices put into evidence by the applicant were not sufficient to establish prior use of the applicant's trademark because they did not prove that at the time of the sale, the trademark was associated with the wares so that notice of the association was given as required by s. 4(1) of the Act - The invoices did not establish that any of the items purchased displayed the applicant's trademark - It was not sufficient that the trademark was displayed in the applicant's catalogue - The invoices also did not indicate whether the products were delivered to Canadian addresses or were picked up at one of the applicant's stores in the United States (which would not be considered use of the trademark in Canada) - See paragraphs 78 to 85.

Trademarks, Names and Designs - Topic 889.2

Trademarks - Registration - Expungement of mark - Grounds - Prior use - The applicant applied for expungement of the respondent's registered trademark "Arizona Blues Jeanswear Co." on the ground that at the filing date of the respondent's application, the applied for mark was confusing with the trademark "The Original Arizona Jean Company", previously used or made known in Canada by the applicant (Trade-marks Act, s. 16(3)) - The Federal Court of Canada, Trial Division, held that evidence of two individual sales was sufficient to constitute use of the applicant's trademark in the normal course of trade in Canada and the applicant had succeeded in showing previous use - See paragraphs 86 to 94.

Trademarks, Names and Designs - Topic 889.2

Trademarks - Registration - Expungement of mark - Grounds - Prior use - The applicant applied for expungement of the respondent's registered trademark "Arizona Blues Jeanswear Co." on the ground that at the filing date of the respondent's application (December 21, 1993), the applied for mark was confusing with the trademark "The Original Arizona Jean Company", previously used or made known in Canada by the applicant (Trade-marks Act, s. 16(3)) - The Federal Court of Canada, Trial Division, held that there was insufficient evidence to establish that the applicant's trademark was well known in Canada prior to December 21, 1993 - Evidence that 31 items of clothing of "The Original Arizona Jean Company" brand were sold to 19 Canadian customers was not sufficient - While the applicant also adduced evidence that its trademark was advertised in its catalogue which was sent to Canadians, there was no evidence that the catalogues were read by the recipients or that the recipients, after reading the catalogue, became familiar with the trademark - Finally, while affidavit evidence established that three people were familiar with the applicant's trademark at the relevant time, familiarity of three persons with the trademark was insufficient to demonstrate that knowledge of the trademark pervaded Canada to a substantial extent - See paragraphs 95 to 100.

Trademarks, Names and Designs - Topic 889.2

Trademarks - Registration - Expungement of mark - Grounds - Prior use - With respect to establishing prior use of a trademark, the Federal Court of Canada, Trial Division, stated that "use of a trademark cannot be measured by the number of sales or the quantity of wares sold in association with the trademark. That is why, in my view, a single sale may suffice to prove use of a trademark. The sale or sales must be examined in the light of all of the surrounding circumstances. The [Trade-marks] Act does not impose any requirements concerning the length or extent of use of the trademarks. Subsection 4(1) of the Act simply requires that the trademark be used in association with wares in the normal course of trade" - See paragraph 92.

Trademarks, Names and Designs - Topic 889.5

Trademarks - Registration - Expungement of mark - Grounds - Confusion - The applicant applied for expungement of the respondent's registered trademark "Arizona Blues Jeanswear Co." on the ground that at the filing date of the respondent's application, the applied for mark was confusing with the trademark "The Original Arizona Jean Company", previously used or made known in Canada by the applicant (Trade-marks Act, s. 16(3)) - With respect to the issue of whether the respondent's trademark was confusing with the applicant's trademark, the applicant submitted that the fact that the Registrar of Trade-marks had refused to allow its trademark to proceed to advertisement on the ground that it was confusing with the respondent's trademark should be taken into consideration and given substantial weight - The Federal Court of Canada, Trial Division, stated that a letter sent to the applicant by the Registrar was only a preliminary notice indicating the possibility of confusion and it did not indicate that the Registrar had evaluated the factors listed in s. 6(5) of the Act and determined that there would be a likelihood of confusion - Consequently, the Registrar's letter carried little weight - See paragraphs 118 to 120.

Trademarks, Names and Designs - Topic 889.5

Trademarks - Registration - Expungement of mark - Grounds - Confusion - The applicant applied for expungement of the respondent's registered trademark "Arizona Blues Jeanswear Co." on the ground that at the filing date of the respondent's application, the applied for mark was confusing with the trademark "The Original Arizona Jean Company", previously used or made known in Canada by the applicant (Trade-marks Act, s. 16(3)) - With respect to the issue of whether the respondent's trademark was confusing with the applicant's trademark, the respondent relied on the lack of evidence of actual confusion - The Federal Court of Canada, Trial Division, stated that evidence of actual confusion was relevant, but it was not essential since it was the likelihood of confusion which had to be assessed - The absence of evidence of actual confusion did not signify that there was no likelihood of confusion - See paragraph 121.

Trademarks, Names and Designs - Topic 889.5

Trademarks - Registration - Expungement of mark - Grounds - Confusion - The applicant applied for expungement of the respondent's registered trademark "Arizona Blues Jeanswear Co." on the ground that at the filing date of the respondent's application, the applied for mark was confusing with the trademark "The Original Arizona Jean Company", previously used or made known in Canada by the applicant (Trade-marks Act, s. 16(3)) - With respect to the issue of confusion, the Federal Court of Canada, Trial Division, stated that "taking into consideration the factors enumerated at s. 6(5) of the Act, as well as the surrounding circumstances, an ordinary person having a vague recollection of the respondent's trademark ... would be likely to infer that the wares associated with this trademark originate from the same source as the wares associated with the applicant's trademark ... The similarity in the words used in both expressions as well as the striking similarity in the nature of the wares lead me to believe that a person having an imperfect recollection of both trademarks would be confused as to the source of the wares" - See paragraphs 123 to 124.

Trademarks, Names and Designs - Topic 890

Trademarks - Registration - Expungement of mark - Evidence and proof - [See all Trademarks, Names and Designs - Topic 889.2 and first and second Trademarks, Names and Designs - Topic 889.5 ].

Cases Noticed:

Solavoid Trademark, Re, [1977] R.P.C. 1 (P.C.), refd to. [para. 43].

Clairol International Corp. et al. v. Thomas Supply & Equipment Co. Ltd. et al., [1968] 2 Ex.C.R. 552; 55 C.P.R. 176; 38 Fox Pat. C. 176, refd to. [para. 51].

Robert C. Wian Enterprises Inc. v. Mady, [1965] 2 Ex. C.R. 3, refd to. [para. 52].

Sim & McBurney v. Majdell Manufacturing Co. and Registrar of Trademarks (1986), 7 F.T.R. 54; 11 C.P.R.(3d) 306 (T.D.), refd to. [para. 53].

Sequa Chemicals Inc. v. United Color and Chemicals Ltd. (1993), 165 N.R. 316; 53 C.P.R.(3d) 216 (F.C.A.), refd to. [para. 53].

Marineland Inc. v. Marine Wonderland and Animal Park Ltd. (1974), 16 C.P.R.(2d) 97 (F.C.T.D.), refd to. [para. 56].

United States Shoe Corp. v. Première Vision Inc. (1990), 33 C.P.R.(3d) 353 (T.M.O.B.), refd to. [para. 56].

Casual Corner of America v. Casual Corner Ltd. (1985), 5 C.P.R.(3d) 503 (T.M.O.B.), refd to. [para. 59].

Proctor & Gamble Co. v. Kiwi Polish Co. (Canada) Ltd. (1985), 5 C.I.P.R. 177 (T.M.O.B.), refd to. [para. 59].

Brown Group Inc. v. St. Thomas Marketing Inc. (1996), 72 C.P.R.(3d) 259 (T.M.O.B.), refd to. [para. 59].

Johnson (S.C.) & Son Inc. v. Esprit De Corp. and Registrar of Trademarks (1987), 8 F.T.R. 81; 13 C.P.R.(3d) 235 (T.D.), refd to. [para. 60].

Saks & Co. v. Alphi Apparel Group Inc. (1997), 82 C.P.R.(3d) 100 (T.M.O.B.), refd to. [para. 60].

Tritap Food Broker v. Kraft General Foods Canada et al. (1999), 162 F.T.R. 89; 86 C.P.R.(3d) 197 (T.D.), refd to. [para. 62].

Restaurant Bar-B Inc. v. Bernard Matthews P.L.C. (1996), 69 C.P.R.(3d) 540 (T.M.O.B.), refd to. [para. 62].

Molson Cos. Ltd. v. Corby Distilleries Ltd. (1987), 18 C.P.R.(3d) 55 (T.M.O.B.), refd to. [para. 62].

80761 Canada Ltd. v. Reitman's (Canada) Ltd. (1994), 55 C.P.R.(3d) 529 (T.M.O.B.), refd to. [para. 62].

Laurentide Chemicals Inc. v. Marchants Deco Inc. et al. (1985), 7 C.P.R.(3d) 357 (F.C.T.D.), refd to. [para. 64].

Unitel Communications Inc. v. Bell Canada (1995), 92 F.T.R. 161; 61 C.P.R.(3d) 12 (T.D.), refd to. [para. 67].

Havana House Cigar & Tobacco Merchants Ltd. et al. v. Skyway Cigar Store (1998), 147 F.T.R. 54; 81 C.P.R.(3d) 203 (T.D.), refd to. [para. 72].

Parker-Knoll Ltd. v. Registrar of Trade Marks (1977), 32 C.P.R.(2d) 148 (F.C.T.D.), refd to. [para. 75].

Saks & Co. v. Registrar of Trademarks et al. (1989), 25 F.T.R. 65; 24 C.P.R.(3d) 49, refd to. [para. 83].

Morris (Philip) Inc. v. Imperial Tobacco Ltd. (1987), 8 F.T.R. 310; 13 C.P.R.(3d) 289 (T.D.), refd to. [para. 88].

Mr. Goodwrench Inc. v. General Motors Corp. (1994), 77 F.T.R. 142; 55 C.P.R.(3d) 508 (T.D.), refd to. [para. 89].

Prologic Systems Ltd. v. Prologic Corp. (1998), 141 F.T.R. 72; 78 C.P.R.(3d) 435 (T.D.), refd to. [para. 102].

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. 104].

Oshawa Group Ltd. v. Creative Resources Co. (1982), 61 C.P.R.(2d) 29 (F.C.A.), refd to. [para. 116].

Miss Universe Inc. v. Bohna (1994), 176 N.R. 35; 58 C.P.R.(3d) 381 (F.C.A.), refd to. [para. 122].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 4(1) [para. 71]; sect. 5 [para. 95]; sect. 16(3) [para. 68].

Authors and Works Noticed:

Hughes on Trade Marks (1984), §28 [para. 119].

Counsel:

Glen B. Tremblay, for the applicant;

Michael D. Worsoff, for the respondent.

Solicitors of Record:

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

Gross, Pinsky, Montreal, Quebec, for the respondent.

This application was heard on May 14, 2001, at Ottawa, Ontario, before Nadon, J., of the Federal Court of Canada, Trial Division, who delivered the following decision on December 4, 2001.