Ottawa Athletic Club Inc. v. Athletic Club Group Inc. et al., (2014) 459 F.T.R. 39 (FC)

• Judge: Russell, J.
• Court: Federal Court (Canada)
• Case Date: January 13, 2014
• Jurisdiction: Canada (Federal)
• Citations: (2014), 459 F.T.R. 39 (FC);2014 FC 672

Ottawa Athletic Club v. Athletic Club Group (2014), 459 F.T.R. 39 (FC)

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[French language version follows English language version]

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

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Temp. Cite: [2014] F.T.R. TBEd. JL.047

Ottawa Athletic Club Inc. d.b.a. The Ottawa Athletic Club (applicant) v. The Athletic Club Group Inc. and The Registrar of Trade-Marks (respondents)

(T-1396-11; 2014 FC 672; 2014 CF 672)

Indexed As: Ottawa Athletic Club Inc. v. Athletic Club Group Inc. et al.

Federal Court

Russell, J.

July 9, 2014.

Summary:

The applicant, the Ottawa Athletic Club, had been operating a fitness facility in Ottawa since at least 1976, offering a range of athletic and fitness services. It claimed to have used the trade name and trademark "Ottawa Athletic Club" continuously since that time. The respondent, the Athletic Club Group Inc. (or its predecessors in title), established its first fitness facility in London, Ontario, in 1997, and had since opened other facilities in Ontario, including three in Ottawa. In July 2003, the respondent applied to register the trademark, The Athletic Club & Design. The trademark was registered on February 22, 2005. The applicant applied under s. 57 of the Trade-marks Act to strike the trademark from the register kept under s. 26 of the Act (Register), or in the alternative to amend the Register to narrow the scope of the registration. The applicant also requested a prohibition on any future use of the allegedly invalid trademark or its common law equivalent on the grounds that it offended ss. 10 and 11 of the Act.

The Federal Court declared the trademark invalid and ordered that: (a) the entry in the Canadian Trade-marks Register for the Athletic Club trademark would be struck out on the ground that it did not accurately express or define the existing rights of the person appearing to be the registered owner of the mark (Act, s. 57(1)); (b) the respondent was permanently prohibited from using, directly or via licence, the Athletic Club trademark and its common law equivalent (ss. 53.2, 10 and 11); and (c) the applicant was awarded its costs of the proceedings.

Agency - Topic 4284

Relations between principal and third parties - Notice - Notice to agent imputed to principal - [See Evidence - Topic 51 ].

Evidence - Topic 51

Best evidence rule - General - The applicant, the Ottawa Athletic Club, had been operating a fitness facility in Ottawa since at least 1976 offering a range of athletic and fitness services - It claimed to have used the trade name and trademark "Ottawa Athletic Club" continuously since that time - The respondent, the Athletic Club Group Inc. (or its predecessors in title), established its first fitness facility in London, Ontario, in 1997, and had since opened other facilities in Ontario, including three in Ottawa - In July 2003, the respondent applied to register the trademark, The Athletic Club & Design - The trademark was registered in February 2005 - The applicant applied to expunge the trademark from the Register - As the application was brought more than five years after registration, the applicant could only seek to invalidate the respondent's trademark based on confusion with its own trademark or trade name if the respondent had actual knowledge of previous use by the applicant (Trade-marks Act, s. 17(2)) - The applicant claimed that actual knowledge was established by: (1) the presence of a NUANS corporate name search in the incorporating documents of the respondent's predecessor company (now subsidiary), signed by Quesnel and Wu and dated June 25, 1997, which listed the Ottawa Athletic Club; and (2) the failure of the respondent's affiant, Kelly, to provide satisfactory responses regarding whether Quesnel and Wu knew of this search when they signed the incorporating documents - The Federal Court held that actual knowledge had not been established - While the respondent had chosen not to adduce the best evidence available, a negative inference should not be imputed - The applicant did not introduce evidence of the NUANS search - While an adverse inference could strengthen weak evidence or turn a prima facie case into a conclusive one, it could not enable the party bearing the burden of proof to overcome a complete lack of evidence on the point at issue - There had to be a case to answer before the respondent was required to introduce the best evidence or risk an inference that did not favour their position - Perhaps most crucially, the applicant failed to follow the proper procedure to require the respondent to disclose relevant documents in its possession in connection with Kelly's cross-examination - It was Kelly's affidavit that put the respondent's prior knowledge of the applicant and its trade name at issue - Thus, it appeared that the applicant would have been within its rights to demand, through a Direction to Attend, that the respondent search its records for relevant documents, including any NUANS searches associated with its various incorporations - Having failed to do so, there was no mechanism for the court to require such disclosures based on requests made at or after the cross-examination - Apart from the applicant's general assertion that someone in Quensel's position must have known about the applicant, there was really nothing to support an imputed knowledge finding - Further, the solicitor's knowledge of the NUANS search should not be imputed to the respondent's principals - There was not sufficient evidence on the record to say that the information was material to the respondent's incorporation or that such a duty arose; therefore the applicant had not established constructive knowledge - The court opined that it was possible that constructive knowledge of the NUANS search (knowledge of the agent imputed to the principal) could constitute constructive knowledge of the prior use of a confusing trademark or trade name (in that the respondent ought to have known or made inquiries) - See paragraphs 85 to 180.

Evidence - Topic 3004

Documentary evidence - General - Best evidence rule - [See Evidence - Topic 51 ].

Evidence - Topic 4714

Witnesses - Examination - Cross-examination - Of affiants - The Federal Court stated that "The scope of cross-examination on an affidavit has long been contentious, and the Court's answer to the question has varied over time ... However the proper scope of cross-examination on an affidavit is defined, the affiant is required to answer fair and legally relevant questions that come within that scope." - See paragraphs 130 to 133.

Evidence - Topic 4714

Witnesses - Examination - Cross-examination - Of affiants - The Federal Court stated that "There is ... an obligation to answer questions a party undertakes to answer during the course of the cross-examination ... However, the witness is under no obligation to make such undertakings, or to answer questions that were merely taken under advisement ... Undertakings to disclose documents must also be honoured, and a response to a question taken under advisement can constitute an implied undertaking ... [A]n affiant 'cannot be required to inform him or herself,' in contrast to a deponent in an examination for discovery, who is obligated to seek out answers to relevant questions to which they do not know the answer. While there was some earlier jurisprudence to the opposite effect ..., this now appears to be the established view ... . The limitations of the affiant's knowledge may affect the credibility of their evidence or the weight given to it, but the witness cannot be compelled to find answers that are not within their knowledge ... . 'I don't know' is an acceptable response." - See paragraphs 134 to 137.

Evidence - Topic 4714

Witnesses - Examination - Cross-examination - Of affiants - The Federal Court discussed an affiant's obligation to disclose documents in connection with a cross-examination - See paragraphs 138 to 141.

Practice - Topic 3687

Evidence - Affidavits - Use of - Cross-examination - [See all Evidence - Topic 4714 ].

Trademarks, Names and Designs - Topic 261

Trademarks - What trademarks registrable - Prohibition - Marks which are descriptive of the product - The applicant applied to have the respondent's trademark expunged from the Trade-marks Register - It was a composite mark consisting of an oval design containing the words "The Athletic Club" in stylized form for which the words had been disclaimed - The applicant argued that the Athletic Club trademark was invalid because, inter alia, it was not registrable on the date of registration, because it was descriptive or deceptively misdescriptive of the character or quality of the wares or services in association with which the trademark was used - The Federal Court agreed - Where a composite mark, when sounded, contained word elements (even if disclaimed) that were clearly descriptive or deceptively misdescriptive, that mark would be unregistrable by virtue of s. 12(1)(b) of the Trade-marks Act if the words were the dominant feature of the mark - The court rejected the respondent's position that the Athletic Club trademark could not be invalidated under s. 12(1)(b) because the word portion of the trademark was disclaimed, the words were not the dominant feature, and the words were not, in any event, clearly descriptive or deceptively misdescriptive of the character or quality of the wares or services in association with which the trademark was used - The fact that some of the listed wares and services (e.g., restaurant and tanning services) were not necessarily connected to the athletic and physical fitness meaning of the words did not prevent invalidation under s. 12(1)(b) - See paragraphs 181 to 189.

Trademarks, Names and Designs - Topic 261

Trademarks - What trademarks registrable - Prohibition - Marks which are descriptive of the product - The Federal Court held that "... in an expungement proceeding under the current [Trade-marks] Act, there are two potentially relevant dates when non-compliance with s. 12(1)(b) is alleged: 1. The relevant date for determining whether a trade-mark was invalidly registered because it was 'clearly descriptive or deceptively misdescriptive' of the products or services in association with which it is used (i.e. the s. 12(1)(b) test) is the date of registration ...; or 2. To the extent that the 'saving provision' is being invoked to argue that the trade-mark was registrable despite non-compliance with s. 12(1)(b) on the basis that it had been 'so used in Canada by the applicant or his predecessor in title as to have become distinctive,' ... use after the date of registration so as to make the mark distinctive is of no avail where the basis for the expungement is descriptiveness. However, under the current Act, 'acquired distinctiveness' through use is to be assessed as at the date of the application for registration, not the date of registration itself. This differs from the relevant point in time for assessing an alleged lack of distinctiveness under s. 18(1)(b), which is judged as of the date the expungement proceeding was initiated." - See paragraphs 190 to 199.

Trademarks, Names and Designs - Topic 261

Trademarks - What trademarks registrable - Prohibition - Marks which are descriptive of the product - The applicant applied to have the respondent's trademark expunged from the Register on the ground, inter alia, that it was clearly descriptive or deceptively misdescriptive (Trade-marks Act, s. 12(1)(b)) - Section 12(2) of the Act provided that "A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration." - The Federal Court noted that the party seeking expungement of a trademark generally bore the onus of demonstrating that the entry should be expunged from the Register - However, the court held that, should the respondent want to "invoke" s. 12(2), it bore the onus of presenting evidence to show that distinctiveness within the meaning of that section had been acquired by the relevant date - See paragraphs 200 and 203.

Trademarks, Names and Designs - Topic 262

Trademarks - What trademarks registrable - Prohibition - Marks which are deceptively misdescriptive - [See all Trademarks, Names and Designs - Topic 261 ].

Trademarks, Names and Designs - Topic 264.5

Trademarks - What trademarks registrable - Prohibition - Marks that are the names of the wares or services in connection with which they are used - The respondent's trademark was a composite mark consisting of an oval design containing the words "The Athletic Club" in stylized form for which the words had been disclaimed - The applicant applied to have the respondent's trademark expunged from the Register on the ground that it was invalid because, inter alia, as of February 22, 2005, when it was registered, it contravened s. 12(1)(c) of the Trade-marks Act and was, therefore, not registrable - The Federal Court agreed - The words "athletic club" were entirely inseparable from the services being offered at the respondent's establishments and at other athletic clubs, and the design features were not sufficient to render the trademark distinctive in a way that took it outside the prohibition in s. 12(1)(c) - While not all of the services offered by the respondent would be called "athletic" if considered in isolation, they were the services of an "athletic club" - Furthermore, s. 12(1)(c) prohibited the registration of a trademark where it was "the name in any language of any of the wares or services in connection with which it was used or proposed to be used" - "Athletic club" was the name of the respondent's services considered in their context - See paragraphs 224 to 230.

Trademarks, Names and Designs - Topic 264.8

Trademarks - What trademarks registrable - Prohibition - Likely to be mistaken for mark already in commercial use - The applicant applied to have the respondent's trademark expunged from the Register - It was a composite mark consisting of an oval design containing the words "The Athletic Club" in stylized form for which the words had been disclaimed - The applicant argued that the Athletic Club trademark was invalid because, inter alia, it was not registrable on the date of registration, by virtue of s. 10 of the Trade-marks Act - Section 10 provided that "Where any mark has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services, no person shall adopt it as a trade-mark in association with such wares or services or others of the same general class or use it in a way likely to mislead, nor shall any person so adopt or so use any mark so nearly resembling that mark as to be likely to be mistaken therefor" - The Federal Court held that "likely to be mistaken for" under s. 10 was a narrower category (and thus set a higher threshold) than "confusion" under s. 16, which cast a broader net - However, the jurisprudence under s. 10 still employed the concept of "dominance" to determine whether any "distinguishing features" of a trade-mark were sufficient that it would not be mistaken for a "designator" mark - The court held that the respondent's trademark was prohibited under s. 10 - See paragraphs 279 to 320.

Trademarks, Names and Designs - Topic 265

Trademarks - What trademarks registrable - Distinctive marks - General - [See second and third Trademarks, Names and Designs - Topic 261 ].

Trademarks, Names and Designs - Topic 265

Trademarks - What trademarks registrable - Distinctive marks - General - The applicant applied to have the respondent's trademark expunged from the Register on the ground, inter alia, that it was clearly descriptive or deceptively misdescriptive (s. 12(1)(b)) - It was a composite mark consisting of an oval design containing the words "The Athletic Club" in stylized form for which the words had been disclaimed - The applicant argued that the Athletic Club trademark was invalid because, inter alia, it was not registrable on the date of registration because it was descriptive or deceptively misdescriptive of the character or quality of the wares or services in association with which the trademark was used - The Federal Court agreed - The court rejected the respondent's argument that the word portion of the trademark was not dominant and that it was the design as a whole that was distinctive - The dominant and influential feature on first impression was the declaimed words "The Athletic Club." - There was nothing distinctive about the oval backer portion of the trademark or the script to suggest that consumers would identify the trademark by those design aspects rather than the words - The respondent had declaimed the words, but the words remained the trademark's dominant and influential feature - The oval and script did not stimulate visual interest in a way that removed visual dominance from the words, and simply enclosing the words in a simple border could not create a right to prevent others from doing so - See paragraph 186.

Trademarks, Names and Designs - Topic 265

Trademarks - What trademarks registrable - Distinctive marks - General - The applicant applied to have the respondent's trademark expunged from the Register on the ground, inter alia, that it was clearly descriptive or deceptively misdescriptive (Trade-marks Act, s. 12(1)(b)) - It was a composite mark consisting of an oval design containing the words "The Athletic Club" in stylized form for which the words had been disclaimed - The applicant argued that the Athletic Club trademark was invalid because, inter alia, it was not registrable on the date of registration because it was descriptive or deceptively misdescriptive of the character or quality of the wares or services in association with which the trademark was used - The Federal Court agreed - The court rejected the respondent's argument that the trademark had acquired distinctiveness as at the date of filing in accordance with s. 12(2) of the Act - See paragraphs 207 to 223.

Trademarks, Names and Designs - Topic 701

Trademarks - Registration - General - [See Trademarks, Names and Designs - Topic 709 ].

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - General - Conditions precedent - Lack of confusion with other marks - [See Trademarks, Names and Designs - Topic 709 ].

Trademarks, Names and Designs - Topic 709

Trademarks - Registration - General - Effect of registration - Section 10 of the Trade-marks Act provided that "Where any mark has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services, no person shall adopt it as a trade-mark in association with such wares or services or others of the same general class or use it in a way likely to mislead, nor shall any person so adopt or so use any mark so nearly resembling that mark as to be likely to be mistaken therefor" - The Federal Court stated that "Section 10 itself says nothing about registration. It prohibits the adoption or use of certain trade-marks in the circumstances it describes. Disclaimers upon registration have no relevance to this. As Hughes points out, registration does not create rights to adopt or use a trade-mark so much as it serves as presumptive evidence that such rights exist: 'It is not registration that makes a party proprietor of a trade-mark; he or she must be a proprietor before he or she can register ... Registration creates a rebuttable presumption as to rights which can be displaced by other evidence, such as that of contractual obligation.' Hughes on Trade Marks, above, at p. 601. Thus, ... whether one disclaims certain words when registering a trade-mark has no bearing on whether one had a legal right to adopt it in the first place. The question is simply whether there is a prohibited mark that is so similar to the proposed mark that the latter would be mistaken for the former." - See paragraphs 241, 242 and 251.

Trademarks, Names and Designs - Topic 881

Trademarks - Registration - Expungement of mark - General - The Federal Court stated that "While framed as an application, an expungement proceeding under s. 57 of the [Trade-marks] Act is neither a judicial review nor an appeal, but rather an exercise of the Court's original jurisdiction. There is therefore no standard of review to be applied. The Court is to approach the issues with a fresh mind ..." - See paragraph 13.

Trademarks, Names and Designs - Topic 889.1

Trademarks - Registration - Expungement of mark - Grounds - Loss of distinctiveness (incl. non-distinctiveness) - [See second and third Trademarks, Names and Designs - Topic 261 and second Trademarks, Names and Designs - Topic 265 ].

Trademarks, Names and Designs - Topic 889.2

Trademarks - Registration - Expungement of mark - Grounds - Prior use - [See Evidence - Topic 51 ].

Trademarks, Names and Designs - Topic 889.5

Trademarks - Registration - Expungement of mark - Grounds - Confusion - [See Evidence - Topic 51 ].

Trademarks, Names and Designs - Topic 890

Trademarks - Registration - Expungement of mark - Evidence and proof - [See third Trademarks, Names and Designs - Topic 261 ].

Trademarks, Names and Designs - Topic 895

Trademarks - Registration - Expungement of mark - Jurisdiction - [See Trademarks, Names and Designs - Topic 881 ].

Words and Phrases

Likely to be mistaken for - The Federal Court discussed the meaning of this phrase as found in s. 10 of the Trade-marks Act, R.S.C. 1985, c. T-13 - See paragraphs 312 to 314.

Cases Noticed:

Omega Engineering Inc. v. Omega SA (2006), 311 F.T.R. 171; 2006 FC 1472, refd to. [para. 11].

CIBC World Markets Inc. v. Stenner Financial Services Ltd. (2010), 366 F.T.R. 189; 2010 FC 397, refd to. [para. 13].

General Motors du Canada et al. v. Décarie Motors Inc. et al., [2001] 1 F.C. 665; 264 N.R. 69 (F.C.A.), refd to. [para. 13].

Emall.ca Inc. et al. v. Cheap Tickets and Travel Inc. (2007), 311 F.T.R. 295; 2007 FC 243, affd. (2008), 375 N.R. 350; 2008 FCA 50, refd to. [para. 13].

Milliken & Co. et al. v. Interface Flooring Systems (Canada) Inc., [1998] 3 F.C. 103; 143 F.T.R. 106 (T.D.), consd. [para. 25].

Hoffmann-La Roche Ltd. v. Apotex Inc. (1983), 145 D.L.R.(3d) 270 (Ont. H.C.), consd. [para. 25].

Teachers' Pension Plan Board (Ont.) v. Canada (Attorney General) (2012), 427 N.R. 328; 2012 FCA 60, appld. [para. 27].

Wool Bureau of Canada Ltd. v. Registrar of Trademarks (1978), 40 C.P.R.(2d) 25 (F.C.T.D.), refd to. [para. 28].

Mitel Corp. v. Registrar of Trademarks (1984), 79 C.P.R.(2d) 202 (F.C.T.D.), refd to. [para. 28].

Riverside Paper Corp. v. First Base Inc. et al., [1999] F.T.R. Uned. 600 (T.D.), refd to. [para. 28].

Labatt (John) Ltd. v. Carling Breweries Ltd. (1974), 18 C.P.R.(2d) 15 (F.C.T.D.), refd to. [para. 28].

Drackett Co. of Canada Ltd. v. American Home Products Corp., [1968] 2 Ex. C.R. 89, refd to. [para. 28].

Evert-Fresh Corp. v. Green Bag Pty Ltd., 2011 TMOB 236, refd to. [para. 28].

Atlantic Promotions Inc. v. Registrar of Trademarks (1984), 2 C.P.R.(3d) 183 (F.C.T.D.), refd to. [para. 29].

Agropur Cooperative Ltd. v. Parmalat SPA, 2011 TMOB 30, refd to. [para. 29].

Best Canadian Motor Inns Ltd. v. Best Western International Inc. (2004), 246 F.T.R. 113; 2004 FC 135, refd to. [para. 29].

674802 B.C. Ltd. v. Encorp Pacific (Canada), 2011 TMOB 180, refd to. [para. 29].

Ogopogo Media Inc. v. B.C. Jobs Online Inc., 2011 TMOB 127, refd to. [para. 29].

Fast Fence Inc. v. Yellow Fence Rentals Inc. 2010 TMOB 96, refd to. [para. 29].

Central City U-Lock Ltd. v. JCM Professional Mini-Storage Management Ltd. (2009), 80 C.P.R.(4th) 467 (T.M. Opp. Bd.), refd to. [para. 29].

Worldwide Diamond Trademarks Ltd. v. Canadian Jewellers Association (2010), 363 F.T.R. 83; 2010 FC 309, refd to. [para. 29].

Canadian Tire Corp. v. Exxon Mobil Corp. (2009), 80 C.P.R.(4th) 407 (T.M. Opp. Bd.), refd to. [para. 29].

Canadian Council of Professional Engineers v. Canada Society for Professional Engineers (1996), 66 C.P.R.(3d) 563 (T.M. Opp. Bd.), refd to. [para. 29].

Burns Foods (1985) Ltd. v. Superior Livestock of Canada Inc. (1996), 67 C.P.R.(3d) 413 (T.M. Opp. Bd.), refd to. [para. 29].

Arthur v. Auto Mart Magazine Ltd. (1995), 66 C.P.R.(3d) 117 (T.M. Opp. Bd.), refd to. [para. 29].

Insurance Co. of Prince Edward Island v. Prince Edward Island Mutual Insurance Co. (1999), 2 C.P.R.(4th) 103 (T.M. Opp. Bd.), refd to. [para. 30].

Westfair Foods Ltd. v. Pattison (Jim) Industries Ltd. (1989), 59 D.L.R.(4th) 46; 1989 CarswellBC 689 (S.C.), affd. (1990), 68 D.L.R.(4th) 481 (B.C.C.A.), refd to. [para. 31].

Canadian Bankers Association v. Northwest Bancorporation (1979), 50 C.P.R.(2d) 113 (T.M. Opp. Bd.), refd to. [para. 36].

Brûlerie des Monts Inc. v. 3002462 Canada Inc. (1997), 132 F.T.R. 150; 75 C.P.R.(3d) 445 (T.D.), refd to. [para. 36].

Saputo Dairy Products Canada GP v. Grande Cheese Co., 2011 TMOB 177, refd to. [para. 36].

Oppenheimer (David) Co. LLC v. Imagine IP LLC, 2011 TMOB 84, refd to. [para. 36].

United Artists Records Inc. v. Soundtrack Ltd. (1977), 36 C.P.R.(2d) 278 (T.M. Opp. Bd.), refd to. [para. 38].

Benson & Hedges (Canada) Ltd. v. Empresa Cubana del Tabaco (1975), 23 C.P.R.(2d) 274 (T.M. Opp. Bd.), refd to. [para. 38].

Bank of Montreal v. Merrill Lynch & Co. (1997), 84 C.P.R.(3d) 262 (T.M. Opp. Bd.), refd to. [para. 38].

Nature's Path Foods Inc. v. Quaker Oats Co. of Canada Ltd. (2001), 204 F.T.R. 102; 2001 CarswellNat 784 (T.D.), refd to. [para. 41].

Bodum USA Inc. et al. v. Meyer Housewares Canada Inc. (2012), 423 F.T.R. 34; 2012 FC 1450, refd to. [para. 41].

Worldwide Diamond Trademarks Ltd. v. Canadian Jewellers Association (2010), 414 N.R. 161; 2010 FCA 326, refd to. [para. 43].

Registrar of Trademarks v. Hardie (G.A.) & Co., [1949] S.C.R. 483; 1949 CarswellNat 8, refd to. [para. 44].

Boston Pizza International Inc. v. Boston Chicken Inc. (2001), 211 F.T.R. 106; 15 C.P.R.(4th) 345 (T.D.), varied in part (2003), 301 N.R. 190; 2003 FCA 120, refd to. [para. 50].

Fibergrid Inc. v. Precisioneering Ltd. (1991), 42 F.T.R. 114; 35 C.P.R.(3d) 221 (T.D.), refd to. [para. 51].

McCallum Industries Ltd. v. HJ Heinz Co. Australia Ltd. (2011), 403 F.T.R. 26; 2011 FC 1216, refd to. [para. 52].

Molson Breweries, A Partnership v. Labatt (John) Ltd. et al., [2000] 3 F.C. 145; 252 N.R. 91 (F.C.A.), refd to. [para. 52].

Fairmont Resort Properties Ltd. v. Fairmont Hotel Management, L.P. (2008), 332 F.T.R. 74; 2008 FC 876, refd to. [para. 53].

In-Touch Network Systems Inc. v. 01 Communique Laboratory Inc. (2007), 63 C.P.R.(4th) 224 (T.M. Opp. Bd.), refd to. [para. 55].

Lake Ontario Cement Ltd. v. Registrar of Trademarks (1976), 31 C.P.R.(2d) 103 (F.C.T.D.), refd to. [para. 61].

ITV Technologies Inc. v. WIC Television Ltd. (2003), 239 F.T.R. 203; 2003 FC 1056, refd to. [para. 66].

Jordan & Ste-Michelle Cellars Ltd. v. Alwar SpA (1980), 63 C.P.R.(2d) 235 (T.M. Opp. Bd.), refd to. [para. 66].

Calona Wines Ltd. v. Registrar of Trademarks, [1978] 1 F.C. 591 (T.D.), refd to. [para. 68].

Scotch Whisky Association v. Glenora Distillers International Ltd. (2009), 385 N.R. 159; 2009 FCA 16, consd. [para. 70].

Ministry of Commerce and Industry of the Republic of Cyprus v. Producteurs Laitiers du Canada et al. (2008), 70 C.P.R.(4th) 430 (T.M. Opp. Bd.), affd. (2010), 393 F.T.R. 1; 2010 FC 719, affd. (2011), 420 N.R. 124; 2011 FCA 201, refd to. [para. 71].

Cyprus (Ministry of Commerce and Industry) v. International Cheese Council of Canada - see Ministry of Commerce and Industry of the Republic of Cyprus v. Producteurs Laitiers du Canada et al.

Jordan & Ste-Michelle Cellars Ltd. v. Andres Wines Ltd. (1985), 6 C.I.P.R. 49; 1985 CarswellNat 562 (T.D.), refd to. [para. 72].

Remo Imports Ltd. v. Jaguar Cars Ltd. et al. (2007), 367 N.R. 177; 2007 FCA 258, refd to. [para. 80].

Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), 416 N.R. 307; 2011 SCC 27, refd to. [para. 80].

Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 130 N.R. 223; 37 C.P.R.(3d) 413 (F.C.A.), refd to. [para. 81].

Kellogg Salada Canada Inc. v. Registrar of Trademarks and Maximum Nutrition Ltd., [1992] 3 F.C. 442; 145 N.R. 131; 43 C.P.R.(3d) 349 (F.C.A.), refd to. [para. 82].

San Miguel Brewing International Ltd. v. Molson Canada 2005 (2013), 427 F.T.R. 202; 2013 FC 156, refd to. [para. 84].

Murray v. Saskatchewan (City) (1951), 4 W.W.R.(N.S.) 234 (Sask. C.A.), refd to. [para. 108].

Levesque v. Comeau, [1970] S.C.R. 1010; 5 N.B.R.(2d) 15, refd to. [para. 108].

Ethier v. Royal Canadian Mounted Police (Commissioner), [1993] 2 F.C. 659; 151 N.R. 374 (F.C.A.), refd to. [para. 117].

Bressette v. Kettle and Stony Point First Nations Band Council (1997), 137 F.T.R. 189 (T.D.), refd to. [para. 118].

United States Polo Association v. Polo Ralph Lauren Corp. et al. (2000), 286 N.R. 282 (F.C.A.), refd to. [para. 119].

Lumonics Research Ltd. v. Gould, Refac International Ltd. and Patlex Corp., [1983] 2 F.C. 360; 46 N.R. 483 (F.C.A.), refd to. [para. 119].

Tataskweyak Cree Nation v. Sinclair (2007), 320 F.T.R. 1; 2007 FC 1107, refd to. [para. 119].

Apotex Inc. et al. v. Registrar of Trademarks et al. (2010), 410 N.R. 196; 2010 FCA 313, refd to. [para. 122].

Bousquet et al. v. Barmish Inc. (1991), 48 F.T.R. 122 (T.D.), affd. (1993), 150 N.R. 234 (F.C.A.), refd to. [para. 123].

Sierra Club of Canada v. Canada (Minister of Finance) et al. (1999), 163 F.T.R. 109 (T.D.), refd to. [para. 127].

Merck Frosst Canada Inc. et al. v. Canada (Minister of National Health and Welfare) et al. (1994), 169 N.R. 342 (F.C.A.), refd to. [para. 127].

Eli Lilly Canada Inc. v. Apotex Inc. et al. (2007), 311 F.T.R. 21; 2007 FC 455, refd to. [para. 127].

Nourhaghighi v. Canada (Minister of Citizenship and Immigration), [2003] F.T.R. Uned. 825; 2003 FC 1350, refd to. [para. 128].

Maheu v. IMS Health Canada et al. (2003), 234 F.T.R. 277 (T.D.), refd to. [para. 130].

Merck Frosst Canada Inc. et al. v. Canada (Minister of National Health and Welfare) et al. (1997), 146 F.T.R. 249 (T.D.), refd to. [para. 130].

Merck Frosst Canada Inc. et al. v. Canada (Minister of National Health and Welfare) et al. (1999), 249 N.R. 15 (F.C.A.), refd to. [para. 131].

Association des crabiers Acadiens Inc. et al. v. Canada (Attorney General) (2009), 402 N.R. 123; 2009 FCA 357, refd to. [para. 131].

Simpson Strong-Tie Co. v. Peak Innovations Inc. (2009), 397 N.R. 201; 2009 FCA 266, refd to. [para. 131].

Almrei, Re (2009), 337 F.T.R. 160; 2009 FC 3, refd to. [para. 132].

Merck Frosst Canada Inc. v. Canada (Minister of National Health and Welfare) (1996), 69 C.P.R.(3d) 49 (F.C.T.D.), refd to. [para. 132].

Wyeth-Ayerst Canada Inc. v. Canada (Minister of National Health and Welfare) (1995), 60 C.P.R.(3d) 225 (F.C.T.D.), refd to. [para. 132].

Bruno v. Canada (Attorney General) et al., [2003] F.T.R. Uned. 751; 2003 FC 1281 (Protho.), refd to. [para. 134].

Autodata Ltd. v. Autodata Solutions Co., [2004] F.T.R. Uned. 771; 2004 FC 1361, refd to. [para. 135].

Merck & Co. et al. v. Apotex Inc. (1996), 110 F.T.R. 155 (T.D.), not folld. [para. 136].

Bland v. National Capital Commission et al. (1989), 29 F.T.R. 232 (T.D.), not folld. [para. 136].

Leesona Corp. v. Reliable Hosiery Mills Ltd. (1974), 14 C.P.R.(2d) 168 (F.C.T.D.), not folld. [para. 136].

Ward v. Samson Cree Nation No. 444 et al., [2001] F.T.R. Uned. 668; 2001 FCT 990, refd to. [para. 136].

Nicholas (Trevor) Construction Co. v. Canada (Minister of Public Works), [2008] F.T.R. Uned. 205; 2008 FC 306, refd to. [para. 136].

Royal Bank of Scotland plc v. Ship Golden Trinity et al., [2000] 4 FC 211; 186 F.T.R. 288 (T.D.), refd to. [para. 137].

Unitor ASA v. Ship M.V. Seabreeze I et al., [2001] F.T.R. Uned. 257; 2011 FCT 416, refd to. [para. 137].

Fabi v. Minister of National Revenue, [2004] F.T.R. Uned. 258; 2004 FC 439, refd to. [para. 137].

Eli Lilly & Co. et al. v. Apotex Inc. et al. (2005), 334 N.R. 335; 2005 FCA 134, refd to. [para. 139].

Mah v. Wawanesa Mutual Insurance Co. (2013), 561 A.R. 256; 594 W.A.C. 256; 2013 ABCA 363, refd to. [para. 164].

Durbin et al. v. Monserat Investments Ltd. (1978), 20 O.R.(2d) 181; 87 D.L.R.(3d) 593 (C.A.), refd to. [para. 164].

Wilson v. Clarica Life Insurance Co. et al., [2001] B.C.T.C. 1696; 36 C.C.L.I.(3d) 185 (S.C.), affd. [2002] 11 W.W.R. 17; 173 B.C.A.C. 269; 283 W.A.C. 269 (C.A.), refd to. [para. 168].

Bank of Montreal v. Dresler et al. (2002), 253 N.B.R.(2d) 37; 660 A.P.R. 37; 2002 NBCA 69, refd to. [para. 169].

Troup (John M.M.) Ltd. v. Royal Bank of Canada, [1962] S.C.R. 487, refd to. [para. 169].

Vescio et al. v. Peterman et al. (1999), 127 O.A.C. 60; 45 O.R.(3d) 613 (C.A.), refd to. [para. 169].

Purdom v. Northern Life Assurance Co. of Canada (1928), 63 O.L.R. 12 (C.A.), affd. [1930] S.C.R. 119, refd to. [para. 169].

Krumm v. Shepard District No. 220, [1928] S.C.R. 487, refd to. [para. 171].

Wyllie v. Pollen (1863), 32 L.J. Ch. 782; 3 De. G.J. & Sm. 596; 11 W.R. 1081, refd to. [para. 172].

Halifax Mortgage Services Ltd. v. Stepsky, [1995] 4 All E.R. 656 (Ch. D.), refd to. [para. 173].

Magrath v. Collins (1917), 37 D.L.R. 611, refd to. [para. 174].

Whitney v. Great Northern Insurance Co. (1917), 32 D.L.R. 756, refd to. [para. 174].

General Motors Corp. v. Bellows, [1949] S.C.R. 678, refd to. [para. 191].

Somerlite Ltd. v. Brown (1934), 51 R.P.C. 205, refd to. [para. 191].

Shredded Wheat Co. v. Kellogg Co. of Great Britain Ltd. (1940), 57 R.P.C. 148, refd to. [para. 191].

Candrug Health Solutions Inc. et al. v. Thorkelson (2007), 312 F.T.R. 13; 2007 FC 411, revd. in part (2008), 375 N.R. 302; 2008 FCA 100, refd to. [para. 197].

Thorkelson v. PharmaWest Pharmacy Ltd. - see Candrug Health Solutions Inc. et al. v. Thorkelson.

Labatt (John) Ltd. v. Molson Companies Ltd. (1990), 36 F.T.R. 70 (T.D.), affd. (1992), 144 N.R. 318; 42 C.P.R.(3d) 495 (F.C.A.), refd to. [para. 204].

Jordan & Ste-Michelle Cellars Ltd. v. Andres Wines Ltd. (1983), 81 C.P.R.(2d) 230 (T.M. Opp. Bd.), refd to. [para. 245].

Café Suprême F et P Ltée v. Registrar of Trademarks (1984), 3 C.I.P.R. 201 (F.C.T.D.), refd to. [para. 253].

Lassonde (A.) Inc. v. Registraire des marques de commerce (2000), 180 F.T.R. 177 (T.D.), refd to. [para. 253].

Canadian Parking Equipment Ltd. v. Registrar of Trademarks (1990), 39 F.T.R. 63; 34 C.P.R.(3d) 154 (F.C.T.D.), refd to. [para. 253].

Rothmans, Benson & Hedges Inc. v. Reynolds (R.J.) Tobacco Co. (1993), 62 F.T.R. 92; 47 C.P.R.(3d) 439 (T.D.), refd to. [para. 253].

Unitel Communications Inc. v. Bell Canada (1995), 92 F.T.R. 161 (T.D.), refd to. [para. 259].

Lipton (Thomas J.) Ltd. v. Salada Foods Ltd. (No. 3) (1979), 45 C.P.R.(2d) 157 (F.C.T.D.), refd to. [para. 266].

CIBA-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120; 143 N.R. 241; 58 O.A.C. 321, refd to. [para. 281].

National Council of Jewish Women of Canada v. North York (Township) (1961), 30 D.L.R.(2d) 402; 1961 CarswellOnt 157 (C.A.), refd to. [para. 305].

Kehoe v. Thorold (Town) (1973), 35 D.L.R.(3d) 512; 1973 CarswellOnt 465 (H.C.), refd to. [para. 305].

Mayfair Tennis Courts Ltd. v. Nautilus Fitness and Racquet Centre Inc. (1999), 23 R.P.R.(3d) 271; 1999 CarswellOnt 601 (Gen. Div.), refd to. [para. 305].

Rodgers et al. v. Calvert et al., [2004] O.T.C. 784; 244 D.L.R.(4th) 479; 2004 CarswellOnt 3602 (Sup. Ct.), refd to. [para. 305].

R. v. Rachfalowski, 2008 TCC 258, refd to. [para. 305].

Ninpo Martial Arts Inc. v. Lepa, [2009] A.R. Uned. 592; 2009 CarswellAlta 1375; 2009 ABPC 251, refd to. [para. 305].

R. v. Tejeda-Rosario, 2009 CarswellOnt 9057 (C.J.), refd to. [para. 305].

Eltom v. Canada (Minister of Citizenship and Immigration) (2005), 284 F.T.R. 139; 2005 FC 1555, refd to. [para. 305].

Principauté de Monaco v. Monte Carlo Holdings Corp., 2013 TMOB 58, refd to. [para. 317].

College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Natural Medicine College of Canada (2009), 355 F.T.R. 11; 2009 FC 1110, refd to. [para. 324].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 10, sect. 12(1)(b), sect. 12(1)(c), sect. 12(2), sect. 35 [para. 15].

Authors and Works Noticed:

Bowstead and Reynolds on Agency (18th Ed. 2006), pp. 480 to 482 [para. 166]; 481 to 482 [para. 165]; 491 [para. 172].

Cross and Tapper on Evidence (8th Ed. 1995), pp. 38 to 40 [para. 108].

Cross and Tapper on Evidence (12th Ed. 2010), pp. 40 to 41 [paras. 109, 160].

Fridman, Gerald Henry Louis, Canadian Agency Law (2nd Ed. 2012), pp. 216 [para. 167]; 218 [paras. 167, 168]; 219 [para. 167].

Gill, Kelly, Fox on Canadian Law of Trade-Marks and Unfair Competition (4th Ed. 2002) (2014 Looseleaf Update), pp. 5-66.6 [para. 258]; 5-66.6 to 5-66.8 [para. 313]; 6-11, 6-12 [para. 252]; 11-34 [para. 190]; 11-37 to 11-39 [para. 120]; 11-39, 11-40 [para. 200].

Hughes, Roger T., Ashton, Toni Polson, and Armstrong, Neal, Hughes on Trademarks (2nd Ed. 2005), (2013 Looseleaf, Release 35-8), pp. 601 [paras. 241, 244]; 606 [para. 123]; 817 [para. 13]; 818 [paras. 13, 120].

Keane, Adrian, The Modern Law of Evidence (3rd Ed. 1995), p. 13 [para. 108].

Keane, Adrian, Griffiths, James, and McKeown, Paul, The Modern Law of Evidence (8th Ed. 2010), pp. 14 to 15 [paras. 110, 160].

Saunders, Brian J., Rennie, Donald J., and Garton, Graham, Federal Courts Practice 2014 (2013), p. 417 [para. 117].

Schiff, Stanley, Evidence in the Litigation Process (4th Ed. 1993), vol. 1, p. 452 [para. 108].

Sopinka, John, and Lederman, Sidney N., The Law of Evidence in Civil Cases (1974), pp. 535 to 537 [para. 108].

Counsel:

Scott Miller and Jahangir Valiani, for the applicant;

Michael Adams and Thomas McConnell, for the respondents.

Solicitors of Record:

MBM Intellectual Property Law LLP, Ottawa, Ontario, for the applicant;

Riches, McKenzie & Herbert LLP, Toronto, Ontario, for the respondents.

This application was heard at Ottawa, Ontario, on January 13, 2014, by Russell, J., of the Federal Court, who delivered the following decision on July 9, 2014.