Societé Anonyme des Bains de Mer et du Cercle des Étrangers à Monaco, Société Anonyme v. Monte Carlo Holdings Corp. et al., (2012) 424 F.T.R. 85 (FC)

• Judge: Martineau, J.
• Court: Federal Court (Canada)
• Case Date: December 10, 2012
• Jurisdiction: Canada (Federal)
• Citations: (2012), 424 F.T.R. 85 (FC);2012 FC 1528

Societé Anonyme v. Monte Carlo Holdings (2012), 424 F.T.R. 85 (FC)

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Temp. Cite: [2012] F.T.R. TBEd. DE.057

Societé Anonyme des Bains de Mer et du Cercle des Étrangers à Monaco, Société Anonyme (applicant) v. Monte Carlo Holdings Corp. and the Registrar of Trademarks (respondents)

(T-3-12; 2012 FC 1528; 2012 CF 1528)

Indexed As: Societé Anonyme des Bains de Mer et du Cercle des Étrangers à Monaco, Société Anonyme v. Monte Carlo Holdings Corp. et al.

Federal Court

Martineau, J.

December 20, 2012.

Summary:

The applicant was a Monaco corporation that owned or operated two palaces and two luxury hotels in Monaco. It applied to register the trademark "Monte-Carlo Beach Hotel" in Canada based on use and registration abroad in relation to the following wares and services: soaps; perfumery; essential oils; cosmetics; beverages, and temporary hotels. The respondent, an Ontario corporation that operated a chain of functional hotels in Southern Ontario, opposed the application. The respondent owned the registered trademarks "Monte Carlo Inn" & design and "Monte Carlo Inn" & Crown design. The "Monte Carlo Inn" trademarks protected the respondent's design marks associated with the following wares: soap; shampoo; body lotion; drinking cups; various article of clothing; cappuccino coffee; bottled water; golf balls; etc. They also provided protection respecting hotel/motel services; and the sponsorship of hockey and soccer teams and sporting events. The Registrar of Trademarks dismissed the application on the basis that the applicant failed to prove that its trademark, when used in association with its wares and services, would not cause confusion with the respondent's trademarks. The applicant applied for judicial review.

The Federal Court dismissed the application.

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - Conditions precedent - Lack of confusion with other marks - The applicant owned or operated two palaces and two luxury hotels in Monaco - It applied to register the trademark "Monte-Carlo Beach Hotel" in Canada based on use and registration abroad - The respondent, an Ontario corporation that operated a chain of functional hotels in Southern Ontario, opposed the application - The respondent owned two registered design marks for "Monte Carlo Inn" - The Registrar of Trademarks dismissed the application based on confusion - The applicant applied for judicial review - Both parties submitted new affidavit evidence - The Federal Court held that the additional evidence would not have materially affected the Registrar's finding of confusion - The Registrar considered all the elements mentioned in s. 6 of the Trade-marks Act and concluded that the degree of resemblance between the marks was weighted in favour of the respondent - The decision was reasonable - Even if the applicant's new evidence would have affected the Registrar's decision, it would have been rebutted or cancelled out by the respondent's new evidence - See paragraphs 26 to 69.

Trademarks, Names and Designs - Topic 709

Trademarks - Registration - Effect of registration - The Registrar of Trademarks refused to register the trademark "Monte-Carlo Beach Hotel" based on confusion with the respondent's design marks for "Monte Carlo Inn" - The Registrar rejected the applicant's argument that it essentially had a right to obtain registration of the mark by virtue of the dominant feature of the term "Monte Carlo" since it had already obtained registration for the trademark "Monte-Carlo Spa & Design" - The Federal Court, in dismissing the applicant's judicial review application, stated that: "... I find it reasonable that there is no right to obtain registration of another trade-mark, regardless of the similarity between the new trade-mark and the trade-mark that has already been registered ..." - See paragraph 64.

Trademarks, Names and Designs - Topic 985

Trademarks - Registration - Appeals or judicial review - Fresh evidence - The applicant owned or operated two palaces and two luxury hotels in Monaco - It applied to register the trademark "Monte-Carlo Beach Hotel" in Canada based on use and registration abroad - The respondent, an Ontario corporation that operated a chain of functional hotels in Southern Ontario, opposed the application - The respondent owned two registered design marks for "Monte Carlo Inn" - The Registrar of Trademarks dismissed the application based on confusion - The applicant applied for judicial review - The respondent filed new affidavit evidence, part of which the applicant asserted should not be considered because the respondent should not be allowed to collaterally attack the impugned decision on grounds either dismissed by the Registrar or not previously raised - The Federal Court stated that it failed to see how the applicant would be prejudiced by permitting the respondent to argue the merits of grounds already dismissed by the Registrar - A respondent's failure to include already known grounds of opposition in their notice of appearance was not necessarily fatal - Such procedural irregularities should be raised by motion subject to being cured by the other party in accordance with the court's directions - However, the situation might be different respecting grounds that were not raised before the Registrar and for which the respondent adduced new evidence - It was too late to question whether the Monte-Carlo Beach (Hotel) was in France instead of Monaco - The respondent's diligence could be questioned as the interest of justice was paramount - However, it was unnecessary to decide the issue where, even if the procedural irregularities caused the applicant prejudice, the new opposition grounds were not determinative - The appeal would still fail because of confusion - See paragraphs 8 to 16.

Trademarks, Names and Designs - Topic 986

Trademarks - Registration - Appeals or judicial review - Admissibility of supplementary affidavits on appeal - [See Trademarks, Names and Designs - Topic 985 ].

Trademarks, Names and Designs - Topic 988

Trademarks - Registration - Appeals or judicial review - Scope of review of decision of registrar - [See Trademarks, Names and Designs - Topic 985 ].

Trademarks, Names and Designs - Topic 988

Trademarks - Registration - Appeals or judicial review - Scope of review of decision of registrar - The applicant applied for judicial review of the Registrar of Trademarks' refusal to register its trademark - Both the applicant and the respondent adduced additional affidavit evidence - Neither party cross-examined the affiants - The Federal Court stated that "The standard of review depends on whether or not new evidence has been placed before the Court, and on the significance of the new evidence. ... Where additional evidence is adduced in Court that would have materially affected the Registrar's findings of fact or the exercise of her or his discretion, the Court must decide the issue de novo after considering all of the evidence before it. In doing so, the Court will substitute its own opinion to that of the Registrar without any need to find an error in the Registrar's reasoning. Conversely, the standard of review is reasonableness where no additional evidence has been submitted on appeal under section 56 of the [Trade-marks] Act that would have materially affected the Registrar's findings or exercise of discretion ... The new evidence filed by the applicant must radically change the factual situation in order for the Court to have unfettered discretion to set aside the Registrar's decision ..." - See paragraphs 21 to 23.

Cases Noticed:

Ministry of Commerce and Industry of the Republic of Cyprus v. Producteurs Laitiers du Canada et al. (2010), 393 F.T.R. 1; 2010 FC 719, affd. (2011), 420 N.R. 124; 2011 FCA 201, refd to. [para. 10].

ConAgra Inc. v. McCain Foods Ltd. (2001), 210 F.T.R. 227; 2001 FCT 963, refd to. [para. 10].

Meadows (W.R.) Inc. et al. v. U.S.E. Hickson Products Ltd., [1999] F.T.R. Uned. 712; 2 C.P.R.(4th) 413 (T.D.), refd to. [para. 11].

Autodata Ltd. v. Autodata Solutions Co., [2004] F.T.R. Uned. 771; 2004 FC 1361, refd to. [para. 12].

R. v. Palmer, [1980] 1 S.C.R. 759; 30 N.R. 181, refd to. [para. 15].

Joseph E. Seagram & Sons Ltd. et al. v. Seagram Real Estate Ltd., [1984] T.M.O.B. No. 69; 3 C.P.R.(3d) 293, refd to. [para. 18].

Labatt (John) Ltd. v. Molson Companies Ltd. (1990), 36 F.T.R. 70; 30 C.P.R.(3d) 293 (T.D.), refd to. [para. 18].

Wrangler Apparel Corp. v. Timberland Co. (2005), 272 F.T.R. 270; 2005 FC 722, refd to. [para. 18].

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

Brouillette Kosie Prince v. Orange Cove-Sanger Citrus Association (2007), 322 F.T.R. 212; 2007 FC 1229, refd to. [para. 22].

Molson Breweries, A Partnership v. Labatt (John) Ltd. et al., [2000] 3 F.C. 145; 252 N.R. 91 (F.C.A.), leave to appeal refused (2000), 261 N.R. 398 (S.C.C.), refd to. [para. 22].

Nature's Source Inc. v. Natursource Inc. (2012), 415 F.T.R. 271; 104 C.P.R.(4th) 1; 2012 FC 917, refd to. [para. 22].

Scotch Whisky Association v. Glenora Distillers International Ltd. (2008), 327 F.T.R. 32; 65 C.P.R.(4th) 441; 2008 FC 425, revd. [2010] 1 F.C.R. 195; 385 N.R. 159; 2009 FCA 16, leave to appeal denied (2009), 398 N.R. 399, refd to. [para. 22].

New Brunswick (Board of Management) v. Dunsmuir, [2008] 1 S.C.R. 190; 372 N.R. 1; 329 N.B.R.(2d) 1; 844 A.P.R. 1; 2008 SCC 9, refd to. [para. 25].

Masterpiece Inc. v. Alavida Lifetyles Inc., [2011] 2 S.C.R. 387; 416 N.R. 307; 2011 SCC 27, refd to. [para. 29].

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. 48].

Conde Nast Publications Inc. v. Union des Editions Modernes, [1979] 3 A.C.W.S. 320; 46 C.P.R.(2d) 183 (F.C.T.D.), refd to. [para. 61].

Sum-Spec Canada Ltd. v. Imasco Retail Inc. (1990), 35 F.T.R. 44 (T.D.), refd to. [para. 61].

Dion Neckwear Ltd. v. Christian Dior, S.A. et al., [2002] 3 F.C. 405; 286 N.R. 336; 2002 FCA 29, refd to. [para. 62].

Coronet-Werke Heinrich Sclerf GmbH v. Produits Ménagers Coronet Inc. (1984), 4 C.P.R.(3d) 108 (T.M.O.B.), refd to. [para. 64].

Authors and Works Noticed:

Fox, Harold George, The Canadian Law of Trade Marks and Unfair Competition (4th Ed. 2002) (Looseleaf), p. 6-48 [para. 24].

Counsel:

Monique M. Couture, for the applicant;

Michael Adams, for the respondents.

Solicitors of Record:

Gowling Lafleur Henderson LLP, Ottawa, Ontario, for the applicant;

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

This application was heard at Ottawa, Ontario, on December 10, 2012, by Martineau, J., of the Federal Court, who delivered the following reasons for judgment on December 20, 2012.