Thymes LLC v. Reitmans (Canada) Ltd., (2013) 426 F.T.R. 305 (FC)

• Judge: Manson, J.
• Court: Federal Court (Canada)
• Case Date: January 30, 2013
• Jurisdiction: Canada (Federal)
• Citations: (2013), 426 F.T.R. 305 (FC);2013 FC 127

Thymes LLC v. Reitmans Ltd. (2013), 426 F.T.R. 305 (FC)

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[French language version follows English language version]

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Temp. Cite: [2013] F.T.R. TBEd. FE.035

The Thymes, LLC (applicant) v. Reitmans (Canada) Limited (respondent)

(T-1423-11; 2013 FC 127; 2013 CF 127)

Indexed As: Thymes LLC v. Reitmans (Canada) Ltd.

Federal Court

Manson, J.

February 6, 2013.

Summary:

The applicant filed an application to register the trademark THYMES for skin care products, based on: (a) proposed use and (b) registration and use in the United States. The respondent opposed the application. The Registrar of Trademarks refused the application. The applicant appealed, stating that the Registrar erred in finding that: (a) use of the THYMES mark in the United States was required as of the filing date of the application in Canada in order to make a valid claim under s. 16(2) of the Trade-marks Act; and (b) there was a likelihood of confusion with the respondent's mark THYME MATERNITY registered for use with skin care products.

The Federal Court dismissed the appeal.

Trademarks, Names and Designs - Topic 701.1

Trademarks - Registration - General - Persons entitled - The Federal Court stated that a proper reading of s. 16(2) of the Trade-marks Act (persons entitled to registration; marks registered and used abroad) "requires that, at the time of filing the application, if an applicant relies on registration or application and use abroad pursuant to that section, there must have been use of the trademark at the time of the application to rely on this section as a valid basis to obtain registration in Canada. It is clear that section 16(2) of the Act emphasizes that use of the mark in the country of origin of the applicant is a requirement for registration in Canada. Further, the last portion of section 16(2) of the Act, namely: 'unless at the date of filing of the application in accordance with section 30', also supports the view that both section 16 and section 30 requirements must exist and be reviewed as at the date of filing of the application." - See paragraphs 18 to 21.

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - General - Conditions precedent - Lack of confusion with other marks - An issue to be resolved in the present appeal was whether the Registrar of Trademarks erred in concluding that there was a likelihood of confusion between the applicant's trademark THYMES and the respondent's mark THYME MATERNITY with respect to skin care products - The Federal Court held that the evidence, not only before the hearing officer, but also the respondent's new evidence filed on appeal, showed there was a likelihood of confusion at the date of the appeal judgment, which the court held to be the relevant date - The channels of trademark for the sales of both parties' skin care products overlapped; (b) the nature of the products were the same; (c) the degree of resemblance between the trademarks was high, with THYME or THYMES being the dominant feature of each; and (d) the length of time/prior use favoured the respondent - See paragraphs 40 to 44.

Trademarks, Names and Designs - Topic 985

Trademarks - Registration - Appeals or judicial review - Fresh evidence - The parties filed new evidence on appeal which was not before the Opposition Board - The Federal Court stated that "the Court has an unfettered discretion to consider the matter and come to its own conclusion as to the correctness of the Board's decision, if the new evidence is significant and would materially affect the underlying decision. ... However, where no new significant evidence is added on appeal, the standard of review is reasonableness simpliciter ... Thus, the real question for consideration by the Court is the nature and quality of the new evidence, and whether it materially affects the decision below ... In any case, my consideration of the new evidence does not, in any way, eliminate the Board's expertise or indeed the examiner's decision as a relevant consideration" - The court was satisfied that the new evidence in this appeal was significant and probative - See paragraphs 10 to 13, 35.

Trademarks, Names and Designs - Topic 988

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

Cases Noticed:

BoJangles' International LLC et al. v. Bojangles Café Ltd. (2006), 293 F.T.R. 234; 2006 FC 657, refd to. [para. 10].

Mattel Inc. v. 3894207 Canada Inc. et al., [2006] 1 S.C.R. 772; 348 N.R. 340; 2006 SCC 22, refd to. [para. 10].

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. 11].

Novopharm Ltd. v. Astra Aktiebolag et al., [2002] F.C. 148; 278 N.R. 392; 2001 FCA 296, refd to. [para. 11].

Novopharm Ltd. v. AstraZeneca AB - see Novopharm Ltd. v. Astra Aktiebolag et al.

Telus Corp. et al. v. Orange Personal Communications Services Ltd. (2005), 273 F.T.R. 228; 2005 FC 590, affd. (2006), 346 N.R. 81; 2006 FCA 6, refd to. [para. 12].

Labatt (John) Ltd. v. Molson Companies Ltd. (1990), 36 F.T.R. 70; 30 C.P.R.(3d) 293 (T.D.), affd. (1992), 144 N.R. 318; 42 C.P.R.(3d) 495 (F.C.A.), refd to. [para. 17].

Interstate Brands Company - Licensing Co. v. Becker Milk Co. (2000), 254 N.R. 360 (F.C.A.), refd to. [para. 34].

Masterpiece Inc. v. Alavida Lifestyles Inc., [2011] 2 S.C.R. 387; 416 N.R. 307; 2011 SCC 27, refd to. [para. 36].

Advance Magazine Publishers Inc. v. Farleyco Marketing Inc. (2009), 342 F.T.R. 224; 2009 FC 153, refd to. [para. 39].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 16(2) [para. 6].

Counsel:

Kenneth McKay, for the applicant;

Sandra Mastrogiuseppe, for the respondent.

Solicitors of Record:

Sim Lowman Ashton & McKay LLP, Toronto, Ontario, for the applicant;

Davis Ward Phillips & Vinegerg LLP, Montreal, Quebec, for the respondent.

This application was heard at Toronto, Ontario, on January 30, 2013, before Manson, J., of the Federal Court, who delivered the following reasons for judgment and judgment, dated February 6, 2013.