Digests

Fiesta Barbeques Ltd. v. General Housewares Corp.

T-463-02

2003 FC 1021, Russell J.

4/9/03

15 pp.

Appeal under Trade-marks Act (Act), s. 56, from decision of Registrar of Trade Marks (Registrar) dated January 18, 2002 which, following opposition proceedings, refused Canadian Trade-mark Application No. TMA 816,106 to register trade-mark "Grill Gear & Design" (Subject Trade-mark) as filed by applicant--Application based upon proposed use of Subject Trade-mark in Canada in association with "barbeque accessories, namely barbeque cooking utensils, barbeque rotisseries and barbeque replacement parts"-- Applicant seeks order setting aside decision of Registrar, order approving registrability of Subject Trade-mark, and costs of these proceedings--Registrar found applicant's "Grill Gear & Design" mark contrary to Act, s. 12(1)(b) because clearly descriptive or deceptively misdescriptive in English language of character or quality of wares in association with which it was proposed to be used--In coming to conclusion, Registrar relied upon and adopted reasoning in General Housewares Corp. v. Fiesta Barbeques Ltd. (2001), 13 C.P.R. (4th) 177 (T.M.O.B.), related opposition to applicant's previous "grill gear" application in which hearing office had found "grill gear" contrary to s. 12(1)(b)--In addition to adopting reasons of hearing officer, Registrar also relied upon fact applicant, in its own catalogue, used words "grill" and "gear" in descriptive manner--Registrar further concluded "the applicant's recent disclaimer of words grill and gear apart from trade mark in amended application" consistent with conclusion words were "clearly descriptive"--Registrar also addressed fact applicant seeking to register design mark including words "Grill Gear" and not just words themselves--Registrar concluded "the average consumer of applicant's wares would not sound the applicant's mark by references to all the elements forming the mark"--Rationale was that "a word mark which includes design features such as the applied for trade-mark would. . . be sounded by reference to the dominant words forming the mark"--Registrar asserted date of decision material date for considering s. 12(1)(b) ground--Several errors in Registrar's decision--Registrar should not have placed reliance upon applicant's disclaimer of words "grill" and "gear" to support decision under s. 12(1)(b)--Clearly, Act, s. 35 not allowing "without prejudice" disclaimer to affect "applicant's rights then existing or thereafter arising in disclaimed matter"-- Additional evidence adduced by applicant in present application in form of affidavit of applicant's President, who confirmed none of applicant's competitors has ever employed Subject Trade-Mark, "whether as trade-mark for subject wares, or as term to merely identify or describe inherent character or quality of subject wares, in Canada, prior to filing of subject applications or at all," and that "the same applies outside Canada" and "neither the terms `grill gear' or `grillgear' have been used in trade to designate or describes barbeque accessories"--Act, s. 56(5) clearly allowing fresh evidence to be adduced in this application--Regarding distinctiveness, Registrar also agreed with opponent Subject Trade-Mark not distinctive "since the term `grill gear' is clearly descriptive of applicant's wares and is used by third parties and in the trade to designate or describe barbeque accessories"--Problem already identified in relation to 12(1)(b) ground and new evidence filed by applicant's President make it clear Registrar's decision on lack of distinctiveness also made in error and without benefit of sufficient evidence of distinctiveness on part of applicant-- No evidence of anything but extremely sporadic use of terms "grill gear" to refer to barbeque equipment--No evidence allowing Subject Trade-Mark would deprive traders of some right to describe their wares in way they already do or might wish to do--Design mark not either clearly descriptive or deceptively misdescriptive of character or quality of wares or services in association with which used or proposed to be used--At most, only verbal component of Subject Trade-Mark that could be sounded in this way--In case at bar, verbal components of Subject Trade-Mark and flame motif have to be looked at as whole and clearly give it sufficient distinctive elements to distance it from any terminology trader might wish to use to describe wares of similar kind--Here, Subject Trade-Mark not "clearly descriptive"--Appeal allowed and order of Registrar of Trade Marks dated January 18, 2002 set aside--Trade-mark Application No. 816,106 allowed--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 12(1)(b) (as am. by S.C. 1993, c. 15, s. 59(F)), 35, 56.