TRADE MARKS |
Registration |
Canada Post Corp. v. Paxton Developments Inc.
T-614-99
Pelletier J.
8/12/00
12 pp.
Canada Post Corporation objecting to registration of trade- mark "Video Mail" in connection with "telecommunication services on ground "Video Mail" confusing with number of its trade-marks, including "Faxmail", "Lasermail", "Admail", some of which involving telecommunications--Opposition Board concluding average consumer would associate proposed mark with generic services, such as voice mail, e-mail--Finding opponent not discharging onus of showing use of mark would likely lead consumers to assume services provided were provided by Canada Post--On appeal Canada Post submitting new evidence, including survey of reaction of consumers to proposed mark--Survey involving interviews of 600 randomly chosen consumers in shopping malls in Vancouver, Toronto, Montréal, Halifax--Randomly chosen in that interviewees individuals who happened to be in mall on day in question and agreed to participate--Age, gender criteria applied to those who agreed to participate so representative of larger population--Applicant's position that 9% of those exposed to "Video Mail" confused as to origin of services to be marketed thereunder--Appeal allowed--"Average" consumer implies majority of consumers i.e. average consumer misled if majority of consumers misled--Trade-marks Act not requiring majority of consumers be misled to support finding of confusion--Sufficient that substantial number of consumers, more than enough to pass de minimis threshold but less than majority, be confused or be likely to be confused--To extent use of phrase "average consumer" meaning majority of consumers, Opposition Board in error--Criteria for use of survey evidence in trade-mark matters reviewed in Walt Disney Productions v. Triple Five Corp. (1994), 53 C.P.R. (3d) 129 (Alta. C.A.)--Include certain structural criteria whose object to ensure survey results broadly representative of general population and results not skewed by inappropriate questions--Sample herein large enough, sufficiently random to be broadly representative of public--Questions factual, responses recorded without being characterized by interviewer--Survey evidence meeting structural criteria--Survey evidence, showing 9% of consumers believed product called "Video Mail" would be provided by Canada Post evidence of actual confusion in significant number of consumers, regardless of whether other responses given by larger group of survey sample--But evidence of actual confusion not determinative as s. 6 requiring all of surrounding circumstances be considered--Registrar's decision correct in most respects with respect to balance of circumstances to be considered, except degree of resemblance between trade-marks--Registrar finding respondent's marks not suggestive of applicant's services, but rather of services such as voice mail or e-mail--Erred in doing so as survey evidence showing significant number of persons thought respondent's marks suggestive of postal services--Registrar erred in registering respondent's trade-mark as it was, and is, confusing with applicant's registered trade-marks--Trade-marks Act, R.S.C., 1985, c. T-13, s. 6.