Digests

Toys `R' Us (Canada) Ltd. v. Manjel Inc.

T-2367-93

2003 FCT 282, Tremblay-Lamer J.

7/3/03

25 pp.

Appeal from decision of Registrar of Trade-marks rejecting opposition proceedings against application for registration of trade-mark "Nuts 'R' Us"--Registrar held evidence not establishing appellants had used trade-marks "`R' US" or "Kids `R' Us" design in Canada, no likelihood of confusion between "Toys `' Us" Us Design (TRUD) and "Nuts `R' Us" --New evidence submitted by appellants would not have materially affected Registrar's findings of fact or exercise of discretion--Likelihood of confusion determined after weighing various factors enumerated in Trade-marks Act, s. 6(5)--First, regarding inherent distinctiveness and extent to which marks have become known, trade-marks containing words suggestive of wares or services offered by owner considered weak marks and consequently, afforded minimal level of protection--Conversely, trade-marks containing unique or coined words possess greater inherent distincti-veness and afforded wider ambit of protection--Open to Registrar to find, based on evidence, given that appellant's trade-mark phonetically equivalent to "toys are us" which is descriptive of business--Registrar determined "Toys `' Us" Design known in Canada as applied to operation of retail stores selling toys, children's apparel--New evidence not supporting appellants' contention mark acquired distinctive-ness in relation to candy, confectionery, and snack foods-- Even with addition of new evidence, Registrar would have concluded trade-mark "Toys `' Us" not known in association with sale of candy, confectionery and snack foods--Second, Registrar found length of time trade-marks have been in use favoured appellants--"Toys `' Us" trade-mark used since 1984, whereas NRU "Nuts `R' Us" trade-mark used since 1987--Regarding nature of wares, amount of sales of candy, confectionery, snack foods by appellants too small to affect Registrar's finding wares of appellants and respondent not similar--As to nature of trade, appellants would never sell respondent's products in their chain of retail stores, thus reducing likelihood of confusion--Cases holding not necessary for products to be sold in same stores for there to be confusion distinguished--In those cases, trade-marks identical --Trade-marks herein not identical--Accordingly, Registrar entitled to assess nature of trade, and to consider fact respondent's products would never be sold in appellants' stores--Concerning degree of resemblance of marks in appearance, sound and ideas suggested, fact expression "R us" shared by two trade-marks not sufficient to find existence of confusion--Trade-marks must be considered in entirety--Use of words "toys" and "nuts" at beginning of marks sufficient to distinguish two marks--Regarding all surrounding circum-stances, appellant not putting forth any evidence actual confusion--Having considered every factor enumerated in s. 6(5), Registrar's conclusion reasonable--Second ground of opposition that respondent not person entitled to registration pursuant to Act, s. 16(1)(a) because proposed trade-mark "Nuts `R' Us" confusing with appellants' family of "`R' US" trade-marks--S. 16 establishes material date regarding entitlement to registration date on which application for registration filed, or April 27, 1987 herein--New evidence submitted by appellants not sufficient to alter Registrar's finding appellants not establishing use of trade-mark "Toys `' Us" in association with sale of confectionery and candy prior to respondent's claimed date of first use--Sale of food items represented only 1% of appellant's total sales-- Accordingly, Registrar's conclusion regarding second ground of opposition reasonable--Third ground of opposition that respondent not person entitled to registration pursuant to s. 16(1)(b) because proposed trade-mark "Nuts `R' Us" confusing with trade-mark "Kids `R' Us" Design, for which application previously filed--Registrar's finding no likelihood of confusion, therefore, reasonable--Fourth ground of opposition that "Nuts `R' Us" not distinctive--Distinctiveness assessed as of date on which opposition commenced--As this ground based on first three grounds, Registrar held fourth ground also failed--Such finding reasonable--Appeal dismissed--Trade-marks Act, R.S.C, 1985, c. T-13, ss. 6(5), 12(1), 16(1)(a),(b), 56(1).