U.A.P. Inc. v. Automaxi S.A.
A-244-93
Létourneau J.A.
15/12/94
16 pp.
Appeal from dismissal of appeal from Opposition Board's dismissal of application for registration of trade marks "Automax", "Automax and Design" -- Based on reasonable risk of confusion with respondent's already registered mark Board dismissing applications for registration pertaining to wares and services connected with automobile components and accessories, but accepting those pertaining to sporting, hardware, gardening, cooking, camping items -- Appeal with respect to wares discontinued -- Cross-appeal maintaining Board not having power to sever applications for registration -- Appeal dismissed; cross-appeal annulled -- Outcome of appeal not depending on date adopted for determination of whether confusion between marks -- Opposition to registration under Trade-marks Act, s. 12(1)(d) requiring determination of confusion between mark proposed for registration and registered mark -- Trial Judge erred in determining existence of confusion in relation to mark used rather than registered mark -- Registered design gradually abandoned commencing in 1986, replaced by stylized "A" -- Admitting registered mark not used since 1992; evidence indicating not used since 1987 -- Appellant using its mark in association with services offered by it since May 1986 -- Trial Judge's final conclusions not vitiated by error -- Possible, without expressly saying so, Trial Judge saw only minimal differences between mark used and mark registered, which did not affect identity, recognizability of respondent's registered mark -- S. 6(1) to (4) stating trade mark creating confusion with another trade mark if use of both in same area would be likely to lead consumer to conclude wares or services associated therewith offered by same person -- S. 6(5) setting out circumstances to be considered in determining confusion -- Absence of use of mark for extended period consideration in determining confusion, but not alone justifying conclusion no confusion -- May permit inference unlikely mark allowed to fall into disuse for extended period of time will be used in future -- Extended lack of use of registered mark, when for corresponding period constant use made by competitor of proposed mark may lead to conclusion, depending on circumstances, that proposed mark now so well established that average consumer with imperfect recollection would not be confused and would be fully able to distinguish them if registered mark again to be used -- Opposition Board, Trial Judge holding limited visual resemblance between disputed marks, but that resemblance especially obvious phonetically -- Also finding overlap between wares, services associated with automobile, possibility of confusion in this area as to kind of business operated by parties -- Such findings of fact fully supported by evidence -- Ideas expressed by two marks identical -- Appellant, claiming right of registration, not showing, on balance of probabilities, trade mark seeking to register creating no reasonable risk of confusion with one already registered -- Trial Judge correctly assessing circumstances required to consider in determining whether confusion between two trade marks -- Undertook detailed analysis of evidence, arguments, before drawing own conclusions -- By cross-appeal respondent arguing Board lacked jurisdiction to sever trade mark registration application, allowing it in part -- S. 56 requiring argument be raised as appeal -- As not before Trial Judge, not properly before Court of Appeal -- Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6, 12(1)(d), 16, 56.