TRADE-MARKS
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Appeals from Trade-marks Opposition Board (T.M.O.B.) decision refusing applications for trade-marks for stitching designs on jeans (mirror image pocket stitching design trade-marks) (Vivat marks)—Levi Strauss & Co. opposed application on basis of confusion with Levi’s double arcuate design trade-mark on back pocket of Levi jeans (Levi mark); on basis of non-distinctiveness in light of Levi’s double arcuate design trade-mark—Issue whether Vivat marks confusing with Levi mark—Application of Trade-marks Act, ss. 6, 12(1)(d), 16(3)(a), (b)—T.M.O.B. held balance of probabilities evenly balanced between finding no reasonable likelihood of confusion, reasonable likelihood of confusion— As onus on applicant, applications to register Vivat’s marks refused—Appeals dismissed—On appeal under Act, s. 56, applicable standard of review reasonableness: Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (C.A.); Christian Dior, S.A. v. Dion Neckware Ltd., [2002] 3 F.C. 405 (C.A.)—T.M.O.B. reasonably concluded, based on evidence before it, Levi mark, Vivat marks containing common element: double arch comprised of double stitching—Applicants’ contention any jeans on market bearing decorative stitching should be considered casting too wide net to yield any meaningful comparison—Proper for T.M.O.B. to consider extent of use of third party marks bearing common element—T.M.O.B. correct in observing visual differences (factor favouring applicant), but dominant feature of both design double arch-double stitching (factor weighing heavily in favour of respondent)—Based on evidence before T.M.O.B., additional evidence filed on appeals, number of third party stitchmarks on register or in market meeting double arch-double stitching profile not extensive—Applicant did not establish third party designs bearing common element (double arch-double stitching) in “fairly extensive use” in marketplace —Evidence of mere coexistence of marks on foreign registers not relevant; evidence of foreign opposition on unproven records under foreign law not probative—No evidence which may point to unlikelihood of confusion; no evidence of extensive concurrent use (see Christian Dior, S.A. v. Dion Neckware Ltd.), therefore T.M.O.B. not required to consider absence of evidence of actual confusion—Consumer’s “first impression” cannot be stretched so far as to encompass impression left after garment handled, closely inspected, tried on for size, appearance—Applicant did not take issue with T.M.O.B.’s findings that: extent to which parties’ marks have become known favouring respondent; length of time parties’ marks have been in use strongly favouring respondent; nature of wares clearly favouring respondent; channels of trade would be same or overlapping—Proper reading of T.M.O.B. decision leaving no doubt decision reasonable, in most respects correct—Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6, 12(1)(d), 16(3)(a), (b), 56.
Vivat Holdings Ltd. v. Levi Strauss & Co. (T‑2456‑03, T-2457-03, 2005 FC 707, Layden-Stevenson J., order dated 19/5/05, 31 pp.)