Techniquip Ltd. v. Canadian Olympic Assn.
T-1532-94
Joyal J.
2/3/98
13 pp.
Appeal from decision of Trade-marks Opposition Board refusing appellant's trade-mark application No. 612,272 for Representation of a Man-In July 1988, appellant, Techniquip Limited, filed application to register trade mark Representation of a Man-Respondent, Canadian Olympic Association, filed statement of opposition on April 21, 1989-Respondent's family of marks consisting of squared black background with white stick-like figures on top-On every mark, extra lines help define which sport is practiced by figures-Applicant's mark consisting of rounded black background with white stick-like figure on top-Respondent "public authority" under Trade-marks Act, s. 9(1)(n)(iii)-Test under s. 9(1)(n)(iii) restricted to resemblance between prohibited mark, adopted mark-Only extension introduced applies to body of evidence on which trial judge may rely when assessing opposed marks under s. 9 resemblance test-Test whether person, on first impression, knowing opponent's mark only and having imperfect recollection of it, would likely be deceived, confused by applicant's mark-Absence, similarity of services or wares between parties irrelevant under Act, s. 9(1)(n )(iii)-When considering possibility of confusion between two marks, Registrar must determine if common element of two marks also contained in number of other marks-In opposition proceeding, Board must establish, with regard to evidence submitted, whether opponent can rely on family of marks-Applicant submitted two affidavits indicating characteristics of opponent's trade marks common features, used by third-party owners-Evidence tending to negate proprietorial significance otherwise attached to opponent's alleged family of marks-Marks owned by multitude of different owners share common characteristics of respondent's marks-Therefore, stick-like figures representing person in diverse activities should no longer, in isolation, constitute irrefutable protection for official trade-marks of kind involved here-Board erred in failing to acknowledge applicant's evidence in respect of shared characteristics of respondent's marks-State of register of material consideration-Intent of s. 9 to remove all kinds of marks from field of trade or business, to preclude any person from capitalizing on well-known, respected public symbol and adopting it for own wares or services-Owner cannot simply rely on family of marks to establish impugned mark consists of, or so nearly resembles it, as to be likely to be mistaken for it-Registrar wrong in refusing registration to appellant-Appeal allowed-Trade-marks Act, R.S.C., 1985, c. T-13, s. 9 (as am. by S.C. 1990, c. 14, s. 8).