TRADE MARKS |
Registration |
Bab Holdings, Inc. v. The Big Apple Ltd.
T-1623-00
2002 FCT 72, McKeown J.
22/1/02
7 pp.
Judicial review of Trade-marks Opposition Board's refusal to register applicant's trade-mark "Big Apple Bagels" & Design for use in association with bakery products, deli foods, drinks, restaurant and carry-out services--Registrar holding mark not distinctive of applicant's wares, services, confusing with respondent's registered marks at date of filing statement of opposition--Onus on applicant to show that its mark adapted to distinguish or actually distinguishes its services from those of others throughout Canada--Standard of review applied with respect to factual findings and application of law to facts: reasonableness simpliciter--Standard to be applied to strictly legal questions: correctness--Strictly legal issues herein relating to proper date for determining distinctiveness, and whether exclusive use must be proven throughout Canada in order to prove distinctiveness--Those issues not within TMOB's expertise--While normally trade-mark registrable even if territorially limited, this was not application to which Trade-marks Act, s. 12(2) or 13 applies--Accordingly, given reputation of respondent's marks "The Big Apple" and "Apple Design" not only in Colborne area, but throughout highway 401 corridor area, applicant's mark not having requisite distinctiveness to support granting of trade-mark application --Possible to refuse application for registration on basis of non-distinctiveness independent of issue of confusion provided ground raised in opposition: Clarco Communications Ltd. v. Sassy Publishers Inc. (1994), 54 C.P.R. (3d) 418 (F.C.T.D.)--Where likely public will assume applicant's goods approved by opponent so that state of doubt, uncertainty existing in minds of purchasing public, trade-marks confusing: Glen-Warren Productions Ltd. v. Gertex Hosiery Ltd. (1990), 29 C.P.R. (3d) 7 (F.C.T.D.)-- Appropriate date for assessing distinctiveness date of filing statement of opposition: American Assn. of Retired Persons v. Canadian Assn. of Retired Persons (1998), 84 C.P.R. (3d) 198 (F.C.T.D.)--Application dismissed--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 12(2), 13.