Digests

J.C. Penny Co., Inc. v. Gaberdine Clothing Co. Inc.

T-282-00

2001 FCT 1333, Nadon J.

4/12/01

51 pp.

Application for expungement of trade-mark "Arizona Blues Jeanswear Co." registered in name of respondent--Applicant requesting registration no. TMA 439,567 for trade-mark "Arizona Blues Jeanswear Co." be declared invalid, registration be struck from Register of Trade-marks-- Application to register trade-mark "Arizona Blues Jeanswear Co." filed by respondent's predecessor in title, on December 21, 1993, on basis of proposed use in Canada--On January 30, 1998, applicant applied to register trade-mark "The Original Arizona Jean Company" on basis of use in Canada since September 1990 in association with trousers, shirts, sweaters, pants, shorts, shoes and accessories--Application for expungement based on ground respondent not person entitled to secure registration under Trade-marks Act, s. 16(3)--Whether respondent entitled to secure registration of trade-mark "Arizona Blues Jeanswear Co."--Under Act, s. 18(1), registration of trade-mark invalid if applicant for registration not person entitled to secure registration--Onus of proof on person seeking expungement to establish invalidity of registration, since registered trade-mark presumed to be valid--Person entitled to secure registration if proposed trade-mark not confusing with trade-mark previously used, made known in Canada by another person--Relevant date to assess confusion date on which respondent filed application, December 21, 1993--Onus on applicant to establish use of trade-mark in Canada prior to December 21, 1993--Applicant must adduce evidence of sales made to Canadians of wares bearing trade-mark-- Evidence of advertisement in Canada of wares with which trade-mark associated not sufficient to constitute use of trade-mark--Applicant's sales made in normal course of trade--Applicant has hundreds of cardholders with Canadian home addresses--Thousands of applicant's catalogues mailed to Canadians every year--Applicant began using "The Original Arizona Jean Company" trade-mark in 1989 in association with trousers, jeans for men, women, children--Wares associated with trade-mark sold in applicant's department stores in United States, through catalogues to customers elsewhere, in Canada--Wares associated with trade-mark prominently displayed, on sale in applicant's catalogues--Applicant still shipping catalogues to Canada, selling wares to Canadians through mail-order system, delivering wares to homes of Canadian purchasers-- Applicant used trade-mark in Canada prior to December 21, 1993--Whether trade-mark made known in Canada governed by Act, s. 5--Insufficient evidence to establish applicant's trade-mark well known in Canada prior to December 21, 1993, knowledge of trade-mark pervaded country to substantial extent--Test to determine whether trade-mark causes confusion with another trade-mark set out in Act, s. 6(2)--In expungement proceeding, onus to prove confusion lies with party alleging confusion, applicant herein--In determining likelihood of confusion, Court must have regard to factors set out in Act, s. 6(5)--Taking into consideration factors enumerated in s. 6(5), as well as surrounding circumstances, ordinary person having vague recollection of respondent's trade-mark would infer wares associated with trade-mark originate from same source as wares associated with applicant's trade-mark--At date of first use by respondent, respondent's trade-mark confusing with applicant's trade-mark--Similarity in words used in both expressions, striking similarity in nature of wares leading Court to believe person having imperfect recollection of both trade-marks would be confused as to source of wares-- Application granted--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 5, 6, 16 (as am. by S.C. 1994, c. 47, s. 195), 18.