TRADE MARKS |
Registration |
Sunbeam Products, Inc. v. Mister Coffee & Services Inc.
T-2189-99
2001 FCT 1218, Kelen J.
7/11/01
10 pp.
Appeal from Registrar of Trade-marks' decision, in opposition proceeding, refusing applicant's trade-mark application for trade-mark "Mr. Coffee" for use in association with coffee--Applicant already registered owner of "Mr. Coffee" trade-mark for use in association with coffee brewers, disposable coffee filters, decanters--Respondent has used trade-mark and trade-name "Mister Coffee" in association with coffee equipment, coffee and coffee supply services for period of 10 years prior to trade-mark application--Applicant's predecessors in title had tolerated, without legal objection, co-existence of "Mr. Coffee" trade-mark with respondent's use of trade-name "Mister Coffee"--As to standard of review herein, since additional evidence filed by applicant before TD would not have materially affected or changed Registrar's decision, standard of review herein reasonableness simpliciter: Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (C.A.)--Appeal dismissed--While Registrar expressed doubt about lawfulness of respondent's use of trade-name "Mister Coffee", as no finding of infringement by any court, found issue not within jurisdiction--Finding reasonable--Infringement action commenced by applicant in 1995 in Federal Court will resolve question of lawfulness of trade-name used by Mister Coffee and Services Inc.--Registrar, in course of opposition proceedings under Trade-marks Act, s. 38, does not have jurisdiction to conduct full hearing with viva voce evidence to determine lawfulness of respondent's use of trade-mark--If lawfulness issue was clear, then Registrar has jurisdiction to state respondent cannot rely upon its use of trade-mark because use not lawful--Registrar herein cannot come to that clear conclusion in this opposition proceeding--Registrar decided reasonably in finding applicant's failure to protect its trade-mark could have legal ramifications--Implicitly, Registrar finding issue needs to be explored in appropriate forum, not opposition proceeding to application for new trade-mark--Registrar's finding likelihood of confusion reasonable--Finding proposed trade-marks not distinctive reasonable--Trade-marks Act, R.S.C., 1985, c. T-13, s. 38 (as am. by S.C. 1992, c. 1, s. 134; 1993, c. 15, s. 66(2)).