Big Sisters Assn. of Ontario v. Big Brothers of Canada
T-29-94
Gibson J.
20/5/97
60 pp.
Action for (a) declaration as between parties use, adoption by defendant of name "Big Brothers and Sisters of Canada" prohibited by Trade-marks Act, ss. 9, 11; (b) order that publication of official mark "Big Brothers and Sisters of Canada" published by Registrar of Trade Marks be struck out and declaration publication invalid, unenforceable; (c) interim, interlocutory, permanent injunction restraining defendant, officers, directors, agents, servants, employees, representatives from using, without consent of Big Sisters of Canada (BSC) or Big Sisters Association of Ontario (BSAO), marks "Big Sisters", "Big Sisters of Canada", "Big Brothers and Sisters of Canada", or from adopting, using, without consent of BSC, BSAO, word, mark consisting of, or so nearly resembling as to be likely to be mistaken for official marks of plaintiffs, "Big Sisters", "Big Sisters of Canada"-Plaintiffs' application for interlocutory injunction dismissed by Court order-Plaintiffs, BSAO, BSC and defendant, Big Brothers of Canada (BBC) charitable organizations-Big Sisters' movement established in Canada in 1912 by Local Council of Women in Toronto to support emotional, physical, social well-being of young girls-BSC raising money to support organization through donations, sponsorships-BBC national organization servicing Big Brothers, joint Big Brothers and Big Sisters organizations-Providing administrative, support services to local member agencies-On January 14, 1986, BBC issued notification of intent to seek permission from membership for change in name-Name "Big Brothers/Big Sisters of Canada" proposed in application for incorporation by BBC-Objection registered with Department of Consumer and Corporate Affairs on behalf of BSAO on basis use of proposed name would be confusing with "Big Sisters" and "Big Sisters Association of Ontario"-Name reconsideration request submitted by BBC rejected by Department on basis proposed name "Big Brothers and Sisters of Canada" would be confusing with 54 trade names, trade marks-Action instituted by plaintiffs on January 7, 1994-Whether parties to litigation "public authorities" for purposes of Act, s. 9-Parties herein dedicated to public good but not clearly under "duty" to public-Not subject to significant degree of government control-Required to dedicate profit earned for benefit of public, not for private benefit-Propriety of Court, without further evidence, simply relying on publication of notice of adoption, use as proof body was, at time of publication and remains public authority questionable-No evidence objection to use has been taken, and in fact representative of BSAO sits on Board of BSC-First issue: test to be applied under Trade-marks Act, s. 9(1)(n)(iii)-Test one of resemblance-Defendant's mark not identical to BSAO's marks-Issue whether person familiar with BSAO's marks but having imperfect recollection thereof would be likely to mistake defendant's mark therefor-Test not one of straight comparison-Concept of "straight comparison" implies close, careful look at, comparison between BSAO's marks and defendant's mark-Even if straight comparison relevant, no mistake, confusion likely to arise between defendant's and BSAO's mark or Big Sisters' mark-Defendant's mark not so nearly resembling either of those two marks of BSAO as to be likely to be mistaken for either-No weight given to rejection by Department of Consumer and Corporate Affairs of defendant's proposed name change to Big Brothers and Sisters of Canada-Dr. John W. Sanders main expert witness called by defendant, having impressive qualifications-Dr. Sanders' survey evidence designed to reflect appropriate test, not straight comparison test but test of resemblance, imperfect recollection-Onus on plaintiffs to establish mistake, confusion based on resemblance-Evidence adduced not discharging onus-Open to defendant to argue unenforceability of BSAO's marks against defendant-That Registrar of Trade-marks published defendant's mark after publication of BSAO's three marks irrelevant-Particular sequence of events not inhibiting enforceability of BSAO's marks against defendant-Adoption, use as official mark for wares and services prior to publication by Registrar of public notice of adoption, use condition precedent to enforceability-Mere publication of notice of adoption and use not conclusive before Court of such adoption, use-Onus on plaintiffs to establish adoption, use in trade-mark sense not met-Mark Big Brothers and Sisters of Canada unenforceable as against defendant-No remedies granted to plaintiffs-Order striking out publication of official mark Big Brothers and Sisters of Canada published by Registrar of Trade-marks not warranted-Evidence not showing goodwill in respect of mark Big Sisters of Canada exists in plaintiff BSAO or that confusion could arise-No trade-mark use of mark Big Sisters of Canada by BSAO-BSAO could not, on basis of own use, assert Act, s. 7(b) against defendant-Use by BSAO of marks Big Sisters Association of Ontario & Design and Big Sisters insufficient to result in confusion, prejudicial effect on goodwill flowing from use by defendant of mark Big Brothers and Sisters of Canada-Neither BSC nor BSAO could rely upon use of mark Big Sisters of Canada by BSC to assert defendant's use of mark Big Brothers and Sisters of Canada contravenes Act, s. 7(b) as against either of them-Action dismissed-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 7(b), 9, 11.