Toyota Jidosha Kabushiki Kaisha v. Lexus Foods Inc.
T-2064-97
Blais J.
31/8/99
12 pp.
Appeal from Registrar of Trade-marks' rejection of applicant's opposition to registration of mark "Lexus" for use in association with canned fruits, vegetables, fruit and vegetable juices-Applicant owning trademark "Lexus" for use in association with cars, parts, accessories-Registrar holding applicant not providing evidence "Lexus" famous mark, no likelihood of confusion between marks as no connection between applicant's, respondent's wares-Additional evidence adduced on appeal-To be considered famous, trademark must be generally recognized throughout Canada as well as by most, if not all, segments of population-Survey indicating 6 out of 10 Canadian adults recognizing "Lexus" as indicative of car-Result of survey sufficient alone to demonstrate applicant's "Lexus" trade-mark famous-Applicant's trade-mark "Lexus" promoted through significant commercial use, advertisement prior to filing of subject applica tion-Trade-marks Act, s. 6(5) setting out five criteria to determine if confusion exists-List not exhaustive-Coined words such as "Lexus" given broader ambit of protection, particularly where well-known-In determining whether significant difference in nature of wares permitting conclusion no likelihood of confusion, surrounding circumstances highly relevant considerations-Must be careful in making comparisons with other cases, possibly distinguishable on own surrounding circumstances-Pink Panther Beauty Corp. v. United Artists Corp., [1998] 3 F.C. 534 (C.A.) distinguished-Respondent adopting applicant's mark in entirety, adding no further distinctive portion to mark or distinguishing it from applicant's mark in any way-Respondent having duty to select name with care so as to avoid confusion-That respondent's VicePresident admitting name chosen because representing quality showing applicant's promotional efforts successful-Factors in s. 6(5)(a) to (e) need not be interpreted as having equal weight in all circumstances: Miss Universe, Inc. v. Bohna, [1995] 1 F.C. 614 (C.A.)-Surrounding circumstances, evidence indicating applicant's trade-mark should benefit from wide ambit of protection, less weight should be accorded to difference in nature of wares-Appeal allowed-Registrar directed to refuse respondent's application for registration-Trade-marks Act, R.S.C., 1985, c. T-13, s. 6.