Baylor University v. Hudson's Bay Co.
T-2590-97
Muldoon J.
15/12/98
14 pp.
Appeal under Trade-marks Act, ss. 56, 59 from refusal by Registrar of Trade Marks to register appellant's Canadian trade mark application no. 711,942 for mark "Baylor"-Corporate respondent opposing appellant's application to obtain full registration of proposed trade mark-Application including services of conducting college-level courses, organizing college sports events, wares such as sweaters, sweatshirts, sweatpants, T-shirts, shorts, jackets, hats and shirts-Application amended in April 1995, proposed mark to be used in association with "collegiate merchandise"-Respondent's grounds of opposition lack of distinctiveness, confusion-Respondent Bay's trade marks outnumbering other owner's in regard to marks with "Bay" therein, prefix, within, suffix-Whether mark for which registration sought confusing with opponent's, The Bay's, trade marks-Appellant exclusive licensing agent in Canada for U.S. colleges, including Baylor University-Evidence of appellant's witness not plausible, consisting largely of puffery, speculation-Word Baylor, without apposition "University", lacking distinction in Canada, confusing with respondent's many, already historically famous marks-Evidence of Sandra J. Rick as to actual confusion involving Baylor watches pertinent, credible, telling-Virtually fatal to appellant's application, appeal-Appellant's proposed mark, respondent's marks similar-Proposed mark will cause confusion-Word Baylor objectively identical, causing confusion with respondent's lines of trade marked goods whether associated with wrist watches or appellant's lines of goods-Real, actual confusion proved by respondent-Famous mark entitled to strong protection against infringement under Trade-marks Act-Appellant seeking to employ trade mark with track-record for being confusing, Baylor, to market collegiate type clothing as if university were clothing department of department store-Wide scope of protection afforded by trade mark's fame relevant only when applying it to connection between applicant's, opponent's trade and services-Both parties herein applying respective marks to collegiate clothing offered for sale through similar, if not same, channels of trade-Respondent's trade marks therefore weightier because of fame in Canada-Respondent's arguments more reasonable, correct-Appeal dismissed-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 56, 59.