A-365-96
Pink Panther Beauty Corporation (Appellant)
v.
United Artists Corporation (Respondent)
Indexed as: Pink Panther Beauty Corp.v. United Artists Corp. (C.A.)
Court of Appeal, Isaac C.J., Linden and McDonald JJ.A."Toronto, January 22; Ottawa, March 30, 1998.
Trade marks — Registration — Famous marks — Mark —The Pink Panther— — No likelihood of confusion between famous mark and other mark where no connection whatsoever between respective wares, trades (motion picture business on one hand, hair care, beauty products on other).
Respondent's trade-mark "The Pink Panther" (from the comedy films with Peter Sellers as Inspector Clouseau), the subject of the case herein, has been, for over thirty years, registered for use in Canada in association with the entertainment business. In 1986, the appellant, Pink Panther Beauty Corporation, applied to register the trade-mark "Pink Panther" for proposed use in association with hair care and beauty product supplies, and in the operation of a business dealing in their distribution, and instructing and educating others in their distribution.
In the opposition proceeding, the Registrar of Trade-marks found that, given the completely disparate nature of the wares, services and trades of the parties, there was no likelihood of confusion between the marks. On appeal from that decision, the Trial Judge found that, since the mark was very famous and, therefore, worthy of a wide ambit of protection, the differences in the nature of the wares and of the trades of the appellant and the respondent were less significant than they might otherwise be in the determination of the likelihood of confusion. He found in favour of the respondent. This was an appeal from that decision.
Held (McDonald J.A. dissenting), the appeal should be allowed.
Per Linden J.A.: The essential question was whether the Trial Judge was correct in concluding that there was a likelihood that the appellant's mark would, in the mind of the average consumer, be confusing with the mark of the respondent.
Upon examining the basis for the protection of trade-marks and the rationale behind the protection for certain things and not others, it must be remembered that when deciding property issues, it is always a matter of balancing the public right to competition with the private right to ownership. What is important is that the trade-mark be associated in the minds of the public with the goods produced by the trade-mark owner. It is the association of a trade-mark with a particular source which is the key to understanding the rights protected by the Trade-marks Act. The Act makes clear that what is protected is not the exclusive right to any mark that a person might think of, but the exclusive right to use it in association with certain products or services.
Subsection 6(5) of the Act lists six factors that must be considered in determining whether there is a likelihood of confusion between trade-marks, five specific and one general. The specific factors are: the inherent distinctiveness of the trade-marks and the extent to which they have become known; length of time in use; nature of the wares, services or business; nature of trade; similarity in appearance, sound and idea suggested. The general consideration is: all the surrounding circumstances.
In cases involving similar, famous trade-marks, much of the case law has little precedential value. The cases turn on their particular and often unique facts. In these cases, it is necessary to adjust the weight given to the individual criteria or to the surrounding circumstances.
The Trial Judge considered the relevant factors and it was difficult to fault his factual conclusions with respect to any one of them, but, taking them all together, he erred in the way in which he weighed them and in the conclusion he reached. The marks, while not identical, were very similar. The trade-mark owned by United Artists was clearly a famous and inherently distinct one, and has been in use in Canada for some thirty years. However, the issue to be decided was not how famous the mark was, but whether there was a likelihood of confusion in the mind of the average consumer between United Artists' mark and the one proposed by the appellant with respect to the goods and services specified. In view of the gaping divergence in the nature of the wares and the nature of the trade, the question had to be answered in the negative. The Trial Judge did not give sufficient weight to the fact that not only were the wares in each case completely disparate, but there is no connection whatsoever between them.
Based only on the fact that the respondent's mark was famous, there should not be an automatic assumption of confusion. In the circumstances, remembering that the test to be met was likelihood of confusion (not possibility of confusion), the fame of the mark could not act as a marketing trump card such that the other factors are thereby obliterated. Just because Hollywood films are well known, the whole world is not barred forever from using words found in the titles of Hollywood films to market unrelated goods.
While the public might be confused by a product which used the name "Pink Panther" and simultaneously depicted a pink cat, the use of the words alone cannot be said to give rise to such confusion. Much of the fame which this Court and the Court below attached to the respondent's mark stemmed not from the words "The Pink Panther" but from the associated music and cartoon images. In this case, words only were used. There was no accompanying design or music. It was reasonable to conclude that the average person, without being presented with these other hallmarks, would not confuse the source of the appellant's proposed mark. However, this did not give the appellant carte blanche to exploit all of the respondent's trade-marks in selling all products in any way it chooses. It was still subject to the restrictions of the Trade-marks Act and the common law.
Per McDonald J.A. (dissenting): The appeal should be dismissed. The Trial Judge did not err in weighing the relevant factors to be considered under subsection 6(5) of the Trade-marks Act. It was precisely because of the fame and goodwill associated with the name "The Pink Panther" that the appellant has chosen that name for its business. What the appellant sought to do was profit financially from the goodwill associated with the respondent's trade-name. While the appellant may use this name, it must first receive the permission of the respondent. To come to any other result in the case of such a famous and widespread trade-name as "The Pink Panther" tips the balance too far in favour of the copycat artist seeking to profit financially from someone else's creative fortune.
As Polysar Ltd. v. Gesco Distributing Ltd. (1985), 6 C.P.R. (3d) 289 (F.C.T.D.) makes clear, when dealing with a widespread, distinctive trade-mark, it is not always necessary that the mark in question be used for similar wares or in a similar industry for confusion to exist.
Given the popularity of the respondent's trade-mark, the extent to which it has prevailed in the Canadian market (over 30 years) and its widespread diversification (from comic books to advertisements for Fibreglass), allowing the appellant to use the name "Pink Panther" will almost certainly be confusing for the average consumer. It is naïve to believe that the appellant's decision to use the name "Pink Panther" was not deliberate or unrelated to the mark's fame. Seeing the words alone will leave the average consumer wondering whether the respondent is the promoter behind these new products. Just as seeing the words Mickey Mouse or Donald Duck conjure up a mental picture of those Disney characters leading the consumer to believe that Disney is associated with the product, the name Pink Panther on a shampoo bottle will have the identical effect.
statutes and regulations judicially considered
Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2 "distinctive", 4(1), 6, 7(c ), 19 (as am. by S.C. 1993, c. 15, s. 60), 20 (as am. by S.C. 1994, c. 47, s. 196), 30 (as am. by S.C. 1993, c. 44, s. 230; 1994, c. 47, s. 198), 40 (as am. by S.C. 1993, c. 44, s. 231), 56.
Unfair Competition Act, 1932 (The), S.C. 1932, c. 38.
cases judicially considered
applied:
Krazy Glue, Inc. v. Grupo Cyanomex, S.A. de C.V. (1992), 45 C.P.R. (3d) 161; 57 F.T.R. 278 (F.C.T.D.); Choice Hotels International Inc. v. Hotels Confortel Inc. (1996), 67 C.P.R. (3d) 340; 112 F.T.R. 39 (F.C.T.D.); Eno v. Dunn (1980), 15 App. Cas. 252 (H.L.); Freed & Freed Ltd. v. Registrar of Trade Marks et al., [1950] Ex. C.R. 431; [1951] 2 D.L.R. 7; (1950), 14 C.P.R. 19; 11 Fox Pat. C. 5; Sunshine Biscuits, Inc. v. Corporate Foods Ltd. (1982), 61 C.P.R. (2d) 53 (F.C.T.D.); Western Clock Co. v. Oris Watch Co. Ltd., [1931] Ex. C.R. 64; [1931] 2 D.L.R. 775; Polysar Ltd. v. Gesco Distributing Ltd. (1985), 6 C.P.R. (3d) 289 (F.C.T.D.); Joseph E. Seagram & Sons Ltd. v. Seagram Real Estate Ltd. (1990), 33 C.P.R. (3d) 454; 38 F.T.R. 96 (F.C.T.D.); Berry Bros. & Rudd Ltd. v. Planta Tabak-Manufactur Dr. Manfred Oberman (1980), 53 C.P.R. (2d) 130 (F.C.T.D.); Playboy Enterprises Inc. v. Germain (1978), 39 C.P.R. (2d) 32 (F.C.T.D.); Playboy Enterprises, Inc. v. Astro Tire & Rubber Co. of Canada Ltd. (1978), 46 C.P.R. (2d) 87 (T.M. Opp. Bd.).
distinguished:
Maple Leaf Gardens Ltd. v. Leaf Confections Ltd. (1986), 10 C.I.P.R. 267; 12 C.P.R. (3d) 511; 7 F.T.R. 72 (F.C.T.D.); affd Leaf Confections Ltd. v. Maple Leaf Gardens Ltd. (1988), 19 C.P.R. (3d) 331; 87 N.R. 385 (F.C.A.).
considered:
Cartier, Inc. v. Cartier Optical Ltd./Lunettes Cartier Ltée (1988), 19 C.I.P.R. 69; 20 C.P.R. (3d) 68; 17 F.T.R. 106 (F.C.T.D.); Coca-Cola Ltd. v. Fisher Trading Co. (1988), 19 C.I.P.R. 307; 25 C.P.R. (3d) 200; 21 F.T.R. 6 (F.C.T.D.); Oshawa Holdings Ltd. v. Fjord Pacific Marine Industries Ltd. (1981), 55 C.P.R. (2d) 39; 36 N.R. 71 (F.C.A.); Can. Wire & Cable Ltd. v. Heatex Howden Inc. (1986), 11 C.I.P.R. 147; 13 C.P.R. (3d) 183 (F.C.T.D.); Clorox Co. v. E.I. Du Pont de Nemours and Co. (1995), 64 C.P.R. (3d) 79; 103 F.T.R. 55 (F.C.T.D.); Ikea Ltd./Ikea Ltée v. Idea Design Ltd. (1987), 11 C.I.P.R. 313; 13 C.P.R. (3d) 476; 8 F.T.R. 215 (F.C.T.D.); Frescobaldi, et al. trading as Frescobaldi v. T.G. Bright & Co., Ltd. (1985), 4 C.P.R. (3d) 569 (T.M. Opp. Bd.); Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd. (1986), 8 C.I.P.R. 232; 9 C.P.R. (3d) 341 (F.C.T.D.); affd [1987] 3 F.C. 544; (1987), 38 D.L.R. (4th) 544; 17 C.I.P.R. 263; 14 C.P.R. (3d) 314; 80 N.R. 9 (C.A.); Miss Universe, Inc. v. Bohna, [1995] 1 F.C. 614; (1994), 58 C.P.R. (3d) 381; 176 N.R. 35 (C.A.); Miss Universe, Inc. v. Bohna, [1992] 3 F.C. 682; (1992), 43 C.P.R. (3d) 462 (T.D.).
referred to:
Sinclair (John) Ld. — In the Matter of a Trade Mark of (1932), 49 R.P.C. 123 (Ch. D.); Bowden Wire Ld. v. Bowden Brake Co. Ld. (1914), 31 R.P.C. 385 (H.L.); Pinto v. Badman (1891), 8 R.P.C. 181 (C.A.); Beverley Bedding & Upholstery Co. v. Regal Bedding & Upholstering Ltd. (1980), 110 D.L.R. (3d) 189; 47 C.P.R. (2d) 145 (F.C.T.D.); Wedgwood plc v. Thera Holding Ltd. (1987), 18 C.I.P.R. 209; 18 C.P.R. (3d) 201 (T.M. Opp. Bd.); Registrar of Trade Marks v. Compagnie Internationale pour l'Informatique CII Honeywell Bull, [1985] 1 F.C. 406; (1985), 1 C.I.P.R. 309; 4 C.P.R. (3d) 523; 61 N.R. 286 (C.A.); Carson v. Reynolds, [1980] 2 F.C. 685; (1980), 115 D.L.R. (3d) 139; 49 C.P.R. (2d) 57 (T.D.); Danjaq, S.A. v. Zervas (1997), 75 C.P.R. (3d) 295; 135 F.T.R. 136 (F.C.T.D.); Glen-Warren Productions Ltd. v. Gertex Hosiery Ltd. (1990), 29 C.P.R. (3d) 7; 32 F.T.R. 274 (F.C.T.D.); Conde Nast Publications Inc. v. Gozlan Brothers Ltd. (1980), 49 C.P.R. (2d) 250 (F.C.T.D.); Hack (Edward) — In the Matter of an Application to register a Trade Mark by (1941), 58 R.P.C. 91 (Ch. D.).
authors cited
Henderson G. F. "An Overview of Intellectual Property" in Henderson G. F. (ed.). Trade-Marks Law of Canada. Toronto: Carswell, 1993.
McLachlin, Madam Justice Beverley "Intellectual Property " What's it all About" in Henderson G. F. (ed.). Trade-Marks Law of Canada . Toronto: Carswell, 1993.
APPEAL from a Trial Division decision (United Artists Corp. v. Pink Panther Beauty Corp. (1996), 67 C.P.R (3d) 216; 111 F.T.R. 241 (F.C.T.D.)) allowing an appeal from the decision of the Registrar of Trade-marks (United Artists Pictures, Inc. v. Pink Panther Beauty Corp. (1990), 34 C.P.R. (3d) 135 (T.M. Opp. Bd.)), the Trial Division holding that there was likelihood of confusion between the respondent's famous "The Pink Panther" trade-mark, registered for use in association with motion picture films, and the appellant's "Pink Panther" trade-mark, proposed for use in association with hair care and beauty product supplies. Appeal allowed.
counsel:
Stephanie Chong for appellant.
Adele J. Finlayson for respondent.
solicitors:
Lang Michener, Toronto, for appellant.
Shapiro Cohen Andrews Finlayson, Ottawa, for respondent.
The following are the reasons for judgment rendered in English by
Linden J.A.: This appeal raises the question of how far the Trade-marks Act1 will go to protect famous trade-marks where those marks are used in relation to completely different wares or services.
The Facts
The "Pink Panther" movies are a series of comedy films which starred the late, great comedian Peter Sellers as a bumbling Parisian detective named Inspector Clouseau who, despite his bungling, always managed to solve the crime. In the inaugural film, titled The Pink Panther (1964), Inspector Clouseau was called on to investigate a theft. The stolen object was a fabulous gemstone with one small flaw which, when held to the light, resembled a pink panther. Hence, the title of the movie.
The film's creator, Blake Edwards, originally intended Inspector Clouseau to be a minor supporting character in the first film, but he became the star. A succession of six additional films followed: A Shot in the Dark; Return of the Pink Panther; The Pink Panther Strikes Again; The Revenge of the Pink Panther; Trail of the Pink Panther; and Curse of the Pink Panther. Even though all of the films refer to it, the pink panther itself (i.e., the jewel) was central to only the first film and otherwise appeared only briefly in the third instalment of the series. But the name "Pink Panther" lives on and continues to be rather well known, not only in relation to the movies, but for a cartoon series, and Academy Award winning theme music.
The respondent, United Artists Corporation, is the owner of three trade-marks registered in Canada. The mark that is the subject of the case before this Court"the words "The Pink Panther" (registration number 152,831)"is registered for use in association with "phonograph records; motion picture films; film leasing and distribution services; entertainment services by means of motion picture films".2 In addition, there are two drawings of a panther which are also registered as trade-marks. The first (registration number 152,832) is registered in association with "film leasing and distribution services; entertainment services by means of motion picture films".3 The second (registration number 152,833) is registered in association with "phonograph records; entertainment services by means of motion picture films".4 These latter two trade-marks are not the subject of this case. Other marks owned by the respondent in Canada were not raised in opposition and are not relevant to this appeal. Notably, there was no trade-mark registered by the respondent in relation to beauty products.
Pink Panther Beauty Corporation, the appellant, was incorporated to sell hair care and beauty supplies under its own name, to be made available through beauty salons. On February 19, 1986, it applied to register the trade-mark "Pink Panther" (without the definite article) for proposed use in Canada in association with a wide variety of hair care and beauty product supplies, and in the operation of a business dealing in the distribution of hair care and beauty product supplies, and instructing and educating others in the distribution of hair care supplies and beauty products.
The respondent opposed the registration. The Registrar, in a decision dated October 31, 1990 [United Artists Pictures, Inc. v. Pink Panther Beauty Corp. (1990), 34 C.P.R. (3d) 135 (T.M. Opp. Bd.)], decided, inter alia, that there was no likelihood of confusion between the marks. He determined that the opponent's mark was not well-known in Canada, placing much emphasis on the difference in the goods and services used by United Artists as opposed to those proposed by Pink Panther Beauty Corporation. Explaining his decision, he said:
Notwithstanding that the marks at issue are virtually identical, I have considered that the wares, services and trades of the parties are completely disparate and that the opponent failed to evidence any current reputation for the registered mark in Canada.5
United Artists appealed that decision to the Trial Division of the Federal Court [(1996), 67 C.P.R. (3d) 216], pursuant to section 56 of the Act. Subsection 56(5) of the Act allows the appellant to adduce evidence in addition to that adduced before the Registrar. It has been determined that the decision of the Registrar is to be given great weight in any appeal, but ultimately the Court must come to its own conclusion given all the surrounding circumstances.6
Reasons of the Trial Judge
The grounds of appeal at trial involved the preliminary issue of whether United Artists had standing to bring the appeal. The substantive grounds of appeal were that the applicant, Pink Panther Beauty Corporation, was not a person entitled to register the mark because the mark was confusing with United Artists registered mark; that the proposed mark was not distinctive; and that the proposed mark was not registrable because it was confusing with the registered marks. The Trial Judge found that the appellant did not lack standing and that the proposed mark was distinct. The main question dealt with the issue of confusion. The Trial Judge found that the various factors to be considered favoured United Artists. The Trial Judge noted that on appeal from the decision of the Registrar, the respondent filed substantial additional affidavit evidence, as the Act allows. Contrary to the Registrar's decision, the Trial Judge found the mark to be very famous and, therefore, worthy of a wide ambit of protection. Moreover, he placed weight on the fact that it had been in use in Canada for over thirty years. As well he thought that the marks were virtually identical. He did recognize that the nature of the wares or services, as well as the nature of the trade, was quite divergent. On the whole, however, he found that the factors were balanced between the two parties. In concluding, he stated:
In the case at bar, the factors to be considered in determining whether confusion is likely to arise, as set out in s. 6(5), do not wholly favour either the appellant or the respondent. However, it is clear that those factors are not necessarily to be given equal weight, especially where one of the trade marks is a strong mark.
. . .
As noted earlier, the trade marks of the appellant in this case are strong marks, which have had widespread use throughout this country from the mid-1960s to the 1990s. In light of that fact, I am of the opinion that the differences in the nature of the wares and of the trades of the appellant and the respondent are less significant than they might otherwise be in the determination of the likelihood of confusion.7
Pink Panther Beauty Corporation appeals that decision to this Court.
Submissions of the Parties
The appellant, in thorough submissions by Ms. Stephanie Chong, contends that there is virtually no similarity in the types of wares or services that are represented by the two marks. With respect to the degree of protection that should be afforded a strong mark, the cases relied upon by the Trial Judge can all be distinguished on their facts from this case.
The respondent, ably represented by Ms. Finlayson, submits that the decision reached by the Trial Judge on the question of confusion is one of fact. It was open to the Trial Judge, from the evidence on the record, to conclude as he did, and that conclusion should not be disturbed. Furthermore, where it is found that a mark is very distinctive and well known, it is not necessary to find any similarity between the types of wares or services, she contends.
Procedural arguments were raised by the appellant again challenging the respondent's standing and the Court's jurisdiction to hear the matter. These arguments arise from the procedural history of the case, particularly the confusion over who the original opponent to the registration was or should have been. However, given our decision with respect to the merits of this case, we are not required to deal with these procedural matters.
The Law
The essential question in this case is whether the Trial Judge was correct in concluding that there was a likelihood that the appellant's mark would, in the mind of the average consumer, be confusing with the mark of the respondent. The law has been codified in section 6 of the Trade-marks Act which reads:
6. (1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.
(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
. . .
(5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
(b) the length of time the trade-marks or trade-names have been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
In an application to the Registrar, the onus is on the applicant to show that there is no likelihood of confusion with the registered trade-mark in the mind of the average consumer. This onus is long established in England8 and in Canada under The Unfair Competition Act, 1932 [S.C. 1932, c. 38].9 Under the present legislation, Cattanach J. in Sunshine Biscuits, Inc. v. Corporate Foods Ltd.,10 after reviewing the legal history, determined that the onus rests on the applicant not only before the Registrar, but also that the onus does not change by virtue of the commencement of opposition proceedings. He concluded:
[In The Wool Bureau of Canada Ltd. v. Queenswear (Canada) Ltd. (1980), 47 C.P.R. (2d) 11] it was said that the onus upon an applicant for the registration of a trade mark of proving that there is no likelihood of confusion within the meaning of s-s. 6(2) does not change by reason of the interpolation of opposition proceedings. Those proceedings are but another statutory step in the ultimate decision of the Registrar to register or not to register the trade mark applied for. Thus it follows that the onus remains on the applicant for registration in opposition proceedings just as it was on the application to the Registrar.11
I am in agreement with this principle.
The protection of trade-marks as property is based in the common law action for passing off. Historically, the marketplace has been very concerned with guaranteeing consumers the quality of goods that they had come to rely upon in the course of trade. To further that guarantee, the common law developed the tort of passing off, which helped to assure that a person was representing his or her goods as being his or her own goods and not the goods of someone else. A necessary element of the tort of passing off was always an attempt to deceive. When this attempt to deceive caused confusion and damage, it was actionable. While the rationale for the tort was to protect the public, it was not the consumer who sued, but the owner of the trade-mark who brought the action, thereby protecting the public, as well as its own interest.
Today, even though the common law remedies are still available, trade-marks are protected statutorily and the action for passing off has been codified in paragraph 7(c) of the Act. The Act however, offers a wider ambit of protection than the old common law. First, the plaintiff in an infringement proceeding (or the opponent in an opposition proceeding) need not show that the goods or services are marketed in the same area as the old common law did. The registered trade-mark is valid across Canada and, along with it the owner possesses the right to its exclusive use in association with specified wares or services nationwide. As well, no damages need to be proven, nor indeed must an attempt to deceive be made out in order to succeed.
It has been suggested that the common law action sought to protect the consumer's expectation of quality which resided in those marks.12 Thus, courts have held, in the past, that marks could not be assigned13 or licensed,14 and a manufacturer's mark could not be converted into a seller's mark.15 These propositions, however, have been undone by modern amendments to trade-marks legislation, allowing marks to be more amenable to commercial practice. In so doing, the emphasis has shifted from a guarantee theory of protection to a source theory. In other words, what the registered mark does nowadays is to ensure that the wares or services are the wares and services of a particular person and no one else, that is, the source of the goods is guaranteed.
The question posed by the existence of intellectual property regimes has been defined as one of where to draw the line between the right to copy and the right to compete.16 This is a question about what is truly worthy of the status of property and what is in reality an element of the marketplace which should be open to all competitors to use in their efforts to succeed. I find this question a profitable one to keep in mind. For example, Henderson discusses the rationale behind protection for certain things and not others. He wrote:
The main reason that we do not protect ideas per se is because they are commonplace. To protect an idea at its preliminary or "bare idea" stage could stultify economic progress. And, most importantly, ideas, per se , are relatively useless.17
When deciding property issues it is always a matter of balancing the public right to competition with the private right to ownership. I do not find that this is limited to questions of intellectual property; an owner does not have unlimited rights with respect to personalty or realty. Consideration of the public interest is advanced through statute and through the common law (e.g. the tort of nuisance). When considering these types of questions the Court must be cognizant of the fact that the market relies on individuals who, through their labour and ingenuity, bolster the strength of our economy. That strength benefits us all. We must be careful when we determine property rights so that the line is drawn fairly between the right to the exclusive use of an idea and the right of individuals to compete and earn a livelihood. This dilemma is neatly summarized by Madam Justice McLachlin when she says:
We must stop thinking of intellectual property as an absolute and start thinking of it as a function"as a process, which, if it is to be successful, must meet diverse aims: the assurance of a fair reward to creators and inventors and the encouragement of research and creativity, on the one hand; and on the other hand, the widest possible dissemination of the ideas and products of which the world, and all the individuals in it, have such great need.18
The scheme of the Act, consonant with a source theory of property rights, allows for the registration of trade-marks in relation to the marketing of wares or services. Pursuant to section 30 [as am. by S.C. 1993, c. 44, s. 230; 1994, c. 47, s. 198] of the Act, the registrant of the mark must specify the wares or services in relation to which he or she is registering the mark. As well, section 40 [as am. by S.C. 1993, c. 44, s. 231] of the Act demands that the registration can only be effected when the mark itself has actually been used. A person may propose a mark for registration, but, until it has been used, the trade-mark cannot be registered. That "use" is a defined term in the Act and does not refer to a state of being in operation. Subsection 4(1) states the following:
4. (1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.
What is important is that the trade-mark be associated in the minds of the public with the goods produced by the trade-mark owner. It is the association of a trade-mark with a particular source which is the key to understanding the rights protected by the Act.
This notion of source in relation to the goods is also fundamental to the definition of "distinctive" set out in the Act. Section 2 defines that term in this way:
2. . . .
"distinctive", in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them.
Again, the Act makes clear that what is being protected is not the exclusive right to any mark that a person might think of, but the exclusive right to use it in association with certain products or services. Where there is no use of the mark, or where the consumer is unable to rely on the mark to distinguish one person's products or services from another person's products or services, then no protection is warranted. In Western Clock Co. v. Oris Watch Co. Ltd.,19 Audette J. of the Exchequer Court made this comment:
Distinctiveness is of the very essence and is the cardinal requirement of a trade-mark, which is used to distinguish the goods of a trader from the goods of all other traders.20
The rights conferred by registration of a trade-mark are spelled out in sections 19 [as am. by S.C. 1993, c. 15, s. 60] and 20 [as am. by S.C. 1994, c. 47, s. 196] of the Act. These deal with actual infringement and deemed infringement. The right of exclusive use of the trade-mark granted by section 19 is valid only with respect to the wares and services stated in the registration. Section 20 of the Act prohibits the use of trade-marks which are confusingly similar to registered trade-marks, and their use is deemed to be an infringement. The question of confusion refers us back to section 6 of the Act.
A trade-mark is a mark used by a person to distinguish his or her wares or services from those of others. The mark, therefore, cannot be considered in isolation, but only in connection with those wares or services. This is evident from the wording of subsection 6(2). The question posed by that subsection does not concern the confusion of marks, but the confusion of goods or services from one source as being from another source. It is for this reason that marks which rely on geographic origins or generally descriptive words (e.g. the fictional marks Pacific Coffee or Premium Soda) are not afforded a wide ambit of protection. Even though proposed marks might be similar to them, the public is not likely to assume that two products that describe themselves as being "Pacific" or "Premium" necessarily originate from the same source. Because confusion is not likely, protection is not necessary.
This concentration on the source of the wares or services must inform any consideration of section 6 of the Act. Six factors are enumerated: five specific and one general one. I shall briefly discuss each one of them in turn. The five specific considerations that must be considered indicate that the Court must balance the right of the trade-mark owner to the exclusive use of his or her mark, with the right of others in the marketplace to compete freely.
(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known
The first item listed under subsection 6(5) is the strength of the mark. This is broken down into two considerations: the inherent distinctiveness of the mark, and the acquired distinctiveness of the mark. Marks are inherently distinctive when nothing about them refers the consumer to a multitude of sources. Where a mark may refer to many things or, as noted earlier, is only descriptive of the wares or of their geographic origin, less protection will be afforded the mark. Conversely, where the mark is a unique or invented name, such that it could refer to only one thing, it will be extended a greater scope of protection.
Where a mark does not have inherent distinctiveness it may still acquire distinctiveness through continual use in the marketplace. To establish this acquired distinctiveness, it must be shown that the mark has become known to consumers as originating from one particular source. In Cartier, Inc. v. Cartier Optical Ltd./Lunettes Cartier Ltée,21 Dubé J. found that the Cartier name, being merely a surname, had little inherent distinctiveness, but, nevertheless, it had acquired a great deal of distinctiveness through publicity. Likewise in Coca-Cola Ltd. v. Fisher Trading Co.,22 the Judge found that the word "Cola" in script form had become so famous that it had acquired a very special secondary meaning distinctive of the beverage, and was, therefore, worthy of protection.
(b) length of time in use
The length of time that a mark has been used is obviously a factor which will contribute to confusion on behalf of the consumer in determining the origin of wares or services. A mark that has been in use a long time, versus one newly arrived on the scene, is presumed to have made a certain impression which must be given some weight. It is important to remember that "use" is a term defined by the Act and, therefore, has a special meaning.
(c) nature of the wares, services or business
Clearly, where trade-marks are similar, the degree to which the wares or services which bear those marks are similar will be a large factor in determining whether confusion is likely to result. Similarity in wares or services cannot be a sine qua non in a determination of confusion, as subsection 6(2) dictates that confusion may result "whether or not the wares or services are of the same general class." However, the ultimate test is confusion, and where one product does not suggest the other it will be a strong indication that confusion is unlikely. The nature of the wares, services and business, therefore, though not always controlling, are certainly of significance. This becomes clear in the discussion of famous trade-marks, infra .
The relevant factors under this heading will include not only the general class of goods that are involved, but also the quality and price of those goods. The consideration of price stems from the assumption that a consumer will be more careful when purchasing an expensive item, such as an automobile, than where inexpensive goods are concerned. In the former case, there is less likelihood of confusion even in the case of identical marks because a shopper will be assumed to undertake a judicious inquiry of the wares or service that he or she is purchasing, and not rely simply upon the hasty impression of a trade-mark or trade-name. With less expensive goods or services, more reliance may be placed on those marks and less care taken to ensure that the product is truly from the source which the consumer expects.
In Oshawa Holdings Ltd. v. Fjord Pacific Marine Industries Ltd.23 this Court considered the possibility of confusion in the case of identical trade-marks, namely "Dutch Boy". The appellant used the mark in relation to a supermarket business as well as two dairy product items. The respondent used the mark in association with pickled herring. Finding that the businesses and wares dealt with by the parties were substantially different, Heald J.A. concluded:
It is my opinion, accordingly, that an ordinary member of the public would not likely infer that the appellant's wares and the respondent's wares were produced or marketed by the same company.24
Justice Heald came to this conclusion despite the fact that the wares were in the same general class, i.e. food products and services.
On the other hand, in Cartier, supra, Dubé J. used a different analytic strategy in his assessment of the wares provided by the parties and the effect that had on the likelihood of confusion. After reviewing the evidence and finding that Cartier's clients were newly affluent and upwardly mobile, while Lunettes Cartier had upgraded its publicity to compete with more sophisticated distributors, he stated:
Thus, the wares sold by both parties are now within the same range of luxury eyeglass frames and are appealing to the same clientele, although the plaintiff Cartier carries a more expensive line.25
In making this decision, Dubé J. placed emphasis on the customers purchasing the wares, rather than on the nature of the wares themselves. This cannot be seen as an error in interpreting the factor as stated in the legislation, because the ultimate test involves gauging the impression made by the marks on the consumer. What it does display is the difficulty inherent in developing any definitive, fool-proof approach to the concept of confusion.
(d) nature of trade
Similar to the nature of the wares or services is the consideration of the nature of the trade in which those wares or services circulate. The risk of confusion is greater where the wares or services, though dissimilar, are distributed in the same types of stores or are of the same general category of goods. For example, if both items are in the general category of household products and are sold in similar places, then confusion is more likely. However, where one mark refers to household products and the other to automotive products, and they are distributed in different types of shops, there is less likelihood that consumers will mistake one mark for the other.
The nature of the trade extends the analysis to the type of trading environment as well. Where one product is traded on a wholesale level and the other through retail outlets, this must be taken into consideration. This relates both to the environment and to the nature of the consumer. A professional consumer purchasing at the wholesale level is less likely to be confused than a casual shopper in a retail setting. In Can. Wire & Cable Ltd. v. Heatex Howden Inc.,26 the applicant applied to register the mark "Heatex" for building wire for electrical circuits. The opponent was the registered owner of the identical mark in relation to the sale of industrial heat transfer products. Associate Chief Justice Jerome concluded that consumers were not likely to be confused by the identical marks. He stated:
. . . these products are dissimilar. I would expect the average consumer of them to come to the same conclusion. To some extent I rely on the fact that the consumers of both these products are, in the great majority, industrial users. I imply from that that they are somewhat knowledgeable when they are going into the market for the acquisition of materials which will find their way into their construction projects on the one hand, and find their way into major industrial automotive products on the other.27
Despite the fact that the marks were identical, no likelihood of confusion was found due to the dissimilarity in the products and the nature of the trade.
In Clorox Co. v. E.I. Du Pont de Nemours and Co.28 the appellant opposed an application by the respondent to register the trade-mark "Impact". The respondent's proposed use of the mark would be in association with an insecticide. The appellant used the same mark in association with chemicals for treating swimming pool and spa water and alleged a likelihood of confusion. Heald D.J. acknowledged that, while Du Pont did not distribute its product on the retail level, whereas the Chlorox product was traded in a retail setting, there was a likelihood that the products might be sold in the same channels of trade. The question that must be answered, therefore, was not whether the parties sold their products in the same channels, but whether they were entitled to do so.
In Joseph E. Seagram & Sons Ltd. v. Seagran Real Estate Ltd.,29 MacKay J. commented that the nature of the trade included "the customs and usages of the trade and the character of the markets where the marks are intended to serve their purposes."30 Thus, the nature of the trade is a factor which comprises many different considerations. The totality of the circumstances will dictate how each consideration should be treated.
(e) similarity in appearance, sound and idea suggested
Obviously, where the marks are identical this analysis is not needed. But where the marks are similar, the Registrar or the Court must assess the likely impression made by the marks on the public. While the marks must be assessed in their entirety (and not dissected for minute examination), it is still possible to focus on particular features of the mark that may have a determinative influence on the public's perception of it. In Ikea Ltd./Ikea Ltée v. Idea Design Ltd.,31 Dubé J. found that, while the marks "Ikea" and "Idea" were similar phonetically, there was nevertheless no likelihood of confusion. He stated:
Only one letter in each name is different, but the letter "K" in IKEA comes out strikingly and gives the mark a very strong Scandinavian flavour, whereas the mark IDEA evokes mostly a concept, or a thought.32
In contrast to that situation, the trade-marks "Frescobaldi" and "Fresco Rosso" were found to be confusing in Frescobaldi, et al. trading as Frescobaldi v. T.G. Bright & Co., Ltd.33 . Chairman Partington found that the ideas suggested by the two marks were different, but that the similarity in appearance would contribute to confusion. These cases highlight the fact-specific nature of the question to be answered under subsection 6(5) in general. In both Ikea Ltd. and Frescobaldi, the nature of the wares and services, as well as the nature of the trade, were identical. In both cases one mark was long used and the other was newly proposed or little used. The registered marks were both very well known. But different conclusions won the day in each case. In one, the striking nature of the "k" in Ikea, giving it a distinctively Scandinavian quality, was crucial. In the other, the general similarity between the two marks was underscored. The decided cases, therefore, give little guidance here.
(f) all the surrounding circumstances
The overriding, general consideration is "all the surrounding circumstances." This obviously includes the specific factors listed above, but allows the Judge or the Registrar the flexibility to take account of any fact peculiar to the situation at hand. In many cases the five factors explicitly enumerated will comprise "all the surrounding circumstances." In particular cases there may, for example, be a history of competition between the marks without resulting in any confusion. Of course, any evidence of actual confusion will always be relevant. As well, survey evidence may be entered where it has been conducted in an objective manner, so that the results have some probative value.
One important circumstance is the presentation of the trade-mark in the context of the product itself. The "get-up", or the way that a product is packaged, and as a consequence the way the mark is presented to the public, is an important factor in determining whether confusion is likely. In Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd.34 the plaintiff used the trade-mark "Stingsilda" in association with fishing lures. It used a distinctive package and get-up for its product. The Trial Judge found that a similar type of get-up contributed greatly to the likelihood of confusion between that mark and the defendant's "Norse Silda" mark. He found this to be a relevant surrounding circumstance under subsection 6(5).
Where the surrounding circumstances are also important is in determining how much weight each of the enumerated factors should be given. In Polysar Ltd. v. Gesco Distributing Ltd.,35 Joyal J. considered the question of the flexibility given to the Court or the Registrar in assessing the significance of each factor listed under subsection 6(5). He stated:
Of particular relevance to the criteria outlined in s-s. 6(5) of the statute is the principle that they need not be interpreted as having equal weight. Each particular case of confusion might justify greater significance being given to one criteria than to others.36
Thus, in each particular set of circumstances, the Court or the Registrar must be aware that the significance of these factors must be gauged anew.37
Famous Trade-marks
In cases involving similar, famous trade-marks much of the jurisprudence has little precedential value. The cases turn on the particular and often unique facts. Two marks are seldom similar or dissimilar in the same way. Two cases do not often involve the same types of businesses or the same types of customers. As a result cases decided in the past may be interesting, but not generally helpful with regard to a decision of this kind. That said, a review of cases involving "famous" trade-marks will now be undertaken.
In Maple Leaf Gardens Ltd. v. Leaf Confections Ltd.,38 the applicant sought to register the trade-mark "Leaf" and a design. The design was one almost identical to the leaf symbol used by the Toronto Maple Leafs and owned by the opponent, Maple Leaf Gardens Ltd. The Trial Judge, Rouleau J., found the respondent's (opponent) mark to be very famous and well known throughout Canada. He found that, given the strength of the mark, it was entitled to a broad ambit of protection. He stated:
In such cases the Courts have held that the distinction between the wares and the nature of the trade of the two competing marks becomes less important. Certainly those factors are not conclusive of the issue of confusion; they are only incidental criteria to be regarded in ascertaining whether trade marks are confusing in the sense that they resemble each other so as to be likely to mislead the public. Accordingly, while the nature of the wares or the channels of trade in which the appellant and respondent are engaged are material and relevant to the issue of confusion they are not, in balance, determinative.39
In a case with a famous mark, it is necessary to adjust the weight given to the individual criteria or to the surrounding circumstances. However, in the Leaf Confections case I note that Rouleau J. found that there was an overlap in the types of wares to be sold by the companies. It was found that Maple Leaf Gardens had licensed a wide range of products including some similar to those proposed to be marketed by the applicant. Furthermore, the similarity of the mark did not involve only written words, but included a visual design.
In Berry Bros. & Rudd Ltd. v. Planta Tabak-Manufactur Dr. Manfred Oberman,40 the applicant wished to register the trade-mark, "Cutty Sark", for use in relation to tobacco products. The opponent owned the famous trade-mark, "Cutty Sark", associated with scotch whisky. Mr. Justice Cattanach found that the case boiled down to this main question:
The dispute in this matter resolves itself into the real issue between the parties as to whether, in view of the long use and reputation acquired by the appellant of its trade mark CUTTY SARK in association with whisky so that it merits the description of a "famous mark", the respondent has been able to establish, as it is its onus to do, that the difference in wares is such as to avoid any likelihood of confusion.41
Thus, for Cattanach J., the fact that a mark was very famous did not automatically prohibit its use by other persons in fields outside those used by the owner of that mark. What the extended ambit of protection meant was that the onus on other factors became heavier if the applicant was to satisfy the Registrar or the Court that the public would not be confused. In that case, he found that there was a connection between alcoholic beverages and tobacco products so that it was not unlikely that a consumer might presume that the producer of Cutty Sark Tobacco was one and the same as the producer of Cutty Sark Whisky.
This line of thinking is more fully developed in the Seagram case. Seagram Real Estate Ltd. wished to register a trade-mark using that title along with a designed logo. The Trial Judge found that the various trade-marks registered by the opponent, the well-known liquor producer called Seagram's, all incorporating the word Seagram, were very famous. Nevertheless, this did not automatically result in protection of that mark over every conceivable field of activity. He stated:
In my view, unless in their over-all assessment I should conclude there is a likelihood of confusion, the appellants' marks are not entitled to extended protection simply because they have become well-known, indeed famous, in association with the manufacture and sale of alcoholic beverages.42
This conclusion is consonant with the overall purpose of the Act, which is to provide the registered owner of a trade-mark with its exclusive use in association with specified wares and services. We must remember that the registration of a trade-mark does not grant the registrant ownership of the words or images in that mark. The Trial Judge commented as well on the consideration to be given the nature of the wares involved. He stated:
Under the Trade-marks Act the correspondence of the classes of goods or services in association with which the disputed trade mark is used is no longer the vital question it once was. It is one of the matters to be taken into consideration with the other factors set out in s. 6. Nevertheless, some regard must be had to the class of goods or services to which the mark is applied, and it is still pertinent whether the goods are cheap or expensive and whether they are purchased quickly or after careful consideration.43
In the final analysis, the trade-marks were not found to be confusing, despite the fame of the registered mark. Much of the reasoning was based on the wide divergence of the types of wares involved" alcoholic beverages on one side and real estate on the other. It was not likely that a consumer would confuse the manufacturer of alcoholic products as being the same person involved in the real estate business.
This Court has recently reviewed the law relating to confusing trade-marks in Miss Universe, Inc. v. Bohna.44 In that case the respondent had tried to register the mark "Miss Nude Universe" for use in association with, inter alia , beauty pageant services. The appellant opposed the registration on the grounds that it was confusing with its own mark "Miss Universe", used in association with an internationally renowned beauty contest. The Trial Judge [[1992] 3 F.C. 682] had found that the services were dissimilar enough to make confusion unlikely. Décary J.A., speaking for the Court, found that the Trial Judge had erred in not recognizing the scope of protection that should be accorded to the appellant's mark. Because of the wide scope of protection given to strong marks, he should have concentrated on the similarities in the services offered, and not on the differences. Justice Décary stated:
The trial judge has erred, in my view, in ignoring the evidence that both trade-marks were used or to be used, respectively, in precisely the same industry or business and in concentrating rather on differences . . . .45
The wide scope of protection afforded by the fame of the appellant's mark only becomes relevant when applying it to a connection between the applicant's and the opponent's trade and services. No matter how famous a mark is, it cannot be used to create a connection that does not exist.
In Playboy Enterprises Inc. v. Germain,46 the applicant Germain wanted to register "Playboy Men's Hair Stylist" for services defined as "un salon de coiffure pour hommes." Marceau J. upheld the decision of the Registrar that this proposed mark was not confusing with the opponent's mark "Playboy", used in relation to magazines. He stated:
In dealing with these facts and the evidence as a whole, the Registrar found nothing therein that could be taken as establishing any reputation or involvement on the part of the appellant with services similar or related to those of the respondent. There was no proof whatever of any use, or making known, of the opponent's trade mark PLAYBOY in association with barbering or hairdressing services in Canada at any time prior to the applicant's adoption of his trade mark.47
The fact that the opponent's mark was world-renowned could not be a factor so important as to make the differences in wares and services irrelevant. In another case involving Playboy Enterprises48 that company was also unsuccessful in preventing the registration of the trade-mark "Playboy" for use in association with automobile tires. Fame is not everything, apparently. It is possible to use a famous mark for a different product in a different context without infringing.
A number of other cases have come to my attention involving famous trade-marks such as "Coca-Cola",49 "Cartier"50 and "Wedgwood".51 In each of these cases the famous mark prevailed, but in each case a connection or similarity in the products or services was found. Where no such connection is established, it is very difficult to justify the extension of property rights into areas of commerce that do not remotely affect the trade-mark holder. Only in exceptional circumstances, if ever, should this be the case.
Analysis
The Trial Judge considered the relevant factors and it is difficult to fault his factual conclusions with respect to any one of them, but, taking them all together, I am of the view that he erred in the way in which he weighed them and in the conclusion he reached.
The marks, while not identical, are very similar. The appellant submitted that the absence of the definite article in the mark "Pink Panther" designated a panther that is pink, as opposed to the respondent's mark which refers to a particular pink panther, the one associated with the series of movies. While certainly not a major factor, this matter must be taken into account.
The trade-mark owned by United Artists is clearly a famous and inherently distinct one. It has been in use in Canada for thirty or more years. While this may not be a very long time, it cannot be denied that it is a longer time than the mark proposed by the appellant, which has not been used at all.
The Trial Judge's conclusions with respect to the differences in nature of the wares and the nature of the trade are accurate. He found both of these to be quite dissimilar. I agree, but I would underscore the differences to a greater extent. In my view, the Trial Judge has erred in finding that the factors were fairly balanced between the respondent and the appellant, and in finding in favour of United Artists by virtue of the fame of their mark. There is no doubt that "The Pink Panther" is a famous and strong trade-mark. If it does not have inherent distinctiveness, then it certainly has acquired a great deal of distinctiveness in the thirty years or so that it has been part of popular culture. However, the issue to be decided is not how famous the mark is, but whether there is a likelihood of confusion in the mind of the average consumer between United Artists' mark and the one proposed by the appellant with respect to the goods and services specified. That question must be answered in the negative. There is no likelihood of confusion as to the source of the products. The key factor here is the gaping divergence in the nature of the wares and in the nature of the trade. It is not a fissure but a chasm.
United Artists produces movies. It does not manufacture or distribute beauty products. United Artists' products are not likely to be made available in the same places of trade as the appellant's products. Shampoo is not sold in movie theatres or video stores. Videos are not available in beauty parlours. These are facts recognized by the Trial Judge, but they bear emphasizing. What the Trial Judge did not give sufficient weight to is that, not only were the wares in each case completely disparate, but there is no connection whatsoever between them. As I stated earlier, where no such connection exists a finding of confusion will be rare.
This is a proposed trade-mark. There has been no actual use of the mark in Canada as of yet. In any case of proposed use the likelihood of confusion will always be a speculative matter. There may be survey evidence, or there may be evidence of confusion in similar circumstances in other jurisdictions (though neither of these is present here). But regardless, the Court or the Registrar is forced to surmise as to future events. Based only on the fact that the respondent's mark is famous, there should not be an automatic assumption of confusion. The cases make this clear. There is only a tendency toward protection depending upon the other factors involved. In the circumstances, remembering that the test to be met is likelihood of confusion (not possibility of confusion), I do not see how the fame of the mark acts as a marketing trump card such that the other factors are thereby obliterated.
The respondent submitted that there is a logical connection between the entertainment business on the one had, and beauty products on the other. This argument is hung from a very thin thread indeed. A similar argument was rejected by MacKay J. in Seagram. The appellant had argued in that case that the general trend of corporate diversification would lead a consumer to presume that its liquor business was connected with the respondent's real estate business. MacKay J. dismissed this by saying:
I do not agree with this proposition. In my view, consideration of future events and possibilities of diversification is properly restricted to the potential expansion of existing operations. It should not include speculation as to diversification into entirely new ventures, involving new kinds of wares, services or businesses.52
I find this reasoning to be applicable to the present circumstances. To find that such a connection was sufficient in this case would effectively extend protection to every field of endeavour imaginable. There would be no area that Hollywood's marketing machine would not control. Just because they are well known, the whole world is not barred forever from using words found in the title of a Hollywood film to market unrelated goods.
Furthermore, we owe the average consumer a certain amount of credit, a sufficient amount of which was not forthcoming from the Trial Judge. While the public might be confused by a product which used the name "Pink Panther" and simultaneously depicted a pink cat, the use of the words alone cannot be said to give rise to such confusion. Indeed one of the surrounding circumstances that the Trial Judge should have adverted to is the fact that much of the fame which this Court and the Court below attach to the respondent's mark stems not from the words "The Pink Panther" but from the associated music and cartoon images. In this case, words only are used. There is no accompanying design or music. It is reasonable to conclude that the average person, without being presented with these other hallmarks, would not confuse the source of the appellant's proposed mark.
However, the appellant should keep in mind that the Trade-marks Act can be a tough task-master. Having obtained the registration of its trade-mark, it must use that mark as indicated in its application. Any deviation from this proposed use may jeopardize its rights. Linking the words to a movie theme, to drawings or music, or even to Hollywood in general may provoke infringement or expungement proceedings. In Registrar of Trade Marks v. Compagnie Internationale pour l'Informatique CII Honeywell Bull53 the use by the respondent of "CII Honeywell Bull" was held not to constitute use for the mark "Bull", and the mark was expunged from the register. As well, the appellant should not ignore the existence of the other trade-marks registered by the respondent involving the cartoon drawings which may come into play when it develops its marketing strategy for the beauty products. In other words, victory in this case, does not give the appellant carte blanche to exploit all of the trade-marks of the respondent in selling all products in any way it chooses. It is still subject to restrictions of the Trade-marks Act and the common law.
Conclusion
I would allow the appeal with costs and return the matter to the Registrar to dispose of the application for registration on the basis that the proposed mark is not confusing with the respondent's registered marks.
Isaac C.J.: I agree.
* * *
The following are the reasons for judgment rendered in English by
McDonald J.A. (dissenting): I have read the reasons of my colleague Linden J.A. and with respect, I find myself unable to agree with his conclusion that the Trial Judge erred in weighing the relevant factors to be considered under subsection 6(5) of the Trade-marks Act.54 I am of the view that the Trial Judge gave sufficient weight to the fact that the wares in this case were completely disparate. In my view, he was also correct on the facts to find that given the widespread use of the respondent's mark, this factor should be given less weight than the other factors. I am also in agreement with the Trial Judge's conclusion that in light of the high degree of resemblance and the widespread use of the mark, "The Pink Panther", the ordinary consumer of average intelligence would believe that the wares of the appellant and the wares of the respondent originate from the same person or organization.
[A.]Le juge McDonald, J.C.A. (dissident): J'ai pris connaissance des motifs de mon collègue le juge Linden, J.C.A. et, en toute déférence, je suis incapable de me rallier à sa conclusion que le juge de première instance a commis une erreur dans son appréciation des facteurs dont il faut tenir compte sous le régime du paragraphe 6(5) de la Loi sur les marques de commerce54. Je suis d'avis que le juge de première instance a accordé suffisamment d'importance au fait que les marchandises de l'espèce étaient complètement différentes. Selon moi, les faits le justifiaient aussi de conclure que, compte tenu de l'emploi très répandu de la marque de l'intimée, il fallait attribuer moins d'importance à ce facteur. Je souscris également à sa conclusion selon laquelle la grande ressemblance entre les marques et l'emploi répandu de la marque "The Pink Panther" amèneraient le consommateur ordinaire doté d'une intelligence moyenne à croire que les marchandises de l'appelante et celles de l'intimée proviennent de la même personne ou organisation.
In fact, I would go further than the Trial Judge on this last point and state that it is precisely because of the fame and goodwill associated with the name "The Pink Panther" that the appellant has chosen that name for its business. What the appellant seeks to do is profit financially from the goodwill associated with the respondent's trade-name. The appellant anticipates that the average consumer will associate its products with the name "Pink Panther" and be more apt to buy them. There are many other feline animals the appellant could have chosen for its business but instead of choosing one of these, the appellant chose the very famous name, "Pink Panther". While it may use this name, it must first receive the permission of the respondent. To come to any other result in the case of such a famous and widespread trade-name as "The Pink Panther", in my opinion, tips the balance too far in favour of the copycat artist seeking to profit financially from someone else's creative fortune. With the greatest respect to my colleagues, I believe the decision of Linden J.A. launches trade-mark protection down a slippery slope which will result in the protection of famous names in only the very clearest of cases.
I feel it is important to highlight some of the background facts surrounding the widespread use of the respondent's trade-mark before moving directly to my analysis on the confusion issue.
FACTS
"The Pink Panther" trade-marks have been used extensively in Canada since at least 1964. There have been seven pink panther films (The Pink Panther ; A Shot in the Dark; Return of the Pink Panther; The Pink Panther Strikes Again; The Revenge of the Pink Panther; Trail of the Pink Panther; and Curse of the Pink Panther). The total amount earned from these motion pictures as of January 22, 1990 in Canada alone is $8,168,000. This figure does not include the amount made from television re-runs and home video rentals.
There is also an animated title sequence for the Pink Panther film which won an Oscar for Best Animated Short Subject in 1964. In the late 1960s and early 1970s the cartoon strip of the Pink Panther was developed for television. The gross revenues in Canada for the cartoon strip as of May 1989 are US $500,000. Two cartoon specials were also developed: Olympinks and the Pink Panther Christmas Special which earned US $11,471, 40 in Canada as of April 1, 1989. In addition, there have been numerous articles, advertisements and extensive editorial comment on the Pink Panther in Canada. Having highlighted the relevant background facts pertaining to the widespread use of the respondent's trade-mark in Canada, I will now move to an analysis of the confusion issue.
ANALYSIS
Subsection 6(2) of the Act sets out the definition for confusion. It provides that:
6. . . .
(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired, or performed by the same person, whether or not the wares or services are of the same general class.
The factors to be considered when making a determination as to whether or not a trade-mark is confusing are found in subsection 6(5) of the Act. These are: (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; (b) the length of time the trade-marks or trade-names have been in use; (c) the nature of the wares, services or business; (d) the nature of the trade; and, (e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them. The onus is on the applicant to show no reasonable likelihood of confusion.
In examining the criteria outlined above, Joyal J. in Polysar Ltd. v. Gesco Distributing Ltd.55 expressly found that they are not to be given equal weight. This is especially true when dealing with well known or historical trade marks. He stated:
Of particular relevance to the criteria outlined in ss. 6(5) of the statute is the principle that they need not be interpreted as having equal weight. Each particular case of confusion might justify greater significance being given to one criteria than to others . . . .
I should venture a further observation. It seems to me that the relationship between two opposing marks as regards the nature of the wares must bear a much more stringent test when a strong and historical trade mark is measured against a proposed mark. The strength of the mark is obviously its distinctiveness, i.e., a combination of vowels, syllables and sound which has an inherent quality that conjures a direct association not only with the specific wares which might otherwise be listed in the mark's registration, but with the proprietary image of all the several or multifarious operations of its owner. This, in my view, is the essence of the phrase "secondary meaning". I can do no better in finding support for this guiding principle than to cite the Kodak and the Vogue cases . . . . I will admit that no prior case resolved by the courts is ever completely on point. Nevertheless, in the case of such marks as Kodak, by the nature of its inherent distinctiveness, and of Vogue, by reason of its acquired reputation as an arbiter of current fashions, courts have extended to them a much wider area of general protection than the narrower one of cameras on the one hand and a glossy magazine on the other.
As the Polysar case makes clear, when dealing with a widespread, distinctive trade-mark it is not always necessary that the mark in question be used for similar wares or in a similar industry for confusion to exist. My colleague, however, having surveyed the case law in the area of well known or famous trade-names/marks, states that where a famous trade-mark has been protected, a connection or similarity in the products or services was found. While I agree that this is true in many of the cases reviewed by my colleague, nonetheless, there are cases which have upheld famous trade-marks in dissimilar settings.
One example of confusion being found despite a dissimilar setting is the Carson v. Reynolds56 case where Mahoney J. found that the use of the mark "Here's Johnny" for portable toilets, outhouses and lavatory facilities would suggest to a "significant number of people in Canada, a connection with the Appellant." The appellant, of course, was Johnny Carson from the Tonight Show . Similarly, in Danjaq, S.A. v. Zervas57 Lutfy J. refused to allow the registration of the trade-marks "007", "007 Pizza & Subs Design" and "007 Submarine & Design" on the ground that it might lead to confusion with the respondent's trade-mark in the James Bond character agent 007. In that case Lutfy J. extensively reviewed the law surrounding the issue of trade-marks in dissimilar settings. The following remarks at pages 303-304 of his decision are apt:
At first glance, one might be attracted to the disparity between the parties' goods and services and decide that the respondent's trade mark is distinctive. The respondent proposes, however, to use the trade mark with other promotional products. More significantly, the respondent acknowledges that he is ". . . reasonably well aware of the movies featuring BOND or 007 and in those movies, I never did see any restaurant services performed by 007". From this, I find that the respondent adopted 007 with knowledge of the prior use of the appellant's trade marks. The respondent's choice of 007 was deliberate and not unrelated to the mark's fame. In my view, a chain of 007 pizza, pasta and submarine sandwich outlets would not necessarily be distinguished, within the meaning of section 2, by the public from the applicant's wares and services. In those circumstances, I cannot conclude that the respondent's marks are distinctive even though they have been used with substantially different wares.
In his decision, Lutfy J. quotes from a decision of Dubé J. in Glen-Warren Productions Ltd. v. Gertex Hosiery Ltd.58 That case also dealt with completely dissimilar wares and services: the ladies hosiery business and a beauty pageant. Dubé J. found that despite this fact, there might still be confusion in consumers minds to the extent that they might believe the Miss Canada Pageant endorsed the applicant's hosiery product:
In my view, in the case at bar, even if sales of hosiery would not appear at first blush to be related to a beauty pageant, it is likely that consumers might assume the organizers of the Miss Canada pageant had in some way approved, licensed, or sponsored the use of its trade mark by a business which markets hosiery under the MISS CANADA trade mark, or that there was some business connection between Hosiery and the Miss Canada pageant . . . . Therefore, I must conclude that Hosiery has not discharged the legal burden upon it of establishing that its trade mark MISS CANADA is really distinctive of its wares.
There is also the decision of Cattanach J. in Conde Nast Publications Inc. v. Gozlan Brothers Ltd.59 In that case, he found that the use of the word "vogue" in the costume jewellery industry would likely be confusing with the trade-mark "Vogue" for the magazine. While he noted in his decision that there may be some familiarity between the fashion world and costume jewellery, I can not see how the fashion industry is in any way more likely to be associated with costume jewellery than Hollywood movies are likely to be associated with beauty products. Cattanach J.'s conclusion with respect to the fact that an inference may be drawn between the two industries is therefore applicable to the case at bar. He states [at page 255]:
The appellant publishes a high fashion magazine, it is familiar with the fashions it manufactures and sells dress patterns, it is familiar with fashionable accessories, it devotes space in its magazine Vogue to articles written by experts in the field as to what is current and in good taste. It is but an equally short step for the appellant to take, to enter the field of the manufacture and sale of jewellery as it is for it to manufacture and sell dress patterns. Furthermore the Hearing Officer, by making the finding of fact that he did, recognizes that the concurrent use of the trade mark by the appellant and respondent gives rise to a state of doubt and uncertainty in the minds of the purchasing public.
Finally, there is an English case, Hack (Edward)—In the Matter of an Application to register a Trade Mark,60 by which Cattanach J. referred to in his decision that is worth mentioning. In that case the High Court of Justice, Chancery Division, allowed an appeal by the proprietors of the trade-mark "Black Magic" on the grounds that there existed a risk of confusion. The applicant in that case sought to register the name "Black Magic" for laxatives. The applicant's laxatives contained no chocolate. There was some evidence that at large stores both chocolates and laxatives were sold. There was also evidence that Rowntree, the proprietor of the "Black Magic" trade-mark also made cough drops. Mr. Justice Morton set out the test to be applied to determine if confusion exists as page 102 of his judgment:
Without attempting an exhaustive definition of what is covered by the words "likely to cause confusion" I may say at once that, in my view, if persons hearing of a laxative called "Black Magic" are likely to think that such laxative was made by the Opponents, then the mark applied for is one which is likely to cause confusion within the meaning of the Section. I also think that, if such persons are likely to wonder whether or not the laxative was made by the Opponents, the mark applied for is one which is likely to cause confusion, because people's minds will be put in a state of doubt or uncertainty.
And again, at page 103, "The true test is whether the use of the mark by itself, in any manner which can be regarded as a fair use of it, will be calculated to deceive or cause confusion."
After reviewing the evidence, Mr. Justice Morton found that the similarities between the two products were that they were "both edible, in solid form and intended for human consumption." He concluded that "there is some evidence that persons might be deceived into thinking that the "Black Magic" laxative was manufactured by Messrs. Rowntree, even if they ascertained that the laxative did not contain chocolate."61 Indeed, while stating there might be some mischief as a result of the existence of chocolate flavoured laxatives in the market, nonetheless, he claims that the confusion really lies in the fact that regardless of whether the laxative contains chocolate, individuals would believe the product was manufactured by Black Magic [at page 106]:
I think that a large number of persons if they heard of a laxative called "Black Magic" or saw advertisements of a laxative called "Black Magic" would be likely to think that that laxative was made by the same firm who made the "Black Magic" chocolates. If so, I think that confusion is caused within the meaning of Section II. I think there are a number of other people who, without arriving at a conclusion that the "Black Magic" laxative was made by the same persons as the "Black Magic" chocolates, would wonder if it were or were not made by the same persons. I think further that there is a possibility that people who bought the "Black Magic" laxative in a shop might be left, when they had bought it, under the impression that the "Black Magic" laxative was made by the same persons as the "Black Magic" chocolates.
Thus, it was because the applicant chose to use a virtually identical name for his product that Justice Morton concluded that the consumer would be confused.
Given the popularity of the respondent's trade-mark, the extent to which it has prevailed in the Canadian market (over 30 years) and its widespread diversification (from comic books to advertisements for Fibreglass), I am of the view that allowing the appellant to use the name "Pink Panther" will almost certainly be confusing for the average consumer. The average consumer is likely to believe that there is an association with the beauty products sold by the appellant and the respondent's mark to the extent that the products are being sold by, approved by or endorsed by the respondent.
In reaching my conclusion, I am cognizant of my colleague's warning that "we owe the average consumer a certain amount of credit." I believe, however, that in this case my colleague gives the appellant too much credit. It is naive to believe that the appellant's decision to use the name "Pink Panther" was not deliberate or unrelated to the mark's fame. The appellant surely believes, just as I believe, that the average consumer will, at the very least, upon seeing the name "Pink Panther" on its beauty products be reminded of and associate its products with the respondent's mark. Seeing the words alone will leave the average consumer wondering if the respondent is the promoter behind these new products.
My colleague's decision, however, states that so long as one does not use the corresponding image of the Pink Panther with the words there is no infringement. In my view, the distinction my colleague makes between words and images is arbitrary. Just as seeing the words Mickey Mouse or Donald Duck conjure up a mental picture of those Disney characters leading the consumer to believe that Disney is associated with the product, the name Pink Panther on a shampoo bottle will have the identical effect. Yet, as a result of my colleague's decision, the words themselves are no longer protected. In my view, this judgment can only be viewed as a warning to the creators of these names and the associated images to beware, as the balance between trade-mark protection and the free market has been tipped in favour of the infringer.
I would dismiss the appeal from the decision of the Trial Judge. In my view, the Trial Judge correctly concluded that the appellant's proposed trade-mark is likely to be confused with the respondent's registered marks given the high degree of resemblance between them and the widespread use of the respondent's mark, "The Pink Panther".
1 R.S.C., 1985, c. T-13 (the Act).
2 Appeal Book, Vol. XI, at p. 1794.
3 Ibid., at p. 1803.
4 Ibid., at p. 1798.
5 (1990), 34 C.P.R. (3d) 135 (T.M. Opp. Bd.), at p. 140.
6 Krazy Glue, Inc. v. Grupo Cyanomex, S.A. de C.V. (1992), 45 C.P.R. (3d) 161 (F.C.T.D.), at p. 169; Choice Hotels International Inc. v. Hotels Confortel Inc. (1996), 67 C.P.R. (3d) 340 (F.C.T.D.), at p. 344.
7 (1996), 67 C.P.R. (3d) 216 (F.C.T.D.), at pp. 233-234.
8 Eno v. Dunn (1890), 15 App. Cas. 252 (H.L.).
9 Freed & Freed Ltd. v. Registrar of Trade Marks et al. [1950] Ex. C.R. 431.
10 (1982), 61 C.P.R. (2d) 53 (F.C.T.D.).
11 Ibid., at p. 57.
12 See Gordon F. Henderson, An Overview of Intellectual Property, in Trade-Marks Law of Canada, Gordon F. Henderson (ed.) (Toronto: Carswell, 1993), at pp. 3-4.
13 Sinclair (John), Ld.—In the Matter of a Trade Mark of (1932), 49 R.P.C. 123 (Ch. D.).
14 Bowden Wire Ld. v. Bowden Brake Co. Ld (1914), 31 R.P.C. 385 (H.L.).
15 Pinto v. Badman (1891), 8 R.P.C. 181 (C.A.).
16 See Henderson, supra, note 6, at p. 9.
17 Ibid., at p. 10.
18 Madam Justice Beverley McLachlin, "Intellectual Property"What's it all About?", in Trade-Marks Law of Canada , Gordon F. Henderson (ed.) (Toronto: Carswell, 1993), at p. 397.
19 [1931] Ex. C.R. 64.
20 Ibid., at p. 67.
21 (1988), 19 C.I.P.R. 69 (F.C.T.D.).
22 (1988), 19 C.I.P.R. 307 (F.C.T.D.).
23 (1981), 55 C.P.R. (2d) 39 (F.C.A.).
24 Ibid., at p. 44.
25 Cartier, supra, note 21, at p. 91.
26 (1986), 11 C.I.P.R. 147 (F.C.T.D.).
27 Ibid., at pp. 151-152.
28 (1995), 64 C.P.R. (3d) 79 (F.C.T.D.).
29 (1990), 33 C.P.R. (3d) 454 (F.C.T.D.).
30 Ibid., at p. 468.
31 (1987), 11 C.I.P.R. 313 (F.C.T.D.).
32 Ibid., at p. 316.
33 (1985), 4 C.P.R. (3d) 569 (T.M. Opp. Bd.).
34 (1986), 8 C.I.P.R. 232 (F.C.T.D.); affd on this point [1987] 3 F.C. 544 (C.A.).
35 (1985), 6 C.P.R. (3d) 289 (F.C.T.D.).
36 Ibid., at p. 298.
37 See also, Beverley Bedding & Upholstery Co. v. Regal Bedding & Upholstering Ltd. (1980), 110 D.L.R. (3d) 189 (F.C.T.D.).
38 (1986), 10 C.I.P.R. 267 (F.C.T.D.); affd (1988), 19 C.P.R. (3d) 331 (F.C.A.).
39 Ibid., at p. 278.
40 (1980), 53 C.P.R. (2d) 130 (F.C.T.D.).
41 Ibid., at p. 134.
42 Supra, note 29, at p. 466.
43 Ibid., at p. 467.
44 [1995] 1 F.C. 614 (C.A.).
45 Ibid., at p. 628.
46 (1978), 39 C.P.R. (2d) 32 (F.C.T.D.).
47 Ibid., at pp. 38-39.
48 Playboy Enterprises, Inc. v. Astro Tire & Rubber Co. of Canada Ltd. (1978), 46 C.P.R. (2d) 87 (T.M. Opp. Bd.).
49 Supra, note 22.
50 Supra, note 21.
51 See Wedgwood plc v. Thera Holding Ltd. (1987), 18 C.I.P.R. 209 (T.M. Opp. Bd.).
52 Seagram, supra, note 29, at pp. 467-468.
53 [1985] 1 F.C. 406 (C.A.).
54 R.S.C., 1985, c. T-13 (the Act).
55 (1985), 6 C.P.R. (3d) 289 (F.C.T.D.), at pp. 298-299.
56 [1980] 2 F.C. 685 (T.D.).
57 (1997), 75 C.P.R. (3d) 295 (F.C.T.D.).
58 (1990), 29 C.P.R. (3d) 7 (F.C.T.D.), at pp. 12-13.
59 (1980), 49 C.P.R. (2d) 250 (F.C.T.D.).
60 (1941), 58 R.P.C. 91 (H.C.J.).
61 Ibid., at p. 106.