T-639-97
Petro-Canada (Appellant)
v.
2946661 Canada Inc. and The Registrar of Trade-marks (Respondents)
Indexed as: Petro-Canadav. 2946661 Canada Inc. (T.D.)
Trial Division, Teitelbaum J."Ottawa, September 2 and November 6, 1998.
Trade marks — Registration — Appeal from Registrar's rejection of opposition to proposed trade-mark —Petro-Quebec— for use in Canada in association with —stations-service pour automobilistes— — Appellant owner of trade-mark —Petro-Canada— for use in association with —motor fuel/distributing and marketing petroleum products— — Registrar held marks not confusing — Erred in appreciation of facts — Appellant's trade-marks well known in Canada, respondent's trade-mark not known — Evidence of third party adoption of trade-names for use in Quebec that substitute —Quebec— for —Canada— — Newspaper article profiling Petro-Quebec service station business identifying station as Petro-Canada service station — Evidence showing reasonable likelihood of confusion — Because Petro-Canada mark so well known in Canada in association with service stations, public would assume Petro-Quebec service station belonged to, affiliated with, appellant — Appellant, respondent in same or similar business — Respondent not meeting onus of showing no likelihood of confusion — Opposition cases to be decided on own facts — Registrar erred in law in stating bound by stare decisis to follow previous Exchequer Court, F.C.T.D. decisions.
This was an appeal from a decision of the Registrar of Trade-marks rejecting the appellant's opposition to the respondent's proposed trade-mark "Petro-Quebec" for use in Canada in association with "stations-service pour automobilistes". The appellant owns the trade-mark "Petro-Canada", among others, for use in association with "motor fuel/distributing and marketing petroleum products". The Registrar relied on Imperial Oil Ltd. v. Superamerica Stations Inc. and concluded that, although each case is decided on its own facts, there was no evidence suggesting that the "unique circumstances" of the service station trade were any different today than when Superamerica was decided. He held that he was bound by the principle of stare decisis, and found that "Petro-Quebec" was not confusing with "Petro-Canada".
The issue was whether the Registrar erred when he concluded that there was no reasonable likelihood of confusion between the trade-marks "Petro-Quebec" and "Petro-Canada".
Held, the appeal should be allowed.
The Registrar erred in law in stating that he was bound by the principle of stare decisis. He is not bound by stare decisis, as stated in his decision, if each case must be decided on its own facts, and especially so in opposition cases.
The Court must be careful not to substitute its judgment for that of the Registrar, and the Registrar's decision should be given great weight as his "daily task" involves the reaching of conclusions such as that in the case at bar. Nevertheless, if the Registrar erred in law, as he did herein, the Court does have jurisdiction to examine the evidence and determine whether the Registrar erred in his conclusion, based on the facts that were before him.
The Registrar erred in his appreciation of the facts. The appellant's trade-marks were very well known in Canada, and the respondent's trade-mark was not known. There was evidence before the Registrar of third party adoption of trade-names for use in Quebec that substitute the word "Quebec" for "Canada" and evidence of pairs of Canadian trade-mark applications for which the word "Quebec" is substituted for the word "Canada". The Registrar also had before him a copy of a newspaper article that profiled respondent's Petro-Quebec service station business, but identified it as a Petro-Canada service station. Because the Petro-Canada mark is so well known in Canada in association with service stations, it would be assumed that the Petro-Quebec service station belonged to or was affiliated with the appellant. This was confirmed in the newspaper article. Furthermore, as other companies such as Bell Canada is an example of a company which uses Bell Quebec for its affiliate in that province. Accordingly, one would believe Petro-Quebec was affiliated with or owned by, or controlled by Petro-Canada. From the factual evidence, there was a reasonable likelihood of confusion.
Furthermore, both the appellant and the respondent are in the same or very similar businesses in dealing with the sale of petroleum products which can only lead to confusion. The respondent failed to meet the onus on it to show that there was no likelihood that the registration of the trade-mark "Petro-Quebec" will cause confusion in the mind of an ordinary consumer with the mark "Petro-Canada".
statutes and regulations judicially considered
Trade-marks Act, R.S.C., 1985, c. T-13, ss. 7, 30 (as am. by S.C. 1993, c. 15, s. 64; 1994, c. 47, s. 198), 50 (as am. by S.C. 1993, c. 15, s. 69).
cases judicially considered
applied:
Lander Co. Canada Ltd. v. Alex E. Macrae & Co. (1993), 46 C.P.R. (3d) 417; 62 F.T.R. 71 (F.C.T.D.); 101482 Canada Inc. v. Registrar of Trade Marks, [1985] 2 F.C. 501; (1985), 6 C.I.P.R. 222; 7 C.P.R. (3d) 289 (T.D.); Benson & Hedges (Canada) Limited v. St. Regis Tobacco Corporation, [1969] S.C.R. 192; (1968), 1 D.L.R. (3d) 462; 57 C.P.R. 1; 39 Fox Pat. C. 207.
considered:
Imperial Oil Ltd. v. Superamerica Stations Inc., [1967] 1 Ex.C.R. 489; The Wool Bureau of Canada, Ltd. v. Queenswear (Canada) Ltd. (1980), 47 C.P.R. (2d) 11 (F.C.T.D.).
APPEAL from the Registrar of Trade-marks' decision that the respondent's proposed trade-mark "Petro-Quebec" for use in Canada in association with "stations-service pour automobilistes" was not likely to cause confusion with the appellant's trade-mark "Petro-Canada" for use in association with "motor fuel/distributing and marketing petroleum products". Appeal allowed.
appearances:
Michael E. Charles for appellant.
Georges T. Robic for respondent 2946661 Canada Inc.
No one appearing for the Registrar of Trade-marks
solicitors of record:
Bereskin & Parr, Toronto, for appellant.
Léger Robic Richard, Montréal, for respondent 2946661 Canada Inc.
The following are the reasons for order rendered in English by
Teitelbaum J.:
INTRODUCTION
This is an appeal by the appellant, Petro-Canada, from a decision of the Registrar of Trade-marks dated February 7, 1997, rejecting the appellant's opposition to application No. 689,257.
FACTS
A predecessor of the respondent named Garage Bourbonnière Ltée filed an application on September 16, 1991 for the trade-mark "Petro-Quebec" based on proposed use in Canada in association with "stations- service pour automobilistes". The application was advertised in the Trade-Marks Journal dated January 27, 1993 and opposed by the appellant on March 23, 1993.
The appellant owns the following registered trade-marks:
Trade-mark Reg. # Wares/Services
PETRO-CANADA 354,921 motor fuel/distributing and
marketing petroleum
products
PETRO-CANADA & Design 352,720 motor fuel/distributing and
marketing petroleum
products
PETRO-CANADA & Design 352,719 motor fuel/distributing and
marketing petroleum
products
PETRO-CANADA & Design 324,646 aviation fuel
PETRO-CANADA & Design 324,645 aviation fuel
PETRO-CANADA & Design 393,165 heating oil/fuel oil
delivery
PETRO-CANADA PRECISION 391,117 greases
PETRO-CANADA SUPREME 335,438 lubricants
PETRO-CANADA & Design 372,378 engine maintenance
services
PETROCAN 210,802 gasoline, motor oil,
automobile parts and
accessories
PETROCAN 355,170 motor vehicle fuels, fluids,
tires
PETROCAN 395,110 burners for furnaces
PETROCAN PLUS 393,166 furnaces and humidifiers
for attachment to heating
systems
The appellant's grounds of opposition were: (1) that the trade-mark was not registrable because at the date the application was filed, or at the present date, or both, the trade-mark was confusing with registered trade-marks of the appellant; (2) the respondent was not entitled to register the trade-mark because at the date the application was filed, it was confusing with the appellant's trade-marks and trade-name; (3) the respondent's trade-mark is not distinctive because it is confusing with the appellant's trade-marks and trade-name; (4) the respondent's application does not conform with section 30 of the Trade-marks Act [R.S.C., 1985, c. T-13 (as am. by S.C. 1993, c. 15, s. 64; 1994, c. 47, s. 198)] because the services are not described in ordinary commercial terms, the respondent's trade-mark violates the appellant's rights under its registered trade-marks and its rights under section 7 of the Trade-marks Act and at common law.
The appellant also requested leave to amend the statement of opposition to argue that the respondent's trade-mark was not distinctive because it had been used by a third party, Garage Bourbonnière Ltée. This request was refused by the Registrar.
The Trade-marks Registrar rejected the appellant's opposition action. First, the Registrar found that the respondent's application was described in ordinary commercial terms (i.e. "stations-service pour automobilistes"). Second, the Registrar held that it could not consider the issue of distinctiveness on the basis of non-compliance with section 50 [as am. by S.C. 1993, c. 15, s. 69] of the Trade-marks Act because section 50 was not pleaded in the statement of opposition and the appellant was refused leave to amend its pleadings. Third, the Registrar held that the applicant [respondent] did intend to use its mark. The appellant had argued that the mark actually used is a composite mark comprised of the words "Petro-Quebec", a fleur-de-lis, and horizontal lines all in the colour white against a blue background. The appellant claimed that it is the composite mark and not the word component which defines the respondent's mark. The Registrar held that the word "Petro-Quebec" stands out as the only word component of the mark as used, so therefore the use of the composite mark can be relied on as use of the word component.
The remaining grounds of opposition concerned whether "Petro-Quebec" is confusing with the appellant's mark. The Registrar noted that the material dates for considering the issue of confusion were the date of the Registrar's decision with respect to non-registrability of the mark; the date of filing the statement of opposition with respect to the ground alleging non-distinctiveness; and the date of filing the application with respect to non-entitlement. The Registrar held that, in this case, nothing turned on which material date was chosen. The Registrar noted that the onus was on the respondent to show that there was no reasonable likelihood of confusion between the two marks.
The Registrar held that both the appellant's mark and the respondent's mark have little inherent distinctiveness because they were used in association with the manufacturing and sale of petroleum products and the suffix is suggestive of the geographical area in which the services are offered. However, the Registrar found that the appellant's mark is better known than the respondent's mark and that the appellant has been using its mark longer than the respondent. The Registrar also held that the appellant is in the same business as the respondent.
The Registrar noted that the resemblance arises from the prefix "Petro", but since the prefix is suggestive of the parties' services, the Registrar held that the importance of the prefix is lessened. The appellant argued that some companies have adopted trade-names and trade-marks for use in Quebec that substitute the word "Quebec" for "Canada". Thus, the appellant argued that the respondent's gas stations would be incorrectly perceived as a subsidiary or division of the appellant, or operating under license from or with the appellant. The Registrar found that, for 10 of the trade-mark pairs drawn from the register, there were no illustrations so it was impossible to determine whether the word components are prominent or insignificant parts of the marks. As for the remaining four trade-mark pairs, the Registrar held that only two pairs illustrate the alleged substitution and, in any event, there was no indication that this was common in the oil industry.
Finally, the Registrar considered the jurisprudence and relied on the decision in Imperial Oil Ltd. v. Superamerica Stations Inc., [1967] 1 Ex.C.R. 489 and more specifically, on the passage by Cattanach J. in The Wool Bureau of Canada, Ltd. v. Queenswear (Canada) Ltd. (1980), 47 C.P.R. (2d) 11 (F.C.T.D.) where the learned justice discussed Superamerica, supra, at pages 19-20:
He pointed out that what is heard is the sound of the letters "S" and "O" but that the appearance of the word "Esso" is more familiar and it is seen at the same time it is sounded. Furthermore the trade mark is directed to a particular customer, the Canadian motorist, and it was pointed out that the important outlets for the sale of this product are service stations which exclusively sell the products of only one oil company and that there are but few of these major oil companies. There are about seven which dominate the market. The Chief Justice mentioned the trade marks SHELL, B.P., ESSO, B.A. (now GULF)"to which I would add TEXACO, FINA and SUNOCO. Through numerous advertising devices the marks have become very well known. The ordinary motorist, as a matter of habit, has chosen the company whose product he buys and when he is in need of a fill-up he drives to a filling station of that particular company.
It was the facts peculiar to this particular trade, that led the Chief Justice to conclude, having regard to all surrounding circumstances, that the proposed trade mark, S.A. sought to be registered and the registered trade mark ESSO with respect to identical wares would not be confusing. That the mark ESSO was extremely well known to a particular class of consumer with a very limited number of vendors who all conduct their businesses in the same manner were circumstances to which the Chief Justice had regard in reaching his decision.
The Registrar concluded that, although each case is decided on its own facts, there was no evidence suggesting that the "unique circumstances" of the service station trade are any different today than when Superamerica , supra was decided. Therefore, the Registrar held that "Petro-Quebec" is not confusing with the appellant's mark "Petro-Canada".
The Registrar, in his decision, states, in his conclusion:
Of course, each case must be decided on its own facts and especially so in opposition cases where a myriad of circumstances, each with its own weight, contributes to determining the likelihood of confusion between marks. However, there is no evidence in the instant case suggesting that the unique circumstances of the service station trade, as discussed above, are any different today than thirty years ago when Superamerica was decided.
Considering all of the above, and keeping in mind that I am bound by the principle of stare decisis, I find that the applied for mark PETRO-QUEBEC is not confusing with the opponent'Ñ mark PETRO-CANADA.
In view of the above, the opposition is rejected. [Emphasis added.]
I have emphasized the words "and keeping in mind that I am bound by the principle of stare decisis" (et parce que je dois m'en tenir aux choses décidées ) (see official translation of decision at Tab 5, Volume 1, page 00039 of appellant's factum).
I would state that the Registrar erred in law by making the above statement. If, as the Registrar states in his decision that each case must be decided on its own facts "and especially so in opposition cases" (see above), how is he bound by stare decisis ? He is, I am satisfied, not so bound.
ISSUES
The appellant, in his written submission, states the issues in the following terms.
The primary issue in this appeal is whether the Registrar erred in both fact and law in finding that there was no likelihood of confusion between the Respondent's PETRO-QUEBEC trade mark for "stations service pour automobilistes" and the Appellant's family of PETRO-CANADA and PETROCAN trade marks for motor fuel and distributing and marketing petroleum products".
Related issues are:
(a) Whether the Registrar erred in law in holding that stare decisis requires the finding that certain unique factual circumstances in the gasoline trade found to exist over 30 years ago by the Exchequer Court in Imperial Oil Limited v. Super America Stations Inc., supra, continue to exist today.
(b) Whether, as a result, the Registrar erred in failing to properly consider the evidence.
(c) Whether the Registrar erred in failing to give proper consideration to the evidence regarding the practice in business of adopting pairs of trade names and marks that differ by a substitution of the word "Quebec" for "Canada" (or vice-versa).
(d) Whether the Registrar erred in failing to give proper consideration to evidence showing an instance of actual confusion between the names PETRO-CANADA and PETRO-QUEBEC.
The second main issue in this appeal is whether the Respondent's application for its PETRO-QUEBEC trade mark should be rejected for lack of distinctiveness in view of the use by a licensee which does not comply with the requirements of Section 50 of the Trade-marks Act. This ground of opposition was not ruled on by the Registrar although it was raised by the Appellant. The Registrar had refused leave to amend the statement of opposition to include this ground as set out in paragraph 6 of the grounds of appeal and paragraph 3 of the statement of material facts).
The third issue in this appeal is whether the respondent's application should be rejected because the wares and services in the application ("stations service pour automobilistes") are not specified in ordinary commercial terms contrary to Section 30(a).
DISCUSSION
What is the jurisdiction of the Federal Court"Trial Division when sitting in appeal of a decision of the Registrar of Trade-marks?
I believe it is trite law to say that the Federal Court"Trial Division should not substitute its judgment for that of the Registrar unless the Registrar erred in his interpretation of the law or the jurisprudence or there was produced, in the appeal, significant new evidence upon which the Registrar did not base his decision. Normally, the Court should give prima facie weight to the decision of the Registrar.
In the present case, there was no new evidence presented to me. Neither party submitted any new evidence and, thus, it can be said that significant weight should be given to the Registrar's decision.
In the case of Lander Co. Canada Ltd. v. Alex E. Macrae & Co. (1993), 46 C.P.R. (3d) 417 (F.C.T.D.), Mr. Justice Rouleau, at page 419 states:
At the outset, may I say that this court must be circumspect when interfering with the Registrar's decision. It has been well established by the jurisprudence that this court may intervene only when unequivocally convinced that the Registrar has erroneously concluded on the facts. As Mr. Justice Strayer pointed out in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1987), 14 C.P.R. (3d) 133 at p. 135, 11 C.I.P.R. 1, 9 F.T.R. 136 (F.C.T.D.):
. . . in my view the court should be reluctant to reverse the finding of the registrar or chairman unless it is clearly satisfied that he came to the wrong conclusion on the facts or unless there is significant new evidence placed before the court that was not before the registrar. (Emphasis added.)
In 101482 Canada Inc. v. Registrar of Trade Marks, [1985] 2 F.C. 501 (T.D.), at page 504, Mr. Justice Joyal states:
In such circumstances, a court should hesitate to substitute its own judgment for that of the Registrar of Trade Marks, unless it finds evidentiary material in the record which was not considered by the Registrar, or that the Registrar misinterpreted the Act or the decided cases, or that it is right and proper in general for the court to intervene. Needless to say, a court should prima facie accord a certain respect to a decision by the Registrar.
In the case of Benson & Hedges (Canada) Limited v. St. Regis Tobacco Corporation, [1969] S.C.R. 192, Mr. Justice Ritchie, with whom Mr. Justice Martland [and Mr. Justice Hall] concurred, at pages 199-200:
In my view, the decision as to whether or not a trade mark is confusing within the meaning of s. 6 of the Act involves a judicial determination of a practical question of fact and does not involve the exercise of the Registrar's discretion.
. . .
In my view the Registrar's decision on the question of whether or not a trade mark is confusing should be given great weight and the conclusion of an official whose daily task involves the reaching of conclusions on this and kindred matters under the Act should not be set aside lightly but, as was said by Mr. Justice Thorson, then President of the Exchequer Court, in Freed & Freed Limited v. The Registrar of Trade Marks et al., ([1950] Ex.C.R. 431 at 437, 11 Fox Pat. C. 50, 14 C.P.R. 19, [1951] 2 D.L.R. 7):
. . . reliance on the Registrar's decision that two marks are confusingly similar must not go to the extent of relieving the judge hearing an appeal from the Registrar's decision of the responsibility of determining the issue with due regard to the circumstances of the case.
I take from all of the above cases that I must be careful not to substitute my own judgment for that of the Registrar of Trade-marks and that his decision should be given great weight as the Registrar's "daily task" involves the reaching of conclusions as in the case at bar.
Nevertheless, if I find, as I do, that the Registrar erred in law, I do have the jurisdiction to look at all the evidence and see if the Registrar erred in his conclusion based on the facts that were before him.
I have stated in this decision those facts that I believe are relevant. The issue is for me to determine if the Registrar of Trade-marks erred when he concluded there could be no confusion between the trade-mark "Petro-Quebec" and "Petro-Canada".
In the Registrar's decision, found, in English, at Tab 5 of Volume 1 of the appellant's factum, the Registrar lists the grounds of the appellant's opposition to the registration of the respondent's Petro-Quebec trade-mark.
The first ground of opposition is that the applied for mark is not registrable because it is confusing with one, or more, of the opponent's registered marks. The opponent alleges in the statement of opposition that "distributing and marketing petroleum products" includes the operation of motor vehicle service stations. Registration No. 352,720 is merely the words PETRO-CANADA in bold font. The opponent refers to regn. No. 352,719, illustrated below, as PETRO-CANADA and half maple leaf Design, and I will do likewise.
(Design)
Regn. No. 352,719
Although none of the opponent's registrations claim colour as a feature, regn. No 352,719 as actually used invariably has a white half maple leaf against a red background and the word component PETRO-CANADA in black. Further, the principal colours in the get-up of the opponent's service stations are white and red. As the word component PETRO-CANADA is a dominant feature of registration No. 352,719, I consider that the use of the composite mark constitutes use of the word component PETRO-CANADA per se: see Nightingale Interloc v. Prodesign Ltd. (1984), 2 C.P.R. (3d) 535 at 538 (TMOB). Thus, for convenience, I will refer to registration Nos. 354,921; 352,720; and 352,719 collectively as the opponent's PETRO-CANADA mark.
The second and third grounds of opposition allege that the applicant is not the person entitled to register the applied for mark Petro-Quebec because, at the date of filing the application, the applied for mark was confusing with the opponent's marks mentioned above and confusing with the opponent's trade-name and corporate name, that is, PETRO-CANADA INC. The fourth ground of opposition is that the applied for mark PETRO-QUEBEC is not distinctive of the applicant's services because it is confusing with the opponent's mark and corporate and trade-names referred to above. The fifth ground is that the application does not comply with Section 30 of the Trade-Marks Act because the French phrase "stations service pour automobilistes" does not describe the applicant's services in ordinary commercial terms. Next, the opponent alleges that the application does not comply with Section 30 because "use of the trade mark PETRO-QUEBEC would violate the opponent's rights under its registered marks", and would "violate the opponent's rights under Section 7 of the Trade-marks Act and at common law . . ." The final ground is that the application does not comply with Section 30 because the applicant "did not intend to use the exact mark applied for and has in fact not used the exact mark applied for."
After receiving the evidence filed by the parties, the Registrar dismissed the appellant's opposition. In so doing, the Registrar refused to decide "whether use of the applied for mark Petro-Quebec by the predecessor in title Garage Bourbonniere Ltee" was licensed use as required by section 50 of the Trade-marks Act . The Registrar states, on page 4 of his decision:
However, compliance with Section 50 was not pleaded in the statement of opposition and in fact the opponent was refused leave to amend the statement to include such pleadings: see the board ruling dated January 24, 1996. Therefore, I do not have jurisdiction to decide the issue of the distinctiveness of the applied mark (the fourth ground of opposition) on the basis of non-compliance with Section 50: see Imperial Developments Ltd. v. Imperial Oil Limited (1984), 79 C.P.R. (2d) 12 (TMOB).
When counsel for the appellant raised this issue before me, counsel for the respondent objected. I am satisfied that counsel for the appellant can raise the issue before me, in that, I am hearing this matter as a "trial de novo" where "new" or further evidence is permitted to be filed. If new or further evidence can be made, I see no reason why the appellant cannot raise this argument before me.
Section 50 of the Trade-marks Act states:
50. (1) For the purposes of this Act, if an entity is licensed by or with the authority of the owner of a trade-mark to use the trade-mark in a country and the owner has, under the licence, direct or indirect control of the character or quality of the wares or services, then the use, advertisement or display of the trade-mark in that country as or in a trade-mark, trade-name or otherwise by that entity has, and is deemed always to have had, the same effect as such a use, advertisement or display of the trade-mark in that country by the owner.
(2) For the purposes of this Act, to the extent that public notice is given of the fact that the use of a trade-mark is a licensed use and of the identity of the owner, it shall be presumed, unless the contrary is proven, that the use is licensed by the owner of the trade-mark and the character or quality of the wares or services is under the control of the owner.
(3) Subject to any agreement subsisting between an owner of a trade-mark and a licensee of the trade-mark, the licensee may call on the owner to take proceedings for infringement thereof, and, if the owner refuses or neglects to do so within two months after being so called on, the licensee may institute proceedings for infringement in the licensee's own name as if the licensee were the owner, making the owner a defendant.
Counsel for the appellant makes the following submission regarding the section 50 issue:
The fact that the president of the corporate owner of a mark is also the president of the corporate licensee which uses the mark, is insufficient to enable the owner to benefit from Section 50 of the Trade-marks Act. Such uncontrolled use does not satisfy the requirement that the licensed use be under the control of the trade mark owner.
At the hearing, I informed counsel for the appellant that I was not satisfied with his submission. It is apparent that Mr. Roger Thibodeau, as the person in charge and in control of both the corporate owner of the mark and of the corporate licensee of the mark, satisfies the need of control pursuant to section 50. The affidavit of Mr. Thibodeau before the Registrar satisfies me that Mr. Thibodeau exercised the necessary control required.
As I have stated, it is with a great deal of reluctance that I would try to "second guess" the decision of the Registrar in a case as the one presently before me because it is based, other than the issue of stare decisis on the facts presented to the Registrar.
I am satisfied, that based on the evidence before him, the Registrar erred in his appreciation of the facts.
As the Registrar states in his decision, it is clear that the appellant's trade-marks are very well known in Canada and that the respondent's trade-mark is not known.
It can be an accepted fact that the appellant, among other operations, operates service stations throughout Canada (see affidavit of Brent Tremblay). Mr. Tremblay also attests that Petro-Canada has operated service stations under different trade-marks.
The Registrar also had before him evidence of third party adoption of trade-names for use in Quebec that substitute the word "Quebec" for "Canada" (affidavit of Andrew T. McIntosh) and evidence of pairs of Canadian trade-mark applications for which the word "Quebec" is substituted for the word "Canada" (affidavit of Jane Sheppard).
The Registrar also had before him a copy of a newspaper article that profiles Robert Thibodeau's (the president of the respondent and of Garage Bourbonnière) Petro-Quebec service station business but identifies the service station as being a Petro-Canada service station (affidavit of Jacques Viau).
I cannot help but disagree with the finding of the Registrar, which I do most reluctantly. I cannot help but conclude, from the factual evidence, that there exists a reasonable likelihood of confusion between "Petro-Quebec" and "Petro-Canada marks".
I am satisfied that because the Petro-Canada mark is so well known in Canada in association with service stations, it would be assumed that the Petro-Quebec service station belonged to or was affiliated with the appellant. This was shown to be so in the newspaper article (see Viau affidavit).
Furthermore, as other companies such as Bell Canada uses Bell Quebec and one believes, as is the case, that Bell Quebec is affiliated with Bell Canada (see Jane Sargeant affidavit), then it can be assumed one would believe Petro-Quebec as being affiliated with or owned by, or controlled by Petro-Canada.
All the above would, in my opinion, cause confusion.
Furthermore, I believe the Registrar erred in finding that there was no likelihood of confusion between the respondent's Petro-Quebec trade-mark for "stations-service pour automobilistes" and the appellant's family of Petro-Canada and Petrocan trade-marks for motor fuel and distributing and marketing petroleum products.
The appellant, in distributing petroleum products does so, and has been doing so, by means, amongst others, of service stations or as "stations de service pour automobilistes".
I am satisfied, as I have said, that both the appellant and the respondent, are in the same or at the least, very similar businesses in dealing with the sale of petroleum products such as gasoline for motor vehicles or oil for these vehicles which can only lead to confusion.
In that the onus is on the respondent to show that there is no likelihood that the registration of the trade-mark "Petro-Quebec" will cause confusion in the mind of an ordinary consumer with the mark "Petro-Canada" and I am satisfied from the facts of this case that the respondent has failed to do so, the present appeal is allowed.
The decision of the Registrar dated February 7, 1997 is set aside with costs in favour of the appellant.