TRADE MARKS |
Mattel, Inc. v. 3894207 Canada Inc.
T-717-02
2004 FC 361, Rouleau J.
11/3/04
20 pp.
Appeal under Trade-marks Act (Act), s. 56(1) from decision by Trade-marks Opposition Board (the Registrar) dismissing applicant's opposition to application for registration of trade-mark "Barbie's & design" in association with restaurants and catering services filed by predecessor in title of corporate respondent (respondent)--Applicant also asking by way of application for judicial review for order Mattel, Inc. be recognized retroactively as true opponent in proceedings-- Application for registration based on use of mark "Barbie's & design" since October 1992, in association with "restaurant services, take-out restaurant services, catering and banquet services"--In 1995, applicant opposing application for registration on ground mark caused confusion with several "Barbie" trade-marks registered by applicant in association with dolls, doll accessories, other related products--Registrar dismissed opposition, finding respondent's mark "Barbie's & design" did not cause confusion with opponent's trade-mark-- All relevant factors listed in Act, s. 6(5) must be evaluated-- One of key factors in this case striking difference between wares--Factor must be given considerable weight when wares compared significantly different--This is what Registrar did--Respondent's restaurants located within province of Quebec offering variety of different meals intended for adult clientele--Applicant's "Barbie mark" enjoys extensive worldwide reputation in association with dolls, related accessories, targets market of 3- to 11-year-old girls--On appeal of decision by Registrar, Court will not intervene unless appellant (applicant herein) demonstrates Registrar erred in law, in weighing facts--Nevertheless, when additional evidence is filed under Act, s. 56(5), this Court has more latitude in dealing with Registrar's decision--However, new evidence must be sufficiently substantial to warrant trial de novo--In this case, additional evidence filed by applicant adding nothing new in itself to warrant review of Registrar's decision--No significant conclusion can be drawn from survey results filed by applicant on issue of confusion-- Survey showing blatant, determinative shortcomings undermining relevance considerably--Fact that respondent's restaurants serving adults essential information that should have been revealed to participants in survey in order for results of survey to have merit, which was not done-- Application of "first impression" test not requiring consumer be unaware of context, exact nature of wares, services, business in association with which trade-mark at issue is used--Participants familiar with nature of services of respondent's restaurant, business would have been in best position to determine likelihood of confusion between two trade-marks--Such surveys, to have probative value, cannot take place in a vacuum, as was case here--Surey therefore not conlcusive, cannot establish existence of real likelihood of confusion--Notoriety of mark only one factor to consider--Notoriety of mark not meaning there will automatically be confusion--Mark's fame could not be marketing trump card such that other factors thereby obliterated--In this case, difficult to imagine that individual would show up at one of respondent's restaurants intending to buy Barbie dolls--In short, Registrar's decision reasonable--Clear from all evidence analysed no reasonable likelihood of confusion between two marks--Appeal dismissed, application allowed--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6(5), 56.