United Artists Corp. v. Pink Panther Beauty Corp.
T-3487-90
MacKay J.
19/4/96
26 pp.
Appeal under Trade-marks Act, s. 56 from Registrar's decision rejecting opposition to registration of respondent's trade mark-Respondent using trade mark "Pink Panther" in association with hair care and beauty supplies, in operation of distribution business and educating others in distributing products-Appellant claiming use of trade mark "The Pink Panther", in association with phonograph records, motion picture films, film leasing and distribution services and entertainment services-Appellant's predecessor registered trade mark in Canada in 1967-Respondent incorporated December, 1985-Application for registration made February, 1986-Statement of opposition filed by appellant's predecessor April, 1988-Preliminary motion on issue of standing to appeal-Motion denied-Alleged defects of current appellant's standing could have been raised in opposition proceedings but were not-Registrar clearly had authority under Act, s. 47 to extend time for filing statement of opposition and accept amended statement of opposition filed by appellant-Respondent also claiming assignment to current appellant not including express assignment of interest in appeal proceedings-Assignments purporting to assign all "right, title and interest" in trade marks include right to protect mark in opposition proceedings-Registrar's decision of lack of recent use in Canada based on scanty affidavit evidence filed by appellant-Substantial additional affidavit evidence filed on appeal showing trade marks extensively used and well known in Canada-Appeal allowed-Appellants' trade marks used over 30 years from 1964 and widely known throughout Canada and may be termed strong trade marks-Therefore entitled to wide ambit of protection-On issue of confusion, marks of both parties inherently distinctive within meaning of Act, s. 6(5)-However, appellant demonstrating widespread use and widespread acknowledgement in Canada-Respondent's use limited to distribution of beauty supplies in southern Ontario-Although nature of wares and services of parties dissimilar, degree of similarity between trade marks often most significant factor in determining whether confusion likely to arise-Particularly so when one of marks strong-Material time for testing confusion: time of Registrar's decision-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6(5), 56.