Danjaq Inc. v. Zirvas
T-937-96 / T-938-96 / T-939-96
Lutfy J.
31/7/97
11 pp.
Appeal from rejection of appellant's opposition to proposed registration-Appellant owning trade mark "007 and Gun Design", other marks associated with "James Bond", fictional character created in Ian Fleming's novels, adapted for movies-Respondent seeking to register "007", "007 Pizza & Subs and Design", "007 Submarine and Design" as trade marks for restaurant business-Opposition based on (a) previous use; (b) lack of distinctiveness-Registrar concluding respondent's trade marks distinctive, not confusing, because of disparity in wares, services, trades of parties-Also finding evidence lacking as to establishment of use of appellant's trade marks in Canada prior to material date-Appeal allowed-Additional information filed on appeal constituting new significant evidence, relevant to issues before Registrar, allowing Court to substitute its view for his-Respondent not entitled to registration: (i) if appellant's trade marks used in Canada prior to respondent's first use of marks in 1989; (ii) if parties' trade marks confusing-"James Bond 007 with Gun Design" and "007" trade marks used, made known in Canada prior to respondent's first use-Trade marks seen, heard on films-Evidence concerning: (i) revenues of $70 million prior to 1987 from distribution of 15 films featuring James Bond character, also known as 007; (ii) availability of movies through television broadcasts, video rentals; (iii) publicity generated by print media, establishing both use, widespread recognition of appellant's trade marks-In focussing on one of criteria in s. 6(5) to determine whether trade marks confusing, Registrar's approach too narrow-More protection afforded stronger marks-Appellant's trade marks strong-Inherent distinctiveness enhanced through wide recognition-Respondent's first use relatively recent while James Bond character, 007, made well-known through novels, films since 1962-Publicity surrounding trade marks, use continuing-Likelihood of confusion may be enhanced when mark strong, even if parties operate in different businesses-In each of respondent's three applications, "007" either only or opening element of trade marks-Proposing application to promotional wares coinciding in part with those listed in appellant's U.S. registration of marks-Opening element and sound for competing marks having high degree of resemblance with respondent's trade marks, in particular trade mark "007"-In light of criteria set out in s. 6, use of parties' trade marks in same area likely to lead to inference wares or services associated with those marks produced by same person-Strong likelihood of confusion-"Distinctive" in relation to trade mark meaning trade mark actually distinguishing wares, services in association with which used from wares, services of others-Respondent adopted 007 with knowledge of prior use of appellant's trade marks-Respondent's choice of 007 deliberate, not unrelated to mark's fame-Chain of "007" pizza, pasta, submarine sandwich outlets not necessarily distinguished, within meaning of s. 2, by public from applicant's wares, services-Respondent's marks not distinctive-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2 "distinctive", 6.