Digests

Nefco Furniture Ltd. v. Brick Warehouse Corp.

T-1911-01

2003 FC 852, Dawson J.

9/7/03

19 pp.

Appeal from decision of Trade-marks Opposition Board, as delegate of Registrar of Trade-marks (Registrar), by which Registrar refused application of Nefco Furniture Ltd. (applicant or Nefco) to register trade-mark "Mattress Express" for use in association with retail sale of beds, mattresses, box springs, bedding products and components therefor--Registrar decided application on basis of first ground of opposition, which was based on Trade-marks Act, s. 12(1)(d) and which alleged "Mattress Express" not registrable as confusing with each of opponent's trade-marks "Bedding Express", "Sofa Express", "The Brick Express", "Television Express" and "Appliance Express"--Registrar concluded applicant had failed to show no reasonable likelihood of confusion between applicant's mark "Mattress Express" and opponent's registered trade-mark "Bedding Express" as of July 10, 2001, date of decision of Registrar--Therefore, opposition based on Act, s. 12(1)(d) succeeded--Single issue raised by applicant on appeal from Registrar's decision whether Registrar erred in holding applicant did not meet onus upon it to show no reasonable likelihood of confusion between its trade-mark "Mattress Express" and "Bedding Express" as of July 10, 2001--Respondent limited submissions to whether mark "Mattress Express" confusing with registered trade-mark "Bedding Express"--In order to determine whether trade-marks confusing, Act, s. 6(5) directing Registrar to have regard to all surrounding circumstances, including five factors set out in Act, s. 6(5)--Onus upon applicant to show no likelihood of confusion with registered trade-mark in mind of average consumer--Turning to consideration of items listed under Act, s. 6(5), applicant not challenging finding of Registrar that neither mark has much inherent distinctiveness so this factor favours neither party--Relevant date for determining confusion under Act, s. 12(1)(d) date of determination of opposition by Registrar on evidence--In case at bar, July 10, 2001 relevant date--At that time evidence as to respondent's use of its mark extensively advertised between 1990 and 1993, but more than seven years had elapsed since last evidenced use of "Bedding Express"--As Registrar correctly noted, fair to conclude "Bedding Express" no longer known to any significant extent more than seven years after last use--No challenge made to Registrar's finding services overlap significantly because both parties use marks in association with retail sale of furniture, including mattresses-- As to other surrounding circumstances, Registrar gave little weight to evidence of lack of confusion, and declined to consider apparent discontinuance of opponent's mark as further surrounding circumstances--Applicant submits Registrar erred in so doing--With respect to weight to be given to evidence of lack of confusion, Registrar gave little weight to evidence, in part because Nefco's use of mark had been somewhat limited-- Due to Brick's non-use of mark, this was not case where there had been concurrent use of marks with no confusion-- Registrar entitled to give evidence little weight--Substantial error alleged that Registrar did not properly consider effect of non-use of opponents mark in view of her findings that there was no evidence Brick's mark used after 1993, so mark "Bedding Express" no longer known to significant effect-- Central issue before Registrar whether trade-marks in question confusing--Test for confusion at Act, s. 6(5): whether ordinary consumer will believe wares with which second mark used in some way associated with wares of first mark--Test of first impression and imperfect recollection, and ultimately determination of fact--Because question of fact, factors listed in Act, s. 6(5) need not be given equal weight--While some factors such as nature of wares, nature of trade, and degree of resemblance between marks suggest likelihood of confusion, determining factors inherent distinctiveness of marks and Registrar's correct finding as of date of decision Brick's mark not known to any significant degree--Weakness of marks and fact first mark no longer known to any significant extent fundamentally contradict Registrar's finding applicant had failed to show no reasonable likelihood of confusion--Weak mark out of use for so long that no longer known to any significant degree cannot constitute source of confusion-- Court concluded reasons as whole do not support decision-- Consequently, appeal allowed and decision of Registrar refusing applicant's application pursuant to s. 38(8) of Act set aside--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6(5), 12(1)(d), 38(8) (as am. by S.C. 1993, c. 15, s. 66).