Digests

United States Polo Assn. v. Polo Ralph Lauren Corp.

A-205-99

Isaac, Malone JJ.A.

14/9/00

23 pp.

Confusion--Appeal from Trial Division's order ((1999), 87 C.P.R. (3d) 193) allowing appeal from Trade-marks Opposition Board's decision allowing appellant Polo Ralph Lauren Corporation's oppositions to registration of United States Polo Association's (USPA) trade marks "United States Polo Association & Design" and "U.S.P.A. & Design" for use in association with men's, women's and children's clothes and denying USPA's applications to register proposed trade marks on ground respondent had failed to demonstrate trade marks applied for not confusing with appellant's registered trade mark "Polo Player Design" and "Polo"--Issue whether Trial Judge erred in law by failing to apply proper test as to likelihood of confusion (proper test whether, as matter of first impression in mind of average consumer having vague or imperfect recollection of another mark, use of both trade marks in same area and in same manner likely to lead to inference wares associated with those marks produced or marketed by same company) --Preliminary issues relating to admissibility and use of certain additional affidavits filed by USPA before Trial Judge and to applicable standard of review herein--Appeal dismissed--Per Malone J.A. (Strayer J.A. concurring): Number of affidavits filed by USPA before Trial Judge not confined to facts within personal knowledge of deponents; no exception to hearsay rule--Therefore, none of these affidavits should have been referred to or relied on by Trial Judge in his analysis--Application of standard of review as defined in Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (C.A.): where additional evidence adduced in Trial Division that would have materially affected Registrar's findings of fact, as here, Trial Division judge must, and did, come to own conclusion as to correctness of Registrar's decision--As Trial Judge's reliance on inadmissible affidavit evidence constituting error of law, this Court able to conduct own analysis on issue of confusion--Trial Judge's analysis incorrectly considering USPA Design marks in isolation with sport of polo instead of in association with articles of clothing with which USPA registration sought--Analysis also failing to consider degree of resemblance between marks in appearance and ideas suggested by each, as matter of first impression--Marks do bear degree of physical resemblance--In considering surrounding circumstances in relation to Act, s. 6(5), evidence of wide spread use has been accepted in other cases to mitigate significance of resemblance under Act, s. 6(5)(e) on basis wide spread use must infer market place able to distinguish between competing marks--Presence of common element in trade marks (horse and polo mallet herein) has been held to have important effect on issue of confusion as such common occurrence tending to cause customers to pay more attention to other features of respective marks--Applying first impression test and based on all evidence of surrounding circumstances, USPA has discharged onus of showing no likelihood of confusion between USPA Design marks and any of the Polo trade marks notwithstanding they are produced or marketed in respect of clothing to be sold in Canadian retail market--State of register raising convincing evidence of lack of confusion--Reasonable inference Canadian clothing consumers accustomed to making minor distinctions between various polo marks--Per Isaac J.A.: Trial Judge did not incorrectly consider USPA Design marks in isolation with that of polo instead of in association with articles of clothing with which USPA registration sought, and Trial Judge did not fail to apply first impression test--Trial Judge instructed himself correctly on law--Clearly turned his mind to correct legal test and did not make errors of law alleged by colleague herein--Therefore, absent legal error or palpable and overriding error of fact, Trial Judge's decision should not be interfered with--Since issue of "confusion" one of fact, not sufficient for Court to substitute its views of facts for that of Trial Judge simply because Court would have come to different conclusion--On evidence, and considering matter from perspective of average consumer having vague or imperfect recollection of appellant's marks, Judge below not wrong to decide marks not confusing--Marks of USPA do not resemble marks of appellant in appearance, sound or idea suggested--Judge not wrong to consider respondent's marks distinctive--"Nature of wares" not to be counted twice, once when examining Act, s. 6(5)(c) and again when examining Act, s. 6(5)(e)--Should be considered as one factor, not two--Trade-marks Act, R.S.C., 1985, c. T-13, s. 6(5)(c),(e).