Garbo Group Inc. v. Harriet Brown & Co.
T-2432-97
Evans J.
16/11/99
34 pp.
Appeal from Registrar's decision rejecting opposition to respondent's trade mark application for mark "Greta Garbo & Design" in association with cosmetics and toiletries, and eyeglasses and accessories-Registrar found confusion not reasonably likely in view of differences between goods covered by respondent's proposed mark and appellant's registered marks (used in association with women's fashion accessories), and their different channels of trade-Appeal dismissed-Present standard of review (that of correctness) needing to be reformulated to take account of pragmatic and functional analysis developed in contemporary administrative law case law for selecting standard of review appropriate for issue in dispute-Young Drivers of Canada Enterprises Ltd. v. Chan, [1999] F.C.J. No. 1321 (T.D.) (QL) considered-Following factors relevant to determination of Parliament's intention on standard of review to be applied to finding by Registrar on reasonable likelihood of confusion-First, language of legislation (herein, Trade-marks Act, s. 56 providing for admissibility of additional evidence on appeal indicating broad appellate jurisdiction, and standard of review towards correctness end of spectrum)-However, same standard not necessarily applicable to Registrar's findings on facts other than those to which new evidence relates-Although appeal from Registrar to Federal Court often described as de novo, that term not found in Act-Second, pragmatic and functional analysis requiring consideration of nature of question in dispute, and relative expertise of administrative decision-maker and reviewing court for deciding it-Inferring from primary facts whether confusion likely mixed question of fact and law because it is finding about whether statutory criterion has been satisfied and hence calls for some appreciation of underlying purposes of statute-Involves making particular findings of fact, and making informed assessment of facts (which Registrar and assistants do on regular basis)-Legal powers and functions of Registrar in determining opposition to registration of trade marks essentially adjudicative in nature-Third, reasons for vesting decision-making power in Registrar rather than court include desirability of having decisions of this kind made by those who encounter issues on regular basis and thereby develop expertise in area, and of minimizing expenses and delays often associated with litigation-Fourth, nature of rights at stake in trade mark opposition proceedings must also be considered as part of "pragmatic or functional" mix-Thus, primarily economic rights involved indicating more deferential standard of review-Therefore, considerable degree of deference called for on part of appellate court when reviewing Registrar's finding of confusion, provided no significant new evidence adduced on factual issue and no error of law alleged-Given, in particular, Registrar's expertise on question of confusion, reasons for vesting decision-making in Registrar, and nature of rights at stake, "unreasonableness simpliciter" most appropriate standard of review (see Young Drivers, supra)-Furthermore, consistent with statutory scheme for Court to remit to Registrar in appropriate cases, rather than itself making de novo finding on question of confusion on basis of very different evidence from that adduced before statutorily designated specialized tribunal-Burden of proof on applicant both before Registrar and Court of proving no reasonable likelihood of confusion with existing mark-Test for likelihood of confusion not in abstract, but one of impression having regard to average consumer with imperfect recollection-Although appellant previously opposed respondent's attempt to register "Garbo" mark, before death of Greta Garbo, on ground falsely suggested association between goods and actress, no estoppel arising herein as test for determining whether mark falsely suggesting association with living person not same as test for determining whether proposed mark will cause confusion with existing mark-Whether reasonable likelihood of confusion depending on consideration of facts in light of all specific factors set out in Act, s. 6(5)-In light of additional evidence, Registrar not wrong to find marks similar in appearance and sound, but different in ideas suggested-Despite additional evidence of similarity of trade and overlapping of trade channels, Registrar not wrong in conclusion no reasonable likelihood of confusion-Taken as whole, evidence not suggesting respondent's use of "Greta Garbo" mark likely to subject appellant to unfair competition by inducing customers to think respondent's goods came from same source as those sold under any of "Garbo" marks-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6(5), 56.