Vejee Group ( Canada ) Ltd. v. Woolworth Canada Inc.
T-1653-98
Pelletier J.
5/11/99
13 pp.
Appeal from Registrar's decision maintaining opposition by respondent to appellant's application for registration of trade mark "Canadian Reflections" in association with clothing and clothing accessories-Registrar found likelihood of confusion with respondent's trade mark "Northern Reflections" used in association with similar wares sold through 179 Northern Reflections retail outlets-On appeal respondent stating has been using unregistered trade mark "Canadian Reflections" since March 1992 in association with t-shirts and sweat shirts-Issue likelihood of confusion between appellant's "Canadian Reflections" mark and respondent's registered trade mark "Northern Reflections"-Appeal dismissed-Onus of showing lack of confusion upon applicant-Decision of Registrar entitled to some degree of deference, even on appeal, as result of expert status of Registrar acting within his field-Registrar herein has carefully reviewed circumstances of use and proposed use of two trade marks and found likelihood of confusion between two marks as wares could be sold from adjacent stores-No error on basis of material before Registrar-Different material on appeal not affecting outcome as not possible to amend application for registration after it has been refused by Registrar-Certain amendments permissible but common sense suggesting no amendment possible to that which has already been adjudicated-Once Registrar ruled upon application before him, Registrar functus officio and could not consider amendment to application-Power of Court to receive evidence not before Registrar in Act, s. 56(5) not enabling Court to decide application which was not before Registrar-Amended application not application which Registrar refused and cannot be subject of appeal since not subject of Registrar's ruling-As matter of practical consequence, permitting such amendments would result in process of successive approximation in which applicants would draft claims as widely as possible before Registrar only to narrow them to conform to Registrar's objections at appeal stage-Would be wasteful process which ought not to be encouraged-Fact one mark not confusing with another mark incorporating particular word not meaning mark not confusing with any other mark incorporating same word-Finally, even though evidence of state of register of trade marks arguably demonstrating consumers able to make subtle distinctions between marks involving common terms, within Registrar's expertise to find Canadian and Northern sufficiently close in idea suggested they are reasonably likely to be confusing when used with common word like "Reflections" to refer to identical wares travelling in same channels of trade-Trade-marks Act, R.S.C., 1985, c. T-13, s. 56(5).