Newsletter Article
MARCHÉ EXPRESS
Published: 02/02/2012
By John McKeown A judge of the Federal Court recently refused to interfere with a decision made by the Trade-mark Opposition Board (the “Board”).
The Opposition
Exxon Mobil Corporation filed an application for the trade-mark MARCHÉ EXPRESS in association with convenience store and fast food services offered at gasoline stations.
Mövenpick Holding AG owns a registration for the trade-mark MARCHÉ for use in association of the operation of a restaurant. Mövenpick opposed the Exxon’s mark on the basis that:
(a) it was clearly descriptive of convenience stores,
(b) it was confusing with Mövenpick’s MARCHÉ trade-mark,
(c) Exxon had not used the mark in association with the applied for services since July 19, 2001 as claimed in the application.
A hearing officer of the Trade-marks Opposition Board dismissed all three grounds of the opposition and allowed the application. Mövenpick appealed from the decision. Both parties took advantage of the ability to file additional evidence that was not before the Board.
On appeal the Board’s expertise should be given deference. In the absence of additional evidence, decisions of the Board are reviewed on the standard of reasonableness. But if additional evidence is adduced that would have materially affected the Board’s findings of fact or the exercise of discretion, the judge hearing the appeal must come to his or her own conclusion as to the correctness of the Board’s decision
Clearly Descriptive
A trade-mark must not clearly describe the character or quality of the services with which it is used. The hearing officer concluded that the proposed mark was not clearly descriptive in the English language of convenience stores.
The evidence before the Board established that the word “Marché” was used by other traders to describe convenience stores, but that the combined words did not have a precise meaning with respect to the character of convenience store services.
As a result, it was concluded that at most the mark suggested the ease of purchasing items at a convenience store which could save a consumer some time, but was not clearly descriptive in either the French or English language.
It is well established that the word “clearly” in this context means “easy to understand, self-evident or plain” and preserves the registrability of suggestive trade-marks. The Trade-marks Act (the "Act") only prohibits the registration of marks that are clearly descriptive. Courts have consistently recognized that a trade-mark is registrable even though it is suggestive or even descriptive. Courts also permit the skilful allusion to a characteristic of the wares or services in issue.
On the appeal both parties filed the affidavits from linguists relating to the meaning of the words in issue. Exxon also filed the affidavit of a marketing expert who interpreted the meaning of the applied-for mark on the basis of Gestalt principles. The judge said this evidence added little to the debate and would not have persuaded the hearing officer to change her mind. The objective was to assess the meaning of the words “marché express” in the French language as perceived on first impression by the reasonable everyday user of the services. Expert evidence mainly consisting of a discussion of rules of grammar, semantics and linguistic constructions was unnecessary and not particularly helpful.
The judge found that this evidence was consistent with the Board’s decision and added nothing that would have persuaded the hearing officer to change her mind. As a result this ground for appeal was dismissed.
Confusion
Exxon had established that it had been operating convenience stores and offering fast food services since July 2001 in association with the trade-mark MARCHÉ EXPRESS. More than sixty stores were operating in the province of Quebec and one in Ottawa.
The hearing officer found that Mövenpick’s mark possessed some measure of inherent distinctiveness when used in association with the operation of the restaurant. The trade-mark MARCHÉ EXPRESS possessed less inherent distinctiveness as “Marché” was highly suggestive of the services. However, based on Exxon’s evidence she was satisfied that this mark had become known to some extent. The same could not be said concerning Mövenpick’s mark because evidence filed by it to show use was very vague.
The hearing officer found that in considering the nature of the respective businesses and trade, the words of the application and the registration govern not the actual use. The actual use was not completely irrelevant but should not be considered to the exclusion of potential uses described in the application. The evidence established that Exxon’s convenience stores at gasoline stations sold a variety of items such as cigarettes, candy bars, salty snacks and fast food items such as sandwiches, donuts, coffee and soft drinks. As a result she concluded that it was unlikely that the trades would overlap because Exxon’s services were not fast food restaurant services. However, the services did not contain such a limitation and did not prevent Exxon from operating fast food restaurants at gasoline stations.
The final circumstance considered was that the trade-mark MARCHÉ was commonly used in the food industry which suggested that consumers were accustomed to seeing the word in the marketplace and that they would be likely to pay more attention to other features of the marks presented to them. As a result, the hearing officer dismissed this ground of opposition.
On appeal, the judge said that although a substantial amount of new evidence, including a survey, was submitted, the evidence only served to bolster the decision of the Board. The judge also said that decision of the hearing officer should be given great weight and the conclusion of an official whose daily task involves the reaching of conclusions on this and related matters under the Act should not be set aside lightly. As a result, this ground of appeal was dismissed.
The Date of First Use
Section 30 of the Act requires an application to state the date from which the trade-mark was used in Canada. Non-compliance can be raised as a substantive ground of opposition. The only evidence before the Board was an affidavit filed on behalf of Exxon by an individual who was not personally present at the initial opening but relied on business records to state the date of first use. The hearing officer accepted this evidence.
On appeal, Mövenpick did not file any additional evidence on this issue. Exxon filed an additional affidavit once again based on business records. Mövenpick argued that this evidence was hearsay and inadmissible.
The judge referred to the fact that the Act provides that on an appeal a judge may exercise the same discretion as was available to the Board. Canadian courts have held that administrative tribunals are not restricted by the rules of evidence applicable to court proceedings in the absence of a specific statutory direction. As a result, the judge found that the Board was entitled to rely on hearsay where it had probative value and refused to take a more technical approach. This ground of appeal was therefore dismissed.
Comment
The decision illustrates two important issues. First, the weight to be given to a decision of the Board will be a significant issue in any appeal to the Federal Court particularly when combined with the standard of review. There are a number of variables and the standard of deference will not apply in some cases.
Second, anyone applying for a trade-mark needs to ensure that the date of first use is accurate and ideally can be substantiated for all of the wares and services in issue.
|
