state of the register evidence: a surrouding circumstance

STATE OF THE REGISTER EVIDENCE: A SURROUDING CIRCUMSTANCE WHICH
MITIGATES THE SIGNIFICANCE OF RESSEMBLANCE WHEN ASSESSING THE RISK OF
CONFUSION
By
Stella Syrianos
LEGER ROBIC RICHARD, Lawyers
ROBIC, Patent & Trademark Agents
Centre CDP Capital
1001 Square-Victoria - Bloc E – 8th Floor
Montreal, Quebec, Canada H2Z 2B7
Tel.: (514) 987 6242 - Fax: (514) 845 7874
www.robic.ca - [email protected]
A recent decision of the Federal Court of Appeal of Canada confirmed that
when assessing the risk of confusion between trade-marks, regard must be
given to all evidence of surrounding circumstances, including state of the
register evidence (Polo Ralph Lauren Corporation vs. United States Polo
Association A-205-99, September 14, 2000, Malone, J.).
On June 21st, 1985, the Respondent, United States Polo Association ("USPA")
filed applications in Canada to register the design trade-marks UNITED STATES
POLO ASSOCIATION and U.S.P.A. (“USPA Design Marks”) in association with
clothing such as pants, shirts, shorts, sweat-pants, sweaters and the like.
On July 26, 1995, the Appellant, Polo Ralph Lauren Corporation (“PRLC”)
opposed the proposed registrations, primarily, on the grounds that the
proposed trade-marks were confusing with its numerous POLO trade-marks
comprised of the term “POLO” and features consisting of horses and polo
mallets (“POLO trade-marks”) primarily in association with clothing.
On November 22, 1995, the Registrar refused both of USPA’s applications on
the grounds that USPA had not discharged its burden of showing that the
USPA Design Marks were not confusing with the POLO trade-marks.
USPA filed an appeal of the Registrar'
s decision to the Federal Court Trial
Division. Both parties submitted additional evidence on appeal.
On March 8th, 1999, the Trial Division granted the appeal, hence the present
appeal to the Federal Court of Appeal of Canada with regards to the
Registrar'
s refusal to register USPA’S Design Trade-Marks.
PRLC argued that the Trial Judge erred in law by failing to apply the proper
test as to the risk of confusion between its POLO trade-marks and USPA’s
Design Marks.
In rendering its decision, the Court of Appeal was of the view that the Trial
Judge erred in law by relying on inadmissible affidavit evidence and under
those circumstances, the Court of Appeal was able to reach its own
conclusion on the issue of the likelihood of confusion between the marks in
question.
The Court of Appeal reviewed the cases establishing the basic guidelines that
courts are to follow when assessing the risk of confusion: application of the
imperfect recollection test, consideration of the marks in their entirety,
consideration of the nature of the wares associated with the marks and
consideration of the degree of resemblance in appearance, sound and
ideas suggested.
The Court also stated that surrounding circumstances were a factor to be
taken into consideration when assessing the risk of confusion. In that regard,
the Court accorded substantial weight to the state of the register evidence
filed by USPA before the Federal Court Trial Division.
USPA had filed as additional evidence, searches of the Canadian Trademarks registry containing 67 trade-mark entries comprised of the term “polo”
either alone or combined with other elements as well as marks having polo
design elements with either the term “polo” alone or in combination. These
marks were registered in association with clothing as well as eye apparel,
luggage, perfume, jewellery and cosmetics. This additional evidence sought
to establish that the term “polo” has been generally adopted and widely
used in the retail business in Canada.
In the Court’s view, this was cogent evidence that mitigated the significance
of the degree of resemblance between the marks since this state of the
register evidence of such wide-spread use of the term “polo” in the Canadian
retail industry must infer that Canadian clothing consumers are accustomed
to distinguishing the various “polo” marks on the basis of their components
other than the word “polo”.
Based on all of the evidence of surrounding circumstances, the Court held
that there was no risk of confusion between USPA’s Design Marks and PRLC’s
POLO trade-marks and thus dismissed the appeal.
It is also worth underlining that based on the evidence filed by PRLC, the
Court noted that the POLO trade-marks were famous marks in Canada. Of
equal importance therefore, is the Court’s finding that third party use of trademarks incorporating similar elements of another party'
s widely recognised
trade-marks, does not automatically lead to a finding of confusion, despite
the famous nature of the trade-marks in question.
Thus, the Court of Appeal has confirmed that while a wide ambit of
protection is usually accorded to famous trade-marks, third parties are not
necessarily precluded from adopting trade-marks comprised of these famous
trade-marks, depending on the surrounding circumstances. In the case at
bar, the surrounding circumstances were related to the state of the register
evidence. A similar decision regarding the importance of surrounding
circumstances was rendered in Baylor University vs. The Governor and
Company of Adventurers Trading into Hudson's Bay and The Registrar of
Trade-Marks, A-35-99, June 22nd, 2000, Noël J.A., concerning THE BAY trademarks.
In allowing the appeal, the Court of Appeal has reminded trade-mark
practitioners that the filing of the state of the register evidence could prove to
be crucial in assessing the risk of confusion, particularly when faced with
marks which resemble one another on a phonetic, visual or conceptual level
as well as when faced with well-known trade-marks.
Published at (2000), 14 W.I.P.R. 387-388 under the title State-of-the-Register
Evidence Can Mitigate Significance of Resemblance
© LEGER ROBIC RICHARD / ROBIC, 2000.
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