“TRADITION” TRADE-MARK, FEDERAL COURT OF

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NO INFRINGEMENT OF “TRADITION” TRADE-MARK,
FEDERAL COURT OF APPEAL RULES
By
Stella Syrianos*
LEGER ROBIC RICHARD, L.L.P.
Lawyers, Patent and 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]
The Federal Court of Appeal recently dismissed an appeal of a decision of
the Federal Court which rejected the Appellant’s action for trade-mark
infringement and passing off relating to the “TRADITION” trade-mark (Tradition
Fine Foods Ltd. v. Oshawa Group Ltd., Sobey Inc. et als, 2005 FCA 342,
Malone, Rothstein and Létourneau, JJ.A., October 25th, 2005).
THE FACTS
The Appellant, Tradition Fine Foods Ltd. produces a range of fresh and frozen
baked goods such as muffins, croissants, cookies, cakes and pastries that are
sold not only in grocery stores and convenience stores but are also used by
hotels and hospitals. The wares associated to its various registered TRADITION
trade-marks are frozen, unpackaged bakery products as well as goods that
are baked and then frozen.
Sobeys began opening a chain of small, franchised, fresh market grocery
stores in Quebec and Ontario in 1997, using the bilingual word 'Tradition' in its
signage and graphics. Each store carries a wide variety of commercial
grocery products including fresh and frozen bakery products which are sold
from an in-store bakery. Of note, in Quebec, Sobeys operates its stores under
the trade name, "LES MARCHÉS TRADITION" which was also registered as a
trade-mark for retail grocery store services on February 10th, 2000.
THE FEDERAL COURT JUDGEMENT
© CIPS, 2005
* Lawyer, Stella Syrianos is a member of the law firm and of the patent and trade-mark
agency LEGER ROBIC RICHARD, L.L.P. Publication 142.181.
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The Federal Court judge seized with the Plaintiff’s action for infringement and
passing off ruled that the Plaintiff had not discharged its onus of proving that
Sobey’s had violated its rights in the trade-mark TRADITION. The Trial judge
held that Plaintiff’s mark was weak and common in the food producers’ trade
and co-existed in the retail grocery market. He also determined that
evidence alleging confusion by the Plaintiff based on misdirected telephone
calls and participants in a market survey conducted by its expert were nonpersuasive. Overall, the Court concluded the evidence did not establish
confusion between Plaintiffs’s baking business and Sobey’s grocery stores.
THE FEDERAL COURT OF APPEAL JUDGEMENT
In dealing with the issue of confusion, the Federal Court of Appeal decided
that the Appellant’s rights under Section 19 of the Trade-marks Act were not
violated insofar as the mark being used, MARCHÉ TRADITION was not identical
to its registered TRADITION trade-marks.
In pursuing its analysis of confusion pursuant to Section 20 of the Trade-marks
Act relating to confusion between similar trade-marks, the Court of Appeal
considered the Appellant’s arguments that Sobey’s use of the names
“TRADITION MARKET FRESH FOODS” AND “LES MARCHÉS TRADITION” were
confusing with its TRADITION trade-marks having regard to the prominence
given to the word “TRADITION” on signage.
The Court also considered the Appellant’s argument that the Trial judge erred
when granting little weight to its expert survey evidence and misdirected
phone calls from callers wondering whether there was a connection between
Tradition and the new grocery stores. In response, the Court of Appeal
concluded that the Trial judge did not err in its assessment of the survey
evidence as a judge is not bound by survey evidence and legally has the
power to make a determination of non persuasiveness. As for the misdirected
phone calls, the Court of Appeal held that while it may be relevant within the
overall test for likelihood of confusion, it did not amount to evidence of actual
confusion.
The Court of Appeal agreed with the Trial judge’s opinion that it was unlikely
that the Appellant’s products would be sold in the respondent’s stores due to
the nature of the Appellant’s bakery business. The Court of Appeal therefore
dismissed the appeal since it found no palpable and overriding error in the
Trial judge’s conclusions that neither the phone calls, the results of the survey
evidence nor the analysis of the statutory factors, proved the likelihood of
confusion.
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CONCLUSION
This case supports the general principle that weak marks usually have a lower
degree of protection available to them. It also serves as a good reminder that
while survey evidence may seemingly be convincing, it does not bind a judge
who legally has the power to determine its probative value.
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