2011 FC 1397 (December 1, 2011)
Overview
The Federal Court dismissed an appeal from a decision of the Trademarks Opposition Board that held that Exxon Mobil's trademark MARCHÉ EXPRESS was not clearly descriptive of "convenience stores" or "dépanneurs" and was not confusing with Mövenpick's MARCHÉ trademark for use in association with restaurants. This decision is noteworthy as the Court's rejection of linguistic expert evidence is consistent with the Supreme Court of Canada's view, in Masterpiece v. Alavida, 2011 SCC 27, that expert testimony has a limited role in trademark cases.
Abstract
Mövenpick holds a trademark registration for MARCHÉ in connection with the operation of restaurants, and had opposed the application of Exxon Mobil to register MARCHÉ EXPRESS in connection with "convenience store and fast-food services offered at gasoline stations." The Trademarks Opposition Board (the "Opposition Board") decision was in favour of Exxon Mobil, and Mövenpick appealed this decision to the Federal Court. On appeal, both parties made use of section 56 of the Trademarks Act (the "Act") to adduce additional evidence. Very little of this evidence was held to be material. In particular, expert evidence from linguists relating to both the clearly descriptive and confusion aspects of the case was rejected as unnecessary and unhelpful. The Federal Court also held that survey evidence relating to both issues would not have affected the Registrar of Trademark's findings of fact; although unlike the Supreme Court in Masterpiece v. Alavida, the Federal Court did not find it necessary to rule on whether the survey methodology would meet the requirements of reliability and validity with respect to confusion. The Federal Court upheld the ruling of the Registrar.
Case summary
Facts. Mövenpick is the operator of "Marché" restaurants, and allegedly began operation of their first restaurant in May 1992 in Toronto, Ontario. The trademark MARCHÉ was registered by Mövenpick on July 12, 1996.
Exxon Mobil is the operator of several gas stations under the ESSO trademark that provide customers with access to adjacent MARCHÉ EXPRESS convenience stores. The majority of these gas stations are in Quebec.
In December 2001, Esso filed an application to register the trademark MARCHÉ EXPRESS in association with "convenience store and fast-food services offered at gasoline stations" based upon claimed use of the mark in Canada since July 2001. Mövenpick opposed this application.
Mövenpick argued three main points before the Opposition Board: (i) that MARCHÉ EXPRESS was clearly descriptive of the applied-for wares as of the filing date; (ii) that there was likely to be confusion between the two marks; and (iii) that there was no proof to support Exxon Mobil's alleged date of first use.
The Opposition Board ruled that pursuant to section 12(1)(b) of the Act, the marks were not clearly descriptive of "convenience stores," or "dépanneurs," according to the English and French characterizations, respectively. Similarly, it was found that the marks were not confusing under both sections 12 and 16 of the Act, taking into account the factors listed under section 6(5) of the Act that may be used to help assess confusion. The Opposition Board also stated that Mövenpick had not submitted any evidence that would place into question Exxon Mobil's alleged date of first use of MARCHÉ EXPRESS.
Analysis. On appeal, both parties adduced new evidence to the Federal Court pursuant to section 56 of the Act in relation to each of the main points that had been presented before the Opposition Board. The Court held that very little of this evidence would have had the potential to have materially affected the Registrar's findings of fact or the exercise of her discretion.
In particular, expert evidence from linguists relating to both the clearly descriptive and confusion aspects of the case was rejected. The Court noted that when the objective is 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 that "mainly consists of a discussion of rules of grammar, semantics and linguistic constructions regarding the interpretation of these words" is unnecessary and unhelpful. This result appears to be consistent with the Supreme Court's decision in Masterpiece v. Alavida.
The Court also found that survey evidence relating to both the clearly descriptive and confusion aspects of the case would not have affected the Registrar's findings of fact, although unlike the Supreme Court in Masterpiece v. Alavida, the Court did not find it necessary to rule on whether the survey methodology would meet the requirements of reliability and validity with respect to confusion, ruling as follows:
"In my opinion, the Klein survey, whether or not the methodology used was reasonable, would not have affected the Registrar's decision. It showed insignificant confusion which, if relevant, could only be used to bolster the Registrar's opinion. What it shows, together with evidence filed by Esso before the Registrar, and the evidence filed on behalf of Mövenpick, is that it is difficult, if not impossible, for a consumer to see 'Marché Express' signage without at the same time seeing an Esso sign, and for a patron at a Mövenpick restaurant to see 'Marché' without at the same time seeing 'Mövenpick.'"
With respect to an argument that two affidavits from Exxon Mobil relating to the alleged date of first use of MARCHÉ EXPRESS were in violation of Rule 81 of the Federal Court Rules and thus inadmissible, the Court noted that when stepping into the Registrar's shoes, the applicable rules of evidence are those to which the Opposition Board must adhere, not the rules of evidence applicable to court proceedings. As such, it was also unnecessary for Exxon Mobil to give a notice of intention to use business records as required by the Canada Evidence Act.
The Court upheld the decision of the Opposition Board on all points and costs were awarded to Exxon Mobil. Mövenpick appealed this decision on January 3, 2012.
Conclusion
In this decision, the Federal Court follows the approach to handling expert evidence from linguists that was recently articulated by the Supreme Court in Masterpiece Inc. v. Alavida, noting that such experts "add little to the debate" that would assist the Registrar where the objective is to assess the meaning of words perceived on first impression by the reasonable everyday user of services.
Christopher J. Thompson, Ottawa
The assistance of Erin Creber, Ottawa articling student, is gratefully acknowledged.
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