Date:
20130911
Docket:
T-1493-12
Citation:
2013 FC 946
Toronto, Ontario,
September 11, 2013
PRESENT: The
Honourable Madam Justice Mactavish
BETWEEN:
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THE CARBON TRUST
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Applicant
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and
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PACIFIC CARBON TRUST INC.
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Respondent
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REASONS FOR
JUDGMENT AND JUDGMENT
[1]
The
Carbon Trust appeals from a decision of the Registrar of Trade-marks sitting as
the Trade-marks Opposition Board, refusing its application to register its “‘working
with the Carbon Trust’ and footprint design” as a trade-mark. A copy of the
Carbon Trust’s mark (which will be referred to in these Reasons as “the Carbon
Trust mark”) is reproduced below:
[2]
The
refusal was based on sections 38(2)(c) and 16(3)(c) of the Trade-marks Act,
R.S.C. 1985, c. T-13 [the Act], with the Board finding that the Carbon Trust
mark was confusing with the “Pacific Carbon Trust” trade-name of the Pacific
Carbon Trust Inc..
[3]
The
Carbon Trust claims that the Board erred in refusing the registration of the
Carbon Trust mark, submitting that the Pacific Carbon Trust does not own a
trade-name as defined in the Act, as it is not a “business” nor does it carry
on a “business” as contemplated by section 2 of the Act. It further asserts
that the Board erred in finding that the Pacific Carbon Trust had used its
trade-name prior to the September 22, 2008 application date. Finally, the
Carbon Trust submits that the Board misapplied the test for confusion in
subsections 6(4) and 6(5) of the Act.
[4]
For
the reasons that follow, I have not been persuaded that the Board erred as
alleged. Consequently, the Carbon Trust’s appeal will be dismissed.
Background
[5]
The
Carbon Trust is a company registered in England and Wales that was set up in
2001 as part of the British government’s Climate Change Programme. It provides
certification services to companies whose products or services meet certain
standards relating to carbon footprinting. The Carbon Trust also advises public
and private-sector entities and helps to develop and deploy low carbon
technologies and solutions.
[6]
The
respondent, Pacific Carbon Trust, is a Crown Corporation in British Columbia
that was set up as part of that province’s Climate Action Plan. It was
incorporated on March 14, 2008. The Pacific Carbon Trust’s mandate is to
deliver carbon offsets to help public and private sector clients meet their
carbon reduction goals and support the growth of British Columbia’s low carbon
economy.
[7]
The
Pacific Carbon Trust also provides co-marketing opportunities to private sector
clients who have retired offsets under four categories: carbon neutral
companies, carbon neutral vehicles, carbon neutral events and carbon neutral
flights. Where these clients meet certain criteria, they are permitted to use
the Pacific Carbon Trust’s logo designs, each of which feature the Pacific
Carbon Trust trade name. These logos certify that the client is operating a
carbon neutral company, vehicle, event or flight.
[8]
The
Pacific Carbon Trust is the only entity in Canada using the words “Carbon
Trust” as part of a trade-mark or trade-name.
[9]
The
Carbon Trust applied to register the Carbon Trust mark on September 22, 2008
(application no. 1,411,596), based upon its proposed use in Canada in association with the:
certification of companies,
persons, processes, products and systems with the purpose of monitoring and
improving quality and measuring standards as to energy consumption, energy
efficiency, carbon dioxide emissions, greenhouse gas emissions or other
environmental standards, namely, international, domestic and national environment
limits (whether regulatory or voluntary) with respect to the development and
protection of natural and physical resources.
[10]
The
trade-mark application was advertised for opposition purposes in the
Trade-marks Journal on October 21, 2009. The Pacific Carbon Trust filed a
statement of opposition on December 21, 2009, alleging that the application had
not been filed by a legal entity, but rather by a “trading style”. It further
alleged that the Carbon Trust mark was non-registerable as it was likely to be
mistaken for that of a public authority, namely the Pacific Carbon Trust, a
Crown Corporation.
[11]
The
Pacific Carbon Trust also asserted that the Carbon Trust mark was confusing
with its Pacific Carbon Trust trade-mark, which it had previously used for services
of the same general class, and with its Pacific Carbon Trust trade-name, which
it had also previously used in Canada.
[12]
Finally,
the Pacific Carbon Trust asserted that the Carbon Trust mark was not
distinctive, as it did not distinguish the applicant’s services from those
offered by the respondent.
[13]
In
support of its opposition, the Pacific Carbon Trust filed affidavits from D.
Scott MacDonald (the “first MacDonald affidavit”) and Andrew Dooner. Mr.
MacDonald is the Chief Executive Officer of the Pacific Carbon Trust and Mr.
Dooner is its Managing Director. The Carbon Trust did not cross-examine either
of the Pacific Carbon Trust’s affiants, nor did it file any evidence with the
Board in support of its application for registration.
The Board’s
Decision
[14]
The
Board rejected all of the grounds of opposition, save and except the claim of
non-entitlement under sections 38(2)(c) and 16(3)(c) of the Trade-marks Act based
upon confusion with the Pacific Carbon Trust trade-name.
[15]
The
Pacific Carbon Trust did not pursue its claim that the application had not been
filed by a legal entity, but rather by a “trading style” and this ground of
opposition was thus dismissed by the Board.
[16]
With
respect to the Pacific Carbon Trust’s claim that the Carbon Trust mark was likely
to be mistaken for its official mark, the Board found that the most striking
aspect of the proposed trade-mark was the footprint design, and not the words
“the Carbon Trust”. The Board also found that the presence of additional words
in the proposed mark differentiated it from the Pacific Carbon Trust’s mark.
[17]
The
Board did agree with the Pacific Carbon Trust that the words “working with” in
the Carbon Trust mark might suggest a connection between the two entities.
Nevertheless, the Board found that the words “working with” created both visual
and audible differences between the marks. It therefore rejected this ground of
opposition.
[18]
The
Board also did not accept the Pacific Carbon Trust’s claim that the Carbon
Trust mark was confusing with the Pacific Carbon Trust trade-mark.
[19]
The
Board noted that the Pacific Carbon Trust had to establish that its trade-mark
was used prior to the filing date of the application for the Carbon Trust mark
on September 22, 2008, and had not been abandoned when the application was
advertised on October 21, 2009.
[20]
The
Board reviewed the first MacDonald affidavit, which set out the Pacific Carbon
Trust’s mandate and principal activities, notably, the purchase of carbon
offsets on behalf of public and private sector entities. The Board observed
that much of the evidence introduced by Mr. MacDonald (including photographs
and references to certain projects) was undated. The Board therefore inferred
that the evidence was current to the date of the affidavit (July 9, 2010), and
did not establish the use of the Pacific Carbon Trust trade-mark prior to the
September 22, 2008 application date. Accordingly, the Board dismissed this
ground of opposition.
[21]
The
Board also rejected the Pacific Carbon Trust’s argument that the Carbon Trust
mark was not distinctive, as it did not distinguish the Carbon Trust’s services
from those offered by the Pacific Carbon Trust. The Board noted that for this
ground of opposition to succeed, the Pacific Carbon Trust had to establish that
its trade-name was known to some extent in Canada as of the date at which the
statement of opposition was filed, namely December 21, 2009. The Board
concluded that the Pacific Carbon Trust was known only to “a small and specific
group in BC”, and that its reputation was not “substantial, significant or
sufficient”. This ground of opposition was thus rejected.
[22]
The
Board did, however, accept that the Carbon Trust mark was confusing with the
Pacific Carbon Trust’s trade-name, which the Board found had been used in Canada prior to the September 22, 2008 filing date for the application for the Carbon Trust
mark, and had not been abandoned. In particular, the Board found, based on
information contained in the Dooner affidavit, that the Pacific Carbon Trust
had commenced operations under the trade-name “Pacific Carbon Trust” in July of
2008, and had offered its carbon offset services under the “Pacific Carbon
Trust” trade-name as of that date. The Board was further satisfied that the
Pacific Carbon Trust trade-name had not been abandoned.
[23]
Having
concluded that the Pacific Carbon Trust had met its burden insofar as its
trade-name was concerned, the Board turned to consider whether the Carbon Trust
had established, on a balance of probabilities, that there was no likelihood of
confusion between the proposed Carbon Trust mark and the Pacific Carbon Trust
trade-name.
[24]
The
Board identified the test for confusion as being one “of first impression and
imperfect recollection”. The Board further noted that the use of a trade-mark
may cause confusion with another trade-mark or trade-name if “the use of both
in the same area would be likely to lead to the inference that the wares or
services associated with them are manufactured, sold, leased, hired or
performed by the same person, whether or not the wares or services are of the
same general class”: Board decision at para. 43.
[25]
In
analyzing the question of confusion, the Board considered the five factors
enumerated under section 6(5) of the Act.
[26]
Regarding
the inherent distinctiveness of the trade-mark and trade-name, (section 6(5)(a)
of the Act), the Board found that the Carbon Trust footprint design possessed
“only a very limited degree of inherent distinctiveness” given that it could be
interpreted as referencing either a carbon or environmental footprint.
Similarly, the Board found that the Pacific Carbon Trust trade-name has little
inherent distinctiveness since it evoked its geographical location (“Pacific”)
and its carbon offset activities.
[27]
With
respect to the extent to which the trade-mark and trade-name had become known
within Canada, the Board noted that there was no evidence that the Carbon Trust
had used the Carbon Trust mark in Canada. In contrast, the Board noted that the
Pacific Carbon Trust had been referenced on a number of BC government websites,
and had also been referred to by name in the provincial Speech from the Throne.
Although the Board had previously concluded that the Pacific Carbon Trust was
known only to “a small and specific group in BC” and that its reputation was
not “substantial, significant or sufficient”, it was nevertheless satisfied
that the Pacific Carbon Trust had “established some reputation for the
trade-name Pacific Carbon Trust but that any such reputation would be
restricted to BC”.
[28]
As
concerned the length of time each trade-mark or trade-name had been in use
(section 6(5)(b)), the Board noted that the Carbon Trust mark had never been
used in Canada, whereas the Pacific Carbon Trust trade-name had been used in
Canada since 2008.
[29]
With
respect to the nature of the parties’ services/business and trade (sections
6(5)(c) and (d)), the Board was satisfied that the parties’ services could
overlap, that they were “highly related” and that they shared “a significant
degree of similarity as both parties operate in the carbon emissions field and
offer services certifying companies with respect to carbon emissions”: Board
decision at paras. 56 and 57.
[30]
The
Board rejected the Carbon Trust’s argument that because its services are
expensive, its consumers are sophisticated and would not be confused by the
marks. The Board agreed with the Pacific Carbon Trust that the price of the
wares was irrelevant when assessing confusion. Rather, the test for confusion
is one of first impression, and subsequent steps that may be taken by consumers
in an attempt to remedy any first instance confusion were therefore irrelevant.
[31]
Insofar
as the degree of resemblance between the marks (section 6(5)(e)) was concerned,
the Board relied on its earlier analysis in relation to the Pacific Carbon Trust’s
official mark.
[32]
The
Board concluded that in light of the nature of the parties’ services and the
ideas suggested by their respective trade-mark or trade-name, consumers “may
infer an association” between them, thus resulting in confusion. This ground of
opposition was therefore successful.
Issues
[33]
The
Carbon Trust claims that the Board erred in refusing the registration of the
Carbon Trust mark on the basis that the Pacific Carbon Trust does not own a
trade-name as defined in the Act, as it is not a “business”, nor does it carry
on a “business” as contemplated by section 2 of the Act.
[34]
The
Carbon Trust also asserts that the Board erred in finding that the Pacific
Carbon Trust had used its trade-name prior to the September 22, 2008
application date.
[35]
Finally,
the Carbon Trust says that the Board misapplied the test for confusion in
subsections 6(4) and 6(5) of the Act.
Analysis
1. Does the
Pacific Carbon Trust Carry on a “Business” within the Meaning of the Trade-marks
Act?
[36]
Section
2 of the Trade-marks Act defines a “trade-name” as “the name under which
any business is carried on, whether or not it is the name of a corporation, a
partnership or an individual”. The Carbon Trust submits that the Pacific Carbon
Trust cannot own a trade-name within the meaning of section 2 of the Act
because it does not carry on a “business”. According to the Carbon Trust, the
Board erred by failing to consider this issue.
[37]
Citing
the decision in Heritage Life Assurance Co. v. Heritage Life Insurance Co.,
(1978) 43 C.P.R. (2d) 203 at 210-11 (T.M.O.B.), the Carbon Trust submits that
the Pacific Carbon Trust is not a “business” because its object is not to make
profit. While conceding that the Pacific Carbon Trust’s activities undoubtedly
“occupy time, attention, labour, and/or effort within the meaning of carrying
on business in the Heritage decision”, the Carbon Trust submits that
none of the evidence of use of the Pacific Carbon Trust’s trade-name relates to
any business activities aimed at financial gain. According to the Carbon Trust,
the Pacific Carbon Trust was created by the British Columbia government not to
make a profit, but rather to implement public policy.
[38]
I
begin my analysis by observing that the Carbon Trust did not raise this issue
before the Board, and consequently there is no decision of the Board on this
point. Accordingly, the issue of the standard of review does not arise.
[39]
I
agree with the Pacific Carbon Trust that the Carbon Trust’s definition of the
word “business” as it is used in the Trade-marks Act is overly narrow. I
also agree with the Pacific Carbon Trust that the Heritage Life decision
relied upon by the Carbon Trust does not deal with the question of whether
Crown corporations or not-for-profits carry on a “business” within the meaning
of the Trade-marks Act.
[40]
Indeed,
more recent Board decisions have adopted a broader definition of “business” as
one which “could encompass any purposeful activity which might well … be
charitable or educational in purpose”: Harvard Club of Montreal v. Vêtements
Howick Apparel Ltd./Ltée, 8
C.P.R. (3d) 493 at 496 (T.M.O.B.).
[41]
I
acknowledge that this comment was made in relation to the use of the word
“business” in the definition of “person” in section 2 of the Trade-marks Act
(which defines “person” as including “any lawful trade union and any lawful
association engaged in trade or business or the promotion thereof…”). However, the
principle of consistent expression would suggest that unless there is a clear
indication otherwise, words should have the same meaning throughout a statute: Thomson
v. Canada (Deputy Minister of Agriculture), 1 S.C.R. 385, 89 D.L.R. (4th)
218, at para. 27; R. v. Zeolkowski, [1989] 1 S.C.R. 1378, 61 D.L.R.
(4th) 725 at para. 19. There is no such clear indication in the Trade-marks
Act.
[42]
I
am also satisfied that the Pacific Carbon Trust engages in commercial activity
in the carbon offset industry. As discussed in the earlier of the two
affidavits of Mr. MacDonald filed in connection with this application (the
second MacDonald affidavit), the Pacific Carbon Trust engages in commercial
activity through carbon trading, buying and selling carbon offsets and the
supporting business of greenhouse gas management.
[43]
It
is, moreover, noteworthy that the evidence adduced by the Carbon Trust itself
recognizes that the purchase and trade of carbon offsets is the Pacific Carbon
Trust’s “sole area of commercial activity” and specifically refers to its
“business model” and “clients”: see the affidavit of Darran Messem, the
Managing Director of Carbon Trust Certification Ltd., a wholly owned subsidiary
of the Carbon Trust, at paras. 18 and 19.
2. Use
of the “Pacific Carbon Trust” Trade-name Prior to September 22, 2008
[44]
The
Carbon Trust asserts that the Board also erred in finding that the Pacific
Carbon Trust had used its trade-name prior to September 22, 2008. It is common
ground that the September 22, 2008 application date is the material date for
assessing non-entitlement based upon prior use of a confusingly similar
trade-name.
[45]
In
addressing this issue, it is first necessary to address the question of the
appropriate standard of review.
A. Standard
of Review
[46]
The
parties agree that the standard of review identified in John Labatt Limited
v. Molson Companies Limited, (1990), 36 F.T.R. 70, 30 C.P.R. (3d) 293 at 298
(F.C.T.D.), and Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145,
5 C.P.R. (4th) 180 at 196 (F.C.A.) applies to appeals under section 56 of the Trade-marks
Act from decisions of the Registrar of Trade-marks sitting as the
Trade-marks Opposition Board.
[47]
That
is, where no new evidence is filed on an appeal that would have materially
affected the Board’s findings of fact or the exercise of its discretion, the
test is whether the Board was clearly wrong.
[48]
However,
where additional evidence is filed on the appeal that would have materially
affected the Board’s findings of fact or law, or the exercise of the Board’s
discretion, the standard of review is that of correctness. Although not an
entirely apt description, some cases refer to this as a hearing de novo.
In such cases, the Court is entitled to substitute its opinion for that of the
Board.
[49]
The
Carbon Trust has filed new evidence in this proceeding, as has the Pacific
Carbon Trust. What remains to be determined, however, is the significance of
this evidence.
[50]
In
deciding whether the impact of this new evidence is sufficient to warrant a
review on the standard of correctness, I am guided by the comments in Garbo
Group Inc. v. Harriet Brown & Co., (1999), 176 F.T.R. 80, 3 C.P.R.
(4th) 224 (F.C.T.D.). There, Justice Evans noted that in assessing the impact
that additional evidence will have for the standard of review, the question is
the extent to which the additional evidence has a probative significance that
extends beyond the material that was before the Board. If the new evidence
adds nothing of significance but is merely repetitive of existing evidence,
without enhancing its cogency, the issue will be whether the Board was clearly
wrong.
[51]
None
of the new evidence adduced in the context of this application for judicial
review would, in my view, have affected the Board’s findings with respect to
the issue of the use of the Pacific Carbon Trust’s trade-name prior to
September 22, 2008.
[52]
Most
of Mr. Messem’s affidavit is directed to a description of the Carbon Trust and
a comparison of the services provided by the Carbon Trust with those offered by
the Pacific Carbon Trust. It adds little to the issue of prior use. Similarly,
the affidavit of Jill Roberts adds little to the question of prior use.
[53]
Moreover,
the evidence of use referred to in the new evidence adduced by the Pacific
Carbon Trust is directed to the period after September 22, 2008, and adds
nothing to the issue of pre-September 22, 2008 use of the Pacific Carbon Trust
trade-name.
[54]
Indeed,
nowhere in the section of the Carbon Trust’s memorandum of fact and law dealing
with the question of pre-September 22, 2008 use of the Pacific Carbon Trust
trade-name does the Carbon Trust identify any new evidence that could have
materially affect the Board’s findings of fact on this point.
[55]
Consequently,
I can only intervene in the Board’s decision on this point in the event that I
am persuaded that the Board’s decision was clearly wrong. I
would note, however, that nothing turns on my conclusion with respect to the
standard of review to be used in connection with this issue, as, in my view,
the Board was correct in its assessment of the question of prior use.
B. Use
of the Pacific Carbon Trust Trade-name before September 22, 2008
[56]
The
Board found that the Pacific Carbon Trust had demonstrated that its trade-name
had been used in Canada prior to September 22, 2008 and had not subsequently
been abandoned.
[57]
Based
in part on information contained in the Dooner affidavit, including a July 2008
Request for Information [RFI], the Board found that the Pacific Carbon Trust
had commenced operations under the trade-name “Pacific Carbon Trust” in July of
2008, and had offered its carbon offset services under the name “Pacific Carbon
Trust” as of that date.
[58]
The
Carbon Trust argues that the July 2008 RFI shows that the Pacific Carbon Trust
was not actually acquiring carbon offsets at that time. The Carbon Trust
further contends that there is no indication of how, where or how many RFIs
were distributed. According to the Carbon Trust, the RFI does not demonstrate
“use” of the trade-name in the ordinary course of business.
[59]
Similarly,
the Carbon Trust contends that a July 2008 press release indicating that the
Pacific Carbon Trust offset travel emissions for 800 delegates attending the 18th
annual Pacific Northwest Economic Region summit sponsored by
the Government of British Columbia does not demonstrate “use” of the
trade-name, especially since the press release in question was not issued by
the Pacific Carbon Trust itself. The Carbon Trust submits that the reference to
the Pacific Carbon Trust is merely descriptive and is “buried” in the press
release. The Carbon Trust further notes that the Pacific Carbon Trust has not
filed any invoices or other documents demonstrating use of its trade name for
this event.
[60]
The
Board also relied on a presentation at the conference given by the British
Columbia Minister of the Environment in which reference was made to the Pacific
Carbon Trust trade-name as evidence that the trade-name was in use.
[61]
Based
upon the evidence of Mr. Dooner, supported by the RFI, the press release and
the Minister’s statement, the Board was satisfied that the Pacific Carbon Trust
had demonstrated use of its trade-name by July of 2008.
[62]
The
Carbon Trust argues that, as was the case with the press release, the mention
of the Pacific Carbon Trust trade-name was “buried” within the Minister’s
speech and, once again, the document in question was not a publication released
by the Pacific Carbon Trust itself. The Carbon Trust further notes that the
British Columbia Emission Offsets Regulation relating to acquisition of carbon
offsets did not even come into effect until December of 2008, and that the
Pacific Carbon Trust has yet to register a trade-name under provincial corporate
laws.
[63]
Finally,
citing the decision in Mirabed AG v. Springwall Sleep Products Ltd., 4
C.P.R. (3d) 45 at para. 11, 1985 CarswellNat
1096 at para. 11 (T.M.O.B.), the Carbon Trust contends that even if the Pacific
Carbon Trust did use its trade-name prior to September 22, 2008, the use was
minor and insufficient because the Pacific Carbon Trust failed to show that it
had established a reputation in the relevant industry.
[64]
In
my view, the Board’s finding that the Pacific Carbon Trust had demonstrated that
it had used its “Pacific Carbon Trust” and “Pacific Carbon Trust Inc.”
trade-names prior to September 22, 2008 was not clearly wrong.
[65]
As
Justice Strayer observed in Professional Publishing Associates Ltd. v.
Toronto Parent Magazine Inc., (1986), 8 F.T.R. 207, 9 C.P.R. (3d)
207 at 217 (F.C.T.D.), unlike
“use” of a trade-mark which is specifically defined in section 4 of the Act,
there is no definition of “use” in the Trade-marks Act in relation to
trade-names. He concluded that to be consistent with the purposes of the Act,
“‘use’ would have to be in the normal course of trade and in relation to the
class or classes of persons with whom such trade is to be conducted”: see also J.C.
Penney Co. v. Gaberdine Clothing Co., 2001 FCT 1333, 213 F.T.R. 189, at
paras. 91-92.
[66]
I
agree with the Carbon Trust that the Mirabed decision does indeed
address the importance of ‘sufficient’ use (at para. 9). However, as the
Pacific Carbon Trust pointed out, the opponent’s reputation in the relevant
industry is also an important aspect of the confusion analysis.
[67]
I
also agree with the Carbon Trust that it is incumbent on an opponent to
demonstrate that it had established a reputation in connection with the
trade-name before the Board will consider whether, having regard to that
reputation, the possibility of confusion will arise: Mirabed, above, at
para. 11, citing British Petroleum Co. Ltd. v. Bombardier Ltd. (1971), 4
C.P.R. (2d) 204 at 214, 1971
CarswellNat 511 at 214 (F.C.T.D.).
[68]
That
said, as long as the opponent’s services are available in Canada, and a
trade-mark or trade-name has been used or displayed in the advertising of those
services, the mark or name will be deemed to have been used within the meaning
of the Act: Kelly v. Alexander, [2001] T.M.O.B. No. 129, 14 C.P.R. (4th)
567 at 573.
[69]
The
RFI demonstrates that by July of 2008, the Pacific Carbon Trust was actively
seeking information from interested parties for the supply of qualifying
greenhouse gas offsets to assist it in its future procurement process.
[70]
In
addition, the press release and the Minister’s presentation relating to the
offsetting of travel emissions at the July 2008 conference specifically mention
Pacific Carbon Trust by name. These references demonstrate a certain reputation
in connection with the trading style (Mirabed). In addition, the Pacific
Carbon Trust’s offsetting of the carbon emissions for the 800 delegates
attending the July 2008 summit was clearly a promotional activity.
[71]
Moreover,
the fact that the Pacific Carbon Trust offset the travel emissions for the July
2008 summit is evidence of the fact that its services were actually available,
and were not merely displayed or advertised.
[72]
Even
if the references to the Pacific Carbon Trust were “buried” (to use the Carbon
Trust’s term) within the Minister’s speech and the press release, this does not
take away from the fact that the trade-name was in use by July of 2008, and
these references are evidence of that use.
[73]
The
Carbon Trust also argues that the Board erred in considering documents demonstrating
use of the Pacific Carbon Trust trade-name that post-date the September 22,
2008 application date. These documents included printouts from the Pacific Carbon
Trust’s website, corporate presentations, a Service Plan, Information Bulletins
and sample business cards and letterhead. However, when paragraphs 39 and 40 of
the Board’s reasons are read together, it is apparent that the Board’s
comments with respect to this evidence were directed to the issue of
abandonment and not to use prior to September 22, 2008. Consequently no error
was demonstrated in this regard.
3. The
Potential for Confusion
A. Standard
of Review
[74]
While
the Carbon Trust did not file evidence with the Board in the opposition
proceedings, there was information before the Board with respect to its
certification services which had been detailed in Carbon Trust’s
trade-mark application.
As noted earlier, these services included the “certification of
companies, persons, processes, products and systems with the purpose of
monitoring and improving quality and measuring standards as to energy
consumption, energy efficiency, carbon dioxide emissions, greenhouse gas
emissions or other environmental standards”. These standards included
“international, domestic and national environmental limits (whether regulatory
or voluntary) with respect to the development and protection of natural and
physical resources”: Board decision at para. 1.
[75]
The
Board was also aware of the nature of the services provided by the Pacific
Carbon Trust: Board decision at paras. 26-39.
[76]
That
said, as was noted earlier, Mr. Messem’s affidavit is largely directed to a
description of the Carbon Trust and a comparison of the services provided by
the Carbon Trust and those offered by the Pacific Carbon Trust. Given the additional
detail provided by Mr. Messem, I am prepared to accept that this evidence could
have materially affected the Board’s findings of fact with respect to the
nature of each of the parties’ businesses and services. As a result, I will
consider this issue anew.
[77]
Before
turning to address the issue of confusion, however, I would note that my
finding that there is evidence before the Court that could have materially
affected the Board’s findings of fact in relation to this one component of the
confusion analysis does not open up the entire decision to review on the
correctness standard: Garbo Group Inc., above at para. 23; Canadian
Council of Professional Engineers v. APA - Engineered Wood Assn., (2000),
184 F.T.R. 55, 7 C.P.R. (4th) 239 at para. 38 (F.C.T.D.).
[78]
I
have not been persuaded that the new evidence would have materially affected
the Board’s findings in relation to the other aspects of the confusion
analysis, and I will thus consider these findings on the more deferential
standard of review.
B. The Confusion Analysis
[79]
In
Mattel, Inc. v. 3894207 Canada
Inc., (2000), 184 F.T.R. 55, 7 C.P.R.
(4th) 239 at para. 38 (F.C.T.D.), the Supreme Court of Canada confirmed that
the object of a trade-mark “is to function as a symbol of the source and
quality of wares and services, to distinguish those of the merchant from those
of another, and thereby to prevent ‘confusion’ in the marketplace”: as cited in
paragraph 18 of Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006
SCC 23, [2006] 1 S.C.R. No. 824.
[80]
As
will be explained below, taking all of the surrounding circumstances into
account, including the factors enumerated in subsection 6(5) of the Trade-marks
Act, I have come to the same conclusion on the issue of confusion as did
the Board. That is, that in light of the overlap in the type of
services offered by each of the parties and the ideas suggested by their
respective trade-mark or trade-name, consumers “may infer an association”
between the two entities, thereby resulting in confusion.
[81]
Having
regard to the inherent distinctiveness of the trade-marks or trade-names and
the extent to which they have become known (paragraph 6(5)(a) of the Act), the
Carbon Trust argues that while, upon reflection, it could be that its proposed
mark could be interpreted as meaning a ‘carbon footprint’ or ‘environmental
footprint’, the test for confusion is one of first impression: Masterpiece Inc.
v. Alavida Lifestyles Inc., 2011 SCC 27, [2011] 2 S.C.R. No.387.
[82]
The
Carbon Trust further submits that where two trade-marks or names possess little
inherent distinctiveness (as the Board found to be the case here) small
differences between the marks will be sufficient to distinguish them: Sarah
Coventry Inc. v. Abrahamian et al., [1984] F.C.J. No. 1194, 1 C.P.R. (3d)
238 at 240.
[83]
The
Board found that the Carbon Trust footprint design possessed “only a very
limited degree of inherent distinctiveness” given that it could be interpreted
as referencing either a carbon or environmental footprint. In coming to that
conclusion, the Board clearly understood the test for confusion as being one
“of first impression and imperfect recollection”: see para. 43 of the Board’s
decision.
[84]
The
Board also found that the Pacific Carbon Trust trade-name has little inherent
distinctiveness since it evoked its geographical location (“Pacific”) and its
carbon offset activities. As a consequence, the Board held that the inherent
distinctiveness of each of the marks was low and I see no basis for interfering
with this finding.
[85]
With
respect to the extent to which the trade-mark and trade-name had become known
within Canada, it is common ground that the Carbon Trust mark had never been
used in Canada. The Board accepted that the Pacific Carbon Trust had been
referenced on a number of BC government websites, and had also been referred to
by name in the Speech from the Throne. The Board therefore concluded that the
Pacific Carbon Trust “has established some reputation for the trade-name
Pacific Carbon Trust but that any such reputation would be restricted to BC”.
[86]
The
Carbon Trust argues that in making this finding, the Board improperly relied on
materials which post-date September 22, 2008 or materials “which are not
significant”. I agree that the Board erred in relying on materials post-dating
September 22, 2008 in concluding that the Pacific Carbon Trust had established
a reputation for its trade name as of the application date.
[87]
That
said, the Board specifically stated that it had considered this evidence “in
association with the evidence as a whole”. This would have included the
evidence pre-dating September 22, 2008. A review of the record, in particular
the RFI,
the press release and the Minister’s presentation relating to the offsetting of
travel emissions referred to earlier in these Reasons confirm that the Pacific
Carbon Trust had established some reputation for the Pacific Carbon
Trust trade-name by September 22, 2008, if only in British Columbia.
[88]
The
affidavit
of Jill Roberts provides information regarding other entities in this sector that
have adopted the word “trust”, including the “Canada Carbon Trust” and the
“Energy Saving Trust”. The evidence does not, however, establish that the
Canada Carbon Trust has ever been engaged in any business activity, nor is
there any evidence that the Energy Saving Trust has ever engaged in any
activity in Canada. The evidence also does not suggest that either entity has
established any reputation in Canada.
[89]
Insofar
as the nature of the parties’ services or business and the nature of the trade
were concerned (paragraph 6(5)(c) and (d) of the Act), the Board found that the
parties’ services could overlap, that they were “highly related” and that they
shared “a significant degree of similarity as both parties operate in the
carbon emissions field and offer services certifying companies with respect to
carbon emissions”.
[90]
The
Carbon Trust argues that the parties do not operate within the same
sub-category of the carbon emissions industry. Citing the decisions in Via
Rail Canada Inc. v. Location Via-Route et al. [1992] R.J.Q. 2109, 45 C.P.R.
(3d) 96 at 115 (C.A.) and Immuno AG v. Medicorp Sciences Inc., (1995) 60
C.P.R. (3d) 527 at 532, 1995 CarswellNat 2938 at 532 (T.M.O.B.), the Carbon
Trust argues that distinctions between types of services and specializations
within a same industry are important.
[91]
While
the Carbon Trust certifies that businesses have met greenhouse gas and other
environmental standards, it submits that the Pacific Carbon Trust’s “sole
commercial activity” is the purchase and trade of carbon offsets. According to
the Carbon Trust, these are “discrete, specialist service[s]” offered to
different end users and would be of interest to different types of
professionals.
[92]
I
acknowledge that, unlike the Pacific Carbon Trust, the Carbon Trust is not involved
in the purchase or trade of carbon offsets. However, as will be explained
below, I disagree with the Carbon Trust’s contention that this constitutes the
Pacific Carbon Trust’s “sole area of commercial activity”. Moreover,
having carefully reviewed the evidence with respect to the nature of the
parties’ respective services and businesses and the nature of their trade
(including the affidavits of Mr. Messem and Jill Roberts, as well as the
affidavits of Mr. MacDonald), there is, in my view, enough overlap between the
parties’ activities for me to find that their respective marks would be
confusing.
[93]
For
example, Mr.
Messem deposes that the Carbon Trust provides certification services and
licenses the footprint mark to companies who meet certain standards for product
carbon foot-printing. Similarly, the evidence of Mr. MacDonald in his first
affidavit is that the Pacific Carbon Trust allows clients who have implemented
emission reduction and efficiencies which qualify as offsets to use its logo.
[94]
According
to Mr. Messem, the Carbon Trust advises businesses, governments, and the public
sector on sustainable, low-carbon opportunities. Likewise, Mr. MacDonald
asserts that the Pacific Carbon Trust also provides advisory services, teaching
organizations how to report, reduce and offset carbon emissions and educates its
clients about carbon emissions reductions and offsets.
[95]
Mr.
Messem states that the Carbon Trust’s clients include businesses, governments
and the public sector. According to Mr. MacDonald, the Pacific Carbon Trust’s
clients also include both public and private sector clients.
[96]
As
a consequence, having taken the new evidence into account, I nevertheless agree
with the Board that services offered by the parties were related and
could overlap, as both parties operate in the carbon emissions field and both
offer services certifying companies with respect to carbon emissions. Moreover,
as acknowledged by Mr. Messem, the users of the services offered by the Carbon
Trust and the Pacific Carbon Trust could be the same: see Messem affidavit at
paras. 26 and 27.
[97]
The
Board rejected the Carbon Trust’s argument that because its services are
expensive, its consumers are sophisticated and would not be confused by the
marks. The Board held that the price of the wares was irrelevant when assessing
confusion as the test for confusion is one of first impression. As a result,
the Board held that subsequent steps taken by consumers in an attempt to remedy
any first instance confusion were irrelevant.
[98]
The
Carbon Trust contends that the Board erred in failing to consider the
sophistication of the consumers of its services and in misinterpreting the
Supreme Court’s decision in Masterpiece in finding that subsequent steps
taken by sophisticated consumers are irrelevant. The Carbon Trust says that in
holding that the cost of wares and services is indeed relevant, the Supreme
Court in Masterpiece was, moreover, addressing the issue of expensive
services, not sophisticated consumers.
[99]
Indeed,
the Carbon Trust says that where, as here, the trade-mark and trade-name are
“less similar”, the cost of services becomes a relevant factor. Had the Board
considered this, the Carbon Trust submits that it would have found in the
Carbon Trust’s favour.
[100] Given
that the Messem affidavit provides new evidence with respect to the nature of
the clients of both the Carbon Trust and the Pacific Carbon Trust, I am
prepared to address this issue on a de novo basis.
[101] Although
the Carbon Trust is correct to state that the cost of wares or services can be
relevant, this does not change the fact that the test is still one of “first
impression”. The possibility of subsequent research by an attentive consumer of
expensive wares or services was addressed by the Supreme Court in Masterpiece
(above). There, Justice Rothstein stated that:
[70]
The focus of this question is the attitude of a consumer in the marketplace.
Properly framed, consideration of the nature of the wares, services or business
should take into account that there may be a lesser likelihood of trade-mark
confusion where consumers are in the market for expensive or important wares or
services. The reduced likelihood of confusion is still premised on the first
impression of consumers when they encounter the marks in question. Where they
are shopping for expensive wares or services, a consumer, while still having an
imperfect recollection of a prior trade-mark, is likely to be somewhat more
alert and aware of the trade-mark associated with the wares or services they
are examining and its similarity or difference with that of the prior
trade-mark. A trade-mark, as Binnie J. observed in Mattel [Mattel
Inc. v. 3894207 Canada Inc., 2006 SCC 22, [2006] S.C.J. No. 23] is a
shortcut for consumers. That observation applies whether they are shopping for
more or less expensive wares or services.
[71] It is not relevant that […] consumers are
“unlikely to make choices based on first impressions” or that they “will
generally take considerable time to inform themselves about the source of
expensive goods and services”. Both of these - subsequent research or
consequent purchase - occur after the consumer encounters a mark in the
marketplace.
[72] This distinction is important because even with
this increased attentiveness, it may still be likely that a consumer shopping
for expensive goods and services will be confused by the trade-marks they
encounter. Careful research and deliberation may dispel any trade-mark
confusion that may have arisen. However, that cannot mean that consumers of
expensive goods, through their own caution and wariness, should lose the
benefit of trade-mark protection. It is confusion when they encounter the
trade-marks that is relevant [sic]. Careful research which may later
remedy confusion does not mean that no confusion ever existed or that it will
not continue to exist in the minds of consumers who did not carry out that
research.
[…]
[74] For these reasons, it was an error to discount
the likelihood of confusion by considering what actions the consumer might take
after encountering a mark in the marketplace. The trial judge should have
instead limited his consideration to how a consumer, upon encountering the
Alavida mark in the marketplace, with an imperfect recollection of the
Masterpiece Inc. mark, would have reacted. Because consumers for expensive
retirement residence accommodation may be expected to pay somewhat more
attention when first encountering a trade-mark than consumers of less expensive
wares or services, cost is not irrelevant. However, in circumstances where a
strong resemblance suggests a likelihood of confusion, and the other s. 6(5)
factors do not point strongly against a likelihood of confusion, then the cost
is unlikely to lead to a different conclusion.
[102] From
this, it is apparent that the Board’s blanket statement that “the fact that
wares are expensive is not a relevant factor” is somewhat problematic. As noted
in Masterpiece, a consumer shopping for expensive goods or services is “likely to be
somewhat more alert and aware of the trade-mark associated with the wares or
services they are examining and its similarity or difference with that of the
prior trade-mark”: at para. 70.
[103] That
being said, the test remains one of “first impression and imperfect
recollection”.
[104] I
accept the Carbon Trust’s submission that in assessing confusion, regard must
be had to the persons who are likely to make a purchase: see BBM
Canada v. Research In Motion Ltd., 2012 FC 666, 408 F.T.R. 300 at para. 34.
[105] However,
I agree with the Pacific Carbon Trust that having regard to the other factors
in subsection 6(5) of the Act, the “universe of consumers” in the market for
services of the type provided by the parties, upon encountering the Carbon
Trust mark, with an imperfect recollection of the Pacific Carbon Trust trade
name, would be confused.
[106] Insofar
as the degree of resemblance between the trade-marks or trade-names in
appearance or sound or in the ideas suggested by them (section 6(5)(e) of the
Act) are concerned, the Board accepted that the footprint logo is the most
striking aspect of the Carbon Trust mark. However, it also found that the marks
at issue suggest similar ideas, and more specifically suggest that the Carbon
Trust is “working with” the Pacific Carbon Trust.
[107] The
Carbon Trust submits that its new evidence with respect to the nature of the
parties’ services, their channels of trade and their end users indicates that
they “operate in completely different industries within the broader carbon
emissions industry”. It further contends that the first word of its mark –
which was deemed by the Board to be important – is different from that of the
respondent - namely “working” as opposed to “Pacific”. It also argues that the
Carbon Trust’s distinctive footprint design will not lead to confusion on a
first impression, which is to be assessed in light of “all the
surrounding circumstances”: Mattel, above at para. 51 [emphasis in the
original].
[108] There
is no material new evidence addressing this question, with the result that the
deferential standard of review applies to the Board’s finding on this point.
[109] While
the
Carbon Trust’s footprint logo is clearly distinctive, the Board’s finding that
the words “working with” in the Carbon Trust mark could suggest an association
between the two entities was not clearly wrong. The words “working with” do
suggest a relationship with the “Carbon Trust” which – at least in British Columbia – may appear to be associated with the Pacific Carbon Trust.
C. The Pacific Carbon
Trust’s Challenge to the Board’s Findings in Relation to the Other Grounds of
Opposition
[110] In
light of my findings in relation to the Board’s confusion analysis, it is not
necessary to address the Pacific Carbon Trust’s arguments with respect to the
other grounds of opposition, nor is it necessary to consider whether those
arguments are properly before the Court in the context of this application.
Conclusion
[111] For
these reasons, the Carbon Trust’s appeal is dismissed. The Pacific Carbon Trust
is entitled to its costs, not including the cost of second counsel, at
the mid-point of Column III of the
table to Tariff B, together with its reasonable disbursements.
JUDGMENT
THIS COURT ORDERS AND ADJUDGES
that the appeal
is dismissed, with costs.
“Anne L. Mactavish”
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