In mid-January 2013, Canada’s Federal Court of Appeal released a brief decision which provided another victory for Esso/Exxon Mobil in its efforts to defend its trade-mark MARCHÉ EXPRESS.  Esso’s application was opposed by the restaurant chain Mövenpick.

Mövenpick first opened Marché restaurants in Toronto in 1992.  In 1994 Mövenpick filed a trade-mark application for Marché in association with the operation of restaurants, and obtained registration in 1996.

In 2001 Esso opened its first Marché Express convenience stores, and applied in December of 2001 to register Marché Express in association with convenience store and fast-food services offered at gasoline stations.

Mövenpick filed a statement of opposition to Esso’s application in late 2004, and so this trade-mark battle has now been running for almost 10 years.

In 2010 the Trade-Marks Opposition Board dismissed the opposition, and this was confirmed by the Federal Court in 2011, and then again by the Federal Court of Appeal in this most recent decision of January 15, 2013.

Esso operates 60 or more convenience and fast-food stores under the Marché Express banner in Quebec and Ottawa.

Mövenpick had limited evidence of ongoing use of its Marché mark, which may have been influential in these proceedings.

Mövenpick first argued that Esso’s Marché Express mark was too descriptive of the convenience stores, but this argument was rejected, and the Federal Court in its 2011 decision reiterated that the Trade-Marks Act only prohibits registration of marks that are clearly descriptive, and that courts have consistently recognized that a trade-mark is registrable even though it is suggestive or even descriptive.

On the issue of confusion, the Court of Appeal’s latest decision reproduces part of the Opposition Board’s initial ruling, which includes some interesting statements on the descriptions of wares and services in trade-mark applications, and how they may be applied in opposition proceedings.  The quoted portion of the Board’s decision included the following:

When considering the wares, services and trades of the parties, it is the statement of wares or services in the parties’ trade-mark application and registration that govern.

The Opponent [Mövenpick] submits that the Applicant’s [Esso's] services include fast food services and points to evidence establishing that convenience stores and gas stations now offer a wider variety of ready-to-go food items, which it argues falls within the scope of restaurant services, necessarily overlapping with its [Mövenpick's] services.

The parties’ respective statements of services must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording. The marks are also to be compared as they are used in business. In this regard, the evidence establishes that the Applicant’[s] convenience stores at gasoline stations, sell a variety of items such as cigarettes, candy bars and salty snacks and offer fast food items such as sandwiches, doughnuts, coffee and soft drinks. As I understand it, the Applicant’s services are not fast food restaurant services, but rather convenience stores at gasoline stations where limited food items are sold. In this regard, based on the evidence of record, I find it unlikely that the parties’ trades would overlap. On the other hand, I note that the Opponent’s statement of services does not include any limitations regarding its trade channels; thus nothing would prevent the Opponent from operating its restaurants, particularly in the form of fast food restaurants at gasoline stations and in such cases, the Applicant’s fast food items could potentially overlap with the Opponent’s restaurant services.” [citations omitted, emphasis added]

The passage above will be cited many times when trade-mark applicants are trying to overcome an examiner’s findings that existing registrations are confusing with a new application, based on the descriptions of wares and services, when in fact the actual wares and services may not overlap.