In a recent appeal from the decision of the Registrar of Trade-Marks, the Federal Court considered substantial new evidence filed by the trade-mark opponent in support of its position that the trade-mark GOURMET had acquired distinctiveness through extensive use of the mark in Canada. In allowing the appeal and refusing registration of the trade-mark WISE GOURMET, the Court confirmed that the relevant date to assess whether there is a likelihood of confusion between two marks pursuant to section 12(1)(d) of the Trade-Marks Act is at the date of disposition of the matter by the Registrar or by the Court.

The Facts

The applicant applied for the trade-mark WISE GOURMET for use in association with various food products and food supplements as well as printed publications, namely cookbooks, newsletters, nutrition guides, recipes and periodicals relating to nutrition and food, among other things.

The application was advertised and opposed by the publisher of GOURMET magazine on numerous grounds, including that the WISE GOURMET mark is confusingly similar to its GOURMET trade-mark.

The Trade-marks Opposition Board rejected the grounds of opposition, finding that both marks were not inherently distinctive because they both indicate that the subject matter of the marks would be of interest to food lovers, and in the absence of evidence of acquired distinctiveness, would be entitled to only a narrow ambit of protection. As there was insufficient evidence of the use or promotion of the WISE GOURMET and GOURMET marks to conclude that either had become known to any extent, it was concluded that confusion between the marks was not likely and the application was allowed. The opponent appealed this decision to the Federal Court.

New Evidence

In the Federal Court, the publisher of GOURMET magazine filed additional evidence by way of two lengthy affidavits to address the evidentiary deficiencies noted by the Registrar. The evidence included information about the monthly publication of GOURMET magazine and its extensive distribution in Canada since 1975, use of the mark in association with food related websites, as well as licensed use of the mark in Canada in association with cookbooks. Annual expenditures on promotion of GOURMET magazine was indicated to be in excess of two million dollars.

The substantial new evidence was considered by the Court and it concluded that the evidence negated many of the findings of the Registrar. The Court concluded that the GOURMET trade-mark had been used and promoted so extensively in Canada that it had acquired a certain reputation among Canadian consumers. As the mark had also been used in Canada for a significant period of time, and as there was overlap between the products, services and nature of trade of the two parties, and a fair degree of resemblance between the marks, the Court concluded that there was a likelihood of confusion.

Relevant Date to Assess Confusion

The owner of the WISE GOURMET application did not challenge the new evidence and did not make any submissions in the appeal, but filed a letter with the Court alleging that GOURMET magazine would not be published after its November 2009 issue. The Court declined to accept the letter as evidence as it was not in the form of a sworn affidavit, but noted that the fact that publication might cease in the future did not affect its decision because the relevant date for assessing confusion is the date of disposition of the matter. Possible future events are not relevant in assessing confusion.