In a unanimous decision issued in December 2006, the Federal Court of Appeal (FCA) allowed the appeal of Maison Cousin (1980) Inc., and rejected the trademark application of Cousins Submarines Inc., a U.S. corporation. Cousins Submarines had applied to use the trademark COUSINS, in association with "sandwiches, namely, submarine sandwiches; beverages, namely, carbonated beverages, coffee, milk and ice tea" and "restaurant services".
The FCA decision came as the last word in a dispute that began in October 1998, when Maison Cousin filed a statement of opposition before the Canadian Registrar of Trade-marks, alleging, among other things, a likelihood of confusion between its various MAISON COUSIN marks and the proposed use of the COUSINS trademark.
In coming to its decision, the FCA recognized the acquired distinctiveness of the MAISON COUSIN trademarks, which was developed through use of the trademarks in the Quebec market since 1921 in association with food products. The MAISON COUSIN marks are currently used in association with many wares in the food industry (bakery products and delicatessen meats) and the company has also been selling its wares in prepared food sections of convenience stores and grocery stores.
The Trade-marks Opposition Board had issued a split decision, rejecting the application with respect to "submarine sandwiches", and granting it with respect to "beverages, namely, carbonated beverages, coffee, milk and ice tea" and "restaurant services". The decision of the Registrar was upheld by the Federal Court, despite supplementary evidence presented before the Court that showed the continued and widespread use of the various MAISON COUSIN trademarks.
The FCA held that the trial judge had erred on a number of points. First, he had not explained how he came to the conclusion that the COUSINS wares in question, namely submarine sandwiches and drinks, are so distinctive from wares such as bread, desserts, cold cuts and sandwiches that there could be no possibility of confusion. The FCA noted that they are all food products that are very similar and commonly found in the same areas.
The FCA also noted, however, that even if it could be said that there was a distinction between the wares, the confusion analysis should not end there. The Supreme Court of Canada has recently reaffirmed in Mattel Inc. v. 3894207 Canada Inc. that there may still be a possibility of confusion, even if the goods and services to be compared are not of the same general class.
The FCA was also of the opinion that the trial judge erred in comparing the current operations of Maison Cousin with the current operations of Cousins Submarines. Where the statement of wares and services in a trademark registration does not limit the mode of distribution, a trademark owner is always free to change its distribution networks. The FCA noted that nothing prevented MAISON COUSIN from using its trademark in the food services industry, and, in fact, it already does so at food counters in convenience stores and grocery stores.
Thus the appeal was allowed, and the FCA directed the Registrar to refuse the application for the COUSINS trademark in its entirety. Maison Cousin was represented by Stikeman Elliott's Bruno Barrette, Patrick Girard and Benoît Huart