Question of distinctiveness appreciated by Federal Court

In Scott Paper Limited v Georgia-Pacific Consumer Products LP (2010 FC 478, April 30 2010), Scott Paper Limited has successfully appealed a decision rendered by the Trademarks Opposition Board in which the latter had refused its application to register a daisy flower pattern design in association with bathroom tissue due to lack of distinctiveness over Georgia-Pacific Consumer Products LP’s own bathroom tissue design mark.
In its decision, the board rejected Georgia-Pacific’s opposition grounds based on confusion (Section 12(1)(d) of the Trademarks Act), finding that small differences between the marks at issue were sufficient to make confusion unlikely. Georgia-Pacific’s ground based on entitlement (Section 16(3) of the act) was also rejected. The board found that Scott Paper’s mark was not confusing with Georgia-Pacific’s mark since, at the time of purchase of the product at issue, the mark was not visible to the consumer and, therefore, there could not have been prior use in accordance with Section 4 of the act (definition of 'use in association with goods').
However, the board accepted that Georgia-Pacific's mark may have become known to some extent due to considerable sales, whereas Scott Paper had not provided any evidence of its reputation, or that use of certain designs in association with bathroom tissue was common to the trade. Thus, Scott Paper’s application was held to be non-distinctive (Section 38(2)(d) of the act).
Before the Federal Court, Scott Paper filed additional evidence in order to demonstrate common use and coexistence on the marketplace of various similar designs applied to bathroom tissue.

Upon review of Scott Paper’s evidence, and based on the standard of review of correctness, the court noted that Georgia-Pacific had an initial burden of demonstrating that its mark was known to a certain extent and had a significant reputation. As mentioned by the court, the reputation relating to a trademark requires that such mark is known as an indicator of source. The evidence filed by Scott Paper showed that Georgia-Pacific’s wallpaper design mark was apparent only once the bathroom paper packaging was opened.
In reviewing such evidence, the court held that the board had erred in concluding that Georgia-Pacific had met its initial burden of proof regarding the distinctiveness issue. The court noted that, even though Georgia-Pacific had proven substantial sales of its products, it was insufficient to conclude that consumers recognised Georgia-Pacific’s bathroom tissue wallpaper design as an indicator of source.
In view of the foregoing, the court upheld Scott Paper’s appeal and directed the registrar of trademark to allow the application.

Catherine Daigle, ROBIC LLP, Montreal

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