Survey shows association between NORDIQUES and defunct hockey team

In Accessoires d'Autos Nordiques Inc v Canadian Tire Corp (2007 FCA 367, November 19 2007), the Federal Court of Appeal (FCA) has dismissed an appeal against a Federal Court decision allowing an appeal by Canadian Tire Corporation under Section 56 of the Trademarks Act.

Canadian Tire filed an application, based on proposed use, to register the trademark NORDIC (and snowflake design) for use in association with tires. Accessoires d'Autos Nordiques Inc opposed the application, alleging a likelihood of confusion with, among other things, its previously registered and used trademark NORDIQUES for automobile parts and accessories.

Accessoires d'Autos was successful before the registrar, who found that:

• Canadian Tire failed to prove, on a balance of probabilities, that there was no likelihood of confusion between the two trademarks when used in association with automobile parts and accessories;
  
  
• both trademarks have a commonality of ideas, as both suggest that the goods are meant to be used during winter;
  
  
• the marks are phonetically identical to a monolingual French-speaking person;
  
  
• there is overlap between some of the goods covered by the NORDIQUES certificate of registration and the goods listed in the NORDIC application;
  
  
• the nature of both parties' business is similar; and
  
  
• the NORDIC trademark is not distinctive within the meaning of Section 2 of the act.

The registrar rejected Canadian Tire's argument that the trademark NORDIC evoked the name of the defunct National Hockey League ice hockey team, Quebec Nordiques, and not Accessoires d'Autos's trademark NORDIQUES because Canadian Tire failed to file evidence supporting such a conclusion.

Canadian Tire appealed the registrar's decision to the Federal Court. It filed additional evidence establishing that in the Quebec area (where Accessoires d'Autos's enterprise is located), the trademark NORDIQUES evokes images of the hockey team and not of Accessoires d'Autos's trademark.

In its review of the likelihood of confusion between the marks, the court mainly agreed with the conclusions of the registrar, but not on the criteria of Subsection 6(5)(e) of the act, as it determined that:

• the trademarks were very different in appearance;
  
  
• they evoked different ideas; and
  
  
• there had been no instances of confusion.

Based on that reasoning, the registrar's decision was set aside.

On appeal, the FCA found that the Federal Court had conducted an appropriate analysis of the issue in reviewing the registrar's finding on a standard of correctness. On the issue of the standard of review, the FCA applied the principles of Molson Breweries v John Labatt Ltd ([2000] 3 FC 145) and held that:

"When no additional evidence is introduced before the Federal Court, the standard of review applicable to the registrar's decisions of fact, law or discretion is reasonableness. When such evidence is introduced, however, the standard of review is different, as noted by Justice Rothstein:

However, where additional evidence is adduced in the trial division that would have materially affected the registrar's findings of fact or the exercise of his or her discretion, the trial division must come to its own conclusion as to the correctness of the registrar's decision (Molson Breweries, Paragraph 51)."

The additional evidence filed by Canadian Tire shed new light on the analysis of the elements of Subsection 6(5)(e) of the act pertaining to the degree of resemblance between the marks at issue, and led the FCA to conclude that the registrar's application of Subsection 6(5)(e) of the act was incorrect. As the Federal Court committed no reviewable error, the appeal was dismissed.

Catherine Bergeron, Léger Robic Richard LLP, Montreal