Tsimberis J. of the Federal Court heard an application by Auberge & Spa Le Nordik Inc. and Nordik Immobiliers Winnipeg Inc. (“Nordik” or the “Applicants”) to have certain services expunged from trademark registrations held by Therme Development (CY) Ltd. (“TDL”).
Background
TDL is a resort developer currently in the process of revitalizing Ontario Place, a waterfront tourist attraction in Toronto, Ontario, and marketing it as a well-being destination. TDL’s registrations include the word mark “THERME” and logos incorporating that word (“THERME Registrations”).
Nordik owns several trademark registrations that all contain the word “THERMËA”, either alone or in combination with other elements (“THERMËA Registrations”). Nordik sought to strike out some of the registered services (“Impugned Services”) from TDL’s THERME Registrations, including services related generally to hotel management, restaurant services, and the design, development and operation of health spa resorts and health and wellness centres.
Nordik alleged that TDL’s THERME Registrations are invalid in part, pursuant to subsection 18(1) of the Trademarks Act, R.S.C., 1985, c. T-13 (the “Trademarks Act”), on the basis that they are:
“(a) clearly descriptive or deceptively misdescriptive in the French language of the character of the Impugned Services, (b) they are the name in any language of some of the Impugned Services, (c) they are confusing with the THERMËA Trademarks subject of Nordik’s THERMËA Registrations and previously used in Canada by Nordik, and (d) they are not distinctive.”
Issues
There were two main issues in this application. The Court first had to address what the applicable legal and evidentiary burdens were, and second, the Court had to decide whether any of the THERME Registrations were invalid when used with the Impugned Services. Prior to addressing these issues, the Court addressed the admissibility of expert evidence adduced by TDL.
The Evidence
Nordik filed an affidavit from its Chief Operating Officer, Mr. Alexandre Cantin, who included historical operating data of Nordik locations throughout Canada, attendance data from those locations, his firsthand experience with TDL’s advertising, and French-language pronunciation evidence.
TDL filed three affidavits:
- The affidavit of a trademark searcher appending trademark registrations for THERM- prefixed marks.
- The affidavit of a private investigator hired to access websites and assess the availability of THERM-prefixed products and services in Canada.
- The affidavit of Dr. Shana Poplack, a professor and Canada Research Chair in Linguistics at the University of Ottawa. She provided expert evidence “as a sociolinguist on the degree of resemblance between the trademarks THERME and THERMËA, as concerns appearance, sound, and ideas suggested.”
Analysis
Admissibility of Expert Evidence – Dr. Poplack
Expert evidence is only admissible if it is found to be relevant, if it assists the trier of fact, if it does not infringe any exclusionary rule, and if it is from a properly qualified expert. The Court found Dr. Poplack’s evidence to be inadmissible for several reasons.
The principal argument advanced by Nordik was that Dr. Poplack opined on one of the ultimate issues, namely confusion, which is a conclusion reserved for the Court to decide based on the evidence presented and not by the expert. Nordik also argued that experts generally play a limited role in trademark cases, “especially when the average consumer is not sophisticated and the services at issue do not fall within a specialized market”.
The Court agreed with Nordik and found that, as in previous cases, experts should not be permitted to testify on matters that do not fall outside the Court’s scope of knowledge. The average consumer encountering the marks at issue in this dispute is not any more sophisticated than a judge. As a result, Dr. Poplack’s opinions on confusion were unnecessary.
The Court also found that her affidavit failed to comply with the requirement in Rule 52.2(1)(b) of the Federal Courts Rules, SOR/98-106, that a party must set out the “expert’s qualifications and the areas in respect of which it is proposed that he or she be qualified as an expert”. In the case of Dr. Poplack, no explanation of “sociolinguist” was ever provided, leaving the Court without the ability to decide whether her evidence was indeed expert in nature.
Applicable Onuses and Burdens of Proof
Section 19 of the Trademarks Act offers a “weak” presumption of validity of a registered mark. The party alleging invalidity bears the legal onus to provide evidentiary proof of its assertion on a balance of probabilities.
Clearly Descriptive Analysis
Section 12 of the Trademarks Act prohibits registration of clearly descriptive or deceptively misdescriptive words, and of the name in any language of the goods or services. The assessment is to be made from the view of the immediate and first impression of a casual consumer. A misspelling or variation of a word used in a mark is not contrary to this section. In this case, “THERME” is in no way the name of any Impugned Service, so the Court held that the prohibition in Section 12 was not offended.
Confusion Analysis Under Section 6 of the Trademarks Act
The Court elected to conduct its confusion analysis based on Nordik’s strongest case for confusion, which was its THERMËA mark when compared to TDL’s THERME Registrations.
The Court began by noting the test for the likelihood of confusion is whether a casual consumer, somewhat in a hurry, would be confused when first encountering TDL’s THERME Trademarks, while having an imperfect recollection of Nordik’s THERMËA mark. The Court reiterated the Supreme Court’s guidance that most of the time, the factor most likely to have the greatest effect is the degree of resemblance between the trademarks at issue, corresponding to section 6(5)(e) of the Trademarks Act.
TDL submitted that the “ËA” portion of Nordik’s mark is the visually striking portion, which is absent in TDL’s mark. TDL also argued the sound of the marks were totally distinct thanks to the use of the accent in THERMËA. The Court disagreed with both arguments on the basis that TDL was, in effect, asking the Court to dissect the THERMËA mark into its constituent parts in order to find it distinguishable from TDL’s marks. The Court also called TDL’s submission that the addition of an accent over one of the letters is sufficient to make the marks distinguishable “absurd.” The Court concluded the marks share a high degree of visual resemblance.
The Court only favoured TDL in the case of its composite marks at issue, when the comparison between THERME WOMAN as well as THERME WOMAN’S HEAD was made as against THERMËA. While there is “some” resemblance between the ideas conveyed due to the same “THERM-“ prefix, the Court found the images associated with the former two marks convey “a more elegant and serene experience”, in contrast to the THERMËA mark, which conveyed a more “rugged, wild, and Scandinavian ambiance.”
Conclusion
The Court concluded that Nordik met its burden to demonstrate confusion between TDL’s marks when used with the Impugned Services and Nordik’s THERMËA Registrations. The Court ordered that TDL’s registrations be amended to delete the offending services. On the other hand, the Court dismissed Nordik’s application in respect of TDL’s composite marks as there was no likelihood of confusion.
Either party has thirty days from the date of the judgment to appeal to the Court of appeal as of right.