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| John McKeown |
Facts
Mécanique de performance Panthera Motorsports Inc.(Panthera) applied for the trademark shown here for use with motorcycle and off-road vehicle engines, their parts and accessories, excluding sport utility vehicles, light truck and automobile engines, and their parts and accessories and related goods.
Jaguar Land Rover Limited opposed the application primarily on the basis that the Panthera Mark was confusing with Jaguar’s registered trademarks, in particular with the “Leaper” trademarks including the design marks shown here.
Both parties filed evidence and the opposition went on to a hearing. The hearing officer found that the Jaguar LEAPER marks were widely known in Canada in association with Jaguar automobiles. While Panthera filed evidence concerning the state of the trademark register, the evidence was incomplete due to the lack of information concerning whether the marks in issue were in use. The Hearing Officer rejected Panthera’s application.
Appeal
Panthera filed a new affidavit from the president of Panthera, which concerned the research he carried out to verify the commercial use of images of felines in the vehicle industry class 12 of the Nice
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Jaguar appeared but filed no evidence and did not attend the hearing of the appeal.
To be considered relevant, new evidence must be sufficiently significant and have probative value. The test is not whether the new evidence would have changed the Hearing Officer’s mind but whether it could have had an impact on his decision. If new evidence satisfies this test, the appeal proceeds on a de novo basis and requires the application of the correctness standard. However, only the issues that are covered by the new evidence justify a new analysis by the court, which must draw its own conclusions concerning those issues.
The judge said in connection with the assessment of distinctive character (paragraph 6(5)(a) of the Trademarks Act), the evidence showed the use of images of felines was widespread in the sector of products in class 12 of the Nice classification (vehicles) in Canada. The affidavit accompanied by exhibits, confirms the use of images of felines associated with the well-established brands Dodge and ARCTIC CAT, and their direct link with products in class 12. In addition, numerous trademark registrations contained images of felines in direct association with products in class 12.
It was well established that the presence of a common element in several trademarks has a significant influence on the question of confusion.
Panthera and Jaguar do not operate in the same sector of activity and the markets where the brands will be present are distinct. The simultaneous use of the trademarks in question in the same region could not reasonably lead the relevant consumer to conclude that the goods associated with these trademarks were provided or managed by the same entity.
In light of the new evidence, the judge concluded that Panthera met its burden and has shown the registration of its mark is not, on the balance of probabilities, likely to create confusion with Jaguar brands.
Comment
As the decision shows, the state of the register evidence is important, but it is not always easy to satisfy the requirements relating to its successful use.
John McKeown, counsel at Goldman Sloan Nash & Haber LLP, is certified by the Law Society of Ontario as a specialist in intellectual property law (trademarks/copyright). He is the author of Canadian Intellectual Property Law and Strategy: Trademarks, Copyright and Industrial Designs. He can be reached at mckeown@gsnh.com.
The opinions expressed are those of the author and do not reflect the views of the author’s firm, its clients, Law360 Canada, LexisNexis Canada or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
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