2011 QCCA 573, 2011 QCCA 573

Massif inc. c. Station touristique Massif du Sud (1993) inc. 2011 QCCA 573 COURT OF APPEAL CANADA PROVINCE OF QUEBEC QUEBEC CITY REGISTRY No.: 200-09-006902-099 (300-17-000018-067) DATE: March 28, 2011 CORAM: THE HONOURABLE FRANÇOIS DOYON, J.A. JULIE DUTIL, J.A. GUY GAGNON, J.A. LE MASSIF INC. APPELLANT – Plaintiff v. STATION TOURISTIQUE MASSIF DU SUD

(1993) INC. RESPONDENT – Defendant JUDGMENT [ 1 ] The appellant appeals from a judgment rendered on November 16, 2009, by the Superior Court, district of Montmagny (the Honourable Marc Lesage), which dismissed its application for a permanent injunction enjoining the respondent to, inter alia, cease all use of the “Massif du Sud” trade-mark or trade-name; [ 2 ] For the reasons of Dutil, J.A., with which Doyon and Gagnon, JJ.A. agree, the Court: [ 3 ] DISMISSES the appeal with costs. FRANÇOIS DOYON, J.A. JULIE DUTIL, J.A. GUY GAGNON, J.A. Mtre Bob H. Sotiriadis Robic, s.e.n.c.r.l.

For the appellant Mtre Simon Lemay Lavery, de Billy For the respondent Hearing date: February 10, 2011 REASONS OF DUTIL J.A. [ 4 ] The appeal concerns the right of the respondent, Station touristique Massif du Sud (1993) inc., to use the name “Massif du Sud” for the operation of the ski resort it owns in the region of the same name. The appellant, Le Massif inc., appeals from the Superior Court judgment, which dismissed its application for a permanent injunction enjoining the respondent to immediately cease using this name.

the facts [ 5 ] Both parties operate ski resorts. The one belonging to the appellant is located in Charlevoix county, specifically in Petite- Rivière-Saint-François, while that belonging to the respondent is situated in the Massif-du-Sud regional park. [ 6 ] For the purposes of the appeal, a brief review of the history of both ski resorts will be helpful. The parties acknowledge that the trial judge provided a good

summary of the facts disclosed by the evidence. Le Massif [ 7 ] The first ski slopes in Petite-Rivière-Saint-François opened in the 1970s. In 1978, Mr. Marc Deschamps, one of the founders, started up a project by the name of “Boule de neige”. At the time, there were already four ski slopes opened by other persons between 1974 and 1976, but skiers had to use a snowmobile to get to the top of the hill. The first year, Mr. Deschamps served only about one hundred customers because he could only accommodate four per day.

Operations were subsequently suspended for a few years because of political problems concerning the return of expropriated land to the former owners. [ 8 ] In 1980, “La Société de développement du Massif de Petite-Rivière-St-François inc.” was established to operate the ski resort. Mr. Deschamps became the first general manager of the resort. Activities did not resume until 1982, at which time school buses were then used to bring skiers to the top of the hill.

The trial judge noted that, in the newspapers, it was referred to at the time as the Petite-Rivière-Saint-François ski resort: [ translation ] [15] The resort was publicized. One can read in the Le Soleil newspaper of Thursday, February 12, 1981, under the headline [ translation ] “The Petite-Rivière enigma”: [ translation ] The future Petite-Rivière-Saint-François ski resort, where $4 million invested in the most spectacular ski slopes in eastern North America lies dormant, is an enigma for those who have been following this story from a distance...

Expressing interest in this exceptional hill, the Minister of Transportation … . … While people speak of white gold in Colorado, France and elsewhere where ski resorts have been developed, creating a tourism windfall, here it's always the same hesitation waltz… [16] In an

article in the Le Soleil newspaper of February 17, 1982, journalist Claude Larochelle, who is well known in the Quebec City region, wrote that [ translation ] “in 1980, the Minister of Recreation, Hunting and Fishing, Lucien Lessard, put the brakes on Petite-Rivière-Saint-François” in light of statistics showing a decline in the number of visits to Quebec ski hills. The

article called skiing in the enclosed runs of Petite-Rivière-Saint-François wilderness skiing. [ 9 ] Between 1982 and 1992, a dozen slopes were opened for skiing. The resort benefited from job creation programs. It welcomed about 8,000 skiers per year, and mechanical lifts were installed in 1992. It was only then that reservations were no longer necessary to ski there. [ 10 ] In 1988, a trade-mark registration application was filed with the Canadian Intellectual Property Office. On September 15, 1989, the appellant’s trade-mark was registered. It was a stylized mark bearing the name “Le Massif”.

Above the name were three triangles, the tops of which came to a point. The registration, under number LMC 360,352, was for the “Le Massif & Dessin” trade-mark. In the mid-1990s, the logo was modified and the triangles became three curves: [ 11 ] Mr. Deschamps explains that he heard of “Massif du Sud” for the first time in the late 1980s or early 1990s. He states that he noted at the time some confusion among both skiers and suppliers and even at ski trade shows. He says that he contacted the general manager of “Massif du Sud” at the time, Mr.

Boudreau, who did not follow up on the call. “Massif du Sud” was having financial difficulties and Mr. Deschamps hoped the problem would be solved by the closing down of the ski resort. [ 12 ] Mr. Deschamps explains that, beginning in 1984, advertising for “Le Massif” was done by the Association touristique de Charlevoix. To designate the resort, it was always specified as being located in Petite-Rivière-Saint-François. [ 13 ] In 2002, the appellant bought the ski resort.

Then, advertising was done primarily with the name “Le Massif ” , although the “Petite-Rivière-Saint-François” indication was still used regularly. Le Massif du Sud [ 14 ] The ski resort project began in the 1960s thanks to the Comité de développement économique de la Côte-du-Sud. In 1968, the

resort was named “Massif du Sud”. [ 15 ] When the Union nationale party lost power in 1970, however, the project was put on hold and resumed only in 1979, at the instigation of a group of citizens from Saint-Philémon. As the trial judge noted in paragraph [29] of his judgment, an

article in the Le Soleil newspaper in 1983 related the history of the ski resort: [ translation ] A story that began in the 1960s. … Since the 1960s, many measures have been taken to stop the demographic hemorrhaging and establish a development strategy based on better use of resources. Twelve (12) municipal mayors in Bellechasse and Dorchester counties met in 1970 to launch the idea of a park in the highest region of the Appalachian mountain chain.

They brought on board members of the Comité de développement de la Côte Sud (CDCS) and the Office de développement de la région de l’Etchemin (ODRE) under the auspices of the Office de planification et de développement du Québec (OPDQ). To bolster their request to the government, 25 students produced documents, maps, and a mock-up. With a provincial election in the offing, the Massif du Sud project was seized on by politicians.

Unfortunately, we know today the results of the mothballing of the project and the cooling of expectations. [ 16 ] The ski resort’s first lift was installed for the 1988-1989 season. [ 17 ] The name “Massif du Sud ” and the logo used were never registered. The mountains on which the ski resort is built officially bear the geographic name “Massif du Sud”, as decided by the Commission de toponymie du Québec.

The ski resort itself is known by the name “Station touristique du Massif-du-Sud”, which was published in the Official Gazette of July 18, 1987, after a search established that the name had been used since 1985. the trial judgment [ 18 ] The trial judge first explained that registration of a trade-mark alone does not justify issuing a permanent injunction. It creates only a rebuttable presumption.

At the permanent injunction stage, there must be proof of the existence of a truly distinctive mark, a reputation connected with this mark, and a demonstration that use of a similar mark by a competing business can lead to confusion among the public. [ 19 ] The judge was of the opinion that there was little public confusion. Indeed, in 2007, only fifty-seven customers could have been victims of an error caused by confusion. In 2008, this number decreased to seven. According to the judge, this number is tiny compared with the appellant's clientele.

These errors were due to the fact Costco and Air Miles, in running a promotion, gave their clients documents on which only the name “Le Massif” appeared, when the promotion was only for “Massif du Sud”. The judge concluded that if the respondent had persisted in using only the appellant's trade-name, the injunction applied for would have been granted. However, such was not the case. [ 20 ] Moreover, the judge believed that the errors made by suppliers and journalists in shipping ordered goods, billing, or writing articles had nothing to do with the confusion contemplated in

section 6 of the Trade-marks Act [1] ( Act ), because it concerns the public. [ 21 ] In addition, the judge considered that the “Le Massif & Dessin” trade-mark is not very distinctive. In this case, only slight differences distinguish it. The “Massif du Sud” name has a distinctiveness that differentiates it from the appellants' trade-name. In fact, many tourist resorts in Canada use the term “massif” in their names.

The appellant cannot monopolize it and prevent other users, including the respondent, from distinguishing themselves by adding to it one or more distinctive terms. [ 22 ] As for notoriety, the judge was of the opinion that it was developing, whereas the Act seeks to protect recognized trade-marks. It is only after the current operators purchased the ski resort in 2002 that greater efforts were made to market the product and that exclusivity was demanded of competing businesses. In addition,

section 20 of the Act cautions against the use of a name that refers to a geographic name. Furthermore, the name “Massif du Sud” was used before the “Le Massif & Dessin” trade-mark was registered, although the respondent’s ski resort was created a few years after the appellant’s. The appellant therefore cannot prevent the operation of the regional park, whether it is for walking paths, mountain bikes, skiing, hebertism, or other physical, cultural or sporting activities.

These activities support economic development that benefits the entire region south of the Saint Lawrence River. [ 23 ] Lastly, the judge concluded that average citizens who pay the slightest attention to the destination where they want to go could not be confused. [ 24 ] The judge did not grant the respondent's request that the appellant be ordered to pay the extrajudicial fees and costs. analysis [ 25 ] The appellant argues that the trial judge placed a burden on it that it did not have by stating the following in paragraph [68]: [ translation ] [68] The evidence proffered shows that this number of errors is decreasing and that it was tiny in 2008 compared with the plaintiff's clientele.

One cannot then speak of confusion in the minds of almost all skiers in the region who know where to go to visit the ski resort where they want to ski. [ 26 ] According to the appellant, neither the Act nor the case law requires a party to demonstrate that there is confusion in the minds of almost the entire population of a given region. [ 27 ] Furthermore, the appellant maintains that the applicable test is not that of an average citizen who pays attention to where he

wants to go, as the judge stated in paragraph [94] of his judgment: [translation] [94] The Court therefore concludes that the name Massif du Sud is well established in Quebec and does not lead to confusion foraverage citizens who pay the slightest attention to the destination where they want to go. Le Massif de la Petite-Rivière-Saint-François,or le Massif de Charlevoix, as the geographer Henri Dorion proposes, is located on the north shore of the Saint Lawrence River.

LeMassif du Sud and the Le Massif du Sud tourist resort, as specified by the distinctive terms used, are on the south shore of the SaintLawrence River. [28] To resolve the issue before us, I must first determine whether the respondent’s use of the name “Le Massif du Sud” for theoperation of its ski resort creates confusion with the appellant’s registered trade-mark “Le Massif & Dessin”. This question must beanalyzed in light of

section 6 of the Act: 6.

(1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the firstmentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner andcircumstances described in this section.

(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely tolead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed bythe same person, whether or not the wares or services are of the same general class.

(3) The use of a trade-mark causes confusion with a trade-name if the use of both the trade-mark and trade-name in the same area wouldbe likely to lead to the inference that the wares or services associated with the trade-mark and those associated with the business carriedon under the trade-name are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services areof the same general class.

(4) The use of a trade-name causes confusion with a trade-mark if the use of both the trade-name and trade-mark in the same area wouldbe likely to lead to the inference that the wares or services associated with the business carried on under the trade-name and thoseassociated with the trade-mark are manufactured, sold, leased, hired or performed by the same person, whether or not the wares orservices are of the same general class.

(5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard toall the surrounding circumstances including (

a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; (

b) the length of time the trade-marks or trade-names have been in use; (

c) the nature of the wares, services or business; (

d) the nature of the trade; and (

e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them. [29] The appellant argues first that the judge erred in his

interpretation of the applicable test for assessing the probability orlikelihood of confusion. This test is the first impression in the mind of a casual consumer, somewhat in a hurry, who sees the name“Massif du Sud”, when he or she has only a vague recollection of the “Le Massif & Dessin” trade-mark and does not pause to give thematter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks. This is theimperfect recollection test. [30] In Veuve Clicquot Ponsardin v.

Boutiques Cliquot ltée,[2] the Supreme Court states the confusion test as follows: The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the name Cliquot onthe respondents’ storefront or invoice, at a time when he or she has no more than an imperfect recollection of the VEUVE CLICQUOTtrade-marks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities anddifferences between the marks. As stated by Pigeon J. in Benson & Hedges (Canada) Ltd. v. St.

Regis Tobacco Corp., (SCC), [1969] S.C.R. 192, at p. 202: It is no doubt true that if one examines both marks carefully, he will readily distinguish them.

However, this is not the basis on whichone should decide whether there is any likelihood of confusion. . . . the marks will not normally be seen side by side and [the Court must] guard against the danger that a person seeing the new markmay think that it is the same as one he has seen before, or even that it is a new or associated mark of the proprietor of the former mark. (Citing in part Halsbury’s Laws of England, 3rd ed., vol. 38, para. 989, at p. 590.) [31] As the Federal Court of Appeal points out in Pink Panther Beauty Corp. v.

United Artists Corp.,[3] it is a matter of a“probability” or a “likelihood” of confusion and not a “possibility” of confusion. [32] The trial judge had to assess the probability of confusion among consumers of a particular type, skiers, because they representthe target market for the services offered by the parties. In Canadian Schenley Distilleries Ltd. v. Canada's Manitoba Distillery Ltd.,[4]the Federal Court explains that the consumer concerned is the one likely to buy the wares: 15 To determine whether two trade marks are confusing one with the other it is the persons who are likely to buy the wares who are

to be considered, that is those persons who normally comprise the market, the ultimate consumer. That does not mean a rash, careless or unobservant purchaser on the one hand, nor on the other does it mean a person of higher education, one possessed of expert qualifications. It is the probability of the average person endowed with average intelligence acting with ordinary caution being deceived that is the criterion and to measure that probability of confusion the Registrar of Trade Marks or the Judge must assess the normal attitudes and reactions of such persons. [ 33 ] This view is echoed by author Roger T.

Hughes, who writes as follows on this question: [5] … The average consumer is to be given a certain amount of credit, exercising varying degrees of care in various circumstances. The issue of confusion must be determined by reference to persons who are likely to purchase the wares in question.

Such determination involves a practical determination of fact, not discretion, and it follows that each case stands on its own facts, so that decisions as to confusion between other marks in other circumstances have no bearing except to the extent that they lay down or illustrate guiding principles. [citations omitted.] [ 34 ] In this context, when the judge stated in paragraph [68] that one cannot then speak of confusion in the minds of almost all skiers, what he was saying is that there was no probability or likelihood of confusion for this clientele.

Indeed, his assessment of the evidence led him to conclude that the number of errors was decreasing and even minimal in 2008, which demonstrates that there was no probability of confusion. Although the appellant does not have to demonstrate that there was confusion in the minds of almost the entire population of a given region, it had to convince the judge that there was a probability of confusion among the target clientele, skiers.

The judge, however, concluded that there was no probability of confusion because almost all skiers know where to go to practice their sport. [ 35 ] As for the fact that the judge wrote, in paragraph [94], that there is no confusion [ translation ] “for average citizens who pay the slightest attention to the destination where they want to go”, this is not, in my opinion, an error that is reviewable by our Court. The judge thought that for skiers, the place they practice their sport is part of the product they buy. This is one of the circumstances that was open to him to consider in his analysis.

Determining the probability of confusion is not done in a vacuum, as authors Hughes and Ashton [6] explain: … An assessment as to whether a casual purchaser would confuse one mark for another is not done in a vacuum, one must examine how the trade-marks are used in the course of business. … [ 36 ] We must therefore consider how a trade-mark is used in the normal course of business.

A skier is a consumer who buys a particular product for which the place where the services are offered is very important. [ 37 ] The appellant also argues that the judge should not have called the errors made by suppliers and in certain publications, which apparently led to confusion, professional errors. It contends that this evidence should have at least been considered an additional circumstance in the case. [ 38 ] A reading of the trial judgment shows that the judge analyzed the errors raised by the appellant.

He believed that they had nothing to do with the confusion contemplated in the Act , which concerns the public: [ translation ] [69] For the plaintiff's suppliers and for journalists who may have made errors in shipping ordered goods, billing, or writing articles, the Court is of the opinion that these are professional errors. Such errors have nothing to do with the confusion of the public referred to in the Trade-marks Act.

Moreover, the defendant denies having been involved in the shipping of goods by a supplier to the wrong place. [ 39 ] The respondent denies that some goods could have been delivered to the wrong place. As for the errors made by Costco and Air Miles, it is a case where the term “massif” was used by a third party, which led to errors. As soon as the correction was made by printing “Massif du Sud” on the tickets rather than “Massif”, the number of errors decreased from fifty-seven in 2007 to seven in 2008.

The judge determined that this was very few compared with the hundreds of thousands of daily ski passes sold by the appellant. [ 40 ] In my opinion, even allowing, as the appellant maintains, that the judge erred in deciding that this evidence should not be considered an additional circumstance in the case, he did not err in ascribing little probative value to it. The evidence was contradictory on certain points and the errors caused by the use of the term “massif” practically disappeared when the respondent's name “Massif du Sud” was used by Costco and Air Miles.

Confusion [ 41 ] The appellant also maintains that the trial judge erred in concluding that there was no confusion because he failed to analyze all the circumstances of the case, as prescribed in subsection (5) of

section 6 of the Act . In light of these circumstances, there was, according to the appellant, a probability of confusion. (

a) the i nherent distinctiveness [ 42 ] Paragraph (

a) of subsection (5) of

section 6 of the Act states that the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known are part of the circumstances that must be considered in determining whether a trade- mark or trade-name creates confusion. This is one of the primary characteristics, as the appellant argues. [ 43 ] The descriptiveness of a trade-mark is often weighed against its distinctiveness. The more distinctive the trade-mark, the greater the protection granted by the courts. Alexandra Steele makes the following observations on this question: [7] [ translation ]

3.4 Distinctive protectable elements and descriptive protectable elements. In terms of trade-marks, it is well established that original marks enjoy more protection than descriptive or non-distinctive marks. In actions for misleading advertising, this principle is also applicable in that a party that demonstrates that its protectable element is original will be given more protection by the courts.

It is therefore important, in an action for misleading advertising, to allege and prove the protectable element that distinguishes the products, services or business of one person from those of another person, because this element constitutes the right that the law seeks to protect. The protectable element may be inherently distinctive, or its distinctiveness may be acquired over time.

Obviously, if third parties use the element in question, it is unlikely that a court will deem it to be distinctive and to have the reputation, or goodwill, that flows from distinctiveness, because the element is not connected with a single source of goods, services, or business. As for a descriptive element, it may not be protectable, even in an action for misleading advertising . … [ emphasis added. ] [ 44 ] In Pink Panther Beauty Corp. v.

United Artists Corp., the Federal Court of appeal held that where a mark does not have inherent distinctiveness, “it may still acquire distinctiveness through continual use in the marketplace ” : [8] [23] The first item listed under subsection 6(5) is the strength of the mark. This is broken down into two considerations: the inherent distinctiveness of the mark, and the acquired distinctiveness of the mark. Marks are inherently distinctive when nothing about them refers the consumer to a multitude of sources.

Where a mark may refer to many things or, as noted earlier, is only descriptive of the wares or of their geographic origin, less protection will be afforded the mark. Conversely, where the mark is a unique or invented name, such that it could refer to only one thing, it will be extended a greater scope of protection. [ 45 ] The appellant argues that the trial judge erred in concluding that the “Le Massif & Dessin” mark was weakly distinctive and that the “Massif du Sud” name had a distinctiveness that differentiated it. [ 46 ] We must first determine the inherent distinctiveness of the “Le Massif & Dessin” mark.

The term “massif” is a common noun that designates [ translation ] “a block of mountains (as opposed to a chain) generally composed of primary lands”. [9] It can also be used as an adjective. [ 47 ] Moreover, the term “massif” is commonly used in toponymy, as the evidence shows. Expert Henri Dorion explains that it is a generic term that describes a place, much like lake, mountain, city, etc. A generic term is not a name because a name designates a single place, whereas there are many “massifs” in Quebec. It is the specific term, together with the generic term, that makes a place unique.

I therefore cannot conclude that the “Le Massif & Dessin” trade-mark is inherently distinctive. [ 48 ] We must also, however, as part of the analysis, determine whether the “Le Massif & Dessin” mark could have acquired distinctiveness through its continual use in the marketplace. [ 49 ] The appellant maintains that it constantly used the “Le Massif & Dessin” trade-mark since at least 1982 in connection with the services offered. Over the years, the ski resort became increasingly well known in Quebec, the rest of Canada, the United States and Europe.

The respondent has only been using the “Station touristique Massif-du-Sud” name since 1989, and nothing in the record suggests that this name has strong distinctiveness. According to the appellant, the judge erred when he stated, in paragraph [72] of his judgment, that the “Massif du Sud” name contains a distinctive expression (du Sud) that differentiates it from the trade-name. It is simply a geographic coordinate that is clearly descriptive of the location of the mountain, i.e. , the south shore of the Saint-Lawrence River. [ 50 ] I concur with the trial judge on this issue.

He analyzed the evidence adduced by the parties and concluded that the “Le Massif & Dessin” trade-mark is [ translation ] “developing”. For now, it is not sufficiently recognized to enjoy the protection that the appellant seeks.

The judge wrote: [ translation ] [79] The Court is of the opinion that the plaintiff's trade-mark, "Le Massif", has not had recognition for enough years for the plaintiff to demand that the words "Le Massif" not be used by any other business that wishes to incorporate them into its trade-mark or company name or other trade-name. … [82] This does not rule out that one day, the plaintiff's trade-name may become better known than all other “massifs”. This possibility, even if it materializes, cannot prevent the other “massifs” from using the term with the distinctive element of the region where they are located.

This is, in fact, another point and the last one on which the Court is basing its decision to dismiss the plaintiff’s application. [ 51 ] The question here is one of fact, and the judge's assessment can be challenged only if it is shown that he committed a palpable and overriding error, which is not the case. [10] (

b) the length of time the trade-marks have been in use [ 52 ] The appellant alleges that the judge did not analyze the criterion of paragraph (

b) of subsection (5) of

section 6 the Act , i.e ., “ the length of time the trade-marks or trade-names have been in use”. The appellant obtained registration of the mark on September 15, 1989, but had been using it at least since 1982. Under

section 3 of the Act , a trade-mark “ is deemed to have been adopted by a person when that person or his predecessor in title commenced to use it in Canada”. As the respondent did not begin its operations until 1989,

this test favours the appellant. [53] In his judgment, the judge summarized the evidence adduced by the parties with respect to this test. He related the history ofboth ski resorts and stated when the names began to be used. He also discussed the fact that the appellant’s ski resort had been inoperation longer than the respondent’s: [translation] [92] First, the Court notes that the "Massif du Sud" name predated the registration of the “Massif du Sud” trade-mark even though thedefendant’s creation postdated by several years that of the defendant [sic].

It should be pointed out, however, that a ski resort at Massifdu Sud existed before the plaintiff’s trade-mark was registered. The evidence shows that the plaintiff did not at the time press its claim toexclusive use of the word “massif” because it was hoping for the bankruptcy of the organization that wanted to develop Massif du Sud. [54] Although he does not expressly mention paragraph (

b) of subsection (5) of

section 6 in his analysis, we cannot fault the judgefor not having considered the question. [55] It is in light of, inter alia, all the circumstances set out in subsection (5) of

section 6 that the judge must determine whetherthere was a probability of confusion within the meaning of

section 6 of the Act. He did consider the elements set out in paragraph (

b) ofsubsection (5) of

section 6 of the Act. (

c) and (

d) the nature of the services and nature of the trade [56] The appellant believes that the judge erred in ignoring the criteria set out in paragraphs (

c) and (

d) of subsection (5) of section6. The services offered by the parties are identical, as is the nature of the trade. Consequently, there is a probability of confusion betweenthe trade-marks and the trade-names in question. [57] There is no doubt that the parties offer the same services and operate a business of the same nature. However, these criteria arenot determining in the case at bar, given the weak distinctiveness of the “Le Massif & Dessin” mark. This is what Rouleau J. of theFederal Court explained in Prince Edward Island Mutual Insurance Co. v.

Insurance Co. of Prince Edward Island:[11] 33 Furthermore, where a party adopts a descriptive name, it must accept that a certain amount of confusion may arise. In Walt DisneyProductions v. Fantasyland Hotel Inc. (1994), (AB KB), 56 C.P.R. (3d) 129 (Alta. Q.B.); aff'd (1996) (AB CA), 67 C.P.R. (3d) 444 (Alta. C.A.); the Court made the following comments in this regard at p. 183: • Even where services are identical, where the name is descriptive rather than distinctive, a certain amount of confusion may beinevitable without sanction: . . . Office Cleaning Services Ltd. v.

Westminster Window and Sign General Cleaners Ltd., supra. In thelatter authority, Lord Simonds, at p. 41, said: So long as descriptive words are used by two traders as part of their respective trade-names, it is possible that some members of thepublic will be confused whatever the differentiating words may be . . . It comes in the end, I think, to no more than this, that where atrader adopts words in common use for his trade-name, some risk of confusion is inevitable. But that risk must run unless the first user isallowed unfairly to monopolize the words.

The Court will accept comparatively small differences as sufficient to avert confusion. Agreater degree of discrimination may fairly be expected from the public where a trade-name consists wholly or in part of wordsdescriptive of the articles to be sold or the services to be rendered. [58] Even conceding, as the appellant argues, that the judge did not analyze separately the criteria set out in paragraphs (

c) and (d)of subsection (5) of

section 6, I believe he was aware of these similarities, as appears from his

summary of the evidence. He did not erron this question and he considered these facts in his decision. (

e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them [59] According to the appellant, visually, the parties’ trade-marks resemble each other because they both contain a “mountain”element and use the word “massif”. Phonetically, the term “massif” is the most important element. [60] The respective trade-marks used by the parties are as follows:TN Appellant’s trade-mark Respondent’ trade-mark

[61] For authors Hughes and Polson Ashton,[12] this is often the most important criterion. Because of the weak distinctiveness ofthe “Le Massif & Dessin” mark, however, small differences suffice to distinguish them.[13] [62] In the case at bar, the official geographic name of “Massif du Sud” is “Station touristique du Massif-du-Sud”, its commercialdesignation is “Station touristique Massif du Sud (1993) inc.” and its logo is “Massif du Sud & Dessin”.

In the circumstances of thiscase, the differences between the “Massif du Sud” name, whether or not it is accompanied by its logo, and the “Le Massif & Dessin”mark suffice to distinguish them. Additional circumstances [63] The appellant also argues the fact that the judge minimized the examples of confusion, which are an additional circumstancethat he should have considered. [64] In Mattel, Inc. v. 3894207 Canada Inc.,[14] the Supreme Court upheld that actual cases of confusion may be a relevant“surrounding circumstance”.

However, an adverse inference may be drawn from the lack of such evidence: Evidence of actual confusion would be a relevant “surrounding circumstance” but is not necessary (Christian Dior, at para. 19) evenwhere trade-marks are shown to have operated in the same market area for ten years: Mr. Submarine Ltd. v. Amandista InvestmentsLtd. (1987), (FCA), 19 C.P.R. (3d) 3 (F.C.A.).

Nevertheless, as discussed below, an adverse inference may be drawnfrom the lack of such evidence in circumstances where it would readily be available if the allegation of likely confusion was justified. [emphasis added.] [65] As the respondent points out, no proof was made of any actual case of confusion on the part of a potential skier, after more thantwenty years of operation of the parties' ski resorts.

The judge assessed the evidence and concluded that there was no probability ofconfusion, even though some administrative errors may have been made by third parties. [66] In light of all the circumstances and criteria set out in subsection (5) of

section 6 of the Act, I conclude that the judge did notcommit an error and that he correctly assessed the examples of confusion alleged by the appellant. Reputation [67] Since the services offered by the parties are identical, the appellant maintains that the judge erred in incorrectly applying theprinciple established in Pink Panther[15] and Toyota Jidosha Kabushiki Kaisha v. Lexus Foods Inc.,[16] whereby the fame of a markcannot prevent the use of a similar mark by a third party in connection with wares or services having no relation to those associated withthe mark.

In the case at bar, as the services offered are identical, this principle does not apply. [68] The judge analyzed at length the issue of the reputation of the appellant's mark. He pointed out the considerable efforts madeby the appellant to market the ski resort, particularly since 2002, but concluded that the mark did not yet have the reputation that wouldenable the appellant to prevent any other business from using the words “le massif”. [69] In my opinion, the judge did not err in so concluding in light of the evidence he heard.

Furthermore, he cited Pink Panther[17]and Toyota[18] only to show that the courts tend to protect a famous mark but that this protection is not absolute. I do not find any erroron this point either.

Section 20 of the Act

[ 70 ] Lastly, the appellant alleges that the judge misunderstood the meaning of

section 20 of the Act since the respondent used the “Massif du Sud” name as a trade-mark.

Section 20 reads as follows: 20.

(1) The right of the owner of a registered trade-mark to its exclusive use shall be deemed to be infringed by a person not entitled to its use under this Act who sells, distributes or advertises wares or services in association with a confusing trade-mark or trade-name, but no registration of a trade-mark prevents a person from making (

a) any bona fide use of his personal name as a trade-name, or (

b) any bona fide use, other than as a trade-mark, (

i) of the geographical name of his place of business, or (ii) of any accurate description of the character or quality of his wares or services, in such a manner as is not likely to have the effect of depreciating the value of the goodwill attaching to the trade-mark. [ 71 ] In light of my finding that the use of the “Massif du Sud” name, with or without the logo, does not create confusion within the meaning of the Act with the “Le Massif & Dessin” trade-mark, it is not necessary for me to rule on this ground of appeal. [ 72 ] I would therefore dismiss the appeal with costs. JULIE DUTIL, J.A.