2022 FC, 2022 FC 1794

Date: 20221223 Docket: T-1184-20 Citation: 2022 FC 1794 Ottawa, Ontario, December 23, 2022 PRESENT: Mr. Justice McHaffie BETWEEN: BLOSSMAN GAS, INC. Applicant and ALLIANCE AUTOPROPANE INC. Respondent JUDGMENT AND REASONS I.

Overview [ 1 ] The outcome of this application turns on three principles of Canadian trademark law: (1) a trademark licensee is not entitled to register the licensor’s trademark in the licensee’s own name; (2) a person is not entitled to register a trademark that is confusing with a trademark previously used in Canada by another; and (3) absent bad faith, an existing trademark registration constitutes a defence to a claim in passing off for the registrant’s use of the registered mark. [ 2 ] Alliance Autopropane Inc [AAP] obtained the right to use the trademark ALLIANCE AUTOGAS as a sublicensee of Blossman Gas, Inc.

While still a sublicensee, AAP applied to register in its own name the ALLIANCE AUTOGAS Design trademark used by Blossman. It also applied to register three other design trademarks incorporating the words ALLIANCE and AUTOPROPANE [the AAP Marks].

Blossman brings this application to strike these four trademark registrations from the Trademark Register, and to stop AAP from using the AAP Marks and the trademark and trade name ALLIANCE AUTOPROPANE. [ 3 ] For the reasons given below, I conclude that AAP was not the person entitled to register the trademarks at issue, as they were confusing with Blossman’s ALLIANCE AUTOGAS trademarks, which Blossman had used in Canada through licensees prior to AAP’s adoption of its trademarks.

Contrary to AAP’s arguments, Blossman had sufficient control over the quality or character of its licensee’s services that their use accrued to Blossman’s benefit, and Blossman did not acquiesce in AAP’s use of the AAP Marks so as to be precluded from seeking relief. The trademarks will therefore be struck from the Register. [ 4 ] I also conclude AAP applied to register the trademark ALLIANCE AUTOGAS and Design (TMA954,034) in bad faith, as that term is used in paragraph 18(1) (

e) of the Trademarks Act , RSC 1985, c T-13 . The effect of this determination is that the registration is invalid ab initio and is not a defence to Blossman’s claim of passing off as they relate to this trademark, a claim which I find to be established. However, the other trademark registrations constitute a defence to Blossman’s passing off claims as they relate to the past use of the AAP Marks. [ 5 ] Damages are awarded to Blossman in the amount of $20,000 for passing off as a result of AAP’s continued use of the ALLIANCE AUTOGAS Design after the expiry of its license to do so.

In addition, while a bad faith registration does not necessarily warrant a punitive damages claim, I conclude that punitive damages of $5,000 are justified in the circumstances. An injunction preventing the future use of the ALLIANCE AUTOGAS Design, the AAP Marks, and the trademark and trade name ALLIANCE AUTOGAS is also warranted. [ 6 ] The application is therefore granted in part, with costs payable to Blossman in the amount of $31,662. II. Issues [ 7 ] Blossman raises the following issues on this application, which I have slightly restated: A .

Are Canadian trademark registrations TMA954,034; TMA916,456; TMA916,457; and/or TMA916,409 invalid? B . Has AAP engaged in passing off? C . If so, what remedies are appropriate? [ 8 ] Within these issues, a number of sub-issues arise, including each party’s challenges to the evidence and AAP’s allegations that Blossman acquiesced in AAP’s conduct, did not use its trademarks in Canada, and did not control the character or quality of its licensee’s services. I will address these issues as they arise in the context of the three primary issues raised by Blossman. III. Analysis

A. The Canadian Trademark Registrations are Invalid

(1) The trademark registrations at issue [ 9 ] Details of the four trademark registrations held by AAP that Blossman seeks to invalidate are as follows: TMA954,034 [the ’034 Mark] Application No: 1,693,995 Filing Date: September 16, 2014 Registration Date: November 2, 2016 [Description of image: A largely horizontal mark is represented. To the left and occupying about one-fifth of the length of the mark is a design element consisting of a flame motif overlapping with a leaf motif.

To the right and occupying the remaining four-fifths of the length of the mark, the words ALLIANCE AUTOGAS are written in block capitalized case letters above the words POWERED BY PROPANE in smaller block uppercase letters.] TMA916,456 [the ’456 Mark] Application No: 1,693,993 Filing Date: September 16, 2014 Registration Date: October 5, 2015 [Description of image: A design resembling a stylized quadrilateral arrowhead or a stylized letter A appears above the word ALLIANCE in block uppercase letters, which is in turn above the word AUTOPROPANE, with the AUTO portion in block uppercase letters and the PROPANE portion in block lower case letters.] TMA916,457 [the ’457 Mark] Application No: 1,693,991 Filing Date: September 16, 2014 Registration Date: October 5, 2015 [Description of image: A largely horizontal mark is represented.

To the left and occupying about one-fifth of the length of the mark is the same stylized A motif in the ’456 Mark, appearing above the word ALLIANCE in small block uppercase letters.

To the right and occupying the remaining four-fifths of the length of the mark, the word AUTOPROPANE, with the AUTO portion in block uppercase letters and the PROPANE portion in block lowercase letters, appears in larger text above the words LE PLUS GRAND RÉSEAU D’AUTOPROPANIERS EN AMÉRIQUE in small block uppercase letters.] TMA916,409 [the ’409 Mark] Application No: 1,693,992 Filing Date: September 16, 2014 Registration Date: October 5, 2015 [Description of image: The mark consists of an eight-pointed star-shaped design with an octagonal negative space in the centre.

The star is made up of overlapping stylized triangular shapes of different shades of grey. The top point of the star design reproduces the stylized A motif appearing in the ’456 Mark.

At the top of the internal octagonal space, the word ALLIANCE in block uppercase letters appears above the word AUTOPROPANE, with the AUTO portion in block uppercase letters and the PROPANE portion in block lowercase letters.] [ 10 ] Following the nomenclature of the parties, I will refer to the ’456 Mark, the ’457 Mark, and the ’409 Mark, which incorporate the words ALLIANCE and AUTOPROPANE, collectively as the " “AAP Marks.” " For ease of reference, I will refer to the design that appears in the ’456 Mark and the ’457 Mark, and at the top of the star design in the ’409 Mark as the " “stylized ‘A’ motif.” " [ 11 ] The four marks are registered for use in association with the same list of services associated with propane-powered vehicles.

The full list of these services is set out in Appendix “A”. While a number of services are listed, they all fall into one of two general categories: (

i) services related to the sale, installation, and maintenance of propane conversion systems, such as [ translation ] " “ Assembly of propane gas conversion systems for vehicles ” " ; and (ii) services related to propane filling stations, such as [ translation ] " “ Operation of propane gas filling stations for vehicle gas tanks. ” "

(2) The parties and their affiants

[ 12 ] Blossman is a Mississippi company, founded in 1951. It offers propane gas delivery and propane appliances such as water heaters, grills, and fireplaces. Blossman describes itself as the largest family-owned propane business in the United States of America. In support of this application, Blossman filed the affidavit of Edward Hoffman. At the time of his affidavit, Mr. Hoffman was an employee of Blossman and president of a Blossman subsidiary, Blossman Services, Inc, which delivered Blossman’s vehicle equipment business. Mr.

Hoffman joined Blossman in June 2014, having previously been with a company named Keystone Automotive Operations, Inc, which was a client of Blossman. [ 13 ] AAP is a Quebec company, founded in 2013. It is co-owned by two other Quebec companies: 9049-1135 Québec Inc, dba Propane du Suroît, which is controlled by Marquis Grégoire Jr; and Solugaz Inc, which is controlled by Rock Boulianne. Mr. Grégoire and Mr. Boulianne are co-presidents of AAP. Mr. Grégoire swore an affidavit on behalf of AAP. [ 14 ] Mr. Hoffman and Mr. Grégoire were each cross-examined on their affidavits.

The following recitation of the facts leading to this application is drawn from the affidavits, the cross-examination transcripts, and the documents produced in response to undertakings on the cross-examinations.

(3) Facts leading to this application (

a) The Alliance AutoGas program [ 15 ] In 2009, Blossman began promoting and selling propane as a vehicle fuel in the United States under the name Alliance AutoGas. Mr. Hoffman states that " “autogas” " is used in the industry as a synonym for propane used to fuel cars, and Mr. Grégoire similarly confirmed that he understood the word autogas in the ALLIANCE AUTOGAS Design to refer to propane.

In addition to distributing and selling propane as a fuel, the Alliance AutoGas program helps customers who have vehicle fleets—such as taxi companies, delivery companies, and governments—convert vehicles in those fleets from gasoline-powered to propane-powered or bi-fuel vehicles. The program includes installation of vehicle conversion systems, as well as refueling infrastructure and fuel supply. [ 16 ] The Alliance AutoGas program is centred in North Carolina, where Mr. Hoffman worked.

Stuart Weidie, the President and CEO of Blossman, has been the President of Alliance AutoGas since its creation in 2009. [ 17 ] Since about June 2009, Blossman has maintained a website at <allianceautogas.com> in connection with the Alliance AutoGas program. The website describes Alliance AutoGas as a " network of independent propane marketers and conversion centers " , founded by Blossman. Screenshots from the website over time show that Blossman has used the trademark ALLIANCE AUTOGAS in association with the program and business since 2009.

The trademark is often represented with the slogan POWERED BY PROPANE in the following graphic form, which I will refer to as the " “ALLIANCE AUTOGAS Design” " : [Description of inserted diagram: The same mark as the ’034 Mark above, but in colour. To the left and occupying about one-fifth of the length of the mark is a design element consisting of a flame motif in four shades of blue overlapping with a leaf motif in two shades of green.

To the right and occupying the remaining four-fifths of the length of the mark, the words ALLIANCE AUTOGAS are written in dark blue block capitalized case letters above the words POWERED BY PROPANE in dark blue smaller block uppercase letters.] (

b) Agreement between Blossman and Caledon Propane Inc [ 18 ] On August 1, 2012, Blossman entered an " “Alliance AutoGas Dealer Agreement” " with Caledon Propane Inc, a propane company based in Ontario [Blossman-Caledon Agreement]. Under the Blossman-Caledon Agreement, Caledon was given the exclusive right as Dealer to use the " “Alliance AutoGas name and marks” " with respect to its Alliance AutoGas customers and business in Ontario, Manitoba, and Quebec.

Section 1(

a) of the Blossman-Caledon Agreement, which relates to trademark rights and termination, reads as follows: 1.(

a) To the extent permitted by applicable law, Dealer shall have the exclusive right to utilize the Alliance AutoGas name and marks with respect to its Alliance AutoGas customers and business within the Dealer’s Exclusive Area so long as this Agreement is in effect. Such right of use shall terminate immediately upon termination or expiration of this Agreement . Dealer shall also have the exclusive right to use any successor or related tradenames and marks developed by Blossman with respect to its Alliance AutoGas business within the Dealer’s Exclusive Area during the term of this Agreement.

Blossman hereby represents and warrants that it is the sole owner of the tradenames and marks described in this Agreement and has the exclusive right to grant to Dealer the right to use them as described in this Agreement, and that such tradenames and marks will not violate or otherwise infringe the trademark or other intellectual property rights of any third party.

Dealer may use the word AutoGas after expiration or termination of this Agreement as a name or mark in association with any business so long as Dealer does not use the word “Alliance” (or any word confusingly similar thereto) together with the word “AutoGas” . [Underline added; italics in original.] [ 19 ] According to Mr. Hoffman, after signing the Blossman-Caledon Agreement, Caledon established propane supply facilities in Canada branded with the ALLIANCE AUTOGAS trademarks, including one on Martin Grove Road in Toronto and others in Cornwall and Moncton. Mr.

Hoffman also states that another company, Canwest Propane of Alberta, was licensed in 2013 and offered propane and conversion systems in association with the ALLIANCE AUTOGAS trademarks in Western Canada. AAP challenges the quality and nature of Mr. Hoffman’s evidence on these issues, and claims Blossman has not proved it has used or controlled the use of the ALLIANCE AUTOGAS trademarks in Canada. These issues are discussed below under the heading " “Use of the ALLIANCE

AUTOGAS trademarks in Canada.” " (

c) Propane du Suroît and AAP [ 20 ] In the summer of 2013, Mr. Grégoire was looking for information about the benefits of joining the Alliance AutoGas network. He called David Finder, then the National Energy Programs Manager at Blossman, after getting his name from the Alliance AutoGas website. Mr. Finder told Mr. Grégoire that Blossman had an agreement with Caledon with respect to Canada, and referred him to Hugh Sutherland Jr at Caledon. [ 21 ] Mr. Grégoire spoke with Mr.

Sutherland and by August 2013, they had reached an agreement for Caledon to assign its rights to Alliance AutoGas in Quebec to Propane du Suroît or a company owned by Propane du Suroît. There is no dispute that the new company owned by Propane du Suroît turned out to be AAP, which was incorporated a week before Mr. Grégoire signed the agreement on August 23, 2013. I will therefore simply refer to the agreement as the " “Caledon-AAP Agreement” " and to AAP as the party to the agreement. [ 22 ] The Caledon-AAP Agreement was a brief letter agreement that attached a copy of the Blossman-Caledon Agreement.

Under the Caledon-AAP Agreement, among other terms, AAP (

i) would become a " “member of Alliance AutoGas/AutoGaz for the territory of Quebec” " ; (ii) agreed to develop the Quebec market; and (iii) agreed to follow the Blossman-Caledon Agreement. The term of the Caledon-AAP Agreement was to be identical to the Blossman-Caledon Agreement. In signing the Caledon-AAP Agreement, Mr. Grégoire initialed each page of the Blossman-Caledon Agreement and signed a copy of it on behalf of Propane du Suroît. [ 23 ] According to Mr. Hoffman, Blossman was not aware of the negotiations between Caledon and Propane du Suroît. However, by email dated September 13, 2013, Mr.

Sutherland told Mr. Finder of Blossman that Caledon had reached an agreement with Propane du Suroît, which would be " “looking after Quebec for Caledon Propane.” " Mr. Finder welcomed Mr. Grégoire and invited him and Mr. Boulianne to a meeting in Mississippi. [ 24 ] Later, in May 2015, Mr. Finder wrote to Messrs.

Sutherland, Grégoire, and Boulianne, noting that " “Alliance Propane is under Caledon at this time. (Per agreement between Caledon and Alliance AutoGas / Blossman Gas).” " This appears to have been the understanding of all parties at the relevant times, namely that AAP was a sublicensee of Blossman pursuant to the Caledon-AAP Agreement. (

d) Development of the AAP Marks [ 25 ] In 2013, AAP engaged a marketing company named Soleil to develop design trademarks and marketing material. Soleil prepared the logos that are represented in the AAP Marks, including the stylized ‘A’ motif in the ’456 and ’457 Marks and the eight-pointed star design in the ’409 Mark. [ 26 ] As part of its work, Soleil delivered to AAP a form of proposal document or brochure entitled " “ IMAGINONS… ” " [ " “LET’S IMAGINE…” " ], which is dated December 16, 2013. It is clear from this document that the AAP Marks were developed using the ALLIANCE AUTOGAS Design as a starting point. While AAP contests this, the document contains consecutive pages that (

i) reproduce the ALLIANCE AUTOGAS Design, together with a version of the ALLIANCE AUTOGAS Design in which the words ALLIANCE AUTOGAS are replaced by the words ALLIANCE AUTOPROPANE; and (ii) show a design progression from the flame and leaf elements of the ALLIANCE AUTOGAS Design to an early version of the stylized ‘A’ motif found in the AAP Marks, which is represented in blue and green. [ 27 ] The Soleil document also includes a list of the company’s [ translation ] " “main strengths.” " The first of these was [ translation ] " “[m]embership in the vast Alliance AutoGas North American network.” " There seems little doubt based on the evidence as a whole, including the marketing materials, the timing of the adoption of the name, and the absence of any other explanation put forward by AAP, that the word ALLIANCE was included in both AAP’s name and in its trademarks because of, and in order to highlight, the connection with Blossman and the Alliance AutoGas network. [ 28 ] The December 2013 Soleil design proposal document also shows an initial version of a trademark similar to the ’457 Mark, incorporating the phrase " “ " " Le plus grand réseau d’autopropaniers en Amérique ” " [ " “America’s largest autopropane retailers network,” " a translation Mr.

Grégoire accepted as fair]. The document does not show the star-shaped design of the ’409 Mark, although it appears in a later design style guide dated October 10, 2014. [ 29 ] AAP applied to register the AAP Marks, as well as the ’034 Mark, on September 16, 2014. Mr. Grégoire agreed on cross- examination that AAP did not advise Blossman that it was applying to register the AAP Marks or the ’034 Mark. Mr. Hoffman’s evidence was that Blossman was not aware of the applications, either when they were made or when they were advertised. (

e) Termination of the Caledon-AAP Agreement and enforcement efforts [ 30 ] On June 14, 2016, Superior Propane acquired Caledon. The parties appear to agree that this resulted in the termination of the Blossman-Caledon Agreement and thus the Caledon-AAP Agreement. AAP, in any event, does not assert that those agreements continue to be in force, that it has any ongoing rights under either the Blossman-Caledon Agreement or the Caledon-AAP Agreement, or that it has any rights by virtue of an agreement with Superior Propane. [ 31 ] In an internal email dated June 23, 2016, Mr.

Finder told another Blossman employee he had " “written Alliance Autopropane to stop associating themselves with Alliance AutoGas as there is no agreement.” " However, there is no copy of a letter or email from Mr. Finder to AAP in June 2016 in the record. On September 8, 2016, Blossman’s US lawyers wrote to AAP demanding it cease use of the " “Alliance AutoGas trademark and trade name” " and cease identifying itself as a member of the Alliance AutoGas network. As AAP points out, this letter did not demand that it cease use of the name " “Alliance Autopropane,” " the AAP Marks, or the word ALLIANCE.

[32] There were apparently settlement discussions that followed this letter that did not end in resolution. On August 31, 2018,Blossman’s Canadian lawyers wrote to AAP. In this letter, Blossman asserted its rights in the ALLIANCE AUTOGAS Design, noted thatAAP had registered the ALLIANCE AUTOGAS and Design mark, and demanded that AAP, among other things: (

i) cease using theALLIANCE AUTOGAS Design or any trademark confusing with it; (ii) assign the ’034 Mark to Blossman; and (iii) refrain from usingthe statement "“THE LARGEST AUTO PROPANE NETWORK IN NORTH AMERICA”" in any promotional material. Again, otherthan the reference to confusing trademarks, no specific reference was made to the AAP Marks or the use of the name AllianceAutopropane. AAP relies on this fact in its acquiescence arguments, discussed below. [33] Again, there were apparently unsuccessful efforts to resolve matters, and this application was commenced on October 5, 2020.

(4) Acquiescence [34] Before turning to the merits of Blossman’s invalidity arguments, I will address AAP’s argument that Blossman cannot obtain therelief it seeks, including both invalidation and injunctive relief, because it has acquiesced in AAP’s use and registration of the AAPMarks.

There is an open question as to whether the equitable defences of laches and acquiescence are available in response to anexpungement application based on the statutory grounds of non-entitlement: Precision Door & Gate Service Ltd v Precision Holdings ofBrevard, Inc, 2012 FC 496 at para 43, citing Ling Chi Medicine Co (HK) Ltd v Persaud, (FCA) at para 2 [Ling Chi(FCA)].

Assuming, without deciding, that a defence of acquiescence is available, in my view, AAP’s argument that Blossman hasacquiesced in this case cannot succeed. [35] Acquiescence is an equitable doctrine that may preclude a trademark owner from obtaining relief where it has consented to a breachof its rights and the breaching party has detrimentally relied on that consent: Boston Pizza International Inc v Boston Market Corp, 2003FC 892 at paras 42–48.

Justice Zinn of this Court recently reviewed the jurisprudence regarding acquiescence in trademark law: NorsteelBuilding Systems Ltd v Toti Holdings Inc, 2021 FC 927 at paras 32–36. As Justice Zinn noted, mere delay is insufficient to establish adefence of acquiescence: Norsteel at para 36.

Rather, the rights holder must do something to encourage the wrongdoer, and thewrongdoer must act to its detriment in reliance on that encouragement: Norsteel at paras 33–35, citing Institut national des appellationsd’origine des vins et eaux-de-vie et al v Andres Wines Ltd et al, , [1987] OJ No 644 (SC) at para 210, aff’d (ON CA), leave to appeal to SCC refused, [1991] 1 SCR x (note); White Consolidated Industries, Inc v Beam of CanadaInc, [1991] FCJ No 1076 (TD); and Remo Imports Ltd v Jaguar Canada Ltd, 2005 FC 870 at para 53; see also Boston Pizza at paras 42–45; Precision Door at para 44. [36] In support of its acquiescence argument, AAP points to the parties’ commercial relationship beginning in 2013; its use of theALLIANCE AUTOPROPANE name, the AAP Marks, and the ’034 Mark since that date or shortly thereafter; and its application toregister the marks in 2014.

It argues that Blossman did not assert its rights until the commencement of these proceedings in 2020, afterAAP had been using the marks to Blossman’s knowledge for many years and had obtained their registration. [37] In my view, AAP has failed to show any encouragement or consent that would constitute acquiescence. With respect to use prior to2016, AAP was a sublicensee of Blossman at this time, and was recognized by both Blossman and AAP as such.

A licensee cannotreasonably point to its use of the licensed trademarks or any confusing trademarks during the period of a license as evidence of thelicensor’s acquiescence. [38] After the Blossman-Caledon Agreement terminated in 2016, Blossman wrote to AAP, asserting its trademark rights. Even leavingaside Mr.

Finder’s apparent communication in June 2016, about which there is little information on the record, Blossman had asserted itsrights by the time its US lawyers wrote to AAP in September 2016, and again when its Canadian lawyers wrote to AAP in August 2018. [39] AAP relies on the fact that neither the US nor the Canadian demand letters expressly asks AAP to stop using the word ALLIANCE,the name ALLIANCE AUTOPROPANE or the AAP Marks. Rather, the letters are focused on the ALLIANCE AUTOGAS Design andthe ’034 Mark, despite Blossman’s awareness of AAP’s use of ALLIANCE AUTOPROPANE.

Indeed, the Canadian lawyer’s letter evenrefers to the THE LARGEST AUTO PROPANE NETWORK IN NORTH AMERICA slogan appearing on AAP’s website, withoutreferring to the ’457 Mark that incorporates the French version of the slogan. [40] It is certainly difficult to explain why Blossman, if it considered the ongoing use of ALLIANCE AUTOPROPANE or the AAPMarks to be confusing, or it considered the AAP Marks to be invalid, did not include express reference to those concerns in either the USor Canadian lawyers’ letters.

Blossman’s Canadian counsel, who represented it on this application, was unable to explain this, other thanto refer to the broad demand that AAP refrain from using any trademark confusing with the ALLIANCE AUTOGAS Design trademark,and to the existence of subsequent settlement discussions "“relating to the marks at issue in this litigation.”" [41] Notwithstanding the absence of an express demand in the lawyers’ letters, I conclude that there is no evidence that Blossmanencouraged, or even consented to, AAP’s ongoing use of ALLIANCE AUTOPROPANE or the AAP Marks.

As Blossman notes, ademand was issued to AAP not to use confusing trademarks. In the context, I cannot conclude that Blossman focusing on theALLIANCE AUTOGAS Design in its enforcement efforts constitutes acquiescence to the use of ALLIANCE AUTOPROPANE or theAAP Marks. At most, it may have delayed its enforcement steps as they relate to that mark, which is not acquiescence: Norsteel at para36. While that delay may have an effect on damages, as we shall see, it does not prevent Blossman from seeking relief in this applicationincluding the invalidation of the trademarks or injunctive relief.

(5) Statutory framework and grounds of invalidity [42] Blossman’s request to strike the four registered trademarks at issue from the Trademark Register is brought pursuant to subsection57(1) of the Trademarks Act. That

section permits this Court to strike out an entry in the Register on the application of "“any personinterested,”" where the entry does not accurately define the existing rights of the registered owner. I accept Blossman’s contention that itfalls within the broad definition of "“person interested,”" which has been described as a de minimis threshold: Yiwu Thousand Shores E-Commerce Co Ltd v Lin, 2021 FC 1040 at para 22; Vancouver Association for Injured Motorcyclists v Alliance for Injured MotorcyclistsCanada, 2010 FC 1207 at para 10; Norsteel at paras 13–21. In bringing an application under

section 57, Blossman has the onus to show

the registrations are invalid on a balance of probabilities: Havana House Cigar & Tobacco Merchants Ltd v Skyway Cigar Store, (FC) at para 43, varied on other grounds, (FCA). [43] The Court may make an order striking out a trademark registration under

section 57 of the Trademarks Act where the registration isinvalid under

section 18: see, e.g., Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27 at para 114; Norsteel at paras 1, 9–10, 76.Subsection 18(1) sets out five circumstances in which a trademark registration will be invalid: When registration invalid Quand l’enregistrement estinvalide 18

(1) The registration of atrademark is invalid if" " 18

(1) L’enregistrement d’unemarque de commerce est invalidedans les cas suivants :" " (

a) the trademark was notregistrable at the date ofregistration;

a) la marque de commerce n’étaitpas enregistrable à la date del’enregistrement; (

b) the trademark is not distinctiveat the time proceedings bringingthe validity of the registration intoquestion are commenced;

b) la marque de commerce n’est pasdistinctive à l’époque où sontentamées les procédures contestantla validité de l’enregistrement; (

c) the trademark has beenabandoned;

c) la marque de commerce a étéabandonnée; (

d) subject to

section 17, theapplicant for registration was notthe person entitled to secure theregistration; or

d) sous réserve de l’article 17,l’auteur de la demande n’était pasla personne ayant droit d’obtenirl’enregistrement; (

e) the application for registrationwas filed in bad faith.

e) la demande d’enregistrement aété produite de mauvaise foi. [44] Blossman relies on paragraphs 18(1)(b), (d), and (e), that is to say on grounds of distinctiveness, entitlement, and—in respect of the’034 Mark only—bad faith. It puts forward its arguments on entitlement and bad faith before its distinctiveness arguments, and I willaddress them in this order.

(6) AAP was not entitled to register the trademarks [45] As set out above, a trademark registration is invalid if the applicant was not the person entitled to secure the registration:Trademarks Act, s 18(1)(d). The "“person entitled to secure the registration”" referred to in paragraph 18(1)(

d) is defined by

section 16,which governs entitlement to registration. Subsection 16(1) reads as follows: Entitlement to registration Droit à l’enregistrement 16

(1) Any applicant who has filedan application in accordance withsubsection 30(2) for theregistration of a registrabletrademark is entitled, subject tosection 38, to secure itsregistration in respect of the goodsor services specified in theapplication, unless at the filingdate of the application or the dateof first use of the trademark inCanada, whichever is earlier, itwas confusing with " " 16

(1) Tout requérant qui a produitune demande conforme auparagraphe 30(2) en vue del’enregistrement d’une marque decommerce enregistrable a droit,sous réserve de l’article 38,d’obtenir cet enregistrement àl’égard des produits ou servicesspécifiés dans la demande, à moinsque, à la date de production de lademande ou à la date à laquelle lamarque a été employée pour lapremière fois au Canada, lapremière éventualité étant à retenir,la marque n’ait créé de la confusion:" " (

a) a trademark that had beenpreviously used in Canada ormade known in Canada by anyother person;

a) soit avec une marque decommerce antérieurementemployée ou révélée au Canada parune autre personne;

(

b) a trademark in respect ofwhich an application forregistration had been previouslyfiled in Canada by any otherperson; or

b) soit avec une marque decommerce à l’égard de laquelle unedemande d’enregistrement avait étéantérieurement produite au Canadapar une autre personne; (

c) a trade name that had beenpreviously used in Canada by anyother person.

c) soit avec un nom commercial quiavait été antérieurement employé auCanada par une autre personne. [Emphasis added.] [Je souligne.] [46] The foregoing (current) version of

section 16 applies in this case even though it came into force after the trademarks at issue wereregistered: Trademarks Act, s 73(1). I note for completeness that while paragraph 18(1)(

d) is "“subject to

section 17,”" that

section has noapplication in this case given the identity of the applicant and the timing of the application: Trademarks Act, s 17. (

a) Relevant dates for analysis [47] By combined operation of paragraph 18(1)(

d) and subsection 16(1), the relevant date for the assessment of invalidity on the basis ofentitlement is the earlier of the filing date or the date of first use in Canada. AAP applied for each of the four trademarks at issue onSeptember 16, 2014. In the case of the ’034 Trademark, the application was filed on the basis of proposed use, suggesting that it had notbeen used by that date. While Mr.

Grégoire stated in his affidavit that the ’034 Trademark, among others, had been used online since atleast the summer of 2014, AAP clarified in response to undertakings that the mark was first used on its website in April 2015. As there isno evidence of a prior use in other circumstances, the date of application is the earlier date and therefore the relevant date. [48] For each of the AAP Marks, Mr. Grégoire’s evidence is that they were used since at least the summer of 2014.

This is consistentwith the trademark applications, which identify various dates of first use between May 20 and August 15, 2014, for the different servicesidentified in the applications, and the 2013–2014 dates of the marketing materials. Neither party argued the confusion analysis was anydifferent, or would yield any different result, based on the difference between May and September 2014. For the sake of my analysis, Iwill use May 20, 2014, as the relevant date for the AAP Marks. In doing so, I should not be taken to accept that AAP "“used”" thetrademarks within the meaning of

section 4 of the Trademarks Act at a time when it was a sublicensee of Blossman: see, e.g., CitrusGrowers Assn Ltd v William D Branson Ltd, (FC), [1990] 1 FC 641 at pp 646–647 and the discussion belowregarding subsection 50(1) of the Trademarks Act and use by distributors or licensees. [49] As of these relevant dates, AAP would not have been entitled to registration, and the trademark registrations at issue will thereforebe invalid, if the trademarks were confusing with a trademark that Blossman had previously used or made known in Canada or a tradename Blossman had previously used in Canada: Trademarks Act, ss 16(1)(a), (c); 18(1)(d).

I will therefore turn next to the issue ofwhether Blossman has established that it used its trademarks in Canada by the relevant dates. (

b) Use of the ALLIANCE AUTOGAS trademarks in Canada [50] Blossman claims it has used the trademarks ALLIANCE AUTOGAS, ALLIANCE AUTOGAS POWERED BY PROPANE, andALLIANCE AUTOGAS Design, as well as the trade name ALLIANCE AUTOGAS, in Canada since 2012 through its licensees.

As Iconclude that Blossman’s allegations regarding the trademarks ALLIANCE AUTOGAS and ALLIANCE AUTOGAS Design aredeterminative, I will focus the analysis below on these trademarks and need not address the use of the trade name or the trademarkALLIANCE AUTOGAS POWERED BY PROPANE: Masterpiece at para 61. [51] A trademark is used in association with services if it is "“used or displayed in the performance or advertising of those services”":Trademarks Act, ss 2 ("“use”"), 4(2).

Where a trademark is used by a licensee and the trademark owner has direct or indirect control ofthe character or quality of the services, the use has the same effect as use by the owner and accrues to the owner’s benefit: TrademarksAct, s 50(1). [52] Blossman’s evidence of use in Canada comes in the form of Mr. Hoffman’s affidavit and the documents he exhibits to that affidavit.Although Mr. Hoffman did not join Blossman until 2014, he had worked with Blossman since 2012, since his former employer,Keystone, was a Blossman client. As summarized above, Mr.

Hoffman’s evidence speaks to the use of the ALLIANCE AUTOGAStrademarks in Canada before 2014 by two licensees, Caledon and Canwest. I will address the evidence with respect to each of these inturn, including AAP’s criticisms of the evidence, and will then address AAP’s other arguments with respect to use, including whetherBlossman has established that it controlled the character and quality of the services offered by Caledon and Canwest. (

i) Use by Caledon [53] Mr. Hoffman asserts that on October 25, 2012, when he was with Keystone, he went to an Esso gas station on Martin Grove Road inToronto at the invitation of a Caledon employee named George Olah, who was also a vice-president of "“Alliance AutoGas Canada.”"Mr. Hoffman states there was an ALLIANCE AUTOGAS branded propane-filling facility at the gas station, that he was able to refuelhis Keystone truck with autogas that day, and that taxis and limousines running on autogas refueled at the facility. In connection with thisevidence, Mr.

Hoffman exhibited to his affidavit two photographs: one of a large propane storage tank bearing the ALLIANCEAUTOGAS Design, attached to a propane filling pump, and one of a Caledon fleet vehicle bearing the ALLIANCE AUTOGAS Designadorned with a maple leaf. [54] AAP challenges the reliability of this evidence based on Mr. Hoffman’s cross-examination. During this cross-examination, Mr.Hoffman initially stated that he personally took the two pictures, and that the picture of the propane tank was at the Martin Grove

location, while the picture of the truck may have been at a nearby Keystone branch location. In response to further questions, Mr. Hoffman said that either he or Mr. Olah might have taken the picture of the propane tank, but that it was from the Martin Grove site. When later presented with an image from Google Maps said to be the Martin Grove location and said to include a building of a different colour (the image in question was not before the Court), Mr. Hoffman clarified his evidence by saying " “there were numerous fill sites in that area. Could this be a different fill site? Yes.

Looking back at this now, yes.” " In re-examination, Mr. Hoffman confirmed that he attended a Caledon site with ALLIANCE AUTOGAS trademarks on a propane tank that was " “definitely in Toronto, definitely in Canada, and definitely photographed by myself, and George Olah has the photographs.” " [ 55 ] AAP suggests Mr. Hoffman’s credibility is tainted by this change in evidence. It also notes Mr. Hoffman was unable to speak to the particular dates that the Martin Grove location opened or ceased operating. I agree the cross-examination showed that elements of Mr.

Hoffman’s evidence were not as precise as they were originally portrayed to be, and that Mr. Hoffman may have erred or overstated some aspects of his evidence. However, I cannot accept AAP’s submission that this undermines his credibility to the extent of rejecting his evidence in its entirety, given the questions at issue on this application. [ 56 ] In particular, the main question at this stage is whether Blossman, through its licensee Caledon, had used the ALLIANCE AUTOGAS trademarks in Canada before AAP’s use in May 2014. Mr.

Hoffman’s evidence, based on direct experience as a customer, was that he had personally seen the trademarks in use in the course of trade in late 2012, both through its appearance at a propane filling station in Toronto and through markings on a Caledon vehicle. The photographic evidence, which shows the use of the ALLIANCE AUTOGAS Design on propane equipment also bearing the name Caledon Propane Inc, is consistent with and confirms this evidence, regardless of who took the photograph, and even if Mr.

Hoffman recognized that he was not fully certain whether it represented the Martin Grove location or another location. [ 57 ] These displays of the ALLIANCE AUTOGAS Design constitute the use or display of the trademark in the performance or advertising of the autopropane delivery services offered by Caledon: Trademarks Act , s 4(2).

I am satisfied that use of the ALLIANCE AUTOGAS Design trademark also constitutes use of the trademark ALLIANCE AUTOGAS, given that these words are the predominant aspect of the design mark: Caterpillar Inc v Puma SE , 2021 FC 974 at para 101 , citing Ridout & Maybee LLP v Omega SA , 2004 FC 1703 at para 10 . [ 58 ] Mr. Hoffman also states that beginning in 2013, Keystone obtained Caledon’s assistance in converting Keystone fleet vehicles for use with autogas. These services were provided in Toronto in association with the ALLIANCE AUTOGAS trademarks. This evidence was not disturbed on cross-examination.

I am satisfied that this evidence, based on Mr. Hoffman’s personal knowledge, is sufficient to show use in 2013 of the ALLIANCE AUTOGAS trademarks in association with the installation of autogas conversion systems. [ 59 ] Mr. Hoffman states that Keystone’s converted vehicles were located in Cornwall and Moncton and that he is " “aware” " that Blossman had set up ALLIANCE AUTOGAS branded fuelling stations in those locations in 2012 or 2013. I am satisfied that Mr. Hoffman would have knowledge of the location of his company’s fleet vehicles and the services they were using. However, Mr.

Hoffman provides no indication that he personally saw the stations or could speak to the display or use of ALLIANCE AUTOGAS trademarks. Nor does he provide any supporting documentation or photographic evidence in respect of these locations. While the record includes an October 2012 email from Mr. Olah to Mr. Hoffman that is apparently about construction at the Cornwall site, the email neither confirms nor demonstrates the operation of the facility or the use of trademarks there.

I am therefore unable to conclude that there is sufficient evidence to prove there were filling stations in Cornwall or Moncton that used or displayed ALLIANCE AUTOGAS trademarks prior to May 2014. (ii) Use by Canwest [ 60 ] Mr. Hoffman’s affidavit also refers to an agreement between Blossman and Canwest Propane, and states that Canwest used the ALLIANCE AUTOGAS trademarks under license from Blossman beginning in 2013. While Mr. Hoffman did not attach a copy of the agreement, he did attach a one-paragraph

article from the website of LP Gas , a propane industry publication, dated May 17, 2013. The

article states that Canwest had " “joined the Alliance AutoGas network” " and that it would provide regional fleets in western Canada with a program to switch to propane autogas. On cross-examination, Mr. Hoffman agreed that the Canwest agreement predated his time at Blossman and that he had not been involved in negotiating the agreement. However, he confirmed that he had personal knowledge of Canwest’s operations as a member of the Alliance AutoGas network, having visited numerous fuelling sites in Calgary as part of his employment with Keystone. [ 61 ] Given Mr.

Hoffman’s personal awareness of Canwest’s fuelling facilities in the relevant period, I am satisfied that Mr. Hoffman’s evidence establishes Canwest’s use under license of the ALLIANCE AUTOGAS trademarks in Alberta prior to May 2014. (iii) Use under license and control of character or quality [ 62 ] Blossman contends the use by Caledon and/or Canwest inures to the benefit of Blossman pursuant to subsection 50(1) of the Trademarks Act , since Caledon and Canwest used the marks under license and Blossman had control of the character or quality of Caledon and Canwest’s services.

AAP argues Blossman has not met its burden to show it controlled the use of the trademark by those licensees, citing Empresa Cubana Del Tabaco v Shapiro Cohen , 2011 FC 102 at paras 83–84 , aff’d 2011 FCA 340 .

For the following reasons, I conclude Blossman has established that the use of the ALLIANCE AUTOGAS marks by Caledon and Canwest constitutes use by Blossman pursuant to subsection 50(1) . [ 63 ] As Justice Kelen noted in Empresa Cubana , registered owners of trademarks can demonstrate the control required to benefit from subsection 50(1) by (1) swearing to the fact that they exert the requisite control; (2) providing evidence that demonstrates they exert the requisite control; or (3) providing a copy of a license agreement that explicitly provides for the requisite control: Empresa Cubana at para 84; Live!

Holdings, LLC v Oyen Wiggs Green & Mutala LLP , 2020 FCA 120 at para 24 ; Caterpillar at para 52. [ 64 ] In the case of Caledon, Blossman has provided a copy of a license agreement, namely the Blossman-Caledon Agreement. That agreement required Caledon to comply with Blossman’s policies, procedures, and guidelines as they may be issued from time to time,

including in respect of pricing, equipment, installation, signage, and labelling. It also required Caledon to enter into contracts substantially in Blossman’s standard form. The agreement contained a general ability on the part of either party to terminate the agreement in the event of a default of any term in the agreement that continued for more than 30 days. Mr.

Hoffman’s affidavit also stated that Blossman had direct or indirect control of the character and quality of the services provided by Caledon, and he stated on cross-examination that he was personally aware of Caledon having access to marketing materials, participating in group sales meetings, and purchasing products from Blossman. [ 65 ] Against this evidence of control under the license, AAP points to a January 21, 2015, email from Mr. Finder to Mr. Grégoire. That email appears to be part of a longer thread between Mr. Finder and Mr. Grégoire that is not in the record but appears to have pertained to marketing.

In the email, Mr. Finder asks Mr. Grégoire to share with Blossman’s Senior Public Relations Director any future public relations pieces so that Blossman can " “review and assist in messaging as we have discussed.” " Mr. Finder then says: " “Now is the time to work together and we apologize as we had no idea what you were doing in Canada, for as in the past we allowed Hugh and Caledon to rock on his own.” " AAP argues Mr.

Finder’s statement that Blossman allowed Caledon to " “rock on his own” " indicates that Blossman did not have control over the character and quality of the services provided by Caledon. [ 66 ] I disagree. I am not satisfied that a general observation that a licensor has allowed a licensee to " “rock on his own” " is sufficient to undermine the express control provisions in the Blossman-Caledon Agreement. As Justice Walker has observed, lack of control of day- to-day business operations is not fatal to the existence of a

section 50 license: Corey Bessner Consulting Inc v Core Consultants Realty Inc , 2020 FC 224 at para 78 . There is, in any case, some evidence that Blossman was in fact engaged in controlling the quality of Caledon’s services. Mr. Hoffman recounted an occurrence in April 2013 when Keystone was concerned about a fuel quality issue related to rust in converted vehicle tanks. When those concerns were not addressed by a Caledon representative, Mr. Hoffman brought the issue to Blossman’s attention, and Blossman intervened to correspond with Caledon and have the fuel quality issue addressed. [ 67 ] I note that Mr.

Finder’s observation that he did not know what AAP was doing in Canada before January 2015 does not bear on the current issue, for three reasons. First, it does not relate to the relevant issue of whether there was control of Caledon’s licensed use of the trademark. Second, to the extent that it relates to AAP’s use of either the AAP Marks or the ALLIANCE AUTOGAS trademarks, it necessarily relates to the period after the relevant date on which AAP commenced use. Third, subsection 50(1) permits a licensor to have indirect control over the character or quality of services.

There is no indication that Caledon did not have some form of control over AAP’s use, and indeed AAP agreed, as a term of the Caledon-AAP Agreement, to comply with the Blossman-Caledon Agreement, including its control provisions. [ 68 ] With respect to Canwest, this Court has held that it is not necessary to produce a formal licensing agreement to prove the existence of a licensing agreement under subsection 50(1): 3082833 Nova Scotia Company v Lang Michener LLP , 2009 FC 928 at para 32 ; Empresa Cubana at para 84. Mr.

Hoffman stated in his affidavit that Canwest used the ALLIANCE AUTOGAS trademarks under license from Blossman and that Blossman controlled the character and quality of the services under the license agreement. While Mr. Hoffman agreed on cross-examination that he was not involved in the negotiation of the agreement, he provided his firsthand evidence of the Canwest sites in Calgary as described above, and that was the extent of cross-examination on his statement. The Court is therefore, to paraphrase Justice Kelen in 3082833 Nova Scotia , faced with the uncontradicted evidence of Mr.

Hoffman, swearing that a licensing agreement exists and that Blossman maintains control over Caledon’s use of the ALLIANCE AUTOGAS trademark: 3082833 Nova Scotia at para 33. [ 69 ] Blossman’s evidence of control of its Canadian licensees could certainly have been more robust, including through the inclusion of the Canwest license agreement.

However, the evidence presented meets the standards established by this Court for demonstrating control under license for the purposes of subsection 50(1), while AAP’s contrary evidence is limited and unpersuasive. [ 70 ] I am therefore satisfied Blossman has demonstrated that Caledon and Canwest’s use of the ALLIANCE AUTOGAS marks was under license and that it had control of the character or quality of the services so as to attract the operation of subsection 50(1). (iv) AAP’s other challenges to Blossman’s evidence [ 71 ] AAP criticizes Blossman for only presenting evidence from Mr. Hoffman.

It argues there were others with better evidence of matters such as the development of the Alliance AutoGas program beginning in 2009 and AAP’s involvement beginning in 2013. Although Mr. Finder died in April 2017, AAP notes that Mr. Weidie was president of Alliance AutoGas since its inception and could have given evidence. It also notes that Blossman did not file any affidavit of a witness from Caledon or Canwest. It asks the Court to draw adverse inferences from Blossman’s decision not to have Mr. Weidie, Caledon, or Canwest give evidence, and attacks Mr.

Hoffman’s evidence and his credibility on this basis. [ 72 ] I cannot accept this submission. No doubt Mr. Weidie would have had more direct evidence of the development of the Alliance AutoGas program in the United States beginning in 2009. However, the issues before the Court pertain to trademark rights and use in Canada. Mr. Hoffman has direct knowledge and information with respect to Blossman’s use in Canada, from his time both at Keystone and at Blossman.

While evidence might have been filed from others, such as representatives from Caledon (although it was subsequently purchased by Superior Propane) or Canwest, there is no obligation on an applicant to file affidavits from everyone who might have relevant evidence if it can prove the necessary facts through fewer affiants. In the present case, I am not satisfied that the availability of other evidence should lead to an adverse inference regarding Blossman’s evidence, still less to an adverse inference regarding Mr.

Hoffman’s credibility. [ 73 ] AAP’s written and oral submissions raised a number of other challenges to Mr. Hoffman’s credibility or reliability as a witness. I will not address each of these, except to note that I find the cross-examination with respect to the photographs referred to above was the most substantive attack, and did not in my view undermine Mr. Hoffman’s evidence as a whole. I note in particular that AAP’s attempt to undermine Mr.

Hoffman’s credibility because he did not have personal knowledge of whether the Alliance AutoGas website was available in Canada is unpersuasive in the absence of contrary evidence, particularly given Mr. Grégoire’s own evidence that he consulted the website and obtained Mr. Finder’s name from it.

[74] Having reviewed Mr. Hoffman’s affidavit, the transcript of his cross-examination, and AAP’s arguments, I am satisfied that Mr.Hoffman’s evidence establishes the use of the ALLIANCE AUTOGAS trademarks in Canada prior to the relevant dates, including inparticular through: (

i) use by Caledon in association with at least one autogas filling station in Toronto in 2012; (ii) use by Caledon inassociation with the conversion of propane vehicles in 2013; and (iii) use by Canwest in association with autogas filling stations inCalgary in 2013. [75] Having determined that the ALLIANCE AUTOGAS trademarks have been previously used in Canada and that Blossman is notprecluded by its conduct from relying on them, the question of entitlement under subsection 16(1)(

a) turns on whether the trademarks inAAP’s registrations are confusing with one or more of those marks. For the reasons below, I conclude they are. (

c) The registered trademarks are confusing with the ALLIANCE AUTOGAS trademarks (

i) The confusion analysis [76] Confusion is defined in

section 6 of the Trademarks Act. Two trademarks will be considered confusing "“if the use of bothtrademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks aremanufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class orappear in the same class of the Nice Classification”": Trademarks Act, s 6(2).

This test is applied as a "“matter of first impression in themind of a casual consumer somewhat in a hurry who sees the [mark], at a time when he or she has no more than an imperfectrecollection of the [prior] trade-marks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examineclosely the similarities and differences between the marks”": Masterpiece at para 40, citing Veuve Clicquot Ponsardin v BoutiquesCliquot Ltée, 2006 SCC 23 at para 20. [77] In assessing confusion, the Court is to have regard to "“all the surrounding circumstances,”" including those specifically listed insubsection 6(5), namely (

a) inherent and acquired distinctiveness; (

b) length of use; (

c) the nature of the goods, services, or business; (d)the nature of the trade; and (

e) the degree of resemblance between the trademarks. Each of these factors must be considered, althoughthey may have varying importance depending on the case: Group III International Ltd v Travelway Group International Ltd, 2017 FCA215 at paras 34, 45–49 [Group III (2017)].

That said, the degree of resemblance is often likely to have the greatest effect on theconfusion analysis: Masterpiece at para 49; Group III (2017) at para 48. [78] As AAP points out, the confusion analysis must be conducted with respect to each of the marks set out in the registrations, ratherthan for all the marks globally: Masterpiece at paras 42–48. However, some of the subsection 6(5) factors guiding the confusionanalysis may be the same for each of the trademarks at issue: Masterpiece at para 45.

That is the case here with respect to thedistinctiveness of Blossman’s ALLIANCE AUTOGAS trademarks (since the same marks are asserted against each of the registeredtrademarks); the nature of the services, business, and trade; and the allegations of actual confusion. I will therefore address these factorsbefore turning to the confusion analysis for each of the registered trademarks at issue. (ii) Inherent and acquired distinctiveness of the ALLIANCE AUTOGAS trademarks [79] I conclude the trademark ALLIANCE AUTOGAS has a moderate amount of inherent distinctiveness.

The word AUTOGAS simplydescribes the services being offered, such that ALLIANCE is the primary distinguishing element of the trademark. As AAP points out,the word ALLIANCE is a common word (in both English and French), connoting a union or association. Marks based on such wordswill be considered less distinctive and have a narrower ambit of protection than, for example, coined words, particularly where thecommon word is suggestive of the goods or services: General Motors Corp v Bellows, (SCC), [1949] SCR 678 at p 691;Toys R Us (Canada) Ltd v Manjel Inc, 2003 FCT 282 at para 36.

Nonetheless, I disagree with AAP’s submission that the trademark hasno distinctiveness at all. The word ALLIANCE may be suggestive of the notion of a "“network”" of autogas dealers, but it is notdescriptive of such a network. Nor is it descriptive, or even suggestive, of propane-vehicle conversion services or autogas refuellingservices. [80] The ALLIANCE AUTOGAS Design has a higher degree of inherent distinctiveness given its design elements and the addedPOWERED BY PROPANE slogan. In particular, the flame and leaf design motif adds materially to the distinctiveness of the mark.

Withrespect to the slogan, while POWERED BY PROPANE may be considered suggestive of the services offered, the particular phrasingnonetheless has a degree of distinctiveness, such that the mark as a whole has a fairly high degree of inherent distinctiveness. [81] In terms of acquired distinctiveness, there had been at least some use of Blossman’s trademarks in Canada by May and September2014, as described above. However, despite Mr.

Hoffman’s general reference to "“continuous use, promotion and advertising throughoutCanada,”" Blossman has provided very little evidence of the nature or extent of that advertising that would allow the Court to drawconclusions about the extent to which the trademarks had become known in Canada. At the same time, the evidence shows that AAPitself not only was sufficiently aware of Alliance AutoGas to reach out to them, but that it considered its association with AllianceAutoGas to be a strength in establishing its business among customers in Canada.

I conclude the ALLIANCE AUTOGAS andALLIANCE AUTOGAS Design trademarks had become known in Canada to at least some degree, but not so as to materially affect thedistinctiveness of the trademarks for the purposes of the confusion analysis. (iii) Nature of the services, business, and trade [82] As noted above, the four registered trademarks at issue are all registered for use in association with the same list of services, whichfall generally into the categories of (

i) services related to the sale, installation, and maintenance of propane conversion systems; and (ii)services related to propane filling stations. The services listed in the applications directly overlap those for which Blossman, through itslicensees, used the ALLIANCE AUTOGAS trademarks in Canada before AAP adopted the trademarks. In particular, prior to therelevant dates, Blossman used the ALLIANCE AUTOGAS trademarks through its Canadian licensees in association with the services ofconverting vehicles for use with propane, and operating propane gas filling stations for propane vehicles.

[ 83 ] As to the nature of the trade, the nature of the vehicle conversion business appears to be somewhat different from the nature of the refueling business. Converting a vehicle from gasoline to propane or bi-fuel seems to be a single operation that requires the installation of equipment, whereas the evidence suggests that refueling a vehicle with propane involves a similar process and consumer experience to refueling with gasoline. The latter might therefore involve a much more transitory and short-lived transaction.

That said, the Supreme Court has cautioned that while such issues are relevant, confusion must be premised on the first impression of consumers when they encounter the marks in question: Masterpiece at paras 70–74.

In either case, the parties are operating in the same channels of trade with respect to vehicle conversion services and propane refuelling services, offering those services to the same or overlapping classes of customers, namely the operators of vehicle fleets and the drivers of vehicles in those fleets, respectively: Mattel, Inc v 3894207 Canada Inc , 2006 SCC 22 at para 86 . [ 84 ] Although offering the same services, AAP seeks to distinguish its business from Blossman’s based on its business model. In particular, Mr.

Grégoire states that AAP’s clients can use a single membership card to obtain fuel or services from AAP facilities throughout Quebec, while the different members of Blossman’s Alliance AutoGas network sell their propane independently. [ 85 ] In my view, this different business model is not a material basis for distinction in assessing the validity of the registered trademarks, for two reasons. First, the confusion analysis is directed to the services set out in the registrations, rather than the owner’s actual operations: Trademarks Act , s 16(1); Mattel at para 53.

The registrations at issue contain no limitation on the business model by which the services are offered. Second, while the offering of a single membership card no doubt creates a convenience for AAP’s customers and establishes its network as a cohesive network, there is no evidence other than Mr.

Grégoire’s general statements that this fundamentally affects either the nature of the services offered to consumers or how a consumer, particularly one " “somewhat in a hurry” " would perceive the business or the trademarks. [ 86 ] I therefore conclude that there is a strong similarity between the services, business, and trade of AAP and Blossman. (iv) Other surrounding circumstances [ 87 ] As a surrounding circumstance, Blossman points to evidence that it describes as showing instances of actual confusion, namely (

i) a Facebook message exchange and two inquiries posted to the Alliance AutoGas website involving AAP customers reaching out to Blossman/Alliance AutoGas with the apparent understanding that the companies were linked; and (ii) an email reporting on a phone call from a customer in Halifax apparently understanding a logo on an AAP truck to belong to Alliance AutoGas.

Blossman relies on this evidence in respect of the confusion analysis relevant to all of the trademarks, noting that evidence of actual confusion may be a relevant surrounding circumstance supporting a finding of confusion: Christian Dior, SA v Dion Neckwear Ltd , 2002 FCA 29 at para 19 ; Mattel at para 55. [ 88 ] Despite AAP’s challenges to the strength of this evidence and Mr.

Hoffman’s ability to confirm whether the individuals were in fact AAP customers, I accept that these documents, and in particular the two website contacts, show instances of customers between 2018 and 2020 apparently believing that Alliance AutoGas and AAP were associated. That said, these instances significantly postdate the relevant date for the confusion analysis relevant to the validity of the marks, and do not pertain specifically to the registered design trademarks at issue. I therefore give them no weight as a surrounding circumstance in the confusion analysis at this stage. (

v) The ’034 Mark [ 89 ] I agree with Blossman that little analysis is necessary of the ’034 Mark. The ’034 Mark is clearly confusing with the ALLIANCE AUTOGAS Design, and AAP presented few arguments to the contrary. The ’034 Mark is identical to the ALLIANCE AUTOGAS Design, depicted in black and white. This high degree of resemblance speaks strongly in favour of a finding of confusion. As noted above, the ALLIANCE AUTOGAS Design is inherently distinctive, and the two marks thus have the same degree of inherent distinctiveness.

The services listed in the registration are the same or similar to those offered by Blossman, while the business and trade of Blossman and AAP are also largely the same. The length of use favours Blossman given that its licensees had used the mark beginning in 2012 and 2013, while AAP had not used the mark at the date of its application. [ 90 ] I see no other surrounding circumstances that would counteract these factors.

To the contrary, to the extent the analysis includes surrounding factual circumstances, the fact that AAP was a sublicensee of Blossman would further reinforce the conclusion that a consumer would conclude the services offered in association with the ’034 Mark were of the same source as those offered in association with the identical ALLIANCE AUTOGAS Design. [ 91 ] AAP argues it was the first to use the ALLIANCE AUTOGAS Design mark in Canada, and was therefore within its rights to apply to register it. In addition to this being factually untrue, for the reasons set out above, it is legally incorrect.

As AAP itself asserts, its use of the ALLIANCE AUTOGAS Design was pursuant to its indirect license from Blossman, through the Blossman-Caledon Agreement and the Caledon-AAP Agreement.

Such use accrues to the benefit of Blossman: Trademarks Act , s 50(1). [ 92 ] It is well established in Canadian trademark law that a distributor, agent, or licensee is not entitled to register a licensor’s trademark in its own name on the basis of its licensed use of the mark: Citrus Growers at pp 646–649; Ling Chi Medicine Co (HK) Ltd v Persaud , [1997] FCJ No 144 (FC) at para 17 , aff’d on this point but rev’d on other grounds Ling Chi (FCA) at para 3; Havana House (FC) at paras 48–60, aff’d on this point, Havana House (FCA) at para 3; Biker Rights Organization (Ontario) Inc v Sarnia-Lambton Bikers Rights Organization Incorporated , 2012 TMOB 189 at para 12 ; AFD China Intellectual Property Law Office v AFD China Intellectual Property Law (USA) Office, Inc , 2017 TMOB 30 at paras 33–34 .

AAP’s reliance on the fact that Blossman consented to the use pursuant to the license agreements, and that the agreements do not expressly prevent it from registering the ALLIANCE AUTOGAS Design, is wholly misplaced. [ 93 ] I conclude that AAP was not entitled to register the ’034 Mark as it was confusing with the ALLIANCE AUTOGAS Design previously used by Blossman. AAP’s registration for that trademark is invalid. Although this is determinative of the issue, I would also reach the same conclusion based on confusion with the word mark ALLIANCE AUTOGAS.

While the ’034 Mark is not identical to the word mark ALLIANCE AUTOGAS, it includes the words ALLIANCE AUTOGAS as a predominant element. A casual consumer

somewhat in a hurry viewing the ’034 Mark would readily conclude that the services offered in association with it were offered by the same person that owned the ALLIANCE AUTOGAS and ALLIANCE AUTOGAS POWERED BY PROPANE trademarks. (vi) The ’456 Mark [ 94 ] The ’456 Mark consists of design elements, namely the stylized ‘A’ motif and the lettering design elements, and word elements, namely the words ALLIANCE AUTOPROPANE. Blossman does not take issue with the stylized ‘A’ motif or contend that it is confusing with the design elements of the ALLIANCE AUTOGAS Design.

Indeed, the stylized ‘A’ motif on its own is the subject of another trademark registration owned by AAP, TMA916,408 [the ’408 Mark], which Blossman does not challenge. Rather, Blossman argues the ’456 Mark is confusing with its trademarks based on the words ALLIANCE AUTOPROPANE, considered in the context of the other subsection 6(5) factors. [ 95 ] In assessing the degree of resemblance between two marks, the marks must be considered as a whole, but it is appropriate to consider whether there are aspects of the trademark that are " “particularly striking or unique” " : Masterpiece at para 64.

In this way, the resemblance assessment interacts with the question of distinctiveness, focusing the analysis on the particularly distinctive elements of the trademark: Masterpiece at paras 61–64. [ 96 ] In my view, there are two " “striking or unique” " aspects of the ’456 Mark, namely the stylized ‘A’ motif, and the word ALLIANCE. I reject AAP’s contention, raised in respect of all of the AAP Marks, that the " “striking or unique” " aspect of the marks is the word AUTOPROPANE.

In my view, the casual consumer would consider this word to describe the services being offered in connection with the trademark, and not as the distinguishing feature of the mark. I note that this assessment is confirmed by AAP’s own evidence, both in the form of its website, in which the term " “autopropane” " is used descriptively to refer to propane used in vehicles (such as in a

section of the website entitled " “ " " Avantages de l’autopropane ” " [ " “Advantages of autopropane” " ]), and in the form of Mr. Grégoire’s cross-examination, in which he recognized that autogas is [ translation ] " “probably” " a synonym of autopropane.

In other words, the casual consumer would understand the distinguishing element or " “brand” " to be ALLIANCE and the services offered in association with that brand to be connected with autopropane, whether considered in English or French: Masterpiece at para 61. [ 97 ] I recognize that in French, the words ALLIANCE AUTOPROPANE could be understood to mean " “[the] autopropane alliance,” " with the word AUTOPROPANE acting as an adjective describing or defining the alliance.

Nonetheless, in the context in which it is presented in the ’456 Mark, and given that the word AUTOPROPANE is descriptive of the services being offered, I conclude that the word ALLIANCE would be understood by the casual consumer as the distinctive aspect of the words. [ 98 ] While the trademark must be assessed as registered, I note that this appears consistent with AAP’s documents and website, in which " “Alliance AutoPropane” " is presented as the name of the company in both English and French, and the word ALLIANCE is not used in a merely descriptive manner.

Rather, the term " “ " " réseau ” " or " “network” " is used to describe the collective of propane retailers operating under the trademark, as in the expression " “ " " Le réseau Alliance AutoPropane ” " in French or " “the Alliance AutoPropane network” " in English. [ 99 ] For the same reasons described above, the word ALLIANCE is also the striking or unique aspect of the trademark ALLIANCE AUTOGAS. The word ALLIANCE is thus the unique aspect of the trademark that distinguishes the particular supplier of autogas- related services from others.

In the ALLIANCE AUTOGAS Design trademark, there is the additional striking or unique aspect of the flame and leaf design motif, but the word ALLIANCE retains its striking or unique aspect. [ 100 ] AAP argues that paragraph 1(

a) of the Blossman-Caledon Agreement, reproduced at paragraph [18] above, indicates that it is the word AUTOGAS that is the striking element of the ALLIANCE AUTOGAS trademarks. It argues that the language dealing with termination focuses on the use of the word AUTOGAS, and implicitly permits the use of the word ALLIANCE after expiry of the agreement, provided it is not used in association with the word AUTOGAS. [ 101 ] I disagree, as my reading of the provision suggests precisely the opposite. Paragraph 1(

a) permits the use of the word AUTOGAS after termination, which is consistent with the fact that " “autogas” " is simply a synonym for propane used as a vehicle fuel and thus descriptive of the services. However, the provision prevents the licensee from using ALLIANCE together with AUTOGAS, and invokes concerns about trademark confusion ( " “or any word confusingly similar thereto” " ) only in respect of the word ALLIANCE. This indicates that the parties understood that ALLIANCE was the important and distinguishing element and not AUTOGAS. Indeed, on cross-examination, Mr.

Grégoire agreed and understood that upon expiry of the agreement, Blossman would take issue if Caledon used any confusingly similar marks containing the word ALLIANCE.

While the agreement may not prevent the licensee from using the word ALLIANCE with something entirely unrelated to autogas, it cannot be reasonably read as permitting, either expressly or implicitly, the use of ALLIANCE in association with autogas/propane products through the substitution of the word AUTOPROPANE for AUTOGAS. [ 102 ] Considering the marks as a whole, with a focus on the striking or unique elements, I conclude there is a high degree of resemblance between the ’456 Mark and the ALLIANCE AUTOGAS trademark. They each include the identical word ALLIANCE as a distinguishing or striking aspect.

The resemblance between the marks in both sound and connotation would be based only on the words, as the stylized ‘A’ motif would not be sounded. While the design elements, notably the striking stylized ‘A’ motif, are not present in the ALLIANCE AUTOGAS trademark, in my view, the overall resemblance remains strongly driven by the word elements, particularly given their prominence in the ’456 Mark.

Overall, I conclude there is a strong resemblance between the ’456 Mark and the ALLIANCE AUTOGAS trademark. [ 103 ] The resemblance is diminished in comparing the ’456 Mark with the ALLIANCE AUTOGAS Design trademark, due to the different design elements in the marks and the additional POWERED BY PROPANE words. However, the importance of the words in the trademarks, and of the striking ALLIANCE in particular, means there is still a moderately strong resemblance. [ 104 ] AAP in its submissions and Mr.

Grégoire in his evidence strongly contended that despite having the word ALLIANCE in common, ALLIANCE AUTOPROPANE and ALLIANCE AUTOGAS were two completely different things. This contention included the observation that AUTOGAS could include other gases such as butane, despite there being no evidence on this point and despite Mr.

Grégoire’s recognition that the AUTOGAS in the ALLIANCE AUTOGAS Design referred to propane. I reject this argument. Given the importance of the word ALLIANCE as a striking or unique element, there is a very high resemblance between the words ALLIANCE AUTOGAS and ALLIANCE AUTOPROPANE in appearance, sound, and connotation. Even if " “autogas” " might conceivably be a broader term than " “autopropane,” " it is clear that autogas and autopropane are highly similar, if not identical, in connotation.

I have no hesitation in concluding that a casual consumer seeing the words ALLIANCE AUTOPROPANE in the ’456 Mark, having an imperfect recollection of any one of the ALLIANCE AUTOGAS trademarks, and not pausing to give the matter any detailed consideration or scrutiny, would conclude that they represented the same source. [ 105 ] With respect to the other subsection 6(5) factors, I conclude that the ’456 Mark has greater inherent distinctiveness than the ALLIANCE AUTOGAS trademark, given the design elements and in particular the stylized ‘A’ motif, and about the same degree of inherent distinctiveness as the ALLIANCE AUTOGAS Design trademark.

The length of use again favours Blossman, although by a slightly shorter period than for the ’034 Mark, based on the May 2013 date of adoption. The nature of the services, business, and trade are the same for both marks, as described above. [ 106 ] In the overall assessment, the resemblance between the marks and the overlapping services are of importance, and merit particular weight, in the current circumstances.

While there are some distinguishing features between the ’456 Mark on the one hand and the ALLIANCE AUTOGAS and ALLIANCE AUTOGAS Design marks on the other, I conclude that a casual consumer somewhat in a hurry, with an imperfect recollection of Blossman’s trademarks, encountering the ’456 Mark would be likely to think that the services offered in association with it were offered by the owner of the ALLIANCE AUTOGAS trademarks. (vii) The ’457 Mark [ 107 ] In the ’457 Mark, the word AUTOPROPANE appears in much larger text in the overall design, while both the stylized ‘A’ motif and the word ALLIANCE are smaller in size.

There is also the added slogan element, LE PLUS GRAND RÉSEAU D’AUTOPROPANIERS EN AMÉRIQUE , also appearing in smaller lettering. Does the size of the word AUTOPROPANE in the design or the addition of the slogan change the analysis above with respect to the " “particularly striking or unique” " elements of the mark? In my view, it does not. In the ’457 Mark, although the word AUTOPROPANE is large, it is nonetheless simply a description of the services provided.

The word ALLIANCE is a unique or distinguishing element of the mark in the sense that it identifies the particular supplier of the autopropane-related services, even though it appears in smaller lettering: Masterpiece at paras 61–64.

While the circumstances may be different depending on the particular mark under review, in my view, lettering size is not the only relevant aspect of what makes elements of a mark striking or unique. [ 108 ] The LE PLUS GRAND RÉSEAU D’AUTOPROPANIERS EN AMÉRIQUE slogan does create an element of distinction with the ALLIANCE AUTOGAS trademark and the ALLIANCE AUTOGAS Design trademark, although it appears in a similar location to the POWERED BY PROPANE slogan element of the ALLIANCE AUTOGAS Design. This slogan language reduces the overall resemblance of the trademarks.

In the current case, though, the reduction is attenuated owing to the nature of the slogan itself, which I take to be a relevant surrounding circumstance, as I shall explain. [ 109 ] The parties had conflicting submissions about the meaning of the LE PLUS GRAND RÉSEAU D’AUTOPROPANIERS EN AMÉRIQUE slogan [ America’s largest autopropane retailers network] . Blossman argues it is a clear reference to Blossman and the Alliance AutoGas network.

AAP argues it refers only to its own network. [ 110 ] In my view, the evidence shows that the slogan was designed to evoke and draw a connection with the Alliance AutoGas network and would be understood as such by consumers. As noted above, the slogan appears for the first time in the record in the December 2013 " “ " " IMAGINONS… ” " marketing proposal from Soleil. That document describes as a " “main strength” " AAP’s membership in the vast Alliance AutoGas North American network, as well as the extent of the distribution network.

These aspects of AAP’s [ translation ] " “DNA” " were described as principal differentiating elements for positioning AAP, leading to the crafting of the slogan. [ 111 ] AAP also appears to have meant to convey this meaning of the slogan to potential partners, as seen in a [ translation ] " “Brand and Program Book” " dated 2015 and apparently targeted to propane retailers to encourage them to join AAP.

That book includes pages that ask the question [ translation ] " “Who is Alliance Autopropane?” " with the answer LE PLUS GRAND RÉSEAU D’AUTOPROPANIERS EN AMÉRIQUE , combined with an explanation that refers to the Alliance AutoGas network, shows a map of Canada and the United States that includes Alliance AutoGas coverage, and refers to statistics about the network that include Alliance AutoGas partners, filling stations, and clients. This connection is repeated in a later

section of the Brand and Program Book highlighting [ translation ] " “key messages” " . [ 112 ] Mr. Grégoire asserted on cross-examination that the slogan was not in any way connected with Blossman because it was AAP itself that had the largest network, based on a definition of " “network” " that meant that one could use a single card to purchase propane anywhere with a single billing structure. I find Mr. Grégoire’s assertion simply not credible.

It is inconsistent with the language of the slogan, the context of the Alliance AutoGas network of which AAP was a licensee, and the references in AAP’s own documents, and is based on a strained and idiosyncratic definition of " “network.” " [ 113 ] Ultimately, however, the intention of a trader in adopting their trademark is largely irrelevant: Mattel at para 90. Rather, it is the understanding of the hypothetical consumer that is important, and the connotation they would draw from the mark.

Based on the evidence in the record, I conclude it is more likely than not that an average consumer of the autopropane-related services listed in the registration would, in May 2014, associate the words LE PLUS GRAND RÉSEAU D’AUTOPROPANIERS EN AMÉRIQUE , particularly when appearing in context with the name ALLIANCE, to connote Alliance AutoGas.

The result, as a surrounding circumstance and as part of the assessment of resemblance in the confusion analysis, is that the distinction between the ’457 Mark on the one hand and the ALLIANCE AUTOGAS and ALLIANCE AUTOGAS Design trademarks on the other that might otherwise have come from the additional language of the slogan is reduced. [ 114 ] With the foregoing in mind, and considering the trademarks as a whole with particular attention to the striking or unique elements of it, I conclude that the uniqueness of the word ALLIANCE in the ’457 Mark, used in association with AUTOPROPANE or the

synonymous AUTOGAS, means there is a moderately strong resemblance between the ’457 Mark and the ALLIANCE AUTOGAS trademark, and a moderately strong resemblance between the ’457 Mark and

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