BEVERLY HILLS JEWELLERS MFG LTD. Applicant v. CORONA JEWELLERY COMPANY LTD., 2021 FC 674

Date: 20210628 Docket: T-1485-17 Citation: 2021 FC 674 Ottawa, Ontario, June 28, 2021 PRESENT: The Honourable Mr. Justice Brown APPLICATION UNDER

Section 56 of the Trade-marks Act , R.S.C. 1985, c. T-13 , in relation to application no. 1615226 for the trade- mark FIRE AND ICE CANADIAN DIAMOND & Design and application no. 1615229 for the trade-mark FIRE ON ICE CANADIAN DIAMOND & Design BETWEEN: BEVERLY HILLS JEWELLERS MFG LTD. Applicant and CORONA JEWELLERY COMPANY LTD. Respondent JUDGMENT AND REASONS Table of Contents I. Facts and decision under review 4 A. General 4 B. Factors included in a confusion analysis 8 C. Related Gold Dispute 10 D. TMOB proceedings 11 E. Appeal to the Federal Court under

section 56 12 II. Issues 14 III. Standard of review on

section 56 appeals 14 A. Housen v Nikolaisen , 2002 SCC 33 establishes two aspects of appellate review 14 B. What is meant by palpable and overriding error for questions of fact and mixed fact and law 16 C. Questions of law are to be reviewed on a standard of correctness 17 D. Tests for additional or new evidence 17

(1) What is material new evidence? 17 E. Material dates 22 F. Analysis of materiality of new evidence under subsection 16(3) of the Act 22

(1) Vaccaro 2018 Affidavit filed by the Applicant 24

(2) Tucker Affidavit and MacKinnon Affidavit filed by the Applicant 34

(3) Anastacio 2018 Affidavit filed by the Applicant 34

(4) Soare 2019 Affidavit filed by the Respondent 36

(5) Rosen Affidavit filed by the Respondent 39

(6) Summary of analysis and conclusion regarding alleged material new evidence 41 IV. Analysis of the TMOB Decision on the Housen appellate standard of palpable and overriding error 42 A. General 42 B. What constitutes a palpable and overriding error? 43

C. Analysis under subsection 16(3) 44 D. Who is the consumer? 44 E. Relevance and consideration of the decision(

s) of the Examiner in this appeal 49 F. Subsection 6(5) analysis,

part 1 52

(1) Degree of Resemblance, per paragraph 6(5)(e) 53

(2) Inherent distinctiveness and extent to which the marks have become known, per paragraph 6(5)(a) 63

(3) Length of time each mark has been in use, per paragraph 6(5)(b) 73

(4) Nature of the goods and channels of trade, per paragraphs 6(5)(

c) and (d) 74

(5) Surrounding Circumstances 78 (

a) State of the Register 78 (

b) Actual Confusion 81 (

c) Shop-in-Shops 81 G. Subsection 6(5) analysis,

part 2 82 V. Conclusion 87 VI. Costs 90 [ 1 ] This is an appeal of a decision by the Trade-marks Opposition Board [TMOB] in the name of the Registrar of Trade-marks [Registrar]. The TMOB refused the Applicant’s applications to register two proposed composite trade-marks, namely FIRE AND ICE CANADIAN DIAMOND & Design (Application no. 1,615,226) and FIRE ON ICE CANADIAN DIAMOND & Design (Application no. 1,615,229) [collectively the DIAMOND Marks].

The applications were refused by the TMOB [Decision] based on oppositions filed by the Respondent [also referred to as Corona]. [ 2 ] The Respondent alleged the DIAMOND Marks were confusing with the Respondent’s prior registered trade-marks: a word mark MAPLE LEAF DIAMONDS (TMA688061), and principally its design mark GEOMETRIC Design (TMA677376) [collectively the CORONA Marks]. The TMOB agreed with the Respondent, found the DIAMOND Marks confusing with the GEOMETRIC Design mark and refused the registration applications. [ 3 ] The Applicant appeals under

section 56 of the Trade-marks Act , RSC 1985, c T-13 [ Act ] for a direction the TMOB reject the opposition to the DIAMOND Marks and related relief. The Respondent asks the appeal be dismissed and the applications be refused, with costs. [ 4 ] The Act was amended on June 17, 2019, such that, among other things, it was renamed the Trademarks Act. However, this appeal is governed by the former Act with its hyphenated name. I. Facts and decision under review A.

General [ 5 ] On February 22, 2013, the Applicant filed two separate applications, one for each of the proposed DIAMOND Marks, both in association with " “Jewellery; Gold; Diamonds” " . The applications were based on proposed use: neither of the DIAMOND Marks were in use when the Applicant filed its applications.

The two proposed DIAMOND Marks were: [ 6 ] The Applicant began selling jewellery in association with the DIAMOND Marks some four months after filing its applications, that is, in June 2013. [ 7 ] According to the Certified Tribunal Record [CTR], the application for FIRE AND ICE CANADIAN DIAMOND and Design was initially rejected for advertising by the trade-mark examiner [Examiner] because of confusion with the Respondent’s GEOMETRIC Design mark [CTR pp. 177 to 181]: However, the Applicant provided further submissions to the TMOB who allowed advertising [CTR, pp. 163 to 176].

There is nothing of this nature in the CTR concerning the application for FIRE ON ICE CANADIAN DIAMOND and Design, which mark was advertised on the same day as FIRE AND ICE CANADIAN DIAMOND and Design.

[8] The two applications were advertised for opposition purposes in the Trade-marks Journal on November 12, 2014. [9] The Respondent filed statements of opposition to both applications on January 8, 2015 under

section 30, paragraph 12(1)(d),subsection 16(3), and

section 2 of the Act, based on the CORONA Marks including MAPLE LEAF DIAMONDS, but relying mostparticularly on its GEOMETRIC Design mark: [10] The grounds of opposition in this case were based on confusion with a previously used or known trade-mark per subsection 16(3),confusion with a registered trade-mark per paragraph 12(1)(d), and distinctiveness per

section 2. The opposition also relied on subsection30(i) (bad faith), which ground was rejected by the TMOB and was not pursued on this appeal. [11] As the TMOB held at paragraph 4 of the Decision, "“the last three grounds of opposition revolve around the likelihood of confusionbetween the Diamond Marks and the following trade-marks of the [Respondent] (sometimes hereafter referred to collectively as theCORONA Marks), both used in association with, among other things, ‘jewellery, gold, and diamonds’.”" [12] The core provisions for each of these three grounds are as follows: 1.

Confusion with a trade-mark previously used or made known: Subsection 16(3) of the Act says a proposed trade-mark, such asthose of the Applicant in this case, may not be registered if, at the date of filing of the application, it was confusing with a trade-mark that had been previously used in or made known in Canada, such as the CORONA Marks. These Reasons focus on theopposition based on subsection 16(3): "Proposed marks " "Marques projetées"" ""16

(3) Any applicant who has filed anapplication in accordance with

section 30 forregistration of a proposed trade-mark that isregistrable is entitled, subject to sections 38and 40, to secure its registration in respect ofthe goods or services specified in theapplication, unless at the date of filing of theapplication it was confusing with " "16 (3)"" Tout requérant qui a produit unedemande selon l’article 30 en vue del’enregistrement d’une marque de commerceprojetée et enregistrable, a droit, sous réservedes articles 38 et 40, d’en obtenirl’enregistrement à l’égard des produits ouservices spécifiés dans la demande, à moinsque, à la date de production de la demande,elle n’ait créé de la confusion : ""(

a) a trade-mark that had been previouslyused in Canada or made known in Canada byany other person; " "a)"" soit avec une marque de commerceantérieurement employée ou révélée auCanada par une autre personne; ""[Emphasis added] " "[Je souligne] " 2. Confusion with a registered trade-mark: Paragraph 12(1)(

d) of the Act states a trade-mark is registrable if, at the date of theDecision, see Park Avenue Furniture Corp. v Wickes/Simmons Bedding Ltd., (1991) (FCA), 130 NR 223(FCA) [Desjardins JA] [Park], it is not confusing with a registered trade-mark: When trade-mark registrable Marque de commerceenregistrable 12

(1) Subject to

section 13, atrade-mark is registrable if it isnot 12

(1) Sous réserve de l’article13, une marque de commerce estenregistrable sauf dans l’un oul’autre des cas suivants: … … (

d) confusing with a registeredtrade-mark;

d) elle crée de la confusion avecune marque de commercedéposée; [Emphasis added] [Je souligne] 3. Distinctiveness:

Section 2 of the Act is the general definition

section and requires a trade-mark be "“distinctive”" as at the date offiling of the opposition, see Metro-Goldwyn-Mayer Inc. v Stargate Connections Inc., 2004 FC 1185 [Simpson J] [Stargate]: "trade-mark means " "marque de commerce ""Selon le cas ""(

a) a mark that is used by a person for thepurpose of distinguishing or so as todistinguish goods or services manufactured,sold, leased, hired or performed by him fromthose manufactured, sold, leased, hired orperformed by others, " "

a) marque employée par une personne pourdistinguer, ou de façon à distinguer, lesproduits fabriqués, vendus, donnés à bail ouloués ou les services loués ou exécutés, parelle, des produits fabriqués, vendus, donnés àbail ou loués ou des services loués ouexécutés, par d’autres; ""… " "… ""(

c) a distinguishing guise, or " "c)"" signe distinctif; ""(d)"" a proposed trade-mark; (marque decommerce) " "d)"" marque de commerce projetée.(trade-mark) "

" [Emphasis added] " " [Je souligne] " B. Factors included in a confusion analysis [ 13 ] Subsection 6(5) of the Act provides an inclusive list of considerations to use to determine if a trade-mark is confusing. These will be reviewed in detail later in these Reasons. The list is inclusive, which means there may be other relevant circumstances: " When mark or name confusing " " Quand une marque ou un nom crée de la confusion " " 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 first mentioned trade-mark or trade- name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.

" " 6 (1) " " Pour l’application de la présente loi, une marque de commerce ou un nom commercial crée de la confusion avec une autre marque de commerce ou un autre nom commercial si l’emploi de la marque de commerce ou du nom commercial en premier lieu mentionnés cause de la confusion avec la marque de commerce ou le nom commercial en dernier lieu mentionnés, de la manière et dans les circonstances décrites au présent article. " " Idem " " Idem " "

(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 to lead to the inference that the goods or services associated with those trade- marks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.

" " (2) " " L’emploi d’une marque de commerce crée de la confusion avec une autre marque de commerce lorsque l’emploi des deux marques de commerce dans la même région serait susceptible de faire conclure que les produits liés à ces marques de commerce sont fabriqués, vendus, donnés à bail ou loués, ou que les services liés à ces marques sont loués ou exécutés, par la même personne, que ces produits ou ces services soient ou non de la même catégorie générale. " " … " " … " " What to be considered " " Éléments d’appréciation " " " "

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

(5) En décidant si des marques de commerce ou des noms commerciaux créent de la confusion, le tribunal ou le registraire, selon le cas, tient compte de toutes les circonstances de l’espèce, y compris : " " (

a) the inherent distinctiveness of the trade- marks or trade-names and the extent to which they have become known; " " a) " " le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus; " " (

b) the length of time the trade-marks or trade-names have been in use; " " b) " " la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage; " " (

c) the nature of the goods, services or business; " " c) " " le genre de produits, services ou entreprises; " " (

d) the nature of the trade; and " " d) " " la nature du commerce; " " (

e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them. " " e) " " le degré de ressemblance entre les marques de commerce ou les noms commerciaux dans la présentation ou le son, ou dans les idées qu’ils suggèrent. " " [Emphasis added] " " [Je souligne] " C. Related Gold Dispute [ 14 ] This case was heard by the TMOB and subsequently by this Court, together with another trade-mark dispute between the same parties involving not diamond jewellery, but gold jewellery [Related Gold Dispute].

The Related Gold Dispute concerns a trade-mark application for TRULY CANADIAN CERTIFED GOLD and Design (Application no. 1,593,806) filed by the same Applicant on September 12, 2014. It was opposed by the Respondent, primarily based on its registered CANADIAN CERTIFIED GOLD word mark and Design (TMA767318). The Related Gold Dispute in this Court is the subject of file number T-1491-17. [ 15 ] The TMOB rejected the Related Gold Dispute application, as it did with the present DIAMOND Mark applications. The Related Gold Dispute decision is appealed to this Court under

section 56 of the Act . The Court heard the Related Gold Dispute appeal together with the present appeal regarding the DIAMOND Marks. The Court is releasing judgment in the Related Gold Dispute at the same time judgment is released in the present case. Both appeals are being dismissed. D. TMOB proceedings

[ 16 ] Affidavit evidence was filed by both parties before the TMOB. The Applicant filed the affidavit of Ms. Elenita Anastacio (a trade- mark searcher with the agents for the Applicant) who provided trade-mark register evidence [Anastacio 2015 Affidavit]. The Respondent filed the affidavit of Ms. Diana Soare (Marketing Director of the Respondent) who provided considerable information about the use of the Respondent’s marks, its sales, advertisements and other information relating to the CORONA Marks [Soare 2015 Affidavit]. [ 17 ] The Soare 2015 Affidavit also attached a copy of the affidavit of Mr.

Giovanni Vaccaro (President of the Applicant) and exhibits thereto which the Applicant filed before the TMOB in the Related Gold Dispute. [ 18 ] There were no cross-examinations on the affidavits filed at the TMOB. [ 19 ] Written arguments were exchanged between the parties before the TMOB. After an oral hearing, the TMOB issued its Decision on July 31, 2017 and refused the applications based on confusion between the two proposed DIAMOND Marks and the GEOMETRIC Design mark: The TMOB found confusion under paragraph 12(1) (d), subsection 16(3) and

section 2 of the Act . [ 20 ] On the same day, the TMOB issued its Decision refusing to register the trade-mark requested in the Related Gold Dispute because of confusion under paragraph 12(1) (d), subsection 16(1) and

section 2 of the Act . E. Appeal to the Federal Court under

section 56 [ 21 ] On October 2, 2017, the Applicant filed a Notice of Application appealing the TMOB Decision to this Court under

section 56 of the Act . The Applicant filed a Notice of Application in the Related Gold Dispute on the same day. [ 22 ]

Section 56 creates a right of appeal, but with a special feature permitting the filing of additional evidence which, if found to be material and accepted, allows the Court to exercise any discretion vested in the Registrar. The parties agree additional new evidence must be material to be considered on a

section 56 appeal. Subsections 56(1) and 56(5) provide: " Appeal " " Appel " " 56

(1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.… " " 56 (1) " " Appel de toute décision rendue par le registraire, sous le régime de la présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui suivent la date où le registraire a expédié l’avis de la décision ou dans tel délai supplémentaire accordé par le tribunal, soit avant, soit après l’expiration des deux mois.… " " Additional evidence " " Preuve additionnelle " "

(5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar . " " (5) " " Lors de l’appel, il peut être apporté une preuve en plus de celle qui a été fournie devant le registraire, et le tribunal peut exercer toute discrétion dont le registraire est investi . " " [Emphasis added] " " [Je souligne] " [ 23 ] The Applicant filed four affidavits on its appeal to this Court namely: the affidavit of Mr. Vaccaro sworn April 30, 2018 [Vaccaro 2018 Affidavit], the affidavit of Ms.

Anastacio sworn May 1, 2018 [Anastacio 2018 Affidavit], and affidavits of two hired investigators Mr. Nicholas Tucker sworn April 30, 2018 [Tucker Affidavit], and Ms. Jennifer MacKinnon sworn April 30, 2018 [MacKinnon Affidavit]. [ 24 ] The Respondent also filed additional or new evidence on this appeal: the affidavits of Ms. Soare affirmed January 31, 2019 [Soare 2019 Affidavit] and Mr. Rosen affirmed January 31, 2019 [Rosen Affidavit]. [ 25 ] Mr. Vaccaro and Ms.

Soare were cross-examined on the affidavits filed in this Court. [ 26 ] The parties helpfully filed a joint record and joint book of authorities containing material relevant to the marks in this case, and to the Related Gold Dispute. The hearing of the appeal in the present case took place by ZOOM videoconference on March 15, 2021 and part of March 16, 2021 in Ottawa and Toronto. The hearing of the appeal in the Related Gold Dispute took place in the same format and places for the balance of March 16, 2021. II. Issues [ 27 ] The issues are: 1 .

What is the standard of review and legal methodology applicable to this case? 2 . Does the Applicant’s additional evidence meet the test for consideration? and

a) if the additional evidence meets the test for consideration, what is its proper assessment in the present appeal which will be decided on a de novo basis ? and

b) if the additional evidence does not meet the test for consideration, what is the proper determination of this appeal having regard

to tests for appellate review confirmed in Housen v Nikolaisen, 2002 SCC 33 [Housen], namely correctness for issues of law, andpalpable and overriding error for issues of fact, or mixed fact and law including issues where the legal principle is not readilyextricable. III. Standard of review on

section 56 appeals A. Housen v Nikolaisen, 2002 SCC 33 establishes two aspects of appellate review [28] The Supreme Court of Canada in Canada (Minister of Citizenship and Immigration) v Vavilov, 2019 SCC 65 [Vavilov] at para 37explains what is required of this Court when hearing statutory appeals, such as the current appeal under

section 56. Essentially Vavilovconfirms that on an appeal there are two appellate review standards, correctness for errors of law, and palpable and overriding error forquestions of fact and questions of mixed fact and law where the legal principle is not readily extricable as decided by Housen: [37] It should therefore be recognized that, where the legislature has provided for an appeal from an administrative decisionto a court, a court hearing such an appeal is to apply appellate standards of review to the decision.

This means that theapplicable standard is to be determined with reference to the nature of the question and to this Court’s jurisprudence onappellate standards of review. Where, for example, a court is hearing an appeal from an administrative decision, it would, inconsidering questions of law, including questions of statutory

interpretation and those concerning the scope of a decisionmaker’s authority, apply the standard of correctness in accordance with Housen v. Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R.235, at para. 8. Where the scope of the statutory appeal includes questions of fact, the appellate standard of review for thosequestions is palpable and overriding error (as it is for questions of mixed fact and law where the legal principle is not readilyextricable): see Housen, at paras.10, 19 and 26-37.

Of course, should a legislature intend that a different standard of reviewapply in a statutory appeal, it is always free to make that intention known by prescribing the applicable standard throughstatute. [Emphasis added] [29] To the same effect is the recent Federal Court of Appeal judgment in The Clorox Company of Canada, Ltd. v Chloretec S.E.C., 2020FCA 76 [de Montigny JA] [Clorox]: "23 As a result, from now on, it is the Supreme Court’s jurisprudence on appellate standards of review (and ""in particular""Housen v.

Nikolaisen"", ""2002 SCC 33"", ""[2002] 2 S.C.R. 235 (S.C.C.)"" [Housen]"") that both the Federal Court andthis Court should apply when dealing with an appeal under subsection 56(1) of the Act. I note that it is, indeed, the standardwhich the Federal Court has applied in what appears to be the only reported case so far involving an appeal under the regimeof the Act: see, Pentastar Transport Ltd. v. FCA US LLC, ""2020 FC 367"" (F.C.) at paras. ""42-45"".

For questions of factand mixed fact and law (except for extricable questions of law), the applicable standard is therefore that of the “palpable andoverriding error”. For questions of law, the standard is correctness. " "[Emphasis added] " B. What is meant by palpable and overriding error for questions of fact and mixedfact and law [30] If this Court finds an issue is a question of fact or mixed fact and law, it will review that issue on the appellate standard of palpableand overriding error.

Justice Stratas in Canada v South Yukon Forest Corporation, 2012 FCA 165 [South Yukon] explains what theApplicant must show to establish a palpable and overriding error in an appeal (also to be discussed later in these Reasons): [46] Palpable and overriding error is a highly deferential standard of review: H.L. v. Canada (Attorney General), 2005 SCC25, [2005] 1 S.C.R. 401; Peart v. Peel Regional Police Services (2006) (ON CA), 217 O.A.C. 269(C.A.) at paragraphs 158-59; Waxman, supra. “Palpable” means an error that is obvious. “Overriding” means an error thatgoes to the very core of the outcome of the case.

When arguing palpable and overriding error, it is not enough to pull atleaves and branches and leave the tree standing. The entire tree must fall. [Emphasis added] [31] This description of palpable and overriding error has been adopted by both the Federal Court and Federal Court of Appeal.

See mostrecently: Spectrum Brands, Inc. v Schneider Electric Industries SAS, 2021 FCA 51 [LeBlanc JA] at para 7; Apotex Inc. v Janssen Inc.,2021 FCA 45 [Locke JA] at para 44; Dixon v TD Bank Group, 2021 FC 101 [Norris J] at para 8. [32] The Federal Court of Appeal in Clorox also addressed the palpable and overriding error standard of review for errors of fact andmixed fact and law in a

section 56 appeal: "[38] The appellant now asks this Court to reweigh the evidence and to come to a different conclusion than that reached bythe TMOB and the Federal Court. This is a steep hill to climb, considering that on questions of fact and of mixed fact andlaw, the standard of review is the standard of palpable and overriding error. In other words, the appellant must convince thisCourt that the Federal Court made an error that is obvious and that goes to the very core of the outcome of the ""case:""Canada v. South Yukon Forest Corporation"", ""2012 FCA 165"" at para. ""46"", ""431 N.R. 286"".

This is an evenmore deferential standard of review than the standard of reasonableness applied by the Federal Court. " "[Emphasis added] "

C. Questions of law are to be reviewed on a standard of correctness [33] Appellate review of questions of law, including readily extricable errors of law, are conducted on the standard of correctness. This isexplained by the Supreme Court of Canada in Housen: 8. On a pure question of law, the basic rule with respect to the review of a trial judge’s findings is that an appellate court isfree to replace the opinion of the trial judge with its own. Thus the standard of review on a question of law is that ofcorrectness: Kerans, supra, at p. 90. [Emphasis added] D. Tests for additional or new evidence

(1) What is material new evidence? [34] As noted, six affidavits were filed in this appeal, four from the Applicant and two from the Respondent. However, not all allegedlynew evidence is considered on an appeal under

section 56. The jurisprudence establishes new or additional evidence filed on a

section 56appeal is only considered if it is "“material”", a word not defined in the Act. However, both the Federal Court of Appeal and this Courthave addressed the meaning of material evidence in the following cases. [35] Justice de Montigny in Clorox recently confirmed that to be material, new evidence under

section 56 must be "“sufficientlysubstantial and significant”" and "“of probative value”": "21 When the new evidence is found to be material — which has been interpreted to mean “sufficiently substantial andsignificant” (Levi Strauss & Co. v. Vivant Holdings Ltd., ""2005 FC 707"" (F.C.) at para. ""27"", (2005), 276 F.T.R. 40(F.C.)) and of “probative value” (Tradition Fine Foods Ltd. c. 3102-6636 Québec Inc., ""2006 FC 858"" (F.C.) at para.""58"", (2006), 51 C.P.R. (4th) 342 (F.C.)) — subsection 56(5) of the Act states that the Federal Court “may exercise anydiscretion vested in the Registrar”.

This is in the nature of an appeal de novo and calls for the correctness standard. ""In""Vavilov"", the Supreme Court was clear that reasonableness is the presumptive standard of review when a court reviewsthe merits of an administrative decision. Such a presumption will be rebutted, however, when the legislature has clearlysignalled that a different standard should apply. This is precisely what subsection 56(5) does, and I see no reason not to giveeffect to this legislative intent.

" "[Emphasis added] " [36] See also Vivat Holdings Ltd v Levi Strauss & Co, 2005 FC 707 [Vivat] [Layden-Stevenson J] which requires new evidence to besufficiently substantial and significant, of probative significance, and not merely supplemental or repetitive of existing evidence: "[27] To affect the standard of review, the new evidence must be sufficiently substantial and significant.

If the additionalevidence does not go beyond what was in substance already before the board and adds nothing of probative significance, butmerely supplements or is merely repetitive of existing evidence, then a less deferential standard is not warranted. The test isone of quality, not quantity: Garbo Group Inc. v. Harriet Brown & Co. ""(1999), "" "" (FC), ""3 C.P.R. (4th) 224 (F.C.T.D)""; Canadian Council of Professional Engineers v. APA – Engineered Wood Assn. ""(2000), "" "" (FC), ""7 C.P.R. (4th) 239 (F.C.T.D.)""; Mattel, Inc. v. 3894207 Canada Inc. ""(2004), ""2004 FC 361 "", ""30 C.P.R. (4th) 456 (F.C.)"".

" "[Emphasis added] " [37] The Federal Court of Appeal in Seara Alimentos Ltda. v Amira Enterprises Inc., 2019 FCA 63 [Seara] [Gauthier JA] at paras 23 –25 confirms only evidence that would have materially affected the TMOB’s findings of fact or the exercise of its discretion, is material.Materiality is a preliminary test to determine if, on appeal, this Court will have to reassess the evidence on a given issue. This test cannotand should not involve such a reassessment up front to determine if it would ultimately change the result or outcome.

The materiality testaddresses the significance and probative value of the new evidence. If the proffered evidence merely supplements or confirms thefindings of the TMOB, it cannot be said to be "“material”" enough to warrant being admitted. The additional evidence must not berepetitive and should enhance the overall cogency of the evidence on the record.

The Court in Seara put the question this way: could thenew evidence, because of its significance and probative value, have had a bearing on a finding of fact or the exercise of discretion of theTMOB? [23] As mentioned, the test for admitting new evidence pursuant to subsection 56(5) of the Act has been formulated aswhether the additional evidence adduced in the Federal Court “would have materially affected the Registrar’s findings offact or the exercise of his discretion” (Molson Breweries at para. 51, per Rothstein J.A.). The use of “would have” must beunderstood in its proper context.

It is a preliminary test to determine if, on appeal, the Federal Court will have to reassess theevidence on a given issue. This test therefore cannot and should not involve such a reassessment up front to determine if itwould ultimately change the result or outcome. This is why in the formulation of the test in French the “would have” hasbeen consistently translated as “aurait pu avoir” (see e.g. Rogers Communications Inc. c. Society of Composers, Authors andMusic Publishers of Canada, 2012 CSC 35 at para. 71; Pizzaiolo Restaurants inc. C.

Les Restaurants La Pizzaiolle inc.,2016 CAF 265 at para. 2; Brasseries Molson c. John Labatt Ltée, (FCA), [2000] 3 C.F. 145 at para. 51(C.A.)). [24] Furthermore, it is well understood that the materiality test addresses the significance and probative value of the newevidence. If the proffered evidence merely supplements or confirms the findings of the TMOB, then it cannot be said to be

“material” enough to warrant being admitted (see U-Haul International Inc. v. U Box It Inc., 2017 FCA 170 at para. 26). Tobe “material”, the additional evidence must not be repetitive and should enhance the overall cogency of the evidence on therecord (Cortefiel, S.A. v.

Doris Inc., 2013 FC 1107 at para. 33, aff’d 2014 FCA 255; see also Servicemaster Company v.385229 Ontario Ltd. (Masterclean Service Company), 2015 FCA 114 at paras. 23-24). [25] The question is thus: could this new evidence, because of its significance and probative value, have had a bearing on afinding of fact or the exercise of discretion of the TMOB?

In other words – in the context of the confusion analysis in thiscase – could this evidence lead to a different conclusion in respect of one or more of the factors set out in subsection 6(5) ofthe Act and the balancing underpinning the conclusion as to whether confusion was likely? [Emphasis added] [38] The following jurisprudence gives further guidance on whether new evidence is material: (

i) Justice de Montigny, as he then was, in Hawke & Company Outfitters LLC v Retail Royalty Company, 2012 FC 1539 [Hawke]held material evidence is not that which pertains to facts posterior to the relevant material date, or which merely supplements orconfirms earlier findings: [31] It is well established that when additional evidence is filed, the test is “one of quality, not quantity”: see CanadianCouncil of Professional Engineers v APA – The Engineered Wood Assn, (FC), [2000] FCJ no 1027(QL), 7 CPR (4th) 239 (FC) at para 36; Wrangler Apparel Corp v Timberland Co, 2005 FC 722 at para 7.

Evidence thatmerely supplements or confirms earlier findings, or which pertains to facts posterior to the relevant material date, will beinsufficient to displace the deferential standard of reasonableness. [Emphasis added] (ii) Justice LeBlanc, as he then was, followed Justice de Montigny in Kabushiki Kaisha Mitsukan Group Honsha v Sakura-NakayaAlimentos Ltda., 2016 FC 20 [Kabushiki] and also held new evidence that merely supplements or confirms earlier findings, orwhich pertains to facts posterior to the relevant material date, is not material: [19] … In other words, evidence that “merely supplements or confirms earlier findings, or which pertains to facts posteriorto the relevant material date” is not sufficient to displace the burden.

Moreover, the test is “one of quality, not quantity”(Canadian Council of Professional Engineers v Apa – The Engineered Wood Assn, (FC), [2000] 184FTR 55, at para 36, 7 CPR (4th) 239; Timberland Co v Wrangler Apparel Corp, 2005 FC 722, at para 7, 272 FTR 270). [Emphasis added] [39] In

summary, new evidence may be material if it is sufficiently substantial and significant and of probative value (Clorox at para 21;Seara at para 24; Vivat at para 27). The evidence must be that which would have materially affected the Registrar’s findings of fact orexercise of discretion (as explained in Seara at para 23). It must not merely supplement or confirm earlier evidence (Seara at para 24;Vivat at para 27; Hawke at para 31; Kabushiki at para 19), must not pertain to facts posterior to the relevant material date (Hawke at para31; Kabushiki at para 19), and must not be repetitive (Seara at para 24).

The test for materiality is one of quality not quantity (Vivat atpara 27; Hawke at para 31; Kabushiki at para 19) and it should enhance the overall cogency of the evidence on the record (Seara at para24). The question is "“could this new evidence, because of its significance and probative value, have had a bearing on a finding of fact orthe exercise of a discretion of the TMOB?”" (Seara at para 25). E. Material dates [40] Material new evidence is to be assessed as of certain material dates.

The parties agree on the material dates for each ground ofopposition: Subsection 16(3): the material date for confusion with a trade-mark previously known or made known is established in subsection16(3) of the Act itself as "“at the date of filing of the application.”" I will refer to this as the material date of filing. In this case thematerial date of filing is February 22, 2013;

Section 2: the material date for distinctiveness of the trade-mark is the date of filing of the opposition, see Stargate, in this caseJanuary 8, 2015; Paragraph 12(1)(d): the material date for confusion with a registered trade-mark is the date of the Decision of the TMOB, seePark, in this case July 31, 2017. F. Analysis of materiality of new evidence under subsection 16(3) of the Act [41] Because it has the earliest of the three material dates, I will first assess the materiality of the new evidence in terms of subsection16(3) and do so as of its material date, namely February 22, 2013.

As will be seen, I find none of the new evidence to be material.Therefore I will proceed to conduct an appellate review based on subsection 16(3). Because I found the Respondent succeeded undersubsection 16(3) it became unnecessary to conduct additional appellate review under either paragraph 12(1)(

d) or

section 2 of the Act.Subsection 16(3) provides: "Proposed marks " "Marques projetées "

" 16(3) Any applicant who has filed an application in accordance with

section 30 for registration of a proposed trade-mark that is registrable is entitled, subject to sections 38 and 40, to secure its registration in respect of the goods or services specified in the application, unless at the date of filing of the application it was confusing with " " 16(3) " " Tout requérant qui a produit une demande selon l’article 30 en vue de l’enregistrement d’une marque de commerce projetée et enregistrable, a droit, sous réserve des articles 38 et 40, d’en obtenir l’enregistrement à l’égard des produits ou services spécifiés dans la demande, à moins que, à la date de production de la demande, elle n’ait créé de la confusion : " " (

a) a trade-mark that had been previously used in Canada or made known in Canada by any other person; " " a) " " soit avec une marque de commerce antérieurement employée ou révélée au Canada par une autre personne; " " [Emphasis added] " " [Je souligne] " [ 42 ] It may be useful to repeat the

summary of jurisprudence on material evidence determined above. New evidence may be material if it is sufficiently substantial and significant and of probative value ( Clorox at para 21 ; Seara at para 24 ; Vivat at para 27). The evidence must be such that it would have materially affected the Registrar’s findings of fact or exercise of discretion (as explained in Seara at para 23 ). It must not merely supplement or confirm earlier evidence ( Seara at para 24 ; Vivat at para 27; Hawke at para 31 ; Kabushiki at para 19 ).

It must not pertain to facts posterior to the relevant material date ( Hawke at para 31 ; Kabushiki at para 19 ), and must not be repetitive ( Seara at para 24 ).

The test for materiality is one of quality not quantity ( Vivat at para 27; Hawke at para 31 ; Kabushiki at para 19 ) and it should enhance the overall cogency of the evidence on the record ( Seara at para 24 ). [ 43 ] At this point, the Court will conduct a preliminary analysis in respect of which the question is: " “could this new evidence, because of its significance and probative value, have had a bearing on a finding of fact or the exercise of a discretion of the TMOB?” " ( Seara at para 25 ). [ 44 ] In the following analysis, I find almost all of the Applicant’s additional evidence fails to meet the test of materiality per subsection 16(3) because it pertains to facts posterior to the date of filing, contrary to Hawke at para 31, Kabushiki at para 19 and subsection 16(3) itself.

It should be noted such alleged new evidence might have been relevant to submissions under

section 2 and paragraph 12(1) (d). However, because the Applicant fails under subsection 16(3), these additional grounds will not be considered further.

(1) Vaccaro 2018 Affidavit filed by the Applicant [ 45 ] I will now examine the alleged new evidence in light of the foregoing starting with the Vaccaro 2018 Affidavit filed in this Court. I note Mr. Vaccaro did not file an affidavit before the TMOB regarding these two applications; however, he filed an affidavit before the TMOB in the Related Gold Dispute.

That affidavit was before the TMOB in this proceeding as an exhibit to the Soare 2015 Affidavit filed by the Respondent at the TMOB; no objection was taken before the TMOB or this Court. [ 46 ] The Applicant submits the Vaccaro 2018 Affidavit consists of substantive new evidence addressing the TMOB’s refusal of the two applications. The Respondent disputes the materiality of the Applicant’s new evidence to the subsection 16(3) analysis, submitting all his evidence pertains to facts after or posterior to the material date and is therefore inadmissible.

The material date under subsection 16(3) is the date of filing of the application, February 22, 2013. [ 47 ] To recall, the subsection 16(3) analysis asks whether a proposed trade-mark is confusing with a trade-mark previously used in Canada or made known in Canada. If it is, the Applicant is not entitled to register the proposed marks: " Proposed Marks " " Marques projetées " " 16(3) Any applicant who has filed an application in accordance with

section 30 for registration of a proposed trade-mark that is registrable is entitled , subject to sections 38 and 40, to secure its registration in respect of the goods or services specified in the application, unless at the date of filing of the application it was confusing with " " 16(3) " " Tout requérant qui a produit une demande selon l’article 30 en vue de l’enregistrement d’une marque de commerce projetée et enregistrable, a droit, sous réserve des articles 38 et 40, d’en obtenir l’enregistrement à l’égard des produits ou services spécifiés dans la demande, à moins que, à la date de production de la demande, elle n’ait créé de la confusion : " " (

a) a trade-mark that had been previously used in Canada or made known in Canada by any other person ; " " a) " " soit avec une marque de commerce antérieurement employée ou révélée au Canada par une autre personne; " " [Emphasis added] " " [Je souligne] " [ 48 ] The Vaccaro 2018 Affidavit provides allegedly new evidence under a number of headings. Mr. Vaccaro first explained his role as the President of the Applicant, explained his day-to-day responsibilities, and outlined his knowledge of the business, which puts him in the position to provide an affidavit about the business.

He then provided the following information: 1. Background of the Applicant (paras 4 – 8; 24 - 25) : Mr. Vaccaro explains the business background of the Applicant including its creation and Mr. Vaccaro’s role and responsibilities in the business. He also states the Applicant’s position in the market as a manufacturer that often incorporates diamonds and gold originating from Canada in its jewellery, its size including number of staff, and trade publications in which the Applicant was featured.

For the most part this is not controversial, but that changes when he speaks of events after February 22, 2013 the date of filing his two applications. Mr. Vaccaro also states the Applicant " “sells its products to end users in Canada through a network of over 1,000 retailers across Canada, including retailers in 10 provinces and 2 territories” " . The Applicant said during oral submissions this information is of probative value because of the business content it

provides. I am not persuaded. In my view and on a preliminary assessment based on subsection 16(3), this evidence is not material because is pertains to facts posterior to the material date of filing which was February 22, 2013. For example, when Mr. Vaccaro says the Applicant " “sells its products to end users in Canada through a network of over 1,000 retailers across Canada” " , he uses the present tense to describe the situation as of April 30, 2018 when his affidavit was sworn. However, that was more than five years after the two applications at issue in this appeal were filed.

Therefore, this and other sales information pertaining to sales after the date of filing is not material because it pertain to facts posterior to the material filing date of February 22, 2013 per Hawke at para 3, Kabushiki at para 19, and subsection 16(3) itself. Trade-mark applications and registrations (paras 9 - 10) : The Vaccaro 2018 Affidavit lists and exhibits trade-marks owned by the Applicant with printouts of their registrations. The Applicant submits this information is of probative value. With respect, I disagree.

In my view on a preliminary assessment for the purposes of subsection 16(3), this new evidence merely supplements or confirms evidence already before the TMOB, which is not material new evidence per Seara at para 24, Vivat at para 27, Hawke at para 31, and Kabushiki at para 19 . I say this because the Applicant put this evidence before the TMOB in the previous affidavit of Ms. Anastacio dated October 26, 2015. The new information is not proper additional material new evidence essentially because it is not new or significant. 3. Adoption of the DIAMOND Marks in Canada (paras 11 - 17) : Mr.

Vaccaro explains the Applicant planned in late 2011 to launch a collection of jewellery with diamonds originating in Canada. Mr. Vaccaro explains the background of the DIAMOND Marks and states he created the design element of the DIAMOND Marks in September 2012 as a combination of the maple leaf, fire and ice. He exhibited his initial sketches. Mr. Vaccaro says the Applicant applied to register the FIRE AND ICE CANADIAN DIAMOND word mark on October 3, 2012, which was registered on March 26, 2014 with no opposition.

He says the Applicant also filed its application to register the composite DIAMOND Marks on February 22, 2013, registration of which were opposed by the Respondent. Mr. Vaccaro explained how the Applicant expanded its collection, and applied to register the word trade-mark FOREVER ICE CANADIAN DIAMOND on March 6, 2013, which was registered on June 4, 2014. In my view, additional evidence is not material because it pertains to facts posterior to the material filing date of February 22, 2013 per Hawke at para 3, Kabushiki at para 19, and subsection 16(3) itself.

The Applicant submitted during the oral hearing this evidence is relevant because it shows the design and drawing of the DIAMOND Marks before the filing and while a small portion of it does (date of creation for example), in my view this is not material. It is not disputed that the Applicant’s proposed word and design DIAMOND Marks were not used in association with the previously registered word marks at any time before or at the material date of filing of February 23, 2013; rather the purpose of the two applications was to obtain registrations for " “proposed” " word marks and design.

I do not see this evidence as relevant or probative under subsection 16(3). It is also common ground the DIAMOND Marks were created well after the CORONA Marks started being used in Canada which started in 2004. I note Corona’s GEOMETRIC Design mark was registered November 20, 2006, and Corona’s word mark MAPLE LEAF DIAMOND was registered May 22, 2007.

On this preliminary assessment, I am unable to see this alleged new evidence as sufficiently substantial, significant and probative because in my view it could not have had a bearing on a finding of fact or the exercise of a discretion of the TMOB under subsection 6(5). 4. Use of the DIAMOND Marks in Canada (paras 18 - 23) : Mr. Vaccaro states the Applicant has used the FIRE AND ICE CANADIAN DIAMOND and Design mark since as early as June 2013, when it was launched at a tradeshow. Mr.

Vaccaro includes sample promotional material and images of the Applicant’s website promoting its marks over a number of years that customers had access to since June 2013. The Respondent submits, and with respect, I agree none of this evidence is material for the purpose of subsection 16(3) because all this evidence pertains to facts posterior to the material date of filing the applications namely February 23, 2013. Parliament established the material date for proposed mark registrations such as this, as " “the date of filing of the application” " and did so in subsection 16(3).

The circumstances in Scott Paper Ltd v Georgia Pacific Consumer Products LP , 2010 FC 478 [ Scott ] [O’Keefe J] relied upon by the Applicant to say new evidence can be considered, are very different because in Scott there was no evidence of the state of the marketplace such that the Court was persuaded to look at evidence a year later. I note the Court in Scott referred to such ‘after the filing date evidence’ as circumstantial.

Here, no such inference may be drawn; the evidence is unequivocal that there was no use whatsoever of the proposed trade-marks and design at the material date, i.e., the date of filing the applications on February 23, 2013. Indeed, there was no such use until - at the very least - some four months after the filing date, i.e., in June 2013. This evidence fails to meet the test of materiality because it pertains to facts posterior to the filing date and therefore is not material per Seara at para 24, Hawke at para 31, Kabushiki at para 19 and subsection 16(3) itself. Catalogues and displays (paras 26 - 31) : Mr.

Vaccaro provides a sample catalogue provided to retailers and states the FIRE AND ICE CANADIAN DIAMOND and Design mark appears prominently with goods with unique style numbers in brochures and catalogues provided to retailers, and other information. The fact is all this evidence pertains to facts posterior to the relevant date, i.e., the filing date per subsection 16(3).

In my respectful view, on a preliminary assessment, this evidence is not material new evidence because to the extent it deals with events and activities and pertains to facts posterior to the relevant date, it may not be considered material new evidence per Hawke at para 31, Kabushiki at para 19, and subsection 16(3). Sale of the Applicant’s goods (paras 32 - 34) : Mr. Vaccaro states among other things that goods in association with the FIRE AND ICE CANADIAN DIAMOND and Design mark comprise over 50% of all goods in its catalogue.

In my view, on a preliminary assessment and based on subsection 16(3), all of this sales activity involving the proposed trade-marks pertains to facts posterior to the relevant date, namely the date of filing of the applications and may not be considered material new evidence per Hawke at para 31, Kabushiki at para 19, and of course per subsection 16(3) itself. Promotion of the DIAMOND Marks in Canada (paras 35 - 36) : Mr. Vaccaro states since June 2013 the Applicant has promoted the FIRE AND ICE CANADIAN DIAMOND and Design mark in Canada.

He says the fact the goods are made in Canada by Canadians is very important to the Applicant – something emphasized in promotional materials and advertisements and by the retailers when selling the Applicant’s goods to customers. While he makes other statements, in my view all this activity involved the proposed trade-marks after the relevant date of filing.

In my respectful view, on a preliminary assessment and under the subsection 16(3) ground of appeal, this evidence is not material because it deals with events and activities and pertains to facts posterior to the relevant date namely the date of filing; it may not be considered material new evidence per Hawke at para 31,

Kabushiki at para 19 and subsection 16(3). Brochures and flyers (paras 37 - 50) : Mr. Vaccaro states the Applicant creates, publishes and circulates a variety of brochures, catalogues and flyers throughout the year which promote the DIAMOND Marks in association with its goods – during the Valentines’ Day season, the Spring season, and the Christmas season. The Respondent submits this information is not material because it is the same type of information already considered by the TMOB. I agree. This may be seen by comparing the Vaccaro 2018 Affidavit with the affidavit of Mr.

Vaccaro for the Related Gold Dispute as exhibited in the Soare 2015 Affidavit before the TMOB in these proceedings. I have reviewed both and in my preliminary view, the information is substantially similar. Therefore, it is not material because it supplements in a minor way and is repetitive of the evidence below, contrary to Seara at para 24 . In addition, none of this activity involves the proposed trade-marks under appeal before or at the relevant date.

It is all evidence that pertains to facts posterior to the relevant material date and may not be considered material new evidence on a subsection 16(3) appeal per Hawke at para 31, Kabushiki at para 19 and subsection 16(3) of the Act . Magazine advertisements (paras 51 - 55) : Mr. Vaccaro says since 2013 the Applicant has promoted the DIAMOND Marks in association with its goods through print and online magazine advertisements. Mr. Vaccaro says how many individuals on average the various jewellery magazines reach, their demographics and provides samples of the advertisements and invoices.

Again, on this preliminary assessment, this activity involving the proposed trade-marks pertains to facts posterior to the relevant date, namely the date of filing the registrations per subsection 16(3). Therefore, it may not be considered material new evidence on a subsection 16(3) ground of appeal per Hawke at para 31, Kabushiki at para 19 and subsection 16(3) . Website and social media promotion (paras 56 - 58) : Mr.

Vaccaro states since at least 2016, the Applicant has promoted the DIAMOND Marks in association with its goods on social media accounts and its websites and since 2018 has used a business-to- business portal to promote the goods to retailers. Once again, on a preliminary assessment, all of this activity involving the proposed trade-marks pertains to facts posterior to the relevant date of filing the applications and may not be considered material new evidence on a subsection 16(3) ground of appeal per Hawke at para 31, Kabushiki at para 19 and subsection 16(3) itself. Sponsorships (paras 59 - 61) : Mr.

Vaccaro states since 2014, the Applicant has sponsored the Jewellers’ Golf Tournament and the Jewellers’ Ball. The Applicant also offers the Giovanni Vaccaro Family Scholarship since 2013. Once again, all this activity involved the proposed trade-marks after the relevant material date of filing, and therefore is not material new evidence under a subsection 16(3) ground of appeal because of Hawke at para 31, Kabushiki at para 19 and subsection 16(3) . Exhibitions and tradeshows (paras 62 - 64) : Mr.

Vaccaro states the Applicant has attended and promoted its goods at a number of jewellery exhibitions and tradeshows in Canada and provides a list of tradeshows attended and says the DIAMOND Marks have been promoted since June 2013. However, this and other related information provided by Mr. Vaccaro pertains to facts posterior to the relevant filing date for these proposed trade-marks and as such is not material new evidence on a subsection 16(3) ground of appeal per Hawke at para 31, Kabushiki at para 19, and subsection 16(3) . Promotional expenditures (para 65) : Mr.

Vaccaro says the Applicant has spent well in excess of $200,000 per year on promotion and advertisement of the DIAMOND Marks in association with the goods, and goes into other related details. However, all this evidence pertains to facts posterior to the material date of filing the applications. Thus on a preliminary assessment, it is not material new evidence under a subsection 16(3) ground of appeal and may not be considered per Hawke at para 31, Kabushiki at para 19 and subsection 16(3) . Instances of confusion (para 66) : Mr.

Vaccaro states, as President of the Applicant, any questions regarding confusion of the DIAMOND Marks as a brand would be ultimately directed to him. Essentially, he says that because he heard no complaints about confusion, and was not aware of any instances of confusion on the part of any customer or retailer, there was no evidence of confusion. However, on a preliminary assessment, all this evidence pertains to facts posterior to the date of filing the applications, i.e., February 23, 2013.

This is not surprising because the Applicant concedes it did not use the proposed marks until four months after the material date of filing its two applications. In my view, this evidence once again pertains to facts posterior to the material date of filing the applications, and is therefore not material new evidence and may not be considered under a subsection 16(3) ground of appeal per Hawke at para 31, Kabushiki at para 19, and subsection 16(3) .

(2) Tucker Affidavit and MacKinnon Affidavit filed by the Applicant [ 49 ] Both the Tucker and MacKinnon Affidavits provide evidence of shop-in-shop retail displays gathered by private investigations conduct January 22-23, 2018 and April 26, 2018 in Ontario and British Columbia, respectively. However, all this information was gathered well after the material date for a subsection 16(3) ground of appeal, namely the date of filing the applications.

Thus, on a preliminary assessment, this alleged new evidence is not material on a subsection 16(3) ground of appeal because it is evidence that pertains to facts posterior to the material date of filing the applications, which is not material per Hawke at para 31 , and Kabushiki at para 19 and subsection 16(3) itself.

(3) Anastacio 2018 Affidavit filed by the Applicant [ 50 ] The Anastacio 2018 Affidavit provides information on the state of the trade-mark register through exhibiting results of searches conducted on May 1, 2018 for trade-marks covering the terms " “maple” " and " “leaf” " in association with " “jewel*” " , " “gold*” " and " “diamond*” " covering class 14 goods from the International Nice Classification and related marks.

The Respondent submits, and I agree this evidence is not material for any ground of opposition, including subsection 16(3) , because it is the same type of evidence thus repetitive, of what was before the TMOB. I say this because in 2015, Ms. Anastacio filed a similar affidavit before the TMOB containing similar information.

Such repetitive evidence offends Seara at para 24 ; it is not new. [ 51 ] In addition, the Anastacio 2015 Affidavit concerned a search dated July 23, 2015 for trade-marks in association with the terms " “maple” " and " “leaf” " and " “diamond” " covering the same class 14 goods from the International Nice Classification and related marks. The Anastacio 2018 Affidavit contains new evidence based on a search conducted as at May 1, 2018. However, the 2018 search was

conducted more than five years after the material date, was not focussed on the date of filing the applications, and obviously contains evidence that " “pertains to facts posterior to the relevant material date” " , which as we have seen, is not material on a subsection 16(3) ground of appeal per Hawke at para 31, Kabushiki at para 19 and subsection 16(3) itself.

On a preliminary assessment, I am not persuaded this new evidence could, because of its significance and probative value, have had a bearing on a finding of fact or the exercise of a discretion of the TMOB per Seara at para 25 . [ 52 ] I will next review the new evidence filed by the Respondent, which consisted of two affidavits, one of Ms. Soare in her capacity as the Respondent’s Marketing Director, and another of a lawyer and former articling student of the Respondent’s counsel.

(4) Soare 2019 Affidavit filed by the Respondent [ 53 ] In its memorandum and in oral argument, the Applicant relied upon some parts of the Soare 2019 Affidavit, which I will review for materiality: 1 . CORONA Marks : The Applicant relies on a statement made by Ms. Soare during cross-examination: " “the logo wants to kind of resemble two things, a maple leaf and facets of a diamond” " . The Applicant submits the Respondent asked for the logo to be designed in a way that the leaf resembled a diamond. Indeed, the designer of the GEOMETRIC Design called the mark the " “Canadian Maple Diamond” " .

The Applicant says this shows the GEOMETRIC Design was designed to resemble both a maple leaf and a diamond to convey the idea of a Canadian diamond, a point the Applicant made in its memorandum. While confirming what the Applicant argued in its memorandum, in my view Ms. Soare’s statement also confirms what the TMOB found in this case. The Decision states: " “these elements, the Opponent submits heighten the likelihood of confusion in that they reinforce the idea suggested by the design element, namely, the idea of a Canadian (maple leaf) diamond that has been mined in the icy north of the country.

The Opponent submits that this is the same idea suggested by its CORONA Marks.” " The Respondent’s position was that its GEOMETRIC Design represented both a diamond and Canada. In my respectful view, the evidence supports the Respondent’s position, and confirms a finding of the TMOB.

It could not likely assist the Applicant’s request to reverse the Decision under appeal: it is not material new evidence because it is neither sufficiently substantial and significant nor of probative value such that it could have had a bearing on a finding of fact or the exercise of a discretion of the TMOB per Seara at para 25 . 2 . First use : The Applicant, in its written submissions, relies on evidence of first use of the CORONA Marks and then criticizes its accuracy. The Applicant alleges Ms.

Soare attested to the use of the CORONA Marks as early as 2003 but did not specify with which goods the marks were used or when the GEOMETRIC Design was first used. In my view, this evidence is not material new evidence because it is repetitive of the Soare 2015 Affidavit in which Ms. Soare provided the TMOB with essentially the same evidence of use of the CORONA Marks as early as January 2003.

It is, on a preliminary analysis, not new evidence but evidence already before and considered by the TMOB: it is repetitive or supplementary evidence that is not material under a subsection 16(3) ground of appeal per Seara at para 24 . 3 . Tradeshows : Ms. Soare provides information about tradeshows attended by the Respondent and states the Applicant has been in very close proximity to the Respondent in some of the tradeshows. In cross-examination, Ms.

Soare says booth locations at tradeshows are a negotiation between the exhibitor and the owner of the show and each exhibitor wants to get a prime location based on traffic. The Applicant submits this information is material; however I am not persuaded this evidence could assist the Applicant on its appeal per subsection 16(3) because it pertains to facts posterior to the material filing date and is therefore not material new evidence under a subsection 16(3) ground of appeal per Hawke at para 31 , and Kabushiki at para 19 , and subsection 16(3) itself. 4 . Shop-in-shops : Ms.

Soare states the Respondent installed its first shop-in-shop in May 2010 and lists the number of retailer locations in which the Respondent has placed a shop-in-shop. This information is also in the Soare 2015 Affidavit however, the total current number of shop-in-shops has been updated.

The Applicant submits this information is material; however once again I am not persuaded this evidence could assist the Applicant on its appeal on a subsection 16(3) ground of appeal because this evidence pertains to facts posterior to the material filing date and is not material new evidence under a subsection 16(3) ground of appeal per Hawke at para 31 , and Kabushiki at para 19 and subsection 16(3) . 5 . Evidence of confusion : Ms.

Soare provides photos from Instagram from the account of Jewel De Oro, a Canadian jeweller, taken on December 22, 2017 where earrings resting on the DIAMOND Marks was tagged as one of the Respondent’s Instagram handles. While effort was expended by counsel on this alleged instance of confusion in the marketplace, this is simply more evidence of activity that arose four years after the material filing date under subsection 16(3) and therefore is not material new evidence under a subsection 16(3) ground of appeal per Hawke at para 31, Kabushiki at para 19, and subsection 16(3) itself.

(5) Rosen Affidavit filed by the Respondent [ 54 ] The Rosen Affidavit contains evidence of other trade-marks that have FIRE and ICE elements that were considered distinctive. This evidence was obtained from the Canadian Trademarks Database portion of the Canadian Intellectual Property Office website and from third-party websites.

The Respondent, in its written submissions states the Rosen Affidavit is evidence of use as reported by third parties of the words FIRE and ICE such as: " “GLACIER FIRE used with Canadian-mined diamonds; FIRE OF THE NORTH used with Canadian-mined diamonds; HEARTS ON FIRE used with diamonds; POLAR FIRE used with Canadian-mined diamonds; NORDIC FIRE used with Canadian-mined diamonds; WHITEICE used with diamond jewellery; FIRENICE used with jewellery” " .

The Applicant in its memorandum argued this evidence was not admissible because it was from third-party websites and is hearsay because the truth of its contents cannot be verified.

The Respondent submitted the evidence is admissible as accessed and printed from Canadian websites and in the era of internet shopping, " “such website evidence is no less necessary or reliable than [the Applicant’s] evidence of pictures of the brick and mortar stores” " . [ 55 ] However in oral submissions the Applicant changed its position, stating: " “while we believe that the results of that search potentially could be considered flawed because it did not have the search parameters set out, even if we consider that evidence to be admissible the third party marks that…the printouts for which Mr.

Rosen provided in exhibit A… the third-party printouts show that the

element fire, and the element ice, and combinations of those two words have been considered distinctive as at the date of filing.” " Applicant’s counsel added, " “I believe that the printouts that were provided are relevant to the distinctiveness of the FIRE OR ICE and FIRE AND ICE marks as at the various relevant dates” " . [ 56 ] In this connection, the Applicant not only reversed itself to advance a position in oral argument inconsistent with its written submissions, it did so on the last day of a two-day hearing. This created unfairness for the Respondent that cannot be encouraged.

In addition, I note the Rosen Affidavit was affirmed January 31, 2019, almost six years after the material filing date. The Respondent in oral response correctly submitted some of the applications or registrations in the Rosen Affidavit were filed after the material date of filing required by subsection 16(3) , and some were filed before and abandoned, and thus should not be considered. [ 57 ] The Respondent urged the Court to pay careful attention to each of the many trade-mark applications referred to – a matter the Applicant in my respectful view did not sufficiently address.

The Applicant put the Court in the position of having to sift through material after the hearing without benefit of counsel because of a new, inconsistent and last minute position advanced by the Applicant. In my respectful view, this is not a satisfactory way for an Applicant to deal with alleged new material evidence referred to at the last minute. [ 58 ] Given its volte face and given the onus was on the Applicant to make its case, which in my view it did not, I am not satisfied this alleged new evidence should be admitted as material new evidence.

Given that it was all obtained posterior to the material filing date, and in the circumstances, I am not persuaded this evidence is admissible under subsection 16(3) ground of appeal per Hawke at para 31 , and Kabushiki at para 19 and subsection 16(3) itself.

(6) Summary of analysis and conclusion regarding alleged material new evidence [ 59 ] In

summary, I am not persuaded any of the alleged new evidence filed or relied upon by the Applicant is sufficiently substantial and significant and of probative value ( Clorox at para 21 ; Vivat at para 27; Seara at para 24 ), such that it could have had a bearing on a finding of fact or the exercise of a discretion of the TMOB in terms of the Applicant’s appeal.

In most cases, the alleged new evidence is not material because it pertains to facts posterior to, and in many cases, well after the material date for subsection 16(3) which is the date of filing the applications, namely February 22, 2013, and is therefore inadmissible per Hawke at para 31, Kabushiki at para 19 and subsection 16(3) itself.

In addition, as seen above, other aspects of the allegedly new evidence offend jurisprudence of this Court and the Federal Court of Appeal because it is repetitive, or supplementary or merely confirms earlier evidence ( Seara at para 24 ; Vivat at para 27; Hawke at para 31 ; Kabushiki at para 19 ).

With respect to the Rosen Affidavit, given the Applicant’s last minute volte face , I am simply not persuaded it is sufficiently substantial and significant and of probative value ( Clorox at para 21 ; Vivat at para 27; Seara at para 24 ), such that it could have had a bearing on a finding of fact or the exercise of a discretion of the TMOB in terms of the Applicant’s appeal. [ 60 ] In coming to this conclusion, I have relied on the well-settled jurisprudence of this Court and of the Federal Court of Appeal.

In this respect, the question for the Court in its preliminary analysis of this alleged material new evidence has been " “could this new evidence, because of its significance and probative value, have had a bearing on a finding of fact or the exercise of a discretion of the TMOB?” " ( Seara at para 25 ). On this preliminary assessment, I am not persuaded (the onus being on the Applicant) the answer is " “yes” " to any of the alleged additional material evidence.

The evidence I have rejected, in my respectful view could not have had a bearing on the TMOB’s findings of fact or exercise of discretion ( Seara at para 23 ). IV. Analysis of the TMOB Decision on the Housen appellate standard of palpable and overriding error A. General [ 61 ] As discussed above, the Supreme Court of Canada in Housen sets out two aspects of appellate review, one for issues of law including readily extricable legal issues, where the standard of review is correctness.

The second, for issues of fact and mixed fact and law, excluding readily extricable legal issues, the appellate standard of review is palpable and overriding error, as stated by the Supreme Court of Canada in Housen and confirmed by Vavilov at para 37 : [37] It should therefore be recognized that, where the legislature has provided for an appeal from an administrative decision to a court, a court hearing such an appeal is to apply appellate standards of review to the decision.

This means that the applicable standard is to be determined with reference to the nature of the question and to this Court’s jurisprudence on appellate standards of review. Where, for example, a court is hearing an appeal from an administrative decision, it would, in considering questions of law, including questions of statutory

interpretation and those concerning the scope of a decision maker’s authority, apply the standard of correctness in accordance with Housen v. Nikolaisen , 2002 SCC 33 , [2002] 2 S.C.R. 235 , at para. 8 . Where the scope of the statutory appeal includes questions of fact, the appellate standard of review for those questions is palpable and overriding error (as it is for questions of mixed fact and law where the legal principle is not readily extricable): see Housen , at paras. 10, 19 and 26-37 .

Of course, should a legislature intend that a different standard of review apply in a statutory appeal, it is always free to make that intention known by prescribing the applicable standard through statute. [Emphasis added] [ 62 ] In this case, the Respondent says the Applicant did not point to any issue(

s) of law. The Appellant did not challenge this assertion in either its written or oral assertions. Accordingly, the Court will presumptively review the TMOB Decision on the appellate standard of palpable and overriding error per Housen , unless it is persuaded the appellate standard of correctness is required, e.g., on issues of law.

[63] Before conducting this appellate review, I will deal with threshold issues. B. What constitutes a palpable and overriding error? [64] For the Applicant to succeed on its appeal under subsection 16(3) the Court must find one or more palpable and overriding errors inthe TMOB Decision. Justice Stratas explains in more detail the standard of palpable and overriding error in Mahjoub v Canada(Citizenship and Immigration), 2017 FCA 157 [Mahjoub]: [61] Palpable and overriding error is a highly deferential standard of review: Benhaim v. St. Germain, 2016 SCC 48, [2016]2 S.C.R. 352 at para. 38; H.L. v.

Canada (Attorney General), 2005 SCC 25, [2005] 1 S.C.R. 401. When arguing palpableand overriding error, it is not enough to pull at leaves and branches and leave the tree standing. The entire tree must fall. SeeCanada v. South Yukon Forest Corporation, 2012 FCA 165, 431 N.R. 286 at para. 46, cited with approval by the SupremeCourt in St. Germain, above. [62] “Palpable” means an error that is obvious.

Many things can qualify as “palpable.” Examples include obvious illogic inthe reasons (such as factual findings that cannot sit together), findings made without any admissible evidence or evidencereceived in accordance with the doctrine of judicial notice, findings based on improper inferences or logical error, and thefailure to make findings due to a complete or near-complete disregard of evidence. [63] But even if an error is palpable, the judgment below does not necessarily fall. The error must also be overriding. [64] “Overriding” means an error that affects the outcome of the case.

It may be that a particular fact should not have beenfound because there is no evidence to support it. If this palpably wrong fact is excluded but the outcome stands without it,the error is not “overriding.” The judgment of the first-instance court remains in place. [65] There may also be situations where a palpable error by itself is not overriding but when seen together with otherpalpable errors, the outcome of the case can no longer be left to stand. So to speak, the tree is felled not by one decisive chopbut by several telling ones. [Emphasis added] C.

Analysis under subsection 16(3) [65] The TMOB conducted its confusion analysis based on paragraph 12(1)(d). The TMOB at para 80 of its Decision held its findingsthere were "“equally applicable”" to its analysis under subsection 16(3). As noted, I will review the issue of confusion in the context ofthe subsection 16(3) ground of appeal. The TMOB Decision contains additional reasons relating to subsection 16(3), which I will alsoreview. In this connection I note that if the Applicant’s appeal based on subsection 16(3) is dismissed, it will not be necessary to considerthe Applicant’s additional submissions under

section 2 and paragraph 12(1)(d). D. Who is the consumer? [66] The parties addressed the issue of who is the consumer. Both the Applicant and the Respondent are manufacturers of diamondjewellery in this case, and of gold jewellery in the Related Gold Dispute. The Applicant in oral argument submitted the consumerperspective was that of a sophisticated retailer purchasing diamond jewellery on a wholesale basis in relatively large orders ("“in bulk”")from either the Applicant or the Respondent, both sophisticated manufacturer and wholesalers.

The Respondent on the other handsubmits the consumer in issue is the ultimate purchaser from a retail store, and the test is one of first impression and imperfectrecollection. [67] The jurisprudence provides guidance in answering this question.

The classic test from the Supreme Court of Canada as to who is theconsumer is in Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée., 2006 SCC 23 [Veuve Clicquot]: "[20] The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who seesthe name Cliquot on the respondents’ storefront or invoice, at a time when he or she has no more than an imperfectrecollection"" of the VEUVE CLICQUOT trade-marks, and does not pause to give the matter any detailed consideration orscrutiny, nor to examine closely the similarities and differences between the marks… " [68] The Supreme Court of Canada confirms a "“casual consumer”" does not pause to give the marks detailed consideration, nor a side-by-side comparison as to the differences between the marks; see Masterpiece Inc. v Alavida Lifestyles Inc., 2011 SCC 27 [Rothstein J][Masterpiece]: [83] Neither an expert, nor a court, should tease out and analyze each portion of a mark alone.

Rather, it should consider themark as it is encountered by the consumer — as a whole, and as a matter of first impression. In Ultravite Laboratories Ltd.v.

Whitehall Laboratories Ltd., (SCC), [1965] S.C.R. 734, Spence J., in deciding whether the words“DANDRESS” and “RESDAN” for removal of dandruff were confusing, succinctly made the point, at pp. 737-38: “[T]hetest to be applied is with the average person who goes into the market and not one skilled in semantics.” [Emphasis added] [69] The Federal Court of Appeal in Clorox confirms the test is a matter of first impression of a casual consumer, and also states theconsumer may be different in valuable or niche markets: "[32] There is no dispute between the parties as to the proper test for confusion.

That test was set out by the Supreme Court

in paragraph 20 of ""Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée""., ""2006 SCC 23"", ""[2006] 1 S.C.R. 824"": " The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry whosees the name Cliquot on the respondents’ storefront or invoice, at a time when he or she has no more than animperfect recollection of the VEUVE CLICQUOT trade-marks, and does not pause to give the matter anydetailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks.

"[33] The Federal Court was well aware of that test and indeed quoted that very same extract. It is also well established thatwhen applying the test for confusion, the trier of fact must have regard to all the surrounding circumstances, including thosespecifically enumerated in subsection 6(5) of the Act. Again, this is precisely what the Federal Court did in the case at bar,stressing as Justice Rothstein did ""in ""Masterpiece Inc. v. Alavida Lifestyles Inc."", ""2011 SCC 27"", ""[2011] 2 S.C.R.387"" (at para. ""49"") [Masterpiece], that the most important criterion is that of resemblance between the marks.

" "[34] ""Clorox"" argued"", however that the Federal Court erred in writing that a consumer “is not always hurried to thesame extent” for valuable or niche market goods. " "[35] I can see no error in that statement. Quite to the contrary, it is consistent with the decision of the Supreme Court inMattel, according to which consumers will be more cautious and take more time in some circumstances: " "A consumer does not of course approach every purchasing decision with the same attention, or lack of it.

When buying acar or a refrigerator, more care will naturally be taken than when buying a doll or a mid-priced meal… " "Mattel"" at para. 58, citing General Motors Corp. v. Bellows, "" "" (SCC), ""[1949] S.C.R. 678"". " "[36] Contrary to Clorox’s argument, the degree of care of the relevant consumer may vary with the circumstances, and thenormal channels of trade for a particular good must also be taken into account. This is necessarily the case for JAVELObleach, which must be ordered by tanker-truck quantities.

The Federal Court could therefore take that factor intoconsideration in assessing the likelihood of confusion, and made no error of law in doing so.

" [70] The casual consumer, in Gemological Institute of America v Gemology Headquarters International, 2014 FC 1153 [Gemological][Kane J] was held to include both the retailed and end consumer: [85] Moreover, the confusion is assessed from the perspective of the mythical customer or consumer (Mattel, Inc v 3894207Canada Inc, 2006 SCC 22 at paras 56-58, [2006] 1 SCR 772 [Mattel]; that consumer includes the whole range from the largewholesalers to jewellery makers to large and small retailers and ultimately the end consumer. [71] Justice Rothstein in Masterpiece also provides guidance on who the consumer is: [40] At the outset of this confusion analysis, it is useful to bear in mind the test for confusion under the Trade-marks Act.

InVeuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23, [2006] 1 S.C.R. 824, Binnie J. restated the traditionalapproach, at para. 20, in the following words: The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry whosees the [mark], at a time when he or she has no more than an imperfect recollection of the [prior] trade-marks,and does not pause to give the matter any detailed cons

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