BEVERLY HILLS JEWELLERS MFG LTD. Applicant v. CORONA JEWELLERY COMPANY LTD., 2021 FC 673

Date: 20210628 Docket: T-1491-17 Citation: 2021 FC 673 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. 1593806 for the trade- mark TRULY CANADIAN CERTIFIED GOLD & 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 Diamond Dispute 10 D. TMOB proceedings 10 E. Appeal to the Federal Court under

section 56 12 II. Issues 13 III. Standard of review on

section 56 appeals 14 A. Housen v Nikolaisen , 2002 SCC 33 establishes two branches of appellate review 14 B. What is meant by palpable and overriding error for questions of fact and mixed fact and law? 15 C. Questions of law are to 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 21 F. Analysis of materiality of new evidence under subsection 16(1) of the Act 22

(1) Vaccaro 2019 Affidavit filed by the Applicant 24

(2) Singh Affidavit filed by the Applicant 32

(3) Soare 2019 Affidavit filed by the Respondent 32

(4) Summary of analysis and conclusion regarding alleged material new evidence 35 IV. Analysis of the TMOB Decision on the Housen appellate standard of palpable and overriding error 36 A. General 36 B. What constitutes a palpable and overriding error? 37 C. Analysis under subsection 16(1) 38 D. Relevance and consideration of the decision(

s) of the Examiner in this appeal 39 E. Subsection 6(5) analysis,

part 1 41

(1) Degree of Resemblance, per paragraph 6(5)(e) 42

(2) Inherent distinctiveness and extent to which the marks have become known, per paragraph 6(5)(a) 50

(3) Length of time each mark has been in use, per paragraph 6(5)(b) 59

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

c) and (d) 60

(5) Surrounding Circumstances 70 (

a) State of the Register 71 (

b) Actual Confusion 74 F. Subsection 6(5) analysis,

part 2 75 V. Conclusion 78 VI. Costs 82 [ 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 application to register the trade-mark TRULY CANADIAN CERTIFIED GOLD and Design (Application no. 1,593,806) [GOLD Mark]: The application was refused by the TMOB [Decision] based on an opposition filed by the Respondent [also referred to as Corona] which alleged confusion with the trade-mark CANADIAN CERTIFIED GOLD and Design (TMA767318) [CORONA Mark]: The TMOB focussed on the CORONA Mark having concluded the Respondent would not succeed on any other of its marks.

The TMOB agreed with the Respondent’s opposition, found the Applicant’s GOLD Mark confusing with the CORONA Mark and refused the Applicant’s application. [ 2 ] The Applicant appeals under

section 56 of the Trade-marks Act , RSC 1985, c T-13 [ Act ] for a direction that the TMOB reject the opposition to the GOLD Mark and related relief. The Respondent asks the appeal be dismissed and the applications be refused, with costs. [ 3 ] The Act was amended on June 17, 2019, such that, among other things, it was renamed the Trademarks Act. This Appeal, however, is governed by the former Act with its hyphenated name. I. Facts and decision under review A. General [ 4 ] The Applicant filed its application for the GOLD Mark covering " “Jewellery; Gold” " based on use in Canada since January 1, 2012.

The application was filed September 12, 2012. [ 5 ] According to the Certified Tribunal Record [CTR], the application for the GOLD Mark was initially rejected for advertising by the trade-mark examiner [Examiner] because of confusion with the CORONA Mark, and other marks owned by the Government of Northwest Territories [CTR p. 128].

However, the Applicant provided further submissions to the TMOB who allowed advertising [CTR, pp. 114 to 124]. [ 6 ] The application was advertised for opposition purposes in the Trade-marks Journal on April 30, 2014. [ 7 ] The Respondent filed a statement of opposition on June 26, 2014 under

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

section 2 of the Act , based on its CORONA Mark:

" " [8] The grounds of opposition were confusion with a previously used or known trade-mark per subsection 16(1), confusion with aregistered trade-mark per paragraph 12(1)(d), and distinctiveness per

section 2. The opposition also relied on subsection 30(i) (bad faith)which was rejected by the TMOB and not pursued on this appeal. [9] As the TMOB properly held at paragraph 4 of the Decision, "“the grounds of opposition as pleaded revolve around the likelihood ofconfusion between the [GOLD] Mark and the following trade-marks of the [Respondent], used in association with, among other things,‘jewellery; gold’ (collectively, the CORONA Marks)”".

As noted, the TMOB ultimately focussed on only the CORONA Mark. [10] The core provisions for these three grounds are as follows; I emphasize confusion under subsection 16(1) because it is the basis onwhich this appeal is decided: 1. Confusion with a trade-mark previously used or made known: Subsection 16(1) says a person is not entitled to register a trade-mark if, at the date the trade-mark was first used [abbreviated to "“first use”"], it was confusing with a trade-mark that had beenpreviously used in or made known in Canada.

In this case, the CORONA Mark had been previously used or made known at thedate of first use of the GOLD Mark: Registration of marks used ormade known in Canada" " Enregistrement des marquesemployées ou révélées auCanada" " 16

(1) Any applicant who hasfiled an application in accordancewith

section 30 for registration ofa trade-mark that is registrableand that he or his predecessor intitle has used in Canada or madeknown in Canada in associationwith goods or services is entitled,subject to

section 38, to secure itsregistration in respect of thosegoods or services, unless at thedate on which he or hispredecessor in title first so used itor made it known it wasconfusing with" " 16

(1) Tout requérant qui aproduit une demande selonl’article 30 en vue del’enregistrement d’une marquede commerce qui estenregistrable et que le requérantou son prédécesseur en

titre aemployée ou fait connaître auCanada en liaison avec desproduits ou services, a droit, sousréserve de l’article 38, d’enobtenir l’enregistrement à l’égardde ces produits ou services, àmoins que, à la date où lerequérant ou son prédécesseur entitre l’a en premier lieu ainsiemployée ou révélée, elle n’aitcréé de la confusion :" " (

a) a trade-mark that had beenpreviously used in Canada ormade known in Canada by anyother person;" "

a) soit avec une marque decommerce antérieurementemployée ou révélée au Canadapar une autre personne;" " [Emphasis added]" " [Je souligne]" " 2. Confusion with a registered trade-mark: Paragraph 12(1)(

d) states a trade-mark is registrable if, at the date of the Decision, seePark Avenue Furniture Corp. v Wickes/Simmons Bedding Ltd., (1991) (FCA), 130 NR 223 (FCA) [DesjardinsJA] [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 registered trade-mark; " "

d) elle crée de la confusion avec une marque de commerce déposée; " " " … " " … " " [Emphasis added] " " " " [Je souligne] " 3. Distinctiveness :

Section 2 is the general definition

section and requires a trade-mark to be " “distinctive” " as of the date of filing 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 the purpose of distinguishing or so as to distinguish goods or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others, " " a) " " marque employée par une personne pour distinguer , ou de façon à distinguer, les produits fabriqués, vendus, donnés à bail ou loués ou les services loués ou exécutés, par elle, des produits fabriqués, vendus, donnés à bail ou loués ou des services loués ou exécutés, par d’autres; " " … " " … " " (c) " " a distinguishing guise, or " " c) " " signe distinctif; " " (d) " " a proposed trade-mark; (marque de commerce) " " d) " " marque de commerce projetée. ( " " trade-mark " " ) " " [Emphasis added] " " [Je souligne] " B.

Factors included in a confusion analysis [ 11 ] 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 Diamond Dispute [ 12 ] This case was heard by the TMOB, and subsequently by this Court, together with another trade-mark dispute between the same parties involving not gold jewellery, but diamond jewellery [Related Diamond Dispute].

The Related Diamond Dispute concerns trade- mark applications for FIRE AND ICE CANADIAN DIAMOND & Design (Application no. 1,615,226) and FIRE ON ICE CANADIAN DIAMOND & Design (Application no. 1,615,229) filed by the same Applicant on February 22, 2013. The Related Diamond Dispute applications were opposed by the Respondent due to confusion with its registered word mark MAPLE LEAF DIAMONDS (TMA688061), and its registered design mark GEOMETRIC Design (TMA677376).

The Related Diamond Dispute in this Court is the subject of file number T-1485-17. [ 13 ] The TMOB rejected the Applicant’s application for the GOLD Mark, and also rejected its applications in the Related Diamond Dispute applications. The Applicant has appealed both the TMOB decision concerning to the GOLD Mark application, and the Related Diamond Dispute to this Court under

section 56 of the Act . The Court heard the Related Diamond Dispute appeal together with the present appeal regarding the GOLD Mark and CORONA Mark. The Court is releasing judgment in the Related Diamond Dispute at the same time as judgment is released in the present case; both appeals are being dismissed. D. TMOB proceedings

[ 14 ] Affidavit evidence was filed by both parties before the TMOB. The Applicant filed the affidavit of Mr. Giovanni Vaccaro (President of the Applicant) who provided information on the GOLD Mark and background about the company [Vaccaro 2015 Affidavit]. The Applicant also filed the affidavit of Ms. Elenita Anastacio (a trade-mark searcher with the agents for the Applicant) with 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 mark, its sales, advertisements and other information relating to the CORONA Mark [Soare 2014 Affidavit]. [ 15 ] There were no cross-examinations on the affidavits filed at the TMOB. [ 16 ] Written arguments were exchanged between the parties at the TMOB. After an oral hearing, the TMOB issued its Decision on July 31, 2017 and refused the application based on confusion between the GOLD Mark and the CORONA Mark. The TMOB found confusion under paragraph 12(1) (d), subsection 16(1) and

section 2 of the Act . [ 17 ] On the same day, the TMOB issued its Decision dismissing the application requested in the Related Diamond Dispute because of confusion under paragraph 12(1) (d), subsection 16(3) and

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

section 56 [ 18 ] 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 Diamond Dispute on the same day. [ 19 ]

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] " " [ 20 ] The Applicant filed two affidavits on its appeal to this Court, the affidavit of Mr. Vaccaro sworn April 12, 2019 [Vaccaro 2019 Affidavit] and the affidavit of Sandy Singh, an articling student for counsel for the Applicant, sworn April 12, 2019 [Singh Affidavit]. [ 21 ] The Respondent also filed new evidence on this appeal, namely the affidavit of Ms.

Soare affirmed October 21, 2019 [Soare 2019 Affidavit]. [ 22 ] Mr. Vaccaro and Ms. Soare were cross-examined on the affidavits filed in this Court. [ 23 ] The parties helpfully filed a joint record and joint book of authorities containing material relevant to the marks in this case, and in the Related Diamond Dispute. The hearing of the appeal in the Related Diamond Dispute took place by ZOOM videoconference on March 15, 2021 and part of March 16, 2021 in Ottawa and Toronto. The hearing of this appeal continued in the same format and places

for the balance of March 16, 2021. II. Issues [24] 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 bedecided 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 regardto 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 branches of appellate review [25] 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] [26] 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? [27] If this Court finds an issue is a question of fact or mixed fact and law, it will review the 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]

[28] 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. [29] 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 reviewed on a standard of correctness [30] Appellate review of questions of law, including readily extricable errors of law, is 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? [31] As noted, three affidavits were filed in this appeal, two from the Applicant and one from the Respondent. However, not all evidencefiled by a party is considered on an appeal under

section 56. The jurisprudence establishes evidence filed on a

section 56 appeal will onlybe considered if it is "“material”", a word not defined in the Act. However, both the Federal Court of Appeal and this Court haveaddressed the meaning of material evidence in the following cases. "[""32""] " 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] " [33] 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] " [34] 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 the

new 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] [35] 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 which pertains to facts posterior to the relevant material date, or that 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 held that evidence that merely supplements or confirms earlier findings, or whichpertains to facts posterior to the relevant material date, in 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] 184 FTR 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] [36] 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 [37] 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(1): the material date for confusion with a trade-mark previously known or made known is established in subsection16(1) of the Act itself as "“at the date on which he or his predecessor in title first so used it or made it known”". I refer to this asthe date of first use. In this case the material date of first use is January 1, 2012;

Section 2: the material date for distinctiveness of the trade-mark is the date of filing of the opposition, see Stargate, in this case

June 26, 2014; Paragraph 12(1)(d): the material date for confusion with registered trade-mark is the date of the Decision of the TMOB, see Park , in this case July 31, 2017. F. Analysis of materiality of new evidence under subsection 16(1) of the Act [ 38 ] Because it has the earliest of the three material dates, I will first assess the materiality of the new evidence in terms of subsection 16(1) of the Act and do so as of its material date. The material date is the date of first use. The parties agree the material date of first use was January 1, 2012.

Subsection 16(1) provides: Registration of marks used or made known in Canada " " Enregistrement des marques employées ou révélées au Canada " " 16

(1) Any applicant who has filed an application in accordance with

section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with goods or services is entitled, subject to

section 38, to secure its registration in respect of those goods or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with " " 16

(1) Tout requérant qui a produit une demande selon l’article 30 en vue de l’enregistrement d’une marque de commerce qui est enregistrable et que le requérant ou son prédécesseur en

titre a employée ou fait connaître au Canada en liaison avec des produits ou services, a droit, sous réserve de l’article 38, d’en obtenir l’enregistrement à l’égard de ces produits ou services , à moins que, à la date où le requérant ou son prédécesseur en

titre l’a en premier lieu ainsi employée ou révélée, 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] " " [ 39 ] It may be useful to repeat here 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 ). [ 40 ] 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 ). [ 41 ] In the following analysis, I find almost all the Applicant’s additional or new evidence fails to meet the test of materiality per subsection 16(1) primarily because it pertains to facts posterior to the date of first use contrary to Hawke at para 31, Kabushiki at para 19 and subsection 16(1) itself.

It is also inadmissible to the extent it repeats what he filed in the Vaccaro 2015 Affidavit. I note some of the alleged new evidence may be relevant to submissions under

section 2 and paragraph 12(1) (

d) of the Act . However, because the Applicant fails in its appeal under subsection 16(1), these additional grounds are not considered further.

(1) Vaccaro 2019 Affidavit filed by the Applicant [ 42 ] I will start with the Vaccaro 2019 Affidavit filed in this Court. Mr. Vaccaro also filed the Vaccaro 2015 Affidavit that was before the TMOB. [ 43 ] The Applicant submits the Vaccaro 2019 Affidavit consists of substantive new evidence addressing the TMOB’s refusal of the applications. The Respondent disputes the materiality of the Applicant’s new evidence to the subsection 16(1) analysis, submitting all his evidence pertains to facts after the material date and is therefore inadmissible.

The material date under subsection 16(1) is the date of first use, namely January 1, 2012. [ 44 ] To recall, the subsection 16(1) analysis asks whether a 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 mark:

Registration of marks used or made known in Canada " " Enregistrement des marques employées ou révélées au Canada " " 16

(1) Any applicant who has filed an application in accordance with

section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with goods or services is entitled, subject to

section 38, to secure its registration in respect of those goods or services , unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with " " 16

(1) Tout requérant qui a produit une demande selon l’article 30 en vue de l’enregistrement d’une marque de commerce qui est enregistrable et que le requérant ou son prédécesseur en

titre a employée ou fait connaître au Canada en liaison avec des produits ou services, a droit, sous réserve de l’article 38, d’en obtenir l’enregistrement à l’égard de ces produits ou services , à moins que, à la date où le requérant ou son prédécesseur en

titre l’a en premier lieu ainsi employée ou révélée, 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] " " [ 45 ] The Vaccaro 2019 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 put him in the position to provide an affidavit about the business. He then provided the following additional information: 1. Background of the Applicant (paras 4 - 9) : Mr.

Vaccaro explains the business background of the Applicant including its creation and Mr. Vaccaro’s role and responsibilities in the business. He 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. Mr. Vaccaro 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” " and shows a copy of the GOLD Mark.

In my view and on a preliminary assessment, this evidence is not material for several reasons. First, virtually all the business background information is substantially the same as his evidence in the Vaccaro 2015 Affidavit filed at the TMOB. The Vaccaro 2019 Affidavit it therefore repetitive and contrary to Seara at para 24, Vivat at para 27, Hawke at para 31 and Kabushiki at para 19 . What differs is in my view neither sufficiently substantial and significant nor of much, if any, probative value such that it could have had a bearing on a finding of fact or the exercise of a discretion of the TMOB.

In addition this evidence is not material because is pertains to facts posterior to the material date of first use which the parties agreed was January 1, 2012. 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 12, 2019 when his affidavit was sworn. Thus, this additional or new evidence pertains to facts up to seven years after the first use of the GOLD Mark on January 1, 2012.

Indeed, all the sales information is posterior to the relevant date of first use under a subsection 16(1) ground of appeal, and thus not material per Hawke at para 3, Kabushiki at para 19, and is contrary to subsection 16(1) itself. Adoption of the GOLD Marks in Canada (paras 10 - 12) : Mr. Vaccaro explains the Applicant had planned in late 2011 to launch a collection of jewellery with gold originating in Canada. He says around that time he created a floral design element that became the GOLD Mark.

He says it was based on the maple leaf and the combined design elements from another registered mark owned by the Applicant to demonstrate continuity of the Applicant’s brand. He says the words TRULY and CANADIAN were similarly borrowed from other marks belonging to the Applicant. He says on January 1, 2012 the Applicant first used the GOLD Mark. This date is not disputed as the date of first use for the purposes of subsection 16(1), which is in any event repetitive of the Vaccaro 2015 Affidavit. With respect, I do not see this evidence as relevant or probative under subsection 16(1).

The date of creation has no bearing on a subsection 16(1) analysis, or on any subsection 6(5) factor because it is common ground the GOLD Mark was not used before the subsection 16(1) material date of first use, namely January 1, 2012. It is also common ground that the GOLD Mark was created two to four years after the CORONA Mark started being used in Canada in 2008. The CORONA Mark was registered on May 19, 2010.

On this preliminary assessment, I am unable to find the new evidence sufficiently substantial and significant nor of much, if any, probative value such that it could have had a bearing on a finding of fact or the exercise of a discretion of the TMOB. Use of the GOLD Mark in Canada (paras 13 - 16) : Mr. Vaccaro states the Applicant has used the GOLD Mark since its first use on January 1, 2012. He states the Applicant used the GOLD Mark with packaging surrounding or accompanying its goods and provides sample images.

The Respondent submits, and with respect, I agree that none of this evidence is material on a subsection 16(1) ground of appeal because all this evidence pertains to facts posterior to the material date of first use of January 1, 2012. Therefore is not material per Hawke at para 31, Kabushiki at para 19 and subsection 16(1) itself. Modes of sale of the Applicant’s goods (paras 17 - 22) : Mr. Vaccaro explains how retailers typically purchase goods from the

Applicant. He states the GOLD Mark appears prominently through brochures and catalogues, jewellery displays and posters and signage provided to retailers. In my view, all of this information is posterior to the relevant date and may not be considered under a subsection 16(1) ground of appeal per Hawke at para 31, Kabushiki at para 19 and subsection 16(1) itself. Revenues (paras 23 - 25) : Mr. Vaccaro states since January 1, 2012, the Applicant has sold in excess of $10 million of goods bearing the GOLD Mark annually in Canada. He provides sample invoices and explains them.

He states the GOLD Mark appears prominently on many of the catalogues and brochures. In my respectful view, on a preliminary assessment, this evidence is not material because it deals with events and activities posterior to the relevant date namely the date of first use; it may not be considered under a subsection 16(1) ground of appeal per Hawke at para 31, Kabushiki at para 19 and subsection 16(1). Promotion of the GOLD Mark in Canada (paras 26 - 27) : Mr. Vaccaro states since January 1, 2012, the Applicant promoted the GOLD 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 this activity involves the requested trade-mark after the relevant date of first use.

In my respectful view, on a preliminary assessment, this evidence is not material because it deals with events and activities posterior to the relevant date namely the date of first use; it may not be considered under a subsection 16(1) ground of appeal per Hawke at para 31, Kabushiki at para 19 and subsection 16(1). Brochures and flyers (paras 28 - 36) : Mr.

Vaccaro states the Applicant creates, publishes and circulates a variety of brochures, catalogues and flyers throughout the year, which promote the GOLD Mark in association with its goods – during the Valentines’ Day season, the Spring season, and the Christmas season. This is the substantially the same type of information previously filed in the Vaccaro 2015 Affidavit in my preliminary view. Therefore, in my view it is not material because it merely supplements in a minor way and is repetitive of the evidence below, contrary to Seara at para 24, Vivat at para 27, Hawke at para 31 and Kabushiki at para 19 .

In addition, all this evidence pertains to facts posterior to the relevant material date and may not be considered under a subsection 16(1) ground of appeal per Hawke at para 31, Kabushiki at para 19 and subsection 16(1) of the Act . Magazine advertisements (paras 37 - 41) : Mr. Vaccaro says since 2012 the Applicant has promoted the GOLD Mark in association with its goods through print and online magazine advertisements. Mr. Vaccaro says how many individuals on average the various jewellery magazine reaches, the demographics and provides samples of the advertisements and invoices.

Again, this evidence pertains to facts posterior to the relevant date, namely the date of first use per subsection 16(1) . Therefore, it is not considered under a subsection 16(1) ground of appeal per Hawke at para 31, Kabushiki at para 19 and subsection 16(1) . Website (paras 42 - 44) : Mr. Vaccaro states since at least January 2012, the Applicant has promoted the GOLD Marks in association with its goods on its website and since 2018 has used a business-to-business portal to promote its goods to retailers.

Once again, on a preliminary assessment, all of this activity pertains to facts posterior to the relevant date of first use and may not be considered under a subsection 16(1) ground of appeal per Hawke at para 31, Kabushiki at para 19 and subsection 16(1) . Sponsorships (paras 45 - 47) : Mr. Vaccaro states since 2014 the Applicant has sponsored the Jewellers’ Golf Tournament and the Jewellers’ Ball. The Applicant has also offered the Giovanni Vaccaro Family Scholarship since 2013.

Once again, all this activity pertains to facts after the relevant material date of first use, and therefore is not material new evidence and may not be considered under a subsection 16(1) ground of appeal per Hawke at para 31, Kabushiki at para 19 and subsection 16(1) . Exhibitions and tradeshows (paras 48 - 49) : 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 GOLD Mark has been promoted since January 2012. However, this and other related evidence provided by Mr.

Vaccaro pertains to facts posterior to the relevant date of first use of the GOLD Mark and as such is not material new evidence and may not be considered under a subsection 16(1) ground of appeal per Hawke at para 31, Kabushiki at para 19, and subsection 16(1) . Promotional expenditures (para 50) : Mr. Vaccaro says the Applicant has spent well in excess of $200,000 per year on promotion and advertisement of the GOLD Mark in association with its goods.

However, and once again, all this evidence pertains to facts posterior to the material date of first use and may not be considered under a subsection 16(1) ground of appeal per Hawke at para 31, Kabushiki at para 19 and subsection 16(1) . Instances of confusion (para 51 - 52) : Mr. Vaccaro states, as President of the Applicant, any questions regarding confusion of the GOLD Mark as a brand would be ultimately directed to him. Essentially, he says that because he was not aware of any instances of confusion on the part of any customer or retailer, there was no evidence of confusion.

In my view, this evidence once again pertains to facts posterior to the material date of first use and may not be considered under a subsection 16(1) ground of appeal per Hawke at para 31, Kabushiki at para 19, and subsection 16(1) .

(2) Singh Affidavit filed by the Applicant [ 46 ] The Singh Affidavit provides evidence of shop-in-shop retail displays gathered by the articling student of counsel for the Applicant on April 10, 2019 in Ontario. However, this information was gathered well after the material date for a subsection 16(1) ground of appeal, namely the date of first use of the GOLD Mark on January 1, 2012.

Thus, on a preliminary assessment, this alleged new evidence is not material because it pertains to facts posterior to the material date of filing the application and is thus not material under a subsection 16(1) ground of appeal per Hawke at para 31, Kabushiki at para 19 and subsection 16(1) . I also note the Applicant did not refer to this evidence in its written or oral submissions.

(3) Soare 2019 Affidavit filed by the Respondent [ 47 ] In its memorandum and in oral argument, the Applicant relied upon some parts of the Soare 2019 Affidavit: 1 . Origin of gold jewellery : In oral and written submissions, the Applicant relies on the portion of the Soare 2019 Affidavit and her

cross-examination where she explains the CORONA Mark assures consumers that all gold was mined and refined in Canada. TheApplicant submits the Respondent has admitted the words of the CORONA Mark provide notice to their customers the gold iscertified as originating from Canada. In my view and on a preliminary assessment, this evidence is not material for several reasons.First, this information is already in the record having been included in the Soare 2014 Affidavit such that this information isrepetitive and contrary to Seara at para 24, Vivat at para 27, Hawke at para 31 and Kabushiki at para 19.

It supplements in a minorway what was already in the record contrary to Seara at para 24. In addition, what differs is neither sufficiently substantial andsignificant nor of probative value such that it could have had a bearing on a finding of fact or the exercise of a discretion of theTMOB under a subsection 16(1) ground of appeal. 2. Retailers: In its written submissions, the Applicant relies on a statement made by Ms. Soare on cross-examination when she agreedthe Respondent’s retailers are very familiar with their trade-marks, and end consumers may be even more knowledgeable than itsretailers. Below is this

section of the cross-examination: 29. Q. And so I take it these retailer customers of yours that you are experienced with, I take it that they are experiencedjewellers? A. I would say yes and no. 30. Q. Okay. A. Some of them probably just started the business. Some of them are definitely in business for, I don't know, quite a fewyears, but sometimes their children are taking over and they may not be that experienced. 31. Q. Okay. And would you agree with me though that the retailers you are dealing with are more experienced than aconsumer or a member of the public? A.

I would say lately I kind of, you know consumers are very -- you know, it’s changed. Basically the consumer changed,you know, with the Internet and everything, you know. Sometimes they actually know more than the retailer just by, youknow, searching things and, you know, how the diamonds are mined and how, you know, they are cut and things like this.So I can’t hundred percent agree with you. 32. Q. Okay. So the end customer in your opinion sometimes is knowledgeable as some of the jewellers. A. In some cases possible. … 302. Q. Right.

I take it because of the obviously volume of sales and so forth, that the retail customers are very familiar withyour product and the trademarks that are on them? A. I would say yes. [48] The Applicant says the Respondent holds the same view it did in Gemme Canadienne PA Inc. v 844903 Ontario Ltd., (TMOB) [Gemme] that retailers and end-consumers are deliberate in the decision-making process, reducing the chances ofconfusion even on first impression.

However, the TMOB considered this argument in its Decision: "[56] The Applicant however submits that both it and the Opponent are in the jewellery business selling products thatcustomers purchase with considerable thought and attention to detail. Accordingly, the Applicant submits, customerspurchasing goods from the Applicant are likely to pay close attention to what they are purchasing and are less likely to beconfused into thinking these goods are manufactured, sold or otherwise associated with the Opponent.

Further to this, theApplicant ""relies on ""Gemme"" Canadienne PA Incorporated v 84403 Ontario Limited (Corona Jewellery Company),"" "", in that it was decided in that case that despite the fact that the Applicant and Opponent were bothoperating in the jewellery business, there was no likelihood of confusion between the parties’ marks and the opposition wasrejected. " "[57] The Opponent disagrees and submits that diamonds and jewellery can be emotional and impulse purchases and not allconsumers give the same attention to detail.

The Opponent cites Masterpiece for the proposition that irrespective of theprice of the goods, confusion is still a matter of first impression." [49] Even if the parties’ goods are expensive, Justice Rothstein confirms in Masterpiece Inc. v Alavida Lifestyles Inc., 2011 SCC 27[Masterpiece] at para 67 that although consumers in the market for expensive goods may be less likely to be confused, the test is still oneof first impression. With respect, the answer by Ms. Soare re the knowledge of consumers is to an extent speculative, and is notremarkable in terms of retailers purchasing from the Respondent.

In terms of consumer perspective, it is a borderline importantobservation. In my view it is neither sufficiently substantial nor significant, nor of such probative value that it could have had a bearingon a finding of fact or the exercise of a discretion.

(4) Summary of analysis and conclusion regarding alleged material new evidence [50] In

summary, I am not persuaded that any of the alleged new evidence filed or relied upon by the Applicant is sufficiently substantialand 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 afinding 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 isnot material because it pertains to facts posterior to, and in many cases, well after the material date for subsection 16(1), which is thedate of first use namely January 1, 2012.

It is therefore not material per Hawke at para 31, Kabushiki at para 19 and subsection 16(1)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 ). [ 51 ] In coming to this conclusion, I have relied on the 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 [ 52 ] 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] [ 53 ] 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 I am persuaded the appellate standard of correctness is required, e.g., on issues of law. [ 54 ] Before conducting this appellate review, I will deal with threshold issues. B.

What constitutes a palpable and overriding error? [ 55 ] For the Applicant to succeed on its appeal under subsection 16(1) the Court must find one or more palpable and overriding errors in the TMOB Decision. Justice Stratas explains 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 palpable and overriding error, it is not enough to pull at leaves and branches and leave the tree standing. The entire tree must fall . See Canada v. South Yukon Forest Corporation , 2012 FCA 165 , 431 N.R. 286 at para. 46 , cited with approval by the Supreme Court in St. Germain , above. [62] “Palpable” means an error that is obvious .

Many things can qualify as “palpable.” Examples include obvious illogic in the reasons (such as factual findings that cannot sit together), findings made without any admissible evidence or evidence received in accordance with the doctrine of judicial notice, findings based on improper inferences or logical error, and the failure 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 been found 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 other palpable errors, the outcome of the case can no longer be left to stand. So to speak, the tree is felled not by one decisive chop but by several telling ones. [Emphasis added]

C. Analysis under subsection 16(1) [ 56 ] The TMOB conducted its confusion analysis based on paragraph 12(1) (d). The TMOB also specifically held at para 81 of its Decision that its findings were " “equally applicable” " to and applied its findings to its analysis under subsection 16(1)(a). Therefore, and as noted, I will review the issue of confusion in the context of the Applicant’s subsection 16(1) ground of appeal. The TMOB Decision contains additional reasons relating to subsection 16(1), which I will also review.

In this connection I note that if the Applicant’s appeal based on subsection 16(1) is dismissed, it will not be necessary to consider the Applicant’s additional submissions under

section 2 and paragraph 12(1) (

d) of the Act . D. Relevance and consideration of the decision(

s) of the Examiner in this appeal [ 57 ] The Applicant asks the Court to consider the decision of the Examiner on the issue of whether or not to advance their proposed trade-marks applications to publication. It alleged the Examiner allowed the mark to be published which meant the Examiner found no confusion, which the Applicant says should be considered as evidence contrary to the Decision of the TMOB. [ 58 ] I have examined the record in this matter. In fact, the CTR shows the Examiner initially rejected the GOLD Mark for advertising because of confusion with the CORONA Mark and others [CTR p. 128].

However, the Applicant provided further submissions to the Examiner who then allowed advertising [CTR pp. 114 to 124]. While I agree the Examiner agreed to allow advertising, the Examiner’s initial decision was to refuse advertising. There were in fact two different decisions made by the Examiner. I agree the second, allowing advertising, differs from the TMOB’s initial Decision to refuse registration. However, the initial decision of the examiner is consistent with the Decision under appeal. [ 59 ] In my respectful view, little if any weight should be given to either decision of the Examiner for several reasons.

First, whatever the Examiner did between their initial refusal and subsequent acceptance for advertising took place ex parte , that is, it appears without the knowledge of or input from the Respondent.

Secondly, the Examiner’s reconsideration took place without the benefit of the evidence subsequently filed before the TMOB, which had considerably more information on which to base its Decision. [ 60 ] Thus, I find the TMOB Decision substantially more informed, and thus more reliable, with the result that the Examiner’s decisions one way or the other may not be considered determinative; instead they are spent once overtaken by the TMOB process. [ 61 ] The Applicant relied on Masterpiece for the proposition a decision by the Examiner should be considered in this case. I disagree for several reasons.

First, the facts are quite different in Masterpiece from those in this appeal. In Masterpiece , the Examiner refused to send the mark for publication, denying the application, but gave written reasons for doing so. There was no TMOB hearing in Masterpiece . In the case at bar, the Examiner refused publication but after reviewing submissions from the Applicant, decided to allow publication.

After publication, the full TMOB process was engaged resulting in the Decision under appeal not to grant registration. [ 62 ] I note as well, the Federal Court of Appeal considered the relevance of an Examiner’s decision in Saint Honore Cake Shop Limited v Cheung’s Bakery Products Ltd ., 2015 FCA 12 [Boivin JA], also an appeal from a TMOB decision.

The Federal Court of Appeal held there was no requirement to consider the Examiner’s decision because (as in the case at bar) the case was distinguishable on the facts from Masterpiece , the Examiner’s decision was in no way determinative, and such argument was misplaced and distinguishable: 39 Finally, the appellant argues before this Court that the judge failed to “consider the Registrar’s decision at the Examination stage” to allow the appellant to publish its trade-marks for opposition.

This, argues the appellant, is contrary to the Supreme Court of Canada decision in Masterpiece at paragraph 112 where it was found that the judge ought to have considered the examination decision as a relevant surrounding circumstance in the context of the confusion analysis. 40 The appellant’s argument is misplaced and distinguishable given that the issue in Masterpiece concerned an expungement case where the Registrar’s only decision available was that of the examiner. In the present case, there was a full Opposition Board proceeding.

Unlike Masterpiece , where the examiner found confusion, and hence refused registration of Masterpiece Inc.’s marks, the examiner did not address the issue of confusion and her decision was in no way determinative (Appeal Book, Vol. 3A at 1482). [Emphasis added] [ 63 ] I therefore agree with the Respondent that I need not consider the Examiner’s decisions. I should add this issue was not raised in the Notice of Application, nor in the Applicant’s memorandum of fact and law, and was addressed only in oral argument. E. Subsection 6(5) analysis,

part 1 [ 64 ] The TMOB assessed confusion in terms of each statutory factor set out in subsection 6(5), followed by consideration of additional circumstances. I will do the same and will consider and determine whether the TMOB made any palpable and overriding error(

s) under the subsection 6(5) statutory factors. Because no additional evidence was admitted, the standard of review is not correctness but presumptively palpable and overriding error ( Clorox at para 21 ). The Court will then stand back and determine whether, taken as a whole and in its entirety the Decision is flawed by a palpable and overriding error that goes to the very core of the outcome of the case such that the Decision must be set aside ( Clorox at para 38 ). [ 65 ] Before reviewing the confusion analysis, as will become clear, the Applicant disagrees with the TMOB Decision in many respects.

In my respectful view, the Applicant is attempting to re-litigate the case and to have this Court reweigh the evidence where it was not successful below. It bears repeating that the Court is reviewing the Decision on a standard of palpable and overriding error. This, and with respect, is a " “steep hill to climb” " as the Federal Court of Appeal confirmed in Clorox : " [38] The appellant now asks this Court to reweigh the evidence and to come to a different conclusion than that reached by

the TMOB and the Federal Court. This is a steep hill to climb, considering that on questions of fact and of mixed fact and law, the standard of review is the standard of palpable and overriding error. In other words, the appellant must convince this Court 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 even more deferential standard of review than the standard of reasonableness applied by the Federal Court.

" " [Emphasis added] " [ 66 ] This caution applies equally to this appeal from the TMOB to the Federal Court under

section 56 . To emphasize, on this

section 56 appeal it is not enough for the Applicant to re-litigate the case on a balance of probabilities as it did below. The Applicant must persuade this Court that the TMOB made an error that is obvious and goes to the very core of the outcome of the case, i.e., that the TMOB made a palpable and overriding error such that the tree falls per Mahjoub at para 61 .

(1) Degree of Resemblance, per paragraph 6(5)(e) [ 67 ] The Supreme Court of Canada in Masterpiece states the degree of resemblance is the statutory factor that is often likely to have the greatest effect on the confusion analysis under subsection 6(5), and is where a confusion analysis should start: [49] In applying the s. 6(5) factors to the question of confusion, the trial judge conducted his analysis in the order of the criteria set forth in s. 6(5), concluding with a consideration of the resemblance between the marks.

While it is no error of law to do so, the degree of resemblance, although the last factor listed in s. 6(5) , is the statutory factor that is often likely to have the greatest effect on the confusion analysis ( K. Gill and R. S. Jolliffe, Fox on Canadian Law of Trade-marks and Unfair Competition (4th ed. (loose-leaf)), at p. 8-54; R. T. Hughes and T. P. Ashton, Hughes on Trade Marks (2nd ed. (loose-leaf)), at §74, p. 939). As Professor Vaver points out, if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion.

The other factors become significant only once the marks are found to be identical or very similar (Vaver, at p. 532). As a result, it has been suggested that a consideration of resemblance is where most confusion analyses should start ( ibid. ) . [Emphasis added] [ 68 ] An analysis of the degree of resemblance is required by para 6(5)(e): 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 : " " … " " … " " (

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] " " [ 69 ] In its Notice of Application, the Applicant raised the following grounds of appeal in relation to resemblance: " 12(

f) finding that the parties’ trademarks had a high degree of visual resemblance; " " 12(

g) finding that the inclusion of a maple leaf design in the parties’ marks, albeit significantly different designs, contributed to the degree of resemblance; " " 12(

h) not taking into account the inclusion of the word TRULY and the different stylization and emphasis of GOLD Mark when considering the degree of resemblance between the parties’ trademarks at issue; " [ 70 ] Upon consideration I am not persuaded the TMOB erred as alleged by the Applicant in grounds 12(f), 12(

g) or 12(

h) just set out. It applied the correct legal framework, considered the arguments of the parties, and came to an informed conclusion on the issue of resemblance. The TMOB determined resemblance favours the Respondent.

It found that " “when considering the totality of the marks, they are highly similar in appearance, when sounded, and in the ideas suggested” " : " [60] In considering the degree of resemblance, " " the Supreme Court of Canada in " " Masterpiece " " , supra , sets out that resemblance is defined as the quality of being either like or similar (para 62) and that the approach to assessing resemblance should involve a consideration of whether there is an aspect of a trade-mark that is particularly striking or unique (para 64).

Further, while it is generally accepted that the first component of a mark is often the most important for the purposes of distinguishing between the marks, the importance of this factor diminishes if the first component is suggestive or descriptive

[Conde Nast Publications Inc v Union des Éditions Modernes ""(1979), ""46 CPR (2d) 183 (FCTD)""; Sky Solar HoldingsCo., Ltd. v Skypower Global, 2104 TMOB 262 at paras 48-50; Health4All Products Limited v The NutraceuticalMedicine Company 111C ""2012 TMOB 194 "" at paras ""61-62""; International Business Machines Corporationv Loris Technologies Inc, 2013 TMBO 136 at para 70; Reno-Depot v Homer TLC Inc (2009), 2010 TMBO 11 at para 58].

The law is also clear that when assessing confusion it is not proper to dissect trade-marks into theircomponent parts, rather, marks must be considered in their entirety [United States Polo Assn v Polo Ralph Lauren Corp""(2000), "" "" (FCA)"" 9. CPR (4th) 51 (FCA) at para 18]. " "[61] The Opponent submits that the Mark comprises the wording of its CANADIAN CERTIFIED GOLD & Design trade-mark in its entirety, and also comprises a maple leaf design. " "[62] The Opponent submits that the words TRULY CANADIAN CERTIFIED GOLD, due to their placement and size inthe Mark, are a dominant and integral feature of the Mark.

The Opponent submits that although the application for the Markdisclaims the right to the exclusive use of the words TRULY CANADIAN CERTIFIED GOLD, the disclaimer has no effectfor the purpose of assessing confusion; even if a word or material is disclaimed as part of a mark, if the disclaimed materialis a dominant feature and is an integral part of the mark, the disclaimer has no effect for the purpose of assessing confusion[citing Standard Coil Products (Canada) Ltd v Standard Radio Corp

(1971) PC 106]. " "[63] The Applicant submits that its Mark does not resemble any of the Opponent’s CORONA Marks. In particular, theApplicant stresses that the leaf design element of the Mark and the Opponent’s CANADIAN CERTIFIED GOLD Designmark is entirely different, in that the Applicant’s leaf design includes an oval insert with a triangular design with the overallshape of the marks being different.

" "[64] In the present case, I find none of the constituent components of either party’s marks to be overwhelmingly striking orunique in and of themselves, however, when considering the totality of the marks, they are highly similar in appearance,when sounded, and in the ideas suggested. Both parties’ marks include a maple leaf design and the Applicant has subsumedthe entirety of the wording of the Opponent’s mark and simply added an adverb to stress the genuine sentiment cast on theremainder of the mark. " "[65] Accordingly, I find this factor also favours the Opponent.

" "[Emphasis added] " [71] In my respectful view, the TMOB was acting within its discretion and on the record before it in finding, as it did that "“whenconsidering the totality of the marks, they are highly similar in appearance, when sounded, and in the ideas suggested”". This is theessence of ground 12(

f) in the Notice of Application (the Decision does not use the words ‘high degree of visual resemblance’). In myrespectful view, the determination of the degree of resemblance between two marks generally, and these two composite marksspecifically, is a highly subjective decision. This finding is not flawed by illogicality or disregard of evidence per Mahjoub at para 62.

Iam not persuaded the TMOB made a palpable and overriding error in this respect. [72] The TMOB found none of the constituent components of either party’s marks were "“overwhelmingly striking or unique in and ofthemselves.”" However, when considering the totality of the marks the TMOB found they are "“highly similar in appearance, whensounded, and in the ideas suggested.”" It noted both parties’ marks include a maple leaf design.

The TMOB concluded the Applicant hassubsumed the entirety of the wording of the CORONA Mark and simply added an adverb to stress the genuine sentiment cast on theremainder of the GOLD Mark. [73] The Applicant disagrees with this conclusion, observing that while both marks have the phrase CANADIAN CERTIFIED GOLD,they differ significantly in appearance. The CORONA Mark has the words in ordinary script one below the other, all below a 10-pointmaple leaf.

The GOLD Mark adds the word TRULY with the words emphasized in different font size and stylized script, distinguishingtwo portions of the phrase, and includes a 9-point maple leaf. [74] It is apparent from paras 63 and 64 of the TMOB’s reasons just quoted above it considered the Applicant’s arguments in thisrespect. However, it did not agree and found the two marks "“highly similar in appearance, when sounded, and in the ideas suggested.”"This was open to it.

There is no illogicality or failure to adhere with the evidence in this connection, nor is this aspect of its decisionflawed by palpable and overriding error. [75] The Respondent submits the Applicant uses an incorrect method in its submissions by putting the marks side-by-side and dissectingthem into their component parts. I agree this is not the proper approach; the TMOB must look at, and in my view, did consider theentirety of the two marks per Masterpiece at para 76 and Veuve Clicquot Ponsardin v

[…]