Miss Universe, Inc. v. Bohna ( C.A. )

[sv 1,3] [sv 75,1] [sv 19,1995]

miss universe inc. v. bohna

A-841-92

Miss Universe, Inc. (Opponent/Appellant)

Dale Bohna (Applicant/Respondent)

Indexed as: Miss Universe, Inc. v. Bohna (C.A.)

Court of Appeal, Hugessen, Décary and Létourneau JJ.A."Ottawa, October 25 and November 7, 1994.

Trade marks " Registration " Appeal from trial judgment holding no serious likelihood of confusion between trade marks "Miss Universe" and "Miss Nude Universe" for use in association with beauty pageants " Trial Judge finding vast difference in ambiance between annual "Miss Universe" pageants and "Miss Nude Universe" contests in bars, taverns " Holding "Nude" in middle of applicant's trade mark of arresting significance conveying profound difference between two contests, rendering "Miss Nude Universe" distinctive " Trial Judge erred in not addressing scope of protection to be accorded trade mark as widely known, used as "Miss Universe" in organization of beauty pageants " Also erred in emphasizing differences in nature of services, trade, instead of considering likelihood of confusion if two businesses carried on in same area in same manner " Further erred in considering "Nude" in isolation " Degree of resemblance when looking at both marks.

This was an appeal from a decision of Strayer J. holding that there was no serious likelihood of confusion between the trade marks "Miss Universe" and "Miss Nude Universe" for use in association with the operation of a beauty pageant. The Trial Judge held that with respect to Trade-marks Act, paragraphs 6(5)(c) and (d) concerning the nature of the services and of the trade in which the two were engaged, there was a vast difference between the applicant's services and those of the opponent. He found that there was a vast difference in ambiance between the annual Miss Universe pageants and the numerous Miss Nude Universe contests in bars and taverns and that only the most unthinking would assume that Miss Universe Inc. had licensed the sort of performances in drinking establishments which may come to be described as Miss Nude Universe pageants. The Trial Judge held that "Nude" in the middle of the applicant's trade mark was of an arresting significance which would convey to all but the most indifferent reader a profound difference between the two contests, such that "Miss Nude Universe" was distinctive.

Held, the appeal should be allowed.

The Trial Judge erred in failing to address the issue of the scope of protection to be accorded to a trade mark as widely known and used as "Miss Universe," particularly in the very area, organization of beauty pageants, which a newcomer was endeavouring to enter. "Miss Universe" is a well-known and reputable name. The Trial Judge should have examined the facts of this case on the assumption that the appellant's trade mark was to be accorded a particularly wide scope of protection and that the burden imposed on the respondent to dispel any likelihood of confusion was particularly difficult to overcome, even more so in the field of beauty pageants. He ignored the fact that the respondent was a newcomer entering a field already extensively occupied by the appellant, and borrowing the whole of a name already established in that field. It was the respondent's duty to select a name with care so as to avoid any confusion"as is required under the definition of "proposed trade mark" in section 2"and so as to avoid the appearance that he intended to jump on the bandwagon of an already famous mark. The Trial Judge did not address that duty. Had the Trial Judge considered the scope of the protection accorded to start with to the appellant's trade mark, he would have approached in a different way the factors defined in paragraphs 6(5)(c ) and (d). He would have realized that these factors could not be as determinative as he found them to be.

The Trial Judge also erred in emphasizing the differences in the nature of the services and in the nature of the trade instead of considering the likelihood of confusion if the two businesses were carried on in the same area in the same manner. Services associated with both trade marks were principally related to the operation of beauty pageants. Both parties were providing entertainment services by conducting, hosting and promoting beauty pageants. The beauty pageant services provided by both shared the same format and the same basic process. The Trial Judge erred in ignoring the evidence that both trade marks were used or to be used, respectively, in the same industry and in concentrating rather on differences allegedly intended by the respondent, but neither guaranteed by him nor referred to in his application for registration, such as the location of the contests, the conditions to be met by participants and the ambiance in which the events would be held. Not only were these differences inconclusive, in view of the basic similarity between the services involved, but they were irrelevant to the extent that regardless of the present intention of the respondent, either he or any successor in title, should the trade mark "Miss Nude Universe" be found registrable, would be free to change the format, location, style or character of his beauty pageants at any time.

Finally the Trial Judge did not refer, when he dealt with the issue of confusion, to the factor set out in paragraph 6(5)(e), i.e. the degree of resemblance between the trade marks in appearance, sound, or in the ideas suggested by them. It was a mistake to consider the word "Nude" in isolation, as being of an "arresting significance." There is, when one looks at both marks, a degree of resemblance which could not be ignored.

statutes and regulations judicially considered

Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2 "proposed trade-mark", 6, 12(1)(d) (as am. by S.C. 1990, c. 20, s. 81), 38(2)(b),(d),(3)(a).

cases judicially considered

applied:

Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (Dist. Ct. N.Ga. 1980); Mr. Submarine Ltd. v. Amandista Investments Ltd., [1988] 3 F.C. 91; (1987), 16 C.I.P.R. 267; 19 C.P.R. (3d) 3; 81 N.R. 257 (C.A.); Miss Universe, Inc. v. Drost, 189 USPQ 212 (P.O. T.M. T. App. Bd. 1975); Carson v. Reynolds, [1980] 2 F.C. 685; (1980), 115 D.L.R. (3d) 139; 49 C.P.R. (2d) 57 (T.D.); Polysar Ltd. v. Gesco Distributing Ltd. (1985), 6 C.P.R. (3d) 289 (F.C.T.D.).

considered:

Miss Universe, Inc. v. Bohne [sic] (1991), 36 C.P.R. (3d) 76 (T.M. Opp. Bd.).

referred to:

Coca-Cola Co. v. Pepsi-Cola Co. (1942) 2 D.L.R. 657; [1942] 2 W.W.R. 257; (1942), 1 C.P.R. 293; 2 Fox Pat. C. 143; [1942] 1 All E.R. 615 (P.C.); Rowntree Company Limited v. Paulin Chambers Company Limited et al., [1968] S.C.R. 134; (1967), 54 C.P.R. 43; 37 Fox Pat. C. 77; Oshawa Holdings Ltd. v. Fjord Pacific Marine Industries Ltd. (1981), 55 C.P.R. (2d) 39; 36 N.R. 71 (F.C.A.); Canadian Schenley Distilleries Ltd. v. Canada's Manitoba Distillery Ltd. (1975), 25 C.P.R. (2d) 1 (F.C.T.D.); Sunshine Biscuits, Inc. v. Corporate Foods Ltd. (1982), 61 C.P.R. (2d) 53 (F.C.T.D.); Molnlycke Aktiebolag v. Kimberly-Clark of Canada Ltd. (1982), 61 C.P.R. (2d) 42 (F.C.T.D.); Salada Foods Ltd. v. Generale Alimentaire (G.A.S.A.) (1980), 47 C.P.R. (2d) 169; 32 N.R. 608 (F.C.A.); Leaf Confections Ltd. v. Maple Leaf Gardens Ltd. (1988), 19 C.P.R. (3d) 331 (F.C.A.); affg Maple Leaf Gardens Ltd. v. Leaf Confections Ltd. (1986), 10 C.I.P.R. 267; 12 C.P.R. (3d) 511; 7 F.T.R. 72 (F.C.T.D.); Boy Scouts of Can. v. Alfred Sternjakob GMBH & Co. KG (1984), 4 C.I.P.R. 118; 2 C.P.R. (3d) 407 (F.C.T.D.); Berry Bros. & Rudd Ltd. v. Planta Tabak-Manufactur Dr. Manfred Oberman (1980), 53 C.P.R. (2d) 130 (F.C.T.D.); Cartier Men's Shops Ltd. v. Cartier Inc. (1981), 58 C.P.R. (2d) 68 (F.C.T.D.); Conde Nast Publications Inc. v. Gozlan Brothers Ltd. (1980), 49 C.P.R. (2d) 250 (F.C.T.D.); Glen-Warren Productions Ltd. v. Gertex Hosiery Ltd. (1990), 29 C.P.R. (3d) 7; 32 F.T.R. 274 (F.C.T.D.); Haig (John) & Co. Ltd. v. Haig Beverages Ltd. (1975), 24 C.P.R. (2d) 66 (F.C.T.D.); Cadbury Schweppes Inc. v. Najm (1991), 41 C.P.R. (3d) 122 (T.M. Opp. Bd.); Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.); Horn Abbot Ltd. et al. v. Thurston Hays Developments Ltd. et al. (1985), 4 C.P.R. (3d) 376 (F.C.T.D.); Bagagerie SA v. Bagagerie Willy Ltée (1992), 97 D.L.R. (4th) 684; 45 C.P.R. (3d) 5034; 148 N.R. 125 (F.C.T.D.).

APPEAL from trial judgment (Miss Universe, Inc. v. Bohna, [1992] 3 F.C. 682; (1992), 43 C.P.R. (3d) 462 (T.D.)) holding no likelihood of confusion between the trade mark "Miss Universe" and the trade-mark "Miss Nude Universe" in relation to beauty pageants. Appeal allowed.

counsel:

Jonathan C. Cohen and Adele J. Finlayson for opponent/appellant.

Lawrence R. Cunningham for applicant/ respondent.

solicitors:

Shapiro, Cohen, Andrews, Finlayson, Ottawa, for opponent/appellant.

Peterson, Hustwick, Edmonton, for applicant/ respondent.

The following are the reasons for judgment rendered in English by

Décary J.A.: The universe has not so far unfolded as beautifully as it might have for Miss Universe, Inc. (the appellant in these proceedings) in its opposition to the registration in Canada of the trade-mark "Miss Nude Universe."

On June 24, 1985, Dale Bohna (the respondent) applied for the registration of a proposed trade-mark in Canada consisting of the words "Miss Nude Universe" in association both with "specific wares: women's clothing namely: T-shirts, swim suits, pants, shorts, sweaters, blouses" and with [cad170]specific[qj]

services: Entertainment Services, namely: the operation of a beauty pageant[cad186] (trade-mark no. 545,313).¹*ftnote¹ A.B., vol. XII, at p. 1685.

On October 7, 1987, the appellant, an American company, filed a statement of opposition alleging, inter alia, confusion with its trade-marks "Miss Universe" no. 154,443 and No. 264,305, both being previously registered relating to various wares. The statement of opposition also alleged in broad terms that the trade-mark "Miss Nude Universe" would be confusing with the trade-mark "Miss Universe" and the trade-name "Miss Universe, Inc." which had been used in Canada by the appellant prior to the filing of the respondent's application. The statement of opposition alleged, further, that the trade-mark "Miss Nude Universe" was not distinctive.

On March 8, 1991, the Trade-marks Opposition Board [(1991), 36 C.P.R. (3d) 76] (the Board) allowed the opposition in respect of the wares but dismissed it with respect to the services on a technical ground, as, in the Board's view, the appellant had not identified any services in its statement of opposition and the opposition was not therefore in compliance with paragraph 38(3)(a) of the Trade-marks Act²*ftnote² R.S.C., 1985, c. T-13. (the Act).

The respondent did not appeal that part of the Board's decision which related to wares. The appellant appealed that part which related to services. The Trial Judge [[1992] 3 F.C. 682] agreed with the appellant that the Board was wrong in deciding not to deal with the issue of confusion with the appellant's services (this finding is not challenged by the respondent), but went on to decide, on this very issue, that there was no serious likelihood of confusion as between the two trade-marks in association with the services of the respondent, on the one hand, and the services of the appellant, on the other. He expressed himself as follows:³*ftnote³ At pp. 687-689.

Having regard to all the surrounding circumstances including the indicia of confusion described in subsection 6(5) of the Act, I have come to the conclusion that there is no serious likelihood of confusion as between the two trade-marks in association with the services of the applicant, on the one hand, and the services of the opponent, on the other. With respect to the criteria in paragraphs 6(5)(a) and (b) of the Act, there was certainly reason to find that the trade-mark "Miss Universe" has acquired a considerable distinctiveness and it has been in use for over thirty years compared to the very little use to date of the applicant's trade-mark. However, with respect to paragraphs 6(5)(c) and (d) concerning the nature of the services and of the trade in which the two are engaged, the evidence is clear that there is a vast difference between the applicant's services and those of the opponent. With respect to the existing or anticipated services to be provided in connection with the trade-mark "Miss Nude Universe", the evidence is that there are or will be pageants held in various public drinking establishments to choose candidates for Miss Nude Universe, the final choice for 1992 to take place at an Edmonton hotel in November. The evidence is uncontested that the candidates are and will be "professional dancers who entertain in the nude". It is the intention of the applicant to license Miss Nude Universe preliminary contests to hotels in major cities across Canada and the United States that offer exotic dancing. There was no suggestion that these pageants are likely to become known outside of the immediate area of the drinking establishments nor patronized by anyone other than those devoted to "adult entertainment".

On the other hand the evidence is that the principal "services" offered by the opponent is an annual Miss Universe pageant held in various places around the world. The evidence pertaining to the pageant as of about 1988 indicates that it is normally watched by some 600 million viewers on television in many countries occupying two hours of prime time. "Host sites", vie for the presence of the pageant and pay up to $750,000 U.S. to obtain it. In return the host site gets substantial advantages in publicity. As of that time, Procter & Gamble was paying $2,250,000 for rights to broadcast the pageant, presumably for publicity purposes, and various corporations provided prizes and goods for the contestants. The conditions which Miss Universe contestants must meet seem somewhat more stringent than those for Miss Nude Universe: Miss Universe contestants must be between the ages of 17 and 25, never married, and never pregnant. During the pageant there is a detailed system of chaperones and strict control on the candidates' costumes and comportment. The winner is expected to live during the year of her "reign" with certain decorum and her activities are carefully arranged by the opponent. She spends at least part of her time promoting the products of various sponsors of the contest. These facts, while not all necessarily known to the public, underline the vast difference in ambiance between the annual Miss Universe pageants and the numerous Miss Nude Universe contests in bars and taverns.

While Miss Nude Universe appears for our purposes to be essentially a Canadian enterprise, that of the opponent is U.S. based. There was no clear evidence that the Miss Universe pageant had ever been held in Canada although there has apparently been one Miss Canada chosen as Miss Universe. There is considerable evidence of coverage in publications circulating in Canada of the pageant and of the various contestants and winners over the years. There is also some evidence of substantial numbers of Canadians watching the pageant on U.S. networks with one Canadian station also carrying it.

All things considered, I believe that the applicant has sufficiently met the onus on it of showing that there is no probability of confusion between the services of the opponent and those of the applicant. Nor are there any special circumstances to suggest that any but the most unthinking would assume that Miss Universe Inc. had licensed the sort of performances in bars and taverns which may come to be described as Miss Nude Universe pageants. Therefore the nature of the services and the trade in question are of such strong difference as to overcome other possible causes for confusion.

With respect to the distinctive character of "Miss Nude Universe," the Trial Judge had this to say:⁴*ftnote⁴ At p. 689.

Further, while the two trade-marks have two words in common, my first impression when looking at the two is that the word "Nude" in the middle of the applicant's trade-mark is of an arresting significance which would convey to all but the most indifferent reader a profound difference between the two contests. Therefore the applicant's trade-mark is distinctive.

The relevant section of the Act in the instant case is section 6:

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.

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

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

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

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

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

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

(d) the nature of the trade; and

(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.

It is worth remembering at the outset that by a combination of paragraphs 12(1)(d) [as am. by S.C. 1990, c. 20, s. 81], 38(2)(b) and 38(2)(d), confusion with a registered trade-mark and lack of distinctiveness of a trade-mark submitted for registration are two separate grounds of challenge, even though, by virtue of paragraph 6(5)(a), the inherent distinctiveness of a trade-mark is a factor to consider in determining whether there is or not confusion.

APPLICABLE PRINCIPLES

To decide whether the use of a trade-mark or of a trade-name causes confusion with another trade-mark or another trade-name, the Court must ask itself whether, as a matter of first impression on the minds of an ordinary person having a vague recollection of that other mark or name⁵*ftnote⁵ See Coca-Cola Co. v. Pepsi-Cola Co. (1942), 2 D.L.R. 657 (P.C.), at p. 661, Lord Russell of Killowen. , the use of both marks or names in the same area in the same manner is likely to lead to the inference that the services associated with those marks or names are performed by the same person, whether or not the services are of the same general class.⁶*ftnote⁶ See s. 6(2),(3) and (4) of the Act; Rowntree Company Limited v. Paulin Chambers Company Limited et al., [1968] S.C.R. 134; Oshawa Holdings Ltd. v. Fjord Pacific Marine Industries Ltd. (1981), 55 C.P.R. (2d) 39 (F.C.A.); Mr. Submarine Ltd. v. Amandista Investments Ltd., [1988] 3 F.C. 91 (C.A.), at p. 99, Thurlow C.J.; and Canadian Schenley Distilleries Ltd. v. Canada's Manitoba Distillery Ltd. (1975), 25 C.P.R. (2d) 1 (F.C.T.D.), at p. 12, Cattanach J.

In determining whether there is a likelihood of confusion, the Court shall have regard to all the surrounding circumstances, including those described in subsection 6(5) above.

The onus is always upon an applicant for the registration of a trade-mark to establish that, on the balance of probabilities, there is no likelihood of confusion with a previously used and registered trade-mark.⁷*ftnote⁷ See Sunshine Biscuits, Inc. v. Corporate Foods Ltd. (1982), 61 C.P.R. (2d) 53 (F.C.T.D.), at p. 57, Cattanach J. and Molnlycke Aktiebolag v. Kimberly-Clark of Canada Ltd. (1982), 61 C.P.R. (2d) 42 (F.C.T.D.), at p. 46, Cattanach J.

The stronger the mark is, the greater the ambit of the protection it should be accorded and the more difficult it will be for an applicant to discharge the onus. As noted by Mahoney J. (as he then was) in Carson v. Reynolds,⁸*ftnote⁸ [1980] 2 F.C. 685 (T.D.), at p. 691. a trade-mark may be:

. . . so generally identified with [a person] that its use in association with anything else, however remote from entertainment services, would be confusing in the sense that its use in both associations would be likely to lead to the inference that all the wares and services, whatever they might be, emanated from [that person].

Examples abound, in the jurisprudence respecting opposition to registration of trade-marks, of the scope of protection to be afforded to strong marks⁹*ftnote⁹ "Saladina" for salad dressings, found to likely cause confusion with "Salada," a mark extensively used and advertised for beverage and food products (Salada Foods Ltd. v. Generale Alimentaire (G.A.S.A.) (1980), 47 C.P.R. (2d) 169 (F.C.A.)); "Leaf" & Design for bubble gum, found to likely cause confusion with "Toronto Maple Leafs" & Design (Leaf Confections Ltd. v. Maple Leaf Gardens Ltd. (1988), 19 C.P.R. (3d) 331 (F.C.A.); affg (1986), 10 C.I.P.R. 267 (F.C.T.D.), Rouleau J.); "Scout" & Design for bags, school bags, travel bags, city bags, suitcases and trunks, found to likely cause confusion with "Boy Scouts," "Scouts" or "Scout Canada" & Design (Boy Scouts of Can. v. Alfred Sternjakob GMBH & Co. KG (1984), 4 C.I.P.R. 118 (F.C.T.D.), Joyal J.); "Cutty Sark" for pipe tobacco, found to likely cause confusion with "Cutty Sark" for whisky, spirits and wines (Berry Bros. & Rudd Ltd. v. Planta Tabak-Manufactur Dr. Manfred Oberman (1980), 53 C.P.R. (2d) 130 (F.C.T.D.), Cattanach J.); "Sunshine" & Baker Design for crackers, cookies and cracker meal, found to likely cause confusion with "Sunshine" for bread (Sunshine Biscuits, Inc. v. Corporate Foods Ltd., supra note 7); "Cartier" & Design for haberdashery, found to likely cause confusion with "Cartier" for jewellery and leather goods (Cartier Men's Shops Ltd. v. Cartier Inc. (1981), 58 C.P.R. (2d) 68 (F.C.T.D.), Dubé J.); "Vogue" for costume jewellery, found to likely cause confusion with "Vogue" for publication of fashion magazines and dress patterns (Conde Nast Publications Inc. v. Gozlan Brothers Ltd. (1980), 49 C.P.R. (2d) 250 (F.C.T.D.), Cattanach J.); "Miss Canada" for ladies' hosiery and panty-hose, found to likely cause confusion with "Miss Canada" for beauty pageants (Glen-Warren Productions Ltd. v. Gertex Hosiery Ltd. (1990), 29 C.P.R. (3d) 7 (F.C.T.D.), Dubé J.); "Haig" for alcoholic brewery beverages namely beer, found to likely cause confusion with "Haig & Haig" for scotch whisky (Haig (John) & Co. Ltd. v. Haig Beverages Ltd. (1975), 24 C.P.R. (2d) 66 (F.C.T.D.), Addy J.); "Tsarevitch" for alcoholic beverages, found to likely cause confusion with "Tovarich" for alcoholic beverages, particularly vodka (Canadian Schenley Distilleries Ltd. v. Canada's Manitoba Distillery Ltd., supra note 6); "Polystar and Polystar" & Design for carpet cushioning, found to likely cause confusion with "Polysar" for synthetic resins (Polysar Ltd. v. Gesco Distributing Ltd. (1985), 6 C.P.R. (3d) 289 (F.C.T.D.), Joyal J.); "Slimato" for vegetable juice, found to likely cause confusion with "Clamato" (Cadbury Schweppes Inc. v. Najm (1991), 41 C.P.R. (3d) 122 (T.M. Opp. B.)). Weaker marks have also made it: see "Mlle âge tendre" for newspapers and periodicals, as contrasted with "Mademoiselle" for a periodical publication (Conde Nast Publications Inc. v.[qj] Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.), Cattanach J.). . The[qj]

same is true in infringement cases¹⁰*ftnote¹⁰ For example see "Mr. Subs' n Pizza" and "Mr. 29 Minite Subs' n Pizza", found to likely cause confusion with "Mr. Submarine" (Mr. Submarine Ltd. v. Amandista Investments Ltd., supra note 6). as well as in injunction cases¹¹*ftnote¹¹ For example see "Sexual Pursuit", found to likely cause confusion with "Trivial Pursuit" (Horn Abbot Ltd. et al. v. Thurston Hays Developments Ltd. et al. (1985), 4 C.P.R. (3d) 376 (F.C.T.D.), Jerome A.C.J.). where weaker marks have also successfully passed the test.¹²*ftnote¹² For example see "La Bagagerie Willy Ltée" for sale and repairs of suitcases, as opposed to "La Bagagerie" for leather goods (Bagagerie SA v. Bagagerie Willy Ltée (1992), 97 D.L.R. (4th) 684 (F.C.A.)), an infringement action.

The factors enunciated in paragraphs 6(5)(a) to (e) need not be interpreted as having equal weight in all circumstances. Where, for example, a strong trade-mark is measured against a proposed mark, criteria (c) and (d), i.e. the nature of the wares, services or business and the nature of the trade, are not particularly determinative. As was noted by Joyal J. in the Polysar case:¹³*ftnote¹³ Supra, note 9, at pp 298-299.

Of particular relevance to the criteria outlined in s-s. 6(5) of the statute is the principle that they need not be interpreted as having equal weight. Each particular case of confusion might justify greater significance being given to one criteria than to others. . . .

I should venture a further observation. It seems to me that the relationship between two opposing marks as regards the nature of the wares must bear a much more stringent test when a strong and historical trade mark is measured against a proposed mark. The strength of the mark is obviously its distinctiveness, i.e., a combination of vowels, syllables and sound which has an inherent quality that conjures a direct association not only with the specific wares which might otherwise be listed in the mark's registration, but with the proprietary image of all the several or multifarious operations of its owner. This, in my view, is the essence of the phrase "secondary meaning". I can do no better in finding support for this guiding principle than to cite the KODAK and the VOGUE cases. . . . I will admit that no prior case resolved by the courts is ever completely on point. Nevertheless, in the case of such marks as KODAK, by the nature of its inherent distinctiveness, and of VOGUE, by reason of its acquired reputation as an arbiter of current fashions, courts have extended to them a much wider area of general protection than the narrower one of cameras on the one hand and a glossy magazine on the other. The fundamental purpose of the Trade Marks Act or the Unfair Competition Act, R.S.C. 1952, c. 274, or of the old common law right to a passing-off action is to protect acquired rights, whether such rights are acquired by usage or by registration. An applicant which uses Kodak in relation to bicycles or Vogue in relation to costume jewelry is in effect challenging prior rights. Such an applicant might some time succeed, but as stated by Lord Watson in Eno v. Dunn (1890), 15 App. Cas. 252 at p. 257:

. . . he . . . must justify the registration of his trade-mark by shewing affirmatively that it is not calculated to deceive. It appears to me to be a necessary consequence that, in dubio, his application ought to be disallowed.

and by Rouleau J. in the Maple Leaf case:¹⁴*ftnote¹⁴ Supra, note 9, at p. 278.

Nevertheless, it is clear that in considering the elements subs. 6(5) of the Trade Marks Act, each element need not be interpreted as having equal weight. A particular case might justify greater significance being given to one criterion over others. As previously stated, I find the respondent's mark and design to be a strong one, well known throughout Canada. In such cases the Courts have held that the distinction between the wares and the nature of the trade of the two competing marks becomes less important.

For a likelihood of confusion to be found, it is not necessary that the parties operate in the same general field or industry, or that the services be of the same type or quality. Trade-marks for wares and services of one quality intended for one class of purchasers may be confusing with trade-marks for wares and services of a different type or quality, intended for a different class of purchasers.¹⁵*ftnote¹⁵ See Bagagerie SA v. Bagagerie Willy Ltée, supra, note 12.

APPLICATION OF THE PRINCIPLES

Applying these principles to the case at bar, I have reached the conclusion that the Trial Judge has erred in three ways.

First, the Trial Judge has erred in failing to address the very issue of the scope of protection to be accorded to a trade-mark as widely known and used as "Miss Universe," particularly in that very area"organization of beauty pageants"in which a newcomer was precisely endeavouring to enter.

It may have been said, thirty years ago, that there was nothing remarkably distinctive about the word "Miss" or the word "Universe" or the expression "Miss Universe." But as time went by and as the use and promotion of the two words linked together as one expression were reaching global proportion, the expression acquired, to use the very words of the Trial Judge, a "considerable distinctiveness." The name is now a well-known and reputable name.

In these circumstances, one would have expected the Trial Judge to examine the facts of this case on the assumption that the appellant's trade-mark was to be accorded a particularly wide scope of protection and that the burden imposed on the respondent to dispel any likelihood of confusion was particularly difficult to overcome, even more so in the area of beauty pageants. This, in my view, he has failed to do. His reasons, which I have reproduced earlier, show no such concern. He seems to have ignored the fact that the respondent was a newcomer entering a field already extensively occupied by the appellant and borrowing in so doing the whole of a name already well-established in that very field by the appellant.

It was the duty of the respondent to select a name with care so as to avoid any confusion"as is required under the definition of "proposed trade-mark" in section 2 of the Act"and so as to avoid the appearance that he intended to jump on the bandwagon of an already famous mark. That duty was not addressed by the Trial Judge, notwithstanding the admission by a witness for the respondent that:¹⁶ *ftnote¹⁶ O'Staff affidavit, Exhibit A, vol. XI, at p. 1678.

The name "Miss Nude Universe" will be a selling feature without a lot of explanations. Everyone knows the name!

Why was little explanation needed, why did everyone know the name, why would it be a selling feature, if not because the name "Miss Nude Universe" was inevitably associated with the name "Miss Universe"?

Had the Trial Judge considered the scope of the protection accorded to start with to the appellant's trade-mark, he would have approached in a different way the factors defined in paragraphs 6(5)(c) and (d) of the Act, i.e. the nature of the services and the nature of the trade. He would have realized that these factors " even had he been right in their analysis, something I shall come back to"could not be as determinative as he found them to be.

Secondly, the Trial Judge has erred in emphasizing the differences in the nature of the services and in the nature of the trade (paragraphs 6(5)(c) and (d) of the Act) instead of considering the likelihood of confusion if the two businesses were carried on in the same area in the same manner (subsection 6(2) of the Act). Particularly relevant are these comments of Thurlow C.J. in the Mr. Submarine case:¹⁷*ftnote¹⁷ Supra, note 6, at pp. 99-100.

On this issue the appellant's submissions were that the learned Trial Judge erred in emphasizing the differences between the trade marks rather than considering their similarities from the point of view of a consumer with imperfect recollection, in emphasizing the lack of evidence of actual confusion having occurred and the differences in the manner of delivery of the goods and services associated with the trade marks instead of considering the likelihood of confusion if the two businesses were carried on in the same area in the same manner.

Save with respect to the absence of evidence of actual confusion I am of the opinion the appellant's criticism of the reasons of the learned Judge is warranted.

. . .

Here the learned Judge finds the respondent's marks to be clearly distinguishable from those of the appellant. That is without doubt true. But it is not a test of whether the respondent's trade marks or trade names are similar. It says nothing of their similarities or of whether they are likely to be distinguished by an ordinary person having a vague recollection of the appellant's mark or business.

Clearly, in the case at bar, services associated with both trade-marks were principally related to the operation of beauty pageants. Both parties are providing entertainment services by conducting, hosting and promoting beauty pageants. The beauty pageant services provided by the appellant or to be provided by the respondent, under their respective trade-marks, share the same format and the same basic process. Host sites for conducting preliminary and the final pageants are selected. Contestants are recruited and sponsors are identified and secured. Advertising and public media coverage is secured for all preliminary contests and for the annual, final contest. Both parties, thereafter, promote the winners of the final contest to the public under the title for the year in which they reign. The respondent thus intends to use the trade-mark "Miss Nude Universe" in conducting and promoting a beauty pageant in the same industry or business in which the "Miss Universe" trade-mark is already famous.

The Trial Judge has erred, in my view, in ignoring the evidence that both trade-marks were used or to be used, respectively, in precisely the same industry or business and in concentrating rather on differences allegedly intended by the respondent but not guaranteed by him nor referred to in his application for registration, such as the location of the contests" even in that regard I note that hotels are contemplated by both parties"the conditions to be met by participants and the ambiance in which the events would be held.

Not only are these differences inconclusive, in view of the basic similarity between the services and business or industry involved, but they are irrelevant to the extent that regardless of the present intention of the respondent, either he, or any successor-in-title, should the trade-mark "Miss Nude Universe" be found registrable and henceforth be registered, would be free to change the format, location, style or character of his beauty pageants at any time. Again as noted by Thurlow C.J. in Mr. Submarine case:¹⁸*ftnote¹⁸ Supra, note 6, at pp. 102-103.

Nor is the appellant's exclusive right confined to the sale of sandwiches by the methods it now employs or has employed in the past. Nothing restricts the appellant from changing the colour of its signs or the style of lettering of "Mr. Submarine" or from engaging in a telephone and delivery system such as that followed by the respondent or any other suitable system for the sale of its sandwiches. Were it to make any of these changes its exclusive right to the use of "Mr. Submarine" would apply just as it applies to its use in the appellant's business as presently carried on. Whether the respondent's trade marks or trade names are confusing with the appellant's registered trade mark must accordingly be considered not only having regard to the appellant's present business in the area of the respondent's operations but having regard as well to whether confusion would be likely if the appellant were to operate in that area in any way open to it using its trade mark in association with the sandwiches or services sold or provided in the operation.

The beauty pageants of the parties may therefore well become in direct competition, being held possibly in the same hotel at the same time, and the allegation that the pageants may differ in type is thus irrelevant.

Lastly, I note that the Trial Judge did not refer, when he dealt with the issue of confusion, to the factor set out in paragraph 6(5)(e), i.e. the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them. The only related comment he made, and that was in regard to the issue of the distinctiveness of the proposed trade-mark, is the following, which I have reproduced earlier:¹⁹*ftnote¹⁹ Supra, note 4.

I am prepared, for the sake of argument, to accept that these comments could also have been made by the Trial Judge in the context of paragraph 6(5)(e) and to treat them in that context.

It is a mistake, in my view, to consider the word "Nude," in isolation, as being of "an arresting significance." There is, when one looks at both marks, a degree of resemblance. That degree of resemblance may be small when the marks are considered as a whole "but," once more referring to Thurlow C.J.'s reasons in Mr. Submarine,²⁰*ftnote²⁰ Supra, note 6, at p. 105. "there is resemblance and in my view it cannot be ignored." The correct view, in my opinion, is that expressed in a similar context by the U.S. Patent and Trademark Office Trademark Trial and Appeal Board, in Miss Universe, Inc. v. Drost.²¹*ftnote²¹ 189 USPQ 212 (P.O. T.M. T. App. Bd. 1975). In that case the applicant had sought to register the designation "Miss Nude U.S.A.," for entertainment services, namely presentation of beauty pageants. Registration had been opposed by Miss Universe, Inc., on the ground, essentially, that the applicant's mark as applied to the services specified in his application so resembled the mark "Miss U.S.A." previously used and registered by Miss Universe, Inc. for promoting the sale of goods and services of others through the medium of a beauty contest conducted on a national and regional basis, as to be likely to cause confusion:²²*ftnote²² Miss Universe, Inc. v. Drost, supra, note 21, at p. 214.

Turning then to the salient question before the Board, both applicant's mark and opposer's "MISS U.S.A." mark include the words "MISS U.S.A." as the most important elements thereof, opposer's mark consisting in its entirety of these terms. The word "NUDE", on the other hand, is merely an adjective, is clearly subordinate to the notation "U.S.A." which it modifies, and does not serve to distinguish applicant's mark from that of opposer.

I therefore hold that the Trial Judge has committed reviewable errors in reaching his decision. In a case like this, where the facts on which the appeal is to be determined do not depend on the credibility of witnesses and are not in dispute, this Court is in as good a position as was the Trial Judge to draw what it considers to be the proper inferences from those facts and to make a finding as to the likelihood of confusion of the trade-marks, or of the trade-names.

That finding is an easy one to make in the present case which, it seems to me, is on all four with the Mr. Submarine case. Thurlow C.J.'s analysis in that case of the circumstances to be considered as enumerated in subsection 6(5) of the Act (at pages 103 to 105) could almost be followed word by word. There is no point repeating here words that have there been so eloquently spoken.

I therefore conclude that the respondent has failed to establish that the use of his proposed trade-mark does not give rise to any likelihood of confusion with the trade-mark of the appellant. I wish to note, in closing, that the following observations by the U.S. District Court for the Northern District of Georgia, when it concluded that confusion was likely in a case where Miss Universe, Inc. was attempting to enjoin Miss Teen U.S.A., Inc. from using the designation "Miss Teen U.S.A.," could have been directed at the present respondent:²³*ftnote²³ Miss Universe, Inc. v. Miss Teen U.S.A., Inc. 209 USPQ 698 (Dist. Ct. N.Ga. 1980), at p. 710.

But having devoted substantial resources and energy to cultivating a respectable image, the plaintiff's good name should not be left to the mercy of a latecomer's campaign to capture a portion of the market. Irrespective of the level of the defendant's organization at which it occurs, a less scrupulous individual exploiting eager contestants, or an overzealous contestant soliciting advertisements locally, may tarnish this image acquired at the plaintiff's great expense by associating the two pageants or by neglecting to correct misapprehensions by consumers.

DISPOSITION

I would accordingly allow the appeal, reverse the decision of the Trial Judge and direct the Registrar of Trade-marks to refuse the respondent's application for the registration of trade-mark serial no. 545,313, "Miss Nude Universe."

As graciously proposed by counsel for the appellant, costs should not be awarded on the appeal and in the Trial Division.

Hugessen J.A.: I agree.

Létourneau J.A.: I agree.