Tiger Calcium Services Inc. v. Compass Minerals Canada Corp., 2015 FC 1257 (McDonald J.)
November 6, 2015
Yuri Chumak of Fleck & Chumak LLP, for Tiger Calcium Services Inc. (Applicant)
May Cheng and Sarah Goodwin of Fasken Martineau DuMoulin LLP, for Compass Minerals Canada Corp. (Respondent)
Compass filed an application to register ENVIRO-GUARD for de-icing products, based on proposed use in Canada. Tiger opposed, based on a likelihood of confusion with its marks CLEAR GUARD, ROAD GUARD PLUS and NANUK ENVIRO NON/CHLORIDE, previously used and registered in Canada. The Opposition Board rejected the opposition, holding that the parties’ marks are relatively weak marks, that the parties’ channels of trade are different (Tiger sells largely to institutional buyers whereas Compass sells to consumers in retail channels), and that the parties’ marks are more different than alike. Tiger appealed to the Federal Court.
Tiger filed additional evidence on appeal. It asserted that the additional evidence established that the parties are direct competitors with overlapping channels of trade and that CLEAR GUARD and ROAD GUARD are not weak marks. Tiger argued that, because of the additional evidence, the standard of review on appeal should be correctness.
The Court disagreed. The additional evidence, while voluminous, was largely repetitive and would not have materially changed the findings of the Opposition Board. First, the additional evidence of two invoices showing sales of CLEAR GUARD products by Tiger in retail outlets was insufficient to establish that the parties are direct competitors with overlapping “retail” channels of trade. Second, the additional evidence did not support Tiger’s argument that the word “GUARD” is distinctive of it. In fact, Tiger’s state of the register evidence showed that marks containing GUARD are common. Third, the additional evidence of Tiger’s use of the mark COAL GUARD could not be considered by the Court because this mark was not pleaded in the Statement of Opposition.
In conclusion, the Court held that Tiger’s additional evidence was not new evidence which would have had a material impact on the decision of the Opposition Board. Therefore, the findings of the Opposition Board were to be assessed on a standard of reasonableness. In this case, the Board’s decision was reasonable. The appeal was dismissed with costs.
By: Hung Nguyen, Deeth Williams Wall LLP