Bagagerie S.A. v. Bagagerie Willy Ltée

A-301-87

Desjardins J.A.

15/10/92

Appeal from Trial Division decision ([1987] 3 F.C. D-12) dismissing appellant's action to prohibit respondent using words "La Bagagerie" in trade name -- Appeal based on Trade-marks Act, ss. 20 and 22 -- Trial Judge dismissed action on ground no possibility of confusion by public between appellant's brands and respondent's trade name -- Holding word "bagagerie" already in common use at time appellant sought to appropriate it as trade mark -- Judge erring by incorrectly applying "confusion" test based on s. 20 of Act and by misunderstanding meaning of word "bagagerie" in French -- As appellant's marks registered and validity not challenged by respondent, presumed valid -- Distinction between appellant's trade marks and respondent's trade name minimal since each contains same words "La Bagagerie" -- Appellant's trade marks used in Canada since at least 1964, whereas respondent granted French trade name in 1979 -- Little difference in type of goods, services or business offered by appellant and respondent -- Courts recognize no distinction between goods of same general class in which "price" factor main distinguishing feature -- On this point, Trial Judge incorrectly applied case law rules relied on by him -- Little difference in nature of two parties' business -- Trial Judge erred in confusing respondent's trade name, which is bilingual, with its signage -- Unilingual French nature of sign adds to degree of resemblance between appellant's marks and respondent's trade name -- Few distinguishing features between them insufficient and create risk of confusion -- To rely successfully on defence based on Act, s. 20 respondent required to establish word "bagagerie" was "accurate description" of goods it offered for sale, namely suitcases, handbags, travel accessories and so on -- Word "bagage" [baggage], as defined in dictionaries, designates content, not container -- Distinction between suitcase (container) and baggage (suitcase containing one or more effects) -- In everyday speech baggage synonymous with suitcase containing effects -- Publishing houses withdrawing word "bagagerie" from their respective dictionaries at appellant's instance -- Word "bagagerie" or phrase "La Bagagerie" in 1984 when proceedings brought not descriptive of articles sold by respondent -- Respondent's defence based on s. 20(b)(ii) inadmissible -- Appeal allowed -- Trade-marks Act, R.S.C. 1985, c. T-13, ss. 20, 22.