This case, heard before Mr. Justice Rennie,
was an appeal from the decision of the Registrar of trade-marks dismissing
Habib Bank Limited’s (HBL) opposition to Habib Bank AG Zurich’s (HBZ)
trade-marks.
Facts
The history behind the two companies helps
explain the similar names. HBL was founded in in 1941 in Bombay, India by the
Habib family. It was established to provide banking services to the Muslim
Community in India. After the partition of India and Pakistan in 1947, HBL
moved its headquarters to Karachi, Pakistan. HBL continued to grow and in 1967
sought to establish in Switzerland. Swiss law at the time required a bank to
have local capital; therefore HBZ was established with its head office in
Zurich.
In 1974, under the premiership of Zulfiqar
Ali Bhutto, Pakistan’s banks were nationalized, including HBL. Though the Habib
family lost control of HBL, it maintained control of HBZ. From 1974 until 2003,
when Pakistan divested itself of HBL, HBL and HBZ had several disputes over the
use of the name Habib. In 1986 a settlement agreement was reached between the
two parties that regulate the use of the word Habib for banking, though it does
not directly address trade-marks. In 2003 Pakistan Divested itself of HBL, and
for a brief time, the Habib family regained control of HBL. As of 2004,
however, the Habib family has had no interest in HBL.
In 2004 HBZ filed application No. 1,220,988
to register the trade-mark “HABIB CANADIAN BANK & DESIGN” and application
No. 1,220,990 to register the trade-mark “HABIB CANADIAN BANK”. HBZ filed these
applications based on use of trade-marks in Canada since March 22, 2001 in
association with banking services.
On March 10, 2006 HBL filed statements of
opposition to the marks. The grounds of opposition were; HBZ not being entitled
to register the trade-marks under s.16(1)(a) of the Trade-marks Act (Act) as the trade-marks are confusing with HBL’s
trade-marks which had been previously been made known in Canada, and the
trade-marks are not distinctive under s.2 of the Act.
HBL’s evidence included evidence that its
marks were made known in Canada as early as 1990 through the operation of a
representative office for 1 year in Mississauga, Ontario. HBL also stated that
it advertised the office in many newspapers, giving one concrete example. HBL
also cited 5 examples of transactions with Canadian banks in 2004 as evidence
of its commercial presence in Canada. HBL’s website received over 87,000 hits
between November 2006 and March 2007. Finally, as of March 23, 2007 HBL had 462
account holders with primary addresses in Canada. Though not part of HBL’s
evidence, once instance of reported confusion between HBZ and HBL in Canada was
shown in an article published in the
Toronto Star.
Justice Rennie noted that there was no new
evidence on appeal; therefore the matter was to be decided using the standard
of reasonableness of the Registrar’s decision.
In confirming the Registrar’s decision,
Justice Rennie found it reasonable that the sum of HBL’s evidence does not show
that HBL’s marks or trade-name were used or made known in Canada as of the
material date, which is the date of use, and that as of the date of opposition,
HBZ’s marks were distinctive of HBZ.
The material dates had the effect of
limiting any evidence showing that HBL’s mark and name were known to those
prior to March 10, 2006. This left HBL with the one year of operation of a
representative office in the early 1990s, one concrete publication of
advertisement, and 5 transactions with Canadian Banks.
Confusing with a mark made known in
Canada
Section 16(1)(a) permits registration of a
mark so long as it is not confusing with a mark that is used or made known in
Canada. HBL argued that its mark was made known in Canada, and that HBZ’s mark
would be confusing at the date of first use, March 22, 2001.
To have a mark “made known” in Canada
requires use of the mark in a World Trade Organization (WTO) member country,
advertising in Canada of the mark in association with the wares or services
used in the first country, and an association between the mark and services in
Canada because of such advertising. Since Pakistan is a WTO member country HBL
satisfied the first leg of this test.
HBL could only show minimal advertising in
Canada, and could not show circulation for its one concrete newspaper
advertisement. The court found, not surprisingly, that
statements such by the witness for HBL that HBL had advertised in “many”
publications, without giving further details was weak evidence.
Finding that HBL could not show use or that
it had made its mark known in Canada, Justice Rennie found that HBL’s
opposition under s.16(1)(a) could not succeed regardless of whether there was
confusion. Additionally, Justice Rennie found it reasonable for the registrar
to dismiss the one instance of reported confusion in the Toronto Star article, as the evidence was unconfirmed, and anecdotal.
The statement was a second hand account without a clear description of the
marks that were confused.
Distinctiveness
HBL also claimed that HBZ’s marks do not
distinguish HBZ’s services from that of HBL as of the date of opposition, March
10, 2006.
Using the summary of the law on
distinctiveness provided by Justice Noël in Bonjangles’ International, LLC v. Bojangels
Café Ltd, 2006 FC 657, Justice Rennie found
that given the evidence before the Registrar, it was reasonable for the
Registrar to find that HBL’s mark was not known in Canada.
In arriving at her decision that HBL’s marks
were not sufficiently known the Registrar noted that the representative office
of HBL had closed 14 years prior to the date of opposition of HBZ’s mark, and
that there was no evidence of HBL’s trade-mark being displayed during the 5
transactions with Canadian banks in 2004.
Unlicensed Use by a Third Party
Finally Justice Rennie found the
Registrar’s decision not to entertain any arguments regarding the use of HBZ’s
marks by the Habib Canadian Bank as proper use by HBZ as reasonable. The
failure of HBL to state this ground of opposition in the pleadings removed the
possibility for HBL to rely upon it.
Conclusion
Aside from the interesting set of facts
arising from nationalization, this case stresses the importance of evidence in
opposition proceedings. Evidentiary support of statements is important. It is
also important to file evidence that considers the material dates of each
ground of opposition.