• Returned Matter for Redetermination Upholds Board's Finding of Confusion
  • October 27, 2016 | Authors: Jillian Brenner; Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Cathay Pacific Airways Limited v. Air Miles International Trading B.V., 2016 FC 1125

    The present decision was a redetermination of Cathay Pacific's appeal from the Board's decision refusing to register its application to register five marks, including ASIA MILES. The Court of Appeal set aside the Federal Court's decision finding the Board's decision unreasonable (see 2015 FCA 253 that was previously summarized; and 2014 FC 549 that was previously summarized). The Court of Appeal held that the Federal Court erred in not considering Cathay's new evidence. Furthermore, while purporting to apply the reasonableness standard, the Federal Court applied a correctness standard.

    In this redetermination, the Court concluded that a correctness standard of review should apply to findings of fact which were materially affected by the new evidence; other findings of fact remained subject to the reasonableness standard.

    The Court dismissed the ground of opposition under section 30(a) of the Trade-marks Act. Air Miles' pleading under this ground was insufficient, given that it had not been pleaded in the statement of opposition. The Court concluded that the Board's failure to consider Cathay's insufficient pleading argument was unreasonable.

    The Court also rejected the ground of opposition under section 30(b) of the Act. Cathay's new evidence filed would have materially affected the Board's decision on the use of the ASIA MILES marks by Cathay under licence. Reviewing the Board's decision on a correctness standard, the Court held that the evidence established use of the ASIA MILES Marks in Canada in connection with the services represented by the ASIA MILES Programme.

    On the issue of whether there was a reasonable likelihood of confusion, the Court found that the Board's finding that the ASIA MILES Marks were not licensed affected its subsequent findings on likelihood of confusion under sections 6(5)(a), (b) and (e).

    Cathay's ability to claim licensed use of its marks was found to have an overall favourable impact on its ability to demonstrate that there is no reasonable likelihood of confusion between the ASIA MILES mark and the AIR MILES mark. However, the Court concluded that the ASIA MILES mark was not sufficiently different from the AIR MILES mark for Cathay to be able to demonstrate that there was no reasonable likelihood of confusion. Furthermore, even if the Court applied a standard of correctness to the entirety of the Board's confusion analysis, the Court's conclusion would still be that the Board did not err in refusing Cathay's application.