Confusing with another trademark
Mastering the Law of TrademarksUnder Canadian trademark law, a trademark cannot be registered if it is confusing with a registered or previously used trademark.
There is a public interest aspect to this prohibition, which is the prevention of confusion in the marketplace. The presence of confusing trademarks in the marketplace impairs the ability of consumers to know, when they are considering a purchase, that they are buying from the source from whom they think.
Parliament has stated that the use of one trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold or performed by the same person. It follows that a trademark is considered confusing with a registered trademark or a previously used trademark if the following question is answered in the affirmative: if both trademarks were to be used in the same area, would the average consumer be likely to think that the goods or services associated with those trademarks have the same source?
The test for confusion is a hypothetical one based upon the assumption that both trademarks are used "in the same area". As a result, geographical separation in the actual use of both trademarks does not play a role in this test. For instance, while one trademark may be used in Vancouver and another trademark may be used in Halifax, the test for confusion assumes that both trademarks are used in the same area. This assumption is consistent with the exclusive right that is given to the owner of a registration to use the trademark throughout Canada.
The determination of whether there is a likelihood of confusion with another trademark is made by taking into consideration the surrounding circumstances, including:
- the degree of resemblance between the trademarks in
- appearance,
- sound, or
- the ideas suggested by them;
- the nature of the goods, services or business;
- the nature of the trade;
- the inherent distinctiveness of the trademarks;
- the extent to which the trademarks have become known; and
- the length of time the trademarks have been in use.
The weight given to each circumstance will depend on the facts of a particular case.
The general statements and illustrative trademark cases below touch on the application of the test for likelihood of confusion between two trademarks. Although some of these trademark cases deal with confusion in the context of trademark infringement, the application of the test for likelihood of confusion is generally the same.
First impressions matter
In order to determine whether or not a trademark is confusing with a registered or previously used trademark, it is necessary to consider the first impression in the mind of the casual consumer who would see the trademark, when that consumer has no more than an imperfect recollection of the registered or previously used trademark. Where, on first impression, this consumer would be likely to be confused, that is, that this consumer would be likely to think that the goods or services associated with both trademarks came from the same source, the trademark cannot be registered.
CLIQUOT
The Supreme Court of Canada held that the trademark CLIQUOT was not confusing with the registered trademark VEUVE CLICQUOT. While CLIQUOT was used in relation to women's clothing stores operated by Boutiques Cliquot Ltée, VEUVE CLICQUOT was used with champagne. The issue before the Court was whether consumers would likely be confused into thinking that the clothing came from the same source as the champagne. The Court considered the first impression in the mind of a casual consumer somewhat in a hurry who would see the name Cliquot on Boutiques Cliquot Ltée's storefront or invoice, at a time when he or she had no more than an imperfect recollection of the VEUVE CLICQUOT trademark, and concluded that there was no risk of confusion in consumers' minds, primarily because of the significant difference between the nature of the parties' goods, or as the Court put it, "luxury champagne and mid-priced women's wear are as different as chalk and cheese".
View the decisionPerspective of the average consumer
The first impression must be assessed from the perspective of the casual consumer "somewhat in a hurry". It is the average consumer who is to be considered and not a rash, careless or unobservant consumer, nor a person having expert qualifications or of higher education.
BARBIE'S & Design
The Supreme Court of Canada held that the design trademark BARBIE'S for restaurant services was not confusing with the trademark BARBIE registered for dolls. The Court observed that the doll business and the restaurant business appealed to the different tastes of a largely different clientele. The target market for dolls was children and to some extent adult collectors, whereas the target market for restaurant services was adults. Moreover, the Court found that there was "no evidence that adult consumers would consider a doll manufacturer to be a source of good food".
View the decisionBased on a first impression, not on a side by side comparison
The issue of confusion is determined on a first impression basis and not by way of a careful examination of the competing marks or a side by side comparison. Any confusion would be in the consumer who has an imperfect recollection of the prior mark, and thus a detailed comparison of the two marks, letter by letter or syllable by syllable, would be of limited assistance.
GOLDEN CIRCLET
GOLDEN CIRCLET was refused registration because of a likelihood of confusion with the registered trademark GOLD BAND. Each trademark was for cigarettes. According to Pigeon J. of the Supreme Court of Canada, a person examining both marks carefully would readily distinguish them, but, because marks are not normally seen side by side, this was not the basis for determining whether there was any likelihood of confusion. Pigeon J. found that confusion was likely to arise partly because the idea suggested by the two marks was substantially the same - there was no substantial difference between "gold" and "golden", and a "circlet" was a kind of "band".
View the decisionViewed in its entirety
The casual consumer - an average person who goes into the market, not one skilled in semantics - does not tease out and analyse each portion of a mark alone. Rather, the casual consumer considers a mark as they encounter it, which is as a whole and as a matter of first impression. Thus, when assessing the degree of resemblance between two trademarks, it is improper to dissect the trademarks into their components with emphasis being placed on those elements which are common to both.
DANDRESS
The Supreme Court of Canada held that DANDRESS was not confusing with the registered trademark RESDAN. Each trademark was in relation to various hair related lotions. The Court opined that the first impression test "should not be applied by separating the syllables [of the marks] and finding that there is in each of them the same syllable without referring to the variations between the two marks and the order in which that syllable appears in each mark to determine whether they are phonetically confusing." Instead, "the test to be applied is with the average person who goes into the market and not one skilled in semantics." Consequently, from the position of the average person going into the market to purchase a dandruff remover, who does not slice up the two words, there could be no phonetical confusion.
View the decisionDominant component
When the casual consumer looks at a mark as a whole, some aspect of the mark may be particularly striking or unique and will be the dominant portion that will affect the casual consumer's overall impression.
MASTERPIECE LIVING
The Supreme Court of Canada held that MASTERPIECE LIVING was confusing with the previously used trademark MASTERPIECE THE ART OF LIVING. Both of the marks were used for retirement residence services. The Court tested resemblance between the marks by first considering whether there was an aspect of the trademarks that was particularly striking or unique. There was nothing striking or unique about the word "Living" or the words "the Art of Living". "Masterpiece" was the dominant word in both of these marks because it provided the "content and punch" of the marks. The word "Living" was "bland by comparison". The Court then turned to the idea evoked by the word "Masterpiece", high quality retirement lifestyle, and noted that it was the same for both marks. The word "Living" was also identical between the marks. Given these striking similarities, the Court observed that there was a strong resemblance as a whole between the two.
View the decisionResemblance in the ideas suggested
The determination of whether there is a resemblance in the ideas suggested by two competing trademarks does not necessarily involve assessing the resemblance between the dictionary meanings of those marks. It is sufficient if the competing marks are likely to suggest the idea that the goods or services associated with the trademarks were produced or marketed by the same person.
SMOOTHIES
SMOOTHIES was refused registration because of a likelihood of confusion with the registered trademark SMARTIES. Both marks were used in association with candies. Although the dictionary meanings of the marks were entirely dissimilar, there was a resemblance in the ideas suggested because the expressions were slang terms meaning a 'smooth operator' or 'smart aleck'. On this basis, the Supreme Court of Canada concluded that the words SMOOTHIES and SMARTIES were likely to suggest the idea that the candies with which they were associated were produced or marketed by the same person.
View the decisionActual confusion
The test for confusion is a hypothetical test focusing on whether or not there is a likelihood of confusion. Proof of actual confusion or the absence of such confusion over a long period of time is a significant factor that must be considered as part of the surrounding circumstances and does not trump other factors. There can be a likelihood of confusion even when there is no evidence of actual confusion.
MR. SUBS'N PIZZA
MR. SUBS'N PIZZA was found to be confusing with the registered trademark MR. SUBMARINE despite ten years of concurrent use of the marks in the Dartmouth, Nova Scotia area during which no instance of any actual confusion had come to light.
Further Learning Resources
Canada's Trademarks Act governs the registration of trademarks. By virtue of paragraph 12(1)(d) and section 16 of the Act, no one can register a trademark that is confusing with a registered trademark or a trademark previously used in Canada by any other person. Section 2, subsection 6(2), and subsection 6(5) must be read in conjunction with one another, as together they define the term "confusing" and set forth the legal test for confusion between two trademarks and the surrounding circumstances that must be taken into account. Section 15 provides an exception where confusing trademarks are registrable if the applicant is the owner of all such trademarks.
The Trademarks Examination Manual is published by the Canadian Intellectual Property Office (CIPO) and includes a section on confusion (at §III of the Manual).
The material made available on this website does not constitute legal or professional advice and should not be relied upon as such. Always obtain legal advice promptly in deciding an appropriate course of action for your particular situation.