Confusion Will (1) Prevent Registration of Your Trade-Mark and (2) Expose You to Infringement Claims
Many clients come to me having done some initial research into the availability of their proposed trade-mark. However, most do not understand the importance of the concept of confusion plays in analyzing availability.
Registration and Confusion
Section 12(1)(d) of the Trade-Marks Act (the “Act”) states “a trade-mark is registrable if it is not confusing with a registered trade-mark.”
Infringement and Confusion
Section 20(1) of the Act states “The right of the owner of a registered trade-mark to its exclusive use shall be deemed to be infringed by a person not entitled to its use under this Act who sells, distributes or advertises wares or services in association with a confusing trade-mark or trade-name…”
Meaning of Confusion
Section 2 of the Act provides that “confusing”, when applied as an adjective to a trade-mark or trade-name, means a trade-mark or trade-name, the use of which would cause confusion in the manner and circumstances described in section 6.
Section 6 of the Act describes the manner and circumstances in which one trade-mark would cause confusion with another. Subsections 6(1) and (2) of the Act provide the following:
(1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.
(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
Accordingly, your proposed mark will be deemed to be likely to cause confusion with a registered trade-mark if the use of your proposed mark would be likely to lead to the inference that the wares and services associated with it, and the wares and services associated with the registered trade-mark were produced by the same company or come from the same source. That deemed confusion would render your proposed mark unregistrable.
Test for Confusion
The test of confusion is whether, as a matter of first impression in the minds of the ordinary person having a vague recollection of the trade-mark or trade-name, the use of a trade-mark or trade-name will likely lead to the inference that the wares, services or businesses associated with those marks or names are performed by the same company or come from the same source.
“In considering the similarity of trade marks it has been held repeatedly that it is not the proper approach to set the marks side by side, and to critically analyze them for points of similarities and differences, but rather to determine the matter in a general way as a question of first impression.” (Canadian Schenley Distilleries Ltd. v. Canada’s Manitoba Distillery Ltd. )
When the marks being considered are composite marks, the whole mark must be considered. “It is the combination of the elements that constitutes the trade mark and gives distinctiveness to it, and it is the effect of the trade mark as a whole, rather than of any particular element in it, that must be considered.” (British Drug Houses Ltd. v. Battle Pharmaceuticals)
The fact that your proposed mark might be used in a different part of Canada than a registered mark currently is used will not be relevant. Registration gives the registrant nation-wide protection and exclusivity. In 2011, the Supreme Court of Canada stated, “In order for the owner of a registered trade-mark to have exclusive use of the trade-mark throughout Canada, there cannot be a likelihood of confusion with another trade-mark anywhere in the country.” (Masterpiece Inc. v. Alavida Lifestyles Inc.)
Subsection 6(5) of the Act provides that the following surrounding circumstances should be considered in determining whether trade-marks or trade-names are confusing:
(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
(b) the length of time the trade-marks or trade-names have been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
Case law has confirmed that all of the above-noted surrounding circumstances must be taken into account in determining whether trade-marks are confusing.
An additional circumstance to consider is whether both of the subject marks have an element common to the trade. Such elements cannot be appropriated to the exclusive use of a particular trader because they cannot be said to contain the vital element of distinctiveness. (Ortho Pharmaceutical Corp. v. Mowatt & Moore Ltd.)
Unfortunately, the absence of your proposed trade-mark from the CIPO trade-mark database is not sufficient to qualify your mark as being available for use and registration. Amongst other factors, you must consider the likelihood that your proposed mark will cause confusion with any similar registered mark. We can help you with that analysis and minimize the risk of filing applications that will be rejected, and the risk that adoption of your proposed trade-mark could lead to successful infringement claims from the owners of registered trade-marks.