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Trade-Marks

. Live! Holdings, LLC v. Oyen Wiggs Green & Mutala LLP

In Live! Holdings, LLC v. Oyen Wiggs Green & Mutala LLP (Fed CA, 2020) the Federal Court of Appeal considered an interesting trade mark expungement case [paras 21-51].

. The Clorox Company of Canada, Ltd. v. Chloretec S.E.C.

In The Clorox Company of Canada, Ltd. v. Chloretec S.E.C. (Fed CA, 2020) the Federal Court of Appeal stated and considered the test for trade-mark 'confusion':
[32] There is no dispute between the parties as to the proper test for confusion. That test was set out by the Supreme Court in paragraph 20 of Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée., 2006 SCC 23, [2006] 1 S.C.R. 824:
The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the name Cliquot on the respondents’ storefront or invoice, at a time when he or she has no more than an imperfect recollection of the VEUVE CLICQUOT trade-marks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks.
[33] The Federal Court was well aware of that test and indeed quoted that very same extract. It is also well established that when applying the test for confusion, the trier of fact must have regard to all the surrounding circumstances, including those specifically enumerated in subsection 6(5) of the Act. Again, this is precisely what the Federal Court did in the case at bar, stressing as Justice Rothstein did in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27, [2011] 2 S.C.R. 387 (at para. 49) [Masterpiece], that the most important criterion is that of resemblance between the marks.

[34] Clorox argued, however that the Federal Court erred in writing that a consumer "“is not always hurried to the same extent”" for valuable or niche market goods.

[35] I can see no error in that statement. Quite to the contrary, it is consistent with the decision of the Supreme Court in Mattel, according to which consumers will be more cautious and take more time in some circumstances:
A consumer does not of course approach every purchasing decision with the same attention, or lack of it. When buying a car or a refrigerator, more care will naturally be taken than when buying a doll or a mid-priced meal…

Mattel at para. 58, citing General Motors Corp. v. Bellows, 1949 CanLII 47 (SCC), [1949] S.C.R. 678.



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