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Trademarks - 'Confusion'. Tweak-D Inc. v. Canada (Attorney General)
In Tweak-D Inc. v. Canada (Attorney General) (Fed CA, 2023) the Federal Court of Appeal considered trademark 'confusion':[3] The Registrar is required to refuse an application for registration of a trademark if satisfied that the trademark is confusing with an already registered trademark: Trademarks Act, R.S.C. 1985, c. T-13, paragraphs 37(1)(b) and 12(1)(d).
[4] The test for confusion is whether the “casual consumer somewhat in a hurry” would likely make the inference that the goods or services associated with the trademarks emanated from the same source: subsection 6(2) of the Act; Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22 at para. 2; Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27 at para. 40.
[5] In making this determination, the Registrar must consider all the surrounding circumstances, including the factors listed in subsection 6(5) of the Act.
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[11] Whether confusion is likely is a question of mixed fact and law with a significant factual component: Remo Imports Ltd. v. Jaguar Cars Ltd., 2007 FCA 258 at para. 52; Venngo Inc. v. Concierge Connection Inc. (Perkopolis), 2017 FCA 96 at paras. 42-43; Masterpiece at para. 102. Accordingly, the standard of review is palpable and overriding error, unless the appellant can point to an extricable error of law.
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[13] It is generally irrelevant that a given mark may have been registered in the past; each application must be assessed on “its intrinsic value, the proposed services, and its particular context”: Cliche v. Canada (Attorney General), 2012 FC 564 at para. 27, aff’d 2013 FCA 8; Worldwide Diamond Trademarks Limited v. Canadian Jewellers Association, 2010 FC 309 at para. 80, aff’d 2010 FCA 326. Even if the Registrar has erred on a prior application, it is not required to perpetuate the error: Cliche at para. 31. We reject the appellant’s reliance on Johnson (S.C.) and Son, Ltd. et al. v. Marketing International Ltd., 1979 CanLII 171 (SCC), [1980] 1 S.C.R 99, as there, the validity of the registration of the “middle” registered mark was questioned; there is no claim here that TRIBAL was incorrectly registered.
[14] The “state of the Register” may, in some cases, demonstrate a pattern of registrability of similar marks. We adopt the Federal Court’s reasons at paras. 28-29 that inferences based on the Register should only be drawn if there is a large number of relevant registrations and evidence of actual use: McDowell v. Laverana GmbH & Co. KG, 2017 FC 327 at paras. 42-46; Tokai of Canada Ltd. v. Kingsford Products Company, LLC, 2021 FC 782 at para. 56; Puma at para. 48. ...
[15] The appellant argues that the Federal Court erred by “wholly discounting the significance” of the co-existence agreement between the appellant and the owner of TRIBAL. We disagree. A registered trademark owner’s consent to the registration of a competing trademark is not dispositive of registrability: Holding Benjamin et Edmond de Rothschild v. Canada (Attorney General), 2018 FC 258 at para. 24. It is one factor that may be considered.
[16] It was open to the Registrar to conclude that the co-existence agreement, while relevant, did not trump the other factors in subsection 6(5) of the Act: FC Reasons at para. 30. It is not the role of the Federal Court in a statutory appeal or this Court on a second appeal to reweigh the evidence: Clorox Company of Canada, Ltd. v. Chloretec S.E.C., 2020 FCA 76 at para. 38; Puma at para. 43. . Puma SE v. Caterpillar Inc.
In Puma SE v. Caterpillar Inc. (Fed CA, 2023) the Federal Court of Appeal considers a second appeal from the Trademarks Opposition Board under s.56(1) of the Trademarks Act. The court reviews some principles of the law of trademark 'confusion' and related trademark law:[8] Caterpillar appealed the Board’s decision to the Federal Court pursuant to subsection 56(1) of the Act. Both parties submitted fresh evidence before the Federal Court pursuant to subsection 56(5) of the Act. ....
[12] Relying on the Supreme Court of Canada’s decisions in Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23, [2006] 1 S.C.R. 824 and Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27, [2011] 2 S.C.R. 387 (Masterpiece) as well as our Court’s decision in Reynolds Presto Products Inc. v. P.R.S. Mediterranean Ltd., 2013 FCA 119, 111 C.P.R. (4th) 155, the Judge correctly articulated the test to be applied in assessing the likelihood of confusion:I find an apt formulation of the test to be applied in assessing the likelihood of confusion in this case to be this. As a matter of first impression, would the casual consumer, somewhat in a hurry, who sees a good bearing Puma’s trademark procat, when that consumer first encounters such trademark in the marketplace, and where the consumer has no more than an imperfect recollection of Caterpillar’s trademark CAT & Triangle Design and does not pause to give the matter any detailed consideration or scrutiny, be likely to be confused as to the source of the goods? Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 [Veuve] at para 20; Masterpiece Inc. v Alavida Lifestyles Inc., 2011 SCC 27 [Masterpiece] at para 87; Reynolds Presto Products Inc. v PRS Mediterranean Ltd., 2013 FCA 119 [Reynolds] at para 20. In other words, would the casual consumer believe that the goods associated with procat and CAT & Triangle Design respectively were authorized, licensed, manufactured or sold by the same person, that is, by Caterpillar?
[Judge’s decision at para. 61] ....
[25] Puma’s contentions fail to reveal a palpable and overriding error. Indeed, the Judge accepted dictionary definitions of "“pro”" that were not before the Board below, finding that it was a suggestive or laudatory prefix. It was not an error for the Judge to find that this element did little to make procat distinctive: suggestive or laudatory elements of trademarks are generally considered not to aid in distinction (Kelly Gill, Fox on Canadian Law of Trade-marks and Unfair Competition, 4th ed., (Toronto: Thomson Reuters, 2022), at s. 8:12 (Fox on Trade-marks); Registrar of Trade Marks v. Hardie & Co. Ltd., 1949 CanLII 34 (SCC), [1949] S.C.R. 483, [1949] 4 D.L.R. 582; Clorox Co. v. Sears Canada Inc. (T.D.), 1992 CanLII 14802 (FC), [1992] 2 F.C. 579, 53 F.T.R. 105 at p. 584 (aff’d 49 C.P.R. (3d) 217 (FCA)); Boston Pizza International Inc. v. Boston Chicken Inc., 2003 FCA 120, 224 D.L.R. (4th) 475 at para. 6).
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[37] Puma argues that the Judge erred in failing to consider each of the marks at issue as a whole and focusing instead on the word "“cat”" in both. This, in Puma’s view, amounts to a palpable and overriding error because, in ignoring the distinguishing elements in each of the marks, the Judge ultimately compared the word "“cat to cat”" and inevitably concluded that the marks resembled each other.
[38] This argument again fails. The Supreme Court’s decision in Masterpiece teaches that it is legitimate to consider a striking or unique element of a trademark in considering whether it resembles another mark and that "“trademarks with some differences still may result in likely confusion”" (Judge’s decision at para. 64; Masterpiece at paras. 62-64). Masterpiece also teaches that when a word mark is applied for, it must be borne in mind that the word mark may later be used in any style, form, typeface, or colour (Masterpiece at para. 55). As correctly emphasized by Caterpillar, the degree of resemblance must thus be considered with a view to actual use as well as a view to all possible future uses.
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[40] As it did in relation to the inherent distinctiveness factor, Puma again raises the concern that the Judge’s analysis results in a monopoly over the word "“cat”" to the benefit of Caterpillar. This contention remains unpersuasive. It has been found that marks consisting of commonly used words are deserving of a smaller ambit of protection and some risk of confusion is acceptable to allow for fair competition in the marketplace: General Motors Corp. v. Bellows, 1949 CanLII 47 (SCC), [1949] S.C.R. 678, [1950] 1 D.L.R. 569 at 691. However, this generally requires some evidence—deficient in the present case—that the word is so commonly used in the trade that a consumer will be sensitive to smaller differences in the mark (Johnson (S.C.) and Son, Ltd. et al. v. Marketing International Ltd., 1979 CanLII 171 (SCC), [1980] 1 S.C.R. 99, 105 D.L.R. (3d) 423 at 110-112; Swatch at para. 42; San Miguel Brewing International Limited v. Molson Canada 2005, 2013 FC 156, 108 C.P.R. (4th) 325, at paras. 33-40).
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[53] Puma further contends that the Judge failed to give its evidence of extensive sales due weight. While evidence going to sales figures, packaging, or advertising has been found to demonstrate use (Gill, Fox on Trade-marks, at s. 8:38; Everex Systems Inc. v. Everdata Computer Inc., [1992] F.C.J. No. 701, 44 C.P.R. (3d) 175 (Fed. T.D.) at paras. 28-30), the Judge’s reasons again do not suggest she disregarded this evidence. It is expressly discussed at paragraph 89 of her reasons and she agreed with the Board that it was the jumping cat design that links products to Puma in the consumer’s mind, not the word "“cat”" in Puma’s cat-nominative product lines (Judge’s decision at paras. 86, 89-90). It was open to the Judge to find that the evidence produced by Puma was insufficient to demonstrate that this link would exist for the mark procat without the incorporation of the jumping cat design. As such, it was similarly open to the Judge to find that the evidence that Puma uses other cat-nominative marks had little bearing on the likelihood of confusion between procat and Caterpillar’s CAT & Triangle Design mark. . Loblaws Inc. v. Columbia Insurance Company
In Loblaws Inc. v. Columbia Insurance Company (Fed CA, 2021) the Federal Court of Appeal considered a trade-mark challenge. The case is largely one of similarity-assessment and thus not legal, but it is an interesting and useful example of trade mark principles at work.
. 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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