Decision of the Trademarks Opposition Board Confirmed on Appeal
The Federal Court has upheld the decision of the Trademarks Opposition Board (TMOB), confirming that the marks in issue were not confusing, despite filing material new evidence. Align Technology, Inc. v. Osstemimplant Co., Ltd 2022 FC 720.
The Applicant filed a trademark application for MAGICALIGN. The application was based on the proposed use and sought registration in association with: (1) custom orthodontic instruments; (2) mouthpieces for orthodontics; and (3) orthodontic appliances. The opponent opposed the application on the basis that the mark was confusingly similar to the family of trademarks registered and extensively used in Canada in association with orthodontic and dental products and related services. The family included registrations for the mark ALIGN and for INVISALIGN.
The Decision of the TMOB
The TMOB rejected the Applicant's opposition to MAGICALIGN on all grounds. The dete minative issue was whether MAGICALIGN was confusing with the Opponent's trademarks INVISALIGN and ALIGN. The TMOB found that:
(a) The MAGICALIGN and INVISALIGN marks had a comparable degree of inherent distinctiveness as they were both coined words, suggesting products or services that could correct the misalignment of teeth. The AL N mark had a low degree of inherent distinctiveness because it had a descriptive nature when considered in association with the goods of the parties.
(b) The extent to which the marks had become known, the extent of use and length of time in use clearly favoured the.
(c) The nature of the goods and trade were identical.
(d) There was not a high degree of resemblance in appearance, sound, or idea suggested between MAGICALIGN and the Opponent's INVISALIGN and ALIGN marks.
(e) The Opponent had a family of ALIGN trademarks. However, it was given limited weight as a surrounding circumstance because the number of marks in the family was small, and the "ALIGN" component was not used as a suffix in all of the marks.
An ordinary consumer would not, as a matter of first impression, be likely to think that the goods associated with MAGICALIGN would emanate from the same source as those associated with the INVISALIGN or ALIGN trademark or vice versa. There was no reasonable likelihood of confusion between the parties' trademarks.
The Appeal to the Federal Court
The Opponent filed significant new evidence as part of its appeal. Such evidence will be considered only if it is sufficiently substantial, significant and probative that it would have a material impact on the TMOB's decision. If evidence is material, the Court must review the issue to which the evidence pertains on a correctness standard and make its own determination based on the whole of the evidence. In such circu stances, the Court is not limited to finding a reviewable error in the TMOB's decision, and the appeal is in the nature of a hearing "de novo" with the benefit of the additional evidence.
The Court concluded that evidence relating to the state of the register was evidence that the TMOB would have considered significant in its analysis of inherent distinctiveness and the surrounding circumstances and warranted a de novo assessment of these factors. State of the register evidence was not filed before the TMOB.
In addition, evidence from dentists that the word "aligner" had become part of the trade vocabulary since the Opponent's Align Trademarks came into use suggested that "ALIGN" would have only limited inherent distinctiveness as it was descriptive of the function of the parties' goods. As such, this evidence was material.
The test for assessing the likelihood of confusion is considered as a matter of first impression in the mind of a casual consumer, somewhat in a hurry, with an imperfect recollection of the trademark, who does not pause to give the allegedly confusing mark in front of them any detailed consideration or scrutiny or to examine closely the similarities and differences between the marks. The likelihood of confusion is determined by considering the surrounding circumstances, including the criteria set out under subsection 6(5) of the Trademarks Act, which are not exhaustive and may be given different weight in a context specific assessment.
Based on the new evidence accepted, as set out above, the Judge's analysis included a de novo review of paragraph 6(5)(a), consideration of whether the TMOB made a palpable and overriding error in its analysis of the remaining subsection 6(5) factors, and a de novo review of weighing the factors and the determination of whether there is a likelihood of confusion.
Factor 6(5)(a) considers the inherent distinctiveness of the marks in issue and the extent to which they have become known. The new evidence Opponent confirmed the TMOB's conclusion that the competing marks have a similar degree of inherent distinctiveness. They are both coined words that include a component "align," suggesting products and services that can correct misaligned teeth. "ALIGN" was the opponent's s inherently distinctive because it describes the intended function of the goods and services. This opponent's conclusion was confirmed by the fact that "aligner" and "align" had become terms of the trade, and the state of the register evidence indicates other third-party marks used the word "aligner" in association with goods, along with the word "align" to describe the third-parties goods.
The evidence supports a finding there is significant acquired distinctiveness in the INVISALIGN mark and, to a lesser extent, the ALIGN mark, as it has been used less prominently in promotional, product and marketing materials, and also because "align" is used in verb form in other third party marks.
The TMOB conclusions concerning the length of time in use, nature of the goods and the channels of trade were not questioned.
The Judge saw no palpable or overriding error in the conclusion there was not a high degree of resemblance between the respective marks in sound or in the idea expressed of the marks.
The Judge said even after conducting her own review of factor 6(5)(a), and how that may affect weighing the factors, she came to the same conclusion as the TMOB. Despite the significant acquired distinctiveness of INVISALIGN and, to a lesser extent ALIGN, the increased ambit of protection afforded to the marks because of their extent of use, the identical nature of the goods and trade, and the small family of ALIGN marks owned by the Applicant, the overall differences in the appearance, sound and idea of the marks dominate and would not lead to a likelihood of confusion in the marketplace. The ordinary consumer, which in this case would be a consumer that would take more care as these products are higher priced products, would not, as a matter of first impression, be likely to think that the goods associated with MAGICALIGN would emanate from the same source as those associated with INVISALIGN and ALIGN. The appearance, sound and idea conveyed by the marks are just too dissimilar.
The Trademarks Act has been amended to change the current practice concerning appeals from the TMOB and additional evidence, as reflected in this decision. Under the amendment, leave to adduce evidence in addition to that before the TMOB must be obtained from the Federal Court. The amendment mentions no criteria concerning granting leave, so it remains to be seen what approach might be taken. Although the amending legislation was passed in 2018, the amendment has not been brought into force. However, recently there has been some suggestion this will occur in the relatively near future.
Sooner or later, counsel acting in oppositions will have to ensure that all the relevant evidence is filed before the TMOB or accept the risk of seeking leave in the Federal Court.
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These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
A version of this article originally appeared in the Lawyer's Daily published by LexisNexis Canada Inc.