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How to Determine When Trademarks are Confusing? – Part 2

This month we are continuing to discuss the general approach to trademark confusion.


In determining whether trademarks or trade names are confusing, the Court or the Registrar  must have regard to the surrounding circumstances, including:

(a) the inherent distinctiveness of the trademarks or trade names and the extent to which they have become known;

(b) the length of time the trademarks or trade names have been in use;

(c) the nature of the goods, services or business;

(d) the nature of the trade; and

(e) the degree of resemblance between the trademarks or trade names in appearance or sound or in the ideas suggested by them.


The items listed above are not exhaustive and different circumstances will be given different weight in a context-specific assessment.


To determine whether two trademarks are confusing, the Court or the registrar must determine the effect of the marks on those persons who normally make up the market. This does not mean a rash, careless or unobservant purchaser, or a person of higher education, possessed of expert qualifications. Rather, it is the average person endowed with average intelligence acting with ordinary caution—the casual consumer somewhat in a hurry. The issue must be determined as a matter of first impression, considering imperfect recollection and careless pronunciation.


The risk of confusion for the average anglophone consumer or the average francophone consumer or in special circumstances the average bilingual consumer should be considered. The perspective of the average bilingual consumer is only considered where a trademark includes unusual or distinct words which might confuse someone who knew what they meant in both English and French.


In a case involving trademarks composed of Chinese characters the Trademark Opposition Board considered the impression of the average Canadian consumer who could read and understand Chinese characters and English, since they were the actual consumers of the goods in issue.


Each of the statutory criteria need not be given equal weight. Typically, the degree of resemblance between the trademarks in appearance, sound or in ideas suggested by them is the dominant factor. If the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion. The other factors become significant only once the marks are found to be identical or very similar. As a result, a consideration of resemblance is where most confusion analyses should start.


A previous decision of the Trade-mark Opposition Board disallowing the applicant’s claim to a trademark based on confusion with the opponent’s mark will be given little weight in a subsequent action by the opponent for infringement relating to use of the same mark because the record and burden of proof are different. The legal system is not a stranger to different outcomes arising out of the same factual situation where different issues are at stake and different evidence is introduced.


More to follow next month.


If you have questions, please contact me at mckeown@gsnh.com


Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: mckeown@gsnh.com


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.




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