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How to Determine When Trademarks are Confusing? – Part 3

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


We previously discussed the statutory factors set out in the Trademarks Act. Each of the statutory criteria need not be given equal weight. Typically, the 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 identical or very similar. A consideration of resemblance is where most confusion analyses should start.


The trademarks or trade names in question must be considered in their entirety. It is not a correct approach to put the trademarks side-by-side and make a careful comparison to observe similarities and differences. The question to be considered is whether the use of the trademark as a whole leads to the inference that the goods or services are manufactured or performed by the same person.


In an opposition where an opponent asserts that the applied for mark is confusing with several of the opponent’s marks, the confusion analysis must be undertaken on a mark-to-mark basis at the appropriate material date. An allegation of a “family of marks” is relevant to the analysis but does not change the obligation to carry out the analysis on a mark-to-mark basis.


Similarly, when confusion is alleged regarding several marks, the court should make an individual comparison regarding each mark rather than make an analysis based on a composite of all the marks.


The determination of whether two trademarks or trade names are confusing involves the exercise of personal judgment considering all the evidence with regard to the statutory factors and the surrounding circumstances. This is a judicial determination of a question of fact, not the exercise of discretion.


Each case depends on its own facts, and earlier decisions are helpful only insofar as they illustrate the application of the principles set out in the Act.


The U.S. doctrine of “initial interest confusion” allows for a finding of liability where a plaintiff shows a consumer was confused by a defendant’s conduct at the time of interest in a product or a service, even if the initial confusion is corrected by the time of purchase. No Canadian Court has applied doctrine, but a U.K. court has done so. However, the reasoning of the Supreme Court of Canada in Masterpiece seems to accept and apply the concept but without referring to it.


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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