The fifth circumstance to be considered in determining whether trademarks or trade names are confusing is the degree of resemblance between the trademarks or trade names in appearance or sound, or in the ideas suggested by them.
Each of the statutory criteria need not be given equal weight. Although it is the last listed factor, resemblance between the trademarks is typically the dominant factor.
Appearance
While the trademarks must be assessed in their entirety and not dissected or subjected to meticulous examination, it is still possible to focus on the features of the mark which may have a determinative influence on the perception of purchasers. Consideration must be given to the “dominant” and “most striking” features of the marks in issue.
Although the first part of a mark is often considered more important, when that part is a common, descriptive or suggestive word, the significance of the first part decreases.
If a prefix or suffix is added to the aggrieved party’s mark, the words must not be subjected either to a side-by-side comparison or to a meticulous individual analysis. They should be viewed as a whole.
State of the Registrar evidence may be considered, and the existence of a common element may affect the issue of confusion.
If the marks have little or no inherent distinctiveness, in that a prefix is common to the trade, small differences are sufficient to distinguish one mark from another.
If the brand owner owns a family of marks derived from an existing mark the registration of such marks may be entitled to a broader ambit of protection than the individual marks. For example, McDonald’s Corporation owns a family of marks which begin with the letters “Mc”. In the past such marks were registered as associated marks since each mark is confusing with the other associated marks, but this practice has been discontinued.
When considering the degree of resemblance between marks, the approach will differ depending on whether the marks are registered or not. For unregistered marks, a court should only consider the way they have been used. For registered marks, a court must consider the trademark registration according to its terms to determine the scope of the rights granted to the registered owner. For a registered word mark this includes the right to use the word(s) that make up the mark in any size and with any style of lettering, colour or design.
The application of this principle relating to the extent of protection available to a registered word mark has been considered by the Federal Court of Appeal in three cases. In the first decision the court said this principle must not be given too great a scope. When comparing the marks, the rights of the owner are limited to a “use that is within the scope of the registration.” The existing case law provides guidance as to what graphic or other deviations from the mark as registered are acceptable.
In the second case the court said that the full scope of the rights granted in association with a registered trademark would not permit its owner to successfully assert rights relating to the distinctive graphic elements – the apple and snowflake design of the applicant’s mark – that were central to the distinctiveness of the applicant’s mark. The court refused to extend the principle to distinctive graphic elements.
In the third decision the extent of protection available to a registered trademark was again considered but in a different context. Here the defendant owned two trademark registrations for marks which were similar to the plaintiff’s registered trademarks. The defendant then began to use variants of its registered trademarks which were even closer to the plaintiff’s registered marks. The plaintiff instituted proceedings for infringement and expungement of the defendant’s registrations. The parties agreed that the variants were not separate trademarks but within the registrations, but the trial judge did not agree with this approach and dismissed the action.
On appeal the court disagreed with the trial judge and found that the variants were within the scope of the marks as registered. The court said that the applicable legal principle was that a variant was a part of the registered mark if it maintained the dominant features of the registered mark:
• The practical test to be applied is to compare the trademark as registered with the trademark as used and determine whether the differences between these two marks are so unimportant that an unaware purchaser would be likely to infer that both, despite their differences, identify goods having the same origin
• The variant does not depart from the mark as registered where the same dominant features are maintained, and the differences are so unimportant as not to mislead an unaware purchaser
• Deviations from the registered design mark must not change the distinctiveness of the mark; it must maintain its dominant features”
The court also said that if the variants were likely to cause confusion with plaintiff’s marks, then the defendant’s registered marks were also likely to cause confusion.
Adding “get up” or the use of the plaintiff’s mark's with other marks should not be relevant in an action for infringement. Similar considerations apply to use of a mark with another mark as the Trademarks Act does not distinguish between primary and secondary marks. However, the situation may be different if the mark is used as part of a composite mark.
Sound
Resemblance of the marks as sounded must be considered. The words may be different in appearance and yet the sound may be so similar that confusion is unavoidable. This is particularly so when the goods or services are ordered by telephone. Evidence of pronunciation is admissible in French or English.
Allowance should also be made for the difficulty in pronouncing foreign words, the habit of emphasizing parts of words, for slurring of prefixes, for mispronunciation and careless pronunciation.
When the first or main part of a word mark is the more emphatic or distinctive part it may be relatively unimportant that the marks have different suffixes.
Idea
Similarity of idea is a factor if it is reasonably apparent to the average purchaser. For confusion to exist, it is not necessary that the marks be identical, only that the “same idea” is sufficiently conveyed to the mind of the somewhat-hurried consumer to induce a mistaken inference. The “same idea” is a mental link between the marks and the respective goods or services of the parties. The link is created over time between the mark and the source of the goods or services.
In a specific case the idea evoked by a trademark may be a significant factor. For example, the fact that an opponent’s mark evoked a well-known professional hockey team was given significant weight. Survey evidence, presented through a qualified expert, can be presented to show the inherent distinctiveness and the idea a mark suggests.
The expression “ideas suggested” is not restricted to ideas that are inherent in the words making up the trademarks in question. What is important is the idea that the goods or services associated with the marks were produced or supplied by the same person. However, when a party tries to invoke a resemblance based on something out of the ordinary it will be necessary to present evidence to satisfy a court that the association or suggestion exists as a matter of fact before it is considered in a confusion analysis.
In case of special circumstances involving competing brands of cigarettes the idea conveyed by “no name” packaging was sufficiently strong to result in a finding of confusion despite that fact there was no resemblance between the respective packages of the competing products. The idea was intentionally conveyed by the compilation of various elements in the packaging used by the party found to have infringed.
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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