Last month we discussed the importance of “confusion” from a brand owner’s point of view. This month we are discussing the general approach to the concept.
Under the Trademarks Act, the use of a trademark causes confusion with another trademark if the use of both marks in the same area would be likely to lead to the inference that the goods or services associated with such trade marks are manufactured, sold, leased, hired or performed by the same person, whether or not such goods or services are of the same general class or appear in the same class of the Nice Classification”.
The use of a trademark causes confusion with a trade name and the use of a trade name causes confusion with a trademark under corresponding conditions.
The relevant perspective is not that of the owner of the junior mark but the perception of a mythical consumer. The intention of the owner of the junior mark is of little relevance to the issue of confusion.
Because of the words, “if the use of both . . . in the same area”, the test for confusion is based on the hypothetical assumption that both trade names and trademarks are used “in the same area”, despite whether this is the case. Geographical separation in the use of otherwise confusingly similar trade names and trademarks does not play a role in this hypothetical test. This follows from section 19 of the Act which states that registration gives the owner the exclusive right to the use of the trademark throughout Canada. For the owner of a registered trademark to have exclusive use of the trademark throughout Canada, there cannot be a likelihood of confusion with another trademark anywhere in the country.
Although the Act uses the expression “would be likely to lead to the inference.”, the courts have generally applied the confusion test in the present tense as “is likely to lead to the inference. . .” The test is a hypothetical rather than a forward-thinking test.
Given the wording of the Act it is unnecessary to show actual confusion, but evidence of confusion is persuasive. However, an adverse inference may be drawn from the lack of such evidence when it would readily be available if the allegation of likely confusion was justified. Although evidence of actual confusion may be an important factor in a confusion analysis it is not dispositive or a trump card.
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.