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Why is Confusion so Important to a Brand Owner?

Updated: Apr 4

A brand name may be protected by obtaining a trademark registration. A brand name may also be protected, directly or indirectly, by taking action to enforce the rights associated with it against a competitor or other third party. Rights may be asserted directly when a competitor or potential competitor uses a confusing brand name or makes a misrepresentation leading or likely to lead the public to believe that the goods or services offered by it are the goods and services of the brand owner. The owner of a registered trademark can bring an action in the courts for trademark infringement or, if a registration has not been obtained, an action for passing off may be brought. Rights may be asserted indirectly when a third party’s attempt to obtain a trademark registration is scrutinized in the context of a trademark opposition.


If a brand owner does not take appropriate steps to ensure that competitors do not use trademarks or trade nameswhich are confusing with its brand name, the distinctiveness of the brand name may be diminished.


As a result of changes caused by increased use of the Internet there are potentially more brands in the marketplace and more channels of distribution. This means there is a greater potential likelihood of infringement. The sooner a brand owner is aware of potential infringement, the better the chance that the problem can be addressed before significant damage is done. Because of this a brand owner needs to develop a proactive strategy to monitor the marketplace and assess how to respond to cases of potential infringement.


When is Confusion Considered?

Section 6 of the Trademarks Act sets out statutory criteria for determining when trademarks and trade names are confusing. These criteria must be considered in the following situations, among others:

(a) When an assessment is made concerning whether a proposed mark is potentially available for use;

(b) In the prosecution of a trademark application where an Examiner has issued an office action asserting that the subject matter of the application is confusing with a registered mark or a pending application which is entitled to priority;

(c) In opposition proceedings, where the opponent takes the position that the applicant’s trademark is not registrable, or the applicant is not the person entitled to registration in that the trademark applied for is confusing with a registered trademark;

(d) In an action for infringement, where the plaintiff asserts that the defendant is selling, distributing or advertising goods or services in association with a confusing trademark or trade name;

(e) In proceedings seeking the expungement of a registered trademark where the party seeking expungement has taken the position that the trademark is invalid on the ground of the previous use or making known of a confusing trademark or a trade name.


The application of the statutory criteria remains the same in all instances, but the party bearing the onus of proof will vary depending on the proceedings. In opposition proceedings, the onus is on the applicant of the mark to establish the absence of a reasonable prospect of confusion. In an action for infringement or an action or proceeding seeking expungement, the onus of proof is on the party raising the issue to show a reasonable probability of confusion.


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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