Confusion in Canadian trademark law

Last updated April 21, 2023

Under Canadian trade-mark law, "confusion" is where a trade-mark is similar enough to another trade-mark to cause consumers to equate them. Likelihood of confusion plays a central role in trade-mark registration, infringement and passing-off.^[1] Whether a trade-mark or trade-name is confusing is a question of fact.^[2] The role of confusion in trade-mark law is analogous to the role of substantial infringement in patent law.^[1]

Definition

Section 6 of the Trademarks Act sets out the situations where a trade-mark is confusing:

6.(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or service are of the same general class.^[3]

The essence of confusion is the inference of common source.^[4] In other words, Trade-mark A will be confusing with Trade-mark B if the use of both trade-marks in the same area will lead consumers to believe that the goods or services sold under either trade-mark originate from the same source.

Statutory Factors

Section 6(5) of the Trademarks Act provides that in determining whether there is confusion, a court must examine "all of the surrounding circumstances" including:

(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
(b) the length of time the trade-marks or trade-names have been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.^[5]

The factors under section 6(5) are not exhaustive.^[6] Also, given the factual nature of confusion, the particular factors considered and the weighing of the factors varies from case-to-case.^[7]

Degree of Resemblance

Determining the degree of resemblance between the trade-marks is the starting point of a confusion analysis.^[8] The assessment of resemblance under s. 6(5)(e) is not limited to similarities in the appearance of the trade-marks. Similar sounding word marks can be confusing, even if they appear to be different.^[8] Word marks representing similar ideas can be confusing (e.g. "Smoothies" and "Smarties" in the context of candies).^[9]

Standard of Comparison

In determining the degree of resemblance between the trade-marks, a court will examine each trade-mark as a whole, rather than breaking it up into its individual elements.^[10] For example, in Molson Companies Ltd. v. John Labatt Ltd., the Federal Court of Appeal compared the trade-marks "Molson Golden" and "Winchester Gold" in their entirety.^[11] Although both trade-marks used the descriptive "Gold" or "Golden", when viewed as a whole, the trade-marks were sufficiently distinguishable that there was no reasonable likelihood of confusion.^[11]

"Ordinary Casual Consumer Somewhat in a Hurry"

In a leading case on confusion, Mattel, Inc. v. 3894207 Canada Inc. , the Supreme Court of Canada stated that the appropriate standard of comparison is that of the "ordinary casual consumer somewhat in a hurry".^[12] In applying this standard, a court will ask whether a consumer of average intelligence and caution casually encountering both trade-marks in the marketplace would be likely to confuse them.

Actual Evidence of Confusion

In addition to predicting whether an "ordinary casual consumer somewhat in a hurry" would perceive confusion, a court may also consider evidence of actual confusion of the trade-marks in the marketplace.^[13] Although evidence of actual confusion is not necessary,^[14] the presence or absence of actual confusion in the marketplace may be a relevant "surrounding circumstance" under s. 6(5) of the Trade-marks Act.^[15]

Distinctiveness

Marks consisting of everyday words or expressions are inherently less distinctive than ones based on invented or coined words or expressions.^[16] However, a mark based on an everyday word may nonetheless acquire distinctiveness if it is employed extensively.^[13] In Mattel, the Court found that although Mattel’s "Barbie" trade-mark was based on an every day word, it had acquired substantial distinctiveness through its strong association with the company's doll products.^[17]

Trade-marks in Different Businesses

Although section 6(2) of the Trade-marks Act provides that there can be confusion "whether or not the wares or service are of the same general class",^[3] differences in the types of goods or services associated with each trade-mark are a relevant consideration in determining confusion.^[18] In Mattel, the Supreme Court found it unlikely that consumers would confuse "Barbie" for dolls with "Barbie" for restaurants.^[19] Similarly, in Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, the Supreme Court of Canada found that the use of "Cliquot" for mid-market women’s clothing stores was not confusing with "Veuve Clicquot" as a mark for a famous brand of champagne.^[20] While it is possible for a famous trade-mark holder to argue that its trade-mark will expand into new lines of business, there must a reasonable basis for this prediction.^[20]

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References

1 2 Vaver 2011, p. 530.
↑ Benson & Hedges (Canada) Limited v. St. Regis Tobacco Corporation, 1968 CanLII 1 at p. 199, [1969] SCR 192(18 November 1968)
1 2 "Trade-marks Act (R.S.C., 1985, c. T-13)". 28 June 2021., s. 6(2)
↑ Visa International Service Association v. Visa Motel Corporation, 1984 CanLII 517 at par. 15, 1 CPR (3d) 109(21 June 1984), Court of Appeal (British Columbia,Canada)
↑ "Trade-marks Act (R.S.C., 1985, c. T-13)". 28 June 2021., s. 6(5)
↑ Gainers Inc. v. Marchildon (1996), 66 C.P.R. (3d) 308 (F.C.T.D.)
↑ Vaver 2011, p. 531.
1 2 Vaver 2011, p. 532.
↑ Rowntree Company Limited v. Paulin Chambers Company Limited et al., 1967 CanLII 100 , [1968] SCR 134(28 November 1967)
↑ Ultravite Laboratories Ltd. v. Whitehall Laboratories Ltd., 1965 CanLII 43 at p. 192, [1965] SCR 734(24 June 1965)
1 2 Molson Companies Ltd. v. John Labatt Ltd. (1994), 58 C.P.R. (3d) 527
↑ Mattel, Inc. v. 3894207 Canada Inc. , 2006 SCC 22 at par. 56, [2006] 1 SCR 772(2 June 2006)
1 2 Vaver 2011, p. 534.
↑ Christian Dior, S.A. v. Dion Neckwear Ltd., 2002 FCA 29 , [2002] 3 FC 405(23 January 2002)
↑ Mattel, par. 55
↑ Vaver 2011, p. 535.
↑ Mattel, par. 75
↑ Mattel, par. 51
↑ Mattel, par. 83
1 2 Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23 , [2006] 1 SCR 824(2 June 2006)