Canadian law provides protection for a trademark that has been registered or has been used to a sufficient extent that consumers have begun to associate that mark with the manufacturer of the goods or provider of the services. When there is a dispute between two parties, the perennial question is whether the concurrent use of two marks is likely to mislead purchasers into believing that the products originated from the same source. If a consumer sees TRIUMPH motorcycles and TRIUMPH lingerie, is he or she likely to think that they are made by the same company? Perhaps not, given the disparity between the products. If a consumer sees CHECKMATE on toothpaste and CHECKUP on mouthwash, however, the question may be more difficult to answer.
It is immediately apparent that a number of different factors have to be considered when assessing whether consumers are likely to be confused. These factors are listed in the Trademarks Act and can be summarized as follows:
- The inherent distinctiveness of the marks. In other words, are the trademarks in issue descriptive of the product or service or are they novel or coined words? The trademark PAIN CONTROL is descriptive and lacks inherent distinctiveness when used in association with medication used to treat migraine headaches, but the same mark would be inherently distinctive if used in association with t-shirts.
- The extent to which the trademarks have become known. This is usually inferred from the length of use, although sometimes trademark owners will conduct a survey to assess the notoriety of a mark among Canadian consumers. A trademark that is very well-known will have an advantage over a mark that is not yet in use or has been used only to a limited extent.
- The type of product or service associated with the marks and the "nature of the trade," meaning the type of stores where the mark is found or the way the product is sold or service is provided. For example, if the trademarks are both used on shampoo and both products are sold in the same shopping aisle in a store, this will weigh in favour of a finding that confusion is likely. In contrast, in a situation where one product is a professional hair spray sold in a specialty hair care store and the other product is a shampoo sold to the general public in a drug store, a finding of confusion becomes more doubtful.
- The degree of similarity between the marks themselves in terms of their appearance, sound or the ideas that they suggest.
From the dawn of trademark law, the question of whether trademarks are likely to cause confusion among purchasers has been much considered and debated. The factors listed above have been reviewed and analyzed at length and in detail, and the law has developed through judicial comment and decisions. A few principles have emerged, including the following:
- The first part of a trademark is considered of greatest importance when assessing confusion. Thus, marks like SANDOCK and SANDSPOT may be more likely to be confused than SANDOCK and TACKDOCK.
- While all of the factors noted in the list above should be considered when assessing confusion, one or more factors may be given greater importance, depending on the circumstances.
- When a product is very specialized or very expensive, consumers are likely to take a great deal of care in making the purchase and are more likely to distinguish between two similar marks than consumers who are purchasing an inexpensive item or making an "impulse purchase."
Assessing the likelihood of confusion between two trademarks has not always been a completely serious business. In the course of the many cases that have considered the issue, there have been a few memorable comments by the judiciary. Two all-time favourites are:
- In October 1978, Mr. Justice Foster of the British High Court of Justice considered whether English consumers, familiar with the national daily newspaper the MORNING STAR, would be likely to confuse it with a proposed new daily paper to be called the DAILY STAR. The MORNING STAR was a left-wing news publication with a daily circulation of 21,000 in the U.K. and could usually be purchased at news vendors and only if it was ordered in advance. The DAILY STAR, in contrast, was to be a tabloid with large headlines and pictures with an initial circulation of about 1 million copies daily. Mr. Justice Foster, in denying an application for an interlocutory injunction, held that, given the common use of the word STAR for newspapers and differences in appearance, content, price and method of sale between the two newspapers, only a "moron in a hurry would be misled."
- More recently, in September 2009, the Federal Court of Canada considered the likelihood of confusion between the trademark owned by Atomic Energy of Canada (left) and the mark owned by a company called Areva (right).
Atomic Energy of Canada and Areva are competitors in the provision of nuclear products and services in Canada. Justice Zinn reviewed the various tests of confusion and found that the nature of the products and business were of primary importance in this case. He indicated that the consumers of nuclear products and services would be highly sophisticated and prudent in making purchases of this nature. Justice Zinn determined that there could be no such thing as a "hurried consumer" in this case and that it was "beyond the realm of possibility that any utility could be confused by the resemblance of the Atomic Energy and Areva marks into purchasing a reactor from the 'wrong' company." In summarizing the type of purchaser who would be involved, Justice Zinn found the perfect illustration to make the point: "In this industry, the fact that Homer Simpson may be confused is insufficient to find confusion."
While the relevant purchaser is not normally comparable to either the moron in a hurry or Homer Simpson, these memorable illustrations serve as useful reminders that the assessment of confusion involves more that just an assessment of the similarities between the trademarks themselves. Given the variety of factors involved, determining the likelihood of confusion remains a multi-faceted issue.
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