The first pronouncement by a court in Canada on reverse confusion was made on March 23, 2005 by the Federal Court, Trial Division in A&W Food Services of Canada Inc. v. McDonald's Restaurants of Canada Limited (2005 FC 406). At issue was the trademark CHICKEN McGRILL, which McDonald's has used in association with a grilled chicken sandwich since 2001. A&W alleged that McDonald's was infringing its registered CHICKEN GRILL trademark.
In a typical trademark confusion case, the Plaintiff claims that the Defendant's trademark causes customers to believe that the Defendant's goods originate with the Plaintiff. This is known as "forward" or "direct" confusion. However, in this case, A&W claimed that McDonald's use of the trademark CHICKEN McGRILL caused A&W customers to believe that A&W's CHICKEN GRILL sandwich was a McDonald's product. This kind of confusion is termed "reverse confusion".
The concept of reverse confusion is well established in the United States. The Court reviewed the pertinent U.S. case law, then turned to the Canadian Trademarks Act, but failed to identify anything in the Canadian Trademarks Act that would restrict Plaintiffs to a claim of forward or direct confusion. The Court therefore held that the Act is broad enough to cover both forward and reverse confusion, and that each is actionable under the Act.
Although A&W's claim ultimately failed, this decision nevertheless establishes that reverse confusion is indeed actionable under Canadian trademark law.
Geneviève M. Prévost, Toronto