Trademark infringement is more nuanced than simply: Trademark A looks like Trademark B, therefore, A infringes B. The Supreme Court of Canada entrenched a six-part test for confusion in Mattel U.S.A. Inc. v. 3894207 Canada Inc., 2006 SCC 22, which continues to be reaffirmed by the Federal Court nearly two decades later. In this article, we walk through the test for confusion used to establish trademark infringement by using, as an example, a recent Federal Court case in which the Court found trademark infringement: 1196278 Ontario Inc. dba SASSAFRAZ v 815470 Ontario Ltd. dba SASSAFRAS COASTAL KITCHEN, 2022 FC 116 (“SASSAFRAZ”).
The six-part test is grounded in both subsection 6(5) of the Trademarks Act and case law. The test must be assessed as “a matter of first impression in the mind of a casual consumer somewhat in a hurry” (SASSAFRAZ at para 25).
The Six-Part Test
In SASSAFRAZ, the competing trademarks were SASSAFRAZ and SASSAFRAS, both used in association with restaurant services.
To begin the confusion analysis, the Court examined the degree of resemblance between the trademarks pursuant to s. 6(5)(e) of the Trademarks Act. Courts consider this factor to have the greatest effect on the confusion analysis. Without resemblance between marks, confusion is unlikely, regardless of whether the other factors are satisfied. In SASSAFRAZ, the Court found that the words SASSAFRAZ and SASSAFRAS possessed a high degree of resemblance.
The Court determined that SASSAFRAZ is not a case where consumers are accustomed to making fine distinctions between similar trademarks, or of the trademarks possessing little or no inherent distinctiveness. Which takes us to step two, where the Court assessed the inherent distinctiveness of the trademarks and the extent to which they have become known under s. 6(5)(a). Such assessment considers whether an aspect of the allegedly confusing trademark is particularly unique. The scope of inherent distinctiveness is wider for an invented word than an ordinary word. Here, the Respondent acknowledged that SASSAFRAZ was an invented and distinct term. With no evidence of the mark being descriptive, the Court found SASSAFRAZ was inherently distinctive.
At step three of the analysis, the Court examined the length of time in which the trademarks were used under s. 6(5)(b). Generally, trademarks with a longer period of use deserve more protection than those used for a shorter period. Here, the Plaintiff’s SASSAFRAZ mark had been in use for over 25 years, while SASSAFRAS was used for only two years. This factor favoured SASSAFRAZ.
Fourth, the Court assessed the nature of the goods, services, and business under s. 6(5)(c). Where two trademarks are used in association with the same products or services in the same markets, there will be a greater likelihood of confusion. Here, the Court found that, while the cuisine differed at the restaurants, the services themselves were substantially similar. This factor also favoured SASSAFRAZ and a likelihood of confusion.
Fifth, the Court analyzed the nature of trade under s. 6(5)(d). There is generally a greater likelihood of confusion where goods or services are distributed in the same types of stores or venues, even if the goods or services are themselves dissimilar. Here, the type of restaurant services offered by both parties overlapped, with similarities in both price points and the advertisement of a gourmet cuisine.
Finally, the Court considered all the surrounding circumstances, a factor grounded in case law. The Respondent asserted that an absence of evidence of market confusion ought to play a role in determining confusion. However, courts have consistently held that it is “not necessary for a party alleging a likelihood of confusion… to provide evidence of actual confusion” (SASSAFRAZ at para 70). Therefore, the Court dismissed this factor.
Other surrounding circumstances sometimes raised in trademark disputes–not considered in SASSAFRAZ–include the level of fame a mark may have, and whether a mark is part of a larger family of marks. In brief: famous marks may provide the ability for the mark’s scope to carry across different product lines, unlike lesser-known marks, which are limited to their listed goods and/or services. A family of marks consists of more than two marks, excluding the mark at issue. The more marks in the family, the stronger the evidence.
While the Respondent in SASSAFRAZ asserted that it was unaware of the SASSAFRAZ trademark, mens rea (intent to infringe) is of little relevance to the issue of confusion. The Court found the lack of awareness with regard to the SASSAFRAZ trademark to be irrelevant. On balancing all the above factors, there was a likelihood of confusion and therefore infringement.
Prior to beginning the use of a trademark, it is recommended that due diligence be done to ensure there are no trademarks in use in the marketplace or that are registered that may be infringed.