Trade-mark Confusion
By Tim Bourne
Confusion is a fundamental concept in trade-mark law. Previous articles from this series have touched on this principle. For example, it may be difficult to register a trade-mark if the trade-mark is confused with another trade-mark. Further, a trade-mark owner may oppose an application to register a trade-mark on the basis of confusion. Finally, the use of a confusing trade-mark may trigger a trade-mark dispute.
Therefore, trade-mark owners should understand what constitutes confusion.
Confusion Generally
Confusion occurs where the use of trade-marks would lead to the inference that the wares or services associated with those trade-marks come from the same source. Thus, for example, using the trade-mark ADIDAZ for running shoes would most likely cause confusion with the trade-mark ADIDAS.
The Trade-marks Office or a court will consider a number of factors when determining whether trade-marks are confusing. The factors need not be given equal weight: for many disputes, one factor may influence the analysis more than the others. The Trade-marks Act lists a number of specific factors that must be considered during the confusion analysis.
Factor #1
The inherent distinctiveness and the extent to which the trade-marks have become known will be considered. A trade-mark composed of a “coined word”, such as the trade-mark IPOD, is considered to have a high degree of inherent distinctiveness. Conversely, a trade-mark composed of one or more common dictionary terms has a lower degree of inherent distinctiveness. If the trade-mark of the party alleging confusion is inherently distinctive and/or has a high degree of recognition, a finding of confusion is more likely.
Factor #2
The length of time that the trade-marks have been in use will also be considered. A party alleging confusion that has used a trade-mark for a good length of time in Canada will find it easier to establish confusion.
Factor #3
The nature of the parties’ wares, services or business is an important factor. A finding of confusion is more likely where the parties’ wares or services are related. Thus, a fitness club owner’s complaint about the use of a trade-mark by a physiotherapist would likely be more justified than a complaint about the use of the same trade-mark by an accountant.
Factor #4
The nature of the parties’ trade is the fourth listed factor. When the parties’ wares can be expected to be found in the same retail stores or sections of retail stores, there is a greater likelihood of confusion.
Factor #5
The degree of resemblance between the subject trade-marks in each of appearance, sound or ideas suggested by them is the final factor listed in the Trade-marks Act. It is frequently the dominant factor in the analysis of whether trade-marks are confusing.
Other Factors
There are a number of factors that are not listed in the Trade-marks Act that may be considered during the confusion analysis. For example, there may be evidence of “actual confusion”, where consumers corresponded with one trader believing it to be another trader with a similar or identical trade-mark. Conversely, evidence of a history of competition between two traders without any actual confusion suggests that the trade-marks are not confusing.
Conclusion
This summary demonstrates that trade-mark confusion is certainly not a straightforward concept. It is, however, an important principle since it seeks to prevent consumer misapprehension and the appropriation of trade-mark rights.
Tim Bourne is a trade-mark lawyer with Ridout & Maybee LLP. He may be reached at tbourne@ridoutmaybee.com.
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