Canada: Trade-Mark Confusion Analysis And First-To-Use v. First-To-File Clarified By Supreme Court Of Canada

In a decision released on May 26, 2011, Masterpiece Inc. v. Alavida Lifestyles Inc. (2011) SCC 27, the Supreme Court of Canada has provided guidance with respect to the test for confusion pursuant to section 6 of the Trade-marks Act and has confirmed that Canada is a first-to-use jurisdiction which recognizes the priority of trade-marks on the basis of first use in Canada and not registration.

The Supreme Court considered four issues relating to the assessment of a likelihood of confusion:

  1. whether the location in which a trade-mark is used is relevant when considering the likelihood of confusion between a registered mark and a prior unregistered mark;
  2. the considerations applicable in the assessment of the resemblance between a proposed use trade-mark and an existing unregistered mark;
  3. the effect of the nature of the business and the cost of the wares or services in the confusion analysis; and
  4. the role of expert evidence in the trade-mark confusion analysis.

Masterpiece Inc. ("Masterpiece") had used MASTERPIECE THE ART OF LIVING and other trade-marks including the word MASTERPIECE, as trade-marks in association with retirement residence services in the Province of Alberta since 2001. Alavida Lifestyles Inc. ("Alavida") offered retirement residence services in Ontario and filed a proposed use trade-mark application on December 1, 2005 for MASTERPIECE LIVING. Alavida obtained a trade-mark registration despite the prior common law trade-marks used by Masterpiece as Masterpiece did not oppose the application. Masterpiece later filed applications for MASTERPIECE and MASTERPIECE LIVING in 2006 based on use since 2005. The applications were rejected on the basis of the prior registration for MASTERPIECE LIVING owned by Alavida as the Trade-marks Office found the marks to be confusingly similar to MASTERPIECE LIVING.

Masterpiece brought an application to expunge Alavida's registration for MASTERPIECE LIVING based on its prior use of a confusingly similar mark. The application was not successful and the Federal Court of Appeal upheld the decision on appeal. The Supreme Court, however, considered the issues and allowed the appeal, expunging Alavida's registration for MASTERPIECE LIVING.

With respect to the issue of the location where a mark is used, it was held by the Supreme Court that this fact is irrelevant in the confusion analysis. In order for the owner of a registered trade-mark to have exclusive use of the trade-mark throughout Canada, there cannot be a likelihood of confusion with trade-marks used anywhere in Canada. The International Trademark Association was an intervener in this case with respect only to this issue.

In assessing the resemblance between a proposed use trade-mark and an unregistered mark used in Canada, the Supreme Court confirmed that it is the use of a mark and not registration that confers priority of title and the exclusive right to the trade-mark. Rights are granted to the first user of a trade-mark in Canada and the first user of a mark has the right to oppose applications or apply to expunge registrations based on its earlier use of a confusingly similar trade-mark. The confusion analysis should begin with the assessment of the resemblance of the marks in issue. In considering this issue, the Supreme Court held that there is a strong resemblance between MASTERPIECE THE ART OF LIVING and MASTERPIECE LIVING, in terms of the unique aspect of each mark, MASTERPIECE, as well as the idea evoked by each mark.

With respect to the issue of the effect of the nature of the business and the cost of the wares or services on the confusion analysis, the Supreme Court held that the trial judge erred in considering that consumers of expensive goods and services would generally take the time to inform themselves as to the source of the goods and services, thereby reducing the likelihood of confusion. The issue of confusion is to be assessed on the basis of the first impression of a consumer approaching a costly purchase at the time he or she first encounters the trade-mark. The possibility that careful research could later remedy confusion does not eliminate the likelihood of confusion. In assessing a likelihood of confusion, the consumer's reaction, upon encountering Alavida's mark in the marketplace, with an imperfect recollection of Masterpiece's marks, is the appropriate test to apply. It was held that where there is a strong resemblance between the marks, the high cost of the services offered in association with the marks is to be considered, but is not determinitive on its own.

Finally, with respect to the role of expert witnesses in trade-mark confusion cases, it was held that an expert should be permitted to testify only if the testimony is likely to be outside the experience and knowledge of the judge. If expert evidence is unnecessary or irrelevant or will distract from the issues to be decided, such evidence should be disallowed from being introduced. Proposed expert or survey evidence should be considered at an early stage of a proceeding so that the cost of engaging experts can be avoided if it will not be admissible at trial.

The Supreme Court applied this analysis and found that there was a strong similarity between MASTERPIECE LIVING and MASTERPIECE THE ART OF LIVING and that use of these marks in the same area would be likely to lead to the inference that the services associated with Masterpiece's trade-marks were being performed by Alavida. As Masterpiece's use predated Alavida's proposed use, Alavida was not entitled to register its mark and it was expunged from the Trade-marks Register.

The clarification provided by the Supreme Court with respect to the appropriate analysis to be applied in assessing the likelihood of confusion of trade-marks will assist trade-mark users in assessing the availability of potential marks they are considering using in Canada. This also underscores the importance of obtaining full trade-mark availability searches which disclose the use of unregistered trade-marks in Canada to assess the availability of a potential new mark for use and registration in Canada.

The judgment in this case will also likely discourage the use of survey evidence in some trade-mark cases as it was held that Courts must play the role of gatekeeper to ensure that "unnecessary, irrelevant and potentially distracting expert and survey evidence is not allowed to extend and complicate proceedings."

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.