For our readers in (beautiful) Western Canada, forget about
those supposedly "sexy" global smartphone wars - this
case is a battle of the brands, Canadian style. A hardware store
versus a drug store.
The case of Home Hardware Stores Limited v. London Drugs
Limited, 2012 TMOB 107 (CanLII) pits competing brands that use
the generic term "HOME". Some of our readers may not
recognize the London Drugs brand, which is a Western Canadian chain
of stores that sell a little bit of everything, from housewares to
computers along with a pharmacy. Home Hardware, of course is
a national chain of hardware stores. When London Drugs applied
to register its LONDON HOME trade-mark (at right),
Home Hardware opposed, citing its "family" of several
dozen HOME marks, including the HOME design (at
left), and such marks as HOME WARES, HELP IS CLOSE TO HOME and ALL
ROADS LEAD TO HOME. There was certainly overlap in the list of
wares, and both are sold through retail channels to similar
The test for confusion in Canada is one of "first
impression and imperfect recollection." In Canada, one
trade-mark causes confusion with another trade-mark if the use of
both marks in the same area would lead a consumer to believe that
the products associated with those trade-marks are made or sold by
the same company. The test for confusion requires an analysis of
"all the surrounding circumstances" including:
the inherent distinctiveness of the trade-marks and the extent
to which they have become known;
the length of time each mark has been in use;
the nature of the products or business;
the nature of the trade; and
the degree of resemblance between the trade-marks in appearance
or sound or in the ideas suggested by them.
After looking at these factors, and the fact that are at least
50 other Canadian trade-mark registrations incorporating the word
HOME as the dominant element for similar products, the court
concluded that consumers are accustomed to seeing multiple HOME
trade-marks in association with the these types of products.
Therefore, confusion between the two marks was considered
unlikely and the opposition was dismissed. London Drugs
prevailed in this battle.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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