In another recent case Reynolds Presto Products Inc. v.
P.R.S. Mediterranean Ltd., 2013 FCA 119, the
Federal Court of Appeal reviewed the competing marks GEOWEB and
NEOWEB, both for "cellular confinement systems". The
owner of the GEOWEB mark sought an order to strike out NEOWEB on
the basis of confusion. At trial, the judge sided with the owner of
the NEOWEB mark. The owners of GEOWEB appealed.
The Trade-marks Act tells us that in determining
whether trade-marks are confusing, the court should consider
"all the surrounding circumstances" including:
the distinctiveness of the trade-marks and the extent to which
they have become known;
the length of time the marks have been in use;
the type of products, services or business in question;
the "nature of the trade" which looks at the
marketplace, sales and distribution channels; and
the degree of resemblance between the trade-marks in appearance
or sound or in the ideas suggested by them.
In this case, the appeal court overturned the lower court
decision. Proper emphasis should have been placed on the fact that
both companies were direct competitors, selling the same products
into the same market. The test to be applied is "a matter of
first impression in the mind of a casual consumer somewhat in a
hurry who sees the [mark], at a time when he or she has no more
than an imperfect recollection of the [prior] trade-marks, and does
not pause to give the matter any detailed consideration or
scrutiny, nor to examine closely the similarities and differences
between the marks". The court should not conduct a careful
examination of the two marks through a side-by-side comparison.
In the end, the NEOWEB was found to be confusing with GEOWEB and
was ordered to be struck from the register.
Calgary - 07:00 MDT
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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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