These two marks were assessed in the recent case of 7-Eleven, Inc v BitBite Foods
Inc. , 2014 TMOB 16 (CanLII), for snack food
products. BitBite Foods filed an application to register the
BIT BITE design at right in connection with a
variety of food products. 7-11 opposed the application on the basis
of their family of BIG BITE marks, including BIG
BITE (TMA728,674), 1/3 LB. BIGGEST BIG BITE (TMA593,755), SMOKIE
BIG BITE (TMA393,436), and SUPER BIG BITS (TMA602,497), also
in association with food products. The 7-11 marks included the BIG
BITE Design (TMA405,449) at left.
Essentially, both marks were associated with food products, both
marks featured a stylized "bite" design element, and the
marks were virtually identical except for a single letter. 7-11
argued that their marks were all registered and had been used in
Canada since the 1990s. The BIT BITE mark by comparison was applied
for on the basis of "proposed use" meaning it has
not yet been used in Canada.
How did the court decide this case?
The test for trade-mark confusion in Canada is one of
"first impression and imperfect recollection." The
Trade-marks Act is clear that confusion will result if two
trade-marks are used in the same area and would lead a consumer to
infer that the products sold under the two marks are manufactured
or sold by the same company. Courts in Canada will assess a number
of factors when judging two marks:
the distinctiveness of the two marks
the length of time each mark has been in use
the nature of the products or business
the nature of the trade
the degree of resemblance between the two trade-marks in
appearance and sound or in the connotations.
It is important to note that these factors are not an exhaustive
list, and courts are not obliged to give each factor equal weight.
The court in this case assessed these factors and also weighed the
state of the Register and the state of the relevant
After assessing all of these factors, the court concluded that
marks do share similarities in appearance and when sounded, but the
judge "found a significant difference between the parties'
marks as a whole, in ideas suggested; a difference, given the
simplistic nature of the word components of the parties' marks,
that is readily apparent to the average consumer. "...
and the 7-11 "BIG BITE marks are not inherently strong
and that the evidence clearly demonstrates that the words BIG and
BITE are commonly used in the trade" ...therefore
"the differences between the parties' marks [are]
sufficient to distinguish them."
7-11's opposition was dismissed. One letter was
enough of a difference in this case.
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 Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
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.
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).