Canada: The Importance Of The Evidence In Trademark Cases

Last Updated: December 1 2015
Article by John McKeown

A recent decision of the Federal Court shows how important the facts are in cases relating to trademarks.

The Facts

The applicant in the proceeding was a flooring company specializing in the distribution and sale of floor-covering products and accessories in Canada. The applicant owns two registered trademarks: FUSION FORCE and FUSION PATCH for use in association with adhesives for flooring.

The respondent specializes in the sale of tile and stone installation. It owns four registered trademarks for use in association with grout used to install ceramic tile, stone and other resilient floors. Three of the trademarks consisted of designs which are reproduced below:

The fourth registration consists of the words FUSION PRO (the "FUSION PRO Marks").

The Proceedings

The applicant claimed that the respondents registrations for the FUSION PRO Marks were invalid and should be expunged and brought an application in the Federal Court. Two grounds of invalidity were asserted. First, it was alleged that on the date of the registration of the FUSION PRO Marks (October 18, 2013) the trademarks were confusing with the applicant's registered trademarks and that the respondent was not entitled to their registration. Second, the applicant asserted that on the filing date of the respondent's trademarks (February 8, 2012) they were confusing with the applicant's previously used common law trademarks.

The first ground of attack related to the registrability of the respondent's trademark. The Trademarks Act provides that the trademark is registrable if it is not confusing with a registered trademark.

The second ground of attack related to entitlement. The Act provides that an applicant is entitled to secure a registration of a mark in association with the applied-for goods or services unless on the date of filing it was confusing with a trademark that had been previously used in Canada by another person. Under this provision an interested party can put in issue an applicant's entitlement based on confusion with that party's registered trademark or a common law trademark. This is why when people are seeking to register trademarks, searches relating to common law trademarks are carried out.


To determine whether trademarks are confusing the court must determine whether use of the trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured or sold by the same person, whether or not the goods and services are in the same general class.

In determining whether confusion exists, regard must be given to "all the surrounding circumstances," including but not limited to the five criteria set out in the Act. The criteria are: (a) the inherent distinctiveness of the trademarks and the extent to which they have become known; (b) the length of time the trademarks have been in use; (c) the nature of the goods, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trademarks in appearance or sound or in the ideas suggested by them.

Inherent Distinctiveness

It was found that the applicant's registered trademarks lacked inherent distinctiveness. The word "fusion" echoes its meaning namely "the process or the result of joining two or more things together to form a single entity". It seems that the mark was chosen for use in association with "adhesives" because adhesive products allow for fusion of the floor to the floor coverings. As a result, the marks were suggestive and inherently weak.

In addition to being highly suggestive, the applicant's trademarks had co-existed with numerous other trademarks including the word "fusion" in the flooring business. When two marks contain a common element that is also contained in a number of other marks used in the same market, purchasers tend to pay more attention to other non-common features of the marks and to distinguish them by those features.

A mark that has low inherent distinctiveness can acquire distinctiveness through extensive use such that the mark becomes known in the marketplace. Unfortunately, for the applicant the court was very critical of the evidence it filed to attempt to show acquired distinctiveness. For a number of reasons the judge concluded that the applicant's evidence was very thin and not sufficient to support a likelihood of confusion.

The Length of Time the Trademarks Had Been in Use

While lengthy period of use can contribute to showing acquired distinctiveness it may also tend to show that the marks have coexisted without confusion and that there is no likelihood of confusion.

The judge found that the applicant had not established use from the date of first use alleged by it, although he was prepared to find that the applicant had used its marks before the respondent did. However, given the amount of time in issue it was said that the factor only carried minor importance.

The Nature of the Goods

The more similar the goods the greater the likelihood of confusion. However, the more significant the difference the lesser the risk. The judge found that there were fundamental differences between the goods of the parties, even though they come within the family of flooring products. The judge found that adhesives and grout were distinctly different products and not sufficiently similar so as to contribute to the likelihood of confusion.

The Nature of the Trade

The judge concluded that the nature of the applicant's and the respondent's trade was different and that they did not operate at the same trade level. The applicant sold its products to traders and floor installers as opposed to end users. The evidence did not support the assertion that parties used the same channels of distribution.

The Degree of Resemblance between the Trademarks in the Appearance or Sound or Ideas Suggested by Them

The applicant used its trademarks only in their textual form and not in association with any designs. The FUSION PRO Marks were primarily used in a design format.

While the judge agreed that the word "fusion" was the dominant element of the parties' trademarks he was not satisfied, in light of the low distinctiveness associated with the word "fusion" and the other words used in the trademarks in issue, that there was a high degree of resemblance between them.


The judge was not satisfied that a casual consumer observing the respondent's marks and having no more than an imperfect recollection of the applicant's marks would be confused into thinking that the source of the wares was one and the same. The judge concluded, having regard to all the surrounding circumstances, that there was not a likelihood of confusion between the respective trademarks.


The key evidence for the applicant was its evidence of acquired distinctiveness but it failed to persuade the judge to accept it. While trademark cases can be complex they are frequently determined by the quality of the evidence presented. Counsel must focus on how to present the necessary evidence in a way that is both persuasive and complies with the relevant evidentiary requirements.

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.

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John McKeown
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