Canada: The Meaning Of Trademarks

Last Updated: January 14 2016
Article by John McKeown

A recent decision of the Federal Court gave significant emphasis to the meaning of the trademarks in dispute in determining whether confusion existed.

The Facts

In 2008 Benjamin Moore & Co., Limited ("Benjamin Moore") filed an application for the trademark NATURA for use in association with "paints, varnishes and lacquers". In the course of examination the examiner took the position that the applied-for mark was confusing with pending application for the trademark NATURA for natural wood strippers filed by Home Hardware Stores Limited ("Home Hardware").

Later in 2008 Home Hardware filed an application for the trademark BEAUTI-TONE NATURA for interior paint. Benjamin Moore successfully opposed Home Hardware's application for the trademark BEAUTI-TONE NATURA on the basis of confusion with Benjamin Moore's pending NATURA application.

In January 2009 Benjamin Moore then filed applications for the trademarks BENJAMIN MOORE NATURA and BENJAMIN NATURA & DESIGN. Home Hardware opposed these applications on the basis of a number of registrations owned by it that contained the component NATURA as well as its allowed application to the trademark NATURA for natural wood strippers. The matter proceeded for hearing before the Trademarks Opposition Board ("Board"). The primary ground of opposition was confusion between the respective marks. The Board found in favour of Benjamin Moore and Home Hardware appealed to the Federal Court.

The Decision of the Board

The Trademarks Act provides that the use of a trademark that causes confusion with another trademark, if the use of both trademarks in the same area, would be likely to lead to the inference that the goods associated with those trademarks are manufactured or sold by the same person, whether or not the goods are of the same general class.

Subsection 6(5) provides that, in determining whether trademarks are confusing the court or the Board, as the case may be, must have regard to all the surrounding circumstances including:

(a) the inherent distinctiveness of the trademarks or trade-names and the extent to which they have become known;

(b) the length of time the trade-marks or trade names 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 trade-marks or trade-names in appearance or sound or in the ideas suggested by them.

The judge reviewed the decision of the Board in detail and provided the following summary of the Board's application of the statutory factors:

  • Inherent and acquired distinctiveness (paragraph 6(5)(a))
    • Neither (earliest material date);
    • Benjamin Moore (later material dates)
  • Length of use (paragraph 6(5)(b))
    • Neither
  • Nature of the wares (paragraph 6(5)(c))
    • Benjamin Moore
  • Nature of the trade (paragraph 6(5)(d))
    • Benjamin Moore
  • Degree of resemblance (paragraph 6(5)(e))
    • Benjamin Moore

The Federal Court

In the appeal Home Hardware filed a significant amount of new evidence. The first category of new evidence related to the evolution and sales history of Home Hardware's NATURA brand, particularly with respect to paint, and the fact that significant sales had occurred. The second category of evidence showed that some Home Hardware retail stores sold Benjamin Moore branded paints in Canada. The third category of evidence consisted of a copy of the file history for the trademark NATURA, which Benjamin Moore had unsuccessfully applied for. The examiner for that application took the position that the applied-for mark was confusing with Home Hardware's prior rights relating to the trademark NATURA in Canada. Benjamin Moore abandoned this application and shortly after becoming aware of the examiner's position filed for BENJAMIN MOORE NATURA and BENJAMIN MOORE NATURA & DESIGN.

If this new evidence would have materially affected the decision of the Board, the standard of review is correctness and the court must carry out a de novo analysis of the grounds of opposition having regard to all of the evidence. On the other hand, if the new evidence would not have materially affected the Board's findings the court need only determine whether the Board's decision was reasonable in the circumstances and fell within the range of possible acceptable outcomes which were defensible on the facts and the law.

The court found that the new evidence would have materially affected the decision of the Board. The hearing officer had explicitly said that the conclusions reached concerning paragraph 6(5)(a) and (b) were informed, at least in part by the lack of evidence filed by Home Hardware. The new evidence significantly augmented the record and case law supported the position that such a conclusion was required where there had been a deficiency or absence of evidence. As a result the court considered the matter de novo.

With respect to paragraph 6(5)(a) the court said the word NATURA is not highly distinctive since it suggests the quality of naturalness. However, NATURA was not an English word in common use in everyday language. As a result it possessed some uniqueness, particularly in association with paint and paint related products.

With respect to acquired distinctiveness, Home Hardware's new evidence established its NATURA brand in the context of paint and paint related products had acquired considerable distinctiveness in the marketplace at the various material dates. As a result, Home Hardware's evidence showed it had superior acquired distinctiveness in relation to its trademarks.

With respect to paragraph 6(5)(b) the court found that the hearing officer had erred in the conclusion that this factor did not favour either party. The judge concluded that while the length of use was not as determinative as the other factors, the fact that Home Hardware used its BEAUTI-TONE NATURA trademark before Benjamin Moore had used its trademark by a few months favoured Home Hardware.

With respect to paragraph 6(5)(c) the judge found that there was some overlap between the parties respective wares and both parties sold the same respective wares.

With respect to paragraphs 6(5)(d) the judge agreed, based on the new evidence, that there was potential overlap in the parties channels of trade and that Canadian consumers could purchase Benjamin Moore's products at Home Hardware stores.

With respect to 6(5)(e) the court found that the Board did not address one important aspect of potential confusion because the Board did not consider the idea related to the respective trademarks. Both parties deliberately used the word NATURA to indicate the naturalness or environmental friendliness of their potential products to purchasers. This was essential to both parties' marks and raised the likelihood of confusion despite the other differentiating aspects of the respective marks. For confusion to exist it was not necessary that the trademarks were identical, only that the same idea was conveyed to the somewhat-hurried consumer to induce a mistaken inference.

As a result of his review of the statutory factors the judge arrived at his own revised summary which is as follows:

1) the distinctiveness factor slightly favours the applicant;

2) the length of use factor slightly favours the applicant;

3) the nature of the wares factor weighs in favour of the applicant;

4) there is some overlap in the channels of trade; and

5) the degree of resemblance factor favours the applicant.

Taking these matters into consideration the judge concluded that an ordinary consumer would likely be confused as to whether the parties respective trademarks originated from the same source. The judge was particularly influenced by the fact that those marks were used in association with paint, notwithstanding the parties used the respective composite modifiers BEAUTI-TONE and BENJAMIN MOORE respectfully.


Certainly this has been a hard fought battle between the parties concerning the registration and use of the trademark NATURA. The judge's willingness to emphasize the significance of the meaning of the component NATURA in the context of a confusion analysis is significant.

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.

John McKeown
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.