So much confusion, so little time. The Trade-marks Act teaches us that the
use of one trade-mark causes confusion with another trade-mark if
the use of both trade-marks in the same
area would likely lead to the inference that the
products associated with those trade-marks emanate from the same
person, even if the products are of a different class. Confusion is
assessed by looking at all the surrounding circumstances
the inherent distinctiveness of the
the extent to which the marks have
the length of time the trade-marks
have been in use;
the nature of the products or
the nature of the trade; and
the degree of resemblance between the
two trade-marks in appearance or sound or in the ideas suggested by
In the case of U-Haul International Inc. v. U Box It
Inc., 2015 FC 1345 (CanLII), U-Haul International applied
to register the trade-marks U-BOX WE-HAUL and
U-BOX, for use in association with "moving
and storage services, namely, rental moving, storage, delivery and
pick up of portable storage units." A competitor – U Box
It – opposed these applications on the basis of confusion
with its registered U BOX IT mark for use for use
in association with "garbage removal and waste management
Are "moving and storage services" in the
same area as "garbage removal and waste
U-Haul argued that the two companies offer completely different
services, and "that garbage removal and waste management are
the 'exact opposite' of moving and storage, and in
different channels of trade." However, the court agreed with
the opponent's argument that confusion was based on "the
similar manner in which the services are provided, and not
on any finding that the services were in fact the same."
After reviewing all of the factors listed above, the court found
a reasonable likelihood of confusion, and refused to register the
two marks U-BOX WE-HAUL and
U-BOX, based on confusion with the registered mark
U BOX IT.
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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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