The Federal Court's decision in Responsive Brands Inc v.
2248003 Ontario Inc, Marc Picard and Michael
Urquhart1 relates to a trademark infringement
and passing-off dispute between the Plaintiff, owner of the MISTER
TRANSMISSION registered trademark and the defendant, user of the
trade name MASTER TRANSMISSION.
After a four day trial, the Federal Court found that there was a
likelihood of confusion between MISTER TRANSMISSION and MASTER
TRANSMISSION resulting in trademark infringement. An injunction was
granted by the Court. As discussed below, in arriving at its
decision, and with reference to leading case law, the Court found a
likelihood of confusion existed despite the fact there was
insufficient evidence that any consumer had actually been confused
or misled in more than 5 years of co-existence.
The Plaintiff is the owner of the registered trademark MISTER
TRANSMISSION, which it has used in Canada since the 1970s. As
reported by the Court, MISTER TRANSMISSION advertised heavily and
enjoyed a high level of brand recognition. Of its 65 locations
across Canada, it has a franchise location in Orillia, Ontario,
where the Defendant operated its sole location under the trade and
business name MASTER TRANSMISSION since 2010.
Likelihood of confusion, despite no actual confusion
Central to the Court's decision is, of course, the issue of
whether or not there was a likelihood of confusion between the
Plaintiff's mark and the Defendant's trade name.
Given the factual circumstances of this case, the Court began
its analysis of this issue by focusing on whether or not there had
been any actual confusion between the Plaintiff's mark
and Defendant's trade-name, both being associated with the same
types of services and co-existing in the same marketplace for over
As held by the Federal Court of Appeal2, "proof
of actual confusion or the absence of such confusion over a long
period of time is a very weighty factor that must be considered as
part of the surrounding circumstances pursuant to subsection 6(5)
of the Act."
Based on the evidence, the Court found that "there [was],
at best, insufficient evidence that any consumer [had] actually
been confused or misled since Master opened its business in Orillia
some five and a half years ago."
Despite the insufficient evidence of any actual consumer
confusion, the Court went on to consider whether there was,
nonetheless, a likelihood of confusion stating, "despite the
absence of any persuasive or sufficient evidence that any consumer
has actually been confused or misled, it is necessary nevertheless
to consider and analyse the likelihood of confusion between the
trade-marks and trade names of the parties."
In so doing, the Court analyzed the evidence in light of the
traditional s. 6(5) likelihood of confusion factors. More
particularly, on the question of distinctiveness the Court held
that although MISTER TRANSMISSION was not inherently distinctive,
as a result of its extensive use and adverting it had become
well-known in and across Canada and thereby acquired
distinctiveness. Further, the Court found that the length of time
the parties had used their respective marks favoured the Plaintiff
given its long standing use since the 1970s, and that there was
overlap in the nature of the goods, services and business as well
as the nature of the trade associated with the marks at issue.
Finally, analyzing the degree of resemblance between the marks, the
Court held that, " ... 'Mister Transmission' and
'Master Transmission' do sound similar, although they are
certainly not homonyms or identical such that one might be as
easily mispronounced as the other. That being said, for the casual
consumer in a hurry, perhaps they would be, considering there is a
single letter difference between the first words of each name and
the sound of those first words is similar."
On balance, and having regard to these factors, the Court
concluded that there was a likelihood of confusion between the
marks, notwithstanding the surrounding circumstance of no actual
confusion having been proven.
This decision is a reminder that the test for trademark
infringement depends on the likelihood of confusion, and
not necessarily actual confusion even if the latter is a
"weighty factor". As such, even in circumstances of
long-standing co-existence with no actual evidence of consumer
confusion, infringement of a registered trademark may still be
found to have occurred.
1 2016 FC 355
2 Philip Morris Products SA v. Marlboro Canada
Ltd., 2012 FCA 201 (Justice Gauthier)
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.
The prospect of an internal investigation raises many thorny issues. This presentation will canvass some of the potential triggering events, and discuss how to structure an investigation, retain forensic assistance and manage the inevitable ethical issues that will arise.
From the boardroom to the shop floor, effective organizations recognize the value of having a diverse workplace. This presentation will explore effective strategies to promote diversity, defeat bias and encourage a broader community outlook.
Staying local but going global presents its challenges. Gowling WLG lawyers offer an international roundtable on doing business in the U.K., France, Germany, China and Russia. This three-hour session will videoconference in lawyers from around the world to discuss business and intellectual property hurdles.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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).