Good evidence wins cases. In a trademark opposition, evidence
demonstrating how and for how long a mark has been used in commerce
(for example, on hangtags, labels, packaging, signage, invoices and
online platforms) can be critical to protecting against threats to
the brand. For optimal protection and enforcement, trademark owners
should have a protocol to track and record all use of their marks,
whether to oppose the registration of similar trademark
applications, defend against cancellation proceedings, or enforce
rights in litigation.
This week's case suggests that it is not just the
registration itself, but evidence of how an opponent has used that
registered mark, that should be considered in assessing the issue
of trademark confusion.
Laverana filed an application to register the trademark HONEY
MOMENTS in association with personal care, pharmaceutical and
cosmetic products. McDowell, who owned registered trademarks for
HONEY and HONEY & Design in association with cosmetic products,
opposed the application. The central issue in the opposition was
whether there was a likelihood of confusion between the HONEY
MOMENTS and the HONEY trademarks.
The Opposition Board found there was no confusion considering,
among other things, other 'honey' trademarks registered in
association with similar products and the absence of evidence as to
how and how much McDowell used the HONEY trademarks.
On appeal to the Federal Court, McDowell filed a lengthy
affidavit to remedy the gaps in the evidence identified by the
Board. Considering the matter de novo, the Court
determined that in fact there was a real likelihood of confusion
between the marks, allowed the appeal, and directed the Registrar
to refuse the HONEY MOMENTS application.
The new evidence demonstrated continuous use of McDowell's
HONEY marks in Canada since 2003. With this evidence, and contrary
to the Board's finding, the Court found that this factor
supported a finding of confusion as it spoke to the extent to which
the HONEY marks had become known. Notably, the Court also
referred to this evidence in the context of considering the nature
of the goods, services and trade. This analysis is typically more
confined to what is stated in the registration and pending
Those defending the right to register a trademark often rely on
the evidence as to what other trademarks have been registered in
the past—"the state of the register". The Court
identified the limitations of this kind of evidence, noting that
the simple fact a mark appears on the Trademarks Register does
not establish that it is currently in use, nor that it was in use
at the time that was relevant to the case. Applicants defending an
opposition should therefore consider supplementing any state of the
register evidence with evidence as to how those marks have been
used in Canada at the relevant time.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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Materials from a recent "refresher training" for examiners at the Canadian Intellectual Property Office (CIPO) highlight inconsistencies between CIPO's examination practices and Supreme Court precedent.
Grey marketing, sometimes referred to as "parallel
importation", is the diversion of goods, originally intended
for sale only in certain countries, to other countries where they
were not intended to be sold.
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