Canada: The Importance Of The Inherent Distinctiveness Of A Trademark

Last Updated: May 30 2018
Article by John McKeown

A recent decision of the Federal Court raises some interesting points concerning when marks are confusing and opposition practice.

The Facts

The applicant filed two trademark applications; one for the word mark JAVELO and the other for the same word with a design. In broad terms the goods were made to order bleach. The applications were opposed by Clorox Company of Canada Ltd. who owns several registered trademarks for JAVEX and other similar marks for use in association bleach. In response to the oppositions the applicant amended its goods to limit them to bulk bleach manufactured exclusively to order of the industrial clientele according to their specific needs and excluding sale to retailers and retail sale of the goods to consumers.

The grounds of opposition included lack of distinctiveness, non-entitlement, and confusion with the opponent's registered trademarks. The opponent did not file evidence of the use of its mark and as a result the grounds relating to distinctiveness and non-entitlement where summarily dismissed.

In deciding whether these trademarks are confusing, the hearing officer must have regard to all the surrounding circumstances, specifically those listed in subsection 6(5) of the Act, namely: 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; e) the degree of resemblance between the trademarks in appearance or sound or in the ideas suggested by them. This list is not exhaustive and different weight will be given to each factor in a context-specific assessment.

After reviewing the statutory factors the hearing officer saw no prospect of confusion and dismissed this ground as well.

The Appeal

The opponent appealed to the Federal Court and filed additional evidence attempting to show the use of its marks. As a result the judge hearing the appeal reviewed the hearing officer's decision on a reasonableness standard but said that when issues relating to the use of the opponent's registered trademarks were raised he would assess the evidence without deferring to the hearing officer.

The judge reviewed the evidence relating to the statutory factors but emphasized that the test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the applicant's mark when he or she is no more than an imperfect recollection of the opponent's trademarks and does not give the matter any detailed consideration or to examine closely the similarities or the differences between the marks.

The judge also emphasized that first that confusion must be assessed concerning the registered uses as opposed to the actual use of the marks. Second, the consumer, whose viewpoint must be adopted, was not hurried to the same extent. When faced with valuable goods or niche-market goods more care will naturally be taken by the consumer.

Regarding the inherent distinctiveness of the parties' marks, the judge said that the starting point of the analysis was that the two sets of trademarks where derived from the French expression "eau de Javel" a common noun translated as "bleach" and that designates the product in issue. Although it was claimed that the mark JAVEX was a coined term, this was true only to a limited extent. The word "Javex" is composed of a prefix derived from the French common noun "Javel," which designates the product, to which the letter "x" was added. The same is true of the mark "Javelo." Both of the parties' marks possessed limited inherent distinctiveness.

The judge referred to the Assurant decision that we recently discussed and took a similar approach. To accept the opponent's position, from a practical viewpoint, would allow monopolization of words of the French language. Reference was made to previous decisions of high authority to the effect that no person may fence in common words of the English or French languages and words of the general nature cannot be appropriated over a wide area.

Regarding the additional evidence filed by the opponent the judge said that while there was evidence of use he could not assess its intensity and the on the product samples provided the trademark CLOROX was preeminent with the JAVEX mark only displayed in the discrete way on the back of the bottle.

Regarding the goods and the nature of the trade the hearing officer had found that the products associated with the two marks were the same. He refused to agree with applicant's argument that the products of the two parties where intended for different markets. The hearing officer said that the applicant's attempt to narrow the scope of its application was not relevant. What matters was that the registration of the JAVEX marks did not restrict their use or the market the products where intended for. Therefore, overlapping between the two marks may take place, and this favoured a finding of confusion. The judge agreed with this finding.

In conclusion the judge agreed with the hearing officer. The opponent had not proven that its JAVEX marks had inherent or acquired distinctiveness of such a degree that it led to a finding of confusion. The fact that the products associated with the two marks were the same could not counterbalance the low degree of resemblance. There was no confusion between parties' marks.

Comment

The fact that English speaking consumers may not associate the trademark JAVEX with its French roots was not relevant in Canada which has two official languages.

In addition adding limitations to the statement of goods in an application for trademark is a common occurrence. However as seen in this decision it may have little or no practical effect.

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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