Author: Sarah Nadon – Law Student
Edited By: Ryan Carson
Trademark confusion arises when one trademark is confused with another trademark and when the use of both trademarks would likely lead to the inference that the goods and services are produced by the same company or individual. Trademark confusion can lessen the value of the original trademark because consumers could associate the original trademark with the goods and services of the second trademark, which may be subpar to the original.
In the 2006 case, Mattel U.S.A. Inc. v 3894207 Canada Inc., 2006 SCC 22, the Supreme Court of Canada, declared that trademark confusion resulted from when a customer mistakes the goods and services associated with both trademarks, are from the same brand. In the Mattel case, a Montreal based bar and grill restaurant applied to register the trademark “Barbie’s” in association with the restaurant. Mattel, a famous toy company, owns the trademark “Barbie,” which is associated with the world-famous doll. Mattel opposed the application based on confusion. The Trade-marks Opposition Board rejected Mattel’s opposition as it was not likely that “Barbie’s” bar and grill restaurant would likely be confused with Mattel’s famous Barbie doll.
The Trademarks Act, RSC 1985,c T-13 provides that trademark confusion can be decided by a set of five enumerated factors:
6(5). In determining whether trademarks or trade-names are confusing, the court or the Registrar, as the case may be, shall 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 trademarks or trade-names have been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trademarks or trade-names in appearance or sound or in the ideas suggested by them.
However, it is essential when applying the test, not to stick to the five enumerated factors. Considering all surrounding factors will provide a more accurate assessment for confusion as the application of the test is fact dependent.
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