Trade-Marks Examination Manual (page 17 of 55)
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III The Search / Confusion
III.1 Purpose of the search
In addition to being conversant with the Trade-marks Act and the Trade-marks Regulations and ensuring that an application complies with their provisions, the examiners also play a role in protecting the rights of other registrants and their registered trade-marks. This is done by examining the results of the search, which may be a computerized or a manual search. The purpose of the search is to determine whether the mark applied for:
- is confusing with a mark which is the subject of a pending application, pursuant to section 16;
- is confusing with a mark which is registered, pursuant to paragraph 12(1)(d);
- so nearly resembles as to be likely to be mistaken for a mark which is protected under section 9 (see also paragraph 12(1)(e));
- is a denomination the adoption of which is prohibited by section 10.1 (see also paragraph 12(1)(f)); or
- is in whole or in part a protected geographical indication, and the application covers wines or spirits. (See paragraphs 12(1)(g) and (h)).
If the mark applied for is confusing with a mark or marks which are the subject of one or more pending applications, the examiners must decide who is entitled to registration pursuant to section 16 and object to the other application(s).
If the mark applied for is confusing with a registered trade-mark, the application is objected to pursuant to para. 12(1)(d).
If the mark applied for is identical or almost identical to a prohibited mark, the application is objected to pursuant to paragraph 12(1)(e).
If the mark applied for consists of a plant variety denomination or is a mark so nearly resembling a plant variety denomination as to be likely to be mistaken therefor, and the application covers the plant variety or another plant variety of the same species, the application is objected to pursuant to paragraph 12(1)(f).
If the mark applied for is, in whole or in part, a protected geographical indication for wines or spirits and the application covers a wine or spirit not originating in the territory indicated by the geographical indication, the application is objected to pursuant to paragraphs 12(1)(g) or (h) as applicable.
Note: The Registrar of Trade-marks keeps a list of protected geographical indications in accordance with section 11.12(1) of the Trade-marks Act.
The search is a key operation in the examination of a trade-mark application. Its importance cannot be minimized, nor can the fact that the examiners are the first to consider possible confusion as to source. The searcher therefore is charged with great responsibility and should be aware that a careless or incomplete search might result in an invalid registration or cause considerable embarrassment and expense to the owner or to this Office. Keeping in mind that registration of a trade-mark accords to the owner exclusive right to use of that mark in Canada in respect of the wares or services with which it is associated, the examiners should be consistent in the manner of consulting the search results and must also make use of all pertinent reference sources.
III.2 Definition of Confusion — Subsection 6(2)
Section 6 of the Trade-marks Act, particularly subsection 6(2), describes the manner and circumstances in which one trade-mark would cause confusion with another. In deciding the question of confusion, Ritchie J. set forth the following criteria in Rowntree Co. Ltd. v. Paulin Chambers Co. Ltd. (1967), 54 C.P.R. 43 at p.47:
"It is enough, in my view, if the words used in the registered and unregistered trade marks are likely to suggest the idea that the wares with which they are associated were produced or marketed by the same person."
In Benson & Hedges (Canada) Ltd. v. St-Regis Tobacco Corp. (1968), 57 C.P.R. 1 at p.4, Ritchie J., after reviewing subsection 6(2) stated:
"I have italicized the words 'would be likely to lead to the inference' as it appears to me to be clear that in opposing an application for registration, the holder of a trade mark which is already registered is not required to show that the 'mark' which is the subject of the application is the same or nearly the same as the registered mark, it being enough if it be shown that the use of this mark would be likely to lead to the inference that the wares associated with it and those associated with the registered trade mark were produced by the same company."
In Haw Par Brothers International Ltd. v. Registrar of Trade Marks (1979), 48 C.P.R. (2d), Marceau J. stated:
"…[I]n order to determine whether trade marks are confusing within the meaning of the Act, that is, whether their concurrent use is likely to lead a purchaser to believe that the associated products come from the same source, the surrounding circumstances, particularly five major factors, must be taken into account." [At p. 70.]
The word Tiger with a design for medicinal preparations for human consumption was found not to be confusing with the words Tiger's Milk for vitamin supplements, and food and beverages enriched with proteins.
III.2.1 Surrounding Circumstances
In determining the likelihood of confusion, the examiners must take into account all the surrounding circumstances. In the Pianotist Case, reported in (1906) 23 R.P.C. 774, Parker J., after reviewing the surrounding circumstances which had been the subject of judicial consideration on many occasions, stated at p. 777:
"You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks."
In order to consider all the surrounding circumstances, the examiners are directed to subsection 6(5) of the Act. The following case provides guidance on its provisions.
The Federal Court of Canada heard an appeal from a decision of the Opposition Board where Daypak for proposed use in association with "pharmaceutical dispensing packages" was found not to be confusing with Dialpak registered for "a tablet dispenser." The appeal was dismissed. The following tests were applied in Ortho Pharmaceutical Corp. v. Mowatt & Moore Ltd. (1972), 6 C.P.R. (2d) 161 where Heald J. stated:
"Having given this matter my best consideration, I conclude that the two trade marks in question do not closely resemble one another in appearance or sound or in the ideas suggested by them. I have reached this conclusion after considering the subject marks on a first impression basis, and not by way of detailed comparison. In my view, the two marks do not appear similar nor do they sound similar. Finally, the ideas suggested by the two marks are totally different. Appellant's mark clearly suggests a dial package tablet dispenser from which you 'dial your tablet' or pill. On the other hand, respondent's mark has no dial connotation but rather, relates to day or daily which is a deliberate course followed by the respondent to create in the minds of the trade, an association between its trade mark and the daily nature of the product.
Section 6(5) requires the Court, in determining whether the trade marks are confusing, to consider the particular matter listed in paras. (a), (b), (c), (d) and (e) thereof and also 'all the surrounding circumstances'.
An additional 'surrounding circumstance' which, in my view I am entitled to consider, is the fact that both of the subject marks have in them an element common to the trade — that is — they both have in them the terminal letters 'pak'.
The rule is that where elements of a particular trade mark are common to the trade, they cannot be appropriated to the exclusive use of a particular trader because they cannot be said to have in them the vital element of distinctiveness. The evidence is that apart from appellant's mark Dialpak , there are several hundred other trade marks registered for dispensers or packages in the Canadian Trade Marks Office containing the letters 'pak, pac or pack' and many of them relate to pharmaceutical products. It seems to me that where, in a case like this, the two marks have a common suffix, this serves to make members of the trade more alert for a different prefix and thus minimizes the likelihood of confusion."