Trade-Marks Examination Manual (page 18 of 55)
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III.2.2 Subsection 6(5)
Where the likelihood of confusion pursuant to subsection 6(2) exists, the examiners will, pursuant to subsection 6(5) of the Trade-marks Act, consider all the surrounding circumstances including:
- the inherent distinctiveness of the trade-marks and the extent to which they have become known;
- the length of time the trade-marks have been in use;
- the nature of the wares, services or business;
- the nature of the trade; and
- the degree of resemblance between the trade-marks in appearance or sound or in the idea suggested by them.
III.2.2.1 Paragraph 6(5)(a) — Inherent Distinctiveness
A trade-mark which is created, unique, and non-descriptive is deemed to be inherently distinctive. If an inherently distinctive mark is the subject of a pending application, it would be considered to be a strong candidate for registration. If such a mark is already registered, it is the examiners' responsibility to protect those rights which accrue as a result of its inherent distinctiveness.
For example, it is clear that a mark such as Kodak, which is a purely arbitrary word, possesses more inherent distinctiveness than a mark such as Corti-Vet which may be used in association with a veterinary preparation containing cortisone. In other words, the quality of "inherent distinctiveness" is easily attributed to the mark Kodak because, unlike Corti-Vet, Kodak has no suggestive or descriptive properties, nor does it suggest any other relation to the wares photographic film or photographic equipment. When it comes to actually comparing two word marks, the examiners are directed to the following statements:
If the words are distinctive, in the sense of being invented words, small differences will not be sufficient to distinguish them, whereas if the words are common or descriptive in meaning, they must be taken with their disadvantages. No person is entitled to fence in the common of the English language and words of a general nature cannot be appropriated over a wide area. In such a case small differences will be sufficient to distinguish between them and this rule applies where a common part of two words is also common to the trade. H.G. Fox, Canadian Law of Trade Marks, Third Edition, p. 173.
In General Motors Corp. v. Bellows, Rand J. approved the doctrine that a common word, that is, a weak trade-mark, is entitled to a narrower range of protection than an invented or unique word. At the trial level, (1947), 7 C.P.R. at p. 8, Cameron J. expressed the rule in these words:
In considering whether marks are similar, consideration ought to be given to the nature of the words themselves, and a distinction drawn between a fancy or invented word and an ordinary word in everyday use. In the case of a purely invented word, the scope is very much wider than that of an ordinary word.
On appeal, (1949), 10 C.P.R. 101 at p. 115, Rand J. said:
Mr. Fox submitted this basic consideration: that where a party has reached inside the common trade vocabulary for a word mark and seeks to prevent competitors from doing the same thing, the range of protection to be given him should be more limited than in the case of an invented or unique or non-descriptive word; and he has strong judicial support for that proposition. H.G. Fox, Canadian Law of Trade Marks, Third Edition, p. 173.
III.2.2.2 Paragraph 6(5)(b) — Extent and Length of Time Used
Generally speaking, examiners are limited in their ability to make judgments about confusion based on the length of time and extent of use of a trade-mark. Evidence of actual instances of confusion pursuant to paragraph 12(1)(d) will be unavailable to them.
If the owners of marks considered by the Registrar to be confusing do not agree with the Registrar's decision, they may appeal to the Federal Court of Canada. The Court would then consider the length and extent of use of both a registered trade-mark and the mark deemed to be confusing. In judgments of this nature it is generally accepted that a mark which has seen substantial use for a long time, and is therefore well known, deserves more protection than a lesser known mark. Where both marks have been used for a long time in the same area without evidence of confusion, it follows that confusion would be unlikely to occur in the future, thus allowing for the registration of both marks. Where the unsuccessful applicant attempts to have the registered mark expunged, the consideration of the length and extent of use of the competing marks becomes especially crucial.
III.2.2.3 Paragraph 6(5)(c) — Nature of Wares or Services
When making a decision concerning the issue of confusion, the examiners must not only focus on the inherent distinctiveness of the marks, but also on the nature of the wares or services to be associated with them. Therefore, the examiners must clearly understand the description of wares and/or services as it appears on the application form, as well as the classification of those wares and services.
The examiners must also determine whether the wares covered by the application are of the everyday sort, bought casually, or if they are expensive, thereby calling for a high degree of selection on the part of the purchaser. (General Motors Corp. v. Bellows (1949), 10 C.P.R. 101 at pp. 115-116.) If the former case applies, the examiners must be assured that the pending mark is dissimilar enough to the registered mark that consumers will not confuse them in the course of routine and often hasty shopping. If the latter applies, the examiners can allow for more subtle or complex differences between marks, since the purchaser will be taking more time to choose the item and therefore the mark associated with it.
III.2.2.4 Paragraph 6(5)(c) — Nature of Wares or Services — Pharmaceuticals
When assessing confusion between trade-marks used in the pharmaceutical industry, the examiners must exercise special care to avoid confusion in view of the serious consequences which may arise through mistakes or negligence.
In Mead Johnson & Co. v. G.D. Searle & Co. (1967), 53 C.P.R. 1, Justice Dumoulin stressed the importance of avoiding confusion with respect to the selling and dispensing of pharmaceutical products even in those instances where the products in question are sold only by means of prescription and are only dispensed by pharmacists from written instructions from a physician.
See also Schering Canada Inc. v. Thompson Medical Co., Inc. (1983), 81 C.P.R. (2d) 270.
III.2.2.5 Paragraph 6(5)(d) — Nature of the Trade
In assessing the nature of the trade, a relevant consideration would be to determine if the wares are sold directly by the manufacturer through wholesalers, retailers or catalogues, or by telephone. If the wares are ordered by telephone, the sound of the trade-mark becomes even more important than when consumers can see the mark affixed to the wares. Wholesalers may not be confused since they deal directly with manufacturers, but consumers do not have specialized knowledge of the trade and therefore could be confused.
If the examiners are initially uncertain as to whether the channels of trade are the same for the marks, they should cite the registration in an official Action Report and require the applicant to argue the merits of the citation. If the applicant convincingly argues that the channels of trade are different, the examiners will have to consider this in deciding whether or not to withdraw the objection.
In Sarah Coventry, Inc. v. Abrahamian (1984), 1 C.P.R. (3d) 238, the trademarks Sarah for costume jewellery and Zareh for custom-made jewellery were found not to be confusing. The Sarah jewellery was mass produced and inexpensive, while the Zareh jewellery was individually hand-made and very expensive. Furthermore, the parties marketed their wares through different kinds of outlets. The court concluded on this basis that there was no likelihood of confusion. The court also considered the fact that Sarah was a weak mark that had not been extensively used, and that phonetic differences between the two marks were sufficient to avoid confusion.
The examiners should not necessarily take into account a submission that the applicant is only selling the wares wholesale when, in fact, the wares could also be sold retail. In Eminence S.A. v. Registrar of Trade Marks (1977), 39 C.P.R. (2d) 40 at p. 43, Dubé J. stated:
Even if Fabergé does not sell its products in the same places as appellant, it is legally entitled to do so. It matters little that at the present time Fabergé's wares are sold in hairdressing salons rather than in drug stores.
III.2.2.6 Paragraph 6(5)(e) — Degree of Resemblance between the Marks
When dealing with the issue of confusion between marks, the examiners must consider the degree of resemblance in the appearance, sound and ideas suggested by the marks. If the mark applied for appears in the same script as the mark on the Register, this factor must be taken into consideration. If two marks are comprised of a similar arrangement of word and design, or if two marks express a common idea, confusion may occur.
The examiners must also be alert to confusion between trade-marks in either or both of Canada's official languages. In Scott Paper Co. v. Beghin-Say S.A. (1985), 5 C.P.R. (3d) 225, Strayer J. stated:
I have no doubt that the Registrar of Trade Marks and the court should be alert to the possibility of confusion between trade marks in either or both of Canada's official languages. This is not only required by the constitutional and legal status of both languages at the federal level, but is also a reflection of the fact that there are several million bilingual Canadians who may associate words in one official language with their equivalent in the other.
In Rose v. Fraternité Interprovinciale Des Ouvriers en Electricité (1977), 32 C.P.R. (2d) 42, Walsh J. found a design mark having the words Fraternité Interprovinciale Des Ouvriers En Electricité confusing with an earlier registration of a design mark having the words International Brotherhood of Electrical Workers. See also Johnson & Johnson Ltd. v. Philippe-Charles Ltd. (1974), 18 C.P.R. (2d) 40, referred to therein.
The examiners must carefully consider two marks that suggest the same idea even though they do not necessarily sound alike or look alike. For example, a consumer might confuse the words Monday and Lundi.
As well, the examiners will have to carefully consider two marks that sound alike, even though they appear dissimilar in written form. For example, a consumer might confuse the words Kauphusa and Coffuca, even though they look different.
When assessing confusion between trade-marks, the first word or first syllable in a trade-mark is more important for the purpose of distinction than those that follow. In Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183, Cattanach J. stated:
It [respondent] has appropriated the appellant's mark in its entirety and added thereto as a suffix the words 'age tendre'. It is axiomatic that the first word or the first syllable in a trade mark is far the more important for the purpose of distinction. Here the first and most important word in the mark which the respondent seeks to register is identical to the mark registered by the appellant.