Written By Dominique T. Hussey, L.E. Trent Horne and Jeilah Y. Chan
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.
Heather Ruth McDowell v. Laverana GmbH & Co. KG, 2017 FC 327
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 application documents.
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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