This is a dispute over the registration of the trademark GHI by Gemology Headquarters International, for use in association with diamond grading, the issuance of diamond grading certificates, education in the field of gemology and other wares and services in the field of gemology. The applicant, the Gemological Institute of America, had opposed on the basis of their trademark GIA for the same wares, but lost before the Trademarks Opposition Board (“TMOB”). The Federal Court has reversed that decision and refused the registration of the GHI mark.
New evidence was filed on appeal that was found to have materially affected the decision of the TMOB, and thus a de novo review was conducted. The new evidence was directed to the deficiencies noted by the TMOB, and it was argued that it demonstrated the GIA mark was well known. The Court noted the new evidence, among other things, showed acquired distinctiveness and that the GIA mark was well known in Canada at all material dates. Now knowing the reputation of the GIA mark, the Court found the TMOB would have approached the confusion analysis differently.
The de novo analysis found that because the otherwise weak GIA mark has gained distinctiveness due to use and reputation in Canada, it deserves protection. As a matter of first impression, the small difference in the two marks was not enough to avoid confusion. The application to register GHI was refused.