A recent decision of the Federal Court illustrates that there are uncertainties associated with opposition proceedings and subsequent appeals. Individuals may have conflicting views concerning whether specific trade-marks are confusing.
The Applicant filed trade-mark applications based on proposed use for the trade-mark LYNXMASTER in association with garage door openers. These applications were opposed. The primary ground of opposition was that the applied-for-marks were confusing with the trade-mark LIFTMASTER for use in association with garage door openers.
The Opponent filed evidence to show use of its LIFTMASTER trade-mark since at least 1990. In the years 2000 to 2005, sales were in the range of 90,000 to 140,000 units per year. There was also significant advertising. The LIFTMASTER garage door openers enjoyed a considerable market share which was somewhere between 33% to 65% of the market.
The Decision of the Trade-marks Opposition Board
The essential basis for the decision of the Hearing Officer of the Trade-marks Opposition Board related to the degree of resemblance between the respective marks. The Hearing Officer said that marks must be considered in their totality and it was not a correct approach to compare and observe similarities or differences among the elements or the components. However, the first component was more important for the purposes of distinction. Also, when a word is a common, descriptive word it is entitled to a narrower range of protection than an invented or unique word.
Overall it was concluded that there were significant differences between the marks in appearance, sound and the ideas suggested. Although each mark comprised a single syllable word that commenced with the letter “L” followed by the word “master” the differences between the marks was more significant than the similarities. In particular, there was a great difference between the words LIFT and LYNX both in appearance and sound, and most importantly in the ideas suggested, that counteracted any similarities between the marks. Although the marks shared the common word MASTER, the common feature was not the dominant portion of the Applicant’s mark and the word MASTER is an ordinary dictionary word which carried a laudatory suggestion.
The Appeal to the Federal Court
The Opponent appealed to the Federal Court. On appeal, evidence in addition to that presented before the Trade-marks Opposition Board may be presented. The Opponent's evidence included a decision of the United States Trademark Trial and Appeal Board between the same parties which had found that LYNXMASTER was confusing with LIFTMASTER.
The Judge found that the additional evidence filed on the appeal was of no particular value. This meant that the standard of review was reasonableness by itself. If the additional evidence had materially affected the findings below, the Court would have decided the issue anew with little reference to the decision appealed from.
The standard of review of “reasonableness” was further described by the Trial Judge, relying on previous authoritative decisions, as meaning the Court will often be forced to accept that a decision is reasonable even if it is unlikely that the Court would have decided as the Board did. The question is whether the Board’s decision is supported by reasons that can withstand “a somewhat probing” examination and is not “clearly wrong”.
The Court said that in the context of confusion, the approach to be adopted was the mindset of an ordinary casual consumer somewhat in a hurry who sees the mark in issue at a time when he or she has no more than an imperfect recollection of it and does not pause to give the matter any detailed consideration or scrutiny nor to examine closely the similarities or differences between the marks.
Given this hypothetical person as the touchstone against which confusion is to be measured, the Trade-marks Act requires that confusion be considered not in a strict yes or no sense, but in the sense of what is “likely”.
In the appeal there was no dispute that the wares were identical and that the channels of trade into which the wares were sold were not different. It was also undisputed that the LIFTMASTER product had been on the market for 15 years and enjoyed significant sales, market share and advertising. There was no evidence that LYNXMASTER product had ever been sold in Canada. The two trade-marks closely resembled each other and differ only by three letters within the body of the mark L***MASTER. There was little or no evidence concerning the use of the formative MASTER in association with garage door openers or relevant third party registrations containing the formative.
On reviewing the decision below the judge found that the Hearing Officer, in dealing with the issue of confusion, had made the following errors:
- dissected the competing marks into components rather than viewing them in their totality;
- did not give sufficient weight to the 15 years of significant sales and advertising of the LIFTMASTER product compared to none for the applied-for marks;
- did not give sufficient regard to the fact that the wares were identical and the channels of the trade would not be different;
- did not give sufficient weight to the lack of any significant use or registration by any third party of garage door openers in association with a MASTER formative mark; and
- did not give due regard to the onus borne by the Applicant to show that the application complied with the Act.
The Judge also said that from time to time statements contained in a US decision might be helpful. However, there was no evidence concerning what the US law was or how it might be the same or different from Canadian law so as to make the decision in any way pertinent. As a result, the decision had no effect and was not considered.
Normally on appeals of this nature the decisions of the Trade-marks Opposition Board are given a significant degree of deference since Hearing Officers are seen to have significant expertise in a trade-mark context. This decision appears to go against those cases and may encourage more appeals.