In Benjamin Moore & CO. Limited v. Home Hardware Stores Limited, 2017 FCA 53 the Federal Court of Appeal granted an appeal of the Federal Court’s judgement which had set aside the Opposition Board’s decision.

Benjamin Moore had applied to register the trademarks BENJAMIN MOORE NATURA (word mark) and BENJAMIN MOORE NATURA & DESIGN with interior and exterior paints based on proposed use in Canada.

Home Hardware opposed both marks on a number of grounds, including confusion with its “family” of “NATURA” trademarks for goods unrelated to paint, and the trademark BEAUTI-TONE NATURA for “paint”.

The Opposition Board rejected the opposition, finding that the respective parties’ marks were not confusing at any of the material dates. The Opponent, Home Hardware appealed to the Federal Court, filing new evidence relating to the use of its NATURA-branded products, which the Federal Court reviewed de novo. The Federal Court concluded that Benjamin Moore’s “BENJAMIN MOORE NATURA” trademark was confusing with Home Hardware’s “NATURA” family of marks, particularly the mark BEAUTI-TONE NATURA used in association with paints after the relevant material date. The Court set the Opposition Board’s decision aside.

On appeal at the Federal Court of Appeal, Benjamin Moore argued that the Federal Court had made several errors of law including that the Court had not conducted a proper “mark to mark” comparative analysis in regards to confusion; and the Court had not considered the relevant material dates for each ground of opposition.

Home Hardware contended that a separate “mark to mark” confusion analysis was not necessary in this case since it owned and had built up a family of “NATURA” marks over the years. Wood J.A., writing for the Court of Appeal held that while the family of marks was relevant, “use of a family of marks does not obviate the need to undertake a full comparative confusion analysis on a mark to mark basis for each relevant ground of opposition”.

The Federal Court of Appeal considered the Federal Court’s specific finding of confusion with respect to trademarks associated with paints, and it concluded that the lower Court had erred in its analysis of the confusion factors, by not limiting its consideration to the material date with respect to the paints trademarks; the relevant date was the date of filing of Benjamin Moore's applications for registration in this case.

The Appeal was allowed, and the matter was referred back to the Federal Court to re-determine the full evidentiary record on its merits.

The decision serves as a reminder for trademark applicants and opponents to play close to the relevant dates for each ground of opposition. Further, the case emphasizes that having a family of marks does not alleviate the need for undertaking a “mark to mark” comparative confusion analysis for each of the relevant grounds of opposition, and that the relevant material dates for each ground of opposition must be considered in the confusion analysis.