A recent decision of the Trade-marks Opposition Board illustrates the uncertainty inherent in applying the statutory definition of "confusion."

The Facts

A trade mark application was filed to register the trade mark PIZZA SPOT based on proposed use for pizza and related wares and restaurant services.

White Spot Limited (the "Opponent") opposed the application primarily on the grounds that the applied-for mark was confusing with the Opponent’s registered trade mark WHITE SPOT for which the Opponent owned a number of registrations relating to both word and design formats.

The Opponent’s WHITE SPOT brand is well-known, particularly in Western Canada. Evidence was filed to the effect that 13,000,000 persons dine each year in a White Spot restaurant and that sales in association with the Opponent’s marks had been more than $125 million in 2002 and had increased since that time. In the past five years, the Opponent expended in excess of $8.9 million in marketing and advertising the WHITE SPOT brand.

The Onus

In a trade mark opposition, the applicant bears the onus of establishing, on the balance of probabilities, that there is no reasonable likelihood of confusion between the applied-for mark and Opponent’s registered trade marks.

The Test for Confusion

The test for confusion is one of first impression and imperfect recollection. The use of a trade mark causes confusion with another trade mark if the use of both marks in the same area would be likely to lead to the inference that the wares or services associated with the trade marks are sold or performed by the same person.

In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those listed in the Trade-marks Act (the “Act”), namely: (a) the inherent distinctiveness of the trademarks and the extent to which they have become known; (b) the length of time the trademarks have been in use; (c) the nature of the wares, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trademarks in appearance or sound or in the ideas suggested by them. This list is not exhaustive and different weight will be attributed to different factors according to context.

  1. Inherent Distinctiveness and the Extent to Which the Marks Have Become Known

The Hearing Officer said that the applicant’s mark had a suggestive and descriptive connotation and was inherently weak. The Opponent’s WHITE SPOT marks was said to possess a fair degree of inherent distinctiveness.

The applicant did not submit any evidence of the use of his proposed mark. As set out above, the WHITE SPOT brand was fairly well known in Canada.

  1. The Length of Time the Trade Marks Have Been in Use

The Opponent’s WHITE SPOT trade marks had been used in Canada since at least as early as April 1972. There was no evidence that the applicant’s mark had been used.

  1. The Nature of the Wares and Services and the Nature of the Trade

The Hearing Officer stated that both parties were in the restaurant services business and were potential competitors. While most of the relevant wares were in the broad class of alimentary products, the specific wares were unrelated since the Opponent’s registrations did not extend to pizza related items.

  1. The Degree of Resemblance Between the Trade Marks in Appearance or Sound or in the Ideas Suggested by Them

The applicant contended that the respective marks did not resemble each other as the first component of the marks was totally different in sound and the ideas suggested were different. In this regard it was also submitted that the Opponent could not claim a monopoly over use of the word "SPOT."

The Hearing Officer agreed and found there was little resemblance in appearance, sound and ideas between the respective marks when looked at in their entireties. While the Opponent submitted that its branding emphasized the word "SPOT," the Hearing Officer found this was not supported by the evidence.

Conclusion

As a result of the Hearing Officer’s findings set out above, it was determined that the Applicant had established that a consumer with an imperfect recollection of the respective marks would not likely be confused concerning the source of the applicant’s wares or services and the opposition was dismissed.

Comment

The Hearing Officer’s observation that the Opponent should have filed evidence to support the suggestion that its branding emphasized the word "SPOT" does not seem helpful. First, the trade mark in issue was WHITE SPOT and second, it seems unlikely that the Opponent’s position would have been any stronger with the Hearing Officer if it owned a trade mark registration for the mark SPOT.

While the case is close to the line, the Hearing Officer appears to have been unsympathetic to the fact that a potential competitor of the Opponent was now entitled to use a mark that suggests some connection with the Opponent.