Benjamin Moore & CO. Limited v. Home Hardware Stores Limited, 2017 FCA 53

The Federal Court of Appeal ("FCA") granted an appeal of the Federal Court's ("FC") judgment, which had set aside the decision of the Trademarks Opposition Board (the "Board"). The Board's decision had rejected Home Hardware's opposition to Benjamin Moore's trademark applications for the word mark BENJAMIN MOORE NATURA and the design mark. On appeal to the FC, Home Hardware filed new material evidence and the FC undertook a de novo review of the matter. The FC concluded that the trademarks were confusing, particularly the trademarks used in association with paints (2015 FC 1344our summary here).

On appeal to the FCA, Benjamin Moore submitted that the FC's reasons contained errors of law, including that there was no separate mark to mark comparative confusion analysis, and the proper material dates were not applied when considering each ground of opposition.

The FCA concluded that the FC did not apply a proper mark to mark analysis and did not take into account the relevant material dates for each ground of opposition. The FCA noted that "[i]t is especially important to undertake a separate mark to mark comparison at the appropriate material dates because otherwise it is impossible to undertake a proper weighing of the confusion factors in subsection 6(5)". The FCA disagreed with Home Hardware's submission that it was not necessary to conduct a separate trademark to trademark confusion analysis in this particular case because it owns a family of "NATURA" trademarks that have been built up over several years. While the family of marks was relevant to this case, the FCA stated that the 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 FCA then considered the FC's specific finding of confusion with respect to trademarks associated with paints. The FCA concluded that the FC erred in its confusion analysis by not limiting its consideration to the earliest material date with respect to the paints trademarks, which was the date of Benjamin Moore's applications for registration in this case.

The appeal was allowed and the matter was referred back for redetermination.