There was considerable interest in our earlier post (Trade-mark Oppositions: When “Close” becomes “Too Close”) which reviewed the competing marks POMPURE vs. POM WONDERFUL for beverages, and the marks CAMILION vs. CAMÉLÉON & Design, both for software.
In another recent case Reynolds Presto Products Inc. v. P.R.S. Mediterranean Ltd., 2013 FCA 119, the Federal Court of Appeal reviewed the competing marks GEOWEB and NEOWEB, both for “cellular confinement systems”. The owner of the GEOWEB mark sought an order to strike out NEOWEB on the basis of confusion. At trial, the judge sided with the owner of the NEOWEB mark. The owners of GEOWEB appealed.
The Trade-marks Act tells us that in determining whether trade-marks are confusing, the court should consider “all the surrounding circumstances” including:
- the distinctiveness of the trade-marks and the extent to which they have become known;
- the length of time the marks have been in use;
- the type of products, services or business in question;
- the “nature of the trade” which looks at the marketplace, sales and distribution channels; and
- the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them.
In this case, the appeal court overturned the lower court decision. Proper emphasis should have been placed on the fact that both companies were direct competitors, selling the same products into the same market. The test to be applied is “a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the [mark], at a time when he or she has no more than an imperfect recollection of the [prior] trade-marks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks”. The court should not conduct a careful examination of the two marks through a side-by-side comparison.
In the end, the NEOWEB was found to be confusing with GEOWEB and was ordered to be struck from the register.