In a recent Federal Court decision, dated October 15, 2013, Mr. Justice Campbell overturned a decision of the Registrar of Trade-marks in which the Registrar had allowed an application for the mark ZENERGY BY/POUR SIMON CHANG filed by Simon Chang Design Inc. for various items of clothing.  International Stars S.A. had opposed the application based on its use of the trade-mark ENERGIE for similar wares.  The decision provides an interesting application of the principle that confusion should be assessed as a matter of first impression from the perspective of the casual, hurried, consumer with no more than an imperfect recollection of other trade-marks.

The Registrar had rejected the opposition by International Stars concluding that there was no likelihood of confusion between the marks.  Although the Registrar found that there was overlap in the wares and channels of trade and some resemblance between the marks in sound, appearance and the idea suggested due to the common use of ENERGY/IE, confusion was unlikely given the differences between the marks.  International Stars appealed.

Justice Campbell found that the Registrar had erred in finding that the Chang mark was inherently stronger because it was made up of an invented word, ZENERGY, combined with the Chang name and coloured design features, while the International Stars mark “consists solely of an ordinary dictionary word.”  Mr. Justice Campbell held this to be a “fundamental error” stating, at paragraph 6, that “ENERGIE does not consist solely of an ordinary dictionary word” and “[a]s a result, I find that neither mark is inherently more distinctive than the other.”

This error, according to Justice Campbell, impacted the validity of the Registrar’s conclusions on the differences between the marks.  More specifically, the Registrar had found that ZYNERGY, an invented word and the first element of the mark, was the dominant part of the Chang mark.  Justice Campbell agreed with the appellant’s submission that having made this finding, the Registrar should not have “proceeded to further search the evidence in order to make the first impression determination” but should have decided whether confusion would exist on the basis of that evidence alone.”  By considering other features of the applied-for mark (i.e. the designer’s name and the design), the Registrar went beyond what would give the first impression.  The result was that the Registrar, according to the decision, had erred by conducting a side-by-side a comparison of the marks and concluding that confusion was unlikely based on the differences between the mark.  This of course goes against a second well-established principle that in assessing confusion, the marks at issue are to be assessed in their entirety and are not to be dissected for differences or similarities.   Having found that the Registrar’s side-by-side comparison constituted an error in law [paragraph 10], the Court considered the evidence de novo and found there to be a likelihood of confusion given the strong resemblance between the marks.

The appeal was therefore granted and the application refused.

It is interesting to note that the Registrar clearly understood that the marks are to be assessed in their entirety, having stated as much in the decision under appeal.  While the Registrar did indeed find ZYNERGY to be dominant, the Registrar also stated that the designer’s name and the coloured design were also significant features of the mark.  Therefore, it would seem that the Registrar did not find that ZYNERGY dominated the mark to the exclusion of the other elements of the mark such that it alone would create the first impression in the mind of the casual consumer.  It seems quite possible that the Registrar was indeed evaluating the mark as a whole and merely considering what impression it would create, i.e. in its entirety.  Since the applicant, Simon Chang Design, did not participate in the appeal hearing, it seems unlikely there will be a further appeal.

Bill Mayo and Jennifer Nahorniak