The Court of Appeal has overturned a lower court decision and struck the mark NEOWEB from the register because it is confusing with the earlier registered mark GEOWEB. The Court held that it was more likely that not that a consumer, with an imperfect recollection, who encounters NEOWEB would be confused with respect to whether the product was made by Presto or P.R.S.
The GEOWEB mark was registered by Presto in 2001 in association with a product containing polyethylene cells in a honeycomb shape that are filled with sand or soil and are used for erosion control. Presto provided P.R.S. with a licence to sell GEOWEB in approximately 20 countries, but P.R.S. had never sold the product in Canada. Once the licence agreement ended, P.R.S. commenced selling their own competing product, NEOWEB, in Canada. P.R.S. was able to register their NEOWEB mark, so Presto moved under section 57 of the Trade-marks Act to strike it from the Trade-marks Register.
The court below refused to strike the mark, but the Court of Appeal disagreed, stating that the fact that “both companies are engaged in the same wares, business and trade” should have been considered and was not.
Following the framework from the Supreme Court decision in Masterpiece, the Court of Appeal found that a consumer would be confused because the marks are obviously similar (with only one letter different and with the substitution of one Greek three letter prefix for another), they rhyme, and the use of “neo” could imply it was simply a newer version of GEOWEB.
Appeal allowed, mark struck from the register.