In Home Hardware Stores Limited v Benjamin Moore & Co., Limited, 2015 FC 1344, an appeal of a decision of the Trademarks Opposition Board released at the end of 2015, Home Hardware argued the principle of “dressing up” a competitor’s trademark as a separate consideration in assessing confusion between the marks. Although an intriguing concept, and one that has initial appeal, it does not appear to exist under Canadian law.
Home Hardware had opposed two applications by Benjamin Moore for the trademark BENJAMIN MOORE NATURA in word and design form, on the basis of, among other things, a likelihood of confusion with its own unregistered NATURA trademarks. Both parties used their trademarks in association with paint.
As a “surrounding circumstance” in the likelihood of confusion analysis under section 6(5) of the Trade-marks Act, Home Hardware argued that the BENJAMIN MOORE NATURA trademark was an appropriation of Home Hardware’s NATURA trademark. Home Hardware argued that BENJAMIN MOORE NATURA was merely a “dressing up” of an attempt to claim the NATURA mark as its own. In other words, that Benjamin Moore was attempting to appropriate the NATURA mark by adding its well-known name “Benjamin Moore” to the beginning of it.” Benjamin Moore argued that there is no principle in Canadian law prohibiting the “dressing up” of a competitor’s trademark and that the court must only assess whether the marks were confusingly similar. Ultimately, the court found the marks confusing, but did not expressly affirm or reject the principle of “dressing up”.
According to the court, the “appropriated” mark NATURA was not highly distinctive and even suggested a quality of naturalness. However, the mark had some uniqueness and novelty in association with paint and the evidence established that Home Hardware’s trademark had superior acquired distinctiveness in the marketplace compared to Benjamin Moore’s. Overall, the distinctiveness factor slightly favoured Home Hardware. As the remaining factors also favoured Home Hardware, the court found a likelihood of confusion. The “appropriation” of the trademark NATURA does not seem to have figured into the court’s conclusion.
In its memorandum of fact and law, Home Hardware cited Conde Nast Publications Inc v Union des éditions modernes (1998), 46 CPR (2d) 183 for the proposition that Canadian trademark law “prohibits applicants from dressing up the marks of other traders and claim them as their own.” In response, Benjamin Moore cited cases that it claimed were examples of where “a junior mark has been permitted to use/register a trade mark that incorporates the senior user’s trade mark, where the goods are overlapping”. A review of the cases supports Benjamin Moore’s proposition that such use/registration may be permitted.
For instance, in A&W Food Services of Canada Inc. v. McDonald's Restaurants of Canada Ltd.,  F.C.J. No. 503, McDonald’s began using the trademark “Chicken McGrill” with full knowledge of A&W’s registration for the trademark “Chicken Grill” in association with the exact same goods (grilled chicken sandwiches). The court held that the defendant’s attitude may form part of the “surrounding circumstances” in the confusion analysis, and in fact found that McDonald’s “displayed a lack of sensitivity to A&W's place in the market.” However, the court held that this fact did not help in determining issue of whether there actually was confusion. “Chicken Grill” was a weak mark, and suggestive of the associated goods, whereas the “Mc” prefix provided a clear and well-recognized signal that the source was McDonald’s. In that case, the court also considered, an allegation of reverse confusion. In other words, would consumers see the senior mark “Chicken Grill” and think the product originates with McDonald's? The court said “no”, since there was nothing inherent in the words “chicken” and “grill” that pointed to McDonald's.
What happens when the mark that is appropriated is a well-known or even famous mark? For instance, what if McDonald’s sold a “McWhopper” burger? This was a hypothetical raised, but not fully analyzed, inA&W v McDonald's. Under the current law, the ultimate question is still whether the public is confused. The answer will be fact specific. Presumably, with a famous registered mark like Whopper, consumers would believe there is a connection to Burger King, leading to a likelihood of confusion and infringement under section 20 of the Trade-marks Act.
As the trademark NATURA illustrates, there is, of course, a spectrum between weak marks like CHICKEN GRILL and well-known or famous marks like WHOPPER. Whether the appropriation of a mark leads to confusion, forward or reverse, will be fact specific and will depend on a number of factors. However, one thing appears clear; under the current law, the “dressing up” will not be considered as a separate doctrine or basis for opposition of another’s application for a trademark.
A version of this article was published by LexisNexis in The Lawyers Weekly, 11 March 2016