Clorox Company of Canada Ltd. v. Chlorotec s.e.c., [2018] F.C.J. No. 408, 2018 FC 408, Federal Court of Canada, April 16, 2018, S. Grammond J.

Clorox appealed the decision by the Registrar of Trademarks that rejected Clorox’s opposition to trademark registrations filed by Chlorotec.

Clorox held the registered trademark for a brand of bleach, “Javex”. Chlorotec applied to register “Javelo”, also a brand of bleach, both in written and visual form. Clorox opposed the trademark registration on the basis that there was confusion between the two marks. The Registrar found that there was no confusion between the marks in that they had a low degree of resemblance and there was no evidence of actual confusion.

On appeal, Clorox submitted fresh evidence on the use of Clorox’s marks in Canada. The fresh evidence contained survey information on the awareness of Javex marks that supported their argument on the distinctiveness of Javex.

The Court was not persuaded by Clorox’s fresh evidence as it did “not provide any information as to the methodology that was used to conduct these surveys. It [was] therefore impossible to assess their reliability and relevance to the questions that are at issue here”. Accordingly, the Court did not consider the surveys.

After finding that the standard of review was reasonableness, the Court analyzed the issue of confusion by reviewing the factors set out in section 6(5) of the Trade-marks Act, RSC 1985, c. T-3 along with the casual consumer test described in Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltee, 2006 SCC 23.

With respect to the degree of resemblance of the marks, no new evidence was adduced and the Court accepted the Registrar’s analysis and held that the decision was reasonable. While this finding was largely determinative, the Court analyzed the marks distinctiveness noting that Javelo had acquired its own distinctiveness. The new evidence showed that Javex also acquired distinctiveness over the years; however, the evidence did not allow the Court to “assess the extent of this distinctiveness nor compare it to the distinctiveness of the “Javelo” mark”. Further, the new evidence showed that the Javex mark was discreetly displayed leading to the conclusion that the distinctiveness of Javex may be on the decline.

The new evidence submitted by Clorox showed that the Javex mark had been used for the past ten years while the Javelo mark was used since 2012. This evidence, however, did not allow the Court to “assess the intensity of this use and, consequently, to reach conclusions regarding acquired distinctiveness”.

While the decision of the Registrar found that the nature of the wares was the same, the Registrar rejected Chlorotec’s argument that the wares were intended for different markets. The Court held that the Registrar’s finding that the nature of the wares favoured confusion was reasonable.

The Court finally assessed the casual consumer test agreeing that the Registrar reasonably concluded that the resemblance of the marks was low. In combination with the other factors contained in s. 6(5) of the Trade-marks Act, the Court was not persuaded that there was confusion between the marks and dismissed the appeal with costs.