SKCorporationv.Safety-KleenSystems,Inc.,2014 FC 140

This was an appeal of a decision of the Trade-marks Opposition Board (the “Board”) by SK Corporation (“SK Corp.”). The Board rendered a split decision in which SK Corp.’s trade-mark application was rejected with respect to certain wares and “undefined” wares that overlapped with those of the Respondent, Safety-Kleen Systems (“SKS”). The application was allowed with respect to other non-overlapping wares and the services covered by the application.

SK Corp.’s application covered a broad range of chemical products, as well as cable television broadcasting and cellular communications services. In assessing the likelihood of confusion between the two trade-marks, the Registrar found that while both have some degree of distinctiveness, SKS’s mark has been in use for much longer and, as such, this criterion favours SKS. The Board also concluded that there was no overlap between SK Corp.’s services and SKS’s wares. However, there was an overlap between some of the parties’ wares. There were also certain wares that the Board did not understand because of their technical or chemical terms. They too were considered to be overlapping. With respect to the degree of resemblance between the trade-marks, the Board concluded that they were identical phonetically, but shared no visual resemblance. SK Corp. appealed and requested that the Board’s decision regarding the overlapping and undefined wares be set aside.

SK Corp. filed four additional affidavits on appeal. The Court considered the evidence, and found that the new evidence was not sufficiently significant or reliable in light of the whole evidence, and would not have materially affected the Board’s decision. Therefore, applying a ‘reasonableness’ standard of review, the Court found that the Board considered all relevant factors and came to a reasonable conclusion. The appeal was dismissed with costs.