This was an appeal by Micro Focus (IP) Limited (“Micro Focus”) of a decision of the Trade-marks Opposition Board refusing its application for registration of the trade-mark MICRO FOCUS in association with computer software and related services. The TMOB found that there was a reasonable likelihood of confusion between Micro Focus’ mark and the respondent’s FOCUS mark.
Micro Focus submitted fresh evidence that its use of the MICRO FOCUS mark would not be confusing. For instance, the evidence showed that Micro Focus has used its mark continuously and extensively since at least 1989, and that it has acquired distinctiveness and a reputation in Canada. Further, there has been no actual confusion between Micro Focus’ mark and the respondent’s FOCUS mark.
The Court therefore decided the issue of confusion based on the full evidentiary record before it. It found that the factors considering inherent disctinctiveness, length of time in use, and extent of public knowledge, and different wares, services and channels of trade all favoured Micro Focus. It also found that there was no evidence of any consumers actually being confused, and pointed to the respondent’s admission to that effect in an earlier co-existence agreement between the parties as being “significant” on the issue of confusion. In view of the Court’s findings, the Court found that Micro Focus met its burden of showing that its MICRO FOCUS mark would likely not be confusing with the respondent’s mark. Accordingly, the Court set aside the Board’s conclusions that the respondent’s grounds of opposition under ss. 12(1)(d) and 16(2)(a) of the Trade-marks Act were well-founded.
Therefore, the Court held that Micro Focus presented new evidence that would have materially affected the Board’s conclusion. Ultimately, the Court felt that confusion would be unlikely and, as such, allowed the appeal with costs. Micro Focus was permitted to register its MICRO FOCUS mark.