The Carbon Trust v. Pacific Carbon Trust, 2013 FC 946

Carbon Trust has unsuccessfully appealed a decision of the Trade-marks Opposition Board that refused to register its proposed “‘working with the Carbon Trust’ and footprint design” as it was confusing with the “Pacific Carbon Trust” trade-name of the respondent. The Board found that the overlapping nature of the parties’ services and the ideas suggested by the respective trade-mark or trade-name may infer an association between them. The Court did find that Pacific Carbon Trust engages in commercial activity in the carbon offset industry, meaning it is a business for the purposes of the Trade-marks Act. Since Pacific Carbon Trust’s services were available in Canada and the trade-name has been used in the advertising of those services, the mark was deemed to be used within the meaning of the Act.