We previously mentioned the statutory factors. Now is the time to deal with them in more detail.
Duration of Use
The second factor to be considered is the length of time the marks in issue have been in use. The duration of use is important since distinctiveness may be acquired as a result of extensive use. But if the trademarks in issue have been used concurrently for a long period and evidence of confusion is not brought forward, an inference may be drawn that confusion is not likely. Whether the inference should be drawn depends on the circumstances of the case.
The Nature of the Goods, Service, or Business
The third factor to be considered is the nature of the goods, services or business. The general class of goods and services, while relevant, is not controlling.
That there is an overlap in the goods or services must be considered but is not enough by itself to establish a likelihood of confusion. A statement of goods or services should be read to determine the probable trade or business intended to be reached rather than all possible trades that might be covered. However, when there are no restrictions as to trade or price in the respective statements, the two statements must be compared as listed.
If the goods or services are connected or related this may be relevant. That the applicant has narrowed the scope of its goods or services will be irrelevant if the opponent’s goods or services are not limited.
Where a trademark is inherently weak and does not have acquired distinctiveness, differences in the goods, services or businesses of a junior mark may avoid the likelihood of confusion.
If the goods or services are expensive and a mythical purchaser would carefully consider a purchase, relatively minor differences between marks may distinguish them. But if the goods or services are inexpensive and purchased hurriedly, this must be considered as well. For competing medical products particular care must be taken to prevent the possibility of confusion in the use of competing products.
That goods or services are expensive must relate to the attitude of a consumer in the marketplace. Any impact on the likelihood of confusion is premised on the first impression of consumers when they encounter the marks in question. Where a consumer is shopping for expensive goods or services, while still having an imperfect recollection of a prior trademark, they are likely to be somewhat more alert and aware of the trademark associated with the goods or services they are examining and its similarity or difference with of the prior trademark.
It may not be relevant that consumers are unlikely to make choices based on first impressions or that they generally take considerable time to inform themselves about the source of expensive goods and services. Both—subsequent research or consequent purchase—occur after the consumer encounters a mark in the marketplace. This distinction is important because even with this increased attentiveness, it may still be likely that a consumer shopping for expensive goods and services will be confused by the trademarks they encounter. Careful research and deliberation may dispel any trademark confusion that may have arisen. However, it is confusion when they encounter the trademarks that is relevant. Careful research which may later remedy confusion does not mean that no confusion ever existed or that it will not continue to exist in the minds of consumers who did not carry out that research. Before source confusion is remedied, it may lead a consumer to seek, consider or purchase the goods or services from a source they previously had no awareness of or interest in. This diversion diminishes the value of the goodwill associated with the trademark and business the consumer initially thought he or she was encountering on seeing the trademark.
In an opposition, the applicant’s statement of goods or services and the goods or services used by the opponent in association with its mark govern the determination. Similar considerations apply to a proposed use mark which must be considered in relation to the goods or services of the application, because what is at issue, is what the registration would authorize the applicant to do, not what the applicant is doing now.
More to follow next month.
If you have questions, please contact me at mckeown@gsnh.com
Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
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