The Federal Court’s decision in Responsive Brands Inc v. 2248003 Ontario Inc, Marc Picard and Michael Urquhart1 relates to a trademark infringement and passing-off dispute between the Plaintiff, owner of the MISTER TRANSMISSION registered trademark and the defendant, user of the trade name MASTER TRANSMISSION.
After a four day trial, the Federal Court found that there was a likelihood of confusion between MISTER TRANSMISSION and MASTER TRANSMISSION resulting in trademark infringement. An injunction was granted by the Court. As discussed below, in arriving at its decision, and with reference to leading case law, the Court found a likelihood of confusion existed despite the fact there was insufficient evidence that any consumer had actually been confused or misled in more than 5 years of co-existence.
The Plaintiff is the owner of the registered trademark MISTER TRANSMISSION, which it has used in Canada since the 1970s. As reported by the Court, MISTER TRANSMISSION advertised heavily and enjoyed a high level of brand recognition. Of its 65 locations across Canada, it has a franchise location in Orillia, Ontario, where the Defendant operated its sole location under the trade and business name MASTER TRANSMISSION since 2010.
Likelihood of confusion, despite no actual confusion
Central to the Court’s decision is, of course, the issue of whether or not there was a likelihood of confusion between the Plaintiff’s mark and the Defendant’s trade name.
Given the factual circumstances of this case, the Court began its analysis of this issue by focusing on whether or not there had been any actual confusion between the Plaintiff’s mark and Defendant’s trade-name, both being associated with the same types of services and co-existing in the same marketplace for over 5 years.
As held by the Federal Court of Appeal2, “proof of actual confusion or the absence of such confusion over a long period of time is a very weighty factor that must be considered as part of the surrounding circumstances pursuant to subsection 6(5) of the Act.”
Based on the evidence, the Court found that “there [was], at best, insufficient evidence that any consumer [had] actually been confused or misled since Master opened its business in Orillia some five and a half years ago.”
Despite the insufficient evidence of any actual consumer confusion, the Court went on to consider whether there was, nonetheless, a likelihood of confusion stating, “despite the absence of any persuasive or sufficient evidence that any consumer has actually been confused or misled, it is necessary nevertheless to consider and analyse the likelihood of confusion between the trade-marks and trade names of the parties.”
In so doing, the Court analyzed the evidence in light of the traditional s. 6(5) likelihood of confusion factors. More particularly, on the question of distinctiveness the Court held that although MISTER TRANSMISSION was not inherently distinctive, as a result of its extensive use and adverting it had become well-known in and across Canada and thereby acquired distinctiveness. Further, the Court found that the length of time the parties had used their respective marks favoured the Plaintiff given its long standing use since the 1970s, and that there was overlap in the nature of the goods, services and business as well as the nature of the trade associated with the marks at issue. Finally, analyzing the degree of resemblance between the marks, the Court held that, “ … ‘Mister Transmission’ and ‘Master Transmission’ do sound similar, although they are certainly not homonyms or identical such that one might be as easily mispronounced as the other. That being said, for the casual consumer in a hurry, perhaps they would be, considering there is a single letter difference between the first words of each name and the sound of those first words is similar.”
On balance, and having regard to these factors, the Court concluded that there was a likelihood of confusion between the marks, notwithstanding the surrounding circumstance of no actual confusion having been proven.
This decision is a reminder that the test for trademark infringement depends on the likelihood of confusion, and not necessarily actual confusion even if the latter is a “weighty factor”. As such, even in circumstances of long-standing co-existence with no actual evidence of consumer confusion, infringement of a registered trademark may still be found to have occurred.
1 2016 FC 355
2 Philip Morris Products SA v. Marlboro Canada Ltd., 2012 FCA 201 (Justice Gauthier)