Understanding Trademark Infringement in Canada: Part 2
Trademark infringement involves consumer confusion. Infringement may occur where a consumer is confused about the origin of goods or services due to similarities between trademarks. When dealing with this type of confusion, a business should consider the degree of resemblance in appearance, ideas, sounds, and aesthetics that is perpetrated by their trademarks.
Trademark law aims to eliminate confusion for consumers by refusing to grant a trademark that is very similar or the same as an already registered trademark. The same or similar trademark may be registerable if it is for completely unrelated goods and services, however if there is a likelihood of confusion, whether or not the services are of the same class, a trademark application may be rejected. The inherent distinctiveness of the trademark, as well as the extent to which they have become known or utilized, are some of the determining factors when identifying whether a trademark is deemed confusing to consumers.
As Section 6.(2) of the Trade-marks Act clarifies how it distinguishes a trademark may be confusing for consumers:
"The use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the wares or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class."
That are six factors that the CIPO website provide to consider whether or not a trademark can confuse consumers, which includes:
- The inherent distinctiveness of the trademarks or trade-names and the
- Extent to which they have become known
- The length of time the trademarks or trade-names have been in use
- The nature of the wares, services or business
- The nature of the trade
- The degree of resemblance between the trademarks or trade-names in appearance or sound or in the ideas suggested by them
Despite the best efforts to create a protocol to help determine if a trademark has been infringed upon, some cases will be more challenging to prove. Limited statutory should also be made aware of, mainly revolving around the use of a personal name that is being used as a trading name or geographic location of an area.
A recent example of this would be the case of Kylie Jenner vs. Kylie Minogue. In 2016, Kylie Jenner wanted to trademark her name, Kylie. Minogue, an international artist, filed to block the registration. Kylie Jenner was looking to trademark the name for business, advertisement and entertainment purposes. Both Jenner and Minogue opted to settle their terms outside of court, and the terms of the trademark settlement are entirely confidential.
For more questions about trademark infringement, schedule a free consultation with our trademark professionals in Edmonton.