Sound familiar at Christmas time? ‘Tis the season when trade-marks play a critical role in millions of buying choices of millions of consumers. So where is the line between two marks that appear similar, for similar products? With all due respect, the Supreme Court of Canada is not known for being succinct, but I have to admit this quote from the top court does capture the issue, and in this context the term “provenance” refers to source, or which company the products come from:

• “Trade-marks in Canada are an important tool to assist consumers and businesses. In the marketplace, a business marks its wares or services as an indication of provenance. This allows consumers to know, when they are considering a purchase, who stands behind those goods or services. In this way, trade-marks provide a “shortcut to get consumers to where they want to go” […]  Where the trade-marks of different businesses are similar, a consumer may be unable to discern which company stands behind the wares or services. Confusion between trade-marks impairs the objective of providing consumers with a reliable indication of the expected source of wares or services. […] “

That is the essence of trade-mark law in Canada.

A recent case from the Federal Court (MÖVENPICK HOLDING AG v. EXXON MOBIL CORPORATION, 2011 FC 1397) has reiterated this concept, in a battle between the marks Marché Express for fast-food items sold at a convenience store, and Marché for restaurant services. The court stated that “The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the [mark], at a time when he or she has no more than an imperfect recollection of the [prior] trade-marks …” Ultimately, the court decided that there was no confusion, partly since the term “Marché” was commonly used in this industry, indicating that consumers are accustomed to seeing the word and will use relatively small differences to distinguish between trade-marks.

ipblog.ca will be taking a break until January… So, for all those casual consumers somewhat in a hurry, slow down and have a great holiday!

Calgary – 07:00 MST