Trademark Series: Confusion (Part 2)

By Richard Stobbe

So much confusion, so little time. The Trade-marks Act teaches us that the use of one trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would likely lead to the inference that the products associated with those trade-marks emanate from the same person, even if the products are of a different class. Confusion is assessed by looking at all the surrounding circumstances including:

  • the inherent distinctiveness of the trade-marks;

  • the extent to which the marks have become known;

  • the length of time the trade-marks have been in use;

  • the nature of the products or business;

  • the nature of the trade; and

  • the degree of resemblance between the two trade-marks in appearance or sound or in the ideas suggested by them.

In the case of U-Haul International Inc. v. U Box It Inc., 2015 FC 1345 (CanLII), U-Haul International applied to register the trade-marks U-BOX WE-HAUL and U-BOX, for use in association with “moving and storage services, namely, rental moving, storage, delivery and pick up of portable storage units.” A competitor – U Box It – opposed these applications on the basis of confusion with its registered U BOX IT mark for use for use in association with “garbage removal and waste management services.” 

Are “moving and storage services” in the same area as  “garbage removal and waste management services”? 

U-Haul argued that the two companies offer completely different services, and “that garbage removal and waste management are the ‘exact opposite’ of moving and storage, and in different channels of trade.” However, the court agreed with the opponent’s argument that confusion was based on “the similar manner in which the services are provided, and not on any finding that the services were in fact the same.”

After reviewing all of the factors listed above, the court found a reasonable likelihood of confusion, and refused to register the two marks U-BOX WE-HAUL and U-BOX, based on confusion with the registered mark U BOX IT.

 

Calgary – 05:00 MST

 

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