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TRADE-MARKS - Opposition - Grounds - Confusion - Totality of the marks test - Material dates

Friday, April 21, 2017 @ 10:40 AM  


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Appeal by Benjamin Moore from a Federal Court decision relating to its trademark registration applications. Benjamin Moore applied to register two trademarks, the word mark BENJAMIN MOORE NATURA and a certain design mark, to be used in association with interior and exterior paints. Home Hardware opposed the applications, asserting that the marks were confusing with nine of Home Hardware’s trademarks that included the term “natura”. Seven of Home Hardware’s marks were registered design marks, while two were unregistered, with registrations pending. One mark, BEAUTI-TONE NATURA, was associated with paint and paint-related products. Home Hardware commenced selling paints using that mark after January 9, 2009, while Benjamin Moore started selling BENJAMIN MOORE NATURA in April 2009. Home Hardware’s oppositions were rejected by the Trade-Marks Opposition Board, because there was no confusion between any of the Benjamin Moore and Home Hardware trademarks at any of the material dates at which confusion was to be determined. On appeal, the Federal Court found that there was confusion between the trademarks, particularly as those marks were used in association with paint. The Benjamin Moore applications for registration were refused.

HELD: Appeal allowed. The judgment was set aside and the matter was referred back to the Federal Court for re-determination. The Federal Court did not apply a proper mark to mark analysis or take into account the relevant material dates for each ground of opposition. Home Hardware’s use of a family of marks including the term “natura” did not obviate the need to undertake a full comparative confusion analysis on a mark to mark basis for each relevant ground of opposition. The Federal Court also applied the wrong material dates in determining that the paints trademarks were confusing. The only relevant date was January 9, 2009, the earliest of all the relevant material dates in this matter, at which time neither party was selling paint using the word natura.

Home Hardware Stores Ltd. v. Benjamin Moore & Co., [2017] F.C.J. No. 274, Federal Court of Appeal, E.R. Dawson, D.J. Rennie and J.M. Woods JJ.A., March 15, 2017. Digest No. TLD-Apr172017010