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TRADE-MARKS - Opposition - Grounds - Confusion - Nature of wares, service or business - Surrounding circumstances

Tuesday, September 12, 2017 @ 8:54 AM  


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Appeal by U-Haul International Inc. (U-Haul) from the dismissal of its appeal from decisions of the Trade-marks Opposition Board refusing to register the trademarks U-BOX and U-BOX WE-HAUL. The respondent, UBox It Inc., had opposed the applications for registration on the ground that the trademarks were confusing with its registered trademark U BOX IT. The appellant applied for registration of U-BOX and U-BOX WE-HAUL in 2009 for use in association with moving and storage services, namely, rental, moving, storage, delivery and pick up of portable storage units. The respondent’s trademark, U BOX IT, was registered in 2008 for use in association with garbage removal and waste management services. The garbage removal business was performed in a similar fashion to U-Haul’s business. The Board and the Federal Court confirmed that the appellant’s trademarks were confusing with the registered trademark, U BOX IT. The Federal Court concluded that a de novo analysis was not appropriate on account of new evidence introduced by the appellant which included telephone listings for the purpose of establishing that parties’ services and channels of trade did not overlap. The Federal Court concluded the new evidence would not have made a material difference in the Board's findings of fact or exercise of discretion. The appellant argued that the Federal Court erred by not conducting a de novo analysis on the basis of new evidence, and in upholding the Board’s conclusion that the trademarks were confusing, as the Board did not give sufficient weight to the fact that the services of moving and storage and garbage removal were dissimilar.

HELD: Appeal dismissed. The Federal Court made no palpable and overriding error in refusing to undertake a de novo review, as the new evidence merely supplemented or confirmed the findings of the Board. The Board reasonably found that the services of the parties were performed in a similar manner and that their customers might overlap because individuals who were in the process of moving or renovating might be interested in the services of both companies. The weighing exercise undertaken by the Board was reasonable based on the facts of the case. The Board was entitled to significant deference in its evaluation of the evidence. The Board’s reasons amply supported the conclusion that the respondent’s first use of its mark was in 2006, and there was no basis for the appeal court to intervene. It was not appropriate to conduct a re-weighing exercise in this case.

U-Haul International Inc. v. U Box It Inc., [2017] F.C.J. No. 807, Federal Court of Appeal, W.W. Webb, A.F.J. Scott and J.M. Woods JJ.A., August 15, 2017. Digest No. TLD-Sept112017004