Tokai of Canada Ltd v Kingsford Products Company, LLC, 2018 FC 951
In this decision, the Federal Court (“FC”) confirms that a trademark which is likely to confuse a consumer with another trademark will be refused for registration – an important reminder for branding businesses.
The FC upheld the Registrar of Trade-marks (“Registrar”) decision in which it found that Tokai of Canada Ltd’s (“Tokai”) trademark is likely to be confusing with The Kingsford Products Company, LLC’s (“Kingsford”) trademarks, thereby refusing to register Tokai’s trademark application. The FC found that the Registrar’s decision was reasonable and dismissed Tokai’s appeal. [1, 44]
Background
Tokai filed on December 5, 2013, a trademark application (“the Application”) for the trademark KING (registration no. TMA 1,655,739), for use in association with “butane”. [2] Kingsford, which owns several registered trademarks covering a range of barbecue-related goods, opposed the Application based on ss. 2, 12(1)(d), 16(3)(a), (c) and 30(i) of the Trade-marks Act (“the Act”). [3-4] The Registrar refused the Application on the basis that the Mark is confusing with Kingsford’s Marks, contrary to para 12(1)(d) of the Act but dismissed the other grounds of opposition. Tokai appealed the Registrar’s decision to the FC. [8-9]
The Registrar Made Reasonable Findings
The main issue before the FC was whether the Registrar erred in concluding that Tokai’s Mark was confusing with Kingsford’s Marks. [15] In its analysis, the FC reminds that pursuant to subs. 6(2) of the Act, the test to apply in a confusion analysis has been stated in Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27: “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, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks.” [27] Subs. 6(5) of the Act sets out a list of (non-exhaustive) factors to consider in applying this test. [28-29]
In terms of inherent distinctiveness, Tokai argued that the trademarks at issue are inherently week, and that Kingsford did not provide evidence of an enhanced reputation for its Marks. Consequently, Kingsford’s Marks should be given a narrow scope of protection. The FC agreed that Kingsford provided no evidence on acquired distinctiveness of its Marks; however, the FC also found that the Registrar was correct in finding that both Tokai’s Mark and Kingsford’s Marks possess some level of inherent distinctiveness as they are arbitrary in nature and not descriptive of the goods associated with the Marks. The FC found that this factor favoured neither party. [31-32]
For the length of time in use, the FC explained that Tokai’s trademark application was based on proposed use with “butane”. Kingsford’s Marks cover a variety of barbecue-related goods, including “charcoal lighters”. Kingsford offered no evidence of use; only alleged dates of first use were provided, to which the Registrar gave little weight. The Registrar concluded that this factor favoured neither party, and the FC found this conclusion reasonable. [33-36]
When analysing the factor of the nature of goods and trade, the Registrar could not conclude that there would not be an overlap between the parties’ goods. The Kingsford Marks are barbecue-related, and there was a lack of evidence that Tokai’s proposed use of KING with “butane” would not relate to barbecue related goods. [38] Tokai argued before the FC that it is unlikely that a consumer looking for butane will think that the KING trademark is associated with the Kingsford Marks. The FC noted however that the evidence shows that Tokai had used the KING trademark in association with lighter products specifically marketed for the barbecue market. The FC found that the Registrar’s conclusion on the nature of goods and trade was therefore reasonable. [39]
Finally, in terms of the degree of resemblance and ideas suggested, the Registrar had found a certain degree of resemblance between the parties’ Marks. The whole of the word KING is incorporated in KINGSFORD and is the first or dominant part of that trademark. Furthermore, the two words have some visual, phonetic and connotative similarities. [40] Tokai argued that while the first part the KINGSFORD Mark is the most relevant in this case, the word is common and therefore the importance of the first part of the word decreases and small differences between the Marks will suffice to differentiate them. [41] The FC notes that its role is not to dissect a trademark when comparing it to another, but rather to determine if there is a sufficient degree of resemblance for a casual consumer, somewhat in a hurry with an imperfect recollection of the KINGSFORD Marks would likely be confused as to the source of the KING Mark associated with butane. [42] The FC found that the Registrar was correct in finding that Tokai’s KING trademark is likely to be confusing with Kingsford’s Marks and dismissed Tokai’s appeal of the Registrar’s decision. [44]
Commentary
The FC acknowledged that in this case, the trademarks at issue were comprised of a common word, “king”. However that word is not descriptive or suggestive of the goods, making the trademarks arbitrary in nature, and giving some level of distinctiveness to the Marks. Nonetheless, KING is entirely incorporated in KINGSFORD, and the Marks may have some overlapping goods – a consumer with an incorrect recollection of the KINGSFORD Marks could be confused by the KING Mark. This decision by the FC is yet another reminder that trademark applications that are confusing with existing trademarks will be rejected. This is an important factor for businesses to keep in mind in the branding business. Please contact a PCK agent or IP lawyer to get advice to protect your brand.