American Sporting Goods gets the boot

In American Sporting Goods Corporation v Sears Canada Inc, the Federal Court of Canada has upheld the registrar of trademarks' decision to refuse American Sporting Goods' (ASG) application to register the term 'Nevados' as a trademark for footwear. Sears Canada thereby successfully opposed the application in view of its use and registration of the trademark NEVADA for clothing, footwear and related accessories.

The registrar of trademarks found that ASG had failed to meet its legal burden of showing that there was no reasonable likelihood of confusion. As a result, the registrar concluded that confusion was likely because of the degree of similarity between the word 'Nevados' and Sears' mark NEVADA, and the overlapping wears to which the two marks would be applied (ie, footwear). The registrar also took into consideration the fact that Sears had established that its inherently weak trademark NEVADA had become well known in Canada.

On appeal, both parties filed additional evidence with the Federal Court, mainly relating to (i) the quantity and value of goods each sold in Canada, and (ii) the years in which sales were made. The court found that this new evidence, combined with the evidence the registrar had considered, only strengthened Sears' case for opposing the registration of 'Nevados' as a trademark.

Mark Evans, Smart & Biggar/Fetherstonhaugh & Co, Ottawa