Dismissal of injunction maintained on appeal, but different reasons outlined

In Octeau v Kempter Marketing Inc (2010 QCCA 171, February 4 2010), the Court of Appeal of the Province of Quebec has confirmed a decision of the Superior Court, concluding that it was improbable that a “casual consumer in somewhat of a hurry” purchasing medium-priced men’s clothing products bearing the mark HÖRST DÜSSELDORF in a retail outlet would consider that they are related to high-end HORST WATERPROOF-branded cycling products in a high-end sporting goods store.
Kempter Marketing Inc (KMI) and Ango-Mode Inc both use the term 'Hörst' (without the umlaut in the former case, and with it in the latter) in their respective trademarks used in association with distinct products sold to distinct classes of retailers. Ango-Mode sells a complete collection of menswear marketed under the trademark HÖRST DÜSSELDORF, and spends significant amounts in advertisement to promote it. KMI specializes in the sale and distribution of products associated with skiing and cycling. Among these products are waterproof bags to attach to bicycles. These bags are sold in high-end sports shops under the trademark HORST WATERPROOF.
The Court of Appeal noted that, after careful consideration of the statement found in the opinion of the Supreme Court of Canada to the effect that “[l]uxury champagne and mid-priced women's wear are as different as chalk and cheese”, the trial judge had indicated that there was no likelihood of confusion between the trademarks of KMI and Ango-Mode (for further details please see "No confusion between HÖRST and HORST WATERPROOF").
Ango-Mode attempted to convince the Court of Appeal of an erroneous appreciation by the trial judge of the distinctive character of the HÖRST DÜSSELDORF mark. Moreover, it argued that the trial judge had taken no account of three of the criteria that must be examined under Subsection 6(5) of the Trademarks Act - namely:

  • the duration of use of the marks; 
  • the nature of the trade; and
  • the degree of resemblance in appearance between the marks.
The Court of Appeal acknowledged that the trial judge had not pondered all of the relevant circumstances, including factors enumerated in Subsection 6(5) of the act, and then proceeded with its own analysis of the circumstances:
  • In respect of the inherent distinctiveness of the trademarks and the extent to which they had become known, the court found that the trademark HÖRST DÜSSELDORF was not distinctive enough when KMI began to use its HORST WATERPROOF mark so as to justify the injunctive protection sought.
  • In respect of the length of time of the trademark use, the court was of the view that since HÖRST DÜSSELDORF had been marketed only recently, such use was insufficient to confer a distinctive character to it.
  • In respect of the nature of the goods, services or business, the court concluded that the likelihood of confusion based on this criterion was at best rather slight and more probably non-existent, especially given the fact that the respective products were not currently in the same general category of goods.
  • In respect of the nature of the trade, given the differences between the parties in the means of distribution of their respective goods, the court stated that the likelihood of confusion was not enhanced by these circumstances.
  • In respect of the degree of resemblance between the trademarks in appearance or sound, or in the ideas suggested by them, the court held that it was insufficient to give rise to a likelihood of confusion, notably in light of the fact that the second word in HORST WATERPROOF was intended to be descriptive, which was not the case for the second word in HÖRST DÜSSELDORF.
  • In respect of any other relevant surrounding circumstances, the court stated that no valid conclusion could be drawn from KMI’s abandonment of its application to register its HORST WATERPROOF mark when confronted with Ango-Mode’s opposition to the registration, especially given that the position taken by the Trademark Office as to the existence of confusion was not based on anything more than an examination of KMI's application, without any evidentiary hearing or legal argument.
In light of its analysis, the Court of Appeal agreed with the dismissal of the case by the trial judge and rejected the appeal with costs.

Marcel Naud, ROBIC LLP, Montreal 

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