No likelihood of confusion between PARIS BLUES and PARIS

The Trademark Opposition Board has rejected an opposition against the registration of the trademark PARIS BLUES on the grounds that there was no likelihood of confusion with the earlier registered trademark PARIS. 
Paris Glove of Canada Ltd is the owner of two registrations for the figurative trademark PARIS for gloves and mittens based on use in Canada since 1945 and 1988 respectively.      

Paris Glove has also used the trademark PARIS in different forms since 1976 in association with fashion scarves and winter scarves in Canada, and sold its gloves, mittens and scarves directly to retailers (ie, fashion accessory stores, clothing stores, department stores and/or sporting goods stores).

PBT Company LLC filed two applications for the registration of the mark PARIS BLUES, one being for a wide range of clothing items (eg, pants, sweatpants, shorts, t-shirts, dresses, sweaters, sweat shirts, sports coats, leather coats, polo shirts and scarves). The mark had allegedly been used in Canada for some of the goods since 1985; the application for the other goods (eg, purses, belts clasps and belt buckles) was filed on the basis of proposed use in Canada.

Paris Glove opposed the application to register the PARIS BLUES mark. The hearing officer of the Trademark Opposition Board reviewed the grounds of opposition and noted that the issues between the parties effectively boiled down to a determination of the issue of confusion between the stylized mark PARIS and the trademark PARIS BLUES.

The decision adhered to the well-known test for confusion (ie, first impression and imperfect recollection), having regard to all the surrounding circumstances set forth in Section 6(5) of the Trademarks Act, including:
  • the inherent distinctiveness of the trademarks and the extent to which they had become known;
  • the length of time during which the trademarks had been in use;
  • the nature of the goods;
  • the nature of the trade; and
  • the degree of resemblance between the trademarks in appearance or sound or in the ideas suggested by them.
In connection with the above, the hearing officer made a number of findings, including the following:
  • Paris is a city in France, long recognized as a "world centre for fashion", and, as such, one could not lose sight of such geographical connotation when considering Paris Glove's goods;
  • The word 'blues' in PBT’s mark had no connotation when considering its goods and, accordingly, PARIS BLUES in its entirety was inherently distinctive;
  • The length of time during which each mark had been in use favoured Paris Glove;
  • Gloves and mittens, as well as goods such as purses and belt buckles, could be considered as clothing accessories;
  • The channels of trade could “either be identical or overlapping”; and
  • Although the first component of a trademark is “often considered more important for the purposes of distinction, when the word is common, descriptive or suggestive, the significance of the first element decreases”.
Interestingly, when applying the test for confusion, the hearing officer paid particular attention to the consumer, quoting from a decision of the Supreme Court in Mattel Inc v 3894207 Canada Inc (2006 SCR 772) as follows: 
What, then, is the perspective from which the likelihood of a mistaken inference is to be measured? It is not that of the careful and diligent purchaser. Nor, on the other hand, is it the "moron in a hurry" so beloved by elements of the passing off bar. [...] It is rather a mythical consumer who stands somewhere in between, dubbed in a 1927 Ontario decision of Meredith CJ as the "ordinary hurried purchasers. [...]

I fully agree with Linden JA in Pink Panther that, in assessing the likelihood of confusion in the marketplace, we owe the average consumer a certain amount of credit (Paragraph 54). A similar idea was expressed in Michelin & Cie v Astro Tire & Rubber Co of Canada Ltd ((1982) 69 CPR (2d) 260 (FCTD)), at Paragraph 263: 
[...] one must not proceed on the assumption that the prospective customers or members of the public generally are completely devoid of intelligence or of normal powers of recollection, or are totally unaware or uninformed as to what goes on around them.

Based on the foregoing, the hearing officer was prepared to agree with PBT that when considering the descriptive connotation of 'Paris' in the PARIS BLUES mark, the presence of the word 'blues' distinguished PARIS BLUES from the PARIS mark.

The decision serves as a reminder to trademark owners that it is preferable to avoid adopting descriptive or highly suggestive marks. Otherwise, a competitor may be able to adopt a mark with only small differences.

Toni Polson Ashton, Sim & McBurney, Toronto

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