Opponents should put best evidence forward before Opposition Board
In International Clothiers Inc v Dorna Sports SL (2013 FC 285), the Federal Court has set aside a decision of the Opposition Board in which the latter had found that there was no likelihood of confusion between the figurative trademark MOTOGP and earlier MOTO marks.
This case stems primarily from an allegation of confusion with respect to overlapping goods. The marks of the respective parties are noted below:
Applicant Dorna Sports SL’s mark
Opponent International Clothiers Inc’s marks
|Application No 13286961
Goods: protective helmets for cyclists and motorcyclists, sunglasses and cases for glasses, frames for glasses; electronic and microprocessor programmers for games;… printed matter namely, brochures, newsletters, pamphlets, leaflets;… calendars, almanacs, maps, pamphlets, diaries, sheet music,… t-shirts, sweatshirts, polo shirts, caps, gloves, pants and balaclavas for motorcyclists, jackets, trousers and overalls of leather and imitation leather; games and playthings, namely action-type target, arcade, board, card, computer action, computer simulation, paddle ball, word games…
Registration No TMA502767
Trademark: MOTO SPORT
DU filed October 5 1998
Goods: clothing, excluding motorcycle clothing, namely, suits, jackets, pants, coats, vests, shirts, sweaters, t-shirts and shorts.
Registration No TMA731143
Trademark: MOTO GEAR
Goods: men's, women's, teen's and children's wearing apparel, namely, jackets, coats, sweaters, vests, sweatshirts, pants, jeans, shorts, skirts, t-shirts, shirts, blouses, dresses, belts, socks, scarves, hats and gloves.
Application No 1538031
Goods: clothing, namely, casual clothing, athletic clothing, dress clothing and children's clothing.
Application No 1479597
Trademark: MOTO JEANS
Some use in 2004
(2) Clothing and apparel, namely shirts, embroidered shirts, t-shirts, shorts, sport shirts, sweatshirts, sweatpants, socks, vests,… beach cover-ups, warm-up suits, jackets, jerseys, tank tops, sweaters, pants, vests, suits, sport coats, coats, head bands, overcoats, rain coats, top coats, jackets, parkas, ties, bow ties, vests, scarves, bandannas, pajamas, night shirts,… gloves; headwear,… blouses, dresses, skirts, tops, scarves, sarongs, halter tops, hosiery, jumpers, shawls, stoles, scarves, shrugs, boleros and wraps.
Application No 1479598
Trademark: MOTO TECH GEAR
Some use in 2003
(2) Clothing and apparel, namely shirts, embroidered shirts, t-shirts, shorts, sport shirts, sweatshirts, sweatpants, socks, vests, belts,… jumpers, shawls, stoles, scarves, shrugs, boleros and wraps.
The Opposition Board favoured the applicant and found that, when comparing the marks, the design elements and the suffix 'GP' in the applicant’s mark were the most striking and unique aspects of the mark – taking guidance from a Supreme Court of Canada decision that "the preferable approach when comparing marks is to begin by determining whether there is an aspect of the trademark that is particularly striking or unique”.
Based on the evidence tendered by the applicant, the board also inferred that the 'moto' element is commonly used in association with clothing in Canada.
Lastly, the board found that there was insufficient evidence filed by the opponent to negate the distinctiveness of the applicant’s mark.
On appeal to the Federal Court, the board was reversed. The opponent filed better evidence of use, causing the judge to conclude that its marks had become well known.
While cautiously acknowledging that the suffix might add distinctiveness, as a matter of first impression to a casual consumer in a hurry, the court was not convinced that confusion would not occur.
The applicant's mark was also held not to be distinctive. Thus, in the absence of representation by the applicant, the board’s decision was set aside.
This case serves as a reminder that it is better to put one’s best evidence forward before the Opposition Board. Had the opponent filed all of its evidence at first instance, one may query whether an appeal would have been necessary.
Toni Polson Ashton, Sim & McBurney / Sim Lowman Ashton & McKay LLP, Toronto
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