A party's intentions can help establish confusion, court rules

In Montreal Auto Prix v 9078-7995 Quebec Inc, the Court of Appeal of Quebec has allowed Montreal Auto Prix Inc's (MAP) appeal against a trial judge's decision that held that MONTREAL AUTO CREDIT was not confusingly similar to MONTREAL AUTO PRIX (prix meaning 'price' in French).

MAP specializes in buying and selling used automobiles. It was incorporated on July 25 1996 and adopted its trademark MONTREAL AUTO PRIX on June 3 1997. 9078-7995 Quebec Inc (QI) sells used automobiles to individuals who have been refused credit elsewhere. It was incorporated on January 2000 and adopted its trademark, MONTREAL AUTO CREDIT, on February 14 2001. Its principal place of business is curiously established at close proximity (a distance of two kilometres) to MAP.

MAP instituted a motion for a permanent injunction against QI before the Superior Court of Quebec. The trial judge found that:

• MAP had invested a great deal of time, effort and money to advertise its mark in an original manner;
  
  
• as a result, MAP benefited from a notable goodwill; and
  
  
• QI had chosen its mark and its advertising strategy so as to benefit from MAP's goodwill.

However, the judge concluded that the marks were not confusingly similar.

Convinced that its motion was well founded, MAP appealed and the Court of Appeal of Quebec was asked to answer the following question: in determining whether the marks at issue were confusingly similar, did the trial judge misapply the relevant sections of the Trademarks Act as well as the relevant case law?

The Court of Appeal reversed the Superior Court's decision. Firstly, it specified that the use of a trademark causes confusion with another mark if the use of both marks in the same area is likely to lead to the inference that the goods or services associated with those marks are manufactured, sold, leased, hired or performed by the same person, regardless of whether the goods or services are of the same general class. Furthermore, in determining whether marks are confusing, the court shall have regard to all the surrounding circumstances.

Secondly, the court specified that the test of confusion in comparing the two marks at issue is from the stand point of the average unwary consumer that has an imperfect recollection of the senior mark and looks at the new mark in its totality. In making such a comparison, the focus has to be on similarities as opposed to differences.

The court concluded that in light of all the surrounding circumstances, the marks at issue were indeed confusingly similar.

What is noteworthy in this decision is not so much the identification of the relevant principles but rather the fact that its conclusion seems to rely heavily on QI's intentions. In fact, since the trial judge had concluded that QI had chosen its mark and advertising strategy so as to benefit from MAP's goodwill, the appellate court did not see how, "in light of all the surrounding circumstances", one could argue that there was no evidence of confusion.

In short, it seems as though a party's intentions can help to establish confusion.

George Kintzos, Léger Robic Richard, Montreal