STARGATE open to coexisting registrations

In Metro-Goldwyn-Mayer Inc v Stargate Connections Inc, the Federal Court of Canada has upheld a decision to refuse the plaintiff's opposition to the registration of a STARGATE mark. The court held that there was no risk of confusion between the plaintiff's STARGATE mark associated with a film and television series called Stargate and the defendant's identical mark for internet services.

On April 26 1994 Metro-Goldwyn-Mayer Inc (MGM), through its predecessor in title, filed an application to register the trademark STARGATE in association with a wide variety of goods and services, including the production, distribution and screening of the Stargate film. A website was launched in September 1994 and the movie itself was released in October of that year. In August 1995 Stargate Connections Inc filed an application for STARGATE in association with internet services. MGM unsuccessfully opposed the application and appealed to the Federal Court.

The registrar had found that both trademarks were inherently distinctive since they had no meaning in connection with either parties' goods or services. The registrar noted that a number of factors favoured MGM in the analysis of whether there was a likelihood of confusion. These included:

• the surrounding circumstances of the film launch;
  
  
• the degree of resemblance between the trademarks;
  
  
• the fact that MGM had been using the mark for almost a year prior to Stargate Connections' application.

The registrar, however, determined that the businesses of Stargate Connections (internet services) and MGM (movie production and related activities and goods) were so different in nature that there was no reasonable risk of confusion between the two trademarks.

On appeal, MGM contended that the case should have been decided in its favour because the registrar had noted that the majority of factors to determine confusion supported its position rather than Stargate Connections'. The court disagreed and added that the test for confusion is not a numbers game. It is also a matter of weight and the court found no error in the registrar's assessment that the fact that the parties were engaged in different businesses outweighed the weaker factors that were in favour of MGM.

Accordingly, it upheld the registrar's decision and allowed registration of Stargate Connections' mark.

France Lessard, Léger Robic Richard, Montreal