Survey evidence helps sway dismissal of NORDIC opposition

In Canadian Tire Corporation Limited v Accessoires d'Autos Nordiques Inc, the Federal Court of Canada has allowed an appeal of a decision from the Opposition Board (the board) which had refused registration of the trademark NORDIC and 'snowflake' design based on a likelihood of confusion with the trademark NORDIQUES.

Canadian Tire Corporation Limited (Canadian Tire) filed an application for the trademark NORDIC (and 'snowflake' design) on November 6 1997, in association with tyres. The application was opposed by Accessoires d'Autos Nordiques Inc (Accessoires Nordiques) on the grounds of a risk of confusion with its trademark registration for NORDIQUES in association with car tools and accessories. The board refused the application on the grounds of confusion with a registered trademark and lack of distinctiveness. Canadian Tire appealed to the Federal Court.

Both parties submitted additional evidence on appeal and the Federal Court allowed the appeal and ordered that the trademark NORDIC (and 'snowflake' design) be registered. The court's decision rested on the lack of resemblance between the trademarks.

The court agreed with the board's findings with respect to the distinctiveness of the trademarks at issue and concerning the length of time the trademarks had been used. As for the parties' respective channels of trade, Canadian Tire argued that the registrar had failed to consider the particularities inherent to the sale of tyres where service is important; consumers are likely to purchase tyres from a store that offers installation services. Canadian Tire also relied on the fact that since the board's decision had been rendered, Accessoires Nordiques' list of goods had been reduced following a registrar's decision in an expungement proceeding. The list of goods found on Accessoires Nordiques' certificate of registration was reduced for failure to show use of those goods. Nonetheless, the court agreed with the board's finding that the parties' respective channels of trade were similar. Justice Blais reiterated that there was nothing preventing Canadian Tire from selling tyres, which was the relevant consideration under the circumstances, and not the actual services of Accessoires Nordiques.

The most important factor taken into consideration by the board was the degree of resemblance between the trademarks in appearance, sound or ideas suggested. The board had found that, to a French-speaking person, the trademarks were phonetically identical and the court agreed with that conclusion. On appeal, Canadian Tire however insisted on the fact that the goods at issue were unlikely to be purchased by telephone so that the visual impact of the trademarks would be more important than their pronunciation.

In terms of the appearance, the two trademarks were not only different in their spelling, but the design associated with each (snowflakes as opposed to a red, white and blue 'N') were different. The board had found however that the dominant portion of Canadian Tire's proposed trademark was the word 'Nordic' and not the design itself. The court did not agree with this conclusion and relied on case law to decide that in considering the possibility of confusion, the trademarks in question must be considered as a whole and not broken down into their component parts to highlight differences.

The court's final decision rested heavily on the analysis of the ideas suggested by both trademarks. On appeal, Canadian Tire commissioned a survey to support its claim that the word 'Nordiques' was automatically associated with Quebec City's defunct ice-hockey team by the average consumer. The results were overwhelming: 80% of those surveyed, as a matter of first impression, thought of the former hockey team when presented with the word 'Nordiques'. Based on this survey evidence, the court found that the two trademarks in question were not only dissimilar in appearance, but also brought to mind different ideas.

This decision illustrates the risks involved in choosing a famous trademark to represent one's business. When trying to protect that trademark, its owner may find, as Accessoires Nordiques did in this case, that its trademark is not at all associated with its services or products by the general consumer, but rather suggests an association with the famous trademark, in this case a defunct ice-hockey team.

France Lessard, Leger Robic Richard LLP, Montreal