Toys "R" Us loses twice to NUTS trademark applicant

In two decisions in opposition proceedings issued on the same day, the Federal Court of Canada has ruled for the defendant in Toys "R" Us (Canada) Ltd v Manjel Inc, finding that the registration and use of the trademark NUTS 'R' US does not infringe the TOYS "R" US mark.

Since at least 1984 Toys "R" Us (Toys) has used the TOYS "R" US mark in association with retail toy stores. When Manjel, which had been selling snack foods under the mark NUTS 'R' US since 1987, applied to register the mark, Toys filed an opposition. The trademark registrar rejected Toys' opposition on the grounds that there is no likelihood of confusion between the two companies' marks.

On appeal to the Federal Court of Canada, Justice Danièle Tremblay-Lamer affirmed the registrar's decision, ruling that when looking at the issue of likelihood of confusion, the use of the words 'toys' and 'nuts' at the beginning of the marks is sufficiently different to distinguish them, as they describe the businesses of the two parties. Also, the style and colouring of the lettering is different.

On the same day, Tremblay-Lamer issued a second decision, supporting her first ruling. She stated that Toys had not provided evidence establishing that it had a reputation for snack foods on the date that Manjel began using NUTS 'R' US. She noted that although Toys sold snack foods in its stores, the sale of TOYS "R" US branded food represented less than 1% of its total sales.

Thus, Tremblay-Lamer found that:

• the two marks are dissimilar;
  
  
• no instances of actual confusion had been established; and
  
  
• Toys had not proven that it suffered any damages.

Accordingly, Toys' opposition was rejected and Manjel was allowed to register, and continue using, NUTS 'R' US.

Toni Ashton, Sim Hughes Ashton & McKay, Toronto