OH HENRY! bars registration to OH CANADA

Canada

The Canadian Trademarks Opposition Board has refused an application to register OH CANADA as a trademark for chocolate bars and candy on the grounds that it was confusingly similar to the mark OH HENRY! used for the same type of products (Opposition to application 858,184).

Hershey Canada Inc, a manufacturer of chocolates and confectionery, owns registrations for the mark OH HENRY! for chocolate and candy, and marks that include the exclamation 'oh!' for marketing, promotion and advertising services. It opposed Michael Barnett's application to register OH CANADA for chocolate bars and candy.

The Canadian Trademarks Opposition Board noted the differences between the OH CANADA and OH HENRY! marks and commented on the fact that "O Canada" is the title of Canada's national anthem. This, reasoned the board, confers on the OH CANADA mark a different meaning to that of OH HENRY!. It also noted that Hershey has never used its OH! marks as registered. However, the board took into consideration Hershey's use of a variety of phrases including the exclamation 'oh!', such as 'oh hungry?' and 'oh! j'ai faim!', as well as hockey-related phrases such as 'Oh'pen Net!', 'P'Ohke Check' and 'Oh Canada'. It concluded that (i) the similarity of the goods to which Barnett's and Hershey's marks apply, and (ii) the strong reputation in the word 'oh' that Hershey gained through its advertising campaign were sufficient to create a likelihood of confusion. Accordingly, it refused Barnett's application.

Arguably, however, Hershey should not have been permitted to rely on its use of the word 'oh!' in its advertising campaign to establish a reputation in the mark. Hershey did not specifically outline this common law use in its statement of opposition. Common law, therefore, was not a relevant factor in the opposition. While the board acknowledged and, to some degree agreed with this argument, it still appears to have given weight to the 'oh' advertising.

Thus, while Canadians can go on singing "O Canada", OH CANADA for chocolate bars is off limits.

The decision has not been appealed.

Johanna Coutts, Macera & Jarzyna - Moffat & Co, Ottawa

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