Confusing trademarks

A buyer of a brand checking similar marks on the register meets this test. Section 6(2) says the use of a trademark causes confusion with another if using both in the same area would be likely to lead to the inference that the goods or services are manufactured, sold, leased, hired or performed by the same person, whether or not they are of the same general class or appear in the same class of the Nice Classification.

What decides it

Under section 6(5), the court or the Registrar has regard to all the surrounding circumstances, including the inherent distinctiveness of the marks and the extent to which they have become known, the nature of the goods, services or business, and the degree of resemblance, including in appearance or sound or in the ideas suggested. The Canadian Intellectual Property Office says a mark confusingly similar to a registered or pending mark will be refused.

What to check

• Which registered or pending marks resemble the one being bought
• What goods and services each of those marks covers
• Whether one owner holds all the confusing marks, since section 15 makes them registrable in that case, despite section 12

See searching the trademark and IP registers before buying a brand and trademark opposition.