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News and Views — Dimock Stratton's Intellectual Property Law Newsletter

Dimock Stratton's Intellectual Property Law Newsletter


By: Geoffrey D. Mowatt, Thomas Kurys and Michal Kasprowicz


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Trade-marks — appeal of decision of Trade-marks Opposition Board — likelihood of confusion

The respondent appealed a decision of the Trade-marks Opposition Board refusing an application for the mark HAYABUSA in association with clothing. The applicant is a Canadian company specializing in the field of mixed martial arts, designing and selling specialized fightgear and fightwear.

The respondent has been using its own HAYABUSA mark in relation to motorcycles, fittings thereof and caps. The respondent's mark, however, was only registered for its use in association with motorcycles and fittings, but not caps. The respondent filed an application on December 6, 2007, to extend its trade-mark protection to include clothing. An amendment was made on April 18, 2008, to claim use of the mark in association with headwear, namely caps and hats, since at least as early as January 2005.

Held, the appeal was granted and the decision of the Registrar was set aside. Costs were awarded to the applicant.
The applicant filed additional evidence on appeal, which ultimately was not sufficient to shift the standard of review from reasonableness to correctness. The affidavit referred mainly to the use of the mark after the relevant dates. Moreover, nothing in the affidavit could have affected the Registrar's finding that the marks were identical and that the respondent's mark had become known to some extent.

The affidavit primarily focused on the nature of the wares and the channels of the trade. It showed that the applicant's products targeted a niche market. However, it could not be inferred that the applicant's wares would always be sold through these same channels. Either way, the Registrar agreed with the applicant that the respondent's wares had only been sold through the respondent's authorized dealers, thereby lessening the risk of confusion. This finding was already in favour of the applicant.

The Registrar had concluded that the probability of confusion between the applicant's mark for clothing items and the respondent's mark for caps were "evenly balanced". Thus the non-entitlement ground of opposition was successful as the applicant had not met its onus. The Court noted that the respondent did not have a registration for its mark in association with caps; therefore, it would be necessary to consider the actual use of that mark. In this regard, the different channels of trade for the products of the applicant and the respondent were a most crucial factor. The Registrar failed to give sufficient consideration to the evidence of how the respondent's caps were sold. According to the Court, there could be no overlap between the channels of trade of the respondent and the applicant. The Court held that the Registrar could not have reasonably concluded, on the basis of the evidence that was before her, that this factor was not sufficient to shift the balance of probabilities in favour of the applicant.

The Court also summarily dismissed the remaining allegations under sections 12(1)(d) and 30(a) of the Trade-marks Act.

Suzuki Motor Corp. v. Hayabusa Fightwear Inc. (2014), 2014 FC 784, 2014 CarswellNat 2998 (F.C.), August 7, 2014, de Montigny J.

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