Overcoming a Confusion Objection to a Canadian Trademark Application

The most frequent and formidable obstacle to registering a new brand in Canada is the likelihood of confusion with an existing trademark. Under Canadian law, a trademark cannot be registered if it is "confusing" with a registered trademark, a co-pending application, or certain official marks. Successfully navigating the registration process requires a strategic understanding of how the Canadian Intellectual Property Office (CIPO) defines and tests for confusion.

The Purpose of the Search and Definition of Confusion

The primary purpose of the trademark search is to ensure that a proposed mark, when used in association with its specified goods or services, will not lead to a situation where consumers mistakenly believe the mark belongs to the same source as another, prior mark.

Subsection 6(2) of the Trademarks Act provides the legal definition of confusion: a trademark is confusing with another mark if its use "is likely to lead to the inference that the goods or services associated with the trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class."

This is not a matter of mere possibility; the test is whether confusion is a likelihood, not just a possibility.

The Decisive Test: Surrounding Circumstances

To determine this likelihood, the CIPO examiner must act as the relevant consumer —a person of ordinary intelligence and imperfect recollection—and consider all the surrounding circumstances enumerated in Subsection 6(5). This five-factor analysis is the heart of the Canadian confusion test.

The Five Factors (Subsection 6(5))

1. Inherent Distinctiveness and Acquired Reputation (Paragraph 6(5)(a)):

   • Inherent Distinctiveness: How strongly the mark inherently points to a single source (e.g., an arbitrary mark like XYZ is stronger than a descriptive mark like BEST). A strong prior mark receives broader protection.

   • Extent to which the trademark has become known: How widely and well-known the prior mark is in the Canadian marketplace. A famous mark is less likely to be confused with any new mark, regardless of differences in goods.

2. Length of Time Used (Paragraph 6(5)(b)): The duration of time the prior trademark has been used in Canada. Longer, consistent use strengthens a prior mark's claim against confusion.

3. Nature of Goods or Services (Paragraph 6(5)(c)): Whether the specific goods or services listed in the application are similar to those covered by the prior mark.

4. Nature of the Trade (Paragraph 6(5)(d)): How the respective goods or services are distributed, marketed, and sold to the public (e.g., sold in the same stores, through the same channels, or to the same customers).

5. Degree of Resemblance (Paragraph 6(5)(e)): The similarity between the two trademarks, taking into account:

   • Appearance: How they look visually.

   • Sound: How they are pronounced.

   • Ideas Suggested: The mental image or concept they convey (e.g., "White Horse" and "Pale Steed" suggest similar ideas).

Additional Principles of the Test

• Trademarks in their Totality: The marks are compared as a whole, not by dissecting them into separate elements.

• First Impression and Imperfect Recollection: The test is based on the immediate, fleeting impression a consumer would have, recalling the prior mark imperfectly.

• Doubt as to Confusion: Where the examiner remains in doubt after weighing the factors, the benefit of that doubt is typically given to the public interest, resulting in a confusion objection.

• Both Official Languages: Confusion must be assessed in both the English and French languages.

Consequences of Discovering a Confusing Trademark

When a CIPO examiner discovers a confusing mark during the search, an objection is raised based on the specific type of conflict:

1. Confusion with a Registered Trademark (Paragraph 12(1)(d)): This is the most common objection, preventing registration outright.

2. Confusion with a Co-Pending Application: If two applications are confusing, the examiner must determine the person entitled to registration based on the earlier filing or priority date. The applicant with the later date receives an objection.

3. Confusion with a Certification Mark: A mark can also be refused if it is confusing with a registered certification mark.

If your trademark application has been stalled by a CIPO confusion objection, our trademark lawyer at Alphabetica Law can provide the necessary expertise. We specialize in preparing detailed responses that analyze all five "Surrounding Circumstances" factors under Subsection 6(5), crafting compelling legal arguments that differentiate your mark, and strategically securing evidence when appropriate. Don't let the likelihood of confusion objection end your brand journey; contact us to develop a robust strategy aimed at overcoming the objection and advancing your mark to registration.