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FCA sets out right approach in luggage trademark confusion case

Originally published in AdvocateDaily.com

The Federal Court of Appeal (FCA) set out the right approach to resolving the issue of trademark confusion in a recent case involving a Canadian luggage company and a Swiss firm, Toronto intellectual property lawyer John Simpson tells The Lawyer’s Daily.

As the article notes, the FCA ruled that several of the Canadian company’s logos would be “likely to cause confusion” with the trademark of the Swiss company, which specializes in goods marked with a symbol resembling the cross on the Swiss flag.

In an earlier decision, a Federal Court judge ruled there was a lack of resemblance between the marks that was not likely to confuse consumers and thus no “passing off” of the Canadian company’s bags as the Swiss company’s product.

As The Lawyer’s Daily reports, the decision was appealed, with the Swiss company arguing that the judge erred in concluding there was no likelihood of confusion and no passing off. The FCA agreed unanimously, saying the Canadian company’s marks would likely cause confusion with the Swiss product in the “mind of a casual consumer in somewhat of a hurry … [and] does not pause to give the matter any detailed consideration or scrutiny.”

Under s. 6(2) of the Trade-marks Act, the use of one trademark causes confusion with another if the use of both trademarks in the same area would be likely to lead to the inference that the goods have the same source, says The Lawyer’s Daily. Subsection 6(5) of the Act says a court should give regard to “all the surrounding circumstances” of the marks, including factors such as their distinctiveness and length of time in use.

The FCA judge wrote that she agreed with the appellants that the lower court made a reviewable error when it discussed only the resemblance factor between the marks, rather than looking at all the circumstances as provided for under s. 6(5) of the Act, says the article.

As Simpson, principal of IP and new media law boutique Shift Law, explains: “What’s always tricky in these appeals though is that the trial judge is owed a lot of deference. If the trial judge had applied the approach applied by the Appeal Court (which she did not), then it would have been more difficult to overturn her decision that the trademarks are not confusing.”

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