A recent discussion of the Federal Court of Appeals shows that Québec City’s former National Hockey Team, the Quebec Nordiques, continues to attract the nostalgia of the city’s population.
In Accessoires D’Autos Nordiques v. Canadian Tire Corp., the Federal Court of Appeal refused to overturn a Federal Court decision and allowed Canadian Tire’s application to register the mark NORDIC & Snowflake Design for use in association with tires.
Accessoires D’Autos Nordiques had successfully opposed Canadian Tire’s application before the Trademark Opposition Board, on the basis of Accessoires’ previously registered and previously used NORDIQUES trademark and trade-name, used in association with automobile parts and accessories.
The Opposition Board refused Canadian Tire’s application on the basis that the trademarks NORDIC and NORDIQUES were phonetically identical to a monolingual French speaking person, and accordingly, constituted confusion under section 6(5) of the Trade-marks Act. The Trial Division and the Court of Appeal concluded, however, that when considering the possibility of confusion between two trademarks, each particular trademark must be considered as a whole and not broken into its component parts to highlight differences. The Appeal Court agreed that the evidence presented by Canadian Tire showed that the trademark NORDIC evoked amongst the French speaking population in Québec, the name of the now-defunct Naitonal Hockey Team league, Quebec Nordiques, and not the tire-concessionaire’s trade-mark NORDIQUES. The Appeal Court held that as the two trademarks were dissimilar in appearance and brought to mind different ideas, on the balance of probabilities, registration of the NORDIC trademark was unlikely to create confusion.
The decision highlights the danger in choosing a trademark which is already well-known in respect of other wares or services. As the Appellant in this case discovered to its peril, the general public associated the trade-mark with Québec City’s former National Hockey Team, rather than with the Appellant’s wares and services.