Off to the Marché We Go! – Not Descriptive and Not Confusing

The Federal court recently dismissed an appeal to have a trademark expunged on grounds of descriptiveness and confusion. In Movenpick Holding AG v. Exxon Mobil Corporation and Attorney General of Canada (Registrar of Trade-marks), the Court considered whether Esso’s “Marché Express” mark is too descriptive of the services it provides as a gas-station convenience store. Then it went on to consider whether it was possible to confuse “Marché Express” with Movenpick’s “Marché” mark, which it uses for its chain of restaurants.

Movenpick claimed that “Marché Express” is descriptive of the services Esso offers. Section 12(1)(b) of the Trade-marks Act provides that a trade-mark must not be “clearly descriptive” of the character or quality of the wares or services associated with the mark. So, the question before the Court was whether, in the French language, “Marché Express” was descriptive of a convenience store.

Both sides produced expert evidence of the meaning of the phrase “Marché Express”. The Court was unimpressed with this, favouring evidence of the phrase’s colloquial use rather than academic musings as to its meaning. The Court noted that one must look at the perception of the phrase by regular everyday consumers, not its meaning as derived from a scholarly analysis.

The Court ultimately found that while the word “marché” is used to describe convenience stores (it translates strictly to “market”), the construction “Marché Express” is not something that regularly appears in colloquial French. At best, it could be construed to mean the result produced from shopping at a such a store. Thus, “Marché Express” is not “clearly descriptive”, contrary to s. 12(1)(b).

Movenpick also claimed that Esso’s mark, when used to denote a convenience store, was easily confused with its own registered trademark, “Marché”, which is used in association with the operation of Movenpick’s restaurant. Under s. 12(1)(d), a trade-mark is not registrable if it is confusing with another registered trade-mark.

The Court outlined the test for confusion from Veuve Cliquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23, wherein the Court must look for confusion in the mind of a “casual consumer somewhat in a hurry” who only has an “imperfect recollection” of the other mark. The Court also carefully considered all of the surrounding circumstances dictated by s. 6(5) of the Act. Most interestingly, the Court agreed with the Registrar’s statement that “Marché” was a weak mark. The term “Marché” is commonly used in the food and beverage industry; thus, consumers are used to seeing it in the marketplace (no pun intended!). When a mark has such a broad usage, the trademark holder cannot expect to have a wide range of protection over the mark. Consumers are able to pick up on slight differences between such weak marks, so the sphere of protection is accordingly narrower. The Court held that the inclusion of “Express” was enough for casual consumers to distinguish the two marks in question.

So, in the end, Esso was able to keep the registration of its trade-mark, and decidedly un-confused consumers are still able to both shop at the Marché Express and dine at Marché restaurants.

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About the Blog

The authors of the Canadian Trademark Blog are all members of the Canadian law firm Clark Wilson LLP, based in Vancouver, Canada. Each author's practice focuses–either in whole or in substantial part–on Canadian intellectual property law. Together, they manage the trade-mark portfolios of local, national and international brand owners in nearly all industries and markets.

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