Trademark Confusion: Possible Future Confusion Not Relevant

In a recent decision of Canada’s Federal Court of Appeal, Masterpiece Inc. v. Alavida Lifestyles Inc. the Appellant sought to expunge the Respondent’s registered trademark MASTERPIECE LIVING pursuant to section 18(1)(a) of the Trade-marks Act alleging that it was unregistrable as of the date of registration because it was confusing with the Appellant’s use of the same mark or similar marks.

Both the Appellant and Respondent operated in the retirement residence industry. The Respondent applied to register MASTERPIECE LIVING on December 1, 2005 on the basis of proposed use and began using the mark in January 2006. The application was granted in March 2007. The Appellant alleged it had used a series of evolving trademarks with the word “Masterpiece” beginning in 2001, and began using MASTERPIECE LIVING either in December 2005 or February 2006, depending on which exhibit was consulted. It applied to register the mark on June 29, 2006, but the application was denied on the basis that the Respondent had already applied to register the mark.

Whether the Respondent’s mark was unregistrable as of the date of registration turned on section 16(3)(a) of the Trade-marks Act which allows an applicant who has filed on the basis of proposed use to secure its registration “unless at the date of filing of the application it was confusing with (a) a trademark that had been previously used in Canada or made known in Canada by another person”.

The judge in the Federal Court Trial Division was not convinced that the Respondent had failed to meet this test and did not agree that there was confusion. Before the Court of Appeal the Appellant sought to establish that the trial judge erred by not taking into account the possibility of future confusion and considering confusion only as of the date of registration. The Appellant raised section 6(2) of the Act which states that the “use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, … by the same person”.

The Court of Appeal did not accept the Appellant’s argument regarding future confusion, noting the Act set out different “temporal parameters” for assessing certain situations and in section 16(3)(a) the relevant date was clearly “the date of filing of the application”.

Prior case law did not assist the Appellant and the English version of section 6 had to be interpreted so as to avoid a conflict with the French version which was written in the present tense. Thus, the Appellant could not succeed.

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