Canadian Court dismisses Roots’ TM claim
Canada’s Federal Court has dismissed an application by Canadian retailer Roots, which had attempted to invalidate a rival company’s trademark for “causing confusion” with its own marks.
Earlier this month, Justice George Locke dismissed Roots’ application to strike fashion house YM Inc’s ‘Cabin Fever’ logo and design trademark. Locke ruled that YM’s mark did not cause confusion with any of Roots’ marks, though in a partial win for the company, Locke did require YM’s trademark to be amended.
The YM trademark in dispute shows a front-facing log cabin, with a pine tree on either side and “cabin fever”, written in large, capital letters underneath. Roots also holds trademark rights to several cabin-related marks
In his conclusion to the court, Locke called the outcome of the case a “divided success”.
Roots had alleged that at the time of filing its mark, YM claimed that use of the mark had already commenced in association “with all the goods listed in its application”. Roots argued it had only commenced use in association “with some goods”.
YM’s trademark was registered in February 2017 for “men’s, women’s and children’s casual, business and athletic clothing” as well as accessories such as handbags, belts and sunglasses.
Locke accepted Roots’ evidence in this regard, and ordered YM’s trademark to be amended, as he found that the fashion house had not used the mark in relation to several goods including business wear, handbags, belts and sunglasses.
Despite this, Roots was not wholly successful as the court ruled that YM’s trademark is distinctive and will not cause confusion among consumers.
The court came to its conclusion using a confusion analysis which considered the degree of resemblance of the marks at issue.
Locke quoted guidance from The Supreme Court of Canada, which said the test should be applied as “a matter of first impression in the mind of a casual consumer”, who is in “somewhat of a hurry” and has “no more than an imperfect recollection of the trademarks”.
The guidance also said that the determination of whether one mark is confusing with another should not be approached by examining if elements of the marks are similar, but rather if the marks as a whole could be confused.
When applying this guidance to the case between Roots and YM, Locke said there are similarities between the two marks; both YM’s mark and Roots’ marks use the word “cabin” and the image of a cabin surrounded by trees.
But, the word “cabin” suggests a “small house in the woods”, and trees are inherent in such an environment, Locke said. He also noted that the cabin image used in YM’s Cabin Fever mark is not similar to any of the cabin images used by Roots.
When examining the marks of both companies as a whole rather than their individual elements, Locke determined that the “degree of resemblance” was low, therefore YM’s mark was not confusing.
Locke concluded that in “view of the divided success” of both parties, there will be no award of costs.
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