Responsive Brands operates throughout Canada as “Mister Transmission”. Responsive Brands is the owner of Canadian Trademark 239,868 for MISTER TRANSMISSION registered in association with transmission services for vehicles.
2248003 Ontario has operated in Orillia, Ontario under the trade name “Master Transmission & Driveline” since June 2010, when its principals left a Mister Transmission store to start up their own business. In August 2010, Master Transmission received a cease-and-desist letter in relation to “Master Transmission”, but continued to use this trade name. In January 2011, Responsive Brands sued Master Transmission for trademark infringement and passing off.
Likelihood of Confusion
Despite the absence of evidence that a consumer has actually been confused or misled, Justice Boswell considered the likelihood of confusion between the trade-marks and trade names. There was some evidence that the Defendant uses and is referred to simply as “Master Transmission”, rather than its registered business or trade name, “Master Transmission & Driveline”.
Pursuant to sections 2 and 6(4) of the Trade-marks Act, a trade-name is confusing when its use in the same area would be likely to lead to the inference that the goods or services associated with the business carried on under the trade name and those associated with the trade-mark are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.
In determining the likelihood of confusion, Justice Boswell considered several factors, including inherent distinctiveness, time in use, nature of the goods, services and business, nature of the trade, degree of resemblance, and surrounding circumstances. The majority of the factors favoured Responsive Brands. Considering the degree of resemblance, MISTER TRANSMISSION and “Master Transmission & Driveline” do not sound similar. However, MISTER TRANSMISSION and “Master Transmission” do sound similar. Further, the words “mister” and “master” are both prefixes for a man’s name and are not substantially different as to the idea or concept they convey. A somewhat hurried consumer with imperfect recollection who is ordinarily cautious, but who does not pause to examine closely the similarities or differences between the marks, may be confused as to who is actually offering the transmission services.
Infringement and Injunction
In concluding that 2248003 Ontario had infringed the MISTER TRANSMISSION trade-mark, Justice Boswell ruled that Responsive Brands is entitled to an interim and permanent injunction restraining 2248003 Ontario from using the words “Master Transmission” or a confusing design, drawing or directing public attention to its business in any manner likely to cause confusion with MISTER TRANSMISSION. 2248003 Ontario was also ordered to amend all of its advertising and signage visible to members of the public so as to remove any reference to “Master Transmission”, and all websites and all text, code, meta-tags, titles, advertisements and any other means of promoting Master Transmission on the internet or directing users of the internet to its website.
A copy of Justice Boswell’s Judgment and Reasons may be found here.