ottawa sign with aitken lee llc team

Degree of Resemblance the Overriding Consideration in Confusion Analysis


YM registered the CABIN FEVER & Design mark in 2017 in association with various clothing items. Roots sought to strike out YM’s registration on the following bases:

  1. YM was not entitled to register the mark because it was confusing with Root’s mark, pursuant to paragraph 18(1)(d), including Roots’ CABIN, CABIN COLLECTION and ROOTS CABIN and ROOTS CABIN COLLECTION word marks and a number of CABIN Design marks;
  2. The mark was not distinctive as of date of Root’s challenge, pursuant to paragraph 18(1)(b);
  3. The proposed use declaration filed by YM contained a material misstatements in that the mark was used in association with some of the registered goods

Justice Locke began by considering section 6(5) of the Trade-marks Act and, in following the Supreme Court of Canada in Masterpiece, concluded that the degree of resemblance was the factor that is likely to have the greatest effect on the confusion analysis. In this analysis, Justice Locke did not consider Roots’ CABIN or CABIN COLLECTION marks, holding that he was not convinced they had been used as trademarks.

Confusion – s. 18(1)(d)

Justice Locke held that while there were similarities and differences between the CABIN FEVER & Design and Root’s marks, the similarities were largely related to the word “cabin” and an image of a cabin surrounded by trees. The low degree of resemblance between the marks at strongly favoured a conclusion that the marks were not confusing.

Justice Locke then considered the other elements of subsection 6(5), concluding that the inherent distinctiveness (s. 6(5)(a)), length of time the marks were in use (6(5)(b)), nature of the goods (s. 6(5)(c)) and nature of the trade (s. 6(5)(d)) all favoured Roots. Nevertheless, the other considerations were not sufficient to overcome the low degree of resemblance and Justice Locke held that the CABIN FEVER & Design was not confusing with Roots’ marks.

Lack of Distinctiveness – s. 18(1)(b)

Justice Locke held that this ground also related to confusion, but that the relevant date for assessing distinctiveness was approximately 22 months later. Since YM has been on the market for 13 months, and since the marks has coexisted without any evidence of actual confusion, the YM mark did not lack distinctiveness.

Material Misstatement

The Registration of CABIN FEVER & Design was made on proposed use in association with a number of different types of clothing goods. YM acknowledged that its declaration of use in respect of all the associated goods was false, and that it had not used the mark in association with most of the enunciated goods. Roots argues that the false declaration of use following Unitel Communications Inc. v. Bell Canada (1995) 61 CPR (3d) 12 rendered the entire registration void. Justice Locke held that such a misstatement must be considered material as without this misstatement, the mark would not have been registered. Distinguishing Parfums de Coeur, Justice Locke held that the Court must be able to correct inaccuracies on the Register, as subsection 57(1) of the Act provides the Federal Court with the jurisdiction to amend any entry on the Register. Justice Locke therefore amended the CABIN FEVER & Design Registration to remove any goods which had not been shown to be sold in association with the mark.

A copy of the Judgment and Reasons may be found here.