Federal Court’s Confusion Analysis Aligns with TMOB Despite New Evidence on Appeal

Osstemimplant applied to register the trademark MAGICALIGN for use in association with orthodontic goods. Align opposed the registration, asserting that MAGICALIGN was confusingly similar to its family of ALIGN trademarks, which included INVISALIGN and ALIGN. After considering the factors in s. 6(5) of the Trademarks Act, the Trademarks Opposition Board rejected Align’s opposition, holding that the differences between the parties’ marks was sufficient to tip the confusion analysis in favour of Osstemimplant.

On appeal to the Federal Court, Align sought to introduce new affidavit evidence on the basis that the evidence could have and would have affected the TMOB’s confusion analysis.

Standard of Review

The Court first addressed the materiality of Align’s new affidavit evidence to determine the standard of review applicable to each of the TMOB’s findings. The Court considered whether Align’s new evidence could lead to a different conclusion in respect of one or more of the subsection 6(5) factors and the cumulative balancing underpinning the confusion analysis.

If new evidence on appeal is found to be material, the Federal Court will review the issue to which that evidence pertains on a correctness standard. If not, appellate standards of review apply. The Noonan Affidavit contained state of the register evidence on all active registrations containing the element “ALIGN” alone or in combination with other word or design elements. The Carlyle, Reinhardt, and Tai Affidavits contained new evidence on whether the ALIGN mark is as prevalent as INVISALIGN in product and marketing materials and whether ALIGN is descriptive. Justice Furlanetto held that the new evidence included within these affidavits was material and warranted consideration of paragraph 6(5)(a), as well as weighing the subsection 6(5) factors, on a correctness standard. The court reviewed the remaining subsection 6(5) factors for palpable and overriding error.

Paragraph 6(5)(a) – Inherent and Acquired Distinctiveness

In considering the inherent distinctiveness of the marks, Justice Furlanetto held that MAGICALIGN and INVISALIGN have a similar degree of inherent distinctiveness and ALIGN is less inherently distinctive because it described the intended function of Align’s orthodontic goods and services. The new evidence indicated that the terms “align” and “aligner” had limited inherent distinctiveness and had become terms of art adopted into the trade vocabulary as of the relevant date. Bringing teeth into “alignment” was commonly used to describe the objective of treating crooked teeth.

On the extent to which the marks had become known and had acquired distinctiveness in the marketplace, the evidence showed that the INVISALIGN and ALIGN marks had become known to potential consumers through use in the marketplace. Justice Furlanetto held that the evidence supported a finding that there was significant acquired distinctiveness in INVISALIGN. Conversely, ALIGN had less acquired distinctiveness as it had been used less prominently in promotional, product, and marketing materials.

The Court held that the strength of the INVISALIGN mark, which possessed both inherent and acquired distinctiveness, exceeded that of MAGICALIGN, which had no marketplace use. The ALIGN mark had only a slight advantage over the MAGICALIGN mark in view of having some acquired distinctiveness. Compared to INVISALIGN, ALIGN had less overall inherent distinctiveness as it was descriptive of the function of the associated goods and services.

No Likelihood of Confusion

Justice Furlanetto reviewed the TMOB’s conclusions in respect of paragraphs 6(5)(b)-(e) and the other surrounding circumstances and held that it committed no palpable and overriding error.

Even after conducting her own de novo review of paragraph 6(5)(a), in weighing the s. 6(5) factors cumulatively, Justice Furlanetto reached the same conclusion as the TMOB. The ordinary consumer would not, as a matter of first impression, be likely to think goods associated with MAGICALIGN emanate from the same source as those associated with INVISALIGN and ALIGN. The overall lack of resemblance between the marks proved to be determinative:

[71] …Despite the significant acquired distinctiveness of INVISALIGN and to a lesser extent ALIGN, the increased ambit of protection afforded to the marks because of their extent of use, the identical nature of the goods and trade and the small family of ALIGN marks owned by the Applicant, the overall differences in the appearance, sound and idea of the marks dominate and would not lead to a likelihood of confusion in the marketplace…

Justice Furlanetto dismissed Align’s appeal on all of its grounds of opposition.   

A copy of the decision is available here.