Minor design elements will not rack the casual consumer’s brain
King Rack filed a trademark application seeking registration of its BUZZRACK design mark based on use in association with various rack-style carriers mounted on cars. THI opposed registration of BUZZRACK based on non-registrability, non-entitlement, and non-distinctiveness. THI asserted its own BACKRACK trademarks, a BACKRACK word mark and BACKRACK design mark, in support of its opposition. The TMOB rejected THI’s opposition on all grounds, concluding that there was no reasonable likelihood of confusion between BUZZRACK and the BACKRACK trademarks. The TMOB’s decision centred on the lack of resemblance between the marks. THI appealed the TMOB’s decision under s. 56 of the Trademarks Act, advancing several errors in respect of the TMOB’s subsection 6(5)(e) resemblance analysis.
The standard of review for appeals under s. 56 of the Trademarks Act is the appellate standard of review as described in Vavilov. The Court held that the errors proposed by THI were errors of mixed fact and law and applied the palpable and overriding error standard.
As a preliminary point, THI asserted that the TMOB improperly focussed its resemblance analysis on the BACKRACK word mark instead of the BACKRACK design mark. Justice Furlanetto rejected this argument, noting that the BACKRACK design mark is a stylized trademark, with the only design elements relating to stylization, font, and spacing of the constituent word elements. The TMOB made no error in identifying the BACKRACK word mark as the closest of the THI marks to BUZZRACK. Moreover, the TMOB’s analysis did broach the design elements of the BACKRACK design mark.
Further to its argument that the TMOB failed to consider the BACKRACK design mark, THI argued that the TMOB failed to consider common design elements between the marks as part of its resemblance analysis. THI asserted that an ordinary consumer would see the same uniform presentation of characters and conflate the marks. Justice Furlanetto rejected this argument for want of evidence and observed that THI’s assertion relied on a side-by-side comparison of the marks, failing to account for the overall impression conveyed by the marks, the most striking aspects of the marks, and the sound and ideas conveyed by the marks. The basic block cap font of the BUZZRACK design mark was not itself a dominant or striking aspect and, even if the words used in the marks were consistent, that would not override the low degree of resemblance between the marks in terms of appearance, sound, and ideas suggested.
THI argued that the TMOB erred in its resemblance analysis by failing to consider the marks in their totality. However, Justice Furlanetto observed that the TMOB expressly acknowledged that trademarks must be assessed in their totality, warning against facile side-by-side comparison. The TMOB concluded that the marks did not resemble each other when considered as a whole. Justice Furlanetto held that the TMOB’s focus on the most striking aspects of the marks, the “BUZZ” element in contrast to the BACKRACK word mark’s rhyming nature, was not inconsistent with viewing the marks in their totality or the governing legal principles described by the SCC in Masterpiece at paragraphs 62-64, and 84. The TMOB did not conduct any improper dissection of the marks as part of its resemblance analysis.
THI also argued that the TMOB erred in its cumulative finding of a low degree of resemblance between the marks. THI referred to past decisions of the TMOB where common design elements overrode the differences between word elements of marks. However, Justice Furlanetto held that, in this case, the only common design elements were font type and casing of the words, which were “not distinctive elements, but instead only minor design features.” The TMOB properly considered each resemblance factor – appearance, sound, and idea suggested – as required by the Trademarks Act. Justice Furlanetto also rejected THI’s subsidiary argument that the acquired distinctiveness of the BACKRACK marks should have factored into the TMOB’s resemblance analysis. Justice Furlanetto explained that, while the inherent distinctiveness of an element of the mark may be relevant to identifying its most striking aspects, acquired distinctiveness does not factor into the assessment of degree of resemblance under subsection 6(5)(e).
THI did not identify any reversible errors in the TMOB’s resemblance analysis. Justice Furlanetto dismissed the appeal. A copy of the decision is available here.
