New evidence establishes likelihood of confusion of NATURA mark

NATURAIn September 2014, Home Hardware had unsuccessfully opposed the registration of Benjamin Moore’s BENJAMIN MORE NATURA marks on the basis of likelihood of confusion with Home Hardware’s NATURA family of marks in association with paint and paint preparation products (see TMOB decision here). Finding that none of the likelihood of confusion factors set out in subsection 6(5) of the Act favoured Home Hardware, the TMOB rejected Home Hardware’s opposition.

On appeal to the Federal Court, Home Hardware filed additional evidence as allowed to by section 56(5) of the Trade-Marks Act. The new evidence was directed to Home Hardware’s presence in the paint industry in Canada, and the evolution of it NATURA brand of products, especially in respect of paint. The new evidence established that Home Hardware had started using NATURA mark in 2002 and that by 2014, Home Hardware’s sales of all NATURA products exceeded more than $64 Million. The new evidence also included that some Home Hardware retail locations sold Benjamin Moore paint.

Justice Camp agreed that the new evidence would have materially affected the decision such that he was entitled to consider the matter de novo.   Justice Camp held that NATURA, while suggestive of environmental friendliness was not a word in the English language and had acquired some distinctiveness in association with paint and paint related products as of the relevant dates. While both parties had shown sales of NATURA associated goods, Justice Camp concluded that Home Hardware’s use had acquired superior distinctiveness.  Upon considering the new evidence, Justice Camp held that all of the the 6(5) factors and the “family of trademarks” argument favoured the Home Hardware:

[72] Summarising the conclusions I reached above:

1) the distinctiveness factor slightly favours the applicant;

2) the length of use factor slightly favours the applicant;

3) the nature of the wares factor weighs in favour of the applicant;

4) there is some overlap in the channels of trade;

5) the degree of resemblance factor favours the applicant; and

6) the “family of trademarks” argument supports the applicant’s position;

Justice Camp therefore allowed the appeal, and ordered that Benjamin Moore’s applications be refused.

A copy of the decision may be found here.