In Tiger Calcium Services Inc. v. Compass Minerals Canada Corp., 2015 FC 1257, Justice McDonald upheld the TMOB’s decision to reject Tiger’s opposition to the registration of the trade‑mark ENVIRO‑GUARD, owned by Compass (formerly Sifto Canada).
At issue was whether the ENVIRO‑GUARD mark was confusing with the marks CLEAR GUARD, ROAD GUARD PLUS, and NANUK ENVIRO NON/CHLORIDE owned by Tiger.
The TMOB made the following findings in rejecting the opposition:
- ENVIRO-GUARD does not possess a high degree of inherent distinctiveness.
- CLEAR GUARD and ROAD GUARD PLUS had acquired a fair reputation as of the earliest material date of May 25, 2010.
- CLEAR GUARD and ROAD GUARD PLUS were used since about 2003, and ENVIRO-GUARD was not used until late 2010.
- The nature of the parties’ wares is essentially the same. The parties’ channels of trade are distinct with, at best, minimal overlap.
- The parties’ marks are more different than alike visually, in sounding and in ideas suggested.
At the Federal Court new evidence was submitted. Justice McDonald held the evidence to be largely repetitive of the original record, and would not have materially changed the findings of the TMOB. Tiger also tried to submit evidence on the use of a COAL GUARD mark. However, the COAL GUARD mark issue was not plead or rasied before the TMOB and it was therefore inappropriate to consider the related evidence or its impact.
Justice McDonald, following the Supreme Court of Canada in Mattel and Dunsmuir reviewed the TMOB decision on a standard of reasonableness and held that it was “well reasoned and supported by the evidence, and as such, owed deference by this court.”
A copy of the decision is available here.