Adding a Well-known Brand May Not Suffice to Avoid Confusion

  • December 04, 2015

Home Hardware Stores Limited v. Benjamin Moore & Co., Limited, 2015 FC 1344 (Camp J.)

December 4, 2015

Monique Couture of Gowling Lafleur Henderson LLP, for Home Hardware Stores Limited (Applicant)
Paul Tackaberry of Ridout & Maybee LLP, for Benjamin Moore & Co., Limited (Respondent)

This is an appeal from a decision of the Trade-mark Opposition Board (the “Board”) which rejected the oppositions of Home Hardware Stores Limited (the “Applicant”) and allowed the trade-marks BENJAMIN MOORE NATURA and BENJAMIN MOORE & DESIGN filed by Benjamin Moore & Co., Limited (the “Respondent”) in association with interior and exterior paints (both based on proposed use) (together the “Marks”).

The Board concluded that the Applicant had not discharged its initial burden for the grounds of opposition based on subsections 30(e) and 30(i) and concluded that there was no likelihood of confusion with the marks BEAUTI-TONE NATURA for paint or NATURA for various paint-related products.

Additional evidence was filed by the Applicant and the Court considered that the additional evidence, notably that which addressed acquired distinctiveness, the length of time NATURA and BEAUTY-TONE NATURA had been in use, as well as evidence of overlap in the channels of trade (contrary to what was asserted before the Board) would have materially impacted the Board’s decision. As such, the Court conducted a de novo analysis.

With respect to subsection 30(e), the Court found that it is not possible to conclude that, at the time of filing, the Respondent did not have the intention to use the Marks based on the fact that, on its labels, the Respondent chose to place emphasis on the word NATURA. The fact that Respondent might have been aware of the Applicant’s prior rights to NATURA is insufficient to conclude that Respondent knew that it was not entitled to use the Marks.

The Court went on to review all the confusion criteria of section 6(5) as well as additional circumstances. With respect to distinctiveness, the Court found that despite the fact that the word NATURA is not highly distinctive and suggests some quality of naturalness, it nonetheless possesses some uniqueness and novelty when associated with paint. The additional evidence established that the Applicant’s NATURA brand had acquired considerable distinctiveness at various material dates and as such, the Court considered that this factor slightly favoured the Applicant. As for the length of time, the Court concluded that the Board had erred in its conclusion because it had taken into account the extent of the Applicant’s prior use which should have been considered under the criterion of acquired distinctiveness. This factor, while not determinative of the confusion issue, also favoured the Applicant. Similarly, the Court considered that the nature of wares criterion also favoured the Applicant. The Court indicated that the Board failed to appreciate that both parties used NATURA to convey the environmental friendliness of their products which raises a likelihood of confusion despite the other differentiating aspects of the parties’ respective marks.

In terms of additional circumstances, the Court agreed that the existence of a family of trademarks and the absence of actual confusion are factors to be taken into account but found the widespread use of the prefix NATUR- to be irrelevant to the issue.

The Court therefore found that the likelihood of confusion exists concerning the source of the wares between the Respondent’s Marks and BEAUTI-TONE NATURA despite the modifying aspects of BEAUTI-TONE and BENJAMIN MOORE. As such, the Court set aside the Board’s decision and refused the applications for the Marks.

By: Cindy Belanger, Legault Joly Thiffault