Channels of Trade: Likelihood of Confusion Between Moving, Storage and Garbage Removal

  • December 04, 2015

U-Haul International Inc. v. U BOX IT Inc., 2015 FC 1345 (Camp, J.).

December 4, 2015

Scott R. Miller, Jahangir Valiani, MBM Intellectual Property Law LLP for the Applicant
Matthew R. Norwood, Ridout & Maybee LLP for the Respondent

This is an appeal from two decisions by the Trade-marks Opposition Board that refused to register the trade-marks U-BOX WE-HAUL and U-BOX for use in association with moving and storage services.

The Board concluded that there is a likelihood of confusion between those marks and the Respondent’s U-BOX-IT trade-mark, which was registered for use in association with garbage removal and waste management services.

While the Applicant introduced new evidence to demonstrate that no provider of moving and storage services advertises or provides garbage removal and waste management services, the Court found that this evidence would not have altered the Board’s reasoning.

The Court upheld the Board’s finding that while the parties’ services do not overlap, they are complementary and are provided in a similar manner. The channel of trade analysis at paragraph 6(5)(c) suggested a likelihood of confusion.

Reviewing the other grounds of appeal, the Court held that the Board is entitled to deference and that its decisions were reasonable.

By Greg Moore, Joli-Coeur Lacasse LLP