Trade-Mark Expungement Proceeding Dismissed for Lack of Confusion

  • October 15, 2015

Distribution Prosol PS Ltd. v Custom Building Products Ltd., 2015 FC 1170 (Gascon, J.)

October 15, 2015

Henri Simon of Simon Legal Avocats, for Distribution Prosol PS Ltd. (Applicant)
Scott Miller and Jahangir Valiani of MBM Intellectual Property Law, for Custom Building Products Ltd. (Respondent)

Justice Gascon dismissed the application for expungement brought by Distribution Prosol PS Ltd. [Applicant] and held that the Applicant’s registered trade-marks were not likely to be confused with Custom Building Products Ltd.’s [Respondent] registered or common law trade-marks.

The Applicant owned two registered trade-marks, FUSION FORCE and FUSION PATCH, in association with adhesives for flooring and used several common law trade-marks containing the word “Fusion”. The Respondent owned registered trade-marks containing “FUSION PRO” in association with grout for flooring. The Applicant sought to invalidate and expunge the Respondent’s trade-marks on the ground of confusion.

Justice Gascon used the test for confusion outlined in section 6 of the Trade-Marks Act, as applied in Masterpiece Inc. v Alavida Lifestyles Inc., 2011 SCC 27, Mattel, Inc. v 3894207 Canada Inc., 2006 SCC 22 and Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23.

Justice Gascon held that the Applicant’s trade-marks were inherently weak and lacked inherent distinctiveness, as they were dominated by the fairly common word “Fusion”. They had a low degree of resemblance to the Respondent’s trade-marks, which used the word “Pro” instead of “Force” or “Patch” to complement the usual word “Fusion”. Moreover, the potential for confusion was found to be low, as the wares were not identical and had no overlap. Specifically, while the Applicant’s trade-marks have been registered for “adhesives for floorcovering”, the Respondent’s trade-marks were registered for “grout used to install ceramic tile, stone and other resilient floors”. Justice Gascon further held that the Applicant’s products were found at stores serving the general public or home consumer, whereas the Respondent’s products targeted traders and floor installers.

As such, Justice Gascon dismissed the application, as there was no likelihood of confusion between the parties’ trade-marks.

The Applicant was barred from arguing lack of distinctiveness in support of its application for expungement, because this issue was not raised in its Notice of Application.

By: Katie L. Wei