March 1, 2019
In the recent decision of Triangle Tyre Co., Ltd. v. Gestion André Touchette Inc., Justice Grammond of the Federal Court reversed the decision of the Registrar of Trade-marks to deny Triangle Tyre’s application for a trademark registration on the basis of opposition from the holder of a similar trademark. This case offers guidance for future trademark applicants and litigants with respect to new evidence on appeal and the assessment of confusion. In October 2018, this blog discussed a similar Federal Court decision in Tokai of Canada Ltd. v. The Kingsford Products Company, LLC.
Triangle Tyre is a large Chinese tire manufacturer. Two of its winter tires, “Icelink” and “Snowlink”, have been sold in Canada since 2013 and 2014, respectively. Gestion Touchette registered the trademark “TireLink” in 2009 and a design mark showing two connected rings and the word “TireLink” in 2010. Those marks were licensed to Groupe Touchette Inc. Groupe Touchette is a distributor of tires and other automotive parts.
In 2012, Triangle Tyre filed design mark applications for “Snowlink” and “Icelink”, showing the words in outlined, italic capital letters. Gestion Touchette opposed the application on several grounds. The key ground of opposition was that Triangle Tyre’s proposed marks created confusion with Gestion Touchette’s mark based on section 12.1(d) of the Trade-marks Act (the “Act”). The Registrar decided that there was a possibility of confusion, allowed the opposition and declined to register Triangle Tyre’s marks.
On appeal, pursuant to subsection 56(5) of the Act, Triangle Tyre filed affidavits introducing new and significant evidence with respect to the use of Triangle Tyre’s trademarks in Canada and the variety of trademarks containing the word “link”. As such, Grammond J. reviewed the Registrar’s decision on the reasonableness standard, but assessed new evidence without deference to the Registrar.
Subsection 6(5) of the Act lists the following non-exhaustive factors that must be considered to assess whether two marks are confusing.
The degree of resemblance: The Registrar found substantial similarity between the marks due to the word “link” being the dominant element. However, Grammond J. held that the Registrar failed to appreciate that the different combinations of words suggest different ideas. “Snowlink” and “Icelink” invoke an idea of tires with a link to the driving surface in winter conditions. In contrast, “TireLink” does not suggest any specific kind or characteristic of tires. Grammond J. found a limited degree of resemblance between the marks, and held the Registrar’s decision to be unreasonable.
The distinctiveness of the marks and the period of use: Even with new evidence, Grammond J. noted a much larger and longer use of the “TireLink” mark compared to the “Icelink” and “Snowlink” marks. Thus, these factors favoured a finding of confusion.
The nature of the wares and the nature of the trade: The Registrar found the goods – tires – to be identical, and found overlap between the services provided by the parties. However, Grammond J. held that the Registrar’s conclusion was unreasonable. Registered uses must be interpreted in a holistic manner with a view to the probable type of business or trade intended by the parties. Triangle Tyre sought to register its marks with respect to tires, whereas Gestion Touchette registered its marks with respect to an array of services related to tires and not to tires themselves. Further, Triangle Tyre was a tire manufacturer, whereas Groupe Touchette offered services related to tires.
Ultimately, Grammond J. concluded that, while certain factors weighed in favour of confusion, the most relevant factor was that “TireLink” relates mainly to services, while “Icelink” and “Snowlink” to goods, and that the goods and services were different. Therefore, there was no likelihood of confusion between the parties’ marks and the appeal was allowed.