Emily Xiang is an IPilogue Writer, a Senior Fellow with the IP Innovation Clinic, and a 3L JD Candidate at Osgoode Hall Law School.

What do a company in the business of mining and selling construction equipment, and an athletic-wear and sporting accessories brand, have in common? Apparently, the cat has been let out of the bag on this one. On January 10th, 2023, the Federal Court of Appeal released one of its first trademark of the year in .The Federal Court of Appeal held in favour of the construction machinery and equipment company over Puma’s use of the trademark PROCAT in association with footwear and headgear.

Puma first applied for the trademark PROCAT in 2012 for its sub-brand of youth sporting accessories. Caterpillar shortly opposed the application, asserting that, inter alia, the PROCAT mark was confusing with Caterpillar’s own CAT & Triangle Design [shown below]. Caterpillar’s CAT & Triangle Design was also registered in association with footwear and headgear. Specifically, the design was related to a line of work and sport footwear that the company had been operating in Canada since 1994. When the matter was brought before the , the hearing officer held that there was no reasonable likelihood of confusion between the marks. The officer explained that Caterpillar had failed to show that they possessed sufficient control over the character or quality of the goods sold in association with the CAT & Triangle Design through its licensees.

On , Caterpillar submitted new evidence in order to demonstrate requisite control and that it had accrued benefit from its licensees’ use of its marks. The court found the new evidence  to be material. Moving on to the likelihood of confusion analysis, the court agreed with the hearing officer that the two marks were indeed similar in appearance and sound due to the word “CAT.” But the court also found Puma’s prefix “pro” to be suggestive or laudatory of the company’s goods. Therefore, the prefix was not enough to distinguish it from Caterpillar’s CAT. Puma had also submitted 13 other trademarks to evidence that the “CAT” element had little distinctiveness in the marketplace and should therefore be subject to a smaller ambit of protection. When elements appear over and over again in trade, is generally acceptable in order to allow for fair competition. However, the court in this case found Puma’s evidence to be insufficient in demonstrating the state of the register. The Federal Court therefore overturned the decision of the hearing officer and found that there indeed would be a reasonable likelihood of confusion between the two CATs.��

Unfortunately for the sporting brand, the court of appeal did not have much to say by way of correction either. In appealing the decision to the , Puma argued that the FC judge had erred in her findings. In Puma’s view, the FC judge had failed to consider each of the marks as a whole, and contended that it would be impossible for a consumer that was not “” to be confused as to the source of the two companies’ respectively marked goods. The sporting brand also tried to rely on its other cat-nominative trademarks, such as its better-known “jumping cat” design, as evidence of brand recognition, though this was still insufficient to sway the courts.��

The Federal Court of Appeal was therefore unable to find any palpable or overriding error in the FC judge’s decision. For Puma, its with regards to its use of PROCAT in association with footwear and headgear beyond a trivial level proved detrimentally determinative. Ultimately, Puma’s evidence and arguments were not enough to go up against Caterpillar’s prior registration and surprisingly long-standing presence in the Canadian market.

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The ABCs of Alphabet

So, what is Alphabet? Alphabet is Google – sort of. As by Alphabet CEO and Google cofounder Larry Page, Alphabet is a collection of companies, the largest of which is Google, now a subsidiary of the new company. Google in turn has “slimmed down” and moved its non-internet projects to Alphabet – similar to lifespan research company  or investment-focused . According to Page, “This new structure will allow us to keep tremendous focus on the extraordinary opportunities we have inside of Google.”

BMW is No Crash-Test Dummy

For BMW, “alphabet” has quite a different meaning. The trademark and .com address are owned by a subsidiary of the German automaker, which provides corporate car fleet services. Presumably, Page and colleagues (wait for it) googled their desired name before the big reveal, yet BMW informed the  that they were never contacted by Google prior to the Internet giant’s announcement. Also, BMW’s spokesperson, Micaela Sandstede, told the  that BMW has no plan to sell the domain to Google, as the website is a “very active” part of (BMW’s) Alphabet’s business.��However, BMW is investigating into whether any trademark infringement indeed occurred.

Is BMW Geared-Up and Ready to Go? 

The big question is: does BMW have a case and will it pursue it? Under US , infringement occurs when a registered mark is used in a way that will likely “cause confusion, or cause mistake, or to deceive.” In other words, having two companies with the same name is okay, as long as there is no possibility that consumers could become confused.

This is where the road gets rocky. Google’s Alphabet is located at , but BMW’s  experienced a huge spike in visits after Page’s announcement – so significant that it was  that BMW’s site crashed. The traffic spike might be indicative to a court of confusion among many investors and curious minds as to where they might access Google’s Alphabet online. Furthermore, it was  that there is a connection between the services of Google and BMW, as BMW is a car manufacturer and Google has a line of self-driving cars. This could potentially be submitted as evidence under the “likelihood of confusion” test.

Although BMW may be annoyed, I think it is rather unlikely they will pursue legal action, no matter what their investigations may uncover. It has been made clear that Alphabet Inc. is purely a parent company and will not sell products or brands built under its name. There should be no confusion between the products and services of Alphabet (Google) and Alphabet (BMW), as Google’s Alphabet technically has neither. Further, Google and BMW are each titans in their respective industries, and I think it would be difficult to prove that the average Joe could not differentiate between the ABCs both companies spell out.

That said, this editor also (wait for it again) googled “how many 'alphabets' are there in the world?” Although the answer was not confirmed, a quick search of the  revealed that over one hundred registered marks with some use of the word “alphabet” exist. It is unknown if any of these companies could be impacted by the new Alphabet, and what the fall-out, if any, might be. As reported by the , it is possible that some “Alphabet” companies sell their domain names, while others may be concerned about their Google result priority, which could affect their online presence. Regardless, the harsh reality is that these smaller entities are unlikely to gear up for battle, because (in the words of an alphabet-named business owner): “Who sues Google?” (Note: this editor also googled this question and over 5 million results appeared in 0.37 seconds, although I did not include the search term “successfully”).

This will be an exciting case to follow should a lawsuit unfold; however, as of today, BMW’s decision on the issue is unknown. You can be sure that I will google it again tomorrow.

Jaimie Franks is an IPilogue editor and JD candidate at Osgoode Hall Law School.��

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High-end bicycle part and accessory manufacturer Campagnolo filed an application for the proposed use of the word mark “” in association with bicycle parts and accessories. Notwithstanding the exclusion of “tires, brakes, wheels, rims and spokes” from the listing of wares in the application, and the fact that Bridgestone does not sell bicycle products in Canada, Bridgestone filed an opposition against the application. Bridgestone based its opposition on of the Trade-marks Act - confusion with its own registered mark “”, which is used in association with tires, tubes, and wheels, as well as the mark “” used in association with tires and inner tubes.

The Federal Court reviewed the board’s findings on the factors outlined in  and noted that per , other factors gain significance once the appraiser finds the marks identical or very similar. Although many of the factors did weigh in favour of Bridgestone’s opposition, due to the resemblance of the marks, the two central factors to the outcome were the nature of the wares and the nature of the trade.

On appeal to the Federal Court, Bridgestone submitted that it would be hard to imagine wares being more similar than in this instance (motor tires and bicycle accessories) and that confusion was likely because Bridgestone’s wares potentially may sell through the same channels of trade as Campagnolo’s. Bridgestone’s opposition was premised on the position that although Campagnolo’s current market is high-end specialty stores, in the future they might create a less expensive line and/or sell their products in box stores alongside Bridgestone’s products. Bridgestone submitted that the Registrar should have looked at hypothetical channels of trade that may be used in the future.

In this case, the specific exclusion of “tires, brakes, spokes, rims and wheels” likely saved the mark from a finding of confusion. In Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA), the Federal Court of Appeal remarked that the test for confusion must have regard for “whether confusion would be likely if the appellant were to operate in that area in any way open to it using its trade mark in association with” the respondent’s wares or services. This specific exclusion of Bridgestone’s wares means that it is not open, nor will it ever be open, to Campagnolo to use its mark in association with those wares if the registration were successful.

In addition, the Court held that the Registrar was correct to only consider the predictable and usual channels of trade rather than simply any hypothetical channel imagined by Bridgestone, following the Federal Court of Appeal’s decision in . In that case the Court approved a statement from the TMOB in that, “the parties’ respective statements of services must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording.” Though a confusion analysis will look at any area open to use of the mark, the court restrains the analysis to the realm of probable trade. In this case, though the scenarios posited by Bridgestone were deemed as possible, they were not considered probable. The mark’s relevant trade must be grounded in realistic possibilities in order for this factor to point towards a finding of confusion.

While at first glance this appears to be a reasonable constraint on the scope of analysis, I think that this subjective inquiry could cause problems for the court in the future. In this case, the court dealt with the straightforward example of a registration application that excluded the wares covered by a pre-existing mark which it would have allegedly been confused with. Moreover, the court determined that consumers of Campagnolo products would be sophisticated and likely to know the difference between Campagnolo and Bridgestone wares - even if Bridgestone did start to sell bicycle tires and Campagnolo sold their wares in box stores alongside Bridgestone products. However, it is likely that further clarification on how one determines the demarcation point between possible and hypothetical channels of trade will be required. For example, the quality of phone cameras today can and are often offered in the same channels of trade. Would a court have considered an SLR camera and a cellphone to be probable to enter the same channels of trade even ten years ago?  Hypothetical versus probable is not only a subjective determination, but may ignore the nature of innovation in a number of contexts.

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

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Claim for Infringement and Counterclaim

Mattel argued that Zynga's use of the mark was contrary to article 9 of the .��This provision allows exclusive rights to a community mark, and the right to prevent use of a sign that is either : 1) identical  to the registered mark, 2) similar to the registered mark and likely to cause confusion in relation to identical and similar goods, or 3) where use of the mark takes unfair advantage of the distinct character and reputation of the community mark.��Zynga counterclaimed that the SCRAMBLE mark was invalid as it lacked distinctive character, was descriptive and had common usage, and that their mark was therefore non-infringing.

Evidence provided to the court indicated that Mattel was aware of the game for a number of years before launching a claim. At the time of the decision, the game was in its fifth version, and not only was Mattel aware of the game in earlier incarnations, but employees played the game with each other. The court also found it troubling that the claim was launched soon after negotiations regarding a joint venture between Mattel and Zynga broke down. The court concluded that such a delay indicated at worst that the negotiations were not carried out in good faith, and at best, that Mattel did not consider the game worthy of an infringement claim.�� In comparison, the court found that an email detailing Zynga’s concern over the potential confusion between Scrabble and Scramble to be insignificant.

Decision

The Court held that the word “scramble” was the common name for this type of game. As a result, the court agreed that Zynga merely used a wording in the public domain that is descriptive of the game and therefore did not infringe the mark.��The Court concluded that neither “Scramble” nor “Scramble With Friends” infringed the SCRABBLE trade-mark. The Court deemed that mark was not similar and not likely to cause confusion for infringement or passing off. Yet, the Court did qualify this decision on a modification of the logo. The Scramble logo at the time contained an “m” on its side. The Court found that this gave “the impression that the word is scrabble when one looks at it quickly and has the propensity to confuse.” Although Zynga was largely successful they will have to alter their logo to avoid this potential confusion.

Canadian Outcomes

In North America, Hasbro holds the  trade-mark, and Electronic Arts holds the rights to  of the game. In addition, Hasbro entered into an  to create physical versions of games in the Zynga family, similar to the failed agreement in the Mattel claim. These games include a "" version of Monopoly and a "" version of Pictionary that have tie-ins to the online versions of Zynga games.

In a similar case in Canada, , the Canadian Federal Court examined the similarity between Trivial Pursuit and a parodic adult version. In a comparison of the script and packaging, the court found that the defendant’s script was reminiscent of, but not identical to, the plaintiff’s script. The court went on to hold that the design and appearance of the game intended to raise an association with Trivial Pursuit. The court in that case rejected an argument that Trivial Pursuit was descriptive of the type of game, as it did more than merely describe the game. In that case, the court turned its mind to the use of a trade-mark and made it clear that the focus of the action is "use", not the similarities between the games.��In that case, the court did find that the parody infringed the Trivial Pursuit trade-mark.

Due to the agreement between Hasbro and Zynga and the fact that the game is unavailable to Canadian consumers, a similar claim is unlikely to be made in Canada. If a claim was brought in Canada, the claimant would have to show infringement of the SCRABBLE mark itself, rather than rely on the Zynga game’s similarity to Scrabble, or infringement of SCRAMBLE, since that  is owned by Konami.  Even absent this web of ownership, I believe that based on Horn Abbot, a Canadian court would be unlikely to find infringement in this case. To determine whether trade-marks or trade-names are confusing, the court must have regard for the surrounding circumstances including the degree of resemblance between the marks in appearance or sound or the ideas suggested according to  of the Trade-marks Act.��Unlike in Horn Abbot, the marks are not similar in appearance. The UK court noted the use of different words, script and packaging. Furthermore, I think that the addition of “With Friends” to the Zynga game's name identifies Scramble as a member of the Zynga "With Friends" family of marks rather than an attempt to confuse consumers by passing off.

In this case, Scrabble appears to be scrambling for a better result. A Mattel spokesperson has that Mattel was “disappointed that the court did not rule that Zynga should cease using the Scramble name, which Mattel intends to appeal.”

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

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, Marlboro Canada and Imperial Tobacco have owned the rights to the trademark MARLBORO in Canada. Meanwhile, Philip Morris has marketed its famous cigarette brand Marlboro in the United States. Due to the popularity of the Philip Morris brand and Canadian awareness of American marketing, the Philip Morris brand became well known in Canada. As a result, Philip Morris created the Canada-only brands Maverik and Matador which were accompanied by Philip Morris’ famous packaging but did not infringe Imperial tobacco’s trademark rights in MARLBORO.

In 2006, Philip Morris introduced a new marketing tactic by creating cigarette packages that bore no brand name but . Evidently, Philip Morris was confident that consumers would recognize the brand based on the image alone. As a result, Imperial Tobacco sued Philip Morris for infringement of its trademark, stating that the rooftop packaging conveyed the idea of MARLBORO thus resulting in consumer confusion between the two brands. Imperial Tobacco provided the court with evidence that retailers, when asked for Marlboro cigarettes, would supply the Philip Morris brand. Nevertheless, at trial, Justice de Montigny ruled against Imperial Tobacco’s argument, holding that confusion was not created because the world Marlboro was not used and the rooftop design itself was actually more of a distinguishing feature. Further, there was no inherent meaning in the design, particularly since the focus should be exclusively the Canadian market.

The Federal Court of Appeal overturned Justice de Montigny’s judgment, finding that he had erred in his evaluation of the confusing nature of Philip Morris’ rooftop packaging. Specifically, the Court of Appeal dismissed the finding that there was no inherent meaning in the rooftop image. According to the judgment, consumers faced with an opportunity to “” were likely to experience confusion and associate the product with the well-known Philip Morris brand.

In deciding that product packaging alone could result in a trademark infringement, the Court of Appeal has set an important precedent. emphasize that this decision has expanded the possibilities for litigants attempting to prove the confusing use of a trademark and caution against increasingly more creative arguments. The Court of Appeal’s decision regarding the rooftop packaging, however, does seem to be consistent with traditional trademark principles. The driving function of trademark law is to prevent confusion at all levels of consumer interaction. The test is typically whether the ordinary consumer, with imperfect recollection, and without giving the matter detailed scrutiny or close examination, would be confused. The question in many circumstances may thus become one of mental association, as, in the minds of consumers, certain images or words may convey a particular message. This argument is not only clear in this decision, but has been demonstrated through past cases emphasizing the importance of the guise or get-up of a particular product. While, for some critics, the Court of Appeal’s decision may seem somewhat radical, in my opinion, the overall significance of this case does not deviate from the basic principles of trademark law.

Nora Sleeth is a JD candidate at Osgoode Hall Law School.��

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