THE ISSUE OF CONFUSION REVIEWED BY THE FEDERAL

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THE ISSUE OF CONFUSION REVIEWED BY THE FEDERAL COURT OF APPEAL
By
Catherine Bergeron*
LEGER ROBIC RICHARD, L.L.P.
Lawyers, Patent and Trademark Agents
Centre CDP Capital
1001 Square-Victoria- Bloc E – 8th Floor
Montreal, Quebec, Canada H2Z 2B7
Tel. (514) 987 6242 - Fax (514) 845 7874
[email protected] - www.robic.ca
Alticor Inc. and Quixtar Canada Corporation v. Nutravite Pharmaceuticals
Inc. 2005 FCA 269 (Federal Court of Appeal, Linden J.A.)
1. Factual Background
In an appeal from the decision of the Trial Division dismissing the plaintiffs’
infringement action against Nutravite Pharmaceuticals Inc. (“Nutravite”)
pursuant to subsection 20(1) of the Trade-marks Act (“the Act”), the Federal
Court of Appeal (the “FCA”) had to decide whether the Trial Judge erred in
finding that there is no reasonable likelihood of confusion between the
registered trade-mark NUTRILITE, owned by the plaintiff Alticor Inc. and used
in association with vitamins and mineral food supplements, and the
unregistered trade-mark NUTRAVITE, owned by Nutravite and used in
association with vitamins, mineral and herbal products.
The plaintiff Quixtar Canada Corporation is the exclusive distributor of the
NUTRILITE products which are sold to Canadian consumers directly (not in
stores) through Independent Business Owners. On the other hand, the
NUTRAVITE products are sold exclusively in retail outlets across Canada.
2. Issues
The two main issues before the FCA are:
© CIPS, 2005.
*Lawyer, Catherine Bergeron is a member of LEGER ROBIC RICHARD, L.L.P., a multidisciplinary
firm of lawyers, and patent and trademark agents. Publication 293.025
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a) Did the Trial Judge err in law in finding that the material date for
considering infringement of the NUTRILITE trade-mark was the date of
the trial?
b) Did the Trial Judge err in fact and law in holding that, in all the
circumstances of the case, there was no likelihood of confusion
between the trade-marks at issue?
3. Analysis and Conclusion
a)
material date for considering infringement of a registered trade-mark
Based on a standard of correctness, considering that this first issue is a
question of law, the FCA agrees with the Trial Judge’s finding that the
relevant material date for considering infringement of a registered trademark is the date of the oral hearing. In the FCA’s view, “one reason why the
relevant date must normally be the hearing date is that this would ensure
that the Court would have available to it all relevant evidence of surrounding
circumstances that might become available between the time of first use
and the hearing date.”
However, the FCA also recognises that there are cases where another date
may be more appropriate, depending on the specific facts and pleadings of
each case.
b)
likelihood of confusion between NUTRILITE and NUTRAVITE
The FCA confirms that, as for the evaluation of the likelihood of confusion
between the marks NUTRILITE and NUTRAVITE, the Trial Judge did not commit
a legal error and used the proper legal test “whether, as a matter of first
impression in the mind of an average consumer having a vague or imperfect
recollection of another mark, the use of both trade-marks in the same area
and in the same manner is likely to lead to the inference that wares
associated with those marks are produced or marketed by the same
company.” The Trial Judge also rightfully understood that it is not any
member of the public who must be confused about the source of the
competing products, but dealers or users of the type of products in question.
Even though the Trial Judge focused on a particular factor in its evaluation of
confusion, namely that the nature of the trade of the NUTRILITE products is
materially different from that of the NUTRAVITE products, the FCA is of the
view that the Trial Judge’s finding that “the possibility of confusion is remote”
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does not amount to any error which would justify interference in this
conclusion based on all the surrounding circumstances and all of the
evidence.
The FCA also rules that the Trial Judge was not bound by the Opposition
Board decision, refusing to register the defendant’s mark NUTRAVITE further to
a successful opposition by Alticor Inc. In fact, said decision, which is to be
considered as a surrounding circumstance in the overall evaluation of
confusion, should be accorded little weight.
In concluding that it did not find any error in the Trial Judge’s analysis that
would require its intervention, the FCA confirms that the determination of
confusion is essentially a question of fact and considerable deference must
be accorded to trial judges in their evaluation of confusion.
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