Trademarks like
the Nike ‘swoosh’
(above) and the
once iconic Kodak
brand (right) are
usually strongly
defended. But
major interests
do clash, as when
Business Depot
(left) battled Office
Depot (far left) over
Canadian rights.
It’s a public imprimatur with valuable marketing potential turf
Yet, despite the valuable underlying aspects to a trademark, it is surprising how
remiss some corporations are at taking
the additional step of filing a trademark
application to register their title to those
marks. Trademarks are corporate assets,
and like any corporate asset of value,
they should be protected — that is what a
trademark application is designed to do.
When is a trademark
confusingly similar?
Determining whether competing trademarks are confusingly similar is central
to trademark law. It is not always an easy
task, even for the most experienced in
the field. To highlight that point, here
is a look at three trademark cases that
came before the Canadian Trademark
Opposition Board in which confusion
between the marks was at issue.
An application to register the trade-
mark “Realpoints” (for use with a mort-
gage incentive program) was opposed by
the owner of the trademark “Realine”
(for use with real estate advice services).
The Opposition Board decided that the
marks were confusing, saying that, while
the services of providing a mortgage in-
centive program are different from advis-
ing the public about real estate, there
could be a potential overlap in the chan-
nels of trade with these services.
Finally, Queenswood National Real
Estate Ltd. filed a trademark application for “Q-Tips” (for use with real estate
brokerage services). Unilever Canada
Inc. opposed that trademark application
based on its own pre-existing trademark
registration for “Q-Tips” (used with cotton swabs). The Opposition Board said
that cotton swabs are entirely different
from real estate brokerage services, and
that the trades of each owner would also
be entirely different. The Board rejected
the opposition because of the wide differences between the wares and services
of each owner. That decision follows a
fundamental principle of trademark law:
Two companies generally can have identical trademarks so long as the wares and
services associated with each mark are
legitimately different.
Descriptive trademarks
Descriptiveness is another important component of trademark law. The Trademarks
