A Distinctly Canadian Trade-mark Fight

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image007.gifimage002.gifFor our readers in (beautiful) Western Canada, forget about those supposedly “sexy” global smartphone wars - this case is a battle of the brands, Canadian style. A hardware store versus a drug store.

The case of Home Hardware Stores Limited v. London Drugs Limited, 2012 TMOB 107 (CanLII) pits competing brands that use the generic term “HOME”. Some of our readers may not recognize the London Drugs brand, which is a Western Canadian chain of stores that sell a little bit of everything, from housewares to computers along with a pharmacy. Home Hardware, of course is a national chain of hardware stores. When London Drugs applied to register its LONDON HOME trade-mark (at right), Home Hardware opposed, citing its “family” of several dozen HOME marks, including the HOME design (at left), and such marks as HOME WARES, HELP IS CLOSE TO HOME and ALL ROADS LEAD TO HOME. There was certainly overlap in the list of wares, and both are sold through retail channels to similar consumers.

The test for confusion in Canada is one of “first impression and imperfect recollection.” In Canada, one trade-mark causes confusion with another trade-mark if the use of both marks in the same area would lead a consumer to believe that the products associated with those trade-marks are made or sold by the same company. The test for confusion requires an analysis of “all the surrounding circumstances” including:

  • the inherent distinctiveness of the trade-marks and the extent to which they have become known;
  • the length of time each mark has been in use;
  • the nature of the products or business;
  • the nature of the trade; and
  • the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them.

After looking at these factors, and the fact that are at least 50 other Canadian trade-mark registrations incorporating the word HOME as the dominant element for similar products, the court concluded that consumers are accustomed to seeing multiple HOME trade-marks in association with the these types of products. Therefore, confusion between the two marks was considered unlikely and the opposition was dismissed. London Drugs prevailed in this battle.