The Case of the Happy Spoon
Do you find the below marks to be confusing? According to the Federal Court’s decision in Loblaws Inc v Columbia Insurance Company, they are not.
Pampered Chef Mark
In this case, Loblaws made an infringement claim against Pampered Chef pursuant to section 20 of the Trade-marks Act, which states that “the right of the owner of a registered trade-mark to its exclusive use is deemed to be infringed by any person who is not entitled to its use under this Act and who (a) sells, distributes or advertises any goods or services in association with a confusing trade-mark or trade-name”.
To decide whether Loblaws had a successful claim, the Court considered, among other factors, the degree of resemblance between the two trademarks in appearance, sound and in the ideas suggested by the marks.
The Court agreed with Loblaws that the two marks are identical in sound and despite Pampered Chef’s position that the Loblaws Mark means “President’s Choice” and the Pampered Chef Mark means “Pampered Chef”, the Court held that neither of the marks suggest any particular meaning or ideas beyond the letters “P” and “C”.
In terms of resemblance in appearance, Loblaws argued that the letters “P” and “C” form the dominant visual component of both marks. In contrast, Pampered Chef argued that the “Happy Spoon” design element of its mark is inherently distinctive and is therefore the dominant visual component of the Pampered Chef Mark. The Court agreed that the letters used in both marks are identical, but recognized the Happy Spoon “as a significant feature, because of its prominent placement in the mark”. As a result, the Court found that the Happy Spoon’s “prominence, and the fact that it is a design feature which is absent from the [Loblaws Mark], reduce the degree of resemblance between the two marks”.
After engaging in a comprehensive confusion analysis, the Court decided in favour of Pampered Chef, finding that Loblaws had not established confusion between the Loblaws Mark and the Pampered Chef Mark.
Although evaluating the degree of resemblance between marks is just one element of the trademarks confusion analysis, this case illustrates that including a design element in a trademark can play a crucial distinguishing role. If it had not been for the Happy Spoon design element, the Court might have concluded that the marks were in fact confusing.
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