D Ltd. was flooring company that registered trademarks FUSION FORCE and FUSION PATCH in association with adhesives for flooring. D Ltd. also claimed use of several common law trademarks containing word “Fusion” in association with adhesives and grout for flooring. C Ltd. specialized in tile and stone installation. Less than one month after D Ltd. registered its trademarks, C Ltd. registered four FUSION PRO trademarks, three of which had design. C Ltd.’s trademarks were registered in association with grout for flooring. D Ltd. brought application for order expunging C Ltd.’s trademarks from register on basis of likelihood of confusion. Application dismissed. None of C Ltd.’s trademarks were likely to be confusing with D Ltd.’s registered or common law trademarks. D Ltd.’s trademarks did not have inherent distinctiveness. Word “Fusion” was fairly common and suggestive dictionary word. Other entities used word “Fusion” in flooring business in Canada. Evidence of acquired distinctiveness was at best very thin. Use of registered trademarks by two affiliates could not be considered under s. 50(1) of Trademarks Act due to lack of evidence of licensing arrangements or D Ltd.’s control over character or quality of goods using trademarks. Common control between companies through parent company was insufficient to demonstrate control. Such uncontrolled use of “Fusion” trademarks by D Ltd.’s affiliates arguably diminished trademarks’ alleged distinctiveness. C Ltd.’s trademarks were inherently stronger than D Ltd.’s since grout had no adhesive or “joining” properties suggested by word “Fusion”. C Ltd. also had strong sales and engaged in advertising. Parties’ wares were not essentially and primarily same. D Ltd. had not used its trademarks in association with grout. Parties did not primarily target same types of customers and did not operate at same trade level.
Distribution Prosol PS Ltd. v. Custom Building Products Ltd. (Oct. 15, 2015, F.C., Denis Gascon J., File No. T-874-14) 260 A.C.W.S. (3d) 349.