Respondent filed applications for trademarks BENJAMIN MOORE NATURA and BENJAMIN MOORE NATURA & Design based on proposed use in Canada in association with interior and exterior paints. Applicant sold paint with BEAUTI-TONE NATURAL trademark and filed statements of opposition. Trademarks Opposition Board rejected applicant’s oppositions. Board rejected applicant’s argument that respondent failed to comply with Trade-marks Act (Can.) and found that respondent’s marks were distinctive and would not cause confusion. Applicant appealed. Appeal allowed. Applicant adduced new evidence that would have materially affected decision. New evidence was considered de novo. New evidence established that respondent learned that applicant had prior rights in NATURA and responded by applying for trademarks BENJAMIN MOORE NATURA and BENJAMIN MOORE NATURA & Design but did not establish non-compliance with s. 30(e) or (i) of act. There were insufficient grounds to conclude that respondent did not intend to use applied for marks in Canada at time of filing. In considering whether there was likelihood of confusion, distinctiveness factor slightly favoured applicant; length of use factor slightly favoured applicant; nature of wares factor favoured applicant; there was some overlap in channels of trade; degree of resemblance factor favoured applicant; and family of trademarks argument supported position of applicant. Ordinary consumer would likely be confused as to whether parties’ trad-marks originated from same source, particularly marks used in association with paint. As matter of first impression, casual consumer somewhat in hurry who encountered BENJAMIN MOORE NATURA paint, when consumer had no more than imperfect recollection of applicant’s BEAUTI-TONE NATURA paint, would likely be confused as to source of wares, at least at later material date when applicant’s NATURA brand had acquired particular distinctiveness in respect of paint. Consumer would likely be confused as to whether respondent’s trademark originated from same source as applicant’s trademark. Board’s decision was set aside and respondent’s trademark applications were refused.
Home Hardware Stores Ltd. v. Benjamin Moore & Co. (Dec. 4, 2015, F.C., Robin Camp J., T-2441-14) 262 A.C.W.S. (3d) 718.