Word “Fusion” was fairly common and suggestive dictionary word

Federal court | Industrial and Intellectual Property

TRADEMARKS

Word “Fusion” was fairly common and suggestive dictionary word

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.

Free newsletter

Our daily newsletter is FREE and keeps you up to date on all the developments in the Ontario legal community. Please complete the form below and click on subscribe for daily newsletters from Law Times.

Recent articles & video

Ontario court rules cap on general damages does not apply to sexual abuse

House of Commons reveals legal fee reimbursement over $54k

Downey slams Purdue Pharma for not including Canadian claims

U of T's Anita Anand awarded medal by Royal Society of Canada

How criminal lawyers make referrals

Man discharged from his fourth bankruptcy

Most Read Articles

Chasm in opinions remains after statement of principles repeal

Insurance lawyers reveal their referral philosophies

Court of Appeal rules auto insurer not liable for parental negligence claim stemming from accident

Man discharged from his fourth bankruptcy