Joey Tomato's (Canada) Inc. is the owner of the LOCAL trademark and, according to its trademark application, the LOCAL trademark is used in relation to restaurant, bar, and lounge related goods and services.
Subsequent to the registration of Joey Tomato's trademark, another entity sought to register the rooster design trademark below also in relation to restaurant and related goods and services:
Joey Tomato's opposed the registration on the basis that the rooster design trademark was confusingly similar to its trademark, the details of which are set out in the opposition proceedings in Joey Tomato's (Canada) Inc. v 1786328 Ontario Ltd.
The test for confusion is whether the typical Canadian consumer with an imperfect recollection would, upon seeing the rooster design trademark, assume as a matter of immediate impression that the parties' restaurant goods and services share a common source.
The answer – YES!
In this case, there is a clear overlap between the goods and services of both trademarks. Also, even though there is less of a resemblance in the appearance of the two trademarks, as the dominant feature of the rooster design trademark is the silhouette of a rooster, the words "local" and "locale" can sound the same. As such, there is a fair degree of resemblance between the two trademarks as, as the rooster design trademark has incorporated the whole of Joey Tomato's LOCAL trademark with the addition of the silent letter "e" at the end.
It is important to note that it is the responsibility of trademark owners, such as Joey Tomato's, to enforce their trademark rights or risk losing such rights. Trademark owners must be vigilant in monitoring the marketplace and taking action, just like Joey Tomato's, against any confusingly similar trademarks in the marketplace.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
