Case Number

CA 4410/06

Date Decided

8-31-2010

Decision Type

Appellate

Document Type

Full Opinion

Abstract

Facts: The decision involves an appeal from a ruling issued by the intellectual property arbiter at the Patents, Designs and Trademarks Office. The two parties had each registered trademarks with that Office: the appellant’s trademark, registered for its motor oil additive product, featured the letters NRG and a drawing of a fist combined with a piston, while the respondent’s trademark, registered at a later point in time for its motor oil, featured the words “Havoline Energy” and an image of a piston. The appellant, on the basis of its registered trademark, had requested the removal of the word “energy” from the respondent’s trademark. The arbiter denied the appellant’s request and this appeal followed.

Held: The respondent’s registered trademark did not violate the appellant’s registered trademark. The test for determining whether a trademark has been violated relies on three aspects: auditory and visual similarity between the two trademarks, the merchandise type and customer group for the products covered by the two trademarks, and any other relevant circumstances of the case. The appellant’s main argument was based on an allegedly misleading auditory similarity between its registered NRG combination and the word “energy”. However, even though auditory similarity may be an important test for products that are purchased over the counter, the similarity between the sound of the letters NRG pronounced in combination and the word “energy” does not suffice to create the result sought by the appellant. Here, the appellant had written to the Patents Office at the time of registration that the letters in the trademark “have no meaning”, and it could not, at this later stage, claim that it had sought protection for the word “energy”. Furthermore, the word “energy” is an inherently descriptive word, and a standard term in the field, meaning that no party can be granted an exclusive right to its use through its inclusion in a registered trademark. The appellant also failed to show that the word “energy”, as derived from the letters NRG, had acquired any distinctive character associating it specifically with the appellant’s product, or that it qualified for protection as a “well-known trademark”. In any event, the fact that the respondent’s mark contained another word, in addition to “energy”, established that the auditory similarity was not misleading. The visual differences between the trademarks also weaken the appellant’s argument, as does the fact that the products are marketed in different sized containers. Finally, although both parties’ products fall within the general motor oil category, one product is a motor oil additive while the other is a motor oil itself, so that a claim of a violation cannot be based on a similarity regarding the type of product covered by the two registered trademarks.

Appeal denied.

Keywords

Trademarks -- Right to use trademark

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