Confusion amp Damages Confusion as an element Assessing confusion Damage as an element Confusion It is not necessary to show that some particular person was actually confused Although such evidence is always relevant and desirable ID: 191409
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Slide1
Confusion & DamageSlide2
Confusion & Damages
Confusion as an element
Assessing confusion
Damage as an elementSlide3
Confusion
It is not necessary to show that some particular person was actually confused
Although such evidence is always relevant and desirable
Survey evidence to establish confusion or absence thereof is very common
It is enough to show a
likelihood of confusion
Cf. Trade-marks Act s.6Slide4
Confusion
Confusion is a factor
Use of the same mark is not actionable absent a showing of likelihood of confusion,
eg
.
When the products are very different
“Dart” for automobiles and for plastic coffee cup lids
Nominative use
Use of the mark to refer to the productSlide5
Champagne
Passing off does not prevent free-riding off
favourable
associations with the mark; it prevents confusion
Cf. Dilution
[
T]he cause of action must have as one of its characteristics a misrepresentation. That characteristic is missing here. What is being sold by the respondents is not "champagne" but "Canadian champagne" which over the past half century has built up a reputation and clientele of its own unlikely to be confused with the original. Slide6
Confusion
as to Source
However, not every kind of connection claimed amounts to a passing-off.
There must be a representation that the defendant's goods are connected with the plaintiff in such a way as would lead people to accept them on the faith of the plaintiff's reputation
.
NHL v PepsiSlide7
Nominative Use
First
, counsel suggested that by daring to refer to the N.H.L. by its full name, the disclaimer itself infringed the plaintiffs' rights to that mark.
I do not accept that referring to any organization by its correct name, when it is intended to refer to that organization, can be an infringement
.
NHL v PepsiSlide8
Assessing Confusion
Likelihood of confusion is to be assessed in the context in which the marks are used in the trade
The marks should not be closely scrutinized for differences
if they are unlikely to be closely scrutinized by the consumer.
. . .it is not a correct approach to solution of the problem to lay the two marks side by side and make a careful comparison of them with a view to observing the differences between them.
True, but more similarity is permitted when
consumer engages in close scrutinySlide9
Relevant Factors
Likelihood of confusion
Similarity
of the marks
Strength of the mark
Similarity
of the wares
Nature of the marketSlide10
Relevant Factors
More similarity is acceptable
When the marks are likely to be closely scrutinized
E.g. expensive goods
When the wares are very different, so that a consumer is unlikely to think there is an association
E.g. “Dart” for plastic cup lids and for cars
Less similarity is acceptable when one mark is very famous
E.g. Visa
The ultimate question is always likelihood of confusion
See also the factors relevant under the Trade-marks Act: s6(5Slide11
Damage
Distinguish
Damage as an element of the tort
The remedy of damages
Damage is an element
In principle, without establishing damage
no remedies are available
Ie
an injunction is not available unless damage is shown
Damages is also a remedy
The damages which must be shown to establish the tort is
not the same as that which must be shown to be entitled to the remedySlide12
Damage as an Element
It is
not necessary to show actual damage as an element
It is in principle necessary to show
likelihood of actual damageSlide13
Damage as an Element
While damage is in principle an element it is very easy to show likelihood of actual damage once reputation and confusion has been established
See e.g. The
Noshery
Ltd. v. The Penthouse Motor Inn Ltd.
But cf. Harrods Ltd v
Harrodian
School Ltd
"They obviously have no idea how to run a school. I always thought they were foolish to try; a cobbler should stick to his last. But they run an excellent store. This won't stop me shopping there." Slide14
Remedy of Damages
In order to obtain damages as a remedy it
is necessary to show actual damages