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Same trade-mark and similar goods? No problem if sold through different channels of trade

January 15, 2014

This case illustrates the potential advantages of explicitly excluding certain goods from your trade-mark application.

Let’s suppose you are a tire manufacturer with the registered mark POTENZA for “tires, tubes and wheels” that you have held for 30 years.  A high-end Italian bicycle parts manufacturer decides to try to register the mark POTENZA for “bicycle parts and accesssories, namely, …(long list of parts)…but not including tires, brakes, wheels, rims and spokes”.  You might try to oppose that registration.

This was the case in Bridgestone v. Campagnolo, 2014 FC 37, decided yesterday by the Federal Court of Canada.  In the end, Justice McVeigh agreed with the Trade-marks Opposition Board that there was no likelihood of confusion and that Campagnolo’s mark could be registered.  It’s an interesting look at analyzing confusion and the effect of excluding goods from the list of wares in your trade-mark application.

The well-known section 6(5) factors for assessing confusion include:

(a) the inherent distinctiveness of the trade-marks;

(b) the length of time the trade-mark have been in use;

(c) the nature of the wares;

(d) the nature of the trade; and

(e) the degree of resemblance between the trade-marks in appearans or sound or in ideas suggested by them.

Here, factors (a), (b), and (e) weigh heavily in Bridgestone’s favour.  The marks are identical and the Bridgestone mark has been on the register for 30 years.  Nevertheless, when it comes to factors (c) and (d), Campagnolo wins out.

Bridgestone pointed out that you can find bicycle parts and car parts, including wheels, sold together in a number of stores.  Campagnolo, on the other hand, argued that their bicycle accessories were sold by high-end sporting goods stores and specialty bike shops to avid racing cyclists.

The Court seemed swayed by the fact that, although you can walk into Canadian Tire or Walmart and find both car and bicycle accessories, including wheels, the usual channel of trade for the high-end bicycle accessories sold by Campagnolo is specialty bicycle shops.  The intention of Campagnolo to sell through this specific channel of trade appeared to be a factor the Opposition Board used in deciding the “probable channel of trade”.  The Court agreed with the Opposition Board that bicycle parts were “fundamentally different” from “tires, tubes, and wheels”, especially insofar as they specify that those were excluded.

Because the two sets of wares (tires vs. bicycle parts excluding tires) are sold through different channels of trade, the Court concluded that there was no likelihood of confusion.  I suspect that the explicit exclusion of tires and wheels from the list of goods was a significant factor.  It permitted the Court to come to the conclusion that the goods were different and sold through different channels.  If Campagnolo’s goods simply listed “bicycle parts” without excluding tires, it would probably have been much more difficult for them to succeed.