Confusion & Damage

1. Confusion & Damage

2. Confusion & Damages • Confusion as an element • Assessing confusion • Damage as an element

3. 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.6

4. 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 product

5. 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.

6. 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 Pepsi

7. 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 Pepsi

8. 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 scrutiny

9. Relevant Factors • Likelihood of confusion • Similarity of the marks • Strength of the mark • Similarity of the wares • Nature of the market

10. 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(5

11. 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 remedy

12. 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 damage

13. 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."

14. Remedy of Damages • In order to obtain damages as a remedy it is necessary to show actual damages