By Neil Melliship on May 26th, 2011
Following up on a couple of earlier posts on this topic, the Supreme Court of Canada has this morning handed down its decision in the Masterpiece, Inc. v. Alavida Lifestyles, Inc. case. This decision has been long awaited as it appears to put to rest a critical issue in relation to the assessment of confusion in the context of who is entitled to registration of a mark in Canada.
First, a recap of the basic facts. Alavida obtained a registration of the mark MASTERPIECE in Canada for use in association with various real estate related services. Masterpiece, Inc. didn’t oppose Alavida’s application, but instead sought to expunge Alavida’s registration, after it issued, on the basis, among other things, that Masterpiece, Inc. had used the same or a similar mark in Canada in association with the same or similar services, prior to Alavida’s application being filed and prior to Alavida’s use of the mark in Canada.
At the trial division and in the Federal Court of Appeal, Alavida won and its registration was maintained, on the basis of the argument that Masterpiece, Inc.’s prior use of the same mark for the same services, even if proven, was limited in time and space and was in a different part of Canada (Ottawa) than where Alavida used its mark (Calgary) and that the geographic location of any alleged prior use was a factor to be looked at in determining likelihood of confusion – in essence importing into the analysis a common law passing test. This result was contrary to what most practitioners in Canada assumed the test to be for likelihood of confusion in the context of non-entitlement, based on the wording of the Trade-marks Act, which makes no express reference to the geographic location of prior use in the relevant provisions of the Act.
In today’s decision, the Supreme Court allowed the appeal and held that Alavida’s registration should be expunged on the basis that Alavida’s mark, at the time its application was filed, was confusing with a mark that had previously been used anywhere in Canada.