Distribution Prosol PS Ltd. v Custom Building Products Ltd., 2015 FC 1170

Why Is This Case Important?

This decision applies the confusion test under section 6 of the Trademarks Act in a dispute between two companies using a trademark comprised of a common, weak term, in this case, the word “Fusion”. The Court emphasized that such suggestive or weak marks, even if registered, enjoy a narrow protection when the shared term is commonly used in the industry. The ruling also highlights the importance of distinctiveness, the nature of the goods, and the trade channels in determining whether confusion is likely. It serves as a precedent for trademark owners seeking to expunge competing marks based on confusion.

Summary

Distribution Prosol PS Ltd. (Prosol), a flooring company, owned two registered trademarks—”FUSION FORCE” and “FUSION PATCH”—used in association with adhesives.

Prosol also claimed common law rights in several other “Fusion”-based marks.  Custom Building Products Ltd. (Custom), a company specializing in tile and stone installation, registered four Trademarks under the name “FUSION PRO”, used in association with grout.

Prosol applied to the Federal Court under section 57 of the Trademarks Act to expunge all of Custom’s marks, arguing they were confusing with its own registered and common law marks. Prosol claimed Custom’s marks were invalid under sections 12(1)(d), 16(3)(a), and 18(1)(a) and (d) of the Act.

Court Finding

The Court dismissed Prosol’s application, finding no likelihood of confusion between the marks.  The Court considered the factors of the confusion test and held that: (1) Prosol’s marks were inherently weak because “Fusion” was a commonly used term in the flooring industry and highly suggestive of the character or quality of the wares, as it connotes the idea of bonding and joining two elements. Prosol also failed to provide reliable evidence that its marks had acquired distinctiveness. (2) Due to shortcomings in Prosol’s evidence, the period of proven use was relatively short and carried little weight in the confusion analysis. (3) The nature of the goods differed significantly: Prosol sold adhesive,s whereas Custom sold grout (a finishing product with no bonding function).  Because the products served different purposes, were marketed differently, and appealed to different consumer needs, this factor weighed against confusion. (4) The nature of the trade was also distinct, with Prosol targeting contractors and professionals, and Custom selling to retail consumers, primarily through Home Depot. Because customers were different and the channels did not overlap, this factor also weighed against confusion. (5) Although both parties used the word “Fusion”, the additional words (“Force”, “Patch”, “Pro”) changed their commercial impressions. (6) The Court also considered two additional factors which supported Custom: (i) the Trademarks Office had allowed both parties’ marks to be registered despite the shared term “Fusion”; and (ii) no evidence of actual confusion existed.  The Court held that Prosol failed to discharge its burden of proving confusion.

Key Takeaway

Even registered trademarks may not be protected from similar marks if they are suggestive, commonly used, or lack distinctiveness. The confusion test requires a holistic analysis of the marks, their goods, trade channels, and consumer perception. This case confirms that mere similarity in wording is insufficient to establish confusion, especially when the shared term is widely used in the industry. It also underscores the importance of presenting reliable evidence when seeking to expunge a trademark.