Pampered Chef recently succeeded for the second time in defending their trademark against Loblaw’s Inc. In 2019, the Federal Court dismissed Loblaw’s claim for trademark infringement, a decision which was upheld by the Federal Court of Appeal earlier this year.
Loblaws, the Canadian supermarket giant, utilizes a variety of trademarks and names including “President’s Choice” abbreviated “PC”. Under the “PC” mark, Loblaws markets a variety of food and household wares. An American company, Columbia, which owns Pampered Chef, Ltd. and Pampered Chef – Canada Corp, has operated and sold housewares in Canada for many years. However, in 2015 Columbia filed the “Happy Spoon” mark (below) which employs the “Happy Spoon” between the words “pampered” and “chef” in the long form mark, or between the letters P and C in the short form marks.
Loblaws opposed the application for the short form marks on the grounds that they infringed their PC (President’s Choice) mark (below), are likely to cause confusion, and have the effect of depreciating the goodwill associated with the PC marks.
Loblaws was unsuccessful in any of the causes of action at the 2019 trial, and subsequently appealed the decision to the FCA.
The trial judge held that, while the marks had some similarities and were used in association with similar goods, confusion was unlikely. The first reason was that, unlike Loblaws, Pampered Chef goods were sold through a direct to consumers business model. Secondly, Pampered Chef utilized the short from mark with the corporate name or the long form mark such that consumers would know it is a Pampered Chef product.
On appeal Loblaws alleged four errors of law.
First, Loblaws challenged the finding that the resemblance between the marks was not particularly strong. Loblaws argued that the marks were identical in sound. According to s. 6(5)(e) of the Trademarks Act, resemblance is assessed by the “appearance or sound or in the ideas suggested by them”. However, this argument was unsuccessful as Noël C.J. held that this is to be considered inclusively. The analysis is not to be limited to just sound, but rather must include the sound and visual appearance of the marks. Further, following the Supreme Court’s decision in Masterpiece, the mark was viewed as a whole considering the dominant and most striking features, which in this case included the distinctive “happy spoon”.
Second, Loblaws contested the analysis of the “nature of trade”. It was held the trial judge did consider the customer bases of the parties in the analysis of the “nature of the wares, services or business”, and it was not an error of law to repeat this in conducting the “nature of trade” analysis. Further, the trial judge found the customer base to be the same and in fact favoured Loblaws.
Third, Loblaws argued the judge was wrong in drawing an adverse inference from the lack of evidence of actual confusion. The fact that the competing marks had only existed for two to three years was immaterial since Pampered Chef had already operated in Canada prior to the introduction of the new marks. Thus, the Court concluded any likelihood of confusion would in fact have given rise to actual evidence of conclusion.
Finally, Loblaws argued that the trial judge placed too much weight on the different channels of trade. However, Noël CJ dismissed this argument, as consumers would be aware of the fundamental differences in product distribution. Further, the Court stated that even those consumers encountering Pampered Chef for the first time would be unlikely to confuse the marks due to the presence of the corporate name or long form mark.
Ultimately, Pampered Chef successfully defended their PC mark for a second time against Loblaws. To date, there is no evidence of an appeal to the Supreme Court of Canada. Although I am no judge, as a consumer aware of both PCs (who is sometimes in a hurry), I am certainly not confused by these marks!
Written by Maddie Lynch. Maddie is a second year JD candidate at Osgoode Hall Law School. She is a contributing IPilogue editor, Intellectual Property Journal editor and IP Innovation Clinic Fellow.