On an appeal of a decision of the Registrar of Trade-marks which refused the application for registration of the trade-mark FRUIT DOTS, for breakfast cereals on the basis of confusion with the very well known trade-mark FROOT LOOPS, owned by Kellogg Canada Inc., for similar goods, the Court had to decide if there would be a likelihood of confusion between the marks FRUIT DOTS and FROOT LOOPS for breakfast cereals, given the fame of the FROOT LOOPS mark for similar goods.

The Court held, agreeing with FRUIT DOTS lawyer Chantal Bertoša of Shapiro Cohen, that the parties' marks are not inherently distinctive (original and strong) and while Kellogg may have had considerable use of its FROOT LOOPS mark, the words comprising the mark remain merely descriptive. The small differences between the marks, which lay in the spelling of the word FRUIT and FROOT and in the appearance, sound and meaning of the word DOTS and LOOPS lead the Court to conclude that the marks are not confusing. The Court also concluded that the co-existence of the parties' marks in the United States was evidence that bore directly on the issue of confusion in Canada.

IMPACT ON BRANDING:

The resemblance of the marks in the ideas suggested by them is not sufficient to find a likelihood of confusion when the trade-mark is only composed of descriptive terms. It is another case in Canada, joining United Artists v. Pink Panther Beauty Corp. [1998] 3 F.C. 534 (F.C.A.) and Toyota Jidosha Kabushiki Kaisha v. Lexus Foods Inc. (2000) 9 C.P.R. (4th) 297 (F.C.A.) which puts some real limits on the ambit of protection to be afforded to "well known marks".