Federal Court of Appeal Affirms TMOB’s Refusal to Register U-Haul’s Marks

On August 15, 2017, in U-Haul International Inc. v U Box It Inc. (2017 FCA 170), Canada’s Federal Court of Appeal (FCA) dismissed the appeal of U-Haul International Inc from a Federal Court (FC) finding (2015 FC 1345) upholding the Trademarks Opposition Board’s (TMOB) decision to deny U-Haul’s application to register two marks because of a reasonable likelihood of confusion with U Box’s registered mark under the Trade-marks Act.

U-Haul, a US corporation, applied for registration of two word marks, U-BOX WE-HAUL and U-BOX, for use in association with moving and storage services. U-Box, a Canadian corporation, opposed the applications claiming that the marks are confusing with its registered mark U BOX IT used in association with garbage removal services.

U-Haul applied for judicial review of the TMOB decision and introduced new evidence, seeking a de novo review. The new evidence consisted of samples from the Yellow Pages sourced from different Canadian regions, showing that no company provided both garbage removal and moving and storage services during the relevant period. U-Haul therefore argued that there was no overlap in the parties’ channels of trade. The FC concluded that the new evidence would not have materially affected the TMOB’s reasoning or its findings of fact and upheld the TMOB decision.

On appeal, the FCA affirmed the FC’s reasoning that the new evidence was insufficient to justify a de novo review of the TMOB decision. The FCA concluded that the TMOB reasonably weighed all factors under subsection 6(5) of the Trade-marks Act in reaching its conclusion that the average Canadian consumer would likely think the parties’ respective marks originated from the same source, therefore confusing.

Summary By: Anna Troshchynsky