Roots Attempts to Strike CABIN FEVER & Design Trademark

On January 8, 2019, the Federal Court of Canada (Court) issued its decision in Roots Corporation v YM Inc (Sales), (2019 FC 16) dismissing an application brought by Roots Corporation (Roots) to strike YM Inc’s (YM) CABIN FEVER & Design trademark registration (Registration) from the Register. 

Both Roots and YM are clothing retailers operating in Canada. Roots brought an application to strike the CABIN FEVER & Design alleging that YM was not entitled to secure the registration since:

1. YM’s mark was confusing with Roots’ existing trademarks;
2. YM’s mark lacked distinctiveness; and
3. YM’s declaration of use contained material misstatements.

The Court dismissed the application finding that YM’s mark was neither confusing nor non-distinctive. The Court noted that a low degree of resemblance exists between the CABIN FEVER & Design mark and the Roots CABIN Marks and that this lack of similarity between the marks outweighed the other confusion factors, including the nature of the goods, the nature of the trade, and Roots’ presence on the market before the Registration’s filing date. 

With respect to the distinctiveness of the marks, the Court found that the marks had coexisted on the market for some time prior to the proceedings and that there was no evidence of actual confusion between the marks.

Finally, the declaration of use was found to contain a material misstatement. The Registration was found to encompass goods that YM never sold in association with the mark. The Register was ordered amended to remove the goods which were not shown to be have been sold with the CABIN FEVER & Design mark.

Summary By: Michelle Noonan