The Bay Builds Upon A Masterpiece

Beymen, the leading fashion brand in Turkey, has offered upscale men's clothing since 1971, more recently adding women's wear and home collections to its lines. But when it sought to register two of its design marks in Canada (possibly to herald its entry into the Canadian retail market), Beymen ran into serious issues with Canada's leading department store, Hudson's Bay.

Hudson's Bay objected to registration of the following design marks based upon its prior use and registration of various BAY and BAIE marks:

In 2010, the Trade-Marks Opposition Board sided with Beymen, finding, on a balance of probabilities, no reasonable likelihood of confusion between the above marks and those previously registered by Hudson's Bay, "primarily because of the Mark's inherent distinctiveness and the differences existing between the parties' marks which outweigh the other factors in the present circumstances." On February 5, 2013, Justice Hughes of the Federal Court released his reasons in Hudson's Bay v Anonim Sirketi 2013 FC 124 and 2013 FC 125 and partially reversed the holding of the Board.

In so doing, Justice Hughes applied the same test that the Board had, saying that the determinative issue was the likelihood of confusion between the trade-marks sought to be registered and the various BAY marks. Before the Board, The Bay had only evidenced copies of its various BAY registrations and nothing further. On appeal, however, it filed two further affidavits attesting to the extensive use and promotion of its BAY marks, and the state of the Register with respect to third party BAY marks. The nature and quality of this further evidence was considered by Justice Hughes to be significant, allowing him to consider the matter de novo instead of reviewing the Board decisions only on the basis of reasonableness. Justice Hughes also noted the Supreme Court of Canada decision in Masterpiece Inc. v Alavida Lifestyles Inc., 2011 SCC 27 decided after the Board's finding in this case as further support for the matter to be addressed de novo.

In assessing the likelihood of confusion, Justice Hughes followed the approach outlined by the Supreme Court in Masterpiece, namely what is the first impression in the mind of the casual consumer, somewhat in a hurry, with an imperfect recollection and without close examination. Justice Hughes specifically repeated the instruction of the Supreme Court that "[n]either an expert, nor a court, should tease out and analyze each portion...