The Federal Court recently released its decision (Cathay Pacific Airways Limited v. Air Miles International Trading B.V. 2016 FC 1125) in the latest chapter in the saga of the applications filed by Cathay Pacific Airlines Limited for the registration of its ASIA MILES trademarks, all of which were opposed by Air Miles. The Trademarks Opposition Board had originally refused the trademark applications, but the Federal Court allowed the appeal by Cathay Pacific, set aside the Board's decision, and returned the matter for re-determination by a differently constituted Board. Cathay Pacific then appealed on the issue of the remedy, and argued that it was entitled to have the Court allow the registration of the trademarks. Air Miles cross-appealed on the merits of the Federal Court's decision.
The Federal Court of Appeal concluded that the Federal Court had purported to apply a reasonableness standard of review, but had instead applied a correctness standard, and that there was no reason to believe that the Board's original decision was unreasonable. Accordingly, the matter was returned to the Federal Court for the re-determination of Cathay Pacific's appeal.
On this re-determination, the Federal Court concluded that the Board did not err in concluding that there was a likelihood of confusion with the Air Miles trademarks. The Court concluded that, whether applying a standard of correctness or a standard of reasonableness, the analysis by the Trademark Opposition Board was compelling.
On the re-determination, Justice Southcott therefore refused all five of the trademark applications and concluded that although the new evidence assisted Cathay Pacific in arguing that the use by the licensee was use by the trademark owner, this was not sufficient to conclude that Cathay Pacific had met the burden of demonstrating that there was no reasonable likelihood of confusion. The use by Cathay Pacific was simply overwhelmed by the use of the Air Miles trademarks which had become very well-known, if not famous, and significantly more well-known than the Asia Miles trademarks.
This decision is noteworthy as an apt illustration of the fact that although there may be new evidence available to improve a party’s position in relation to one particular factor in the confusion analysis on appeal, the determination of the likelihood of confusion overall may be too great a burden to surmount.