In Masterpiece Inc. v. Alavida Lifestyles Inc. (2009 FCA 290), the Federal Court of Appeal dismissed an appeal from the Federal Court (2008 FC 1412) where they had denied Masterpiece’s application for expungement of Alavida’s trade-mark “Masterpiece Living.” The Court of Appeal held that the trial judge had properly considered whether Alavida’s trade-mark was confusing at the date of registration, rather than whether it would be confusing in future.

Masterpiece and Alavida both operate retirement residences, the former mainly in Alberta pending an expansion plan, the latter in Ontario. Alavida applied to register the proposed mark “Masterpiece Living” in December 2005. It began using the mark in January 2006, and had their registration approved in March 2006. Masterpiece, after going through an evolving series of marks involving “Masterpiece” and, in some cases, “Living”, began using the unregistered mark “Masterpiece Living” between December 2005 and February 2006. They applied to register it in June 2006, but this application was denied due to Alavida’s already pending application.

Masterpiece applied to expunge Alavida’s trade-mark on the grounds that it was confusing and therefore invalidly registered under section 16(3)(a) of the Trade-Marks Act (“the Act“), which holds that proposed marks are not entitled to registration, if confusing with marks previously used in Canada. The Federal Court dismissed that application and Masterpiece subsequently appealed.

Masterpiece’s appeal relied on the Act’s definition of confusion in section 6(2), using the phrase “if the use of both trade-marks would be likely to lead to the inference…”. They argued that this tense required courts to consider not only confusion at the date of registration, but the likelihood of confusion in the future. In reviewing the decision on the correctness standard, the Court looked in three directions – at the Act in context, at relevant case law, and also at the French version of the Act for an interpretive aid.

In examining the Act, the Court found that it allowed for differing time frames in the confusion analysis, depending on the context of said analysis. The Court thereby justified looking specifically within s. 16(3) for guidance on its relevant time frame, and found that the provision specifically confined the test for confusion to “at the date of filing”.

While Masterpiece relied on several cases in its argument that the future can be considered in confusion analyses, the Court discussed at length the fact that they related to sections other than 16(3) and were therefore not on point.

The Court additionally noted that the French version of s. 6(2) uses the present tense “cause” rather than the conditional tense “causerait”. Relying on Bastarache J. et al’s work The Law of Bilingual Interpretation, the Court noted that the goal of interpreting both versions of a law was to find the meaning common to both. In the instant case, they found that only the hypothetical sense of “would” was reconcilable with the present-tense use of “cause” in the French version, and thus the proper interpretive lens for the trial judge to use. Masterpiece’s appeal was thus dismissed and Alavida’s trademark sustained.