The Devil Is in the Details: A Tale of Dirty Martinis

In the recent decision of Devil’s Martini, Inc. v. 1713703 Ontario Inc., released by the Trade-marks Opposition Board of the Canadian Intellectual Property Office on March 25, 2014, the board addressed, among various other issues, the question of confusion between two trademarks in the food, hospitality and entertainment industry.

In the decision, the Board rejected an opposition by Devil’s Martini, Inc. to a trademark application by a numbered Ontario company that operated restaurants in Oakville and Markham for a registration of the trademark “The Dirty Martini” in association with restaurant and catering services and the establishment of franchised bars, lounges and restaurants.

The Devil’s Martini, Inc.’s (the opposition party) trademark registration was in association with restaurants, bars, nightclubs, lounges, golf towels and clothing wares.  As well, it had a related application in association with various alcoholic and non-alcoholic beverages.

Its opposition was based on several grounds, including most notably for the purpose of franchising, that the proposed trademark “The Dirty Martini” was confusing with its own.

Based on the test for confusion as set out in sections 6(2) and (5) of the Trade-marks Act, the Board applied the test for confusion, which is comprised of the following key ingredients:

1. the inherent distinctiveness of the trade-marks and the extent to which they have become known;
2. the length of time each has been in use;
3. the nature of the wares, services or business;
4. the nature of the trade, and
5. the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them.

With respect to the parties’ channels of trade, the Board accepted the applicant’s submission that the nature of the respective businesses of the parties was different:

• one was a nightclub, while the other a dining lounge and bar;
• they catered to a different class and age demographic of customers, and
• the have a different décor and ambiance.

With respect to the key issue of the degree of resemblance between the two trade-marks, the Board accepted that the “The Dirty Martini” mark was distinctive, and therefore not confusing, with “The Devil’s Martini”, for the following reasons:

1. While both trade-marks share the common word “Martini”, which is very suggestive of the services of both parties (and therefore not distinctive), the dominant portions of the names, i.e., “Devil’s” v. “Dirty” were different and therefore distinctive;
2. The ideas suggested by the marks were also different:
3. The term “devil”, when associated with “martini”, connoted “something sexual, titillating and immoral”, which was relevant to attracting a younger demographic to the company’s late-night nightclub;
4. As opposed to that, the term “dirty”, when associated with “martini”, merely suggested a certain type of martini drink.  This was relevant to the company’s branding strategy of suggesting a sophisticated drink for a sophisticated demographic in its Oakville and Markham locations.

The Board applied an established confusion test of “first impression in the mind of a casual consumer”, i.e., a consumer who sees the trademark “The Dirty Martini”, with an imperfect recollection having been earlier exposed to the trademark the “The Devil’s Martini”, and does not give the matter any detailed consideration.

Aside from various other technical grounds which were raised by the opposing party, all of which were dismissed, the Board found that the two trademarks were not confusing and dismissed the opposition.