Case 5 | Trademark Registration Refusal Involving a Smart Imaging and Wearable Hardware Enterprise — Challenging a Finding of Confusion Based on a “Shared Prefix” Through Comparison of the Marks as a Whole
[Case at a Glance]
(1) Case Focus
An enterprise specialising in smart imaging and wearable hardware, principally engaged in imaging equipment, headphones, wearable hardware and related software services, applied for trademarks abroad in the name of its overseas entity. On August 22, 2025, the client filed an application in Canada to register “Headii” in Classes 9 and 42.
On May 12, 2026, the Canadian Intellectual Property Office issued its first examiner's report, finding under section 12(1)(d) of the Trademarks Act that the mark was confusing with “HEADY ON THE ROAD”, registration No. TMA1,295,468, owned by EXCEL TEAM MANAGEMENT LIMITED. The objection covered all designated goods and services.
The case presented three central difficulties: the examiner's finding of confusion focused on the four-letter prefix “HEAD” shared by the two marks, showing a tendency to dissect the marks and compare their individual elements; overcoming that finding required redirecting the assessment to the marks as a whole. The cited mark had only been registered in March 2025 and had not yet been registered for three years, so non-use cancellation proceedings could not be initiated at this stage. The parties' Class 9 goods overlapped in respect of headphones, a principal product category for the client, and the cited mark would also constrain the client's planned supplementary registration applications.
(2) Representation Strategy
The Liangma Trademark Team coordinated the response strategy and Chinese-language legal analysis, working with its partner law firm in Canada to prepare a formal response in English. The response developed three tiers of arguments around the five statutory factors in section 6(5) of the Trademarks Act.
The first tier challenged the similarity assessment by comparing the marks as a whole instead of dissecting their elements. Visually, Headii is a coined, six-letter word mark, whereas the cited mark is a four-word phrase incorporating graphic design, with “ON THE ROAD” forming a central visual component through which consumers identify it. Phonetically, the former has two syllables and ends with the distinctive double “i”, whereas the latter is a five-syllable phrase with an entirely different pronunciation rhythm. Conceptually, the former has no dictionary meaning, whereas the latter conveys the lifestyle imagery of being “on the road”. The shared prefix “HEAD” alone is insufficient to outweigh the overall differences.
The second tier addressed distinctiveness and the facts concerning use. Headii is a coined word with a very high degree of inherent distinctiveness. The cited mark combines ordinary English words and a common phrase, deriving its identifying character from the combination of words and graphic design; moreover, its broad registration spans 12 classes, and it should receive a narrower scope of protection for technology goods outside its core categories. The mark was only registered in 2025, and there was no evidence on the record establishing longstanding actual use in Canada or an established market reputation.
The third tier addressed the nature of the goods and channels of trade. In Class 9, only a few items nominally overlap, and the cited mark does not cover the client's core goods, such as cameras and professional audiovisual editing software. The cited mark contains no corresponding items for the technical services in Class 42. The parties' target customers, sales channels and consumption contexts differ significantly. An additional supporting argument was that the same mark had undergone substantive examination and been registered in the United States and the United Kingdom.
The strategy maintained restraint on two points: core goods such as “headphones” would not be deleted to secure partial acceptance; and the argument was limited to “there is no evidence of use on the record”, without categorically asserting that the cited mark had not been used in Canada. Once the cited mark has been registered for three years, non-use cancellation proceedings may additionally be initiated to remove the underlying rights obstacle.
(3) Results of Our Services
·Completed a comprehensive assessment of the Canadian refusal case and issued a report assessing registrability and analysing the need to seek reconsideration of the refusal
·Developed a three-tier framework of legal arguments addressing “overall similarity + distinctiveness + goods and channels of trade”, and prepared a formal response in English
·Organised supporting materials concerning the earlier US and UK registrations, and developed a phased plan for clearing rights obstacles through “a response at the current stage + non-use cancellation after three years of registration”
·Clarified the case deadlines, scope of fees and procedural milestones throughout the process to ensure timely submission of the response
[Keywords] Canadian trademark refusal; confusion under section 12(1)(d); comparison of marks as a whole; non-use cancellation