The Federal Court of Appeal dismissed an appeal by Loblaws Inc. (“Loblaws”) from a decision of the lower court that held that Columbia Insurance Company, The Pampered Chef, Ltd., and Pampered Chef – Canada Corp. (“Pampered Chef”) had not infringed Loblaws’ well-known “PC” trademark. This case, Loblaws Inc. v Columbia Insurance Company, released on February 15, 2021, will be of interest to charities and not-for-profits that use acronyms or short-form trademarks.

The case arose when Loblaws, the owner of the well-known family of registered and unregistered trademarks “PC”, reflecting its “President’s Choice” brand, brought an action before the Federal Court alleging that the Pampered Chef, through its use of the “PC” acronym with a spoon between the letters “P” and “C”, was infringing Loblaws’ trademark rights. At the trial level, after an analysis of the legal test for confusion, the court found that despite the fact that the Loblaws’ PC mark and the Pampered Chef mark bore a certain degree of resemblance, there was no likelihood of confusion. Amongst other factors, the court reasoned that the Pampered Chef uses its PC acronym with a spoon between the “P and the “C” and with its full corporate name or the full “Pampered Chef” trademark, therefore negating any likelihood of confusion.

The Federal Court of Appeal upheld the trial court’s decision, dismissing Loblaws’ appeal and finding that there was no likelihood of confusion between the two PC acronyms.

This decision is a reminder to charities and not-for-profits of the importance of conducting due diligence searches prior to using trademarks in order to avoid any potential confusion with another organization’s trademarks and therefore minimizing the risk of a trademark infringement lawsuit. Similarly, charities and not-for-profits that currently own and use acronyms as registered or unregistered trademarks should keep in mind that acronyms are afforded a very narrow scope of protection and third parties may use variations of the acronym without the charity or not-for-profit having the ability to stop such use. If acronyms are used, it is important that they at times be used without the full corporate name or the full trademark so that rights can accrue in the acronym. Lastly, charities and not-for-profits should diligently monitor the marketplace to ensure that third parties are not using confusingly similar trademarks, and to take appropriate action to enforce their valuable trademark rights where necessary.