Application to register opposed by Warner Bros based on its novel and adaptation for the screen
Canada’s Trademarks Opposition Board (TMOB) has found that an applicant failed to satisfy her legal onus to show the lack of a reasonable likelihood of confusion between her applied-for trademark CRAZY BROKE ASIAN and the opponent’s trademark CRAZY RICH ASIANS.
In Warner Bros. Entertainment Inc. v Céline Do, 2025 TMOB 149, the applicant filed a May 2021 application to register the trademark CRAZY BROKE ASIAN in association with goods and services in the field of entertainment, including films, television series, audio and video recordings, books, and magazines.
The applicant advertised her application for opposition purposes in a February 2023 issue of the Trademarks Journal.
Warner Bros. Entertainment Inc. opposed the application under s. 38 of the Trademarks Act, 1985. It alleged that there was likely confusion with its trademark CRAZY RICH ASIANS, used in association with goods and services relating to Crazy Rich Asians, a motion picture adaptation of a novel by the same name.
Opposition succeeds
The TMOB refused the application under s. 38(12) of the Trademarks Act upon finding the opposition grounds under ss. 16(1)(b) and 16(1)(a) successful.
Regarding s. 16(1)(b), the TMOB ruled that the applicant failed to establish that there was no reasonable likelihood of confusion between the two trademarks. In reaching this conclusion, the TMOB considered the statutory factors, which all favoured the opponent.
These factors included the degree of resemblance between the parties’ trademarks, the evidenced use of the opponent’s mark in Canada since 2018, the extent to which it became known, and the similarities between the parties’ goods and services.
First, the TMOB held that the parties’ trademarks were equally inherently distinctive because they were memorable phrases that did not directly describe their goods and services.
The TMOB said the opponent showed that its trademark acquired distinctiveness in Canada, while the applicant failed to provide evidence of use of her mark or the extent to which it became known in Canada.
Second, the TMOB determined that the length of the trademarks’ time in use favoured the opponent.
The TMOB saw some measure of continuous use of the opponent’s trademark since 2018 in association with pre-recorded DVDs and Blu-Ray discs, CDs, vinyl records, posters, and film distribution services, while the applicant offered no evidence of use of her mark in Canada.
Third, the TMOB found strong similarities in the nature of the parties’ goods and services and potential overlap in their trade channels, given those similarities.
Fourth, the TMOB found a meaningful degree of resemblance between the parties’ trademarks, an important factor favouring the opponent.
The TMOB accepted that the trademarks were not identical. However, the TMOB saw considerable similarities between the marks in terms of their appearance, sound, and the ideas they suggested. The TMOB noted that the marks shared:
- the same first word (CRAZY)
- a very similar last word (ASIANS and ASIAN)
- an identical grammatical structure
The TMOB added that the marks conveyed connected ideas, Asians of extreme financial status, with the second words being the antonymic adjectives “rich” and “broke.”
Regarding s. 16(1)(a) on non-entitlement to register based on a previously used trademark, the TMOB decided that the opponent demonstrated that it had used its mark and had not abandoned it at the date of the advertisement of the applicant’s application.
The TMOB saw a direct overlap and a close connection respecting the parties’ nature of the goods and services, as well as potential for overlap in their trade channels.
