Linguistic evidence not helpful in passing off case

By Scott Foster

In a passing off decision from the Federal Court, Justice Fuhrer held that linguistic expert evidence from the plaintiff and defendant was inadmissible on the issue of confusion.

The case centered on whether the marks SLOTOPOLY and SLOTOMANIA were confusingly similar. To support their positions, both parties relied upon academic experts.

The plaintiff relied upon a Professor of English Linguistics who opined as to the degree of resemblance between the trademarks in appearance, sound, and ideas suggested. The defendants relied upon a sociolinguistic expert who opined on the degree of resemblance between the trademarks as concerns appearance, sound, and ideas.

The Court found the opinions to be abstract and incomplete because neither expert played the video games at issue and they failed to base their opinions on a consideration of the context or manner in which the marks would be encountered by the consumer. Further, the Judge held that both opinions were incomplete because they missed the crucial element of “a casual consumer somewhat in a hurry” when they first encounter or see the SLOTOPOLY Marks and the SLOTOMANIA Mark online or on their mobile device. Finally, she was concerned that the experts did “precisely what the Supreme Court cautions against in Masterpiece—they tease out and analyze separately each portion of the marks.”

In ruling the reports were inadmissible, she concluded that “I find that the evidence of both linguistic experts is unnecessary and distracts from the primary focus of the test for confusion…the first impression of a casual consumer somewhat in a hurry.” As a result, the Judge reasoned that she was “left to apply [her] own common sense when considering whether these trademarks are likely to be confused in terms of resemblance, that is in appearance, sound or in the ideas suggested.”

 Enigmatus v. Playtika Ltd and others, 2024 FC 751