The Applicant, Trans-High Corporation, is the owner of the
registered HIGH TIMES trade-mark in Canada. Trans-High is also the
publisher of the well-known "High Times" magazine which
focuses on the "interests of counterculture, including, but
not limited to, the medical and recreational uses of
marijuana". For many years, Trans-High also sold various other
goods to Canadians in association with the HIGH TIMES trade-mark
through retail stores, mail orders, festivals, and its website.
These goods included ashtrays, lighters, DVDs, t-shirts, and
Evidence gathered by Trans-High Corporation through a private
investigator showed that the Respondent was operating "an
unimpressive, lower-end" retail store selling "an
extensive array of smoking and marijuana accessories" under
the trade-mark and business name "High Times Smoke Shop &
Gifts". The Respondent did not participate in the application
and no evidence was filed on its behalf. .
The Federal Court found that there was a likelihood of confusion
between the Applicant's HIGH TIMES trade-mark and the
Respondent's use of "High Times Smoke Shop &
Gifts". As such, the Respondent retail store was found by the
Court to have infringed Trans-High's registered HIGH TIMES
trade-mark and also to have passed-off its business and products as
being somehow connected with Trans-High's business, contrary to
the Trade-marks Act.
In its reasons, the Court noted that the Respondent retail store
had taken the whole of Trans-High's "HIGH TIMES"
trade-mark as the prominent and only distinctive part of its mark
and name "High Times Smoke Shop & Gifts". The Court
also noted that there was "clear overlap" between
Trans-High's magazine and related products and the products
sold in the Respondent's store, and that the customers and
communities targeted by both parties were the same or very similar.
An additional aggravating factor was that the words "High
Times" were prominently featured on the Respondent retail
store's signage, and the font used for the words "High
Times" was very similar to the font used over the years
by Trans-High on its magazines and other products.
In light of these findings, the Court awarded a permanent
injunction against any further use of "High Times" by the
Respondent, and awarded Trans-High $25,000 in damages and a costs
award of $30,000, which was very significant in the
This case is the first reported decision of the Federal Court
where claims for trade-mark infringement and passing-off have been
successfully brought by way of the Court's summary application
procedure. The decision follows the Federal Court of Appeal's
determination in 2011 that trade-mark owners can bring enforcement
proceedings in the appropriate case through the summary application
procedure, and are not limited to proceeding by way of action,
which typically involves lengthy and costly document and oral
The Federal Court's decision shows that in straightforward
infringement cases, proceeding by way of an application has some
distinct advantages over bringing a traditional action for
enforcing trade-mark rights in Canada. The application procedure is
quick, cost-effective, and proceeds to Court on the basis of a
"paper record" consisting of affidavit evidence, avoiding
the need for costly discovery or trial.
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