Canada: Up In Smoke: Infringement Application Succeeds Against Infringer Of HIGH TIMES Trade-mark

Last Updated: December 11 2013
Article by James Green

On November 26, 2013, the Applicant in Trans-High Corporation v Hightimes Smokeshop and Gifts Inc., 2013 FC 1190 obtained a permanent injunction, damages, and a significant costs award against a trade-mark infringer only five months after the application to the Federal Court of Canada was commenced.

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 hats.

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 circumstances.

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 discovery processes.

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.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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