Under the Trade-marks Act, only an "interested
person" or a "person interested" in a matter at
issue may apply to the Federal Court for certain remedies. The
Court recently ruled on what constitutes an "interested
person" within the meaning of section 53.2 of the Act
in Victoria's Secret Stores Brand Management, Inc and
Victoria's Secret (Canada) Corp v Thomas Pink Limited,
2014 FC 76. The plaintiffs, collectively referred to as
"Victoria's Secret," sought from the Court, among
other things, a declaration that their use in Canada of their
trade-marks consisting of or containing the word "PINK"
did not infringe the trade-mark rights of the defendant, Thomas
Pink Limited. The defendant, which sells men's and women's
formal shirts in Canada under the trade-mark "PINK", did
not file a Statement of Defence, but instead brought a motion for
an Order dismissing the action on the basis that Victoria's
Secret did not have standing to bring the action in the first
place, in that it was not an "interested person" within
the meaning of section 53.2 of the Act.
In finding that Victoria's Secret was such an interested
person, and therefore permitting the action to proceed, the Court
the Trade-marks Act must be construed in a manner that
promotes access to the Act;
a determination as to who is a "person interested"
must be done on a case-by-case basis;
a "person interested" must demonstrate a reasonable
apprehension that a commercial interest that it has, or may have,
may be affected; and
the threshold for determining whether a person is a
"person interested" is low.
This decision is notable for a number of reasons. First, many of
the cases in the Federal Court and the Federal Court of Appeal that
consider a "person interested" are dealt with in the
context of an application to expunge a registration of a trade-mark
under section 57 of the Act. This case, in which the
plaintiffs were not seeking to expunge any of the defendant's
registered trade-marks, but rather seeking a declaration that they
were free to use certain of their trade-marks,
notwithstanding the defendant's registrations,
considered the definition of an "interested person"
within the meaning of section 53.2, a catch-all provision, which,
the Court ruled, "must be broadly construed to be directed to
any other act or omission done by another person, as may
be contemplated by the Act" (emphasis added). Citing
the reasons of the Federal Court of Appeal in BBM Canada v
Research in Motion Limited, 2011 FCA 151, the Court stated that the
purpose of the Act in general, and its remedial provisions
in particular, "is best met by an interpretation that promotes
access to the courts that is as expeditious and proportionate as
Second, this decision confirms the general principle that what
constitutes a "person interested" depends on the facts of
each case. As is evident from the statutory definition of a
"person interested", the "interested person" in
section 53.2 is akin to the "person interested" in
section 57. Thus, the "interested person" of section 53.2
must demonstrate that they are affected or "reasonably
apprehend" that they will be affected by an act or omission
done by another contrary to the provisions of the Act. In
Victoria's Secret, the Court took "a large and
liberal view" as to the definition of such a person and, in
particular, whether Victoria's Secret had a "reasonable
apprehension" that it might be sued by the defendant under the
Act. Having already been sued in a similar fashion in the
United Kingdom, Victoria's Secret was able to establish itself
as an "interested person" in the present case, as its
apprehension that its Canadian commercial activities may be
challenged by the defendant under the Act was reasonable
in the circumstances.
In view of Victoria's Secret, the Federal Court is
clearly prepared to read the Act in such a way as to
promote cost-effective access to justice and to the remedies
available under the Act. In particular, section 53.2 will
be "broadly construed" to capture any act or omission
that is not covered by section 57, the relief contemplated therein
available to "any interested person" capable of
demonstrating a reasonable apprehension that a commercial
interest that it has, or may have, may be affected by such
act or omission. As a result, an application under section 53.2 may
be useful in a wide variety of circumstances, and afford a wide
variety of litigants cost-effective access to "expeditious and
proportionate" relief in the form of an injunction, the
recovery of damages or profits and the destruction, exportation or
other disposition of any offending materials.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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