Canada: Trademarks Decisions: Motion For Summary Trial Granted: But Plaintiff’s Claim Is Struck And Its Trademark Is Struck From The Register (Intellectual Property Weekly Abstracts Bulletin (Week Of December 8th, 2014)

Last Updated: December 10 2014
Article by Chantal Saunders, Adrian J. Howard, Beverley Moore and Ryan Steeves

Most Read Contributor in Canada, September 2016

Trademark Decisions

Motion for Summary Trial Granted: but Plaintiff's Claim is Struck and its Trademark is Struck from the Register
MC Imports Ltd. v. Afod Ltd., 2014 FC 1161

This was a motion for summary trial relating to an alleged trademark infringement by the Defendant of the trademark LINGAYEN held by the Plaintiff. In response, the Defendant counter-claimed against the validity of the trademark's registration. The LINGAYEN trademark covers Filipino food products and food supplier and distributor services.

The Defendant imported from the Philippines a shipment of food products, which contained labels marked with its trademark, as well as language of "Lingayen Style" in lesser-script immediately below the trademark. The Defendant sold its food products in 2011, with total revenues of those products being less than $3,500. The Plaintiff claimed that LINGAYEN was a discrete and distinctive word, generally not known to Canadians or in common use in the English language. The Defendants, on the other hand, alleged that Lingayen is a place in the Philippines known to Canadian consumers, that Lingayen is also known to Canadians for certain food products, and that products from Lingayen are known for their distinct aroma and flavour. The Court was, therefore, asked to consider if it was appropriate to determine this matter by summary trial, and whether the Plaintiff's claim for infringement should be dismissed because the trademark is invalid (or even independent of the trademark's validity).

The Court found that a majority of the factors to be considered when assessing the appropriateness  of a summary trial weighed in favour of summary proceedings in this case. The Court then considered the validity of the trademark under section 12(1) (d) of the Trademarks Act (the "Act"), noting that "a mark can only be clearly descriptive or deceptivelymisdescriptive of place of origin if it would be perceived by the ordinary consumer as relating to the ware's place of origin." Otherwise, the Court held, it could neither describe nor deceive. The Court also recognized the alternate view that the perspective of the "ordinary consumer" may be irrelevant in this context because "any mark identifying a ware's authentic place of origin is invalid regardless of the public's perception of it." While the Court did not resolve this "jurisdictional divide" (which it denied even exists), it found that the trademark was invalid in any event. According to the Court, it is clear that Lingayen is a geographical location, which is known as both a place and a source of certain food products that are sold by the Plaintiff. The Court also found that the Plaintiff's goods originate from Lingayen. As such, the Court held that the wares are clearly descriptive of this place of origin, and thus not registrable under section 12(1)(d) of the Act. The Court also considered the alternate formulation, which considered the perceptions held by ordinary consumers. However, the Court held that regardless of which approach is taken to the question of geographic marks, the outcome is the same.

The Court also considered the Plaintiff's claim independent of trademark validity, and stated that "trademark infringement requires a defendant to use the trademark 'as a trademark', i.e. for the purpose of distinguishing its wares and services from others."

The Court held that the words "Lingayen Style" are not used as a trademark, the Defendant did not display the TM symbol with the words "Lingayen Style", and the words appeared in lesser-script immediately below the Defendant's trademark (which was prominent, according to the Court, and would be recognized as such by an ordinary consumer who was somewhat in a hurry). This led the Court to the conclusion that there could be no infringement under sections 19 or 20 of the Act.

Therefore, the Court granted the Plaintiff's motion for summary trial, but dismissed the Plaintiff's action for infringement, granted a declaration of invalidity in respect of the Plaintiff's trademark LINGAYEN, and ordered the trademark struck from the Register.

GHI found to be confusingly similar to the well-known mark GIA for use in association with diamond grading and other wares and services
Gemological Institute of America v. Gemology Headquarters International,
2014 FC 1153

This is a dispute over the registration of the trademark GHI by Gemology Headquarters International, for use in association with diamond grading, the issuance of diamond grading certificates, education in the field of gemology and other wares and services in the field of gemology. The applicant, the Gemological Institute of America, had opposed on the basis of their trademark GIA for the same wares, but lost before the Trademarks Opposition Board ("TMOB"). The Federal Court has reversed that decision and refused the registration of the GHI mark.

New evidence was filed on appeal that was found to have materially affected the decision of the TMOB, and thus a de novo review was conducted. The new evidence was directed to the deficiencies noted by the TMOB, and it was argued that it demonstrated the GIA mark was well known. The Court noted the new evidence, among other things, showed acquired distinctiveness and that the GIA mark was well known in Canada at all material dates. Now knowing the reputation of the GIA mark, the Court found the TMOB would have approached the confusion analysis differently.

The de novo analysis found that because the otherwise weak GIA mark has gained distinctiveness due to use and reputation in Canada, it deserves protection. As a matter of first impression, the small difference in the two marks was not enough to  avoid confusion. The application to register GHI
was refused.

Summary Trial in Trademark and Copyright Case Results in Dismissal of Plaintiff's Case
Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd., 2014 FC 1139

The Plaintiff brought a motion requesting that the matter proceed by way of summary judgment or summary trial, which was agreed to by the Defendants. Accordingly, the Court ordered the matter to proceed as a summary trial based on the material that had been filed by the parties in relation to the motion.

The Plaintiff publishes a daily newspaper in India called the Ajit Daily, and the Bains Defendants publish a weekly newspaper in Canada called the Ajit Weekly. The Plaintiff alleged passing off pursuant to section 7(b) and 7(c) of the Trademarks Act, and claimed against the Defendant Master Web for being the printer. There was also a copyright infringement issue, in respect of which the Court was required to determine whether a partial settlement agreement in the United States was dispositive.

The Court noted that it was not provided with any expert evidence relating to the interpretation of the U.S. settlement agreement but ultimately found that the agreement permitted the use of the masthead as currently used by the Bains Defendants. Accordingly, the Court dismissed the copyright claim against the Bains Defendants.

The Court found that the Plaintiff did not succeed in demonstrating that goodwill exists in Canada in respect of the trademark. The Court also concluded that the Ajit Weekly would not be confused with the Ajit Daily, and the Plaintiff had not demonstrated that damage had been caused by the Ajit Weekly. The Court also dismissed the Plaintiff's claim against the printer, Master Webb, and dismissed the counterclaim by the Bains Defendants as to false and misleading statements made about the Ajit Weekly.

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