The decision revolved around trademarks owned by two companies:
the word PIRANHA and two PIRANHA logos, all registered as
trademarks by Black & Decker at least 20 years ago in
association with "saw blades for power saws and circular saw
blades"; and a PIRANHA logo used since 2010 by Piranha
Abrasives Inc. in association with "diamond abrasive cutting,
polishing and grinding tools" and associated machines.
When Black & Decker became aware of Piranha Abrasives'
website and activities, including use of the trade name Piranha
Abrasives and a trademark application to register its logo, it
brought an application for trademark infringement, passing off, and
depreciation of goodwill.
A key difficulty for Black & Decker was that use of their
registered marks appears to have been sporadic and declining.
For example, sales of products bearing their marks declined
from over $600,000 in 2004 to an estimated $9,273 in 2014.
In this light, the court concluded that Black & Decker did
not have sufficient goodwill in the marks to bring a claim in
passing off (para. 103). Nor was there sufficient reputation to
support a claim for depreciation of goodwill (para. 109).
Without a registration, this would have been the end of Black
& Decker's claim, and Piranha Abrasives would have been
free to continue using its mark.
However, because Black & Decker had obtained trademark
registrations for its brands, the court reviewed whether a
likelihood of confusion existed between Black & Decker's
registrations and Piranha Abrasives' trademark and trade
name. It concluded that a likelihood of confusion did exist
with Piranha Abrasives' circular saw blades, and that Piranha
Abrasives had therefore infringed Black & Decker's
registered trademarks. Accordingly, the court ordered an
injunction against Piranha Abrasives, and awarded damages and costs
to Black & Decker.
This decision is a prime illustration of the importance of
registering one's trademarks in Canada, and possibly
beyond. Indeed, obtaining a trademark registration may be one
of the most cost effective ways of protecting your business.
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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