A recent decision of the Federal Court illustrates some important points about trademark infringement.
The Black & Decker Corporation (Black & Decker) and its Canadian licensee brought an application in the Federal Court claiming, among other things, trademark infringement. Proceedings seeking relief for the violation of the Trademarks Act may be brought by way of application in the Federal Court. An application proceeds in a more summary fashion then a regular action. Evidence is submitted by affidavit and there is no provision for discovery of the parties or of documents.
Black & Decker
Black & Decker owns the Canadian trademark registrations for the word mark PIRANHA and PIRANHA Design for use association with "saw blades for power saws and circular saw blades". The design is reproduced below
Piranha Abrasive Inc. (Piranha Abrasives) used the tradename Piranha Abrasives and filed a trademark application for PIRANHA ABRASIVES & Design trademark used on abrasive saw blades as shown below.
Black & Decker made multiple requests that Piranha Abrasives cease use of their tradename and trademark on the basis that such use was likely to be confusing with Black & Decker's registered trademarks but Piranha Abrasives' refused to do so.
Section 19 of the Act provides Black & Decker, as the owner of the PIRANHA marks in Canada, with the right to the exclusive use of its PIRANHA marks throughout Canada, in association with the goods covered by the registrations. Section 20 deems this right to be infringed by a person not entitled to its use who sells, distributes or advertises wares or services in association with a confusing trademark or tradename.
The test for confusion applied is "a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the trademark at a time when he or she has no more than an imperfect recollection of the prior trademarks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks."
The statutory factors to be applied are as follows:
6.(5) In determining whether trademarks or tradenames are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trademarks or trade names and the extent to which they have become known;
(b) the length of time the trademarks or tradenames have been in use;
(c) the nature of the goods, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trademarks or trade-names in appearance or sound or in the ideas suggested by them.
Piranha Abrasives argued that there was no evidence of actual confusion between the respective marks despite over four years of co-existence. In addition they presented evidence of the absence of confusion by their distributors. However, the judge found that this was not a case where evidence of actual confusion would readily be available if the allegation of likelihood of confusion was justified.
Piranha Abrasives also argued confusion was not likely because Black & Decker's PIRANHA marks were always used with the very well-known BLACK & DECKER trademarks. While the judge agreed this was a factor to be considered, he did not accept that simply because a house brand or trademark, such as BLACK & DECKER, was used in association with a product trademark, such as PIRANHA or PIRANHA and Design, and may be somewhat more prominent, it results in a subjugation or erosion of the distinctiveness of the product trademark. This was not the case in the application.
Piranha Abrasives used its PIRANHA ABRASIVES & Design trademarks on diamond abrasive cutting, polishing and grinding tools for use with marble, granite, glass, porcelain, tile and concrete, including diamond abrasive circular saw blades, for use on power saws. Black & Decker's past and current use was of its trademark in association with circular saw blades and saw blades for power saws primarily designed to be used on wood or wood related materials. However the judge said that the proper focus was what Black & Decker's registered trademarks authorized it to have the exclusive right to do, in using their registered trademarks in Canada, not what it is doing at the current time.
When the judge considered the statutory factors noted above he concluded that Piranha Abrasives' use of the PIRANHA ABRASIVES & Design trademark on abrasive circular saw blades was likely to be confusing with the registered trademarks of Black & Decker.
The judge was kinder to Piranha Abrasives concerning the relief granted to Black & Decker. He refused to award lost profits, but awarded nominal damages of $10,000 for trademark infringement. In addition, Piranha Abrasives was given ninety (90) days to sell off any infringing inventory of the abrasive circular saw blades and otherwise destroy or deliver up any remaining infringing inventory of these saw blades to Black & Decker.
Applications seeking relief from infringement will likely become much more common in the future because they can proceed more quickly than a regular action and the associated cost savings. However, proceeding in this way will not be appropriate in cases where discovery is required to determine the scope or nature of the respondent's activities.
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.