Responsive Brands, the owner of the MISTER TRANSMISSION mark,
has successfully maintained an action for infringement of its mark
against the Defendant.
The Defendant used the trade and business names MASTER
TRANSMISSION and MASTER TRANSMISSION & DRIVELINE. The Plaintiff
alleged these names were confusingly similar to its mark and
infringed it, as well as alleging passing off and depreciation of
It was stated that the Defendant had previously worked for the
Plaintiff and had sought approval to establish a new franchise
location in the Huntsville, ON area, but they never put together a
formal franchise application. The Defendant subsequently opened up
an independent transmission repair shop.
After a review of the evidence, the Court held that there was
insufficient evidence that any consumer had actually been confused
or misled since the Defendant opened its business. The evidence of
confusion was described as coming from individuals other than
potential purchasers of transmission services: courier drivers,
tow-truck operators and a third party parts supplier.
Nevertheless, despite the lack of evidence of actual confusion,
the Court found there was a likelihood of confusion between the
Plaintiff's trademarks and the Defendant's trade and
The other claims were unsuccessful.
In the end, the Court ordered an interim and permanent
injunction restraining the Defendant from further infringement, and
ordered that the quantification issues be decided in a separate
Quia timet claim not struck from patent infringement suit
We previously reported on the appeal of a refusal to strike out
a statement of claim, which was dismissed, during the week of April 4, 2016. In the previously
published Gilead Sciences, Inc. v. Teva Canada Limited, 2016
FC 336, the Court had dismissed Teva Canada Limited's
appeal from the Prothonotary's Order declining to strike out
Gilead's Statement of Claim in its entirety. The Prothonotary
struck some of the pleadings, but allowed the action to continue on
the basis of amended allegations of a likely future (quia timet)
The original underlying decision has now been published by the
Court as 2016 FC 31.
The Canadian Intellectual Property Office has issued a report entitled IP Canada Report 2016, discussing trends in IP use domestically, and by Canadians abroad, based on analysis of CIPO's internal data and those collected by the World Intellectual Property Organization.
The value of reliance on a trade-mark registration, as opposed to prior use, stands out sharply in the recent Federal Court of Appeal case of Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. ( 2016 FCA 256 October 28, 2016).
This is an appeal from the Federal Court's decision setting aside the Registrar of Trade-marks decision to the extent that it dismissed the applicant's opposition regarding the mark PIZZAIOLO and Design.
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