Canada: Multiple Claims Against A Competitor For Passing Off, Copyright And Trademark Infringement Are Dismissed On Summary Judgment (Intellectual Property Weekly Abstracts - Week Of July 11, 2016)

Last Updated: July 18 2016
Article by Chantal Saunders, Beverley Moore and Adrian J. Howard

Most Read Contributor in Canada, September 2016

Patent Decisions

Solicitors for the defendants are not removed as counsel even though the plaintiffs had contacted them about representation years prior

C. Steven Sikes, Aquero, LLC v. Encana Corporation, Cenovus Fccl Ltd., 2016 FC 671

The Federal Court has upheld a decision to not remove counsel as solicitors of record for the defendants. The plaintiffs had argued that when they were seeking counsel for this proceeding they had imparted confidential information to the sollicitors who are now counsel to the defence.

It was revealed that the Prothonotary had found that during the initial phone call the solicitors obtained general information for the purpose of conducting a conflict of interest search. The Prothonotary had found that the review of the patent and further discussions regarding the technology and the marketplace did not occur. The Prothonotary declined to remove the solicitors from the case.

On the appeal, the Court found that this was a discretionary order of a case management judge that is founded upon significant factual findings and credibility findings for which the standard of review is very high. The Court upheld the decision that a reasonable person, with knowledge of all the relevant facts, would not form the belief that counsel to the defendants received confidential information as part of a solicitor and client relationship that could be used to the prejudice of the plaintiffs.

Trademark and Copyright Decisions

Multiple claims against a competitor for passing off, copyright and trademark infringement are dismissed on summary judgment

Boaden Catering Limited v. Real Food For Real Kids Inc. et al., 2016 ONSC 4098

This is a dispute between two competitors. RFRK specializes in providing catering services geared to young people such as children attending day care or before and after school programs.  Boaden has a broader based catering business which has a division called Organic Kids Catering.

Boaden brought multiple claims against the defendants, but we will only address those that relate generally to IP. All the plaintiff's claims were dismissed on summary judgment.

The defendants operated a website at for approximately 10 years which featured the marks Real Food For Real Kids, RFRK and Real Food Lunch Club. Boaden subsequently registered the following domain names:

a) Realfoodforrealkidss(.com) [sic]

b) Realffoodforkids(.ca) [sic]

c) Rfrk(.ca)

d) Realfoodlunchclub(.ca)

RFRK had previously complained to the Canadian Internet Registration Authority ("CIRA") regarding the domain name use, but CIRA has a policy that it will not implement the decision of an arbitral panel if a Canadian court action is pending in respect of the domain name at issue. Thus, after hearing the evidence, the Court held that Boaden registered the domain names in bad faith for the purpose of exploiting the value of RFRK's trademarks or otherwise for illegitimate financial gain. The Court dismissed the claims by Boaden for a declaration that it is the lawful owner of the domain names set out above.

Boaden also claimed a theft of trade secrets and corporate espionage because the defendants sent a private investigator to meet with the plaintiff and pose as a prospective customer. The Court held the information conveyed was not confidential and it was not communicated in confidence, therefore this claim was dismissed.

Boaden further claimed for passing off, copyright and trademark infringement, alleging that RFRK updated its website by borrowing ideas off Boaden. The Court noted the alleged similarities included:

a) footers at the bottom of a page with items such as "About Us" and "Contact Us";

b) Boaden's website allows a video to be accessed on a link "OKTV" while RFRK has a video available on "FMTV";

c) Boaden has a menu available and RFRK has added a menu to its website;

d) their contact page "looks almost identical" in that they both have photos of food and both ask for the first and last names and email addresses of persons sending a message;

e) both websites discuss corporate missions and values; and

f) Boaden provides an "international" menu selection while RFRK offers a "globally inspired section".

The Court held that these were highly generic features commonly seen on websites, thus the allegations of passing off and confusion were dismissed.

As for the copyright in the menu, the Court held that all menus share certain characteristics in that they list what items are offered on what day and at what time. But, the Court noted that Boaden and RFRK menus otherwise have quite different and distinct layouts and dismissed the copyright infringement claim.

With these and the other claims all dismissed, the Court awarded summary judgment to the defendants.

Copyright infringement claim is dismissed after the Court finds the applicant is not the author and owner of the works

Andrews v. McHale, 2016 FC 624

This is an application for declarations and remedies related to alleged copyright infringement and infringement of moral rights. The applicant claims rights in four software systems, and seeks damages and an accounting of profits for copyright infringement.

Following the disposition of three pre-hearing motions, the Court proceeded to find that although the applicant had registered the copyright in the works, his contributions did not make him an author of the works. This fact alone resulted in the Court dismissing the application, as his claims to both copyright ownership and moral rights were based on him being an author.

The Court declined to expunge the applicant's copyright registration because of a lack of jurisdiction. Without a separate application seeking expungement the Court lacked the jurisdiction to grant this relief, as well as the request for a declaration as to authorship and ownership.

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