Canada: Distinctiveness And Infringement

Last Updated: September 21 2016
Article by John McKeown

A recent decision of the Federal Court reaches a surprising result concerning a claim for infringement of a registered trademark.

The Facts

Wenger S.A. ("Wenger") is a Swiss company who over a hundred years ago received a contract from the Swiss army to produce multi-function knives for its soldiers. The knives became famous and known as "Swiss army knives".

In the early seventies, Wenger adopted a trademark consisting of a cross in a rounded quadrilateral surrounded by an inlay border. Typically the cross is presented in white against a red or black background. The design is reproduced below.

(the "Wenger Cross Logo")

Wenger uses the Wenger Cross Logo and related variants throughout Canada in association with luggage and bags and owns trademark registrations for its marks.

Travelway Group International Inc. ("Travelway") was founded in the late 1970s. It mainly manufactures and distributes luggage and travel related products under its own trademarks or as a licensee for others.

Travelway was involved in a strategic alliance with a Swiss company, World Connect AG ("World Connect"), and agreed to assist World Connect in designing products for its Swiss travel products brand.

Travelway developed two new logos for which it obtained registrations in the form set out below:

The Dispute

Wenger alleged that Travelway in February of 2012 modified the logos appearing on its luggage and bags. The promenient "S" feature was altered making the "S" difficult to see. The modified logos are reproduced below:

the ("Modified Logos").

Wenger instituted an application to the Federal Court seeking a declaration that Travelway had infringed the Wenger Cross Logo and variants and related relief as well as an order expunging the two registrations owned by Travelway.

The Decision

The reasons for judgment do not set out the precise basis on which Wenger sought to expunge the Travelway's registered trademarks other than to say that it was alleged that they were invalid because they were confusing and not distinctive. Since no material dates were mentioned, it seems reasonable to assume that the attack was limited to distinctiveness, which would be determined as of the date that the proceeding was brought.

The court stated that the Travelway's registered trademarks did not leave the same impression nor did they closely resemble Wenger's Cross Logo and were unlikely to create confusion. The 'S' in both marks and the triangular shape of the second registered mark, acted as distinguishing elements. This finding was sufficient to deal with the alleged claim for expungement.

With respect to the claim for infringement based on the use of the Modified Logos, the judge carried out a more detailed confusion analysis.

When the judge considered the inherent distinctiveness of the Wenger Cross Logo and the extent to which it had become known, she referred to the fact that third parties were using a white cross and said that there was no evidence that consumers identified the Wenger Cross Logo as being unique to and distinctive of Wenger. As a result, it was concluded that consumers were not likely to know the Wenger Cross Logo as originating from one source, i.e. Wenger.

The judge said that the Modified Logos had coexisted with the Wenger Cross Logo since 2012 and that there was little or no evidence of confusion.

The court also referred to the fact that the Modified Logos had been used exclusively on the zipper pulls. The judge said that the zipper pulls were quite a small part of the luggage and bags and it was unlikely that the average consumer would even notice this type of detail.

As a result, the court was satisfied that from the perspective of the average consumer somewhat in a hurry, the Modified Logos used on luggage and bags by Travelway would not likely confuse consumers or to cause consumers to conclude that the luggage and bags was manufactured or sold by the same entity that sold the Wenger brand luggage and bags.


The finding of non-infringement relating to the Modified Logos is of some concern. The logos were very close to the Wenger Cross Logo. A finding of non-infringement is consistent with this mark being invalid.

In addition, the comment about the use of a zipper pull seems questionable. Presumably Travelway was knowledgeable about what affected consumers and they incurred the expense of using the logos in this fashion which is inconsistent with such a finding.

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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John McKeown
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