A recent decision of the Federal Court reaches a
surprising result concerning a claim for infringement of a
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
Travelway developed two new logos for which it obtained
registrations in the form set out below:
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 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
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.
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
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
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.
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A recent decision of the Federal Court of Canada has highlighted the difficulties in asserting trademark and copyright rights related to the appearance of functional products with unique design elements.
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