Canada: IP Monitor - Confusion About Confusion: Unpacking The Wenger Decision*

Doctrinal discipline in trademark cases is often sacrificed to expediency; the court knows infringement when it sees it. Unfortunately, this reactive approach often leads to analytical shortcuts, making it hard to reconcile conflicting decisions and even more difficult to predict future outcomes. The problem was exemplified in the Federal Court of Appeal's recent decision in Wenger S.A. et al. v Travelway Group International Ltd., 2017 FCA 215 (Wenger). Although the court probably came to the right conclusion, certain portions of the reasons are inconsistent with many of the leading authorities. A more principled approach is required.

The facts

The facts in Wenger are not complicated. Wenger S.A. is a Swiss company that has been associated with the famous Swiss Army knife for over 100 years. Wenger and its licensees commenced an application for infringement of three trademarks Wenger had registered for use in association with luggage:

Wenger claimed use of these marks since 2003.

Wenger's competitor, Travelway, owned two trademark registrations for use in association with luggage:

Travelway began using these marks in 2009.

In 2012, Travelway began modifying the Travelway marks; each modification brought them closer to the Wenger Cross Design.

  • The cross shape became narrower and longer;
  • The shape of the triangular background was less pronounced;
  • The background was displayed in either red or black – the tone of red was similar to that frequently used in the Wenger cross mark;
  • The border of the triangle was modified to be less prominent, to have a uniform thickness and to be metallic;
  • The "S" was sometimes etched in metal in a manner that resulted in the "S" being difficult to see; and
  • The "S" was omitted altogether in the luggage zipper pulls.

Confusion

The court's confusion analysis is confusing. Instead of analysing each use separately, the court gave an expansive scope to the Travelway Cross on Triangle Design and found that the Disappearing S Logo and the Missing S Logo were mere variants with the same dominant features. While Travelway conceded this was the case, presumably in an effort to shelter the variants under the protection of Travelway's own registration, such an expansive interpretation was unnecessary and arguably goes too far. In consequence, confusion was assessed by comparing:

This broad characterization of the scope of the Travelway Cross on Triangle Design was based on the Federal Court of Appeal's understanding of the Supreme Court of Canada's approach in Masterpiece.1 Masterpiece involved an application to expunge the trademark registration for MASTERPIECE LIVING on the basis that the registrant, Alavida, was not entitled to register its mark because, when the application was filed, it was confusing with trademarks that had previously been used or made known by Masterpiece Inc. The Supreme Court of Canada specifically considered the applicable test for assessing confusion between a proposed use trademark, MASTERPIECE LIVING, and existing, unregistered marks on a mark-by-mark basis.

In that context, the court held that a registration, when challenged, must be considered across its entire scope and without limiting it to the form in which the registered mark is actually used. Since the MASTERPIECE LIVING trademark was a "word mark," the registration was found to permit Alavida to use the words "Masterpiece Living" in any size and with any style of lettering, color or design. In contrast, in Masterpiece,the rights in the unregistered trademarks were more narrowly assessed based on the manner in which they had actually been used. Applying analogous reasoning to this case, the Wenger Cross Design would have been given an expansive scope but the marks used by Travelway, at least for purposes of assessing infringement and passing off, would not.

The problem really stems from the order in which the court heard the arguments in Wenger. By focusing on infringement and passing off first, the court did not address Wegner's request to expunge the Travelway Cross on Triangle Design and referred this matter back to the trial court. Doing so was, respectfully, an error. It ignores a long line of cases that have held that, "The use of a registered trademark is an absolute defence to an action in passing off where there is no significant difference between the mark as registered and the mark as used."2 Extending this principle to an infringement action should not be controversial. Presumably, the issue was not raised with the court.

In the circumstances, given the court's reasons, there is likely no room left to argue that the Travelway Cross on Triangle Design is valid. Accordingly, the inevitable result would appear to be the same. Nevertheless, the preferred route would have been for the court to first consider whether the Travelway Cross on Triangle Design, as registered, was confusing with the Wenger registrations and, if so, to expunge the Travelway marks. By first determining the validity of Travelway's registered marks, the court could have then assessed infringement and passing off on a mark-by-mark basis. Using that approach, Wenger could have claimed infringement in respect of the marks being used by Travelway and also would have been free to claim damages for any use of those marks that occurred after the Travelway registrations were expunged.

Reference as to damages

On an entirely separate issue, the Federal Court of Appeal also sent the issue of damages back to the trial court and invited the trial court to consider whether damages should be assessed by way of a reference. Since BBM Canada v Research in Motion Limited, 2011 FCA 151, taking trademark enforcement proceedings by way of application has become an attractive procedure. One of the drawbacks is the difficulty a trademark owner has in establishing, without discovery, the extent of the defendant's sales and profits. This impediment could be overcome if validity and infringement were established using an application and, once established, damages and profits could then be determined by reference.

A reference is a flexible procedure the court can use to determine an issue of fact. References are to be conducted using the simplest, least expensive and most expeditious procedure, which can include discovery. If trademark owners can obtain a permanent injunction restraining infringement on application, and then subsequently have damages or profits determined by reference, they may be able to enjoy the advantages of proceeding by application without compromising their ability to recover damages.

Footnotes

* This article is based on a webinar presentation presented on behalf of the Intellectual Property Institute of Canada on January 23, 2018.

1 Masterpiece Inc. v Alavida Lifestyles Inc., 2011 SCC 27.

2 See Remo Imports Ltd. v Jaguar Cars Ltd., 2007 FCA 258 at para. 111 et seq. and the cases cited therein.


About Norton Rose Fulbright Canada LLP

Norton Rose Fulbright is a global law firm. We provide the world's preeminent corporations and financial institutions with a full business law service. We have 3800 lawyers and other legal staff based in more than 50 cities across Europe, the United States, Canada, Latin America, Asia, Australia, Africa, the Middle East and Central Asia.

Recognized for our industry focus, we are strong across all the key industry sectors: financial institutions; energy; infrastructure, mining and commodities; transport; technology and innovation; and life sciences and healthcare.

Wherever we are, we operate in accordance with our global business principles of quality, unity and integrity. We aim to provide the highest possible standard of legal service in each of our offices and to maintain that level of quality at every point of contact.

For more information about Norton Rose Fulbright, see nortonrosefulbright.com/legal-notices.

Law around the world
nortonrosefulbright.com

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Goldman Sloan Nash & Haber LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Goldman Sloan Nash & Haber LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions