- with Inhouse Counsel
- in Canada
- with readers working within the Oil & Gas industries
A trademark registration grants the owner the "exclusive right to the use throughout Canada of the trademark in respect of those goods or services" (Trademarks Act, section 19). However, that exclusive right may not extend to the recovery of monetary damages where the owner and the infringer operate in significantly separate geographical locations.
In Fruiticana Produce Ltd. v. Fruitocana Inc., the registered trademark owner operated a chain of grocery stores in British Columbia and Alberta for over thirty years and owned several registrations comprising or consisting of "Fruiticana". The infringer operated a grocery store in Toronto, Ontario under the name "Fruitocana".
The Federal Court found that there was clear confusion between the infringer's name and the owner's registered trademarks and granted the owner an injunction preventing the infringer from using the Fruitocana name. However, the Federal Court declined to award any monetary damages on the basis that there was no evidence allowing the Court to infer that the owner had suffered any damage. The Court noted that the infringer's operation was located more than 3,000 km away from the owner's operations, and that it was "difficult to imagine that the defendant's operations have caused a loss of sales to the plaintiff, unless one goes grocery shopping by plane.
The full decision may be found here.
Exclusive Right From Registered Trademark May Not Include Cross-Canada Recovery Of Damages
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.
