Date: 20030131
Docket: T-486-98
Neutral Citation Number: 2003 FCT 106
BETWEEN:
JONATHAN, BOUTIQUE POUR HOMMES INC.
Plaintiff
- and -
JAY-GUR INTERNATIONAL INC.
Defendant
REASONS FOR ORDER AND ORDER
(Delivered from the bench in Ottawa, Ontario,
on Thursday, January 30, 2003)
HUGESSEN J.
[1] This is a motion for summary judgment brought by the defendant.
[2] Both plaintiff and defendant have registered marks which include the word "Jonathan". The plaintiff's mark is simply the word "Jonathan" used in association with its boutique stores for men's clothing. The defendant's two registered marks are for items of apparel and include the word "Jonathan" followed by the letter "G". Both the defendant's registrations are for marks shown in cursive script. The marks are what used to be called "design" marks and show the word "Jonathan" and the letter "G" in script form.
[3] The plaintiff has sued the defendant for trade mark infringement and passing off. In its examination for discovery, the plaintiff makes it clear that it complains only of the defendant's use of its marks written in block letters and not in script. The plaintiff also has put evidence in the record that its use of the mark in various forms has always been with the word "Jonathan" in block capital letters.
[4] The basis of the defendant's present motion for summary judgment is the recent decision of the Ontario Court of Appeal in Molson Canada v. Oland Breweries Limited (2002), 59 O.R. (3d) 607 (C.A.). That decision applied the well established rule that the use of a registered trade mark is an absolute defence to an action in passing off. The question, of course, is whether or not the defendant in this case is using its registered trade marks. It is certainly not (at least in those activities forming the subject matter of the present action) using its trade marks exactly as they are registered. The question is whether to use the words of the case law, it is "substantially deviating" from its registered marks or is simply using the "essential elements" of its registered marks.
[5] That, of course, is a question of fact. Defendant's counsel, in a very able presentation, none the less able for the fact that I disagree with it, submits, based on some language used by the Ontario Court of Appeal in the Molson case ( supra), that any questions as to the state of the register or as to possible confusion between the defendant's current use of its marks and the plaintiff's current use of its mark are irrelevant to its section 19 defence. I disagree. The Court cannot so restrict itself and must have regard to the realities. I am convinced that a Court must look at all the circumstances of the case; at the state of the market and of the register; at the circumstances in which the defendant is currently making use of the marks "Jonathan G" (that is to say in block letters); and at the fact that such use is very similar, I will not say identical, but clearly with many points of similarity to the use made by the plaintiff of its registered trade mark "Jonathan". That issue can only be decided after a trial, at which the Judge will have to look at the evidence and decide whether the defendant's use is an insignificant deviation from its registered mark, in other words, whether it is a use of the essential elements of its marks, or whether it goes beyond that and creates an impermissible confusion with the plaintiff's registered mark.
[6] I do not disagree with what the Ontario Court of Appeal said in Molson (supra), but the decision must be read in context and it is to be remembered that in that case the mark upon which the defendant Oland relied, was a design mark and was being used in substantially the same form. There was almost no difference between the mark as registered and the mark as used. That is not this case and a decision as to the degree of the variation between the registered mark and the mark as used, can only be made after a full trial. Accordingly, I will dismiss the motion for summary judgment. I will hear counsel upon the question of costs.
ORDER
The motion is dismissed; plaintiff shall have its costs to be assessed under Column III, payable forthwith and in any event of the cause.
Judge
Ottawa, Ontario
January 31, 2003
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF SOLICITORS AND SOLICITORS ON THE RECORD
COURT FILE NO.: T-486-98
STYLE OF CAUSE: JONATHAN, BOUTIQUE POUR HOMMES INC.
v.
JAY-GUR INTERNATIONAL INC.
PLACE OF HEARING : Ottawa, Ontario
DATE OF HEARING: January 30, 2003
REASONS FOR ORDER AND ORDER
OF THE HONOURABLE MR. JUSTICE HUGESSEN
DATED: January 31, 2003
APPEARANCES:
Eric Lalanne
Marie-Laure Leclerc FOR THE PLAINTIFF
Nicholas McHaffie
Mirko Bibic FOR THE DEFENDANT
SOLICITORS ON THE RECORD:
De Grandpré Chait
Montréal, Québec FOR THE PLAINTIFF
Stikeman Elliott
Ottawa, Ontario FOR THE DEFENDANT
Email this Content