Horn Abbot Ltd. v. Thurston Hayes Developments Ltd., docket T-32-85

     T-32-85

BETWEEN:

     HORN ABBOT LTD.

     CHIEFTAIN PRODUCTS INC.,

     Plaintiffs,

     - and -

     THURSTON HAYES DEVELOPMENTS LTD.,

     DUTHIE BOOKS LTD., BRIAN THURSTON,

     THOMAS HAYES, CAJAMAR MANUFACTURING INC.,

     J.W. HARBORD COMPANY LTD., SXL MARKETING INC.,

     JOHN DOE and Other Persons Unknown,

     Defendants.

     REASONS FOR JUDGMENT

REED J.

     The plaintiffs commenced an action for a declaration that the defendants, by developing, manufacturing or selling a board game under the trade-mark SEXUAL PURSUIT, infringed the plaintiffs' exclusive rights in its registered trade-marks. The plaintiff, Horn Abbot Ltd., is the owner of two trade-marks: TRIVIAL PURSUIT and design, registration No. 272,481 and TRIVIAL PURSUIT, registration No. 291,533. These registrations issued on September 3, 1982, and June 1, 1984, respectively.

     In addition to a declaration that the trade-marks have been infringed, the plaintiffs seek a declaration that the defendants directed public attention to the SEXUAL PURSUIT games in such a way as to cause, or be likely to cause, confusion between the SEXUAL PURSUIT games and the TRIVIAL PURSUIT games, contrary to subsection 7(b) of the Trade-marks Act.¹ The plaintiffs seek, as well, a declaration that the defendants depreciated the value of the goodwill attaching to the plaintiff Horn Abbot's registered trade-marks, contrary to section 22 of the Act.²

     The plaintiffs claim: a permanent injunction to restrain the defendants from manufacturing, distributing or selling a game in association with the trade-mark SEXUAL PURSUIT, or in association with any other mark confusing with the plaintiff's registered trade-marks; an order allowing for the destruction of all copies of the game SEXUAL PURSUIT that are now held in storage by an independent custodian; an award of damages and the costs of this action. There is a claim, as well, for industrial design infringement set out in the statement of claim. This has now been abandoned; the design registration has expired.

     This action was started on January 4, 1985. An interlocutory injunction was issued against the defendants on February 6, 1985, restraining them, until final disposition of this action at trial, from manufacturing, distributing or selling a game in association with the trade-mark SEXUAL PURSUIT, or any other trade-mark confusing with the plaintiff's marks. Since that time there have been a number of changes to the status of the parties. The plaintiff, Chieftain Products Inc., was a licensee of the plaintiff Horn Abbot Ltd. from 1984 to 1988. It is no longer, and has taken no interest in the trial.

     The defendants Thurston Hayes Developments Ltd. and SXL Marketing Inc. have both been struck off the British Columbia Companies Register and dissolved. This occurred on June 30, 1988 and May 6, 1988, respectively. Those companies were directed and controlled by the defendants, Brian Thurston and Thomas Hayes.

     The defendants Duthie Books Ltd. and Cajamar Manufacturing Inc. agreed to consent judgments being filed against them, on May 20, 1986, and April 10, 1986, respectively. The defendant, J.W. Harbord Company Ltd. had a default judgment entered against it on April 28, 1986.

     There were, as well, two other corporations who were at one time defendants: Creeds Limited and Livingston Distribution Centres. A discontinuance of the action as against Creeds Limited was filed on January 15, 1985. A settlement agreement and notice of discontinuance with respect to Livingston Distribution Centres was filed on January 17, 1986.

     That leaves Brian Thurston and Thomas Hayes as the remaining defendants. Mr. Hayes lives in New York city and indicated that he did not wish to involve himself in the trial. Mr. Thurston represented himself in defending the action.

     The idea for the game TRIVIAL PURSUIT originated with Chris Haney and Scott Abbott. They were joined in its development by John Haney and eventually Edward Werner who provided free legal advice. Horn Abbot was incorporated in 1980 with the four partners being shareholders. They test marketed the game in the latter part of 1981 and began trying to sell it in earnest in early 1982. By the end of 1983, approximately two and a half-million games had been sold in Canada. In 1984 approximately a million and a third more were sold in Canada, and twenty million were sold in the United States. The game was a phenomenal success.

     In early 1984, Tom Hayes and Brian Thurston, having played TRIVIAL PURSUIT, conceived the idea of creating a similar game named SEXUAL PURSUIT, which would have as its content questions and answers relating to matters of a sexual nature. A great deal of effort was put into collecting appropriate questions and answers. Messrs. Thurston and Hayes sought to ensure that the questions and answers were not offensive or exploitative. They obtained original art work for their game, including graphics for the game board. They used an hexagonal pattern on the board instead of the round one used in TRIVIAL PURSUIT. They used the same play pattern as TRIVIAL PURSUIT. They used an identical number of spaces on each of the six spokes that connect the centre of the board to the corners of the hexagonal as are found on the spokes of the TRIVIAL PURSUIT board. They used an identical number of spaces between spoke ends as are found in the TRIVIAL PURSUIT board. In place of the "roll-again" spaces found on the TRIVIAL PURSUIT board, Mr. Thurston devised a category of question he called E-zone or erogenous zone questions. These were personal questions a player was expected to answer and for which there was no right answer printed on the cards that accompanied the game. It is not necessary to exhaustively canvas the similarities and differences between the two games. Messrs. Thurston and Hayes patterned their game on TRIVIAL PURSUIT and copied many aspects of it. I believe they did not intend to infringe the plaintiff's intellectual property rights but were conscious that they were creating a board game packaged and named in a manner similar to the latter that they hoped would have enough differences so that they would not be the subject of a successful infringement action.

     I turn, then, to the use of the trade-mark SEXUAL PURSUIT because it, and not the similarities between the games, must be the focus of this action. The 291,533 registration is for the trade-mark TRIVIAL PURSUIT. One class of wares for which use of that trade-mark is registered is described, as board games and equipment, namely playing cards, die, rules of play, question and answer cards, card boxes, player tokens and scoring wedges sold both as a unit and separately for playing a board game.

     The 272,481 registration is for the name TRIVIAL PURSUIT in a design. The design is one in which there are scrolled lines above and below the name, with a small pie-like circle also below the name; the name TRIVIAL PURSUIT is written in a florid script. The first two classes of wares in relation to which use is claimed are: (1) board game; (2) games and equipment for playing games, namely playing board, die, rules of play, question and answer cards, card boxes, player tokens and scoring wedges.

     The defendants Thurston and Hayes adopted the trade-mark SEXUAL PURSUIT for their board game. They printed that name on the box in which their game was packaged, in approximately the same place as the name TRIVIAL PURSUIT is found on the plaintiff's game box - not only on the top of the box but on the side panels as well. The boxes are almost identical in shape and size. They are both dark in colour - one is dark blue, the other dark brown. A perimeter outline is found on the top of both boxes and on the side panels. The defendants' SEXUAL PURSUIT name is printed in a florid type of script reminiscent of, though not identical to, the plaintiff's script. The defendants adopted a sub-title to the SEXUAL PURSUIT trade-mark "the oldest game in the world". The plaintiff has a sub-title on some of the side panels of its box: "what mighty contests arise from trivial things" " Alexander Pope". There is, of course, on each box, in small print, a designation of the respective manufacturers, Horn Abbot in one case, Thurston Hayes in the other.

     As with the TRIVIAL PURSUIT game, the SEXUAL PURSUIT game board has inscribed on each corner of the playing board the trade-mark. That name is also inscribed on the box that contains the question cards, in the same place as is the plaintiff's name inscribed on its card boxes. These interior boxes are similar in size and shape although the defendants' game only has one such box and it is larger than the plaintiff's.

     I turn then to the relevant provisions of the Trade-marks Act:

19. Subject to sections 21 and 32, the registration of a trade-mark in respect of any wares or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those wares or services.

20. The right of the owner of a registered trade-mark to its exclusive use shall be deemed to be infringed by a person not entitled to this use under this Act who sells, distributes or advertises wares or services in association with a confusing trade-mark or trade-name, but no registration of a trade-mark prevents a person from making

(a) any bona fide use of his personal name as a trade-name, or

(b) any bona fide use, other than as a trade-mark,

(i) of the geographical name of his place of business, or

(ii) of any accurate description of the character or quality of his wares or services,

in such a manner as is not likely to have the effect of depreciating the value of the goodwill attaching to the trade-mark.

6. (2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.

6. (5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including

(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;

(b) the length of time the trade-marks or trade-names have been in use;

(c) the nature of the wares, series or business;

(d) the nature of the trade; and

(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.

     (underlining added)

     In determining whether trade-marks are confusing, the Court must have regard to all surrounding circumstances and in particular, to the five considerations listed in subsection 6(5). In the present case, both TRIVIAL PURSUIT and SEXUAL PURSUIT, as trade-marks for a board game, are inherently distinctive. The trade-mark TRIVIAL PURSUIT, by the time the defendants commenced selling their game, was very well known. The game had become a massive and immediate commercial success. It had been the subject of extensive media coverage. Articles about it had appeared in major publications such as MacLeans, Time, Readers Digest, the Toronto Star. SEXUAL PURSUIT, as the name for a board game, was not well known. It was introduced to the market on December 19, 1984, and an injunction was issued on February 6, 1985. The plaintiffs' trade-mark had been in use for several years, the defendants was new. The nature of the wares to which each was applied is the same, as is the nature of the trade. As for the degree of resemblance between the trade-marks or trade-names in appearance or sound or ideas suggested by them, the two marks both consist of two words; the second of the two, PURSUIT, is identical. The first word in each is a three syllable word of approximately the same length, both ending with the letters "AL". As noted above, the script in which they are written is similar in style.

     In assessing confusion, it is not necessary to provide evidence of actual confusion. Likelihood of confusion is all that is necessary. In this case, however, there is some evidence of actual confusion. Mr. Abbot gave evidence of oral comments made to him that indicated that people thought that the source of the SEXUAL PURSUIT game was the same as that for TRIVIAL PURSUIT. A letter received by the defendants, dated February 17, 1985, from a Mrs. Embra shows an identification or association in the writer's mind between the two games. Mr. Thurston himself admitted that when one looked at the SEXUAL PURSUIT game, as packaged on the store shelf, there would be automatic association with TRIVIAL PURSUIT.

     In Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd. (1987), 14 C.P.R. (3d) 314 at 327, the Federal Court of Appeal described subsection 7(b) of the Trade-marks Act in the following terms:

Subsection 7(b) is a statutory statement of the common law action of passing-off, which consisted of a misrepresentation to the effect that one's goods or services are someone else's or sponsored by or associated with that other person. It is effectively a 3piggy backing3 by misrepresentation.

     (underlining in original)

Subsection 7(b) has three elements: (1) a directing of public attention to one's wares; (2) in such a way as to cause or be likely to cause confusion in Canada; (3) at the time the defendant commenced so to direct public attention. All three elements are met in this case. The defendants adopted a size, shape and colour of box with a perimeter design on the top and side panels, a script for the trade-mark, and a placement of the name on the box that were designed to raise and did raise an association of their game with the plaintiff's TRIVIAL PURSUIT game " an association that would lead a person to think that two came from the same source.

     The confusion caused by the appearance of the box in which the SEXUAL PURSUIT game is packaged is reinforced when the box is opened. Some of the similarities between the two games were mentioned above. In addition, both used a quad-fold board, a design that was relatively unique at the time. Both contain boxes of cards with six questions on one side and the relevant six answers on the other. The defendants' game, as noted, has a seventh question - an E-zone question, for which there is no prescribed answer. The player tokens in both cases use coloured elements, wedges in one case, coloured rings in the other, to indicate when a player has correctly answered a question in a designated subject category.

     The evidence establishes that the defendants infringed the plaintiff's trade-marks and directed public attention to their game, in a way that would likely create confusion between their wares and the wares of the plaintiff. The trade-mark and get up used was calculated to trade on the goodwill and commercial success enjoyed by TRIVIAL PURSUIT.

     Mr. Thurston's arguments in defence can be categorized as: (1) the plaintiffs' game was not all that original " it had borrowed elements from other games and used information compiled by others in books of trivia; (2) the name TRIVIAL PURSUIT is descriptive of the game and therefore is not a valid trade-mark; (3) the defendants' trade-mark SEXUAL PURSUIT is sufficiently different from the plaintiff's mark that there would be no confusion " there was in fact no confusion between the two games.

     The originality of the game per se is not an issue in a trade-mark case. The defendants' analysis of the evidence in this regard was reminiscent of defences in patent cases, where a defendant tries to demonstrate that an invention is not novel. This is not a relevant consideration in the present litigation. I note, however, that the plaintiff's game was novel. As in patent cases, it can be said to be new as a result of combining known elements into a new combination. The success of the game attests to the inventive ingenuity of its creators. At the same time, the fact that the plaintiff's and defendants' game boards had a similar configuration and that the play patterns were similar are not aspects of the evidence that I rely on for a conclusion in this case. I accept Mr. Thurston's arguments that these are not significant for present purposes.

     The defendants' argument that the name TRIVIAL PURSUIT is descriptive is based on the argument that the word "pursuit" is used as a generic description of some board games and that the pursuit of trivia is the object of the game. Therefore, it is argued TRIVIAL PURSUIT is descriptive of the game. I cannot so conclude. While pursuit is a generic name used to describe some board games, these are games in which there is a pursuit or chase element to the game, e.g., where one player chases the game token of the other(s), with a view to overtaking them and perhaps knocking them back to a preceding place on the board (e.g., Sorry, Parcheesi, Aggravation). TRIVIAL PURSUIT is not a pursuit game in that sense. There is a contest among the players as to who can amass the requisite number of correct subject category answers most quickly, but there is no pursuit of the other players' token pieces. Indeed, the play on the board is not directionally structured in a rigid way. In addition, while the object of the game is the recall of trivia by a player, this does not translate into TRIVIAL PURSUIT being descriptive of the game. Mr. Abbott pointed out that the name TRIVIAL PURSUIT was a "send-up". Trivial pursuit, in common parlance, describes an activity that is useless or frivolous. As applied to the plaintiff's board game it pokes fun at the game, or at those who play it, while at the same time it is being used in association with a trivia game and the word 3trivia3 is part of the word 3trivial3.

     The particular provisions of the Trade-marks Act to which Mr. Thurston's arguments pertain are found in subsections 12(b) and (c), and 12(e) when read together with section 10:

... a trade-mark is registerable if it is not ...

(b) ... clearly descriptive ... of the character or quality of the wares ... in association with which it is used ...

(c) the name in any language of any of the wares ... in connection with which it is used ...

(e) a mark of which ... has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind [or] quality, ... of the wares ...

     (underlining added)

These requirements are applied at the date of registration of the mark. Evidence as to the state of the adult game market after that time is not relevant.

     For the reasons set out above it is clear that the name TRIVIAL PURSUIT could not be said to be clearly descriptive of the character or quality of the wares. The words "trivia game" might be such but the trade-mark TRIVIAL PURSUIT is not. The trade-mark is not the name of any of the wares. While there are trivia games and pursuit games, the name trivial pursuit is not a nomenclature that had been used to describe any game, game board, token etc. at the time of the registration of the plaintiff's marks. Nor was the nomenclature used in ordinary commercial usage to designate the kind or quality of the wares. One considers the mark in its entirety " the two words together. Merely because the game is a trivia game and the word trivia is found in the word trivial does not make the trade-mark TRIVIAL PURSUIT descriptive of the wares, or the name of the wares. Whether or not the term trivial pursuit had become a generic term descriptive of trivial games was considered in Selchow & Righter Co. v. Decipher, Inc. (1984), 225 USPQ 77 at 87 - 88 (Dist. Ct., E.D. Virginia). The Court in that case held that it was not and in addressing secondary meaning stated:

The Court therefore concludes that the trade dress of the TRIVIAL PURSUIT question cards and the box wrap of the Genus Edition as well as the box wrap of the subsidiary card sets, namely, Silver Screen, All-Star Sports and Baby Boomer, have acquired secondary meaning. Indeed, the defendant has not seriously contested the question of secondary meaning and inasmuch as conceded this point during argument. By virtue of the TRIVIAL PURSUIT phenomenon, the Court is of the opinion that TRIVIAL PURSUIT is a strong trademark and a famous name and, as such, entitled to broad protection because "counterfeits more successfully prey on strong marks than on weak" ones. ...

     Mr. Thurston's arguments concerning the unique elements that he and Mr. Hayes brought to the creation of their game and the amount of time and effort they spent in order to find appropriate questions and answers are set out above. Unfortunately for the defendants those unique features cannot save them from a successful infringement action where they have adopted a trade-mark for their game and packaged it in the manner described above, so as to lead a consumer to associate the defendants' game with the plaintiff's.

     Mr. Thurston argues that the trade-dress that was adopted for SEXUAL PURSUIT was not unique; that it was a trade-dress common to the industry; that the plaintiff itself adopted variations in the trade-dress under which it sold various versions of its game. Again, one must look at the situation in the market in late 1984. At the time the plaintiff adopted the packaging for its game in 1981, that packaging was very distinctive. None of the games introduced into evidence from that era and earlier had a package similar to the plaintiff's. Most board games were packaged in rather shallow rectangular boxes. Most had bright pictures or graphics on the box. The game packaging closest in appearance to the plaintiff's was SUPER QUIZ, a trivia game that was introduced in late 1983. That game, while in a box of almost square dimension, that is not shallow, borrowed elements of the plaintiff's package style. Indeed, the plaintiff was consulted by that games maker before it was put on the market. The trade-dress of SUPER QUIZ as a whole, however, is not confusing with the plaintiff's.

     Mr. Thurston argues that the game SEXUAL PURSUIT would not be confused with TRIVIAL PURSUIT. Certainly, no one who wanted to buy a TRIVIAL PURSUIT game would buy the SEXUAL PURSUIT game by mistake. A consumer would not be confused into thinking that two games were the same game. The confusion that was created was not that the games were the same but that they had the same origin. A consumer would likely associate the defendants' game as one originating from the plaintiff. The question to ask is whether as a matter of first impression, an average consumer having imperfect recollection could confuse the two games and think they originated from the same source. The fact that newspaper reporters and others who would have had reason to know that the source was different are not the group of people by reference to whom likelihood of confusion is assessed. As noted above, an average consumer would make an automatic association between the two games and assume they came from the same source.

     The evidence does not show that the plaintiff suffered any damage from the sale of the defendants' game. The defendants' game was on the market for a very short time. There is no evidence that a consumer bought the defendants' game thinking it was buying TRIVIAL PURSUIT. While the plaintiff argues that the subject matter of the game might render it offensive to the customers of some of the large retail stores that sell TRIVIAL PURSUIT, the defendants sold their game to stores that could be described as being at the high end of the market: Creeds (in Toronto); Duthie Books (in Vancouver); Bloomingdales (in New York) and Harrods (in London). There is insufficient evidence to conclude that the plaintiff suffered damages as a result of the defendants' sales of SEXUAL PURSUIT.

     Judgment will issue granting a declaration and permanent injunction. The declaration will not include a finding that the value of the plaintiff's trade-marks was depreciated. No award of damages will be ordered since I do not find that the plaintiff suffered any damage. An order will issue permitting destruction of the SEXUAL PURSUIT games and components now being held by a custodian at the plaintiff's expense. Costs of this action and the storage costs that the plaintiff has incurred in keeping the games are fixed at $102,000.00 and shall be paid by the defendants to the plaintiff.

OTTAWA, Ontario.

September 25, 1997.

    

                             Judge

__________________

¹      R.S.C. 1970, c. T-10, s. 7:
         No person shall          . . . .
         (b)      direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another;          . . . .

²      22(1) No person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.