Date: 20080104
Docket: T-1863-07
Citation: 2008 FC 6
Ottawa, Ontario, January 4,
2008
PRESENT: The Honourable Mr. Justice Lemieux
BETWEEN:
CMAC MORTGAGES LTD.,
CMAC MORTGAGES (ALBERTA) LTD. and
ONTARIO MORTGAGE ACTION CENTRE LTD.
c.o.b. OMAC
Plaintiffs
and
CANADIAN MORTGAGE EXPERT
CENTRES LTD. c.o.b. CMEC,
ROBERT DOTZERT and WILLIAM JACOLETTI
Defendants
REASONS FOR ORDER AND ORDER
Introduction
[1]
The
matter before the Court is a motion by the plaintiffs seeking an interlocutory
injunction pending the disposition of their action against the defendants
commenced on October 24, 2007 claiming trademark infringement and/or passing-off
of services contrary to sections 7, 20, 7(b) and/or 7(c) of the Trade-marks
Act.
[2]
More
particularly, the plaintiffs seek, on an interlocutory basis, to restrain the defendants
from using the word CMEC, or any word confusingly similar to CMAC or OMAC, as a
trade name, corporate name, or business style, in association with a mortgage
brokerage business. The plaintiffs also seek to retrain the defendants from
using the domain names, CMECMORTGAGE.COM, CMECMORTGAGES.COM, or any domain name
having the word CMEC or any word confusingly similar to CMAC or OMAC. The plaintiffs
also seek an injunction restraining the defendants from passing-off and
threatening to pass off their mortgage brokerage business under CMEC as and for
that of the plaintiffs’ mortgage brokerage business under CMAC.
[3]
Specifically,
the plaintiffs do not seek to restrain the defendants from doing
business under the corporate defendant’s corporate name of Canadian Mortgage
Expert Centres Ltd.
[4]
The
Supreme Court of Canada’s decision in RJR – MacDonald Inc. v. Canada
(Attorney General), [1994] 1 S.C.R. 311 sets out the tri-partite
conjunctive test which an applicant for an injunction has the onus of
demonstrating:
(1) a preliminary assessment of the merits of the applicant’s case to ensure
that there is a serious question to be tried; (2) it must be determined the
applicant would suffer irreparable harm if the application was refused; and (3) an
assessment must be made as to which of the parties would suffer greater harm
from the granting or refusal of the remedy pending a decision on the merits.
[5]
The
central allegations made by the plaintiffs in their statement of claim are
that:
(1) the individual
defendants caused the incorporation on December 5, 2006 of the corporate
defendant “in order to carry on an identical mortgage brokerage business in
association with the confusing and deceptive CMEC trademark”;
(2) The individual defendants’
“intention was to use the defendant CMEC as a vehicle to pass-off its mortgage
business as that of the plaintiffs by means of the confusing and deceptive CMEC
trademark which is visually and phonetically and, as a matter of first
impression, indistinguishable from the plaintiffs’ CMAC trademark. Further, the
CMEC trademark is confusing with the plaintiff’s OMAC registered trademarks;
(3) In particular, the defendant
CMEC uses the CMEC trademark on, inter alia, building signage, business cards,
letterhead, website, advertising and promotion. The defendants visually and
phonetically refer to themselves as CMEC when transacting business with consumers
and lenders;
(4) Additionally, the defendants
have made a number of false and misleading claims in newspaper advertising and
on their website.
[6]
The plaintiffs
say these acts have unlawfully directed public attention to their business and
services in such a way as to cause or be likely to cause confusion in Canada between their business
and services with those of the plaintiffs contrary to section 7(b) of the Trade-marks
Act. The plaintiffs also say those acts have passed off and threaten to
pass off their services as for those expected and requested by members of the
public from the plaintiffs contrary to section 7(c) of the Trade-marks Act.
[7]
The
defendants have yet to file their statement of defense. I note, however, the
individual defendants have moved in writing under Rule 369 the Court to strike
their names as defendants and the corporate defendant seeks an extension of
time to file a statement of defense in that context. This motion is still
outstanding before a duty judge.
[8]
For
the reasons that follow I am of the view that this motion for an interlocutory
injunction must be dismissed. The main reason for refusing to grant the
requested injunction is that the plaintiffs have not demonstrated irreparable
harm would flow and the balance of convenience favours the defendants.
[9]
The
main affidavit evidence for the plaintiffs was provided by David Providenti who
is their owner/manager. He filed an initial and a reply affidavit. For the
defendants, the principal affidavit was deposed by Robert Dotzert. Both affiants
were cross-examined. As will be seen, both were associated in OMAC from 1994 to
2005. I should mention that on the hearing of this motion three affidavits were
tendered upon which there had been no opportunity to cross-examine. They were
sworn on December 14 and 15, 2007. Those affidavits which are discussed below
were from John Slater, from Ray Nickerson, a production consultant to OMAC
whose exhibits were sealed and a responding affidavit to these two affidavits
from Mr. Dotzert. The parties agreed I should admit these affidavits as
evidence and hear argument from the counsel as to the proper weight which
should be given to them.
Facts
[10]
Ontario
Mortgage Action Centre Ltd. carrying on business (c.o.b), OMAC was the first of
the parties in this action to engage in the residential mortgage business when
it began operations in 1993.
[11]
Mr.
Providenti describes the residential brokerage services offered by OMAC as
comprising mortgage refinancing, pre-approvals, renewals as well as related
financial services between the home buyer and seller (hereinafter the “Mortgage
Brokerage Business”). OMAC’s business is only carried on in Ontario.
[12]
He
deposes to the fact that in order to be registered in Ontario as a
Mortgage Broker, a person must meet certain requirements spelled out by the
Financial Services Commission of Ontario. Membership and accreditation with the
Canadian Association of Accredited Mortgage Professionals (CAAMP) additionally
permits mortgage brokers to designate themselves as an Accredited Mortgage
Professional (AMP).
[13]
He
states in his affidavit that OMAC offers and advertises its Mortgage Brokerage
Business to the public in association with its website accessible at the domain
names, www.omac-mortgages.com and www.omac.ca.
[14]
Mr.
Providenti refers to several trademark registrations for OMAC with the first
registration granted on October 7, 2003 for OMAC, in connection with mortgage
and loan brokerage and loan financing.
[15]
The
evidentiary record discloses Mr. Providenti and the defendant Robert Dotzert
were associates and then business partners in OMAC when both started out as
sales agents for OMAC in 1994. In July 1998, they both became minority owners
in OMAC and, in 2000 they acquired all of the outstanding shares in the capital
of OMAC on a 50-50 basis. Mr. Dotzert’s half of the shares were held in part by
his company St. Thomas Financial Systems Inc.
[16]
Mr.
Dotzert described his role in the expansion of OMAC after 1998 leading to the
opening of 25 new locations all in Ontario before he left OMAC in
2005 after being bought out by Mr. Providenti. He and Mr. Providenti differ
sharply on the circumstances which led to the severing of their business
relationship. At the present time, OMAC operates in 29 locations, all located
in Ontario.
[17]
The
evidentiary record also establishes the following:
a) For the Plaintiffs
1)
As
asserted by Mr. Providenti, OMAC’s corporate objective was to expand its
Mortgage Brokerage Business beyond Ontario by serving the rest of Canada. This would be done
under the banner of CMAC where the “O” for Ontario in OMAC is replaced by a “C” for Canadian
creating CMAC. For this purpose, OMAC in February 2002 applied for the
trademark “Canadian Mortgage Action Centre” stating a first use in Canada since February 1, 2002 in
respect of mortgage and loan brokerage and loan financing. OMAC obtained a
registration of that trademark in September 2003. On cross-examination, Mr.
Providenti acknowledged he was unaware of the registration and said it had not
been used as at February 1, 2002; it was registered in anticipation of future
growth (transcript of Providenti cross-examination, pages 37 and 38);
2)
The
first mention of CMAC occurred between May 16, 2006 and June 12, 2006 during a
series of seminars sponsored by CIBC’s First Line Mortgage. During this period,
Mr. Providenti states at paragraph 30 of his main affidavit that he introduced,
promoted and discussed the CMAC expansion. On cross-examination, at page 23 of
the transcript, Mr. Providenti acknowledged there was no business operating
under the name CMAC Mortgages at the time he gave the seminars. Moreover, at
page 24 of the transcript of his cross-examination, he acknowledged that it was
the CIBC who invited the mortgage brokers to attend the meetings and that they
were private meetings;
3)
CMAC
Mortgages was incorporated under the laws of Ontario on August 1, 2006 to
solicit, create and manage a common network of CMAC agencies that would provide
mortgage brokerage services to the public across the rest of Canada;
4)
CMAC
Mortgages never operated in Ontario (transcript of Providenti cross-examination,
pages 22 and 23);
5)
The
first concrete step in the CMAC expansion occurred in Calgary, Alberta. It was on August 24,
2007 that CMAC Mortgages (Alberta) Ltd. was incorporated as an Alberta Corporation and as the
first CMAC agency to provide brokerage services in that city;
6)
On
cross-examination, Mr. Providenti acknowledged the Calgary location opened
sometime in mid to late September 2007; it appears that CMAC Alberta took over
an existing brokerage business in that city and it was a question of changing
the signage. The first radio ads for the Calgary location were aired on October 1, 2007
(Transcript of Providenti cross-examination, pages 25, 26 and 30);
7)
As
at November 29, 2007, Mr. Providenti acknowledged during his cross-examination
that Calgary was the first and only location opened by CMAC Mortgages although
he stated CMAC Mortgages was working on other locations in Alberta and in other
provinces(Transcript of Providenti cross-examination, page 26);
8)
At
page 22 of the transcript of his cross-examination, Mr. Providenti acknowledged
that OMAC, “O” being for Ontario, really would not work
outside of Ontario. The logo which is
associated with the full corporate name or the acronym displays a map of Ontario;
9)
In
his affidavit and on cross-examination, Mr. Dotzert agreed that OMAC had
acquired some goodwill (Transcript of Dotzert cross-examination, p. 126);
10) The plaintiffs’ evidence
of actual confusion between and OMAC and CMEC consist of the following:
(a) Paragraph
28 of Mr. Providenti’s reply affidavit sworn November 23, 2007 containing a
double hearsay to the effect a director of programming at Rogers TV advised Mr.
Providenti that the producer of the CMEC TV show was surprised when the persons
being interviewed i.e. Messrs. Dotzert and Daniels were not OMAC. He assumed
they were;
(b) Two
supplementary affidavits sworn on Friday, December 14 and Saturday, December
15, 2007 and filed at the hearing of this motion on December 17, 2007. These
supplementary affidavits have previously been referred to in these reasons. The
first affidavit is by John Slater. He notes he often travels to St. Thomas and on his last visit
noticed what he thought was a new OMAC office on Ross Street. He states as he drove
by that evening he glanced up and caught sight of one side of the sign with
four letters that he thought spelled OMAC. He informed Mr. Providenti of this
on December 8, 2007 when he met up with him for a skiing trip. He was told by
Mr. Providenti that what he had seen was a CMEC office. The second affidavit
was sworn by Ray Nickerson, a production consultant with OMAC. He states that
on December 12th and 13th, OMAC’s head office in London received two faxes from
a mortgage lender which were intended for CMEC to the attention of Jamie Gelencher.
Those two faxes which are exhibits to his affidavit were received by the Court
on a sealed basis;
(c) A DVD
containing a CMEC TV show aired on December 23, 2007 which was viewed by the
Court and in respect of which Mr. Providenti states, in his reply affidavit,
constitutes evidence of passing-off;
(d) Various newspaper
ads; and,
(e) The content of the CMEC
website as at October 1, 2007 promoting the
defendants’ new
mortgage business.
b) For the Defendants
1) The
corporate defendant, CMEC was incorporated as an Ontario Corporation on
December 5, 2006 approximately 1½ years after Mr. Dotzert had left OMAC. In
his affidavit, he acknowledges the incorporators wanted to use the word
“Canadian” so that they would not be limited geographically in the future. He
also stated the incorporators wanted a relatively descriptive name so that
consumers could readily identify their business and services. They also wanted
to evoke a sense of specialty by using the word “expert”;
2) As at December 5, 2007, CMEC
only operated in Ontario and this at two locations – one in Aylmer, Ontario and the other
in St.
Thomas. He
stated CMEC has plans to open two other Ontario locations in the near future – one in
London and the other in Woodstock. Mr. Dotzert also acknowledges that CMEC has a
website at www.cmecmortgages.com;
3) At paragraph
23 of his affidavit, Mr. Dotzert states: “CMEC has adopted the acronym “CMEC”
with a distinctive design element that incorporates a house and maple leaf
design, which is used in all instances where the acronym is used (the “CMEC
Logo”). Further, the CMEC Logo is always accompanied by the full name of the
company on signage, business cards, letterhead and in all advertising. We have
also always asked our staff to answer the phone using the full company name”.
At paragraph 24 of his affidavit, he states that he was well aware that OMAC
uses its acronym with a distinctive map of Ontario outline in the background and adds: “Our
company logos are very different, and the ideas conveyed by our company names
are also different”. At paragraph 25 of his affidavit, Mr. Dotzert states that
in or about April 2007, CMEC advertised the opening of its mortgage and loan
brokerage services by posting the CMEC Logo and full trade name on store front
signage at the St.
Thomas location.
He adds that however, CMEC was not open for business until in or about mid July
2007, when the phone lines and computer systems went live.
The applicable legislation and jurisprudence
[18]
In
the Appendix attached to these Reasons for Order and Order I set out, in both
official languages, the definition of “confusing” in section 2 of the Trade-marks
Act as well as subsections 6(1), (2), and (5), paragraphs 7(b) and (c),
sections 20 and 22 of that same Act.
[19]
Justice
Binnie in Mattel, Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 772 neatly
summarized, at paragraph 6 of his reasons subscribed by all of the other
members of the Court the essence of section 6 dealing with confusion. He wrote:
[6] In opposition
proceedings, trade-mark law will afford protection that transcends the
traditional product lines unless the applicant shows the likelihood that
registration of its mark will not create [page782] confusion in the marketplace
within the meaning of s. 6 of the Trade-marks Act. Confusion is a defined
term, and s. 6(2) requires the Trade-marks Opposition Board (and ultimately
the court) to address the likelihood that in areas where both trade-marks
are used, prospective purchasers will infer (incorrectly) that the wares and
services -- though not being of the same general class -- are nevertheless
supplied by the same person. Such a mistaken inference can only be drawn here,
of course, if a link or association is likely to arise in the consumer's mind
between the source of the well-known BARBIE products and the source of the
respondent's less well-known restaurants. If there is no likelihood of a link,
there can be no likelihood of a mistaken inference, and thus no confusion
within the meaning of the Act. [Emphasis mine.]
[20]
The
concept of confusion is not only of critical importance to establish trademark
infringement, it is also central to the establishment of an action for passing-off.
The Supreme Court of Canada in Ciba-Geigy Canada Ltd. v. Apotex Inc.,
[1992] 3 S.C.R. 120 held that there were three necessary components to a
passing-off action: the existence of goodwill, deception of the public due to a
misrepresentation and actual or potential damage to the plaintiff. Passing-off
occurs when a person sells his own goods under the pretense they are the goods
of another person. At paragraph 62 of that case, Justice Gonthier stated that
confusion was the essence of the tort of passing-off.
[21]
From
Mattel, above, I draw three other principles applicable to the case at
hand:
(a) The
statutory test for confusion is likelihood of confusion taking into
consideration all of the surrounding circumstances including the five
circumstances specifically mentioned in section 6 of the Trade-marks Act
with each situation being judged in its full factual context.
(b)
An
opposing party to an injunction application is not required to show any
instance of actual confusion. However, the absence of such evidence is a
surrounding circumstance. At paragraph 55, Justice Binnie wrote that: “Evidence
of actual confusion would be a relevant "surrounding circumstance"
but is not necessary … an adverse inference may be drawn from the lack of such
evidence in circumstances where it would readily be available if the allegation
of likely confusion was justified.”
(c)
Likelihood of a mistaken inference is to measured by a mythical
casual consumer somewhat in a hurry recognizing, however, as Justice Binnie did
at paragraph 58: “A consumer does not of course approach every purchasing decision
with the same attention, or lack of it. When buying a car or a refrigerator,
more care will naturally be taken than when buying a doll or a mid-priced meal.”
Justice Gonthier in Ciba-Geigy, above expressed the same thought at
paragraph 52 of his reasons.
[22]
In
terms of the notion of a irreparable harm, I cite paragraph 59 of the reasons
of Justices Sopinka and Cory in RJR – MacDonald Inc., above:
[59] "Irreparable"
refers to the nature of the harm suffered rather than its magnitude. It is harm
which either cannot be quantified in monetary terms or which cannot be cured,
usually because one party cannot collect damages from the other. Examples of
the former include instances where one party will be put out of business by the
court's decision (R.L. Crain Inc. v. Hendry (1988), 48 D.L.R. (4th) 228 (Sask. Q.B.)); where one party
will suffer permanent market loss or irrevocable damage to its business
reputation (American Cyanamid, supra); or where a permanent loss of natural
resources will be the result when a challenged activity is not enjoined
(MacMillan Bloedel Ltd. v. Mullin, [1985] 3 W.W.R. 577 (B.C.C.A.)). The fact that one party
may be impecunious does not automatically determine the application in favour
of the other party who will not ultimately be able to collect damages, although
it may be a relevant consideration (Hubbard v. Pitt, [1976] Q.B. 142 (C.A.)).
[23]
Also
in terms of irreparable harm, I cite the reasons for judgment of Justice Heald
on behalf of the Federal Court of Appeal in Centre Ice Ltd. v. National
Hockey League et al, (2004), 53 C.P.R. (3d) 34 for the following
propositions:
·
The
evidence as to irreparable must be clear and not speculative;
·
It
is necessary for the evidence to support a finding that an Applicant would
suffer irreparable harm. A finding by a Court that an Applicant would be likely
to suffer irreparable harm is insufficient to warrant the grant of an
interlocutory injunction;
·
A
finding of confusion between competing products does not necessarily lead to a
loss of goodwill for which a plaintiff cannot be compensated in damages. In
other words a loss of goodwill does not, per se, establish irreparable harm not
compensable in damages;
·
The
loss of goodwill and the resulting irreparable harm cannot be inferred. It must
be established by “clear evidence”. In Centre Ice Ltd., above, Justice
Heald said he could not conclude, on the record before him, that a loss of
goodwill had been established. He was of the view that none of the evidence
established that the plaintiff’s reputation had been impeached or lessened in
any way by the actions of the alleged infringer. The respondent, in that case,
did not adduce any evidence to show that it had lost even one single sale as a
result of the activities of the alleged infringer. There was no specific
evidence that the confusion which had been made out had led to any customers to
stop dealing or to even consider not dealing with the plaintiffs on future
occasions.
[24]
Finally,
use must be associated or linked with the wares or services. In Clark
O’Neill Inc. v. PharmaCommunications Group Inc., (2004), 30 C.P.R. (4th)
499, Justice Harrington stated as follows at paragraph 16: “In any event
one cannot simply advertise. There must be an underlying service. In this case
there was no service, and the Registrar was correct in holding that the
trade-mark had not been used in Canada.” To the same effect is Justice Wetston’s
finding that mere advertising without performance of the services does
not constitute use in his decision in Cornerstone Securities Canada Inc. v.
Registrar of Trade Marks et al, (2004), 58 C.P.R. (3d) 417.
Conclusions
[25]
I
find the plaintiffs have established there is a serious issue to be tried in
respect of confusion and passing-off between OMAC and CMEC but not between the
two other plaintiffs and CMEC because they are not both present in the same
market-place.
[26]
As
pointed out by Justices Cory and Sopinka in RJR – MacDonald Inc., above the threshold
for a serious question to be tried is a low one. It cannot be said in this case
that on a limited review of the merits the allegations of the plaintiff OMAC
are frivolous and vexatious.
[27]
The
defendant urged upon me a more stringent examination of the plaintiffs’ case on
the merits relying on the two exceptions mentioned in RJR –
MacDonald Inc., above. I am not satisfied the defendants have led the kind
of evidence which would lead me to conclude if an injunction issued it would be
dispositive of the case (see Viewpoint International, Inc. v. On Par
Enterprises Inc., 2001 FTC 629).
[28]
I
am not satisfied the plaintiffs have led sufficient evidence to establish
irreparable harm if the injunction is granted. The lack of sufficient evidence
is patent in terms of loss of goodwill; whether the loss of goodwill alleged is
compensable in damages. The evidence led on the impact to OMAC’s reputation by
the action of Mr. Dotzert is mostly stale evidence touching on the past and not
on the present or future and in many instances is speculative.
[29]
Rather
than leading evidence to make out irreparable harm, the plaintiffs opted to
attempt to show defendants are impecunious and would not be able to shoulder a
damage award against them. Again, in my view, the plaintiffs have not led
sufficient evidence to discharge their onus to make out impecuniosity. First, there
is no evidence on Mr. Jacoletti’s financial situation. Second, in
terms of Mr. Dotzert and his holding company, the plaintiffs led evidence of 6
garnishments some relating to 2002, 2003, 2005 and more recently 2007. All,
except one, are for the account of Canada Customs and Revenue Agency. The
record does not indicate whether these garnishees have been paid and what the
status of the debt is. In addition, no examination of the assets (the other
side of the ledger) of either Mr. Dotzert or his holding company is in the
record. On cross-examination, Mr. Dotzert stated he owned other properties, he
owns the building in St. Thomas and owns a house in Costa Rica (see Dotzert
cross-examination, pages 9, 16, 37; see also Providenti cross-examination,
pages 41 and 42).
[30]
In
terms of the corporate defendant, the record discloses little in terms of
financial statements although counsel for the plaintiffs succeeded in
demonstrating CMEC’s cash flow was thin. This in and of itself without much more
does not make out the impecuniosity of CMEC.
[31]
Finally,
on the basis of the record before me, I am of the view the defendants would
suffer the greater harm from the grant of an injunction to the plaintiffs. As I
have mentioned before, the contest in this injunction application is really
between OMAC and CMEC and not CMAC and CMEC who are not in the same markets and
where the indications are that the defendants first used the CMEC mark before
the plaintiffs used CMAC. I identify the following elements.
[32]
My
preliminary assessment of OMAC’s case is that it is weak in terms of confusion,
both likelihood and actual, if account is taken of the whole visible external
appearance of the two marks and logos in the form which the mark and logo are
likely to be seen by the public (see Ciba-Geigy, above, at
paragraph 18).
There is lack of similarity in the corporate names of OMAC and CMEC and their
logo are different. Viewing the CEMEC TV show in my office as well as in the
Court room, I find that Mr. Providenti much exaggerated in his reply affidavit
what was said by the participants and how it was said.
[33]
In
terms of the two affidavits filed at the hearing of this motion by the plaintiffs,
I cannot accord them much weight because of the lack of cross-examination. The
impact of those affidavits is best left for the trial of the action.
[34]
My
preliminary assessment leads me also to conclude buying mortgage services is
not like buying wares off a shelf in a store. A buyer of such services will be
more discriminating because it is he or she who is borrowing large sums. The
delivery of mortgage brokerage services is a hands-on personal service which
reduces the risk of confusion. Also a preliminary assessment of the evidence
suggests referrals are an important aspect that drives the mortgage brokerage
business as both websites of OMAC and CMEC indicate although advertisement do
play some role the exact extent which will be determined at trial.
[35]
Finally,
it should be said that strictly in terms of the letters OMAC and CMEC the jurisprudence
indicates they are weak mark because of lack of distinction (see GSW Ltd. v.
Great West Steel Industries Ltd., (1975), 22 C.P.R. (2d) 154).
ORDER
THIS COURT
ORDERS that
this motion for an interlocutory injunction be dismissed with costs payable
forthwith in any event of the cause and to be taxed at the upper number of
units in column IV.
“François
Lemieux”
___________________________
Judge
APPENDIX
|
Trade-marks Act, R.S.C. 1985, c. T-13
2. [Definitions] In this Act,
. . .
“confusing”, when applied as an adjective to a trade-mark
or trade-name, means a trade-mark or trade-name the use of which would cause
confusion in the manner and circumstances described in section 6;
. . .
6. (1) [When mark or name confusing] For the
purposes of this Act, a trade‑mark or trade‑name is confusing
with another trade‑mark or trade‑name if the use of the first
mentioned trade‑mark or trade‑name would cause confusion with the
last mentioned trade‑mark or trade‑name in the manner and
circumstances described in this section.
(2) [Idem] 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.
. . .
(5) [What to be considered] 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,
services 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.
7. [Prohibitions] 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;
(c) pass off other
wares or services
as and for those ordered and
requested;
. . .
20. (1) [Infringement] 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 its use under this Act who sells,
distributes or advertises wares or services in association with a confusing
trade‑mark or trade‑name . . . .
. . .
22. (1) [Depreciation of goodwill] 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.
(2) [Action in respect thereof] In any action in
respect of a use of a trade‑mark contrary to subsection (1), the court
may decline to order the recovery of damages or profits and may permit the
defendant to continue to sell wares marked with the trade‑mark that
were in his possession or under his control at the time notice was given to
him that the owner of the registered trade‑mark complained of the use
of the trade‑mark.
|
|
Loi sur les marques de commerce ( L.R.,
1985, ch. T-13 )
2. Les
définitions qui suivent s’appliquent à la présente loi.
[.
. .]
«créant de la confusion » Relativement à
une marque de commerce ou un nom commercial, s’entend au sens de l’article 6.
[.
. .]
6. (1) [Quand une marque ou un
nom crée de la confusion] Pour l’application de la présente loi, une marque
de commerce ou un nom commercial crée de la confusion avec une autre marque
de commerce ou un autre nom commercial si l’emploi de la marque de commerce
ou du nom commercial en premier lieu mentionnés cause de la confusion avec la
marque de commerce ou le nom commercial en dernier lieu mentionnés, de la
manière et dans les circonstances décrites au présent article.
(2) [Idem] L’emploi d’une marque de
commerce crée de la confusion avec une autre marque de commerce lorsque
l’emploi des deux marques de commerce dans la même région serait susceptible
de faire conclure que les marchandises liées à ces marques de commerce sont
fabriquées, vendues, données à bail ou louées, ou que les services liés à ces
marques sont loués ou exécutés, par la même personne, que ces marchandises ou
ces services soient ou non de la même catégorie générale.
[.
. .]
(5) [Éléments d’appréciation] En
décidant si des marques de commerce ou des noms commerciaux créent de la
confusion, le tribunal ou le registraire, selon le cas, tient compte de
toutes les circonstances de l’espèce, y compris :
a) le
caractère distinctif inhérent des marques de commerce ou noms commerciaux, et
la mesure dans laquelle ils sont devenus connus;
b) la période
pendant laquelle les marques de commerce ou noms commerciaux ont été en
usage;
c) le genre
de marchandises, services ou entreprises;
d) la nature
du commerce;
e) le degré
de ressemblance entre les marques de commerce ou les noms commerciaux dans la
présentation ou le son, ou dans les idées qu’ils suggèrent.
7.
[Interdictions] Nul ne peut :
[.
. .]
b) appeler
l’attention du public sur ses marchandises, ses services ou son entreprise de
manière à causer ou à vraisemblablement causer de la confusion au Canada,
lorsqu’il a commencé à y appeler ainsi l’attention, entre ses marchandises,
ses services ou son entreprise et ceux d’un autre;
c) faire
passer d’autres marchandises ou services pour ceux qui sont commandés ou
demandés;
[.
. .]
20. (1) [Violation] Le droit
du propriétaire d’une marque de commerce déposée à l’emploi exclusif de cette
dernière est réputé être violé par une personne non admise à l’employer selon
la présente loi et qui vend, distribue ou annonce des marchandises ou
services en liaison avec une marque de commerce ou un nom commercial créant
de la confusion . . . .
[.
. .]
22.
(1) [Dépréciation de l’achalandage] Nul ne peut employer une marque de
commerce déposée par une autre personne d’une manière susceptible d’entraîner
la diminution de la valeur de l’achalandage attaché à cette marque de
commerce.
(2) [Action à cet égard] Dans toute
action concernant un emploi contraire au paragraphe (1), le tribunal peut
refuser d’ordonner le recouvrement de dommages-intérêts ou de profits, et permettre
au défendeur de continuer à vendre toutes marchandises revêtues de cette
marque de commerce qui étaient en sa possession ou sous son contrôle lorsque
avis lui a été donné que le propriétaire de la marque de commerce déposée se
plaignait de cet emploi.
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