Top Notch Construction Ltd. v. Top Notch Oil Field Services Ltd., 2001 FCT 642

Date: 20010612

Docket: T-1192-97

Neutral Citation: 2001 FCT 642

Ottawa, Ontario, this 12th day of June, 2001

PRESENT:      THE HONOURABLE MR. JUSTICE JOHN A. O'KEEFE

IN THE MATTER OF AN INFRINGEMENT BY

TOP-NOTCH OILFIELD SERVICES LTD.

- and -

IN THE MATTER OF SECTION 53.2 OF THE

TRADE MARKS ACT(R.S.C. 1985, CHAPTER T-13)

BETWEEN:

TOP NOTCH CONSTRUCTION LTD.

Plaintiff

- and -

TOP-NOTCH OILFIELD SERVICES LTD.

Defendant

REASONS FOR ORDER AND ORDER

O'KEEFE J.

[1]                This is an action against Top-Notch Oilfield Services Ltd. (the "defendant") by Top Notch Construction Ltd. (the "plaintiff"). The plaintiff, according to the statement of claim, has carried on a construction services business; namely, earth moving, commercial, residential and subdivision real estate development, irrigation systems construction, road construction and crushing and washing of rock, gravel, stone and other forms of aggregate. The defendant does pipelining, maintenance, insulation, hotshot services (basically an oil field courier service) and surface abandonments.

[2]                The parties submitted the following Notice of Agreed Facts as exhibit 1 at the trial. It reads as follows:

NOTICE OF AGREED FACTS

1.                   This Statement of Facts is hereby agreed to on behalf of the parties hereto for the purpose of shortening and facilitating the trial of this action, but it shall not bind the parties in any other proceedings before any court other than in this action. No evidence inconsistent with the Statement of Facts may be offered at trial, but additional evidence not inconsistent with this statement may be offered subject to all the usual rules of evidence.

2.                   The Plaintiff, Top Notch Construction Ltd. ("Top Notch Construction") is a body corporate duly incorporated in or about 1966 pursuant to the laws of the Province of Alberta. Exhibit 1 in the Book of Agreed Exhibits is the Certificate of Registration of Top Notch Construction dated April 19, 1966. Top Notch Construction has its head office in the City of Calgary, in the Province of Alberta.

3.                   The Defendant, Top-Notch Oilfield Services Ltd. ("Top-Notch Oilfield Services") is a body corporate duly incorporated in or about August, 1993 pursuant to the laws of the Province of Alberta. Exhibit 2 in the Book of Agreed Exhibits is the Certificate of Incorporation of Top-Notch Oilfield Services dated August 23, 1993. Top-Notch Oilfield Services has its head office in the Town of Stettler, in the Province of Alberta.

4.                   Stettler is approximately 225 kilometres from the City of Calgary.

5.                   Top Notch Construction is the owner in Canada of a trade mark, Serial No. 696 662 (Registration TMA 410,500) for the trade mark "Top Notch Construction Ltd. Calgary". Exhibit 3 in the Book of Agreed Exhibits is a copy of the Certificate of Registration of the said trade mark dated April 2, 1993 (the "Trade Mark"). The said Trade Mark was validly filed and registered on the dates indicated on the Certificate. The Defendant has taken no formal steps to dispute this Trade Mark registration.

6.                   The incorporation dates and names of the following corporations are validly set out on the attached Certificates of Incorporation:

(a)         Top Notch Limited is a body corporate duly incorporated pursuant to the laws of the Province of Alberta. Exhibit 4 in the Book of Agreed Exhibits is the Certificate of Incorporation [sic] Top Notch Limited dated March 15, 1948.

(b)         240541 Alberta Ltd. (changed to "Top Notch Resources Ltd..") is a body corporate duly incorporated pursuant to the laws of the Province of Alberta. Exhibit 5 in the Book of Agreed Exhibits is the Certificate of Incorporation of 240541 Alberta Ltd. dated March 19, 1980 and Exhibit 6 in the Book of Agreed Exhibits is the Certificate of Change of Name of 240541 Alberta Ltd. to Top Notch Resources Ltd. dated December 11, 1980. 240541 Alberta Ltd. was a shelf company until December, 1980 when the principals of the Plaintiff acquired it and immediately changed its name to Top Notch Resources Ltd.

(c)         Top Notch Aggregate Ltd. is a body corporate duly incorporated pursuant to the laws of the Province of Alberta. Exhibit 7 in the Book of Agreed Exhibits is the Certificate of Incorporation of Top Notch Aggregate Ltd. dated January 15, 1980.

(d)         Top Notch Screening Ltd. is a body corporate duly incorporated pursuant to the laws of the Province of Alberta. Exhibit 8 in the Book of Agreed Exhibits is the Certificate of Incorporation of Top Notch Screening Ltd. dated February 26, 1980.

7.                   Both the Plaintiff and Defendant have continually used the subject names since their incorporation in providing services to their customers.

8.                   Exhibit 9 in the Book of Agreed Exhibits is a NUANS search report dated August 23, 1993 obtained by Top-Notch Oilfield Services Ltd. at the time of its incorporation.

9.                   Attached as Exhibits 10, 11 and 12 in the Book of Agreed Exhibits are copies of NUANS pre-search reports dated December 11, 200 and December 12, 2000.

10.               Either party may at the trial of this matter enter into evidence NUANS searches, trade name searches, corporate searches and partnership searches notwithstanding it is not a certified copy of the report or search.

11.               Exhibit 13 in the Book of Agreed Exhibits is a list produced in response to the undertaking given at discoveries to produce a list of all of Top Notch Construction's clients.

12.               Exhibit 14 in the Book of Agreed Exhibits is a list produced in response to the undertaking given at discoveries to produce a list of clients that Top-Notch Oilfield Services has worked for and presently works for from August, 1993.

13.               Exhibit 15 in the Book of Agreed Exhibits is a copy of a business card for Top-Notch Oilfield Services produced in response to an undertaking given at Examination for Discovery.

14.               Exhibit 16 in the Book of Agreed Exhibits is a copy of the Telus Yellow Pages for 1997.

15.               Exhibit 17 in the Book of Agreed Exhibits is a copy of the Red Deer and Area Phone Book.

16.               Exhibit 18 in the Book of Agreed Exhibits is a copy of the 1996-1997 Canadian Oilfield Service and Supply directory.

17.               Exhibit 19 in the Book of Agreed Exhibits is a copy of the 1997-1998 Canadian Oilfield Service and Supply Directory.

18.               Exhibit 20 in the Book of Agreed Exhibits is a copy of the 1999-2000 Canadian Oilfield Service and Supply Directory.

19.               Exhibit 21 in the Book of Agreed Exhibits is Top-Notch Oilfield Services Ltd.'s supplier list produced in response to a [sic] undertaking given at discoveries.

20.               Exhibit 22 in the Book of Agreed Exhibits is a letter dated June 3, 1996 from counsel for the Plaintiff to the Defendant. The Defendant received this letter on or about June 5, 1996. After receipt of this letter counsel for the Plaintiff and counsel for the Defendant engaged in correspondence and negotiations, albeit not vigorously until June 5, 1997 when the Statement of Claim in this matter was filed.

21.               Exhibit 23 in the Book of Agreed Exhibits is a copy of 1998 Alberta Road Builders and Heavy Construction Association Equipment Rental Rates Guide.

22.               Exhibit 24 in the Book of Agreed Exhibits is a copy of the 2000 Alberta Road Builders and Heavy Construction Association Equipment Rental Rates Guide.

23.               Exhibit 25 in the Book of Agreed Exhibits is a copy of the 1997 Canadian Construction Service and Supply Directory (Alberta).

24.               Exhibit 26 in the Book of Agreed Exhibits is a copy of the 1998 Canadian Construction Service and Supply Directory (Alberta).

[3]                The plaintiff's trade-mark is for services and is as shown below:

The right to the exclusive use of the words "construction" and "Calgary" is disclaimed apart from the trade-mark.

[4]                The services listed in the registration are:

(1)           Construction services namely, earth moving, commercial, residential and

subdivision real estate development, irrigation systems construction, road construction and crushing and washing of rock, gravel, stone and other forms of aggregate.

When the plaintiff started in 1966, it had two pieces of equipment, a motor grader and a crawler tractor with a dozer. In the year 2000, the plaintiff had between 225 and 250 pieces of equipment with a market value between $35 and $40 million dollars.

[5]                The defendant's company name and trade-name is depicted as follows:

[Note: Background is darker due to copying.]

[6]                The defendant does pipelining, maintenance, insulation, hotshot service and surface abandonments in connection with oil fields. The president of the defendant, Mr. MacNutt, testified in some detail as to the specific services offered by his company by making reference to the services listed on the sign contained in Exhibit P-15. The president of the defendant was also questioned on cross-examination concerning the listing of well site reclamation services and the claim that the defendant was a "full service contractor". He explained that to him, the term "full service contractor" means the defendant company provides all of the services requested by a customer that it can do; the remainder of the services are done by a third party that was referred to the customer by the defendant company. He testified that "well site reclamation" was a typo and should have read "well site abandonments".

[7]                Mr. MacNutt testified that his company had never been involved in the construction of an oil lease, an oil field road, in the crushing and washing of rock, gravel, stone or aggregate, or in any reclamation work (well site).

[8]                Mr. MacNutt also testified that his company owns two 200LC trackhoes (excavators), one 310 John Deere rubber-tired backhoe, one boom cat (for lowering pipe when doing pipelining), an air compressor, four half ton trucks, ten one ton trucks and various small tools.

[9]                The evidence of Mr. MacNutt established that the defendant performed some type of work for the Town of Stettler but the nature of the work was not identified.

[10]            The plaintiff's president, Alex Lockton, testified that generally his company worked from Red Deer south, in southern Alberta. His company had worked further north in Alberta, but not recently.

[11]            The defendant provides oil field services in the Stettler and Rock Mountain House areas and has provided services in the Hanna and Drumheller areas.

[12]            The plaintiff claimed the following relief in its statement of claim:

25.               An interlocutory and permanent injunction restraining the defendant from:

(i)          infringing the exclusive rights of the plaintiff;

(ii)         using or displaying the trade-mark of the plaintiff or any other marks likely to be confusing with the plaintiff's trade-mark;

(iii)        doing any act likely to have the effect of depreciating the plaintiff's goodwill and its reputation in its trade-mark;

26.               An Order for the delivery up or destruction of all offending material whatsoever in the defendant's possession or by its officers, directors, employees, agents, franchisees, licensees and all those over whom they exercise control and all other persons who have notice of this action;

27.               Judgment for damages sustained by the plaintiff or an accounting of the profits of the defendant as a result of its unlawful conduct which, upon inquiry, the plaintiff may elect;

28.               An Order revoking the registration of any use of the plaintiff's trade-mark as a trade name of the defendant pursuant to the Business Corporations Act (Alberta);

29.               Punitive damages;

30.               Interest pursuant to the provisions of the Judgment Interest Act, S.A. 1984, c. J-0.5 or, alternatively, interest at such rate as this Honourable Court deems fit;

31.               The plaintiff's costs of an incidental to this action on a solicitor/client basis.

Issue

[13]            Is the plaintiff entitled to the relief requested?

Relevant Statutory Provisions

[14]            The relevant sections of the Trade-marks Act, R.S.C. 1985, c. T-13 (the "Act") read as follows:

Analysis and Decision

[15]            There has been no challenge by the defendant as to the validity of the plaintiff's mark. Consequently, because the mark is registered, it will be presumed valid.

[16]            I now must determine, as regards to section 20 of the Act, whether the defendant's use of its trade name (Top-Notch Oilfield Services Ltd.) is confusing within the meaning of section 6 of the Act. For ease of reference, I will repeat the provisions of section 6 of the Act:

[17]            The test used to determine whether a trade-mark is confusing was set out by the Federal Court of Appeal in Miss Universe Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.) at page 387:

To decide whether the use of a trade mark or of a trade name causes confusion with another trade mark or another trade name, the court must ask itself whether, as a matter of first impression on the minds of an ordinary person having a vague recollection of that other mark or name, the use of both marks or names in the same area in the same manner is likely to lead to the inference that the services associated with those marks or names are performed by the same person, whether or not the services are of the same general class. (See s. 6(2), (3) and (4) of the Act; [1968] S.C.R. 134">Rowntree Co. v. Paulin Chambers Co., [1968] S.C.R. 134; Oshawa Holdings Ltd. v. Fjord Pacific Marine Industries Ltd. (1981), 55 C.P.R. (2d) 39, 36 N.R. 71 (F.C.A.); Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) at pp. 9-10, [1988] 3 F.C. 91, 16 C.I.P.R. 282 (C.A.), Thurlow C.J. and Canadian Schenley Distilleries Ltd. v. Canada's Manitoba Distillery Ltd. (1975), 25 C.P.R. 1 at p. 12 (F.C.T.D.), Cattanach J.).

In determining whether there is a likelihood of confusion, the court shall have regard to all the surrounding circumstances, including those described in s. 6(5) above.

[18]            Additionally, in United Artists Corp. v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 (F.C.A.) Linden J. A. stated at pages 258 to 259:

A trade-mark is a mark used by a person to distinguish his or her wares or services from those of others. The mark, therefore, cannot be considered in isolation, but only in connection with those wares or services. This is evident from the wording of subsection 6(2). The question posed by that subsection does not concern the confusion of marks, but the confusion of goods or services from one source as being from another source. It is for this reason that marks which rely on geographic origins or generally descriptive words (e.g. the fictional marks Pacific Coffee or Premium Soda) are not afforded a wide ambit of protection. Even though proposed marks might be similar to them, the public is not likely to assume that two products that describe themselves as being "Pacific" or "Premium" necessarily originate from the same source. Because confusion is not likely, protection is not necessary.

This concentration on the source of the wares or services must inform any consideration of section 6 of the Act. Six factors are enumerated: five specific and one general one. I shall briefly discuss each one of them in turn. The five specific considerations that must be considered indicate that the Court must balance the right of the trade-mark owner to the exclusive use of his or her mark, with the right of others in the marketplace to compete freely.

[19]            The first factor to be considered is:

The inherent distinctiveness of the trade-marks or trade names and the extent to which they have become known.

The plaintiff's trade-mark is "TOP NOTCH Construction Ltd. Calgary" which is encircled by the crawler track of a bulldozer. The right to the exclusive use of the words "Construction" and "Calgary" is disclaimed apart from the trade-mark. The defendant's trade name is "TOP-NOTCH Oilfield Services Ltd.". In my opinion, neither the trade-mark nor the trade name are inherently distinctive. The words "Top Notch" and "Top-Notch" are descriptive words. The word top-notch is generally taken to mean "first rate" (see Oxford Canadian Dictionary 1998 page 1531). The word top-notch is used to describe many things. The jurisprudence of this Court has held that where a mark is only descriptive of the services, less protection will be afforded to the mark.

[20]            Even though a mark is not inherently distinctive, it may acquire distinctiveness through continued use in the market place. The plaintiff has advertised extensively over the years and thus, its mark has been made known to the public. The defendant did a small amount of advertising using its trade name. In order to establish acquired distinctiveness, it must be shown that the mark has become known to consumers as originating from one particular source (United Artists Corp. v. Pink Panther Beauty Corp., supra at page 259). I am not persuaded by the evidence that either the plaintiff's trade-mark or the defendant's trade name has gained an acquired distinctiveness. Although the plaintiff's business as a contractor can be considered a success story, this does not, given the circumstances of this case, establish that its trade-mark has acquired distinctiveness.

[21]            The length of time the trade-marks or trade names have been in use.

In this case, the plaintiff's trade-mark has been in use since 1966. The defendant has used its trade name since 1993. I find that this factor favours the plaintiff. The plaintiff's trade-mark has been in use for a longer time than the defendant's trade name.

[22]            The nature of the wares, services or business.

In this case, the services provided by the plaintiff are earth moving, commercial, residential and subdivision real estate development, irrigation systems construction, road construction and crushing and washing of rock, gravel, stone and other forms of aggregate. As well, the evidence of Alex Lockton was that his company did oil site reclamation, road building for oil well sites and it worked joint ventures on some pipeline work. The plaintiff also does plant sites, that is, levelling and preparing sites for new plants and getting the site ready for a new plant. The plaintiff delivers heavy equipment to plant sites as well. The plaintiff is not presently doing pipeline work. Five percent of the plaintiffs work is in the oil field industry.

[23]            The defendant provides the following services:

Crew trucks - This is maintenance of anything from the well head to the gas processing or the oil processing.

Picker trucks - This is the same as crew trucks except these trucks have a smaller picker or lifter on them to lift objects.

Pumpjack inspection and maintenance - This involves building pads that the pumpjacks sit on, setting up, calibrating and performing maintenance on the pumpjacks.

Approved pipeline procedures - When the defendant builds a pipeline, it has a pipeline procedure that is registered with the government. As well, any piping built by the defendant is registered with the Alberta Boilers Safety Association.

Journeymen insulators - This person insulates any piping that is above the ground and exposed to the cold.

Insulation supplies - This involves the selling of insulation supplies.

Backhoe service - The defendant has one backhoe that performs backhoe services when it is not working on underground service tanks for Gulf.

Surface abandonment - When the oil well ceases to operate, the defendant removes all of the surface equipment that is at the well head, buildings and anything on the surface. The defendant also removes the underground service tanks from the site.

Hotshot services - This is the delivery of parts to the oil field industry, a form of oil field courier service.

Generally speaking, an assessment of the services provided by the plaintiff and defendant appear to be different. The defendant does not build roads or do reclamation work, although some backhoe work is done with his one backhoe when it is not being used in the oil field industry. Furthermore, although the plaintiff has done some pipeline work in a joint venture, the evidence did not establish how this work was done. For example, was this work done under the name of the plaintiff or the joint venture?

[24]            Nature of trade.

This factor relates to the nature of the trade where the services circulate. There is a greater risk of confusion even though the services are dissimilar if the services are provided from the same types of facility. If the services are of the same general category and are sold from the same type of facility, then confusion would be more likely. On the other hand, if the services are not of the same nature and they are distributed from different types of facilities, then there is less likelihood that one mark will be mistaken for the other mark. The nature of the trade is a factor which contains many different considerations. In Joseph E. Seagram & Sons Ltd. v. Seagram Real Estate Ltd. (1990), 33 C.P.R. (3d) 454 (F.C.T.D.) at page 468, MacKay J. stated that the nature of the trade included "the customs and usages of the trade and the character of the markets where the marks are intended to serve their purposes". In the present case, both parties provide services. The great majority of the plaintiff's services are in the road building, irrigation, ditch building and subdivision work. Its service work with respect to the oil fields deals primarily with site reclamation, site preparation and building roads to oil well sites. With respect to road construction, the plaintiff is requested to bid on projects. The plaintiff is sought out because of its reputation for excellent work. Put in simple terms, the plaintiff is primarily in the earth moving trade. Even the farming of the reclamation sites involves moving or farming earth. The defendant on the other hand, offers services to the oil field industry generally in the areas of pipelining, maintenance, insulation, hotshot services and surface abandonments. The defendant does not build roads to well sites, does not do site reclamation and does not construct highways. Its business deals with maintenance services to the oil field industry. Therefore, I find that the nature of the trade of the plaintiff and defendant are different with the exception of a small amount of overlap in the areas of backhoe work and joint venture pipeline work. As stated above, the evidence did not establish how the pipeline work in the joint venture was done.

[25]            The degree of resemblance between the trade-marks or trade names in appearance or sound or in the ideas suggested by them.

Under this factor, when the marks are similar, I must assess the likely impression made by the marks on the public. The marks should be assessed in their entirety but it is still acceptable "to focus on a particular feature of the mark that may have a determinative influence on the public's perception of it" (United Artists Corp. v. Pink Panther Beauty Corp., supra at page 259). The plaintiff's trade-mark consists of the words "TOP NOTCH Construction Ltd. Calgary" with the right to the exclusive use of the words "construction" and "Calgary" disclaimed apart from the trade-mark. The word mark is encircled by a crawler dozer's track. The defendant's trade name is "TOP-NOTCH Oilfield Services Ltd." I find that the ideas suggested by the two marks are different. The plaintiff's mark with the crawler dozer's track around the word mark suggests to me a road building or earth moving business. The defendant's name, on the other hand, suggests to me a company which provides services to the oil field business. In my view, it is unlikely that one would conclude from the defendant's name that it would be in the earth moving, irrigation or road building business.

[26]            All the surrounding circumstances.

This heading obviously includes the specific factors discussed above and any other factors relevant to the particular case. One of the surrounding circumstances is whether there has been any actual confusion between the marks during the time both were in use. The evidence shows that over the years since 1983, there has been one cheque with the defendant's name typed on it, mailed to the plaintiff by a supplier. There was no evidence as to the reason for the mailing of the cheque to the wrong party. As well, Mr. MacNutt, in his testimony, stated that in five years, he had less than five inquiries as to whether the defendant was affiliated with or knew of TOP NOTCH Construction Ltd.

[27]            When considering each of the criteria set out in subsection 6(5) of the Act, equal weight need not be given to each of the criteria (see Polysar Ltd. v. Gesco Distributing Ltd. (1985), 6 C.P.R. (3d) 289 (F.C.T.D.) at page 298). In the present case, I would attach more weight to criteria 6(5), (c), (d) and (e).

[28]            When the nature of the services being provided by the parties, the nature of the trade and the degree of resemblance between the trade-mark and the trade name in appearance or sound or in the ideas suggested by them, along with the other listed factors, paragraph 6(5)(a) and (b) and all the surrounding circumstances are analysed, I am of the opinion that no likelihood of confusion would exist between the plaintiff's trade-mark and the trade name of the defendant. There is no likelihood of confusion as to the source of the services. I am of the view that, given the circumstances of this case, there is a great difference between the nature of the services and the nature of the trade in which the services are provided. As there is no likelihood of confusion, this disposes of the plaintiff's claim under section 20 of the Act.

[29]            At the trial, in opening submissions, counsel for the plaintiff stated as follows (at page 6 of the transcript):

So Top Notch Construction Ltd. brings two claims against the defendants. The first one is an infringement action and, specifically, sections 19, 20 and 22 of the Trade-marks Act. Secondly, they bring a common law passing off action.

[30]            Counsel for the plaintiff, in closing submissions, also addressed subsections 7(b) and (c) of the Trade-marks Act (see for example pages 289, 317 and 336 of the transcript). Subsection 7(b) is considered to essentially be the statutory statement of the common law action of passing off ([1977] 2 S.C.R. 134">MacDonald v. Vapor Canada, [1977] 2 S.C.R. 134 per Laskin C.J.C. for the majority, and Asbjorn Horgard A/S v.Gibbs/Nortac Industries Ltd. et al., [1987] 3 F.C. 544 (F.C.A.)). This, however, does not mean that the tests for both are exactly the same.

[31]            This Court does not have jurisdiction with respect to the common law action of passing off. In ITAL-Press Ltd. v. Sicoli (1999), 170 F.T.R. 66 at 106-107 (F.C.T.D.), Gibson J. referred to the decision of Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd. et al., supra:

Mr. Justice MacGuigan continued at page 560:

Paragraph 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 "piggybacking" by misrepresentation.

Mr. Justice MacGuigan concluded in the following terms:

The Canadian Act, as the statutory history set out by Laskin C.J.C. in the [1977] 2 S.C.R. 134">MacDonald case, supra, showed, has traditionally been concerned with the protection of unregistered as well as registered trade marks. In this it is like the Copyright Act . . ., whose coverage is broader than registered copyright. In both Acts what registration does is to provide additional benefits over and above those available at common law.

In reviewing the scheme of the Act in Royal Doulton Tableware Limited v. Cassidy'S Ltd., . . . Strayer J. said that the Trade Marks Act in sections 1 to 11 defines and prescribes a number of rules concerning trade marks and the adoption thereof, without reference to registration. Thereafter, the Act only deals with registered trade marks. He adds: Parliament by section 1 to 11 of the Trade Marks Act has prescribed a regime concerning what constitutes a trade mark and the adoption thereof, whether registered or not.

In paragraph 7(b) Parliament has chosen to protect the goodwill associated with trade marks. In this way, as Chief Justice Laskin put it, it "rounds out" the statutory scheme of protection of all trade marks. As such, the civil remedy which it provides in conjunction with section 53 is "genuinely and bona fide integral with the overall plan of supervision": . . . It has, in sum, a rational functional connection to the kind of trade marks scheme Parliament envisage, in which even unregistered marks would be protected from harmful misrepresentations.

In my view, paragraph 7(b) is clearly within federal constitutional jurisdiction under subsection 91(2) of the Constitution Act, 1867. (citations omitted)

From the foregoing, I conclude that section 7 of the Trade-marks Act can only be invoked where a "trade marks scheme" is pleaded and established by evidence. On the material and evidence before me, no "trade marks scheme" is either pleaded or established in evidence.

It was not argued before me, certainly not with any conviction, that this Court has any jurisdiction with respect to the common law action of passing off. I am satisfied that it does not. To the extent that it has jurisdiction in respect of the equivalent of the common law action of passing off, that jurisdiction must be found in paragraph 7(b) of the Trade-marks Act.

On the basis of the foregoing brief analysis of the jurisdiction of this Court and of the pleadings and evidence before me, I conclude that the plaintiff's claim with respect to passing off cannot succeed either on the ground that this Court lacks jurisdiction or, on the alternative ground, that any basis of jurisdiction in this Court has not been pleaded and has not been established by the evidence before the Court.

As stated by Justice Gibson above, to the extent that this Court "has jurisdiction in respect of the equivalent of the common law action of passing off, that jurisdiction must be found in paragraph 7(b) of the Trade-marks Act." Although paragraph 10 of the plaintiff's statement of claim suggests a pleading under subsection 7(b), there is no explicit reference to subsection 7(b) of the Trade-marks Act. Paragraph 10 of the statement of claim reads:

10.           The Defendant, knowing of the reputation and goodwill of the Plaintiff in its trade-mark as aforesaid, and with the object of attracting custom and benefit therefrom to itself, has applied the Plaintiff's trade-mark to its wares and/or services and thereby directed public attention to its wares, services and business in such a way as to cause or be likely to cause confusion in Canada.

The plaintiff did, however, make specific reference to sections 2, 19, 20, and 22 of the Trade-marks Act in its pleadings.

[32]            Subsection 7(b) of the Trade-marks Act reads:

[33]            Although there is some similarity between paragraph 10 of the statement of claim and that stated in subsection 7(b) of the Act, it is apparent, in my view, that they are not the same. For example, there is no mention of the timing element of subsection 7(b) in the plaintiff's pleading.    The only proper conclusion is that the plaintiff was pleading the common law tort of passing off. Given the specific references to sections 2, 19, 20 and 22 in the plaintiff's pleadings but no reference to section 7 and considering the plaintiff's opening submissions at trial to the effect that it was the common law action of passing off being claimed, I am of the opinion that the plaintiff has not properly put subsection 7(b) of the Act before this Court.

[34]            In the alternative since both parties argued subsection 7(b) of the Act, then if the plaintiff has properly pleaded subsection 7(b) of the Act, I would hold that the plaintiff's claim in respect thereto must fail. Again, subsection 7(b) of the Trade-marks Act states as follows:

Although counsel for the plaintiff referred to subsection 7(b) of the Act in closing submissions at trial, he directed my attention to the Alberta Court of Appeal's decision in Walt Disney Productions v. Triple Five Corp. (1994), 113 D.L.R. (4th) 229at 233 and focussed thereon:

After reviewing the cases, the learned Trial Judge concluded that the Respondent had to establish three elements to obtain an injunction in its passing off action [43 C.P.R. (3d) 321 at p. 321, 93 D.L.R. (4^th) 793 at p. 748, [1992] 5 W.W.R. 622]:

(1)           A goodwill or reputation attached to the plaintiff's goods, or services in the mind of the public with the name in question such that the name is identified with the plaintiff's goods or services.

(2)           A misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that the goods or services are those of or those authorized by the plaintiff.

(3)            That the plaintiff has or will likely suffer damages.

The learned Trial Judge was of the view that once elements (1) and (2) above were shown, damage was presumed. The intention of the Appellants was immaterial.

The learned Trial Judge concluded that the Respondent had established its case and granted an injunction prohibiting the Appellants' use of the name "Fantasyland" for their amusement park.

[35]            The Walt Disney, supra, case concerned a common law action of passing off rather than subsection 7(b) of the Act. In my view, the approach to be taken to subsection 7(b) of the Act is somewhat more involved. As stated in Horn Abbot Ltd. v. Thurston Hayes Developments Ltd. (1997), 77 C.P.R. (3d) 10 at 17-18 (F.C.T.D.), there are three elements to subsection 7(b):

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 "piggybacking" by misrepresentation. [Emphasis 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 the two came from the same source.

[36]            Therefore, in order to make out a claim under subsection 7(b) of the Trade-marks Act, the plaintiff has to meet three requirements. These requirements are:

1.                   The Conduct Test: "direct public attention to [the defendant's] wares";

2.                   The Confusion Test: "in such a way as to cause or be likely to cause confusion in Canada"; and

3.                   The Timing Test: "at the time [the defendant] commenced so to direct attention to them".

If I were to apply this test in relation to subsection 7(b), I would find that the plaintiff failed to meet the second requirement in the above test given my conclusion as to confusion at paragraph 28.

[37]            It must be kept in mind that subsection 7(b) has been considered to be the statutory equivalent of common law passing off. The three elements of common law passing off are (1) the existence of goodwill; (2) deception of the public due to a misrepresentation; and (3) actual or potential damage to the plaintiff (CIBA-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120). Indeed, this Court chose to apply these elements in relation to subsection 7(b) in Enterprise Rent-A-Car Co. et al. v. Singer et al., [1996] 2 F.C. 694 (F.C.T.D.) and Prince Edward Island Mutual Insurance v. Insurance Co. of Prince Edward Island (1999), 159 F.T.R. 112 (F.C.T.D.). If I were to do the same and apply these elements to subsection 7(b) of the Act in the case at bar, I would hold that the plaintiff has not established the second arm of the test; namely, that there was a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that the goods or services are those of or authorized by the plaintiff. The defendant's trade name "TOP-NOTCH" Oilfield Services Ltd." does not, in my opinion, give any indication that the services offered by the defendant are authorized by the plaintiff or are the services of the plaintiff. The plaintiff's own trade-mark is:

Although the descriptive words TOP NOTCH are found in both the plaintiff's mark and the defendant's trade-name, there has been no misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that the goods or services are those of or authorized by the plaintiff.

[38]            Therefore, had the plaintiff properly pleaded subsection 7(b) of the Trade-marks Act, I would find that the claim in relation thereto must fail; whether the test is that of the common law tort of passing off, the test as stated in Horn Abbot Ltd., supra, or a mixture of both.

[39]            The plaintiff has also based its claims on subsection 22(1) of the Act. Counsel for the plaintiff referred me to Compagnie Générale des Établissements Michelin--Michelin & Cie v. National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW-Canada), [1997] 2 F.C. 306 (F.C.T.D.) where Justice Teitelbaum stated at paragraph 33:

The plaintiff's novel interpretation of section 22 is not required to redress redundancies or shortcomings in the grounds of trade-mark infringement. "Use" is the foundation for sections 19, 20 and 22 as grounds of infringement but the secondary elements for each ground once the primary "use" has been established are quite different. Section 19 requires use of the identical mark for identical wares and services while section 20 states that the mark need only be "confusing" and not identical to the registered mark. Section 22 is even more open-ended since the mark need not even be confusing as long as its use is likely to depreciate the value of the goodwill: (see Mr. Submarine Ltd. v. Amandista Investments Ltd., [1988] 3 F.C. 91 (C.A.), at page 98). The grounds for infringement move from their narrowest in section 19 to their most expansive in Section 22 but "use" remains the basic building block or linchpin for all of the grounds.

And further at paragraph 46:

In a similar vein, even if I were to accept the plaintiff's nuanced version of "use in a manner likely to depreciate the goodwill" under section 22, the plaintiff would have failed to prove that the goodwill of its trade-marks had indeed been depreciated by the defendants' activities. I disagree with the holding of Justice Lesyk at page 448 in St-Hubert, supra, that the infringer has to use a mark identical to the registered mark to likely cause depreciation to the goodwill of the trade-mark. In Clairol, Justice Thurlow at page 573 defined "goodwill" in relation to trade-marks to mean "that portion of the goodwill of the business of its owner which consists of the whole advantage, whatever it may be, of the reputation and connection, which may have been built up by years of honest work or gained by lavish expenditure of money and which is identified with the goods distributed by the owner in association with the trade mark". Justice Thurlow at page 573 in the same crucial Clairol decision analyzed depreciation of a trade-mark's goodwill to require "tak[ing] away the whole or some portion of the custom" attached to the wares and services associated with the trade- mark. The plaintiff could not prove that the defendant CAW's activities would likely have a negative effect or depreciate the drawing power of the plaintiff's marks in the marketplace...

Counsel for the plaintiff also directed my attention to Canadian Council of Blue Cross Plans et al. v. Blue Cross Beauty Products Inc. et al. (1971), 3 C.P.R. (2d) 223 (F.C.T.D.) where Collier J. stated at page 232:

Section 22(1) has been considered by Thurlow, J., in the Clairol case, previously referred to. In that case the defendants, in marketing hair colouring products, used brochures and packages containing colour comparison charts of competing hair colouring products. The plaintiffs' products in the brochures were identified by their own registered trade marks. Thurlow, J., found the defendants to be in violation of s. 22 and held that the value of the goodwill attaching to the plaintiffs' trade marks had been depreciated. I quote from the judgment at pp. 199 and 201:

Then what is meant by "depreciate the value" of such goodwill. To my mind this means simply to reduce in some way the advantage of the reputation and connection to which I have just referred, to take away the whole or some portion of the custom otherwise to be expected and to make it less extensive and thus less advantageous. As I see it, goodwill has value only to the extent of the advantage of the reputation and connection which its owner enjoys and whatever reduces that advantage reduces the value of it. Depreciation of that value in my opinion occurs whether it arises through reduction of the esteem in which the mark itself is held or through the direct persuasion and enticing of customers who could otherwise be expected to buy or continue to buy goods bearing the trade mark. It does not, however, as I see it, arise, as submitted by Mr. Henderson, from danger of loss of exclusive rights as a result of use by others as this, in my view, represents possible loss of exclusive rights in the trade mark itself rather than reduction of the goodwill attaching to it.

. . .

But he may not put his competitor's trade mark on his goods for that purpose or for the purpose of carrying a message to customers who are familiar with the goods identified by the trade mark in order to facilitate their purchase of his own goods and thus to reduce the chance that new customers hearing of the goods identified by the mark would buy them in preference to his or that old customers familiar with the goods identified by the trade mark would have continued buying the goods of the owner of the mark. In short, he may not use his competitor's trade mark for the purpose of appealing to his competitor's customers in his effort to weaken their habit of buying what they have bought before or the likelihood that they would buy his competitor's goods or whatever binds them to his competitor's goods so as to secure the custom for himself, for this is not only calculated to depreciate and destroy his competitor's goodwill but is using his competitor's trade mark to accomplish his purpose.

[40]            The plaintiff's trade-mark and the defendant's trade-name have been in "use"; it was not argued otherwise at trial. Having considered both the evidence and the submissions of the parties, as well as the above quoted passages from the case law, I am of the opinion that the plaintiff has not made out its claim under subsection 22(1).

[41]            The plaintiff has acquired goodwill in its trade-mark. The plaintiff is primarily in the earth-moving business, be it road building or reclamation work. The plaintiff did some pipeline work in the past, but as a joint venture and we do not know what name the work was done under. The defendant basically does oil filed servicing work and pipelining, with the exception of his one backhoe occasionally doing work for the public. The plaintiff's work in the oil field area is 5% of its work. From my review of the evidence, there was no attempt by the defendant to have the customer, present or potential, buy services from it rather than the plaintiff. Thus, as I have indicated, there is not a likelihood that the defendant's use of the name Top-Notch Oil Services Ltd. will depreciate the value of the goodwill attached to the plaintiff's trade-mark. Thus, the plaintiff's subsection 22(1) claim must fail.

[42]            At the trial of the matter, plaintiff's counsel asked Mr. MacNutt whether the defendant company had any judgments registered against it. The defendant's counsel objected to the question. I allowed the question to be asked and I indicated I would rule as part of my judgment as to whether the question could be asked. It is my view that the question can be asked. The evidence is relevant in that it could have related to the depreciation of goodwill. As judgments are registered against the specific name of the company, the weight attached to this evidence would have been another question.

[43]            The claim of the plaintiff against the defendant is therefore dismissed with costs to the defendant.

ORDER

[44]            IT IS ORDERED that the claim of the plaintiff against the defendant is dismissed with costs to the defendant.

                                                       "John A. O'Keefe"             

                                                                       J.F.C.C.                     

Ottawa, Ontario

June 12, 2001