Date: 20000824
Docket: T-1633-99
Between:
STANDARD KNITTING LTD.
Plaintiff
(Moving Party)
- and -
TOYOTA JIDOSHA KABUSHIKI KAISHA also
trading as TOYOTA MOTOR CORPORATION,
TOYOTA CANADA INC.
Defendants
(Responding Parties)
Upon motion by the plaintiff for summary judgment against the defendants.
REASONS FOR ORDER
PINARD, J.:
This is an action for (i) trade-mark infringement under section 19 of the Trade-marks Act, R.S.C. 1985, c. T-13, as amended (the Act), (ii) trade-mark infringement under section 20 of the Act, (iii) depreciation of the value of the goodwill attaching to a trade-mark under section 22 of the Act, and (iv) passing off under paragraph 7(b) of the Act.
The plaintiff is the owner of the trade-mark TUNDRA. The trade-mark is the subject of the Canadian Trade-mark Registration No. 360,031 registered September 1, 1989 in association with sweaters and shirts; cardigans, t-shirts, pullovers, vests, jackets, coats, pants and suits; toques, scarves, mitts, blankets, housecoats and robes; and swimwear, beachwear, namely shorts and tops.
The defendants use the marks TOYOTA TUNDRA DESIGN and TOYOTA TUNDRA & DESIGN on promotional items aimed directly at existing customers of Toyota, specifically purchasers of the TOYOTA TUNDRA truck. These promotional items include a melton leather jacket, a windbreaker type jacket, a twill shirt, a turtleneck shirt and a fleece vest.
The present motion is based only on the plaintiff's claim of infringement under section 19 of the Act, which reads:
| Rights conferred by registration
19. Subject to sections 21, 32 and 67, 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.
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Droits conférés par l'enregistrement
19. Sous réserve des articles 21, 32 et 67, l'enregistrement d'une marque de commerce à l'égard de marchandises ou services, sauf si son invalidité est démontrée, donne au propriétaire le droit exclusif à l'emploi de celle-ci, dans tout le Canada, en ce qui concerne ces marchandises ou services.
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When section 19 of the Act is to be relied upon, the following essential elements must be established. If one of these elements is not established, section 19 may not be relied upon and recourse would be made to other sections of the Act:
(a) the existence of the registration of the trade-mark;
(b) use by the infringing party of an identical trade-mark; and
(c) use of the trade-mark in association with any of the wares identical to those for which the trade-mark is registered.
(See Canadian Trade-marks Act, Annotated, Robic-Leger.)
Accordingly, section 19 of the Act is limited to cases in which a person uses a registered mark identical to the registered trade-mark for the same wares or services as the registered mark (see, for example, Registrar of Trade Marks v. Compagnie internationale pour l'informatique CII Honeywell Bull, société anonyme et al. (1985), 4 C.P.R. (3d) 523 (F.C.A.) and Cie générale des établissements Michelin-Michelin & Cie v. C.A.W.-Canada et al. (1996), 71 C.P.R. (3d) 348 at 358 (F.C.T.D.)).
The plaintiff was unable to point to any specific court decision in support of its proposition that the use by one person of two different marks as a composite mark, where one of the individual marks has been registered for the benefit of a different person and where the latter mark and the composite mark are used in association with identical wares, constitutes in itself an infringement under section 19 of the Act.
Given the difference between the plaintiff's mark and the defendants' composite mark, I have serious doubts as to the merits of the plaintiff's proposition. Regardless, in these circumstances, I cannot be satisfied that there is no genuine issue to be addressed at trial. As a result, I find it more appropriate to allow this issue to be disposed of, like the others raised in the action, after a full trial.
Consequently, the motion for summary judgment is dismissed. Costs in the cause.
JUDGE
OTTAWA, ONTARIO
August 24, 2000
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