Docket: T-1360-14
Citation:
2015 FC 185
Ottawa, Ontario, February
13, 2015
PRESENT: The
Honourable Mr. Justice Manson
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BETWEEN:
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THE BLACK & DECKER CORPORATION
AND STANLEY BLACK & DECKER CANADA CORPORATION
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Applicants
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and
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PIRANHA ABRASIVES INC
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Respondent
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JUDGMENT AND REASONS
I.
Background
[1]
The Applicant, the Black & Decker
Corporation [B&D Corporation], owns the Canadian trademark registrations
for PIRANHA (TMA330,222), PIRANHA & Design (TMA330,223) and PIRANHA &
Design (TMA452,371) [the Applicants’ PIRANHA trademarks]. TMA330,222 and
TMA330,223 were registered on July 17, 1987, with declarations of use filed May
6, 1987 in association with “saw blades for power saws
and circular saw blades”. TMA452,371 was registered on December 29, 1995,
with a declaration of use filed November 14, 1995 in association with “saw blades for power saws and circular saw blades”.
[2]
Copies of the Applicants’ PIRANHA & Design
trademarks are shown below:
TMA330,223 TMA452,371
[3]
It is the Applicants’ position that the earlier
PIRANHA & Design trademark (TMA330,223) for power saws and circular saw
blades [the predecessor PIRANHA Design mark] has continued to be used by virtue
of the subsequent use of the later registered PIRANHA & Design trademark
(TMA452,371) [the successor PIRANHA Design mark]. However, there is no evidence
of use of the predecessor PIRANHA & Design mark before the Court and during
the hearing, counsel for the Applicants agreed that the Applicants were
prepared to rely on the PIRANHA word mark and the successor PIRANHA Design
mark. In my opinion, that is a prudent choice, as the argument that the
successor PIRANHA Design mark constitutes use of the predecessor PIRANHA Design
mark has no merit.
[4]
For the purposes of this application, I shall
refer to the Applicants’ two trademarks in issue (the PIRANHA word mark and the
successor PIRANHA Design mark) as the “Applicants’ PIRANHA marks”.
[5]
The Applicants’ PIRANHA marks have been in
association with saw blades for power saws and circular saw blades without limitation
on the type or form of circular saw blades or power saw blades. Their products
range in price from $10 to $30, and are available in steel, carbide or carbide
plus, and are recommended for general purpose jobs, fast cutting, and finishing
job applications involving wood, plywood, MDF, particle board, plastic and
composite. They can be used on a range of power saws.
[6]
The Applicant, Stanley Black & Decker Canada
Corporation [B&D Canada], has been licensed to use the PIRANHA trademarks
in Canada by B&D Corporation. Circular saw blades and jigsaw blades bearing
the Applicants’ trademarks have been sold through well-known national retailers
and hardware stores across Canada since May 1987 (for the PIRANHA word mark)
and November 1995 (for the successor PIRANHA Design mark), the Applicants’
PIRANHA marks having acquired an alleged reputation and goodwill in association
with these products.
[7]
Sales of the Applicants’ PIRANHA products in Canada have been steadily declining in recent years. They reached a high of $606,583 in
2004 but have dropped to $55,823 in 2013 and to an extrapolated $9,273 in 2014.
[8]
While the Applicants’ current use may be for
circular saw blades and saw blades for power saws primarily designed to be used
on wood or wood related materials, the registrations permit the Applicants to
use the PIRANHA marks in association with circular saw blades and saw blades
for power saws intended for use on any materials, including marble, granite,
glass, porcelain, tile or concrete.
[9]
The Applicants’ PIRANHA circular saw blades are
sold in association with the Applicants’ BLACK & DECKER brand. The
Applicants also sell abrasive circular saw blades for use on concrete, stone
and tile under the Applicants’ BLACK & DECKER, deWALT and ABMAST brands. In
2012, the Applicants’ corporate parent acquired Abmast Inc., a Canadian
manufacturer of abrasive circular saw blades, and has, allegedly, the intention
to sub-brand the Abmast abrasive circular saw blades with the Applicants’
PIRANHA marks in Canada. However, this proposed use is, at this time,
speculative.
[10]
Not only are the Applicants’ Registered Wares
and the Respondent’s wares both circular saw blades for use on power saws, but
they are also sold at a similar price point, sometimes in similar channels of
trade, and potentially to the same consumers.
[11]
The Applicants’ range of PIRANHA circular saw
blades cost between $10 and $30. The average price of the Respondent’s blade is
uncertain as the Respondent does not distinguish sales of its abrasive saw
blades from its other products sold in Canada.
[12]
Both the Applicants’ PIRANHA branded blades and
the Respondent’s PIRANHA branded blades are circular saw blades that can be
used on some of the same power tools.
[13]
Both the Applicants’ PIRANHA branded circular
saw blades and the Respondent’s PIRANHA ABRASIVE circular saw blades are
available for purchase at home improvement, building supply and hardware
stores. In some cases, the Applicants’ and the Respondent’s blades may be
available from the same retailers, such as TIM-BR-MART and Home Hardware (Home
Hardware stores include Danforth Lumber, Cooksville Lumber Co. and New
Canadians Lumber). However, at some locations, the only manner of purchases
would be by special order.
A.
Discovery of the Alleged Infringement
[14]
The Applicants discovered Piranha Abrasive
Inc.’s [Piranha Abrasives] use of the trade name Piranha Abrasives, their
websites, and an applied for PIRANHA ABRASIVES & Design trademark used on
the Respondent’s abrasive saw blades, in January of 2014. A copy of the
Respondent’s PIRANHA ABRASIVES Design trademark [“the PIRANHA ABRASIVES Design
Mark”] is shown below. The Applicants made multiple requests that the
Respondent cease their use on the basis that such use is likely to be confusing
with the Applicants’ registered trademarks, constitutes passing off and
depreciates the value of the goodwill in the Applicants’ PIRANHA trademarks.
[15]
After receiving these requests, on February 3,
2014 the Respondent filed an application for registration of PIRANHA ABRASIVES
& Design, shown above, application 1,662,383, claiming use in Canada since
at least May 2010 in association with “diamond abrasive
cutting, polishing and grinding tools” as well as “cutting machines, electric polishing machines, milling
machines, sharpening machines for sharpening diamond and stone cutting tools,
sharpening wheels of sharpening machines for sharpening tools and soldering and
welding of cutting, polishing and grinding tools”, on a proposed use
basis. The Respondent also commenced section 45
cancellation actions against the Applicants’ trademarks. The evidence of use
provided for the Respondent’s PIRANHA ABRASIVES Design Mark shows that it is
primarily used in association with diamond abrasive circular saw blades, and
associated products.
B.
The Respondent’s Business
[16]
Piranha Abrasives Inc. [the Respondent] was
incorporated in May of 2010, and operates out of Mr. Pino Cannarozzo’s
(Mr. Cannarozzo) home in Toronto, Ontario. It employs three full-time
workers, (Mr. Cannarozzo, his wife, and son), and two part-time workers.
[17]
The Respondent has designed and sold its high
quality diamond abrasive blades, grinding cups, polishing pads and core bits
for use with granite, marble, porcelain, tile, glass and concrete to companies
which sell these stone materials and building supplies in association with its
PIRANHA ABRASIVES Design mark.
[18]
The Respondent sells multiple sizes of the
circular-shaped diamond abrasive blades used for cutting granite, marble,
porcelain, tile, glass, stone and concrete, which display the Respondent’s
PIRANHA ABRASIVES Design mark. These blades are available for sale at stores
specializing in flooring, stone, and tile, as well as some more general
hardware and home building supply stores. The average cost of a blade is
uncertain, as the Respondent does not distinguish sales of its abrasive saw
blades from its other products sold in Canada.
[19]
The Respondent’s diamond abrasive blades are professional
grade and the actual blades are coloured with various bright colours. The
Respondent’s grinding cups are specialized products for use for grinding hard
materials, mostly concrete and granite, for stripping concrete and for concrete
floor preparation. The Respondent’s polishing pads are used for polishing
marble and/or granite and/or engineered stone. The Respondent’s core bits are
used to removed a cylinder of material [the “core”]), for example, a core bit
would be used to make a hole in a slab of granite in order to insert a faucet.
[20]
The Respondent commenced use of the PIRANHA
ABRASIVES Design mark in May of 2010.
[21]
Mr. Cannarozzo also owns the domain names
www.piranhaabrasives.com, www.piranhaabrasives.ca, and
www.piranhapowertools.com. His son, Matteo Cannarozzo owns the PIRANHA
ABRASIVES facebook page.
[22]
The Respondent submitted evidence of a Delta
Diamond circular saw blade branded with the term “piranha” purchased in Canada by Mr. Snooks from a Californian distributor. However, it was admitted that in
twenty-five years working in the bathroom renovation industry, Mr. Snooks
had never used this product and did not know if it was available on the
Canadian market. Mr. Aloia on behalf of the Respondent also submitted
evidence of a Husqvarna diamond scraper floor insert branded with the term
“piranha”, but admitted that in twenty-five years of experience in the field,
he had never heard of or used this product, nor does it bear any resemblance to
circular saw blades. This evidence of third party use of Piranha is of little
weight or relevance.
[23]
The evidence shows that both the Applicants’ and
the Respondent’s blades can be purchased and used by the same consumer, for use
in the same project, although for different purposes. Further, saw blades
designed for use on wood and those designed for use on tile or stone can be
used on the same power tool, but not for the same purpose.
II.
The Applicants’ Claim
[24]
The Applicants seek:
a.
A declaration that the Respondent has:
i.
Infringed the Applicant, B&D Corporation’s
registered trademarks PIRANHA ® (TMA330222), PIRANHA & DESIGN ® (TMA452371)
and PIRANHA & DESIGN ® (TMA330223) (as more particularly defined herein and
hereinafter referred to as the PIRANHA Trademarks, contrary to section 19 and
20 of the Trademarks Act [the Act];
ii.
Directed public attention to its wares, services
or business in such a way as to cause or be likely to cause confusion in
Canada, at the time it commenced so to direct public attention to them, between
its wares, services or business and the wares, services or business of the
Applicants, or either of them, contrary to subsection 7(b) of the Act;
and
iii.
Used the Applicant, B&D Corporation’s,
PIRANHA Trademarks, in a manner that is likely to have the effect of
depreciating the value of the goodwill attaching thereto, contrary to
subsection 22(1) of the Act.
b.
Permanent injunctive relief;
c.
Delivery up or destruction of all materials
making use of PIRANHA, PIRANHA ABRASIVE & Design (the PIRANHA ABRASIVE
trademarks);
d.
Withdrawal of Canadian Trademark Application 1,662,383;
e.
Transfer to the Applicant, The Black &
Decker Corporation, ownership and all rights of access, administration and
control for and over any domain name(s) owned or controlled by the Respondent
that makes use of the PIRANHA ABRASIVES Trademarks as or as part of their
domain name, including but not limited to piranhapowertools.ca,
piranhapowertools.com, piranhaabrasives.ca, piranhaabrasives.com and the
PIRANHA ABRASIVES Facebook ® page, and all similar web pages that reference the
PIRANHA ABRASIVES Trademarks, or any of them;
f.
The Applicants’ damages from or an accounting of
the Respondent’s profits for its trademark infringement, passing-off and
depreciation of goodwill;
g.
Pre-judgment and post-judgment interest in
accordance with the Federal Courts Act;
h.
The Applicants’ costs of this application on a
solicitor and client scale, plus HST;
i.
Such further relief as this Honourable Court may
deem just.
[25]
For the reasons that follow, I find:
a.
The Respondent has infringed the Applicant
B&D Corporation’s trademarks PIRANHA and PIRANHA & Design and trademark
registrations TMA330,222 and TMA452,371 in respect thereof;
b.
The Applicant B&D Corporation has not
established a reputation in its PIRANHA trademarks to support a valid claim in
passing-off;
c.
The Applicant B&D Corporation has not
established depreciation of goodwill in its registered trademarks by virtue of
the Respondent’s use of its PIRANHA ABRASIVES Design mark and Piranha Abrasives
trade name, contrary to section 22 of the Act.
III.
Applicant’s Evidence
A.
Affidavit of Jonathan Chong
[26]
Mr. Chong is a summer law student at
Gowling Lafleur Henderson LLP. He purchased three of the Applicants’ saw blades
bearing the trademark “PIRANHA” on May 29, 2014, from a Walmart located at 450 Terminal Ave, Ottawa, Ontario. The saw blades were identified as “PIRANHA, Premium
Carbide, 10” Circular Saw Blade(s)”; each was priced at $32.98. Mr. Chong
also purchased four more of the Applicants’ saw blades identified as “PIRANHA,
Carbide, 7 ¼” Circular Saw Blade”, priced at $15.98 each.
B.
Affidavit of Anthony Kunkel
[27]
Mr. Kunkel is a licensed private
investigator hired by Gowling Lafleur Henderson LLP in May of 2014 to
investigate the Respondent, Piranha Abrasives. He was instructed to determine
the nature of their business and products, the length of time they have been
active, and to purchase one of their saw blades
(1)
Cross-examination
[28]
Mr. Kunkel determined that the Respondent’s
abrasive saw blades using the PIRANHA ABRASIVES Design Mark were for sale at
Gianni’s Tile Gallery. He did not recall seeing any Black & Decker products
there, nor did he ask for any. He also did not recall seeing any wood, or wood
products for sale there. He did not do any research into any other Piranha
Abrasives distributors.
C.
Affidavit of Greg Weston
[29]
Mr. Weston is Commercial Marketing Manager,
Fastening & Accessories for B&D Canada. His evidence is that the
Applicants’ Piranha brand saw blades, including circular and jigsaw blades, are
manufactured for use by both professionals and non-professionals, are made from
different materials (steel, Carbide, Carbide Plus), and depending upon the
intended use of the blade, range in strength and have different numbers of
teeth (from 16 to 60).
[30]
The Applicants’ PIRANHA brand products have been
sold in stores as well as online, throughout Canada. They have been advertised
in Canada over the years as well; however, Mr. Weston only included a July
1999 advertisement which appeared in Hardware Merchandising, as well as a
PIRANHA branded water bottle wrap previously used as a promotion in Canada, with no specific date of distribution or use.
[31]
Mr. Weston included a table showing the
sales in Canada of Piranha branded blade products from 1999 to 2014 (up until
April 30, 2014).
[32]
After becoming aware of Piranha Abrasives Inc.,
Mr. Weston reviewed their list of distributors and noted the following
examples of common distributors to both the Applicants and the Respondent:
•
Cooksville Lumber Co., Ltd., Mississauga;
•
Danforth lumber, Toronto;
•
Dragona Flooring Supplies, Mississauga;
•
Dragona Flooring Supplies, Ottawa;
•
New Canadians Lumber, Toronto;
•
Proline Hardware Ltd., Vaughan.
(1)
Cross-examination
[33]
Mr. Weston clarified that paragraph five of
his original affidavit should have specified that the Black & Decker
PIRANHA circular saw blades are not made to cut stone, masonry, concrete or
tile. Those sorts of products are sold through another product line called
Diamond Abrasives, and are DEWALT and ABMAST branded. The particular blades
sold under the Applicants’ PIRANHA trademarks are intended for use on wood,
wood-related products, and sometimes plastics. These blades all bear the Black
& Decker logo, black and orange colours and a picture of wood, signifying
what material they are meant to be used on. They also include a warning that
they are not to be used on masonry, concrete, fibre, cement or metal.
[34]
Mr. Weston also admitted that he would not
use the above-mentioned B&D Piranha blades on anything other than wood.
[35]
In providing his list of distributors that were
common to the Applicants and the Respondent, Mr. Weston admitted he had
not confirmed whether or not they had specifically purchased the Applicants’
PIRANHA brand saw blades, except for New Canadian Lumber.
[36]
Mr. Weston also confirmed that the 1999
advertisement, to the best of his knowledge, outside of their website, was the
last advertisement for the Applicants’ PIRANHA saw blades in Canada.
(2)
Re-examination
[37]
Mr. Weston clarified that while
professionals would not usually purchase Black & Decker PIRANHA blades from
Walmart, they would likely purchase them from TIM-BR Mart and Home Hardware,
among other distributors, where available.
IV.
Respondent’s evidence
A.
Affidavit of Pino Cannarozzo
[38]
Mr. Cannarozzo is the Director of Piranha
Abrasives Inc. and has been the sole director since its incorporation in May of
2010. From 1988 until 2010, he was a full-time contractor in the stone and tile
industry, then a contractor building homes and managing large commercial
projects specializing in stone installation, as well as high-end residential
projects, throughout the Toronto area.
[39]
Mr. Cannarozzo’s evidence is that the
Respondent’s products consist of high quality diamond abrasive blades, grinding
cups and accessories for use with granite, marble, porcelain, tile, glass and
concrete [Piranha Abrasives’ products]. The Respondent sells to companies which
sell granite, marble, porcelain, tile, glass and concrete and/or building
supplies. These products primarily cater to professional use. They have never
sold any blades made for use with wood.
[40]
Piranha Abrasives’ products bearing the PIRANHA
ABRASIVES Design Mark and Piranha Abrasives trade name have coexisted in the
Canadian market with Black & Decker PIRANHA circular saw wood blades since
2010. Mr. Cannarozzo found websites of various companies who sell blades
in the United States with the trademark PIRANHA, none of which are for wood
cutting. He has never been made aware of any actual confusion between Piranha
Abrasives’ diamond abrasive blades and other products, and the Applicants’
circular saw blades bearing the PIRANHA trade marks.
[41]
In his twenty-six years of experience as a
builder, contractor, and diamond abrasive tool designer, he did not use or know
of any Black & Decker blades or other products bearing a PIRANHA trademark.
He is not aware of any company or store that sells both the Applicants’ and
Piranha Abrasives’ products.
[42]
Mr. Cannarozzo insists that he came up with
the PIRANHA ABRASIVES & DESIGN trademark to describe his own blades for use
with tile and stone materials. The company has always sold its products
associated with the words PIRANHA ABRASIVES and not PIRANHA alone.
[43]
The design of Piranha Abrasives’ diamond
abrasive blades has taken twelve years. It is essential to use the right blade
for cutting stone and concrete materials, since an improper blade could break
the material being cut, create an uneven cut edge, break the blade, or cause
injury to the tool operator. The company’s grinding cups, polishing pads, and
core bits have been sold in association with the PIRANHA ABRASIVES Design mark
since 2010.
[44]
Each Piranha Abrasives blade has real or
synthetic diamonds for cutting. They range from 1 inch in diameter to 5 feet,
the most expensive of which sells for approximately $5,000.
[45]
The outer “diamond segment” of each blade is
comprised of a variety of metals with industrial diamonds, specifically
correlated to the hardness of the material to be cut. This segment is entirely
different from the corresponding segment on a blade for cutting wood, which has
teeth made of carbide, a material not suitable for cutting stone.
[46]
Mr. Cannarozzo asserts that construction
professionals would always assure that the blade they are using is appropriate
to the material being cut, and cannot imagine a layperson purchasing a blade
without looking carefully to see what its purpose is.
[47]
It is Mr. Cannarozzo’s position that the
packaging of the Applicants’ PIRANHA brand products clearly display Black &
Decker’s name, a picture of wood, and the distinctive orange and black colours
associated with Black & Decker products. They also include a warning on the
front directing readers to consult the back of the packaging, where it is
clearly stated that the blades are not to be used with masonry, concrete, fiber,
cement or metal.
(1)
Cross-examination
[48]
When asked about its distributors,
Mr. Cannarozzo admitted that they offer goods and services to both
professionals and non-professionals.
[49]
When shown images of websites for Danforth and
New Canadian Lumber depicting one of the Applicants’ Piranha products, being
sold along with a saw listed as available online and in store, Mr. Cannarozzo
confirmed that this signified Black & Decker Piranha products were
available at least at two locations he had listed as his distributors.
[50]
Regarding the trade name and brand PIRANHA
ABRASIVES, he confirms that he came up with it himself, and did not consult a
trademark attorney, nor did he conduct a trademark search. He filed a trademark
application for PIRANHA ABRASIVES & Design only after a complaint was
lodged against him by Black & Decker.
(2)
Re-examination
[51]
On re-examination, Mr. Cannarozzo reviewed the
printouts from the Danforth and New Canadian Lumber websites and confirmed that
below where it highlights the products depicted are available online and in
stores, it further states “not all items shown are
stocked in store, but can be special ordered.”
B.
Affidavit of Michael Stephan
[52]
Mr. Stephan is a Senior Investigator with
Canpro King-Reed LP, an investigative firm retained by Counsel for the
Respondent, to attend certain stores (Cooksville Lumber, Danforth Lumber,
Dragona Flooring (Mississauga), New Canadians Lumber and Proline Hardware ), to
ascertain the types of Piranha Abrasives branded products on display and
whether they are sold in proximity to any Black & Decker brands, as well as
to make a purchase of a PIRANHA ABRASIVES brand product.
[53]
In conducting this investigation,
Mr. Stephan found that Piranha Abrasives’ blades of dry/wet cut masonry,
porcelain, glass and marble were displayed at each store, some of which carried
the blades and others required special orders. No Stanley Black & Decker
blades were noted at any of the stores he was asked to visit.
(1)
Cross-examination
[54]
Mr. Stephan confirmed that he was asked to
attend only the above-listed stores. At each store, he did not ask for any
Black & Decker circular saw blades, nor did he see or ask for any circular
saw blades for cutting wood, or for any Black & Decker or Dewalt circular
saw blades for cutting tile, stone or concrete.
[55]
Mr. Stephan was shown the same images from
the Danforth and New Canadians Lumber websites as Mr. Cannarozzo. He
confirmed that the image depicting the Applicants’ Piranha blade being sold
along with one of their saws, and the inclusion of wording that it is available
online and in stores, would lead him to believe that he could purchase those
blades at that store or online through their website.
C.
Affidavit of Ercole Aloia
[56]
Mr. Ercole (“Eric”) Aloia owns Aloia Bros.
Concrete Contractors Ltd. Since approximately 1988, this company has provided
exterior curbs, sidewalks and done municipal road work throughout southern Ontario. He has twenty-six years of experience working in the concrete industry, and has
used Piranha Abrasives concrete cutting blades since approximately 2010.
[57]
Mr. Aloia is a friend of
Mr. Cannarozzo, and at his request placed an order for Husqvarna Piranha
diamond scraper inserts at Concord Hardware in Concord, Ontario. Prior to this
request he had never heard of this product, or of Black & Decker or Stanley
tools products associated with the word “piranha”.
(1)
Cross-examination
[58]
Mr. Aloia admitted that he knew what a
circular saw blade looked like, and that his business uses them regularly. He
further confirmed that at times, both a wood blade and a concrete blade might
be used in the same project, but for different applications.
D.
Affidavit of Craig Snooks
[59]
Mr. Snooks has been the owner of a Bath
Fitter franchise located at 803 Arrow Road, Toronto, Ontario for approximately
fifteen years. His company installs custom-molded bathtubs over existing or
damaged tubs, as well as custom-molded shower installations. Bath Fitter
locations can be found across the United States and Canada. He is a friend of
Mr. Cannarozzo.
[60]
He has approximately twenty years of experience
in bathroom remodelling. He has never used any products, tools or blades of the
Applicants. Before Mr. Cannarozzo informed him of the matter at hand,
Mr. Snooks had never heard of any other blade or tool of any type sold
under a trademark containing the word “piranha”,
other than Piranha Abrasives products.
[61]
He also stated that anyone purchasing a blade
will consult the packaging to determine what materials it can be used on, and
that wood and stone blades are completely different visually.
(1)
Cross-examination
[62]
Mr. Snooks admitted that it might be
possible to use both a wood circular saw blade and a circular saw blade for
cutting tile or stone on the same power tool, but that he had not personally
done it.
E.
Affidavit of Edgar Gabriel
[63]
Mr. Gabriel has been the Chief Executive
Officer and Manager of New Canadians Lumber since approximately 2003. His
company has sold lumber, ceramic tile, paint and other renovating and
decorating materials and tools to professionals and non-professionals in the
Greater Toronto Area for over forty years. He has been a Piranha Abrasives’
customer for approximately three years, selling their diamond abrasive blades
out of New Canadians Lumber’s ceramic tile department, which is located in a
separate building from its main store.
[64]
Mr. Gabriel stated that his company does
not sell any B&D Canada circular saw blades, although they do sell other
blades used for cutting wood. He was unaware of a PIRANHA line of products from
Black & Decker, until recently informed of the current matter. His
customers and employees have not made him aware of any confusion between the Respondent’s
products and those of the Applicants’ PIRANHA line.
[65]
He attested to obvious differences between
abrasive blades and wood blades, and the danger of using wood blades to cut
granite, marble, porcelain, glass or concrete.
(1)
Cross-examination
[66]
Mr. Gabriel confirmed that his store,
formerly known as New Canadians Lumber, is now a Home Hardware. When asked if
he sold Black & Decker PIRANHA circular saw blades he stated he did not,
but when shown the images of a Black & Decker saw sold with a PIRANHA blade
from his company’s website, he clarified that his location does not stock them,
but they can be ordered into his store if available at the Home Hardware
warehouse.
[67]
Mr. Gabriel also admitted that the same
person might purchase both circular saw blades for wood and circular saw blades
for tile to be used on the same project.
(2)
Re-Examination
[68]
Mr. Gabriel confirmed that under the images
shown to him by counsel for the Applicants of the Home Hardware website, it is
stated “not all items shown are stocked in store, but
can be special ordered. Please contact your local Home store for more
information…”.
F.
Affidavit of Ross Keltie
[69]
Mr. Keltie has been the Vice President,
Sales and Marketing at Centura Limited, a supplier of floor and wall materials
with fourteen locations across Canada, since 1984. Centura has been a customer
of Piranha Abrasives since approximately 2012, but does not sell any of the
Applicants’ products.
[70]
In his many years of experience in the industry,
he has never been confused between Black & Decker products and those of
Piranha Abrasives.
(1)
Cross-examination
[71]
Mr. Keltie clarified on cross-examination
that of the fourteen locations, only approximately 60% would sell limited
amounts of product to the public, since they generally sell to commercial
contractors, as well as stores.
[72]
Further, they stopped selling hardwood between
one and a half and two years ago. They still sell some professional tools
associated with hardwood installation, but they would be unlikely to have them
in stock.
[73]
When asked if he was familiar with circular saw
blades sold under B&D Canada’s brands, such as Dewalt, Black & Decker
and Abmast, he admitted that until he was presented with information before
submitting his affidavit, he had no idea that Dewalt was owned by Black &
Decker, or that Stanley was a part of Black & Decker. He knew they offered
wood blades, but not that they were involved in distributing and selling
ceramic tile blades.
V.
Trademark Infringement
[74]
Section 19 of the Act provides the
Applicants, as the owner and licensee of the PIRANHA marks in Canada, with the right to the exclusive use of the PIRANHA marks throughout Canada, in association with the goods covered by each registration. Section 20 deems this right to
be infringed by a person not entitled to its use who sells, distributes or advertises
wares or services in association with a confusing trademark or trade name. Subsection
7(b) of the Act provides a prohibition against passing-off, by directing
public attention to a party’s wares, services or business in such a way as to
cause or be likely to cause confusion in Canada with the wares, services or
business of another.
[75]
When assessing confusion, the test to be applied
is a matter of first impression in the mind of a casual consumer, somewhat in a
hurry. As stated by the Supreme Court of Canada in Masterpiece Inc v Alavida
Lifestyle Inc, 2011 SCC 27 at para 40 [Masterpiece]:
40 At the outset of this confusion
analysis, it is useful to bear in mind the test for confusion under the Trademarks
Act. In Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC
23, [2006] 1 S.C.R. 824, Binnie J. restated the traditional approach, at para.
20, in the following words:
The test to be applied is a matter of
first impression in the mind of a casual consumer somewhat in a hurry who sees
the [mark] at a time when he or she has no more than an imperfect recollection
of the [prior] trademarks, and does not pause to give the matter any detailed
consideration or scrutiny, nor to examine closely the similarities and
differences between the marks.
Binnie J. referred with approval to the
words of Pigeon J. in Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco
Corp., [1969] S.C.R. 192, at p. 202, to contrast with what is not to be
done -- a careful examination of competing marks or a side by side comparison.
[76]
The question of confusion is whether the
ordinary consumer will, on seeing the Respondent’s PIRANHA ABRASIVES Design
Mark as used with Respondent’s goods or services, infer as a matter of first
impression that the goods or services emanate from or are associated with the
Applicants, in that the use of both the Applicants’ PIRANHA marks and the
Respondent’s PIRANHA ABRASIVES Design Mark in the same area would be likely to
lead to the inference that the wares or services associated with these
trademarks are manufactured, sold, leased, hired or performed by the same
person, whether or not the wares or services are of the same general class (subsection
6(2) of the Act; Veuve Cliquot Ponsardin v Boutiques Cliquot Ltee,
2006 SCC 23 at para 20 [Veuve Cliquot]; Mattel Inc v 3894207 Canada
Inc, 2006 SCC 22 at para 51 [Mattel]).
[77]
Subsection 6(5) of the Act sets out the
required approach to analyzing confusion:
|
6. (5) In determining whether trademarks
or trade-names are confusing, the court or the Registrar, as the case may be,
shall have regard to all the surrounding circumstances including
|
6. (5)
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) the inherent distinctiveness of
the trademarks or trade-names and the extent to which they have become known;
|
a) le caractère distinctif inhérent des
marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont
devenus connus;
|
|
(b) the length of time the trademarks
or trade-names have been in use;
|
b) la
période pendant laquelle les marques de commerce ou noms commerciaux ont été
en usage;
|
|
(c) the nature of the goods,
services or business;
|
c) le genre de produits, services ou
entreprises;
|
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(d) the nature of the trade; and
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d) la nature du commerce;
|
|
(e) the degree of resemblance between the trademarks or
trade-names in appearance or sound or in the ideas suggested by them.
|
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.
|
[78]
The Respondent argues that there is no evidence
of actual confusion between the Applicants’ PIRANHA marks and the Respondent’s
PIRANHA ABRASIVES Design Mark, despite over four years of co-existence. The
Respondent’s affiants in the stone, tile and cement industries, respectively,
have never been confused between the Respondent’s Wares in association with the
Respondent’s Mark and the Applicants’ Wares in association with the Applicants’
Marks. Some of the Respondent’s distributors, Centura and New Canadians, have
never had any consumer or employee complain of confusion.
[79]
I do not agree that on the facts of this case a
negative inference should be drawn, simply because there is no evidence of
actual confusion, as this is not a case where evidence of actual confusion “would readily be available if the allegation of likelihood
of confusion was justified” (Mattel, above, at para 55).
[80]
Moreover, the Respondent states that the
Applicants’ Marks are always used with the BLACK & DECKER and ORANGE and BLACK trademarks. As a matter of first impression, the Respondent submits, the
public would not perceive the Applicants’ Marks as forming distinct trademarks.
The Applicants’ Marks do not stand out and therefore it cannot be concluded
that it would create a separate impression in the minds of the public. Rather,
if noticed, the public would view the Applicants’ Marks as being tied to the
more prominent mark BLACK & DECKER. Consequently, the public would perceive
the trademarks “BLACK & DECKER” and possibly
“BLACK & DECKER PIRANHA” or “BLACK & DECKER PIRANHA & Design” as being
used, but not PIRANHA or PIRANHA & Design.
[81]
While a factor to be considered, I do not accept
that simply because a house brand or trademark, such as BLACK & DECKER, is
used in association with a product brand or trademark, such as PIRANHA or
PIRANHA and Design, and may be somewhat more prominent, it results in a
subjugation or erosion of the distinctiveness of the product trademark. It is
certainly not the case here. The distinctive PIRANHA marks and length of use,
as well as the degree of overlap, weigh against such a finding, for reasons
that follow.
[82]
The Respondent also urges me to limit the
statement of goods covered by the Applicants’ trademark registrations in issue
to cover only circular saw blades used in cutting wood or plastic, and not
abrasive diamond saw blades as used by the Respondent for cutting granite,
marble, porcelain, tiles, glass, stone and concrete.
[83]
I disagree with the Respondent’s approach to
likelihood of confusion on this front. The proper focus is what the Applicants’
registered trademarks authorize the Applicants to have the exclusive right to
do, in using their registered trademarks in Canada, not what the Applicants
happen to be doing at the current time (Masterpiece, above, at para 53).
[84]
When one considers the factors of subsection
6(5) of the Act, in my view, it is reasonably clear on a balance of
probabilities that there is a likelihood of confusion between the Applicants’
PIRANHA trademarks as registered, and the Respondent’s PIRANHA ABRASIVES and
Design Mark, as used by the Respondent in association with abrasive circular
saw blades.
A.
Inherent Distinctiveness of the trademarks or
trade name and the Extent Known
[85]
The Applicants’ PIRANHA marks are inherently
distinctive as used in association with the goods covered by PIRANHA
registrations. The Applicants’ PIRANHA brand circular saw blades have been sold
in Canada since 1987 and continue to be sold, albeit in a diminished way, in
several major retail locations across Canada.
[86]
While the Respondent has offered evidence that
its PIRANHA ABRASIVES Design Mark and Piranha Abrasives trade name have been
used in Canada since 2010, the use is relatively recent compared to the
longstanding use of the Applicants’ PIRANHA trademarks.
[87]
The Respondent has attempted to undermine the
distinctiveness of the Applicants’ PIRANHA Trademarks by pointing to third
party use of the word “piranha” in association with identical or related wares,
namely a wet tile blade sold by Delta Diamond and a floor scraper insert sold
by Husqvarna. The evidence provided, however, relates to usage outside of Canada, or to usage in association with different kinds of wares.
[88]
There is no evidence that these third parties
are selling piranha brand wares in Canada, other than the possibility to order
such goods online from Canada, for which no evidence was provided, except in
the context of doing so for this litigation, or that the products have been
sold, distributed or are known to any extent in Canada.
B.
Length of Time in Use
[89]
The Applicants’ PIRANHA Trademarks have been
registered and in use in Canada since July 1987 (PIRANHA word mark) and 1995
(PIRANHA & successor Design mark). In contrast, the Respondent’s Trademark
has only been in use since May 2010.
C.
Nature of Wares and Trade
[90]
As stated above, the Applicant B&D
Corporation’s trademark registrations (TMA 330,222 and TMA 452,371)
provide the Applicants, as owner and licensee, with the exclusive right to use
these trademarks in association with saw blades for power saws and circular saw
blades. There is no limit on the type of saw blades or circular saw blades, or
the form of use.
[91]
The Respondent has used its PIRANHA ABRASIVES &
Design trademarks on diamond abrasive cutting, polishing and grinding tools for
use with marble, granite, glass, porcelain, tile and concrete, including
diamond abrasive circular saw blades, for use on power saws.
[92]
When engaging in a confusion analysis,
the Court must refer to the exclusive rights granted by the registration. While
“actual use is not irrelevant...it should not be
considered to the exclusion of potential uses within the registration” (Masterpiece,
at paras 56-59).
[93]
While the Applicants’ current use may be for
circular saw blades and saw blades for power saws primarily designed to be used
on wood or wood related materials, the registrations permit the Applicants to
use the PIRANHA marks in association with circular saw blades and saw blades
for power saws intended for use on any materials, including marble, granite,
glass, porcelain, tile or concrete.
[94]
Not only are the Applicants’ circular saw blades
and the Respondent’s abrasive circular saw blades for use on power saws, but
some of their respective circular saw blades are also sold at a similar price
point, in similar channels of trade, and potentially to the same consumers.
[95]
Again, these factors favour the Applicants.
D.
Degree of Resemblance
[96]
This is the factor that is often likely to have
the greatest effect on the confusion analysis and, in this case, the degree of
resemblance is high (Masterpiece, at para 49).
[97]
In Masterpiece, at para 84, the Supreme
Court acknowledged that the dominant or most striking component of a mark
affects the overall impression on an average consumer, and this fact should be
taken into consideration when assessing the trademark as a whole:
However, considering a trademark as a whole
does not mean that a dominant component in a mark which would affect the
overall impression of an average consumer should be ignored: see esure
Insurance Ltd. v. Direct Line Insurance plc, 2008 EWCA Civ 842, [2008]
R.P.C. 34, at para. 45, per Arden L.J. This is because, while the consumer
looks at the mark as a whole, some aspect of the mark may be particularly
striking. That will be because that aspect is the most distinctive part of the
whole trademark.
[98]
When one considers the use of PIRANHA and the
piranha fish design by the Respondent and the same PIRANHA word mark and quite
similar fish design covered by the Applicants’ PIRANHA trademark registrations,
I have little trouble finding a significant degree of resemblance.
[99]
As stated above, the Respondent has also argued
that given there has been no actual confusion for over three to four years of
coexistence, and given the clear instructions and warnings on each party’s
packaging not to use their respective saw blades for purposes other than each
one’s specific applications (wood and plastic for the Applicants; stone, tile,
glass and concrete for the Respondent), there is no likelihood of confusion.
[100] While certainly factors to be considered, I have addressed that
argument above and do not find this factor to be persuasive. Once again, the
proper test for likelihood of confusion is whether the use by the Respondent of
PIRANHA ABRASIVES & Design trademark is likely to be confused with the
goods covered by the Applicants’ trademark registrations for PIRANHA and
PIRANHA & Design circular saw blades and blades for power saws, such that
the relevant consumer would likely be confused as to the source of the goods,
or as to an association or connection between the Applicants and Respondent as
the source of those goods.
[101] I find that the Respondent’s use of the PIRANHA ABRASIVES &
Design trademark on abrasive circular saw blades is likely to be confusing with
the Applicants’ registered PIRANHA marks and infringes the Applicants’ PIRANHA
registered trademarks TMA330,222 and TMA452,371.
VI.
Passing Off
[102] The three necessary components of a passing-off action are (1) the
existence of goodwill or a reputation associated with a plaintiff’s/applicant’s
good or services; (2) deception of the public due to a misrepresentation; and
(3) actual or potential damage to the plaintiff/applicant caused by the
misrepresentation (Ciba-Geigy Canada Ltd v Apotex Inc, [1992] 3 SCR
120).
[103] As the Respondent points out, the Applicants’ goods are always sold
in association with the Applicants’ BLACK & DECKER and ORANGE and BLACK
trademarks. There is no evidence of the extent of an independent reputation
having been established in the Applicants’ PIRANHA trademarks, no third party
evidence of any reputation, and given the diminished sales and lack of
advertising to support such a reputation, I find that the Applicants have not
made out a case for passing off, on the evidence before me.
[104] As stated by Justice de Montigny in Hayabusa Fightwear Inc v
Suzuki Motor Corporation, 2014 FC 784 at para 46:
[46] I agree with counsel for the
Applicant that when comparing the likelihood of confusion between two
trade-marks, the approach to be taken will significantly differ depending on
whether the comparison is made with a registered or unregistered mark. When
dealing with a registered trade-mark, one must consider the entire scope of
rights granted under the registration, and its potential use must be considered
as well as its actual use: Masterpiece Inc. v Alavida Lifestyles Inc.,
2011 SCC 27 at para 59, [2011] 2 S.C.R. 387. The comparison will be much narrower
when comparing an offending mark with an unregistered trade-mark, and will be
restricted to the actual use of that mark, as the Federal Court of Appeal
recently confirmed in Marlboro Canada Limited v Philip Morris Products S.A.,
2012 FCA 201 at paras 55-56:
Justice Marshall Rothstein, writing
for the Court made it very clear that, when considering the degree of
resemblance between marks, the approach differed depending on whether they were
registered or not.
For unregistered marks, a court
should only consider the manner in which they have actually been used. However,
for registered marks, a court must consider the trade-mark registration
according to its terms to reflect the entire scope of the rights granted under
the latter.
[105] The requisite reputation to establish a case of passing off has not
been shown on the evidence before me.
VII.
Depreciation of Goodwill
[106] The Supreme Court of Canada has set out the four elements of section
22 of the Act:
Section 22 of our Act has received
surprisingly little judicial attention in the more than half century since its
enactment. It seems that where marks are used in a confusing manner the
preferred remedy is under s. 20. Equally, where there is no confusion,
claimants may have felt it difficult to establish the likelihood that
depreciation of the value of the goodwill would occur. Be that as it may, the
two statutory causes of action are conceptually quite different. Section 22 has
four elements. Firstly, that a claimant's registered trade-mark was used by the
defendant in connection with wares or services -- whether or not such wares and
services are competitive with those of the claimant. Secondly, that the
claimant's registered trade-mark is sufficiently well known to have significant
goodwill attached to it. Section 22 does not require the mark to be well known
or famous (in contrast to the analogous European and U.S. laws), but a
defendant cannot depreciate the value of the goodwill that does not exist.
Thirdly, the claimant's mark was used in a manner likely to have an effect on
that goodwill (i.e. linkage) and fourthly that the likely effect would be to
depreciate the value of its goodwill (i.e. damage).
Veuve Clicquot, above, at para 46
[107] On the evidence before me, there is no basis to find depreciation of
goodwill in the Applicants’ trademarks, having regard to the Respondent’s
activities and use of the PIRANHA ABRASIVES & Design trademark or trade
name.
[108] The Applicants submit that given the lack of control over the
Respondent’s use of the PIRANHA ABRASIVES & Design trademark and Piranha
Abrasives trade name, that in‑and‑of itself, results in
depreciation of goodwill.
[109] While it is one factor to consider, there is no evidence showing
that the Applicants have suffered any loss of reputation or customers due to
the activities of the Respondent. The high quality of the Respondent’s abrasive
saw blades is not disputed and given the lack of evidence of the Applicants’
own reputation in its PIRANHA marks as used with its circular saw blades, other
than a use over an extended period of time with its BLACK & DECKER
trademarks, with little or no advertising for many years, and substantially
diminished sales for the past five years, I do not find any evidence of
depreciation of goodwill on the evidence before me.
VIII.
Remedies
[110] While I have decided there is trademark infringement resulting from
the Respondent’s use of its PIRANHA ABRASIVES & Design trademark and trade
name as used in association with abrasive circular saw blades, I do not find
there is any such infringement by the Respondent’s use of its PIRANHA ABRASIVES
& Design trademark or trade name with its other products. I also have not
found any passing off or depreciation of goodwill by virtue of the Respondent’s
activities.
[111] As such, I find that the Applicants’ are not entitled to lost
profits, but only to nominal damages in respect of trademark infringement, As
well, an injunction should only issue with respect to the use of PIRANHA
ABRASIVES & Design on its abrasive circular saw blades and associated
packaging and other materials used with such saw blades.
[112] The Respondent’s pending trademark application 1,662,383 should be
amended to delete diamond abrasive cutting tools.
[113] Given my findings above, I do not find that the Respondent’s domain
names www.piranha abrasives.com or www.piranhaabrasives.com, should be
transferred. While I might have found otherwise with respect to the www.piranhapowertools.com
domain name, I agree with the Respondent that given the domain name owner is
not a party to this proceeding, the appropriate relief may be through domain
name dispute proceedings, not this proceeding.
[114] Further, the Respondent will have ninety (90) days from the date of
this Judgment to sell off any infringing inventory of the abrasive circular saw
blades and otherwise shall destroy or deliver up any remaining infringing
inventory of these saw blades to the Applicants.
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