C – L’emploi et l’exclusivité d’emploi (2, 4, 18, 19, 20 LMC)

20. Veuve Clicquot Ponsardin c Boutiques Cliquot Ltée, 2006 CSC 23.

(1) create confusion with the Veuve marks? (this would violate section 20 of the TMA)

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  Purpose of TM is to symbolize the source and quality of wares and services, to distinguish wares/services coming from different merchants, and to prevent confusion.
  
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  Confusion defined in s. 6 of TMA: confusion occurs “if both TMs in the same area would be likely to lead to the inference that the wares or services assciated with those trade-marks are manufactured, sold, leaser, hired, or performed by the same person, whether or not the wares are of the same general class.”
  
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    The test: first impression of casual consumer somewhat in a hurry who observes the mark with no more than an imperfect recollection of the famous mark, and who does not pause to give the matter any detailed consideration nor to examine similarities between the famous and non-famous marks in all the surrounding circumstances
    
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  Statute gives non-exhaustive list of factors to be considered when determing confusion (s.6(5)).
  
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    the inherent dsitinctiveness of the TMs and the extent to which they have become know
    
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      the Veuve TMs are indeed distinctive
      
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    the length of time the TMs have been in use
    
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      the Veuve TMs have been in use much longer than the Cliquot ones
      
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    the nature of the wares, services, or businesses
    
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      the compaines make very different wares. There is no evidence that an ordinary consumer woul associate the Veuve TMs with the respondent's store.
      
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    the nature of the trade
    
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      the goods of the two parties are traded and distributed in different channels
      
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    the degree of resemblance between the TMs in appearance or sound or ideas suggested
    
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      there is a a resemblance between the marks. Confusion is not predicated on being identical and only requires that the same idea be conveyed to the mind of a somewhat hurried consumer
      
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  Evidence shows that Veuve TMs have an aura of luxury. This, and fame, are not conclusive for the determination of confusion. They are one factor to be considered.
  

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  S. 22(1): No person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.
  
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    Appellant must show that the respondents have made use of marks sufficiently similar to Veuve's to evoke a mental association of the two marks that is likely to to depreciate the value of the goodwill attaching to the appellant's mark.
    
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  A mental association made by a consumer between two marks does not necessarily give rise to a likelihood of depreciation. Depreciation has to be proven.
  
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  If there is no confusion, difficult to establish a depreciation of the value of goodwill.
  
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  The depreciation analysis in s.22 has four elements. For depreciation to exist (application in italics):
  
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    The claimant's TM must be used in conneciton with wares or services (which do not necessarily have to be in competition with those of the claimant).
    
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      Use is defined in s. 4 of the TMA: regarding wares, the TM must be present at the time of the transfer of property for use to exist. Regarding services, it must be displayed during the performance or advertising of the services.
      
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      There was no use as the Act describes the term, but the TM conveyed the same idea. It makes no diffference that Cliquot is spelled differently from Clicquot.
      
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      Trial judge found that a consumer who saw the word “Cliquot”would not make an link or connection to the Veuve TMs. Without such a link, you cannot have depreciation of the Veuve TM.
      
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    The claimant's TM must be sufficiently well-known to have significant goodwill attached to it. (famousness is not required)
    
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      Goodwill can exist in trade connections, particular premises, experience, or good repute.
      
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      Factors indicating goodwill include: degree of recognition of the TM within the relevant universe of consumers, the volume of sales, the depth of market penetration, the extent and duration of advertising and publicity, the geographic reach of the TM, the TM's inherent or acquired distinctiveness, whether products associated within the mark are tradely widely, and whether the mark is of a particular quality.
      
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        Applying these factors = the Veuve TMs definitely have goodwill.
        
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    The claimant's TM must be used in a manner likely to have an effect on the TM's goodwill
    
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      the trial judge's finding that consumers would not associate the two marks makes establishing this effect very difficult.
      
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    The likely effect would be to depreciate the value of the goodwill
    
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      spreading a TM too thinly over a wide range of products with differing quality can depreciate a TM. The proof does not show that this has occurred
      

4. (1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.

Idem

(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

Use by export

6. (1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.

Idem

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

Idem

Idem

What to be considered

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

Exception

(2) No registration of a trade-mark prevents a person from making any use of any of the indications mentioned in subsection 11.18(3) in association with a wine or any of the indications mentioned in subsection 11.18(4) in association with a spirit.

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

Action in respect thereof

(2) In any action in respect of a use of a trade-mark contrary to subsection (1), the court may decline to order the recovery of damages or profits and may permit the defendant to continue to sell wares marked with the trade-mark that were in his possession or under his control at the time notice was given to him that the owner of the registered trade-mark complained of the use of the trade-mark.

21. Chanel S de RL v. Robert Victor Marcon (2010)

1. 
   M failed to state that he was satisfied that he was entitled to use the TM in association w/ his wares. (s. 30(i) TMA)
   
2. 
   M's TM is not registrable b/c of confusion that will result between it and the classic Chanel TMs. (s. 12(1)(d) TMA)
   
3. 
   M is not a person entitled to registration because the TM is confusing (s. 16(3)(a) and (c) TMA)
   
4. 
   The mark is not distinctive within the meaning of s. 2 TMA and it does not distinguish itself from Chanel's TMs.
   

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  The Applicant (i.e. Marcon) has to show that its proposed TM complies w/ the Act.
  
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  The Opponent (i.e. Chanel) has to give enough evidence to show grounds of opposition are true. Who goes first?
  

1. Section 12(1)(d) (Confusion)

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  Chanel meets its initial burden b/c it clearly has valid, registered TMs on the word CHANEL.
  
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  Applicant needs to show that there is no likelihood of confusion between the two marks.
  
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    Confusion: s. 6(2) TMA: there is confusion in the use of both TMs in the same area would be likely to lead to the inference that the wares came from the same source, regardless of whether the wares are of the same general class.
    
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      The test is one of first impression and imperfect recollection and takes into account all the surrounding circumstances. There does not need to be a connection between the two areas of trade in order for a likelihood of confusion to be established.
      

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  The marks are identical. Marcon has failed to take into account the notoreity of Chanel's TMs. Chanel has shown its high sales figures (over $300 million total in Canada) and its outlay of almost $90 million on promotions. Its TMs are clearly well known.
  
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  M's TM is not well known. He has tried to show that Chanel also exists as a first name and a surname, but this does not lessen the distinctiveness of Chanel's TM.
  

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  Chanel's TMs go back as far as 1920. M's are brand new
  

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  the board must compare the wares that are covered by the TMs to see if they are dissimilar and can co-exist.
  
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  They are similar and co-existence is not possible. M's products are largely in the same field as Chanel's skin care products. M’s products as “natural extension” of Chanel's
  
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  They will liekly be sold in the same places. Channels of trade will overlap.
  

This also succeeds. The finding of confusion makes this finding a sure thing.

24. Pro-C Ltd v Computer City Inc. (2001)

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  Judge relied on s. 19 TMA, which specifies that the owner of a TM only has exclusive rights over it in respect of particular wares and services. In this case, the wares and services were different even if TM was the same.
  
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  There cannot be liability under the TMA because there was no use.
  
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    s. 20, the infringement provision, requires use in accordance with s. 4.
    
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    s. 4, the definition of use: a TM is used in association with wares and services if, at the time of the transfer of the property, the TM is displayed.
    
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  Court says that CC's passive website could not constitute use because it did not allow for transfer of ownership. Use was thus never established.
  
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  There may still have been damages, but they should be pursued through tort law, not TM.
  

25. British Columbia Automobile Association v O.P.E.I.U Local 378

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  1997: BCAA creates website
  
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  1999: BCAA employees represented by OPEIU begin strike action; OPEIU creates its own mimicking website
  
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  1999: OPEIU altered the website to be less like BCAA’s site (at www.bcaaonstrike and www.bcaabacktowork), with BCAA-related metatags → later reduced similarities and added a disclaimer → later took websites offline
  

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  Two categories of passing-off cases:
  

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  where competitors are in similar fields and defendant’s naming/description/packaging of product creates confusion
  
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  promotion of a good/service to suggest that it is somehow approved/authorised/endorsed by the plaintiff (“cashing in” on plaintiff’s goodwill)
  

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  BCAA says that OPEIU’s domain names and metatags constitute passing-off regardless of appearance
  
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  Ciba-Geigy (SCC, 1992): the standard is that of an ordinary average consumer
  
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  Here, no passing off: no misrepresentation or pretended endorsement/connection, no confusion or possibility of confusion (domain name and metatags not identical, no competition, legitimate reasons to use domain names and metatags, reasonable way for OPEIU to bring its message to the public)
  
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  When website is used for labour relations dispute, must balance protection of party’s IP with Union’s right of expression
  
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  With disclaimer, no possibility of confusion – and no evidence of confusion
  

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  Not disputed that BCAA and its logos are validly registered trademarks
  
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  OPEIU claims that there is a requirement for a commercial element to allegedly infringing conduct – accepted, as Union has non-commercial status, and not trying to sell goods/services
  
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  OPEIU claims that Act s. 22 does not apply to Union websites – accepted here
  
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  OPEIU claims that BCAA has shown no depreciation of goodwill – but test is likely depreciation, not depreciation itself
  
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  Any depreciation of goodwill was not brought about by manner of use of the mark, but would be if OPEIU were to be successful in its arguments in support of its members
  

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  BCAA’s copyright in its website includes look, layout, and apparent operation
  
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  OPEIU copied substantial portions of BCAA’s first site  there is breach of copyright.
  
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  OPEIU claims that it was creating a virtual picket-line – but there was no criticism, so no fair dealing
  

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  No actual pecuniary loss proven – but damages should not be avoided just because they’re hard to calculate
  
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  Copyright owner need not prove damages to enforce its right; damages are presumed
  
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  BCAA thus awarded nominal damages
  
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  No declaration/injunction granted here, because OPEIU has already taken websites offline
  

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  Successful action depends on pretended endorsement/connection, or (possibility of) confusion
  
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  Legitimate reasons or reasonable means can justify defendant’s use
  

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  Successful action requires (1) proof of valid trademark, (2) use of the mark; (3) likely depreciation of goodwill
  
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  Non-commercial provision of information is not a service as contemplated by s. 4 of the Trade-mark Act
  
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  If mark is used to stress differences, rather than similarities, no depreciation of goodwill
  

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  Successful action requires plaintiff to show (1) original work, and (2) copying of a (3) substantial portion
  
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    Issue of whether there has been substantial copying is a question of quality, not quantity; overall arrangement of components is important; court must exclude portions not subject to copyright