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Passing Off Ciba-Geigy Canada Ltd v Apotex Inc Facts: Pharmaceutical products in question look similar to other drugs. Particular white “by-convex” claimed to be distinctive even though many other pills have this form. Ciba claimed that a pharmacist would not be influenced by the drug shape and wanted the users to be the ultimate test person. The courts decided anyone in the chain can be used as the test person, all that matters is that they are misled or confused. Analysis: The shield shape wasn’t so distinctive that anyone, doctors or otherwise would think it was unique. And But for the name on the pill, no one would know it belonged to Ciba. Three necessary elements for passing off:
Purpose of Passing Off
Ray Plastics Ltd v Dustbane Products ltd Facts: Raywares produced the “snow trooper” a very popular ice-scraper/squeegee/snowbrush. It was black and yellow with an uncommon shape which was very successful. Canadian Tire asked Bushcraft (subsidiary) to make something similar and they did. CT then gave Bushcraft all of their business. Issue: What does the passing off action constitute? Was a reputation established that would allow for a passing off action? Ratio: Goodwill or reputation must be such that the mark in question is distinctive of a particular source, the exact nature of the source is not important. Analysis: Here, it was enough that the customers of CT might purchase the rip off snow trooper, thinking it was the same as the original snow trooper they bought. Given the colour similarities and form similarities, the “startlingly similar” nature was enough to create reference between the two items. The advertising and heavy sales of the item also militated towards it having a reputation that needed to be protected Quote: “Goodwill Arises from the fact that the trade-mark or get-up is associated in the mind of the purchasing public with the plaintiff's goods, or with one trade source or provenance, whether or not the public can identify that source of provenance. “ Holding: Passing off Frank Reddaway and Frank Reddaway & Co Ltd v George Banham & Co Ltd. Facts: Reddaway made a kind of belting and called it “Camel Hair Belting” to distinguish it from others in the marketplace. He stamped his products with the word “Camel” or “Camel Hair” to note its origin. Banham used to work for Reddaway and began to make Belting of the same type. He called it Arabian belting. They then started calling the product “camel hair belting”. Reddaway sought an injunction to prevent them from using the name Issue: Can you pursue an action in passing off when you simply name the product what it actually is? Ratio: There is no restriction on naming your product/service after yourself, but items may gain a secondary meaning that goes beyond the original name and becomes distinctive and thereby worthy of protection Analysis: Here, you must look through the eyes of the consumer. Even though one of the main goals of passing off is to protect the manufacturer, the legal test looks through the eyes of the consumer. Reddaways products were sold across the globe and were so synonymus that they acquired a secondary meaning beyond the simple “CAMEL HAIR” used in the belting. Because there was a chance at deceit or trickery that could deprive customers of the product they wanted, it cannot be allowed. You always run the risk of simply naming your product what it is because it takes a long time to gain the kind of secondary meaning necessary to protect against a passing off Holding: Passing off Oxford Pendaflex Canada Ltd v Korr Marketing Ltd et al Facts: An American company began selling their products in Canada under the name “Contempo Tray”. Eventually the Canadian company took control and changed its name to “Starmark”. Oxford bought Starmark. Korr used to sell Starmark but their license ran out. They took a sample to a mould and created the exact same tray. Suing claiming passing off because their product is so distinctive and awesome and they had acquired a secondary meaning as being the top Canadian tray provider. Issue: Were the Canadian trays distinctive to the point that there could be confusion? Ratio: If a product is not distinctive enough that the hurried consumer would confuse it for another product, there is no passing off action. Analysis: Since all of the trays had come from a common American source, the fact that the trays had also been produced in Canada took away some of the distinctiveness. Also, trays can really only be one way, a big tray. Only a trained eye would look for the “starmark” underneath the tray, and considering the trays were the same except for slight weight and “ruffling” differences, there would be no confusion that a customer would think of the item as coming from a particular source Holding: No passing off. Orkin Exterminating Co Inc, v Pestco Co of Canada Ltd Facts: Pestco originally started by calling themselves “Orkin Exteriminating Company” and registered themselves in Ontario as such. They never used the name though and never carried on business as Orkin. They did however have a phone number in the phone book that was “Orkin” but relayed business to pestco. Orkin did a lot of advertising in the states and many Canadians were familiar with the product. At some point in time in 1976 they began adding the Orkin logo to their invoices and files for a trademark for Orkin. They also tried stealing Rentokil’s trademark but decided not to. Pestco claimed that Orkin had no good will in Ontario and if they did it belonged to Pestco. Also, their trademark was not protectable here as it had no reputation and didn’t plan to carry on business in the future. Issue: Normally passing off only extends locally, can it extend further than that? Can you have goodwill in a market you don’t participate in? Ratio: Where there is confusion as to a source, or where there is likelihood of confusion, there is generally going to be goodwill. This goodwill can extend beyond local borders when examined on a factual basis. Analysis: Considering how many Canadians were exposed to Orkin marketing both in the states and at home, there was at least knowledge that Orkin carried on as a pest killing business. Even though Orkin didn’t work in Canada, there was still goodwill and a reputation built up from the Canadians who used the service. The fact that they used Orkin to begin with showed that the name had commercial value. Pestco themselves acted duplicitously and never in fact tried to cultivate any goodwill between themselves and Orkin. Orkin suffered damage by virtue of their loss of control over the tradename in Ontario and the potential impediement they would face when trying to enter the market due to Pestcos behaviour Holding: Passing off and damages Institut National des Appellations d’origin des vis et eaux-de-vie et al v Andres Wines Ltd et al (1987) (RE SHARED GOODWILL) Fact: INA is suing because the defendants had been using the name “Canadian Champagne”. Calling something Champagne was deemed to be detrimental to its goodwill based on the strict guidelines France has for calling something Champagne. INA sued on a shared goodwill on behalf of the 16 companies who are allowed to say “champagne” Issue: Old Case: Can goodwill be claimed by joint or collective producers? Ratio: Goodwill can be claimed jointly as long as goodwill exists and the group is trying to protect their collective reputation and not the reputation of an individual producer. Analysis: The Canadian companies had been producing “Canadian Champagne” for many years and were doing so under the various statutes of the time that forced them to put “Canadian” anytime there was usage of the word champagne. Prior to the 1960’s there had to be a direct or indirect link established but the Canadian courts decided to eschew that and follow UK rulings. As such, it isn’t important that the Canadian Champagne producers are trying to pass it off as the brand of a specific entity, but of a particular kind of good that is protected. Holding: Shared good will recognized Ad Lib Club Limited v Granville Facts: Ad lib club was seekin an injunction preventing the defendant from using the Ad-Lib club name. The original AL club was put out of business temporarily due to a permanent injunction being levied against it due to excessive noise complaints. They tried to fix it but decided to pay out of their lease instead. 4 years later the laintiff said they were reopening the AL club. There was substantial goodwill prior to the injunction. The defendant claimed they couldn’t pursue a passing off claim as they had ceased to use the mark. Issue: What determine the end point of good faith? Can a name retain its good will even if the company or products ceases to exist? Ratio: if the name still retains residual good will, it can still be protected against passing off actions. Analysis: Although the business had been closed for 5 years, it still remained enough residual goodwill that the defendant thought it would be a good idea to use the name for his own benefit. The public was likely to think that the re-opening of the club was a continuation of the old club as well. There must be some residual good will (for how long depends on the factual matrix) because the person may be able to sell their business or re-open it. There must be some allowance for them to be able to protect their goodwill. Holding: Injunction granted Institut National des Appellations d’origin des vis et eaux-de-vie et al v Andres Wines Ltd et al (1987) (RE: GENERIC NAME) Facts: The defendant claimed that champagne has been used so much that the name has fallen into genericity. It no longer connotes a specific region from france but simply refers to bubbling wines as a whole. Issue: How does one determine when a term/name has become generic? Ratio: Determining when a name becomes “generic” is a question of fact that is difficult to ascertain. Companies can use markeing and investment to prevent their names from becoming generic Analysis: There is no doubt that the term had been misued and misapplied for such a long time that part of the mystique or goodwill had been diluted. This is not only due to the name being used in conjunction with things like Canadian Champagne, but also in the US, Brazil, Argentina, India and Australia where they just say Champagne. It saw further dilution in marketing materials and the defendants used dictionaries to show it had lost some of specificity. However, based on all of the evidence, it had only become “quasi-generic” in that it has attained a secondary meaning beyond its original meaning. The court decided it wasn’t fully generic, at least, not yet. Holding:? Institut National des Appellations d’origin des vis et eaux-de-vie et al v Andres Wines Ltd et al (1987) (RE: CONFUSION) Facts: Defendants are claiming there is no confusion as the evidence shows that not only were they following the statute and delineating their product from others, but both products rose in sales quantity. Also, the price difference showed that the products were clearly not the same and that people would not be confused between the two. All labels were strictly monitored by Liquor Control boards both federally and provincially and the use of the labels has been approved for years. Issue: Does following statute provide a defence for avoiding confusion? Does benefitting from the reputation indirectly constitute passing off? Ratio: as long as a company does not try to pass off their product as that of someone elses and no confusion or perceived confusion will arise in the minds of customers, passing off will not occur. Analysis: Considering how long the name had been in place, and the stark differences between the products, the court found it suspicious that no evidence of confusion has ever been presented. Not only would a normal wine purchaser not be confused, but even someone ignorant about wine would clearly be able to notice the difference between the two based on price and LCBO guidelines alone, as well as when Canadian Champagne is sold at independent stores. The high reputation of the French wine was not denigrated, and may in fact have been enhanced judging by increased price and sales. There was no misrepresentation that CC was FC, and as such no passing off occurs. Holding: No passing off. Bristol Conservatories Ltd v Conservatories Custom Built Ltd Facts: CCB (Rickard) used to work at BC. He took a book of photos that BC had built. CCB then used the photos of conservatories to basically say “We built these”. This case is not a traditional passing off in that someone is trying to represent their products to be that of someone elses. In contrast, they are trying to represent someone elses products as being theirs. Issue: Is there such a thing as reverse passing off? Or is it contained within normal passing off provisions Ratio: If you are co-opting the goodwill of someone else, and trying to represent their products as your own, it can constitute reverse passing off. Analysis: Although reverse passing off wasn’t official understood at the time, the courts clearly felt that something was amiss. They key issue is where the goods are coming from and where the consumer would understand the originating source to be. Here, by co-opting the pictures, the true source is being obscured. They used the pictures to entice customers to them, and then as a result supplied not the conservatory in the picture but one of their own manufacture. Here while there wasn’t confusion, the misrepresentation effectively removes any chance for confusion due to the duplicitous behaviour. As a consumer protection model, it doesn’t stand to reason that because there is no confusion, its ok. Here it is a straight up lie Holding: Passing off BCAA et al v Office and Professional Employees’ Int Union et al Facts: BCAA was licensed by CAA to use their trademarks and association on the BCAA website. BCAA members went on strike. BCAA registered BCAA.COM and BCCA.ORG, the union registered BCAAonstrike.com and Picketline.com. The union first used a website almost exactly the same as the original BCAA website, then their second and third versions were modified. This was changed because the BCAA threatened to sue due to use of IP rights. The union changed a few things and later altered the meta tags they used to associate their website with the BCAA website. Eventually they didn’t include almost anything relating to the BCAA or CAA. Issue: does the use of BCAAonstrike, BCAAbacktowork or the use of metatags constitute passing off? Ratio: If a casual or hurried observer would be confused by the similarities between the sites or the metatags, this may be enough to constitute a passing off action. Analysis: Here the main concern wasn’t with the domains or metatags, but was with the constitution of the website as well. A hurried observer would no doubt mistake the two if they ended up on one because of the striking visual similarities. In Canda this is called source confusion. The union complained that there wasn't a “common field of activity” because one was for labour relations and the other was for commercial. That is of little relevance unless there are other factual matrices that draw the case closer together to where the common field is relevant to determining whether a hurried observer would be confused. That being said, because they are so different it does militate in favour of the union. There is no issue with freedom of speech as there are plenty of ways you can protest without stealing someoenes IP (Bibendum). While the use of BCAA in the domain was not found to be a passing off due to being sufficiently different. The use of the metatags and bcaa domain also do not constitute a misrepresentation in the second or third website, but when combined with everything else on the first, it was too similar. Holding: 1st passing off, 2nd 3rd not. Dentec Safety Specialists Inc. v. Degil Safety Products Inc., 2012 ONSC Claudio Dente registered the internet domain name of dentecsafety.com. On February 23, 2009, Degil registered the internet domain name dentecsafety.ca, which redirects users, without notice, to Degil website at degilsafety.com No question of passing off, passing off their service as being Dentec by affiliating themselves using the domain name. Consumers Distributing v Seiko Time Can Ltd – (Grey Marketing) Facts: CD was getting their watches from an authorized vendor but was not an authorized dealer. Seiko wanted to have them stop selling completely. Analysis: Confusion is obviously possible, but the fix to it is just posting a notice that the products are not authorized or granted from the parent company. That way there is no misrepresentation or confusion and therefore no passing off. Trademarks Registration Canada (Registrar of Trademarks) v Coles Book Stores Ltd Facts: Coles wanted to trade mark the name “Coles”, RT declined saying it was “merely a surname”. TJ said that Coles had dictionary meaning so it was all hood. Issue: Is there a formula for determining whether something has enough street cred to be more than a name? Ratio: Mere surnames cannot be trademarked ho. Rule Set
Analysis: Even though cole has a dictionary definition, it is not commonly used and someone who was of normal intelligence, functionally fluent in French/English and with ordinary education would think of cole as being anything other than a surname. Holding: Denied although granted 14 years later due to secondary meaning no doubt Unilever Canada Inc v Superior Quality foods (rule 12(1)(b)) Facts: SQF tried to trademark the name “better than bouillon”, Unilever not happy about that. Issue: Is BTB clearly descriptive or misdescriptive of quality of product and therefore not allowed to be trademarked? Ratio: If something is clearly descriptive of the quality of product it is not registrable as per 12(1)(b) Analysis: SQF didn’t establish from the beginning that the first impression was unique or an essential quality of the product. It was simply a laudatory term that must be allowed to be used by others in the market. Since there is no proof or help to the consumer about the true nature of the product, it isn’t appropriate. Holding: registration denied General Foods Ltd v Carnation Co (Rule 12(1)(c) Facts: They were trying to trademark the name “instant breakfast” in association with “fortified powder food for mixing with milk” Issue: Even though instant breakfast is uncommon, is it the appropriate description of the product and therefore not registerable? Ratio: Where a name is uncommon but describes the product it is unregisterable Analysis: There is no other description for the product other than instant breakfast. At the date of filing, that’s exactly what it did and will always do so. Distinctiveness Glaxo Wellcome Inc v Novopharm Ltd Facts: Glaxo attempted to register for a distinguishing guides for their pharmaceutical pill. The guide was a shield shape with the name ZOVIRAX printed on the pull. Novopharm complained under 13(1)(a) claiming that the the guise was not inherently distinctive and had not become distinctive through use. Novopharm claimed that pharmacists wouldn’t be able to tell the pill from a different one without the name on it. Issue: was the pill distinctive enough to warrant registration Ratio: The onus is on the applicant to show that the guise has gained enough distinctiveness under 13(1)(a) to be registered. This must be shown on BOP and most likely must be shown that the guise is in use across Canada Analysis: Here the expert witness pointed out that without the triangle or ZOVIRAX, he probably wouldn’t be able to figure out if the pill was Zovirax or not. Because their own witnesses messed up and there was no proof that the guise had become distinctive by the time of the application date. No one would be able to tell just the shield shape from any other shield shape pill on the market. Just because it is distinctive as well does not mean it is distinguishing. Holding: Denied Special Marks Ontario Association of Architects v Association of Architectural Technologists of Ontario Facts: The registrar gave notice that that AATO had adopted official makrs for “architectural technicial” and “architectural technologist”. OAAA disputed because they claimed the AATO was not a public authority and thus not able to register official marks under s.9(1)(n)(iii). Issue: is AATO as a self-regulatory body a public authority capable of giving public notice and adoption of an official mark? Ratio: In order to be a public body
Analysis: Governmental control is the most important factor for whether something is a public authority under 9(1)(n)(iii). Although the AATO was created by statutory investment, the fact that it can be destroyed at any time does not show control. There was no ongoing governmental supervision of any sort. The fact that legislative amendment was needed to modify the AATO was also not a big enough factor. If it was, any body that was statutorily created could start applying for special marks. Some of their conduct benefited the public, and the left over money they had was spent to the benefit of the AATO, not the public, so no special standing granted Holding: No special marks allowed. USE Syntex Inc v Apotex Inc Facts: Syntex sold Napoxen, Apotex sold and made Naprosyn. Syntex came out with Apo-naproxen and had a flier that juxtaposed their new drug with apotex’ old drug. Apotex claimed that the use of Naprosyn in their advertising put their reputation and developed goodwill at great risk. Claimed that using their name in the marketing material constitutded a use, and because pharmacists are obliged to buy the cheaper generic, it leads to a substitution which constitutes a “notice of association” at the time of purchase Issue: Was It really used? Ratio: In order for it to be a use it must be in conjunction with the persons wares enough to constitue a notice of association at the time of purchase Analysis: The notice of association in this instance was not created when the person bought the new product. The notice of association must related to the product people are claiming against. Here, by purchasing Apo-Naproxen, they were getting notice of association with that product, not Nasprosyn. Directory: wp-content -> uploads -> gravity forms -> 1-7d6c8355b7f07846e8789d85deabdb60 -> 2016 gravity forms -> Earl E. Klein Jr gravity forms -> Narrative of how the entry meets the award criteria – July 28, 2016 gravity forms -> Revonda M. Baldwin gravity forms -> Air Atlanta Icelandic November 2006 – Current 2016 -> Grade: A+ Course Prize Winner 1-7d6c8355b7f07846e8789d85deabdb60 -> Insurance Law can Download 0.53 Mb. Share with your friends:
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