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TRADE-MARKS - Infringement - Confusion and deception - Passing off and unfair competition - Confusion as to wares and services - Remedies - Procedure - Appeals

Monday, November 20, 2017 @ 8:30 AM  


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Appeal by Wenger S.A., Group III International and Holiday Group from a Federal Court judgment in favour of the respondent, Travelway Group International. The parties to the appeal were companies who sold luggage and bags in Canada depicting trademarks which featured a cross reminiscent of the Swiss flag. The appellants registered and/or licensed the trademark associated with the Swiss Army Knife, using the mark in association with SWISSGEAR brand luggage and bags. The respondent's luggage used the branding, "Swiss Travel Products," with an associated registered mark that increasingly resembled the appellants' registered marks following various modifications. The appellants sought to enforce their trademarks in a Federal Court application seeking a declaration of infringement by the respondent with injunctive and other relief, including damages or an accounting and disgorgement. The trial judge found that the appellants failed to establish a likelihood of confusion with the respondent's marks and dismissed the application. The appellants appealed.

HELD: Appeal allowed. The trial judge erred in the approach to the issue of confusion between the marks by focusing on resemblance to the exclusion of all of the surrounding circumstances. The marks, and the respondent's variants thereof, clearly bore a striking resemblance. Neither mark was inherently distinctive, but the appellants' mark had acquired significant distinctiveness by virtue of strong sales within Canada. In addition, the appellants' mark was in use for six years prior to the respondent's mark. The conclusion of no likelihood of confusion constituted a palpable and overriding error. In addition, the Federal Court erred in finding insufficient goodwill and/or the absence of misrepresentation supporting a finding of passing off. Given that the parties were direct competitors in the same marketplace, it was reasonable to infer a likelihood of loss and damage arising from the respondents' conduct. The appellants were granted declaratory and injunctive relief, with the issues of expungement and damages referred to the Federal Court.

Wenger S.A. v. Travel Way Group International Inc., [2017] F.C.J. No. 1072, Federal Court of Appeal, Y. de Montigny, M.J.L. Gleason and J.M. Woods JJ.A., November 6, 2017. Digest No. TLD-November202017001