lack of evidence to show actual or potential damages

LACK OF EVIDENCE TO SHOW ACTUAL OR POTENTIAL DAMAGES SUFFICES
TO DISMISS AN APPLICATION SEEKING A DECLARATION OF PASSING OFF
INFRINGEMENT
MARCEL NAUD*
LEGER ROBIC RICHARD, L.L.P.
LAWYERS, PATENT AND TRADE-MARK AGENTS
Pharmacommunications Holdings Inc. v. Avencia International Inc., 2008 FC 828
(CanLII)
In a judgment rendered on 2008-07-02, the Federal Court of Canada found that the
application of Pharmacommunications Holdings Inc. (the "Applicant") seeking a
declaration that Avencia International Inc., Jason Lewis, Donald Lajoie and Gregory
Kochuk (the "Respondents") were liable of statutory passing off pursuant to section
7(b) of the Trade-marks Act (“TMA”) should be dismissed with costs against the
Applicant.
The Applicant, incorporated in 1995, contends that it is the owner of the unregistered
trade-mark “PharmaCommunications”, used in Canada in association with marketing,
advertising and related consulting services to the pharmaceutical industry.
The respondent Avencia International Inc. is a corporation that registered the name
“PHARMACOMM” and has been operating under that name since December 2,
2004. It claims to be an advertising agency that offers “brand consultation, media
advertising, product promotion and sales techniques” services.
The Applicant was seeking a declaration that the business name “PharmaComm” is
confusingly similar to its unregistered trade-mark PharmaCommunication and a
permanent injunction order to restrain the Respondents from using “PharmaComm”,
as a trade-name, trade-mark or otherwise.
It is worth noting that, in its analysis, the Court considered “very weak” the probative
value of a document which was filed by the Applicant more than a year after the
beginning of the proceedings as an attempt to show that the Applicant was referred
to as PharmaComm by at least one client. This finding took into consideration the
fact that the credibility of the Applicant’s president had been weakened by a prior
case where he was found guilty of contempt of Court.
© CIPS, 2008.
Lawyer with LEGER ROBIC RICHARD, L.L.P., a multidisciplinary firm of lawyers, and patent and
trade-mark agents. Published in the World Trademark Report. Publication 293.055.
*
2
Among other arguments presented by the Respondents, they contended that
“pharma” and “communications” were commonly used descriptive words and that a
certain amount of confusion must be accepted when non-distinctive names are
chosen. They also argued that the Applicant failed to show any actual or potential
damages resulting from the Respondents’ conduct.
In the circumstances, the only issue that the Court found relevant to deal with is
whether the Respondents are liable for statutory passing off. Pursuant to subsection
7(b) of the TMA, no person shall direct public attention to his wares, services or
business in such a way as to cause or be likely to cause confusion in Canada, at the
time he commenced so to direct attention to them, between his wares, services or
business and the wares, services or business of another.
The Court reiterated that subsection 7(b) of the TMA is the equivalent statutory
expression of the common law tort of passing off, which requires (a) the existence of
goodwill; (b) deception of the public due to a misrepresentation; and (c) actual or
potential damage to the plaintiff. In addition, a successful claim of statutory passing
off must also include a proof of possession of a valid and enforceable trademark,
registered or not.
However, the Court said that it did not need to discuss whether or not the Applicant
met the burden of proof required for all of the various elements of this statutory
infringement claim, given that the Applicant “clearly failed” to meet one of them,
namely the requirement of showing actual or potential damage.
In fact, the Court agreed with the Respondents’ submissions that the Applicant made
no submissions and presented no evidence whatsoever to establish actual or
potential damage. Given the actual potential damages cannot be presumed, the
Court concluded that the Respondents could not be found to be involved in passing
off. Accordingly, the Court dismissed the application.
3
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