Will Infringing Use Affect the Distinctiveness of a Plaintiff`s

WILL INFRINGING USE AFFECT THE DISTINCTIVENESS OF A PLAINTIFF'S TRADEMARK?
Barry Gamache
LEGER ROBIC RICHARD, Lawyers
ROBIC, Patent & Trademark Agents
Centre CDP Capital
1001 Square-Victoria - Bloc E – 8th Floor
Montreal, Quebec, Canada H2Z 2B7
Tel.: (514) 987 6242 - Fax: (514) 845 7874
www.robic.ca - [email protected]
A recent decision of Canada's Federal Court of Appeal confirmed a decision
of the Trial Division which had rejected defence counsel's argument that
Defendant's use of an allegedly confusing trade-mark had caused Plaintiff's
mark to lose its distinctiveness (Farside Clothing Ltd. et al v. Caricline Ventures
Ltd., 2002 F.C.A. 466 (November 12, 2002, Strayer, Nadon and Evans JJ.A.)).
In 1997, Plaintiff Caricline Ventures Ltd. ("Caricline") took action against
Defendants Farside Clothing Ltd. and Farside Skateboards & Snowboards Ltd.
(collectively "Farside Clothing" for ease of reference hereafter) alleging
infringement of its registered trade-mark PHARSYDE, registered in association
with clothing, footwear and accessories and a retail business selling clothing.
Caricline's PHARSYDE trade-mark was registered on January 13, 1997 following
an application filed on April 4, 1995 based on proposed use of the trade-mark
in Canada. Caricline commenced use of its trade-mark PHARSYDE in May
1995 in British Columbia.
For its part, Farside Clothing started operating retail clothing stores in
association with the word FARSIDE in June 1995 in the province of Alberta.
In its defence, Farside Clothing argued among other things that Plaintiff's
PHARSYDE registered trade-mark was invalid and should be expunged from
the trade-mark register in that Plaintiff's trade-mark was no longer distinctive in
September 1997 when proceedings were initiated in light of the concurrent
use in Canada by both parties of their trade-marks since June 1995.
On this issue of loss of distinctiveness, the trial Judge referred to Harold G. Fox
in his text The Canadian Law of Trade Marks and Unfair Competition, 3rd ed.
(Toronto: Carswell, 1972) where the learned author wrote: "The test whether a
name used by a manufacturer as a trade mark for his wares or services had
become publici juris is whether, on the one hand, the use of it or a confusing
trade mark by other persons in connection with the same wares or services is
calculated to deceive the public so as to induce them to believe that in
purchasing the wares or obtaining the services so named they are purchasing
or obtaining those of the original manufacturer or performer of the services or
whether, on the other hand, the word in question has merely become the
generic or descriptive name of a type of wares or services. The owner may
use the trade mark as the name of the wares or services, and if the public is
permitted to do so, the mark will of course lose its character as a trade mark…
But such use must be substantial and not a mere infrequent use based on
ignorance before a mark will lose its distinctiveness… The amount of piracy
necessary to cause loss of distinctiveness is a difficult question. A few
scattered and unprosecuted infringements by several traders is not sufficient
to cause a mark to become publici juris, nor will extensive infringement by a
single trader be sufficient." [emphasis added by the Court]
The trial Judge reviewed the evidence and came to the conclusion that
Plaintiff's trade-mark PHARSYDE was distinctive at the relevant date. Mr.
Justice O'Keefe relied on advertising described as extensive which was used
to promote the mark and referred to an amount of approximately $30,000.00
spent on behalf of Plaintiff on advertising during the period of February 1997
to February 1998, to the fact that Plaintiff's store name appeared in
community newspapers and in British Columbia's two major newspapers and
to advertising appearing in the Yellow Pages.
In relation to the Plaintiff's mark, the only infringement or dilution alleged was
by the Defendants. In this case, the Court took note that Caricline did not
delay in forwarding a cease and desist letter when it learned of the
Defendants' activities.
The trial Judge therefore concluded that Plaintiff's rights were not lost
because of the Defendants' activities in relation with the FARSIDE mark. The
trial Judge further held that the Defendants infringed Plaintiff's registered
mark.
On appeal, Farside Clothing argued that the trial Judge erred in law by
treating Defendants' use of its FARSIDE mark in connection with articles of
clothing as irrelevant because it was an infringing use. In fact, Defendants
were not relying on their conduct after they had received Plaintiff's cease
and desist letter sent to them in January 1997 but rather their use from June
1995 to the end of 1996.
The Court of Appeal rejected Defendants' arguments stating that the trial
Judge had not said that infringing use was always irrelevant to a loss of
distinctiveness of a trade-mark. By quoting Fox, the trial Judge made clear
that in some circumstances, infringing prior use may cause a mark to lose its
distinctiveness although how much is required to obtain this result has not
been found an easy question to answer: The Court characterised it as one of
degree.
The Court of Appeal concluded it was open to the trial Judge to conclude on
the evidence as a whole that the Defendants had failed to prove that it was
not reasonably likely that consumers would identify Plaintiff's PHARSYDE trademark with a single source. The Court of Appeal consequently dismissed
Farside Clothing's appeal.
This case is a reminder that when assessing the question of distinctiveness of a
trade-mark, things are not always clear-cut. Therefore, it can be reasonably
argued that when a plaintiff has taken steps in a timely fashion to object to
what is perceived as an infringing use by a defendant, it should not be said
that defendant's use will affect the distinctiveness of plaintiff's mark, unless
other circumstances are present (for example whether plaintiff has a history of
tolerating other third party infringing uses).
© LEGER ROBIC RICHARD / ROBIC, 2003.
Published at (2003), 17-2 World Intellectual Property Report 4-5 under the title Will Infringing
Use affect Trademark's Distinctiveness? Publication 142.148.
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