Digests

Warner-Lambert Co. v. Concord Confections Inc.

T-1562-98

2001 FCT 139, Lemieux J.

2/3/01

28 pp.

Plaintiff, Warner-Lambert Company, registered owner in Canada of family of registered trade-marks including "Chiclets", used since 1919 in association with chewing gum--Warner-Lambert Canada Inc. exclusive Canadian licensee--Defendant manufacturing chewing gum for sale in Canada in association with trade-mark "Chicle Bytes"--Plaintiffs alleging "Chicle Bytes" chewing gum virtually identical in appearance to "Chiclets"--Moving for summary judgment in action for trade-mark infringement, passing-off--Defendant not using "Chicle Bytes" trade-mark since 1998, but in 2000 plaintiffs learning defendant using "Chicle Chewing Gum" since 1998--Plaintiffs pleading defendant's use of "Chicle Bytes", "Chicle Chewing Gum" likely to cause confusion, in turn likely to depreciate value of goodwill; also alleging such use in association with chewing gum virtually identical to "Chiclets" chewing gum resulting in defendant directing public attention and passing-off of its wares in such way to cause confusion--Federal Court Rules, 1998, rr. 213 to 217 dealing with summary judgment--R. 216(1) providing where Court satisfied no genuine issue for trial in respect of claim or defence, Court shall grant summary judgment accordingly--R. 216(2) providing where Court satisfied only genuine issue question of law, may determine question, grant summary judgment accordingly--R. 216(3) providing where Court deciding genuine issue, may nevertheless grant summary judgment in favour of any party if able on whole of evidence to find facts necessary to decide questions of fact, law--Cases dealing with summary judgment reviewed--Purpose of summary judgment provisions to allow Court to summarily dispose of cases which ought not to proceed to trial because of lack of genuine issue, i.e. one test whether case so doubtful not deserving consideration by trier of fact at future trial; summary judgment will not be granted if necessary facts cannot be found and, where serious issue with respect to credibility, case should go to trial because parties should be cross-examined before trial judge, although mere existence of apparent conflict in evidence not precluding summary judgment because Court should take hard look: Granville Shipping Co. v. Pegasus Lines Ltd., [1996] 2 F.C. 853 (T.D.)--Appropriate to have regard to provincial superior court decisions bearing on interpretation of similar summary judgment rules: Feoso Oil Ltd. v. Sarla (The), [1995] 3 F.C. 68 (C.A.)--Summary judgment will only be granted where facts are clear: Nature's Path Foods Inc. v. Country Fresh Enterprises Inc. (1998), 85 C.P.R. (3d) 286 (F.C.T.D.)--In determining whether genuine issue exists in respect of material fact, Court will never assess credibility, weigh evidence, or find facts because such functions reserved for trier of facts--Defendant's counterclaim asserting plaintiffs' trade-mark registrations invalid for non-distinctiveness based upon allegations "Chiclets" generic term for species of chewing gum; "Chicle" common component of other marks, word of art; plaintiffs failed to control licensing of trade-marks--Defendant not leading any evidence to sustain claim "Chiclets" lost distinctiveness by becoming generic term for type of chewing gum having rectangular shape with hard shell coming in variety of colours, including white--Allegation dismissed--Genuine issue as to material facts supporting two grounds for invalidity advanced by defendant, assuming critical date to assess loss of distinctiveness date of counterclaim rather than date of registration of "Chiclets" trade-marks--Whether "Chicle" commonly used in trade to describe format for particular type of chewing gum or common component of trade-marks used in chewing gum sold in Canada or word of art, to be determined by evidence of use in Canadian marketplace--As evidence of use in Canadian marketplace contradictory, trial needed to resolve issue, particularly as some necessary findings of fact may turn on credibility--Plaintiffs' evidence not so overwhelming as to enable Court to conclude defendant's assertions without evidentiary foundation--Defendant not discharging evidentiary burden with respect to loss of distinctiveness through loss of control--Alleging plaintiffs aware of defendant's use in Canada of "Chicle Bytes" as early as 1996 and failure to enforce Canadian rights for at least 19 months disentitling plaintiffs to main relief sought--Defendant raising sufficient evidence to create barrier to summary judgment on this issue--Court unable to find facts necessary to support ruling no acquiescence occurred as would involve impermissible weighing of evidence in case where facts not clear, and would require drawing of substantial inferences to sustain conclusion plaintiffs not knowing of defendant's sales in Canada and casually ignored them--Motion for summary judgment on ground of confusion rejected--Plaintiffs would have Court apply all of criteria in Trade-marks Act, s. 6 to evidentiary record and find infringement based on likelihood of confusion--Record not enabling such conclusion--Defendant raising sufficient evidentiary basis (differences in gum, packaging, trade channels i.e. bulk versus packaged sales, particularly when plaintiffs no longer sell its gum unpackaged) of lack of actual confusion so as to raise genuine issue for trial on merits--Action also raising some unresolved legal issues, including whether get-up or packaging relevant consideration when dealing with registered trade-mark infringement versus passing-off under s. 7--Another fundamental issue whether trade-mark now used by defendant, "Dubble Bubble Chicle" chewing gum, one mark as asserted by defendant, or two--Plaintiffs also requesting injunction to restrain defendant from using "Chicle", infringing plaintiffs' registered trade-marks, doing any act likely to have effect of depreciating goodwill associated with registered marks--Not providing clear evidence of irreparable harm that would, but for injunction, suffer irreparable harm not compensable in damages--Expert evidence based on facts assumed to be true--Element of speculation in expert's analysis when discussing defendant's possible lesser product quality, other companies being emboldened to enter market--Admitted lost sales quantifiable--Loss of goodwill problematic since hinging on finding of confusion based on uncertain assumptions--Balance of convenience favouring defendant on basis defendant clearly advised plaintiffs changed packaging seven months before motion for interlocutory injunction launched--Status quo, to extent should be preserved, favouring defendant, and significant delay in seeking injunction also favouring defendant--Federal Court Rules, 1998, SOR/98-106, rr. 213 to 217--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6, 7.