Digests

Sprint Communications Co. LP v. Merlin International Communications

T-2814-94

O'Keefe J.

10/11/00

31 pp.

Defendant registered "Sprint Canada" as trade name in 1988--In 1985 plaintiff Sprint L.P. registered trade-mark "Sprint" which it has used in Canada since January 1, 1985--In 1987 defendant sent out series of letters ("Coupons for Better Living" program) in which referred to division of company as Sprint Canada--Letterhead having name Spectrum Medical Market Consultants embossed on it in bolder print than words "Sprint Canada" which appear on two of three letters--Question of whether defendant's conduct amounted to infringement of trade-mark rights depending on whether defendant's trade name confusing in relation to plaintiff's trade-marks--When factors for confusion contained in Trade-marks Act, s. 6(5) applied, plaintiffs must show on balance of probabilities likelihood of confusion with plaintiffs' registered trade-mark when defendant's trade name used by defendant in relation to services--Application of s. 6(5) criteria same whether issue registrability of trade-mark or infringement, but burden of proof different--Court must balance right of trade-mark owner to exclusive use of mark, with right of others in marketplace to compete freely--"Sprint" trade names not having inherent distinctiveness, but by advertising, use in Canada from 1985 onward, plaintiffs' trade-marks involving use of "Sprint" in association with various other names acquired inherent distinctiveness in relation to services listed--Overall plaintiffs' mark in use longer than defendant's trade name, but defendant's use of business name limited--Wares/services for plaintiff' "Sprint" marks primarily communication, telecommunication services--Defendant providing marketing, advertising, public relations services to businesses, including market planning, assessment--As not clear defendant ever carried on any services in connection with provision of telecommunication services as of date of action, nature of services different--Services offered by defendant to clients who want assistance in marketing, advertising, not telecommunications--Plaintiffs' trade-mark, defendant's trade name very similar in appearance--Addition of "Canada" not changing matter as defendant cannot take plaintiffs' mark "Sprint", add another word to it to distinguish itself from plaintiffs'--More weight given to fact defendant's customers found mark "Sprint" and trade name "Sprint Canada" confusing--As well, more weight given to fact mark, trade name very similar in appearance--Likelihood of confusion on balance of probabilities--Defendant's use of trade name to advertise services use of trade name as contemplated by Trade-marks Act, s. 4(2)--Thus plaintiffs' right to its trade-marks' exclusive use pursuant to s. 20(1) infringed--Evidence not establishing any depreciation in value of goodwill attached to plaintiffs' trade-marks, but in fact indicating opposite--Injunction not granted with respect to goodwill--But as real probability defendant will engage in conduct sought to be restrained, quia timet injunction granted--Defendant registering "sprintcanada.com", "sprintus.com" domain names, but only using them as e-mail site, not setting up website to offer services under these names--No basis to find infringement occurred--Injunction to restrain defendant from adopting domain name confusing with any of plaintiffs' trade-marks denied--Damages not proven for making false, misleading statements tending to discredit business, services of plaintiffs or for trade-mark infringement--Claim for punitive, aggravated, exemplary damages not allowed as evidence not establishing basis for award of these types of damages--Injunction granted to restrain defendant from making false, misleading statements tending to discredit business, services of plaintiffs contrary to s. 7; accusing plaintiffs of illegally using name Sprint Canada or any of Sprint trade-marks; threatening customers, suppliers or others with whom plaintiffs do business or place advertising, with legal action as consequence of accepting, advertising or doing business with plaintiff--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 4, 6, 7, 20.