TRADE MARKS |
Infringement |
Pepper King Ltd. v. Sunfresh
T-2351-93
Dawson J.
7/9/00
24 pp.
Plaintiff, small Canadian corporation, owning trade mark "Volcano"--Used in association with hot pepper sauce since August 1991--Sold mainly at flea market, and to few outlets for re-sale at retail, and to restaurants, taverns for own use--By date on which statement of defence filed, total sales revenue $25,780, of which sales for retail $4,037.50--Hot sauce never advertised--Defendants related companies--Loblaws, parent company, Canada's largest food distributor--Since May 1992 promoted, sold salsa throughout Canada in jars with labels bearing word "volcano"--Salsa part of line of salsa products having different degrees of hotness, spiciness--Salsa products with different hotness levels displayed together--Loblaws owning trade marks "La Eleccion del Presidente", "President's Choice", "President's Choice in Design, PC and PC Script"--Recognized in southern, central Ontario by virtually all retail shoppers as private label trade marks of Loblaws--Salsa described as "volcano" always sold with trade mark "La Eleccion del Presidente" on labels in same script as "President's Choice in Design" trade mark--Plaintiff asserting defendants' use of "volcano" infringing its trade mark--Action, counterclaim dismissed--(1) Trade-marks Act, ss. 19, 20 requiring use of trade mark be for purpose of distinguishing goods as those of defendant--Message given to public by label determinative of whether used as trade mark--Loblaws not using "volcano" in trade mark sense--Used to denote degree of spiciness of product, not to identify salsa as coming from any particular source--Source of Loblaws' product identified by use of Loblaws' trade mark "La Eleccione del Presidente"--"Volcano" found in midst of number of words such as "natural", "chunky", descriptive of product, not source--Defendants not violating ss. 19, 20--(2) Having regard to all of surrounding circumstances, Loblaws' use of "volcano" not likely to have caused confusion--No evidence of actual confusion--Plaintiff's trade mark not well-known, but sold in small quantities in limited geographical area--Plaintiff, defendants had two different areas of trade--Appearance of Loblaws' trade marks on Loblaws' salsa recognized as indicating source of goods--Strength of plaintiff's argument two products made from similar ingredients, used for similar purposes undercut by plaintiff's admission salsa, hot pepper sauce not substantially similar products--Hot pepper sauce viewed as ingredient or condiment--Salsa stand-alone end product more analogous to dip--Parties' products not so similar that consumer would be confused, especially where plaintiff's product of degree of spiciness would appeal to someone who sought out very hot spice--(3) Conclusion Loblaws not using "volcano" as trade mark to distinguish wares sufficient to dispose of argument their use of "volcano" sufficient to render plaintiff's trade mark non-distinctive--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6, 19 (as am. by S.C. 1993, c. 15, s. 60), 20.