Digests

Toys " " Us (Canada) Ltd. v. Manjel Inc.

T-2492-94

2003 FCT 283, Tremblay-Lamer J.

7/3/03

31 pp.

Action for trade-mark infringement and passing off concerning use of trade-mark "Nuts `R' Us" (NRU) by defendant for sale of nuts--(1) Whether defendant directed public attention to wares, services or business in such manner as to cause confusion between defendant's wares, services or business and those of plaintiff, contrary to Trade-marks Act, s. 7(b)--In order to succeed in action for passing off, plaintiff must establish three elements: (i) existence of goodwill, (ii) deception of public due to misrepresentation, and (iii) actual or potential damage to plaintiff--In present case, evidence demonstrates plaintiffs have acquired substantial goodwill with trade-marks "Toys `' Us" (TRU) & Design and word mark "TRU"--Marks have become distinctive of toys and children's apparel--However, evidence not establishing plaintiffs had reputation for candy, confectionery, and snack foods in association with "TRU" trade-marks--"TRU" marks have not acquired goodwill and become distinctive of candy, confectionery, and snack foods--Evidence not establishing consumer would believe defendant's product originated or affiliated with, or somehow endorsed by plaintiffs-- Significant lack of evidence of actual confusion despite long period of co-existence in marketplace--No evidence defendant's use of trade-mark "NRU" has caused damage to plaintiffs and no evidence plaintiffs suffered loss of control over reputation, image or goodwill--(2) Whether defendant infringed plaintiff's right to exclusive use of registered trade-mark "TRU" & Design through defendant's use of confusingly similar trade-mark "NRU", contrary to Act, s. 20 --In order to determine whether likelihood of confusion, Court shall have regard to all those surrounding circumstances, including those described in Act, s. 6(5)--Five relevant factors in s. 6(5) subjected to analysis--First, regarding inherent distinctiveness and extent to which marks have become known, trade-marks containing unique or coined words possess greater inherent distinctiveness and afforded wider ambit of protection--Plaintiffs' trade-mark "TRU" & Design possesses strong degree of inherent distinctiveness-- Substituting word "are" with letter "R"--Not proper grammar and creative use of alphabet to substitute words in English language--However, evidence not supporting finding trade-mark distinctive in relation to candy, confectionery and snack foods--Second, regarding length of time trade-marks in use, mark used for long time presumed to have made certain impression amongst consumers which must be given some weight--Plaintiffs' "TRU" & Design trade-mark used since 1984, whereas defendant's "NRU" used since 1987--This factor favours plaintiffs because trade-mark used three years longer than defendant--Third, concerning nature of wares, plaintiff sold candy, confectionery and snack foods, wares for which defendant's trade-mark registered--However, sale of food items represented only 1% of plaintiffs' total sales-- Amount too small to establish similarity of wares--Fourth, regarding nature of trade, evidence demonstrates defendant's "NRU" product never sold, nor likely to be sold in plaintiffs' "TRU" stores--Thus consumers will rarely, if ever, associate "TRU" branded merchandise with stores others than "TRU"-- Thus factor favours defendant--Fifth, concerning degree of resemblance of marks in appearance, sound and ideas suggested, trade-marks must be considered in entirety and not as dissected items--Fact expression "R Us" shared by two trade-marks not sufficient to establish likelihood of confusion --First words in trade-marks at issue sufficient to distinguish marks--Words "toys" and "nuts" describe businesses of parties and affix different meanings to trade-marks--Visual consideration of plaintiffs' trade-mark "TRU" & Design, and defendant's trade-mark reveals greater differences between marks--Trade-marks "TRU" & Design and "NRU" not similar--Regarding all surrounding circumstances, no evidence before Court of single instance of actual confusion between trade-mark "TRU" and "NRU"--Trade-marks "TRU" and "NRU" not confusing--Thus, defendant's use of trade-mark NRU not infringing Act, s. 20--Action dismissed --Trade-marks Act, R.S.C., 1985 c. T-13, ss. 7(b), 20.