PRACTICE |
Judgments and Orders |
Summary Judgment |
Spenco Medical Corp. v. Emu Polishes Inc.
T-1021-03
2004 FC 963, Kelen J.
6/7/04
19 pp.
Motion for summary judgment seeking dismissal of plaintiff's action for trade-mark infringement with respect to plaintiff's registered trade-mark "Polysorb" for shoe insoles, on ground no likelihood of confusion between "Polysorb" and defendant's trade-mark "Polysoft" for shoe insoles--In Canada, plaintiff's products include replacement insoles and shoe inserts for medical purposes, such as foot support-- Defendant using unregistered trade-mark "Polysoft" in association with green coloured shoe insoles--Summary judgment governed by Federal Court Rules, 1998, rr. 213- 219, in particular, r. 216--Court not to grant summary judgment where genuine issue for trial--However, r. 216(3) specifically permits Court to grant summary judgment even where genuine issue for trial exists, so long as Court able on whole of evidence to find facts necessary to decide questions of fact and law--Under r. 216(1), must first determine whether claims in question present genuine issue for trial or that issue so doubtful it deserves no further consideration-- Plaintiff raised two genuine issues for trial: (1) whether defendant's use of "Polysoft" in association with insoles leading to inference "Polysoft" and Polysorb insoles manufactured by same person; (2) whether defendant directed public attention to its wares in such a way as to cause confusion in Canada with insoles of plaintiff contrary to Trade-marks Act, s. 7(b)--In deciding there is genuine issue as to whether trade-marks confusing, regard had to factors set out in Act, s. 6(5)--Plaintiff's trade-mark "Polysorb" only "Poly" in marketplace for shoe insoles--Proliferation of "Poly" in trade-marks is issue which must be weighed by trial judge assessing credibility and weight of plaintiff's evidence consumers of "Polysorb" insoles would be confused by presence of "Polysoft" trade-mark for insoles--Under r. 216(3), Court cannot properly assess credibility or weigh evidence of plaintiff's witnesses that defendant's trade-mark "Polysoft" will likely cause confusion with plaintiff's customers--Credibility of evidence needs to be evaluated at trial, and trial Judge will need to weigh evidence and draw necessary inferences--Magnitude of materials filed in this motion indicative of live controversy between parties-- Evidence raises credibility issues as to confusion and passing-off which warrant need for viva voce testimony--Accordingly, motion dismissed--Federal Court Rules, 1998, SOR/98-106, rr. 213, 214, 215, 216, 217, 218, 219--Trade-marks Act, R.S.C., 1985, c. T- 13, ss. 6(5), 7(b).