TRADE-MARKS
Infringement
Appeal from Federal Court decision (2004 FC 235), dismissing action for infringement under Trade-marks Act, s. 20(1)—Alticor owns registered mark “Nutrilite” for use in association with vitamin, mineral food supplements —Quixtar exclusive Canadian distributor—Product sold not in stores but directly to consumers—“Nutravite” unregistered trade-mark used by Nitravite Pharmaceuticals Inc. for similar products, sold at retail outlets—Alticor successfully opposed registration of “Natravite” before Trade-marks Opposition Board as confusing but Nutravite continues use of mark in marketing—Alticor brought action for infringement, passing off but Judge found no likelihood of confusion upon consideration of five factors set out in Act, s. 6(5), surrounding circumstances—(1) Whether Judge erred in finding trial date material date for considering trade-mark infringement—Question of law, reviewable on correctness standard—Substantial case law supporting proposition hearing date is material date for determining confusion in opposition proceedings although applicable date in s. 20 infringement actions not yet settled—Court of view for consistency, practicality material date should normally be that of hearing— Appellants unable to point to any specific indication in Act confusion to be assessed as of date respondent’s mark first entered market—Opting for hearing date ensures Court has before it all relevant evidence of surrounding circumstances— Moreover, where, as here, permanent injunction sought, hearing date has to be chosen because whether confusion existed at previous time not determinative of whether, at time of hearing, injunction should be granted—But may be fact situations where some other date(s) more appropriate, eg. if alleged infringement began, ceased prior to trial—Usually confusion demonstrated over period of time, as that is what generates damages—Whether likelihood of confusion— Question of mixed fact, law—Appellants submitted Judge used wrong test of “hypothetical consumer out to buy a bottle of the Plaintiff’s vitamins” in assessing whether confusion but earlier in reasons Judge demonstrated proper understanding of “overarching principle”, referred to test in Polo Ralph Lauren Corp. v. United States Polo Assn. (2000), 9 C.P.R. (4th) 51 (F.C.A.), at paragraph 3—Judge understood it was not any member of public, disinterested passerby who had to be confused, but dealers, users of type of wares at issue—Judge correctly indicated had to put self in “position of an average consumer who has some recollection of the . . . mark . . . on encountering the [offending] products, infer that the . . . [products] are somehow associated with the [other] wares”—As determination of confusion essentially question of fact, considerable deference must be accorded trial judges in confusion determinations—Though not required, no evidence of actual confusion tendered—Appellants also arguing Judge wrongly used test involving confusion about products, rather than source of products—But these were similar products with similar marks and if consumers confused, would inevitably be confusion in relation to common source—Judge decided to accord Board’s determination little weight as had before it different record, was making different determination with different burden of proof—Legal system not stranger to different outcomes arising from same factual situation where issues, evidence different—Record contained material on which Judge able to find trade channels fundamentally different, conclude possibility of confusion remote—Nor was Court prepared to accept argument any possible methods of distribution potentially available at any time in future should be protected based on Mr. Submarine Ltd. v. Amandista Investments Ltd., [1988] 3 F.C. 91, in which F.C.A. wrote that in assessing whether marks confusing, Court must have regard not only to present business but also if party to operate in any way open to it—Judge correctly held any significant move into retail by appellants “purely speculative” as had no business plan to alter sales methodology—Has been held that in assessing future sales operations, Court should not speculate as to possible new ventures: Joseph E. Seagram & Sons Ltd. v. Registrar of Trade Marks et al. (1990), 33 C.P.R. (3d) 454 (F.C.T.D.)—Actual trade channels preferable basis for projections as to future likelihood of confusion: Man and His Home Ltd. v. Mansoor Electronics Ltd. (1999), 87 C.P.R. (3d) 218 (F.C.T.D.); affd (2000), 9 C.P.R. (4th) 68 (F.C.A.)—Appeal dismissed—Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6(5), 20(1) (as am. by S.C. 1994, c. 47, s. 196).
Alticor Inc. v. Nutravite Pharmaceuticals Inc. (A‑143-04, 2005 FCA 269, Linden J.A., judgment dated 9/8/05, 16 pp.)