Horn Abbot Ltd. v. Thurston Hayes Development Ltd.
T-32-85
Reed J.
25/9/97
14 pp.
Action for declaration defendants, by developing, manufacturing, selling board game under trade-mark "Sexual Pursuit" infringed plaintiffs' exclusive rights in registered trade-marks-Plaintiffs claiming permanent injunction to restrain defendants from manufacturing, distributing, selling game in association with trade-mark "Sexual Pursuit", order allowing for destruction of all copies of game Sexual Pursuit held in storage by independent custodian, award of damages, costs of action-Action started on January 4, 1985-Interlocutory injunction issued against defendants on February 6, 1985-Brian Thurston, Thomas Hayes only remaining defendants since action started-Game Trivial Pursuit phenomenal success-In early 1984, Hayes, Thurston conceived idea of creating similar game named Sexual Pursuit-Patterned game on Trivial Pursuit, copied many aspects of it-Game boxes almost identical in shape, size-Both dark in colour, one dark blue, other dark brown-In determining whether trade-marks confusing, Court must have regard to all surrounding circumstances, in particular to five considerations listed in Trade-marks Act, s. 6(5)-Both "Trivial Pursuit", "Sexual Pursuit", as trademarks for board game, inherently distinctive-In assessing confusion, not necessary to provide evidence of actual confusion-Likelihood of confusion all that is necessary-Evidence of actual confusion herein-All three elements of Act, s. 7(b) met-Confusion caused by appearance of box in which Sexual Pursuit game packaged reinforced when box opened-Defendants infringed plaintiff's trade-marks, directed public attention to their game in way that would likely create confusion between their wares, wares of plaintiff-Name Trivial Pursuit not clearly descriptive of character, quality of wares-Name Trivial Pursuit not nomenclature used to describe any game, game board, token, etc. at time of registration of plaintiff's marks-Nor was nomenclature used in ordinary commercial usage to designate kind, quality of wares-Average consumer would make automatic association between two games, assume they came from same source-Evidence not showing plaintiff suffered damage from sale of defendants' game-Declaration, permanent injunction granted-Value of plaintiff's trade-marks not depreciated-No award of damages-Order permitting destruction of Sexual Pursuit games, components held by custodian at plaintiff's expense-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6(5), 7(b).