TRADE MARKS |
Infringement |
Caricline Ventures Ltd. v. ZZTY Holdings Ltd.
T-1608-97
2001 FCT 1342, O'Keefe J.
5/12/01
38 pp.
Action against defendants Farside Clothing Ltd., Farside Skateboards & Snowboards Ltd. for various forms of relief with respect to trade-mark infringement--Plaintiff also commenced action against ZZTY Holdings Ltd., Azim Zone Inc. with respect to infringement of same trade-mark-- Plaintiff owner of trade-mark "Pharsyde" for use in association with variety of clothing, footwear, accessories, with operation of retail business selling clothing--Clothing store operated in Vancouver since September 1, 1995 under plaintiff's mark--Defendants ZZTY Holdings Ltd, Azim Zone Inc. operating retail clothing store in Toronto, in association with words "Farside Clothing Co."--Defendant Farside Clothing operating retail clothing store in Edmonton, Alberta, in association with word "Farside"--Defendant Farside Skateboards also operating retail store in Edmonton-- Plaintiff's mark "Pharsyde" presumed to be valid by virtue of registration--If doubt as to validity of trade-mark, presumption as to validity of trade-mark not rebutted, doubt must be resolved in favour of validity of plaintiff's trade-mark --In order to have standing to bring counterclaim for expungement of plaintiff's mark "Pharsyde", defendant Farside Clothing must establish any trade-mark rights gained by 575726 Alberta Ltd. transferred to it--Name "Farside", any related intellectual property rights not transferred from 575726 Alberta Ltd. to Farside Clothing--Defendant Farside Clothing not having standing to bring counterclaim--Under Trade-marks Act, s. 17(1), applicant must establish previous use of confusing trade-mark in order to have plaintiff's mark declared invalid--Date for determining confusion with another trade-mark date of filing of application for registration, here April 4, 1995--Since date of applicant's application for registration April 4, 1995, defendant Farside Clothing did not open stores until June 1995, case only concerned with use in association with wares--Mark not used as trade-mark prior to April 4, 1995 as not used to distinguish wares of 575726 Alberta Ltd. from wares of others-- Plaintiff's mark "Pharsyde" not confusing with defendants' mark "Farside" as of April 4, 1995--Defence of lack of distinctiveness not raised in defendant Farside Clothing's defence, counterclaim--Plaintiff's trade-mark distinctive at relevant date, September 16, 1997, when counterclaim filed-- Plaintiff's mark continued to be distinctive on relevant date--Defendants Farside Clothing, ZZTY Holdings Ltd., Azim Zone Inc. have admitted infringement in pleadings-- Farside Clothing holding no rights in name "Farside"-- Farside Skate Boards infringed plaintiff's trade-mark-- Plaintiff's claim allowed--Trade-marks Act, R.S.C., 1985, c. T-13, s. 17.