[2016] 3 F.C.R. D-12
Trade-marks
Appeal from Federal Court’s discretionary order (2015 FC 364) in which Judge ruling in particular that respondents entitled to elect accounting of profits or all damages sustained as result of infringement of their rights in registered trade-mark MARLBORO — Order coming as result of Federal Court of Appeal’s decision allowing in part respondents’ appeal of Federal Court’s decision (2010 FC 1099) finding that likelihood of confusion existing between appellants’ no-name cigarettes, respondents’ MARLBORO trade-mark; that respondents’ trade-mark under Trade-marks Act, R.S.C, 1985, c. T-13, s. 20(1)(a) therefore infringed — Consequently, Federal Court of Appeal referring matter back to Federal Court to determine, inter alia, whether respondents could elect between damages or accounting of profits — Discretionary order issued further to Federal Court of Appeal’s referral constituting subject of present appeal — Federal Court determining appropriate to exercise discretion herein, allow respondents to elect accounting of profits on balance of factors identified by parties as significant in submissions thereto — Whether Federal Court erring in making discretionary decision in order — Regarding restitution, Federal Court’s analysis clearly indicating restitutionary purpose of remedy considered since relevant factors in present case weighed — After reviewing parties’ positions on damages, evidence submitted, Judge indicating that although evidentiary issues not to be decided at entitlement stage, such issues tending to undermine appellants’ argument that sales of no-name product not representing unjust enrichment requiring restitutionary remedy — Judge thus duly considering relevance of restitution in analysis; appellants failing to convince Federal Court of Appeal that intervention on restitution warranted herein — As to complexity of accounting of profits, Judge having benefit of hearing parties’ positions, arguments on complexity of calculating damages knowing that submissions necessarily speculative at stage in question since actual calculation not yet taking place, not before Judge — Reading Judge’s reasons as whole, Judge clearly considering all issues, evidence presented in concluding that calculation of damages likely to be as complex as accounting of profits — Thus, Judge not making reviewable error in conclusion on complexity — Judge also not erring when stating that, in absence of compelling reasons, not intending to deny respondents accounting of profits — With respect to prejudice, appellants not prejudiced if respondents electing accounting of profits despite parallel litigation respondents initiating alleging infringement of MARLBORO trade-mark further to appellants’ introduction of appellants’ redesigned ROOFTOP packaging — While Judge acknowledging, considering appellants’ position on issue, concluding nonetheless that accounting of profits should be available — In conclusion, appellants failing to demonstrate that Judge committing any error warranting Federal Court of Appeal’s intervention against discretionary decision allowing respondents to elect between damages or accounting of profits for appellants’ infringement of respondents’ trade-mark — Appeal dismissed.
Philip Morris Products S.A. v. Marlboro Canada Limited (A-187-15, 2016 FCA 55, Trudel, Scott and Boivin JJ.A., judgment dated February 17, 2016, 8 pp.)