F. Von Langsdorff Licensing Ltd. v. S.F. Concrete Technology Inc.
T-335-97
Evans J.
8/4/99
18 pp.
Motion for summary judgment under r. 216 dismissing plaintiff's statement of claim on ground no genuine issue for trial with respect to statement of claim-Plaintiff using trade mark "Uni Eco-Stone" in Canada in connection with paving stones since 1990, registering it in 1992-In 1996 defendant advertising paving stones under name "SFEco"-Neither manufacturing nor marketing goods but licensing others to do so through intellectual property rights they own-Defendant complying with cease and desist letter requiring it to cease and desist from further use of mark "SFEco" in connection with paving stones-No Canadian sales of "SF-Eco" stones to date as result of cease and desist letter from plaintiff's solicitors, plaintiff's institution of proceedings for trade mark infringement-To succeed in motion for summary judgment, defendant has burden of establishing all relevant issues can be properly decided on evidence before Court, no issues that can only fairly be resolved after trial-Rules governing summary judgment should be interpreted liberally so that motions judge must subject evidence to "hard look" in order to determine whether factual issues require kind of assessment, weighing of evidence that should properly be done by trier of fact-R. 216(3) expressly authorizing motions judge to grant summary judgment where issues of fact in dispute-Central issue raised by statement of claim, defence whether plaintiff entitled to monopoly in Canada in use of word "eco" in connection with permeable concrete paving stones-Question of confusion at heart of plaintiff's allegations with respect to both trade mark infringement, passing-off-Validity of plaintiff's trade mark, "Uni Eco-Stone", not in dispute, must therefore be regarded as capable of enforcement by plaintiff against anyone who infringes it-Evidence insufficient to force defendant to trial-Only mark of plaintiff relevant herein "Uni Eco-Stone"-No family of "eco" marks in Canada on which plaintiff can rely-Existence of "confusion" for purpose of Trade-marks Act, ss. 7(b), 21 involves mixed questions of law, fact-Elements of confusion contained in Act, s. 6(5)-"Uni Eco-Stone" weak trade mark-When used in connection with concrete paving stones in Canada, term "eco" more strongly associated with attractive feature of permeability than secondarily associated with plaintiff's stones, even paving stones from single source-Obvious similarity between parties' wares: both permeable inlocking concrete paving stones-Nature of trade suggesting confusion between "Uni Eco-Stone", "SF-Eco" not very likely-"eco" having general meaning, not been shown to have strong secondary association in Canada with product on which plaintiff's mark engraved-Defendant discharged onus of proving no factual issues that require trial for fair resolution-Issues neither numerous, complex nor dependent on findings of credibility-Motion allowed-Federal Court Rules, 1998, SOR/98-106, r. 216-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6(5), 7(b), 21.