St-Maurice Boats Inc. (Plaintiff)
v.
Les Bateaux de la Mauricie Inc. (Defendant)
Trial Division, Pratte J.—Trois-Rivières, Sep-
tember 10; Ottawa, October 29, 1973.
Trade marks—Boat manufacturing companies—Similar
names—Confusion—Injunction—Trade Marks Act, s. 7(b).
Plaintiff operated a fibreglass boat manufacturing com
pany which was established on December 23, 1968 under
the French name "Bateaux St-Maurice Inc." and its English
name "St-Maurice Boats Inc.", continuing the operation of
the same business since 1958 that had previously been
known as "St-Maurice Canoe Enrg.". In January 1972 the
defendant obtained letters patent under the name "Les
Bateaux de la Mauricie Inc." and toward the end of that
year began to manufacture and sell boats similar to those
manufactured by the plaintiff.
Held, defendant infringed section 7(b) of the Trade Marks
Act and should be enjoined from using the name "Les
Bateaux de la Mauricie Inc.".
ACTION.
COUNSEL:
Pierre Deschenes for plaintiff.
Yves L. Duhaime for defendant.
SOLICITORS:
Deschenes and Lacroix, Shawinigan, for
plaintiff.
Duhaime and Duquette, Shawinigan, for
defendant.
PRATTE J.—The plaintiff and the defendant
are companies engaged in the same type of
business in that they both manufacture and sell
fibreglass boats. They are both located in
Shawinigan, in the region commonly known as
"La Mauricie" because it is situated on the
shores of the St-Maurice River. The companies
have similar names. The plaintiff, the older of
the two companies, charges the defendant,
which set up its business at the end of 1972,
with offering unfair competition by using a com
pany title similar to its own.
The plaintiff company was established on
December 23, 1968, by letters patent issued in
accordance with the laws of the province of
Quebec. It has a French name, "Bateaux
St-Maurice Inc.", and an English name,
"St-Maurice Boats Inc.". From 1969, the plain
tiff continued the business of manufacturing
fibreglass boats which its principal shareholders
had operated since 1958 under the name
"St-Maurice Canoe Enrg.".
The defendant is also a company set up under
the laws of Quebec. Its letters patent bear the
date January 27, 1972. It was only at the end of
1972 that it began to sell and manufacture,
under its corporate name, boats similar to those
manufactured by the plaintiff.
The plaintiff maintains that the defendant, by
thus beginning to use its corporate name, violat
ed section 7(b) of the Trade Marks Act, R.S.C.
1970, c. T-10 under which
7. No person shall
(b) direct public attention to his wares, services or busi
ness in such a way as to cause or be likely to cause
confusion in Canada, at the time he commenced so to
direct attention to them, between his wares, services or
business and the wares, services or business of another;
The plaintiff therefore prays for an injunction
forbidding the defendant to use, in reference to
its business, the name "Les Bateaux de la Mau-
rick Inc.". It also claims, in addition to costs,
damages in the amount of $25,000.00.
The evidence does not show that the plaintiff
lost sales as a result of the actions with which it
reproaches the defendant. It has, however, been
clearly established that, since the defendant
began operations, third parties (suppliers of ma
terials, delivery men, and so on) have confused
the two companies, with the result that on
several occasions merchandise or correspond
ence addressed to one of them has been
received by its competitor.
As to the evidence of the damages for which
the plaintiff claims compensation, it is hardly
satisfactory. It consists in the statement by an
officer of the plaintiff company that the possi
bility of confusion between the two competitors
had laid an increased workload on the
employees of his company, because they had
been obliged to undertake careful checks of all
merchandise, accounts and correspondence
received by the plaintiff to make sure they had
been correctly delivered.
The defendant's counsel first of all argued
that the resemblance between the names of the
two companies was not such that it could be a
source of confusion. He also contended that the
defendant could not have violated section 7(b)
when it set up in business at the end of 1972,
since at that time the plaintiff had not yet begun
to use its corporate name in reference to its
business.
With respect to this argument, it was estab
lished that the plaintiff, after acquiring the busi
ness carried on up to that time under the name
"St-Maurice Canoe Enrg." had continued to be
known under that name by many in the St-Mau-
rice region. The reason for this was not that the
plaintiff itself used it, but that it had neglected
to have the company's name changed in the
telephone book and also, it would appear, to
inform its regular suppliers of this change. The
plaintiff, however, did use its proper corporate
name. Its stationery bore a contracted form of
its French and English names: "Bateaux
St-Maurice Boats Inc.".
The defendant's counsel finally submitted
that the plaintiff had not suffered any damage
as a result of the plaintiff's doings.
The first question to be answered here is the
following: when, at the end of 1972, the defend
ant began to carry on business under the name
"Les Bateaux de la Mauricie", did it direct
public attention to its business in such a way as
to cause or to be likely to cause confusion
between its business and that of the plaintiff?
To answer this question, it is first necessary
to make a decision on the similarity between the
names of the plaintiff and the defendant. Do
these two company titles resemble one another
closely enough for confusion to arise as a result
of their simultaneous use in the circumstances
revealed in the evidence? It must then be decid
ed, as pointed out by counsel for the defence,
whether the plaintiff had begun to use its corpo
rate name when the defendant started to use its
own corporate name, since even had the defend
ant adopted a name almost identical to that of
the plaintiff this would not have violated section
7(b) if at that time the plaintiff had not yet made
use of its own name.
As to the first point, the similarity between
the plaintiff's name and that of the defendant, I
believe that these names are sufficiently similar
for their use by two competing firms in the
same region to be likely to lead to confusion.
On the second point, the evidence reveals that
for over 20 years the plaintiff or its predeces
sors has used in its company name the words
"boats" or "canoe" in conjunction with the
words "St-Maurice". I am therefore of the opin
ion that when the defendant set up its business
at the end of 1972 under the company name
"Les Bateaux de la Mauricie Inc.", it directed
public attention to its business in such a way as
to be likely to cause confusion between its
business and that of the plaintiff.
With regard to the damages claimed by the
plaintiff, it is perhaps true that the risk of confu
sion between the names of the two companies
caused additional work for the plaintiff's
employees. However, the injury is only slight
and the plaintiff must be held largely respon
sible for it. If the plaintiff's suppliers had been
advised that it was no longer doing business
under the name "St-Maurice Canoe Enrg.", and
if the plaintiff had had the new name of its
company entered in the telephone book, it is
reasonable to assume that the injury would have
been greatly reduced. Under the circumstances,
I do not believe that the plaintiff should be
awarded any damages.
The judgment will therefore order the defend
ant to cease, within 90 days of this date, carry
ing on business under the name "Les Bateaux
de la Mauricie Inc.". If, for some valid reason,
the defendant should be unable to comply with
this order within the period specified, it may
apply for an extension (Rule 3(1)(c)). The plain
tiff's costs will be borne by the defendant.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.