TRADE MARKS |
Infringement |
Top Notch Construction Ltd. v. Top-Notch Oilfield Services Ltd.
T-1192-97
2001 FCT 642, O'Keefe J.
12/6/01
33 pp.
Action against Top-Notch Oilfield Services Ltd. (defendant) by Top Notch Construction Ltd. (plaintiff)--Plaintiff carrying on construction services business, namely, earth moving, commercial, residential, subdivision real estate development, irrigation systems construction, road construction, crushing, washing of rock, gravel, stone, other forms of aggregate--Defendant doing pipelining, maintenance, insulation, hotshot services (basically oil field courier service), surface abandonments--Plaintiff claiming interlocutory, permanent injunction restraining defendant from infringing plaintiff's exclusive rights, using, displaying plaintiff's trade-mark, doing any act likely to have effect of depreciating plaintiff's goodwill, reputation in trade-mark--No challenge by defendant as to validity of plaintiff's mark--Registered mark presumed valid whether defendant's use of trade name confusing within meaning of Trade-marks Act, s. 6--In determining whether likelihood of confusion, Court shall have regard to all surrounding circumstances, including those described in Act, s. 6(5)--First factor to be considered: inherent distinctiveness of trade-marks, trade names, extent to which they have become known--Plaintiff's trade-mark "Top Notch Construction Ltd. Calgary" encircled by crawler track of bulldozer--Less protection afforded to mark where only descriptive of services--Even though mark not inherently distinctive, may acquire distinctiveness through continued use in marketplace--Plaintiff's trade-mark, defendant's trade name not gaining acquired distinctiveness--Plaintiff's trade-mark in use since 1966--Defendant used trade name since 1993--Nature of trade of plaintiff, defendant different with exception of small amount of overlap in areas of backhoe work, joint venture pipeline work--Evidence not establishing how pipeline work in joint venture done--Ideas suggested by two marks different--Unlikely defendant's name would be in earth moving, irrigation, road building business--No likelihood of confusion between plaintiff's trade-mark, defendant's trade name--No likelihood of confusion as to source of services--Great difference between nature of services, nature of trade in which services provided--Had plaintiff properly pleaded Trade-marks Act, s. 7(b), claim in relation thereto must fail--Plaintiff has not made out claim under Act, s. 22(1)--Claim dismissed--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6, 7, 22.