Digests

Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée

T-2080-98

2003 FCT 103, Tremblay-Lamer J.

30/1/03

36 pp.

Registration--Action for infringement of registered trade-marks, unfair competition and tort of passing-off-- Alternatively, plaintiff asked defendants' marks be struck out--Trade-marks Act (Act), s. 20 providing right to exclusive use deemed to be infringed by person not entitled to such use under Act who sells, distributes or advertises wares in association with confusing trade-mark--To decide whether trade-marks create confusion Court must look at all circumstances of case, including those set out in Act, s. 6(5)--First, regarding inherent distinctiveness of trade-marks--Trade-mark with word in current use has inherently lower distinctiveness and degree of protection granted by Court limited--Trade mark made up of unique or invented word has inherently much greater distinctiveness and deserves more extensive protection--Court considered plaintiff's marks ("Veuve Clicquot" and "Clicquot") had significant inherent distinctiveness and deserved extensive protection--Word "Clicquot" invented and evidence showed, apart from defendants' marks, no similar mark on market in Canada--Then, as to length of use, mark used for long time deemed to have made certain impression on consumers--In case at bar, Court considered this criteria favoured plaintiff-- Plaintiff's registration for mark "Veuve Clicquot" indicated claim of use of mark in Canada for champagnes since at least 1899--Defendants claimed much more recent use for marks "Cliquot" and "Cliquot `Un monde à part'", namely use since 1995 in association with retailing of women's clothing--As to degree of resemblance between trade-marks, Court must assess impression those marks have made on public--It must look at mark as a whole, not dissect it and make detailed examination of it--Test for confusion between trade-marks must be considered from standpoint of consumer, who is not on his guard and who simply has imperfect memory of having seen or heard infringed mark--Fact defendant's mark written without letter "c" does nothing to eliminate risk of confusion so far as consumer with imperfect memory of trade-marks concerned--Great degree of resemblance exists between marks of plaintiff and those of defendants--As to nature of wares, services or businesses and nature of trade, degree of resemblance between wares bearing those marks important factor in determining whether likelihood of confusion-- vidence did not show plaintiff intended to exploit any other areas than that of champagne--If plaintiff really intended to extend its marks to fashion field, its strategic plans would have reflected that--For these reasons, no connection between plaintiff's activities and those of defendants--Key factor significant difference between plaintiff's wares and those of defendants--Plaintiff's activities and those of defendants so different no risk of confusion in consumers' minds-- Defendants' marks "Cliquot" and "Cliquot `Un monde à part'" do not create confusion with those of plaintiff-- Consequently, use of those marks not infringement of plaintiff's marks within Act, s. 20--Plaintiff further argued use of mark by defendants breach of Act, s. 7(b) and (c)--In order to succeed in action for passing-off, plaintiff must have established three points: existence of goodwill, deceptive representation which has misled public and actual or potential damage to plaintiff--Evidence showed plaintiff's mark distinctive, possessing goodwill in connection with sale of champagne--However, evidence did not show mark had any goodwill in women's fashion industry--No connection between its wares and women's fashion industry--Evidence showed plaintiff's association with world of fashion limited to targeting female market as consumer of champagne products --Rule: risk of confusion arising when business uses name, trade-mark or packaging of product so as to create confusion in mind of consumer or impression its business that of another well-established business, subsidiary thereof or in some way related --Not likely consumer would think stores operated by defendants connected to plaintiff--Two parties' wares and distribution channels so different no risk of confusion-- Consequently, use of trade-mark by defendants not breach of Act, s. 7(b)--In view of difference between plaintiff's wares and those of defendants, no breach of Act, s. 7(c)--Plaintiff further maintained use of trade-mark by defendants reduced value of goodwill attaching to its mark--Act, s. 22 providing no person shall use trade-mark registered by another person in manner likely to have effect of depreciating value of goodwill attaching thereto--Consumer has to be able to make connection between parties in order for there to be depreciation of goodwill attaching to trade-mark--Plaintiff's sole purpose sale of champagne, and not interested in getting into other areas--Consumer who saw word "Cliquot" used in defendants' stores would not make any link or connection to plaintiff--Consequently, no association between "Clicquot" luxury mark and defendants' "non-luxury" wares-- Defendants' trade-mark did not depreciate value of goodwill attaching to trade-mark "Clicquot", no breach of Act, s. 22-- Alternatively, plaintiff asked Court to strike out registrations --Act, ss. 12(1)(d), 18(1)(a) indicating registration of trade-mark invalid if mark creates confusion with registered trade-mark--Since defendants' marks do not create confusion, its marks are valid--Defendants could register its marks because no confusion between its trade-marks and those of plaintiff-- Nothing in evidence to support argument defendants' marks not distinctive--Plaintiff provided no valid evidence to indicate defendants' trade-marks had become non-distinctive --For these reasons, no valid basis for striking out defendants' trade-marks--Plaintiff's action dismissed--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6(5),7(b),(c),12(1)(d), 18(1)(a), 20, 22.