Black & Decker Corp. et al. v. Piranha Abrasives Inc., (2015) 475 F.T.R. 218 (FC)

• Judge: Manson, J.
• Court: Federal Court (Canada)
• Case Date: January 20, 2015
• Jurisdiction: Canada (Federal)
• Citations: (2015), 475 F.T.R. 218 (FC);2015 FC 185

Black & Decker v. Piranha Abrasives (2015), 475 F.T.R. 218 (FC)

MLB headnote and full text

Temp. Cite: [2015] F.T.R. TBEd. MR.003

The Black & Decker Corporation and Stanley Black & Decker Canada Corporation (applicants) v. Piranha Abrasives Inc (respondent)

(T-1360-14; 2015 FC 185)

Indexed As: Black & Decker Corp. et al. v. Piranha Abrasives Inc.

Federal Court

Manson, J.

February 13, 2015.

Summary:

The applicant alleged that the respondent Piranha Abrasives Inc. had infringed the applicant's registered PIRANHA word and design marks. The applicant's marks had been used in association with circular saw blades and jigsaw blades that were primarily for cutting wood and wood-related products since 1987 for the word mark and 1995 for the design mark. The respondent began using the PIRANHA ABRASIVES design mark in May 2010 in association with its circular shaped diamond abrasive blades for cutting granite, marble, porcelain, tile, glass and concrete. It had applied to register PIRANHA ABRASIVES and design.

The Federal Court held that the respondent's use of the PIRANHA ABRASIVES design and mark was likely to be confusing with the applicant's marks and infringed the applicant's marks. The applicant was entitled to nominal damages of $10,000. There was no passing off or depreciation of goodwill. An injunction was granted with respect to the respondent's use of PIRANHA ABRASIVES and design on its abrasive circular saw blades and related materials. The respondent's pending trademark application had to be amended to delete diamond abrasive cutting tools.

Trademarks, Names and Designs - Topic 1806

Trademarks - Infringement - Test - Confusion with other marks (incl. reverse confusion) - The applicant alleged that the respondent Piranha Abrasives Inc. had infringed the applicant's registered PIRANHA word and design marks - The applicant's marks had been used in association with circular saw blades and jigsaw blades that were primarily for cutting wood and wood-related products since 1987 for the word mark and 1995 for the design mark - The respondent began using the PIRANHA ABRASIVES design mark in May 2010 in association with its circular shaped diamond abrasive blades for cutting granite, marble, porcelain, tile, glass and concrete - The Federal Court held that the respondent's use of the PIRANHA ABRASIVES design and mark was likely to be confusing with the applicant's marks and infringed the applicant's marks - When assessing confusion, the test to be applied was a matter of first impression in the mind of a casual consumer, somewhat in a hurry - Section 6(5) of the Trade-marks Act set out the required approach to analysing confusion - The fact that there was no evidence of actual confusion did not lead to a negative inference - Nor was it significant that the applicant's marks were used for wood and plastic cutting blades - The proper focus was what the applicant's marks authorized the applicant to have the exclusive right to do in using their marks in Canada, not what the applicant happened to be doing at the current time - See paragraphs 74 to 84.

Trademarks, Names and Designs - Topic 1806

Trademarks - Infringement - Test - Confusion with other marks (incl. reverse confusion) - The applicant alleged that the respondent Piranha Abrasives Inc. had infringed the applicant's registered PIRANHA word and design marks - The applicant's marks had been used in association with circular saw blades and jigsaw blades that were primarily for cutting wood and wood-related products since 1987 for the word mark and 1995 for the design mark - The respondent began using the PIRANHA ABRASIVES design mark in May 2010 in association with its circular shaped diamond abrasive blades for cutting granite, marble, porcelain, tile, glass and concrete - The Federal Court held that the respondent's use of the PIRANHA ABRASIVES design and mark was likely to be confusing with the applicant's marks and infringed the applicant's marks - The applicant's marks were inherently distinctive and had been registered and in use in Canada for a longer time than the respondent's mark had been used - While the applicant's current use was for circular saw and power blades primarily for cutting wood and wood-related products, there was no limit in the registration as to the type of saw blades or the form of use - There was a significant degree of resemblance between the marks - The relevant consumer was likely to be confused as to the source of the goods or as to an association or connection between the applicant and the respondent - See paragraphs 85 to 101.

Trademarks, Names and Designs - Topic 1808

Trademarks - Infringement - Use - Depreciation of goodwill - The applicant alleged that the respondent Piranha Abrasives Inc. had infringed the applicant's registered PIRANHA word and design marks - The applicant's marks had been used in association with circular saw blades and jigsaw blades that were primarily for cutting wood and wood-related products since 1987 for the word mark and 1995 for the design mark - The respondent began using the PIRANHA ABRASIVES design mark in May 2010 in association with its circular shaped diamond abrasive blades for cutting granite, marble, porcelain, tile, glass and concrete - The Federal Court found that the applicant had not established a depreciation of goodwill in its marks by virtue of the respondent's use of its PIRANHA ABRASIVES design and trade name, contrary to s. 22 of the Trade-marks Act - There was no evidence showing that the applicant had suffered any loss of reputation or customers due to the respondent's activities - The high quality of the respondent's blades was not disputed - There was no evidence of the applicant's own reputation in its marks as used with circular saw blades other than a use over an extended period of time with its BLACK & DECKER marks with little or no advertising for many years and substantially diminished sales - See paragraphs 106 to 109.

Trademarks, Names and Designs - Topic 1816

Trademarks - Infringement - Remedies - Damages - The applicant alleged that the respondent Piranha Abrasives Inc. had infringed the applicant's registered PIRANHA word and design marks - The applicant's marks had been used in association with circular saw blades and jigsaw blades that were primarily for cutting wood and wood-related products since 1987 for the word mark and 1995 for the design mark - The respondent began using the PIRANHA ABRASIVES design mark in May 2010 in association with its circular shaped diamond abrasive blades for cutting granite, marble, porcelain, tile, glass and concrete - The Federal Court, having found infringement with respect to the applicant's marks as used only with abrasive circular saw blades, held that the applicant was entitled to nominal damages of $10,000 - There was no passing off or depreciation of goodwill - An injunction was granted with respect to the respondent's use of PIRANHA ABRASIVES and design on its abrasive circular saw blades and related materials - The respondent's pending trademark application had to be amended to delete diamond abrasive cutting tools - See paragraphs 110 to 114.

Trademarks, Names and Designs - Topic 1819

Trademarks - Infringement - Remedies - Injunctions - [See Trademarks, Names and Designs - Topic 1816 ].

Trademarks, Names and Designs - Topic 3068

Trademarks - Unfair competition - Passing off - The applicant alleged that the respondent Piranha Abrasives Inc. had infringed the applicant's registered PIRANHA word and design marks - The applicant's marks had been used in association with circular saw blades and jigsaw blades that were primarily for cutting wood and wood-related products since 1987 for the word mark and 1995 for the design mark - The respondent began using the PIRANHA ABRASIVES design mark in May 2010 in association with its circular shaped diamond abrasive blades for cutting granite, marble, porcelain, tile, glass and concrete - The Federal Court found that the applicant had not established a reputation in its PIRANHA trademarks to support a valid claim in passing off - The applicant's goods were always sold in association with the applicant's BLACK & DECKER and ORANGE and BLACK trademarks - There was no evidence of the extent of an independent reputation having been established in the applicant's marks - Given the diminished sales and lack of advertising to support such a reputation, a case for passing off was not made out - See paragraphs 102 to 105.

Cases Noticed:

Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), 416 N.R. 307; 2011 SCC 27, refd to. [para. 75].

Veuve Clicquot Ponsardin v. Boutiques Cliquot ltée et al. (2006), 349 N.R. 111; 2006 SCC 23, refd to. [para. 76].

Mattel Inc. v. 3894207 Canada Inc. et al., [2006] 1 S.C.R. 772; 348 N.R. 340; 2006 SCC 22, refd to. [para. 76].

CIBA-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120; 143 N.R. 241; 58 O.A.C. 321, refd to. [para. 102].

Hayabusa Fightwear Inc. v. Suzuki Motor Corp. (2014), 461 F.T.R. 127; 2014 FC 784, refd to. [para. 104].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 6(5) [para. 77].

Counsel:

Jane Steinberg, for the applicants;

Michelle L. Wassenaar and Andrea Long, for the respondent.

Solicitors of Record:

Gowling Lafleur Henderson, LLP, Ottawa, Ontario, for the applicants;

Method Law Professional Corporation, Toronto, Ontario, for the respondent.

This application was heard at Toronto, Ontario, on January 20, 2015, by Manson, J., of the Federal Court, who delivered the following reasons for judgment at Ottawa, Ontario, on February 13, 2015.