Distribution Prosol PS Ltd. v. Custom Building Products Ltd., [2015] F.T.R. TBEd. OC.046

• Judge: Gascon, J.
• Court: Federal Court (Canada)
• Case Date: April 14, 2015
• Jurisdiction: Canada (Federal)
• Citations: [2015] F.T.R. TBEd. OC.046;2015 FC 1170

Distr. Prosol PS v. Custom Building, [2015] F.T.R. TBEd. OC.046

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Temp. Cite: [2015] F.T.R. TBEd. OC.046

Distribution Prosol PS Ltd. (applicant) v. Custom Building Products Ltd. (respondent)

(T-874-14; 2015 FC 1170)

Indexed As: Distribution Prosol PS Ltd. v. Custom Building Products Ltd.

Federal Court

Gascon, J.

October 15, 2015.

Summary:

The applicant "Prosol", a flooring company, owned two registered trademarks: FUSION FORCE and FUSION PATCH (the Prosol Marks), registered on September 27, 2013, in association with adhesives for flooring. Prosol also claimed several common law trademarks, allegedly used in association with adhesive products and grout for flooring. The respondent "Custom" was the registered owner of four Canadian trademarks, registered on October 18, 2013, used in association with grout for flooring: (the FUSION PRO Marks). Prosol applied under s. 57 of the Trade-marks Act to expunge Custom's FUSION PRO Marks as invalid registrations on grounds of confusion with Prosol's Marks, both registered and common law.

The Federal Court dismissed the application. The Court was not satisfied that a casual consumer observing the Custom Marks and having no more than an imperfect recollection of the Prosol Marks would likely be confused into thinking that the source of the wares associated with the Custom Marks was one and the same as the source of the wares associated with the Prosol Marks. Prosol had not discharged its burden and the evidence did not support the expungement, whether on the basis of s. 18(1)(a) or (d) of the Act.

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - General - Conditions precedent - Lack of confusion with other marks - See paragraphs 14 to 21, 28 to 92.

Trademarks, Names and Designs - Topic 886

Trademarks - Registration - Expungement of mark - Grounds - General - See paragraphs 21 to 25.

Trademarks, Names and Designs - Topic 889.5

Trademarks - Registration - Expungement of mark - Grounds - Confusion - See paragraphs 14 to 21, 28 to 92.

Counsel:

Henri Simon, for the applicant;

Scott Miller and Jahangir Valiani, for the respondent.

Solicitors of Record:

Simon Legal, Avocats - Attorneys, Montreal, Quebec, for the applicant;

MBM Intellectual Property Law, Montreal, Quebec, for the respondent.

This application was heard at Montreal, Quebec, on April 14, 2015, before Gascon, J., of the Federal Court, who delivered the following judgment and reasons, dated October 15, 2015, at Ottawa, Ontario.