Driving Alternative Inc. v. Keyz Thankz Inc. et al., 2014 FC 559
| Judge | Manson, J. |
| Court | Federal Court (Canada) |
| Case Date | June 02, 2014 |
| Jurisdiction | Canada (Federal) |
| Citations | 2014 FC 559;(2014), 456 F.T.R. 214 (FC) |
Driving Alternative v. Keyz Thankz Inc. (2014), 456 F.T.R. 214 (FC)
MLB headnote and full text
Temp. Cite: [2014] F.T.R. TBEd. JL.045
The Driving Alternative Inc. (plaintiff) v. Keyz Thankz Inc., Brent Kilbourn and Tracy Wilkins (defendants)
(T-779-11; 2014 FC 559)
Indexed As: Driving Alternative Inc. v. Keyz Thankz Inc. et al.
Federal Court
Manson, J.
June 12, 2014.
Summary:
The plaintiff brought an action, asserting (1) trademark infringement of the plaintiff's registered trademarks KEYS PLEASE and THE DRIVING ALTERNATIVE, contrary to ss. 19 and 20(1) of the Trade-marks Act; (2) that the defendants directed public attention to their services and business in such a way as to cause or to be likely to cause confusion in Canada between their services and business and the services of the Plaintiff and falsely suggested an association between the business of the defendants and the business of the plaintiff, contrary to s. 7(b) of the Act; (3) passing off their services in Canada as and for those of the plaintiff, contrary to s. 7(c) of the Act; and (4) depreciating the value of the goodwill of the plaintiff's registered trademarks, contrary to s. 22(1) of the Act. The plaintiff moved for summary trial.
The Federal Court allowed the motion.
Limitation of Actions - Topic 13
General principles - Conflict between limitation periods - The plaintiff was the registered owner of the registered Canadian trademarks KEYS PLEASE and THE DRIVING ALTERNATIVE and had used them continuously across Canada since 1997 - From 1999 to 2001, the defendants were licensed to operate a franchise location using the plaintiff's trademarks in London, Ontario - In December 2001, the plaintiff terminated the license for non-payment of royalties - The defendants continued to use the trademark - The plaintiff demanded they cease in 2005 - The defendants continued their business under the trademark KEYZ PLEAZE - The plaintiff brought an action, asserting (1) trademark infringement of the plaintiff's registered trademarks, contrary to ss. 19 and 20(1) of the Trade-marks Act; (2) that the defendants directed public attention to their services and business in such a way as to cause or to be likely to cause confusion in Canada between their services and business and the services of the plaintiff and falsely suggested an association between the business of the defendants and the business of the plaintiff, contrary to s. 7(b) of the Act; (3) passing off their services in Canada as and for those of the plaintiff, contrary to s. 7(c) of the Act; and (4) depreciating the value of the goodwill of the plaintiff's registered trademarks, contrary to s. 22(1) of the Act - The plaintiff moved for summary trial - The defendants asserted that the applicable limitation period was two years under s. 5(1)(b) of the Limitations Act (Ont.) - The plaintiff asserted that the applicable period was six years under s. 39(2) of the Federal Courts Act - The Federal Court agreed with the plaintiff that s. 39 of the Federal Courts Act described the appropriate limitation period to apply, as the cause of action did not arise exclusively within the province of Ontario - It would be unjust to bar, by way of a provincial statute of limitations, national trademarks rights of the plaintiff - See paragraphs 26 to 32.
Practice - Topic 5255.4
Trials - General - Summary trials - Availability of - The plaintiff was the registered owner of the registered Canadian trademarks KEYS PLEASE and THE DRIVING ALTERNATIVE and had used them continuously across Canada since 1997 - From 1999 to 2001, the defendants were licensed to operate a franchise location using the plaintiff's trademarks in London, Ontario - In December 2001, the plaintiff terminated the license for non-payment of royalties - The defendants continued to use the trademark - The plaintiff demanded they cease in 2005 - The defendants continued their business under the trademark KEYZ PLEAZE - The plaintiff brought an action, asserting (1) trademark infringement of the plaintiff's registered trademarks, contrary to ss. 19 and 20(1) of the Trade-marks Act; (2) that the defendants directed public attention to their services and business in such a way as to cause or to be likely to cause confusion in Canada between their services and business and the services of the plaintiff and falsely suggested an association between the business of the defendants and the business of the plaintiff, contrary to s. 7(b) of the Act; (3) passing off their services in Canada as and for those of the plaintiff, contrary to s. 7(c) of the Act; and (4) depreciating the value of the goodwill of the plaintiff's registered trademarks, contrary to s. 22(1) of the Act - The plaintiff moved for summary trial - The Federal Court stated that "with respect to trade-mark infringement, likelihood of confusion, passing off and depreciation of goodwill, I find that the evidence establishes the Plaintiff's case and that summary trial judgment is appropriate" - See paragraphs 34 to 37.
Trademarks, Names and Designs - Topic 1806
Trademarks - Infringement - Test - Confusion with other mark or name - The plaintiff was the registered owner of the registered Canadian trademarks KEYS PLEASE and THE DRIVING ALTERNATIVE and had used them continuously across Canada since 1997 - From 1999 to 2001, the defendants were licensed to operate a franchise location using the plaintiff's trademarks in London, Ontario - In December 2001, the plaintiff terminated the license for non-payment of royalties - The defendants continued to use the trademark - The plaintiff demanded they cease in 2005 - The defendants continued their business under the trademark KEYZ PLEAZE - The plaintiff brought an action, asserting, inter alia, trademark infringement of the plaintiff's registered trademarks, contrary to ss. 19 and 20(1) of the Trade-marks Act - The plaintiff moved for a summary trial - The Federal Court allowed the motion and allowed the action - The plaintiff had established that the defendants caused a likelihood of confusion and actual confusion and had infringed the plaintiff's registered trademarks KEYS PLEASE and THE DRIVING ALTERNATIVE under s. 20 of the Act by use of DRIVING ALTERNATIVE and KEYS PLEASE - Further, the plaintiff had established a likelihood of confusion under s. 20 of the Act, by the activities of KEYZ THANKZ since 2005 - See paragraphs 46 to 52.
Trademarks, Names and Designs - Topic 1808
Trademarks - Infringement - Use - Depreciation of goodwill - The plaintiff was the registered owner of the registered Canadian trademarks KEYS PLEASE and THE DRIVING ALTERNATIVE and had used them continuously across Canada since 1997 - From 1999 to 2001, the defendants were licensed to operate a franchise location using the plaintiff's trademarks in London, Ontario - In December 2001, the plaintiff terminated the license for non-payment of royalties - The defendants continued to use the trademark - The plaintiff demanded they cease in 2005 - The defendants continued their business under the trademark KEYZ PLEAZE - The plaintiff brought an action, asserting, inter alia, depreciation of the goodwill of the plaintiff's registered trademarks, contrary to s. 22(1) of the Trademarks Act - The plaintiff moved for a summary trial - The Federal Court allowed the motion and allowed the action - The defendants' use of the mark KEYZ PLEAZE was the same as KEYS PLEASE phonetically and in meaning, and almost identical in appearance - Both marks were associated with designated driving services - The defendants purposely relied on this mental association or linkage in the minds of consumers when it used the term KEYZ PLEAZE in the KEYZ PLEAZE statement from 2009 to 2012 on the defendant's website, and in the London Free Press advertisement in 2009 - The use by the defendants of KEYZ PLEAZE contravened s. 22 - See paragraphs 55 to 59.
Trademarks, Names and Designs - Topic 1816
Trademarks - Infringement - Remedies - Damages - The plaintiff was the registered owner of the registered Canadian trademarks KEYS PLEASE and THE DRIVING ALTERNATIVE and had used them continuously across Canada since 1997 - From 1999 to 2001, the defendants were licensed to operate a franchise location using the plaintiff's trademarks in London, Ontario - In December 2001, the plaintiff terminated the license for non-payment of royalties - The defendants continued to use the trademark - The plaintiff demanded they cease in 2005 - The defendants continued their business under the trademark KEYZ PLEAZE - The plaintiff brought an action, asserting, inter alia, trademark infringement of the plaintiff's registered trademarks KEYS PLEASE and THE DRIVING ALTERNATIVE, contrary to ss. 19 and 20(1) of the Trade-marks Act and depreciation of the goodwill of the plaintiff's registered trademarks, contrary to s. 22(1) of the Act - The plaintiff moved for a summary trial - The Federal Court allowed the motion and allowed the action - The court awarded damages in the amount of $25,000 for each of the years of infringement, for a total damage award of $225,000 - See paragraphs 60 to 68.
Cases Noticed:
Canada v. Maritime Group (Canada) Inc. et al., [1995] 3 F.C. 124; 185 N.R. 104 (F.C.A.), refd to. [para. 29].
Kirkbi AG et al. v. Ritvik Holdings Inc. et al. (2002), 220 F.T.R. 161; 2002 FCT 585 (T.D.), refd to. [para. 30].
Teva Canada Ltd. v. Wyeth LLC et al., [2011] F.T.R. Uned. 879; 2011 FC 1169, refd to. [para. 35].
Louis Vuitton Malletier S.A. et al. v. Singga Enterprises (Canada) Inc. et al. (2011), 392 F.T.R. 258; 2011 FC 776, refd to. [para. 36].
Mentmore Manufacturing Co. and Rotary Pen Corp. v. National Merchandise Manufacturing Co. et al. (1978), 22 N.R. 161 (F.C.A.), refd to. [para. 38].
Masterpiece Inc. v. Alavida Lifestyles Inc., [2011] 2 S.C.R. 387; 416 N.R. 307; 2011 SCC 27, refd to. [para. 48].
Driving Alternative Inc. v. Jarvis (2012), 422 F.T.R. 210; 2012 FC 1430, refd to. [para. 61].
Whiten v. Pilot Insurance Co. et al., [2002] 1 S.C.R. 595; 283 N.R. 1; 156 O.A.C. 201; 2002 SCC 18, refd to. [para. 68].
Counsel:
Ahmed Bulbulia, for the plaintiff, The Driving Alternative Inc.;
Brent Kilbourn, for the defendants, Brent Kilbourn and Keyz Thankz Inc.;
Tracy Wilkins, on her own behalf, for the defendant.
Solicitors of Record:
Macera & Jarzyna/Moffat & Co., Ottawa, Ontario, for the plaintiff, The Driving Alternative Inc.
This case was heard at Toronto, Ontario, on June 2, 2014, by Manson, J., of the Federal Court, who delivered the following judgment at Ottawa, Ontario, on June 12, 2014.
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