Drolet v. Gralsbotschaft et al., 2009 FC 17

• Judge: de Montigny, J.
• Court: Federal Court (Canada)
• Case Date: January 06, 2009
• Jurisdiction: Canada (Federal)
• Citations: 2009 FC 17;(2009), 341 F.T.R. 44 (FC)

Drolet v. Gralsbotschaft (2009), 341 F.T.R. 44 (FC)

MLB headnote and full text

Temp. Cite: [2009] F.T.R. TBEd. JA.037

Yvon Drolet (demandeur/défendeur reconventionnel) v. Stiftung Gralsbotchafgt et Fondation du Mouvement du Graal Canada (défenderesses/demanderesses reconventionnelles)

(T-1670-04; 2009 CF 17; 2009 FC 17)

Indexed As: Drolet v. Gralsbotschaft et al.

Federal Court

de Montigny, J.

January 6, 2009.

Summary:

The Grail Message was written by Bernhardt, from 1923 to 1937, under the pen name Abd-ru-shin. The plaintiff read the Grail Message for the first time in 1976 and became a member of the Foundation of the Grail Movement. He subsequently withdrew from the Foundation. In 2000, the plaintiff learned of the existence of what he believed was Bernhardt's original work, in its 1931 edition, as translated into French by Roudaut. The plaintiff also learned that Siffrid had translated part of Bernhardt's work into French during the author's lifetime. Based on the translations by Roudaut and Siffrid of the original German work, as well as the French translation by Kaufmann distributed by the Foundation, the plaintiff undertook research to try to reconstitute Bernhart's original work. The plaintiff concluded that the version published around 1949/1950 in German and considered by the Foundation to be the definitive version of the Grail Message was different from the original edition and from the writings published during Bernhardt's lifetime. In May 2001, the plaintiff published one hundred copies in three volumes of the French version of the Grail Message. The defendants demanded that the plaintiff immediately cease acts that violated the defendants' trademarks registered in 1999. The plaintiff commenced an action under s. 57 of the Trade-marks Act to have the defendants' registrations struck from the Trademarks Register. The defendants counterclaimed, asserting that the trademarks were valid and that the plaintiff had infringed ss. 7(b) and (c) of the Trade-marks Act. In 2007, the defendants amended their counterclaim, adding an assertion that the plaintiff had infringed the defendants' copyright contrary to s. 27 of the Copyright Act. The defendants sought a permanent injunction ordering the plaintiff to cease all infringing actions.

The Federal Court (1) allowed the plaintiff's action in part; (2) allowed the defendants' counterclaim in part; (3) struck the trademarks LMC 520 520, LMC 519 477 and LMC 519 476 from the Register of Trade-marks; (4) declared that the plaintiff did not infringe trademark LMC 519 470; (5) declared that the plaintiff infringed trademark LMC 519 469; (6) declared that the defendants' counterclaim with respect to copyright infringement was time-barred; (7) ordered the plaintiff to pay to the defendants an amount of $500 in damages; (8) issued a permanent injunction ordering the plaintiff not to infringe trademark LMC 519 469 in connection with any publication he might make in future; (9) ordered the defendants to pay costs to be determined in accordance with the upper scale of column IV of Tariff B.

Copyright - Topic 1007

Works subject to copyright - General - Original works - The Grail Message was written by Bernhardt, from 1923 to 1937, under the pen name Abd-ru-shin - The plaintiff read the Grail Message for the first time in 1976 and became a member of the Foundation of the Grail Movement - He subsequently withdrew from the Foundation - In 2000, the plaintiff learned of the existence of what he believed was Bernhardt's original work, in its 1931 edition, as translated into French by Roudaut - The plaintiff also learned that Siffrid had translated part of Bernhardt's work into French during the author's lifetime - Based on the translations by Roudaut and Siffrid of the original German work, as well as the French translation by Kaufmann distributed by the Foundation, the plaintiff undertook research to try to reconstitute Bernhart's original work - The plaintiff concluded that the version published around 1949/1950 in German and considered by the Foundation to be the definitive version of the Grail Message was different from the original edition and from the writings published during Bernhardt's lifetime - In May 2001, the plaintiff published one hundred copies in three volumes of the French version of the Grail Message - The defendants demanded that the plaintiff immediately cease acts that violated the defendants' trademarks registered in 1999 - The defendants asserted that the plaintiff infringed their copyright to the French language translation of the Grail Message done by Kaufmann - According to the defendants, the work published by the plaintiff was to a degree greater than 90% a reproduction of Kaufmann's translation, thereby constituting an obvious infringement under s. 27 of the Copyright Act - The plaintiff argued that Kaufmann's translations were merely a revision of previous translations and not an original translation of the work of Bernhardt - In other words, the plaintiff claimed that the work performed by Kaufmann was not sufficiently original to give rise to a copyright in his work - The Federal Court rejected the plaintiff's assertions - Kaufmann's work was not a mere copy of another work, but showed the exercise of skill and judgment - The fact that Kaufmann might have drawn on previous translations in writing his own did not detract from the originality of his work - He did not simply repeat a previous translation by making only cosmetic changes, but substantially altered its style to make it more literary and less literal - That was undoubtedly a sign of creative work - Accordingly, the plaintiff failed in rebutting the presumption of originality under s. 34.1 of the Act, which provided that a work was presumed to be covered by copyright unless the contrary was proven - See paragraphs 224 to 230.

Copyright - Topic 1007

Works subject to copyright - General - Original works - The Grail Message was written by Bernhardt, from 1923 to 1937, under the pen name Abd-ru-shin - The plaintiff read the Grail Message for the first time in 1976 and became a member of the Foundation of the Grail Movement - He subsequently withdrew from the Foundation - In 2000, the plaintiff learned of the existence of what he believed was Bernhardt's original work, in its 1931 edition, as translated into French by Roudaut - The plaintiff also learned that Siffrid had translated part of Bernhardt's work into French during the author's lifetime - Based on the translations by Roudaut and Siffrid of the original German work, as well as the French translation by Kaufmann distributed by the Foundation, the plaintiff undertook research to try to reconstitute Bernhart's original work - The plaintiff concluded that the version published around 1949/1950 in German and considered by the Foundation to be the definitive version of the Grail Message was different from the original edition and from the writings published during Bernhardt's lifetime - In May 2001, the plaintiff published one hundred copies in three volumes of the French version of the Grail Message - The defendants demanded that the plaintiff immediately cease acts that violated the defendants' trademarks registered in 1999 - The defendants asserted that the plaintiff infringed their copyright to the French language translation of the Grail Message done by Kaufmann - According to the defendants, the work published by the plaintiff was to a degree greater than 90% a reproduction of Kaufmann's translation, thereby constituting an obvious infringement under s. 27 of the Copyright Act - The plaintiff argued that no valid authorization had been given to Kaufmann to proceed with his translation - Section 3(1)(a) of the Copyright Act provided that copyright included the right to produce, reproduce, perform or publish any translation of the work - Accordingly, Kaufmann had to obtain from the owner of the copyright an authorization to translate his work - Without such an authorization, he himself could not be called an author within the legal meaning of the term - The plaintiff submitted that the defendant Stiftung Gralsbotschaft did not hold the copyright in the Grail Message when it authorized Kaufmann to translate it - Moreover, the text that it authorized him to translate was allegedly not the text written or revised by Bernhardt himself, but rather a version revised after his death - Therefore, it was not known what Kaufmann translated, from what source he translated it, and by what authority - The Federal Court rejected the plaintiff's assertions - After carefully examining the different versions of the Grail Message published under the name Bernhardt, the court came to the conclusion that they were one and the same work - The version translated by Kaufmann was admittedly not identical to the version published in the author's lifetime - However, the removal of certain passages and the changed order of the essays were not insufficient to radically transform the original work to the point where a reasonable and objective person would conclude that this was a new work - Further, in light of the circumstances, the court was satisfied that the defendant Stiftung was the owner of the copyright in all of the French translations done by Kaufmann - See paragraph 231 to 247.

Copyright - Topic 4405

Infringement of copyright - General principles - Substantial similarity or substantial copying - The Grail Message was written by Bernhardt, from 1923 to 1937, under the pen name Abd-ru-shin - The plaintiff read the Grail Message for the first time in 1976 and became a member of the Foundation of the Grail Movement - He subsequently withdrew from the Foundation - In 2000, the plaintiff learned of the existence of what he believed was Bernhardt's original work, in its 1931 edition, as translated into French by Roudaut - The plaintiff also learned that Siffrid had translated part of Bernhardt's work into French during the author's lifetime - Based on the translations by Roudaut and Siffrid of the original German work, as well as the French translation by Kaufmann distributed by the Foundation, the plaintiff undertook research to try to reconstitute Bernhart's original work - The plaintiff concluded that the version published around 1949/1950 in German and considered by the Foundation to be the definitive version of the Grail Message was different from the original edition and from the writings published during Bernhardt's lifetime - In May 2001, the plaintiff published one hundred copies in three volumes of the French version of the Grail Message - The defendants demanded that the plaintiff immediately cease acts that violated the defendants' trademarks registered in 1999 - The defendants asserted that the plaintiff infringed their copyright to the French language translation of the Grail Message done by Kaufmann - According to the defendants, the work published by the plaintiff was to a degree greater than 90% a reproduction of Kaufmann's translation, thereby constituting an obvious infringement under s. 27 of the Copyright Act - The plaintiff argued that he based his work not only on Kaufmann's translation but also on the translation done by Roudaut as well as on the original German edition and its first French translation by Siffrid - Because he wanted to reproduce in French the Grail Message as published while Bernhardt was alive, the plaintiff also inverted the order of the chapters as found in Kaufmann's translation and also added 14 essays and certain passages that did not appear any longer in the version published by the defendants - The Federal Court rejected the plaintiff's assertions - Except possibly for the first essays, the content of the two works was essentially identical - In many cases, whole paragraphs and even complete pages were exactly the same - To counter an action in copyright infringement, it was not enough to change the order of the chapters or even add to the plagiarized text - As for the argument that the plaintiff might have involuntarily used wording similar to that found in Kaufmann's translation, it was insufficient to counter a lack of originality - See paragraphs 251 to 257.

Copyright - Topic 4490

Infringement of copyright - Acts constituting an infringement - Authorization to exercise rights reserved solely for author - The Grail Message was written by Bernhardt, from 1923 to 1937, under the pen name Abd-ru-shin - The plaintiff read the Grail Message for the first time in 1976 and became a member of the Foundation of the Grail Movement - He subsequently withdrew from the Foundation - In 2000, the plaintiff learned of the existence of what he believed was Bernhardt's original work, in its 1931 edition, as translated into French by Roudaut - The plaintiff also learned that Siffrid had translated part of Bernhardt's work into French during the author's lifetime - Based on the translations by Roudaut and Siffrid of the original German work, as well as the French translation by Kaufmann distributed by the Foundation, the plaintiff undertook research to try to reconstitute Bernhart's original work - The plaintiff concluded that the version published around 1949/1950 in German and considered by the Foundation to be the definitive version of the Grail Message was different from the original edition and from the writings published during Bernhardt's lifetime - In May 2001, the plaintiff published one hundred copies in three volumes of the French version of the Grail Message - The defendants demanded that the plaintiff immediately cease acts that violated the defendants' trademarks registered in 1999 - The defendants asserted that the plaintiff infringed their copyright to the French language translation of the Grail Message done by Kaufmann - According to the defendants, the work published by the plaintiff was to a degree greater than 90% a reproduction of Kaufmann's translation, thereby constituting an obvious infringement under s. 27 of the Copyright Act - The plaintiff argued that the defendants had tacitly consented to his reproduction of Kaufmann's work - This authorization followed from the fact that Thivierge (president of the Foundation) gave him diskettes containing Kaufmann's translation and that Thivierge was aware of his work because he saw it at the plaintiff's home in the summer of 2001 - Section 27(1) clearly stated that the reproduction of a work without the consent of the owner of the copyright was an infringement - The Federal Court rejected the plaintiff's assertions - Simply giving the plaintiff the diskettes containing Kaufmann's translation could not constitute an authorization to reproduce the work - Furthermore, Thivierge was not the owner of the copyright in Kaufmann's work, nor was the Foundation - Copyright belonged to the defendant Stiftung Gralsbotschaft and it alone could give this authorization - Accordingly, the defence of authorization could not succeed - See paragraphs 258 to 261.

Copyright - Topic 4642

Defences - Consent - [See Copyright - Topic 4490 ].

Copyright - Topic 4645

Defences - Fair dealing - The Grail Message was written by Bernhardt, from 1923 to 1937, under the pen name Abd-ru-shin - The plaintiff read the Grail Message for the first time in 1976 and became a member of the Foundation of the Grail Movement - He subsequently withdrew from the Foundation - In 2000, the plaintiff learned of the existence of what he believed was Bernhardt's original work, in its 1931 edition, as translated into French by Roudaut - The plaintiff also learned that Siffrid had translated part of Bernhardt's work into French during the author's lifetime - Based on the translations by Roudaut and Siffrid of the original German work, as well as the French translation by Kaufmann distributed by the Foundation, the plaintiff undertook research to try to reconstitute Bernhart's original work - The plaintiff concluded that the version published around 1949/1950 in German and considered by the Foundation to be the definitive version of the Grail Message was different from the original edition and from the writings published during Bernhardt's lifetime - In May 2001, the plaintiff published one hundred copies in three volumes of the French version of the Grail Message - The defendants demanded that the plaintiff immediately cease acts that violated the defendants' trademarks registered in 1999 - The plaintiff commenced an action - The defendants filed a counterclaim, asserting that the plaintiff infringed their copyright to the French language translation of the Grail Message done by Kaufmann - According to the defendants, the work published by the plaintiff was to a degree greater than 90% a reproduction of Kaufmann's translation, thereby constituting an obvious infringement under s. 27 of the Copyright Act - The plaintiff relied on s. 29 of the Copyright Act and asserted that his sole aim was to do justice to the author by reproducing his true work - He also asserted that his good faith was evident from the fact that he had published his work under the author's name, or rather his pseudonym (Abdrushin), and that he had never tried to claim it as his own - In short, his intention was utterly disinterested and he sought only to spread the author's true thought - The Federal Court rejected the plaintiff's assertions - Good faith was not a relevant test for determining whether the fair dealing exception applied - The plaintiff's publication could not be likened to a mere research activity - Accordingly, it was not necessary to deal with the question of whether this was fair dealing, because it was not for the purpose of research or private study - See paragraphs 262 to 264.

Copyright - Topic 4656

Defences - Delay, acquiescence, etc. - The Grail Message was written by Bernhardt, from 1923 to 1937, under the pen name Abd-ru-shin - The plaintiff read the Grail Message for the first time in 1976 and became a member of the Foundation of the Grail Movement - He subsequently withdrew from the Foundation - In 2000, the plaintiff learned of the existence of what he believed was Bernhardt's original work, in its 1931 edition, as translated into French by Roudaut - The plaintiff also learned that Siffrid had translated part of Bernhardt's work into French during the author's lifetime - Based on the translations by Roudaut and Siffrid of the original German work, as well as the French translation by Kaufmann distributed by the Foundation, the plaintiff undertook research to try to reconstitute Bernhart's original work - The plaintiff concluded that the version published around 1949/1950 in German and considered by the Foundation to be the definitive version of the Grail Message was different from the original edition and from the writings published during Bernhardt's lifetime - In May 2001, the plaintiff published one hundred copies in three volumes of the French version of the Grail Message - The defendants demanded that the plaintiff immediately cease acts that violated the defendants' trademarks registered in 1999 - The plaintiff commenced an action - The defendants counterclaimed - In 2007, the defendants amended their counterclaim, adding an assertion that the plaintiff had infringed the defendants' copyright contrary to s. 27 of the Copyright Act - Section 41(1) of the Copyright Act provided for a limitation period of three years after the infringement occurred where the plaintiff knew, or could reasonably have been expected to know, of the infringement at the time it occurred - The plaintiff asserted that the defendants knew or should have known of the infringement as of 2001 because the plaintiff began selling and distributing his book that year - Further, he asserted that the defendants were negligent and lacking in diligence in not amending their pleadings until three years and three months after the plaintiff filed his claim and by registering their copyright only in 2008 - The Federal Court agreed with the plaintiff and dismissed the defendants' counterclaim because it was time-barred - The defendants had not complied with s. 41(1) - See paragraphs 265 to 270.

Trademarks, Names and Designs - Topic 261

Trademarks - What trademarks registrable - Prohibition - Marks which are descriptive of the product - The Grail Message was written by Bernhardt, from 1923 to 1937, under the pen name Abd-ru-shin - The plaintiff read the Grail Message for the first time in 1976 and became a member of the Foundation of the Grail Movement - He subsequently withdrew from the Foundation - In 2000, the plaintiff learned of the existence of what he believed was Bernhardt's original work, in its 1931 edition, as translated into French by Roudaut - The plaintiff also learned that Siffrid had translated part of Bernhardt's work into French during the author's lifetime - Based on the translations by Roudaut and Siffrid of the original German work, as well as the French translation by Kaufmann distributed by the Foundation, the plaintiff undertook research to try to reconstitute Bernhart's original work - The plaintiff concluded that the version published around 1949/1950 in German and considered by the Foundation to be the definitive version of the Grail Message was different from the original edition and from the writings published during Bernhardt's lifetime - In May 2001, the plaintiff published one hundred copies in three volumes of the French version of the Grail Message - The defendants demanded that the plaintiff immediately cease acts that violated the defendants' trademarks registered in 1999, including the registered trademark of the title of the author's works "IN THE LIGHT OF TRUTH" in its French, English and German versions - The plaintiff commenced an action under s. 57 of the Trade-marks Act to have the defendants' registrations struck from the Trademarks register - The plaintiff claimed that the titles were not distinctive and were descriptive of the content of the books - The Federal Court allowed the action - The title of a literary work was inherently descriptive not because it conveyed information on the content of the work but because it was the only way to identify the book in question - The fact that the book could be considered a ware was not sufficient for its title to be considered a registrable trademark - See paragraphs 167 to 186.

Trademarks, Names and Designs - Topic 261

Trademarks - What trademarks registrable - Prohibition - Marks which are descriptive of the product - The Federal Court stated that "the case law has developed a certain number of principles concerning the descriptiveness of a trademark. First of all, it is the first impression that determines whether a trademark is clearly descriptive. Secondly, the adverb 'clearly' used in paragraph 12(1)(b) of the [Trade-marks] Act is not tautological; it is not necessary for the description to be precise, but it must be 'easy to understand, self-evident or plain.' And lastly, it is not necessary to conduct a detailed and critical examination of the words used to determine if they have other connotations, alone or when used in connection with certain wares, in order to determine whether a trademark is descriptive. It is more important to determine what meaning the general public may ascribe to those words in the context in which they are used" - See paragraph 174.

Trademarks, Names and Designs - Topic 262

Trademarks - What trademarks registrable - Prohibition - Marks which are deceptively misdescriptive - [See first Trademarks, Names and Designs - Topic 261 ].

Trademarks, Names and Designs - Topic 264.4

Trademarks - What trademarks registrable - Prohibition - Names and surnames - The Federal Court noted that under s. 12(1)(a) of the Trade-marks Act a trademark could not consist "primarily" of merely the name or the surname of an individual who was living or had died within the preceding thirty years - The applicable test was therefore to ask if a person living in Canada, of average intelligence and having a standard education in English or in French, would react to the trademark by thinking mainly of a name or a surname - It had to first be determined whether the word for which an application for registration was made corresponded to the name or surname of a living person or a person who had died recently - If this preliminary condition was met, it had to be determined whether the proposed trademark was "primarily merely" a name or a surname - See paragraphs 158 and 159.

Trademarks, Names and Designs - Topic 264.4

Trademarks - What trademarks registrable - Prohibition - Names and surnames - The Grail Message was written by Bernhardt, from 1923 to 1937, under the pen name Abd-ru-shin - The plaintiff read the Grail Message for the first time in 1976 and became a member of the Foundation of the Grail Movement - He subsequently withdrew from the Foundation - In 2000, the plaintiff learned of the existence of what he believed was Bernhardt's original work, in its 1931 edition, as translated into French by Roudaut - The plaintiff also learned that Siffrid had translated part of Bernhardt's work into French during the author's lifetime - Based on the translations by Roudaut and Siffrid of the original German work, as well as the French translation by Kaufmann distributed by the Foundation, the plaintiff undertook research to try to reconstitute Bernhart's original work - The plaintiff concluded that the version published around 1949/1950 in German and considered by the Foundation to be the definitive version of the Grail Message was different from the original edition and from the writings published during Bernhardt's lifetime - In May 2001, the plaintiff published one hundred copies in three volumes of the French version of the Grail Message - The defendants demanded that the plaintiff immediately cease acts that violated the defendants' trademarks registered in 1999, including the registered trademark "Abd-ru-shin" - The plaintiff commenced an action under s. 57 of the Trade-marks Act to have the defendants' registrations struck from the Trademarks Register - The plaintiff claimed that "Abd-ru-Shin" was the name of the author of the Grail Message and the trademark could not be registered under s. 12(1)(a) of the Trade-marks Act because it was a word that was primarily merely the name or the surname of an individual who was living or had died within the proceeding 30 years - The Federal Court rejected the assertion - The word "Abd-Ru-Shin" was not the name or surname of a living person or of someone who has died recently - It was clearly not a name likely to be found in a telephone directory in Canada - It was therefore not even necessary to ask whether a person of average intelligence would assume that this was primarily a person's surname - The word "Abd-Ru-Shin" was registrable - See paragraphs 155 to 160.

Trademarks, Names and Designs - Topic 265

Trademarks - What trademarks registrable - Distinctive marks - General - The Federal Court stated that "The very essence of a trademark is to be distinctive. This is in fact the basic reason for Parliament's decision to protect trademarks and it is not surprising that the definition of 'trademark' in section 2 of the [Trade-marks] Act stresses this characteristic. The first paragraph of that definition specifies that it is 'a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others.' The same section also defines a 'distinctive' trademark as one 'that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them.' To be distinctive, a trademark must meet three tests: (1) the trademark must be associated with a product; (2) the owner must use this association between the trademark and his product and sell this product or service; and (3) this association must allow the owner of the trademark to distinguish his product from those of other owners ... The courts have held that the distinctiveness of a trademark can be inherent or acquired. A trademark is inherently distinctive when it does not refer consumers to a multitude of possible sources but only to one. This is the case, for instance, when the trademark is a fictitious and invented name. However, a trademark may also acquire a distinctiveness it initially lacked as a result of continual use." - See paragraphs 168 to 170.

Trademarks, Names and Designs - Topic 265

Trademarks - What trademarks registrable - Distinctive marks - General - [See first Trademarks, Names and Designs - Topic 261 ].

Trademarks, Names and Designs - Topic 1803

Trademarks - Infringement - What constitutes - The Grail Message was written by Bernhardt, from 1923 to 1937, under the pen name Abd-ru-shin - The plaintiff read the Grail Message for the first time in 1976 and became a member of the Foundation of the Grail Movement - He subsequently withdrew from the Foundation - In 2000, the plaintiff learned of the existence of what he believed was Bernhardt's original work, in its 1931 edition, as translated into French by Roudaut - The plaintiff also learned that Siffrid had translated part of Bernhardt's work into French during the author's lifetime - Based on the translations by Roudaut and Siffrid of the original German work, as well as the French translation by Kaufmann distributed by the Foundation, the plaintiff undertook research to try to reconstitute Bernhart's original work - The plaintiff concluded that the version published around 1949/1950 in German and considered by the Foundation to be the definitive version of the Grail Message was different from the original edition and from the writings published during Bernhardt's lifetime - In May 2001, the plaintiff published one hundred copies in three volumes of the French version of the Grail Message - The defendants demanded that the plaintiff immediately cease acts that violated the defendants' trademarks registered in 1999, including the registered trademark and logo "A & SNAKE DESIGN" - The plaintiff commenced an action under s. 57 of the Trade-marks Act to have the defendants' registrations struck from the Trademarks Register - The defendants counterclaimed, asserting that the plaintiff had infringed its trademark by reproducing the logo on the cover page of his book - The Federal Court allowed the counterclaim on this issue - Given the clear language of s. 19 of the Trade-marks Act and the fact that the defendants had only to prove, other than the validity of their trademark "A & SNAKE DESIGN", that the plaintiff used this trademark in connection with the same products as the defendants, the court had no difficulty finding that the plaintiff infringed the rights of the defendants by reproducing the logo on the title pages of each of the three volumes of his book - See paragraph 198.

Trademarks, Names and Designs - Topic 1804

Trademarks - Infringement - Acts not constituting an infringement (incl. defences) - The Grail Message was written by Bernhardt, from 1923 to 1937, under the pen name Abd-ru-shin - The plaintiff read the Grail Message for the first time in 1976 and became a member of the Foundation of the Grail Movement - He subsequently withdrew from the Foundation - In 2000, the plaintiff learned of the existence of what he believed was Bernhardt's original work, in its 1931 edition, as translated into French by Roudaut - The plaintiff also learned that Siffrid had translated part of Bernhardt's work into French during the author's lifetime - Based on the translations by Roudaut and Siffrid of the original German work, as well as the French translation by Kaufmann distributed by the Foundation, the plaintiff undertook research to try to reconstitute Bernhart's original work - The plaintiff concluded that the version published around 1949/1950 in German and considered by the Foundation to be the definitive version of the Grail Message was different from the original edition and from the writings published during Bernhardt's lifetime - In May 2001, the plaintiff published one hundred copies in three volumes of the French version of the Grail Message - The defendants demanded that the plaintiff immediately cease acts that violated the defendants' trademarks registered in 1999, including the registered trademark "Abd-ru-shin" - The plaintiff commenced an action under s. 57 of the Trade-marks Act to have the defendants' registrations struck from the Trademarks Register - The defendants counterclaimed, asserting that the plaintiff had infringed its trademark by reproducing the author's pseudonym on the cover page of the three volumes of the plaintiff's book - The Federal Court dismissed the counterclaim on this issue - Because the spelling of the author's pseudonym used by the plaintiff was slightly different from that used in the trademark registered by the defendants, they could rely only on s. 20 of the Trade-marks Act to assert their right to the "ABDRUSHIN" trademark - The defendants had to prove under s. 20 that "ABDRUSHIN" caused confusion with their trademark "ABD-RU-SHIN" - The court concluded that the plaintiff's book was not likely to be confused with the defendants' publications - In the first place, the appearance of the books published by the plaintiff was very different from that of the defendants' books - Also, and perhaps even more importantly, the plaintiff had only some one hundred copies of his book printed and he sold it only to people he knew or to members who requested it - He stated that he did not make any profit from the sale of his book and charged only enough to cover his costs - Because it was a limited edition, he did not advertise it or sell it in bookstores - He did not deposit it at the National Library and the title was therefore not catalogued - Not only was its distribution very limited (in fact it had been sold out for several years) but the people who bought it knew exactly what they were buying and were looking precisely for a version that was different from the one sold by the defendants - See paragraphs 190 to 204.

Trademarks, Names and Designs - Topic 1806

Trademarks - Infringement - Test - Confusion with other marks (incl. reverse confusion) - [See Trademarks, Names and Designs - Topic 1804 ].

Trademarks, Names and Designs - Topic 3068

Trademarks - Unfair competition - Passing off - The Grail Message was written by Oskar Ernst Bernhardt, from 1923 to 1937, under the pen name Abd-ru-shin - The plaintiff read the Grail Message for the first time in 1976 and became a member of the Foundation of the Grail Movement - He subsequently withdrew from the Foundation - In 2000, the plaintiff learned of the existence of what he believed was Bernhardt's original work, in its 1931 edition, as translated into French by Roudaut - The plaintiff also learned that Siffrid had translated part of Bernhardt's work into French during the author's lifetime - Based on the translations by Roudaut and Siffrid of the original German work, as well as the French translation by Kaufmann distributed by the Foundation, the plaintiff undertook research to try to reconstitute what he believed to be Bernhart's original work - The plaintiff concluded that the version published around 1949/1950 in German and considered by the Foundation to be the definitive version of the Grail Message was different from the original edition and from the writings published during Bernhardt's lifetime in several respects - In May 2001, the plaintiff published one hundred copies in three volumes of what he considered to be the French version of the Grail Message as published during the author's lifetime - The defendants demanded that the plaintiff immediately cease acts that violated the defendants' trademarks registered in 1999, including the registered trademark "Abd-ru-shin" - The plaintiff commenced an action under s. 57 of the Trade-marks Act to have the defendants' registrations struck from the Trademarks Register - The defendants counterclaimed, asserting an action in passing off - The Federal Court dismissed the counterclaim on this issue - The evidence did not show that the plaintiff wilfully or negligently tried to pass off his book as a defendants' publication - Quite the contrary, he disassociated himself from the defendants and cried for all to hear that the version of the work of Bernhardt distributed by the defendants was not consistent with the "original" Message - Moreover, he did not advertise his book, he had a very limited number of copies printed and he sold them only to friends and members who approached him - See paragraphs 205 to 212.

Trademarks, Names and Designs - Topic 4002

Trademarks - Prohibited marks - Marks adopted or used by public authority (official marks) -The Grail Message was written by Bernhardt, from 1923 to 1937, under the pen name Abd-ru-shin - The plaintiff read the Grail Message for the first time in 1976 and became a member of the Foundation of the Grail Movement - He subsequently withdrew from the Foundation - In 2000, the plaintiff learned of the existence of what he believed was Bernhardt's original work, in its 1931 edition, as translated into French by Roudaut - The plaintiff also learned that Siffrid had translated part of Bernhardt's work into French during the author's lifetime - Based on the translations by Roudaut and Siffrid of the original German work, as well as the French translation by Kaufmann distributed by the Foundation, the plaintiff undertook research to try to reconstitute Bernhart's original work - The plaintiff concluded that the version published around 1949/1950 in German and considered by the Foundation to be the definitive version of the Grail Message was different from the original edition and from the writings published during Bernhardt's lifetime - In May 2001, the plaintiff published one hundred copies in three volumes of the French version of the Grail Message - The defendants demanded that the plaintiff immediately cease acts that violated the defendants' trademarks registered in 1999, including the registered trademark and logo "A & SNAKE DESIGN" - The plaintiff commenced an action under s. 57 of the Trade-marks Act to have the defendants' registrations struck from the Trademarks Register - The plaintiff claimed that that this logo could not belong to a single organization because it was a symbol shared by the cross bearers or followers of the Grail Message - Use of this logo was scandalous, shocking and misleading to followers - The Federal Court rejected the assertion - While the logo might hold significant spiritual value for the followers of the Grail Message, the evidence did not satisfy the court that it enjoyed universal and historical recognition as the official emblem of the Grail Movement - Nor was the court satisfied that the use of this logo would be obscene, scandalous or immoral within the meaning of paragraph 9(1)(j) of the Trade-marks Act, even if it might outrage those who, like the plaintiff, believed that the defendants were not spreading Bernhardt's original message - The "A & SNAKE DESIGN" trademark was registrable - See paragraphs 161 to 166.

Cases Noticed:

R. v. Marquard (D.), [1993] 4 S.C.R. 223; 159 N.R. 81; 66 O.A.C. 161, refd to. [para. 59].

Mattel Inc. v. 3894207 Canada Inc. et al., [2006] 1 S.C.R. 772; 348 N.R. 340, refd to. [para. 148].

Santana Jeans Ltd. v. Manager Clothing Inc. (1993), 72 F.T.R. 241; 52 C.P.R.(3d) 472 (T.D.), refd to. [para. 153].

Unitel Communications Inc. v. Bell Canada (1995), 92 F.T.R. 161; 61 C.P.R.(3d) 12 (T.D.), refd to. [para. 153].

WCC Containers Sales Ltd. v. Haul-All Equipment Ltd. (2003), 238 F.T.R. 45; 2003 FC 962, refd to. [para. 153].

Emall.ca Inc. et al. v. Cheap Tickets and Travel Inc. (2008), 375 N.R. 350; 2008 FCA 50, refd to. [para. 154].

Registrar of Trademarks v. Coles Book Stores Ltd., [1974] S.C.R. 438, refd to. [para. 158].

Galanos v. Registrar of Trademarks (1982), 69 C.P.R.(2d) 144 (F.C.T.D.), refd to. [para. 158].

Gerhard Horn Investments Ltd. v. Registrar of Trademarks, [1983] 2 F.C. 878 (T.D.), refd to. [para. 159].

Canadian Jewish Congress v. Chosen People Ministries Inc. et al., [2003] 1 F.C. 29; 219 F.T.R. 122 (T.D.), affd. (2003), 311 N.R. 162; 2003 FCA 272, dist. [para. 163].

Morris (Philip) Inc. v. Imperial Tobacco Ltd. (1987), 7 C.P.R.(3d) 254 (F.C.T.D.), refd to. [para. 169].

Tommy Hilfiger Licensing Inc. et al. v. Quality Goods I.M.D. Inc. et al. (2005), 267 F.T.R. 259; 2005 FC 10, refd to. [para. 169].

Community Credit Union Ltd. v. Registrar of Trademarks et al. (2006), 300 F.T.R. 35; 2006 FC 1119, refd to. [para. 170].

Cross-Canada Auto Body Supply (Windsor) Ltd. et al. v. Hyundai Auto Canada (2007), 313 F.T.R. 278; 2007 FC 580, affd. [2008] N.R. Uned. 28; 2008 FCA 98, refd to. [para. 170].

GWG Ltd. v. Registrar of Trademarks (1981), 55 C.P.R.(2d) 1 (F.C.T.D.), refd to. [para. 174].

Labatt (John) Ltd. v. Carling Breweries Ltd. (1974), 18 C.P.R.(2d) 15 (F.C.T.D.), refd to. [para. 174].

Drackett Co. of Canada Ltd. v. American Home Products Corp., [1968] 2 Ex. C.R. 89 (Ex. Ct.), refd to. [para. 174].

Association of Professional Engineers v. Registrar of Trademarks, [1959] Ex. C.R. 354, refd to. [para. 178].

Mathieson v. Pitman (Sir Isaac) & Sons Ltd. (1930), 47 R.P.C. 541 (H.C. Ch. D.), refd to. [para. 178].

Canadian Jewish Review Ltd. v. Registrar of Trademarks (1961), 37 C.P.R. 89 (Ex. Ct.), refd to. [para. 178].

Cooper, Re (1958), 254 F.2d 611 (C.C.P.A.), refd to. [para. 181].

Herbko International Inc. v. Kappa Books Inc. (2002), 308 F.3d 1156 (U.S. Fed. Cir. Ct. App.), refd to. [para. 182].

Compagnie Générale des Établissements Michelin-Michelin & Cie v. National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW-Canada), [1997] 2 F.C. 306; 124 F.T.R. 192 (T.D.), refd to. [para. 187].

Comedy III Productions Inc. v. New Line Cinema, 200 F.3d 593 (9th Cir., D.C. Cir.), refd to. [para. 188].

PRV Co. v. Decosol (Canada) Ltd. (1972), 10 C.P.R.(2d) 203 (F.C.T.D.), refd to. [para. 193].

Adidas (Canada) Ltd. v. Collins Inc. (1978), 38 C.P.R.(2d) 145 (F.C.T.D.), refd to. [para. 193].

688863 Ontario Ltd. v. Landover Enterprises Inc. (1991), 45 F.T.R. 75; 35 C.P.R.(3d) 399 (T.D.), refd to. [para. 196].

Baylor University v. Hudson's Bay Co. (2000), 257 N.R. 231; 8 C.P.R.(4th) 64 (F.C.A.), refd to. [para. 200].

Vibe Ventures LLC v. 3681441 Canada Inc. (2005), 284 F.T.R. 96; 2005 FC 1650, refd to. [para. 200].

Veuve Clicquot Ponsardin v. Boutiques Cliquot ltée et al. (2006), 349 N.R. 111; 2006 SCC 23, refd to. [para. 200].

Remo Imports Ltd. v. Jaguar Cars Ltd. et al. (2007), 367 N.R. 177; 2007 FCA 258, refd to. [para. 200].

Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp., [1969] S.C.R. 192, refd to. [para. 202].

Kirkbi AG et al. v. Ritvik Holdings Inc. et al., [2005] 3 S.C.R. 302; 341 N.R. 234, refd to. [para. 206].

Théberge v. Galerie d'Art du Petit Champlain inc. et al., [2002] 2 S.C.R. 336; 285 N.R. 267, refd to. [para. 215].

Kraft Canada Inc. v. Euro Exellence Inc., [2007] 3 S.C.R. 20; 365 N.R. 332, refd to. [para. 215].

Grignon v. Roussel et al. (1991), 44 F.T.R. 121 (T.D.), refd to. [para. 217].

Wall v. Horn Abbott Ltd. - see Wall v. 679927 Ontario Ltd. et al.

Wall v. 679927 Ontario Ltd. et al. (2007), 256 N.S.R.(2d) 34; 818 A.P.R. 34; 2007 NSSC 197, refd to. [para. 217].

CCH Canadian Ltd. et al. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339; 317 N.R. 107, refd to. [para. 218].

CCH Canadian Ltd. et al. v. Law Society of Upper Canada, [2002] 4 F.C. 213; 289 N.R. 1 (F.C.A.), refd to. [para. 243].

U&R Tax Services Ltd. v. H&R Block Canada Inc. (1995), 97 F.T.R. 259; 62 C.P.R.(3d) 257 (T.D.), refd to. [para. 249].

Gondos v. Hardy (1982), 64 C.P.R.(2d) 145 (Ont. H.C.), refd to. [para. 257].

Francis, Day & Hunter Ltd. v. Bron, [1963] 2 All E.R. 16 (C.A.), refd to. [para. 257].

Apple Computer Inc. et al. v. Mackintosh Computers Ltd. (No. 1) (1986), 3 F.T.R. 118; 10 C.P.R.(3d) 1 (T.D.), refd to. [para. 259].

McCutcheon v. Haufschild et al. (1998), 146 F.T.R. 28 (T.D. Protho.), refd to. [para. 259].

Apotex Inc. v. Canada (Minister of National Health and Welfare) (2000), 265 N.R. 90; 9 C.P.R.(4th) 289 (F.C.A.), refd to. [para. 277].

Microsoft Corp. v. Cerelli, 2007 FC 1364, refd to. [para. 277].

Statutes Noticed:

Copyright Act, R.S.C. 1985, c. C-42, sect. 27, sect. 29, sect. 34.1 [para. 214].

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 7(b), sect. 7(c) [para. 205]; sect. 12(1)(a), sect. 12(1)(b) [para. 150]; sect. 19, sect. 20 [para. 191].

Authors and Works Noticed:

Fox, Harold George, The Canadian Law of Trade Marks and Unfair Competition (4th Ed. 2002) (2007 Looseleaf Update), pp. 4-51 [para. 184]; 5-23 to 5-30 [para. 176]; 7-3 [para. 196].

Harper, James, Single Literary Titles and Federal Trademark Protection: The Anomaly between the USPTO and Case Law Precedents (2004), 45 Idea 77, p. 86 [para. 181].

Hughes, Roger T., Trade Marks (1984), p. 556 [para. 153].

Hughes, Roger T., Trade Marks (2nd Ed. 2005), pp. 649 [para. 170]; 989 [para. 207].

McCarthy, J. Thomas, Trademarks and Unfair Competition (4th Ed. 1996) (2004 Looseleaf Update), vol. 2, c. 10 [para. 182].

Sopinka, John, Lederman, Sidney N., and Bryant, Alan W., The Law of Evidence in Canada (1992), pp. 536, 537 [para. 59].

Counsel:

Claudette Dagenais, for the applicant;

Pascal Lauzon, B.Sc. (phys), LL.L., for the respondents;

Solicitors of Record:

Dagenais Jacob, Montreal, Quebec, for the applicant;

Pascal Lauzon, B.Sc. (phys), LL.L., Montreal, Quebec, for the respondents.

These applications were heard on April 14 to 24, 2008, at Montreal, Quebec, by de Montigny, J., of the Federal Court, who delivered the following judgment at Ottawa, Ontario, on January 6, 2009.