Philip Morris Products S.A. et al. v. Marlboro Canada Ltd. et al., (2010) 374 F.T.R. 213 (FC)

• Judge: de Montigny, J.
• Court: Federal Court (Canada)
• Case Date: November 08, 2010
• Jurisdiction: Canada (Federal)
• Citations: (2010), 374 F.T.R. 213 (FC);2010 FC 1099

Philip Morris v. Marlboro Can. (2010), 374 F.T.R. 213 (FC)

MLB headnote and full text

Temp. Cite: [2010] F.T.R. TBEd. NO.012

Philip Morris Products S.A. and Rothmans, Benson & Hedges Inc. (plaintiffs/defendants by counterclaim) v. Marlboro Canada Limited and Imperial Tobacco Canada Limited (defendants/plaintiffs by counterclaim)

(T-1784-06; 2010 FC 1099)

Indexed As: Philip Morris Products S.A. et al. v. Marlboro Canada Ltd. et al.

Federal Court

de Montigny, J.

November 8, 2010.

Summary:

Philip Morris sold Marlboro (American blend) cigarettes worldwide using its ROOFTOP Design Trademarks and its copyrighted Marlboro Red Roof Label Design. Philip Morris had sold cigarettes in Canada (Canadian-Virginia blend) in packages using the ROOFTOP Design Trademarks and the names "Matador" and "Maverick". However, Philip Morris, and its licensee, Rothmans, could not use the word mark MARLBORO in Canada, because it was registered in the name of and used by a competitor Imperial Tobacco Canada Ltd. and later its subsidiary Marlboro Canada with their own Marlboro (Canadian-Virginia blend) brand of cigarettes. In 2006, Philip Morris and Rothmans (the plaintiffs) launched a cigarette product in Canada that was similar to the Marlboro brand American blend cigarettes and packaging used elsewhere in the world, but put no brand name on the individual packages. The plaintiffs referred to their Canadian product as "Rooftop". The plaintiffs commenced an action against Imperial and Marlboro Canada (the defendants), seeking a declaration that the sale of their no-name Rooftop cigarettes in Canada did not contravene any rights of the defendants in their MARLBORO word mark registration. The defendants counterclaimed, alleging that the "no-name" cigarettes infringed their MARLBORO trademark. The defendants also challenged the validity of the ROOFTOP Design Trademark registration. The plaintiffs alleged that the defendants' Marlboro cigarette packaging infringed their copyrighted Marlboro Red Roof Label Design.

The Federal Court granted the plaintiffs' request for a declaration of non-infringement and dismissed the defendants' counterclaim of trademark infringement. The court rejected the defendants' challenge to the validity of the plaintiffs' ROOFTOP Design Trademarks registration. The court held further that the defendants did not infringe the Philip Morris copyright in its Marlboro Red Roof Label.

Copyright - Topic 4401

Infringement of copyright - General principles - General - The Federal Court stated that "Copyright in relation to a work gives its owner a monopoly on producing or reproducing the work or any substantial part thereof (Copyright Act, s. 3). In other words, copyright protection confers the right to prevent copying of the work. The act of copying is an essential ingredient of copyright infringement. If an independent author arrives at the same results through independent means rather than copying, therefore, there is no copyright infringement ... Moreover, copyright protects a particular fixed expression of an idea; it does not protect the idea per se. An owner of copyright therefore has no monopoly on the use of the idea that his work expresses" - See paragraph 311.

Copyright - Topic 4401

Infringement of copyright - General principles - General - The Federal Court stated that "In order for a Court to find infringement, the plaintiffs must establish two essential elements. First, there must be a sufficient similarity between the works in question such that the allegedly infringing work could be considered a copy or reproduction of the protected work. In other words, there must be proof of substantial similarity between the original work and the allegedly infringing work. Whether the defendants have infringed copyright by taking a substantial part of a copyrighted work is essentially a question of fact. Second, the plaintiffs must prove that the defendants had access to the work protected by copyright; that is to say, that the copyrighted work was the source from which the allegedly infringing work was derived. This is sometimes referred to as a 'causal connection'" - See paragraph 315.

Copyright - Topic 4401

Infringement of copyright - General principles - General - The Federal Court stated that "Mere similarity between two works is insufficient to establish copying. What is required is a substantial similarity between the original work and the allegedly infringing work that is observable when the works are viewed as a whole. Unless a substantial part of a work is copied, there can be no cause of action for copyright infringement. The question to be asked is whether the reproduction contains within it, in qualitative rather than quantitative terms, a substantial part of the skill and judgment exercised by the creator of the original, protected mark: Robertson v. Thompson Corp., 2006 SCC 43, at para. 81. 'Substantial similarity' is made out where the impugned work '... comes so near to the original as to give every person seeing it the idea created by the original; such similarity creates prima facie evidence of copying'" - The court thereafter, referred to a discussion of the factors that could be taken into account to determine whether the copied part of a work was "substantial" - See paragraphs 316 and 317.

Copyright - Topic 4401

Infringement of copyright - General principles - General - The Federal Court stated that "A court may infer that copying took place where substantial similarity exists and where it is established that the author of the allegedly infringing copy had access to the plaintiffs' work. However, an inference of copying is displaced by evidence of independent creation. It is an absolute defence to a copyright infringement allegation if it is proven that the second work was created independently of the first. An inference of copying is also rebutted where the similarity between the works is the result of the use of conventional ideas or of common source material ..." - See paragraph 320.

Copyright - Topic 4405

Infringement of copyright - General principles - Substantial similarity or substantial copying - Philip Morris sold cigarettes (American blend) worldwide, except Canada, using its registered ROOFTOP Design Trademarks and its copyrighted Marlboro Red Roof Label Design ("rooftop cigarettes") - Philip Morris, and its licensee, Rothmans (plaintiffs), did not use the word mark MARLBORO in Canada, because it was registered to Imperial Tobacco and later its subsidiary Marlboro Canada for use in their own brand of Marlboro cigarettes (Canadian-Virginia blend) - However, in 2006, the plaintiffs began selling "rooftop" cigarettes in Canada, but put no brand name on the individual packages - Litigation ensued - The plaintiffs claimed that the defendants' 1996, 2001 and 2007 Canadian Marlboro packages infringed Philip Morris' copyright in the MARLBORO Red Roof label - The Federal Court held that the defendants' Marlboro packages were not substantially similar to the plaintiffs' packaging and did not infringe the plaintiffs' copyrights - In any event, the plaintiffs were time-barred from raising a copyright infringement, at least with respect to the 1996 package (Copyright Act, s. 41) - The court opined further, that even if it had found that there was a substantial similarity between the 2001 and 2007 packages, there was no evidence to establish a causal connection such that the Philip Morris package could be considered the source of the defendants' 2001 and 2007 package redesigns - See paragraphs 309 to 372.

Copyright - Topic 4556

Infringement of copyright - Acts not constituting an infringement - Copying or using signs, designs, logos, etc. - [See Copyright - Topic 4405 ].

Copyright - Topic 6007

Practice - General - Limitation of actions - [See Copyright - Topic 4405 ].

Estoppel - Topic 381.1

Estoppel by record (res judicata) - Res judicata as a bar to subsequent proceedings - In intellectual property proceedings - Philip Morris sold cigarettes (American blend) worldwide, except Canada, using its ROOFTOP Design Trademarks and its copyrighted Marlboro Red Roof Label Design ("rooftop cigarettes") - Philip Morris, and its licensee, Rothmans (plaintiffs), did not use the word mark MARLBORO in Canada, because it was registered to Imperial Tobacco and later its subsidiary Marlboro Canada - However, in 2006, the plaintiffs began selling "rooftop" cigarettes in Canada, but put no brand name on the individual packages - Litigation ensued - The defendants alleged that the "no-name" cigarettes infringed their MARLBORO trademark - The plaintiffs claimed that their trademark registrations for the ROOFTOP Design were a full and complete answer to the infringement allegations - The defendants argued that because of prior litigation between the parties the doctrine of issue estoppel applied to prevent the plaintiffs from raising their registrations as a defence to any claim of infringements based on ss. 19, 20 or 22 of the Trade-marks Act - The Federal Court rejected the issue estoppel argument - The first condition for application of issue estoppel had not been met (i.e., the same question had not already been decided) - The earlier litigation focussed entirely on the validity of the MARLBORO word mark registered by the defendants and was not at all related to the plaintiffs' right to use their ROOFTOP Design Trademarks in Canada - See paragraphs 186 to 193.

Estoppel - Topic 386

Estoppel by record (res judicata) - Res judicata as a bar to subsequent proceedings - Issues decided in prior proceedings - [See Estoppel - Topic 381.1 ].

Estoppel - Topic 1161

Estoppel in pais (by conduct) - Representation - By conduct - Acquiescence - Philip Morris sold cigarettes (American blend) worldwide using its ROOFTOP Design Trademarks and its copyrighted Marlboro Red Roof Label Design - Philip Morris had sold cigarettes in Canada (Canadian blend) in packages using the ROOFTOP Design Trademarks and the name "Matador" - Philip Morris, and its licensee, Rothmans (plaintiffs), did not use the word mark MARLBORO in Canada, because it was registered to Imperial Tobacco and later its subsidiary Marlboro Canada for their own Marlboro (Canadian blend) brand of cigarettes - In 2006, the plaintiffs launched a cigarette product in Canada that was similar to the Marlboro brand American blend "rooftop" cigarettes and packaging used elsewhere in the world, but put no brand name on the individual packages - Litigation ensued - The defendants alleged that the "no-name" cigarettes infringed their MARLBORO trademark - The plaintiffs raised estoppel (i.e., since the defendants did not oppose the seven trademark registrations respecting the ROOFTOP Design, dating back as early as 1958, they should now be prevented from alleging infringement) - The Federal Court rejected the estoppel argument - Delay was only one factor to be considered - Here, the plaintiffs failed to show that when the defendants decided not to oppose Philip Morris's registrations, they were aware of or agreed to the use to which the marks would be put (i.e., for no-name cigarettes) - It was not foreseeable that the trademarks would be used other than with the "Matador" name - There was no precedent for no-name cigarette packages anywhere in the world - See paragraphs 170 to 182.

Trademarks, Names and Designs - Topic 1

Trademarks - General - Trademarks legislation - Purpose of - The Federal Court stated that "There is no dispute between the parties as to the nature and purpose of a trademark or of the Trade-marks Act. The purpose of a trademark is to differentiate the wares of a manufacturer from those of its competitors. As such, they serve an important and useful public function by indicating to prospective purchasers that the goods or services at issue are of the same quality as that of other goods and services which they have come to associate with that particular trademark, as a result of coming from the same source. Fundamentally, therefore, trademarks serve to distinguish one's wares in the marketplace, and to protect consumers by communicating what they are purchasing and from whom" - See paragraph 167.

Trademarks, Names and Designs - Topic 265

Trademarks - What trademarks registrable - Distinctive marks - General - Philip Morris sold cigarettes (American blend) worldwide using its registered ROOFTOP Design Trademarks and its copyrighted Marlboro Red Roof Label Design - Philip Morris had sold cigarettes in Canada (Canadian blend) in packages using the ROOFTOP Design Trademarks and the word marks MATADOR or MAVERICK - In 2006, the plaintiffs launched a cigarette product in Canada that was similar to the Marlboro brand American blend "rooftop" cigarettes and packaging used elsewhere in the world, but put no brand name on the individual packages - Litigation ensued - The defendants (Imperial Tobacco and Marlboro Canada) challenged the validity of the ROOFTOP Design Trademark registrations, claiming that their use in association with a no name brand was not distinctive because of their past use with word marks MATADOR or MAVERICK - The Federal Court rejected this argument - MAVERICK had not been used in association with the ROOFTOP Design Trademarks since 1978 - In any event, such use with other trademarks did not impact their distinctiveness - There was no prohibition on a design mark and a word mark appearing concurrently on the same wares - Finally, the source of the products had always been the same - See paragraphs 211 to 221.

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - Conditions precedent - Lack of confusion with other marks - Philip Morris sold cigarettes (American blend) worldwide using its ROOFTOP Design Trademarks and its copyrighted Marlboro Red Roof Label Design - Philip Morris had sold cigarettes in Canada (Canadian blend) in packages using the ROOFTOP Design Trademarks and the name "Matador" or "Maverick" - Philip Morris, and its licensee, Rothmans (plaintiffs), did not use the word mark MARLBORO in Canada, because it was registered to Imperial Tobacco and later its subsidiary Marlboro Canada for their own Marlboro (Canadian blend) brand of cigarettes - In 2006, the plaintiffs launched a cigarette product in Canada that was similar to the Marlboro brand American blend "rooftop" cigarettes and packaging used elsewhere in the world, but put no brand name on the individual packages - Litigation ensued - The defendants challenged the validity of the ROOFTOP Design Trademark registrations, claiming that their use in association with a no name brand caused consumers to associate the ROOFTOP Designs on the no-name packages with the Marlboro name found in foreign markets (i.e., caused confusion) - The Federal Court rejected this argument, holding that the plaintiffs' design trademarks were not invalid on the ground of confusion - The court also rejected the defendants' argument that certain of the plaintiffs' registrations were not eligible for registration on the basis of confusion - See paragraphs 211 to 221, 292 and 293.

Trademarks, Names and Designs - Topic 709

Trademarks - Registration - General - Effect of registration - Philip Morris sold cigarettes (American blend) worldwide, except Canada, using its ROOFTOP Design Trademarks and its copyrighted Marlboro Red Roof Label Design ("rooftop cigarettes") - Philip Morris, and its licensee, Rothmans (plaintiffs), did not use the word mark MARLBORO in Canada, because it was registered to Imperial Tobacco and later its subsidiary Marlboro Canada - However, in 2006, the plaintiffs began selling "rooftop" cigarettes in Canada, but put no brand name on the individual packages - Litigation ensued - The defendants alleged that the "no-name" cigarettes infringed their MARLBORO trademark - The plaintiffs claimed that their trademark registrations for the ROOFTOP Design were a full and complete answer to the infringement allegations (Trade-marks Act, s. 19) - The defendants argued that the plaintiffs could not rely on their registrations as a defence because of the principle that a right must be exercised in good faith (i.e., the doctrine known in Québec as abus de droit) - The Federal Court stated that it was far from clear whether that doctrine could find application in the context of a statutory right as opposed to a contractual right - Here, bad faith was not established, and in any event, it would not be relevant to the legality of the use the plaintiffs had made of their trademarks - See paragraphs 194 to 197.

Trademarks, Names and Designs - Topic 709

Trademarks - Registration - General - Effect of registration - Philip Morris sold cigarettes (American blend) worldwide, except Canada, using its ROOFTOP Design Trademarks and its copyrighted Marlboro Red Roof Label Design (rooftop cigarettes) - Philip Morris, and its licensee, Rothmans (plaintiffs), did not use the word mark MARLBORO in Canada, because it was registered to Imperial Tobacco and later its subsidiary Marlboro Canada - However, in 2006, the plaintiffs began selling rooftop cigarettes in Canada, but put no brand name on the individual packages - Litigation ensued - The defendants alleged that the "no-name" cigarettes infringed their MARLBORO trademark - The plaintiffs claimed that their trademark registrations for the ROOFTOP Design were a full and complete answer to the infringement allegations (Trade-marks Act, s. 19) - The defendants argued that the no-name brand package was substantially different than the plaintiffs' design trademarks; therefore, the plaintiffs could not rely on the Rooftop registrations - The Federal Court rejected this argument - The variations were minor - The court stated that variations between the mark as registered and the mark as placed on a package were permissible, as long as the mark as placed on a package was not substantially different from the mark as registered, and the deviations would not deceive or injure the public - Such was the case here - See paragraphs 198 to 203.

Trademarks, Names and Designs - Topic 709

Trademarks - Registration - General - Effect of registration - Philip Morris sold cigarettes (American blend) worldwide, except Canada, using its ROOFTOP Design Trademarks and its copyrighted Marlboro Red Roof Label Design (rooftop cigarettes) - Philip Morris, and its licensee, Rothmans (plaintiffs), did not use the word mark MARLBORO in Canada, because it was registered to Imperial Tobacco and later its subsidiary Marlboro Canada - However, in 2006, the plaintiffs began selling rooftop cigarettes in Canada, but put no brand name on the individual packages - Litigation ensued - The defendants alleged that the "no-name" cigarettes infringed their trademark registration for MARLBORO - The plaintiffs claimed that their trademark registrations for the ROOFTOP Design were a full and complete answer to the infringement allegations - Relying on s. 19 of the Trade-marks Act, and as endorsed in Molson Canada v. Oland Breweries (Ont. C.A. 2002), the plaintiffs asserted that the holder of a validly registered trademark had the exclusive right to use that mark throughout the country - The defendants claimed that the Oland decision was bad law and ought not to be followed - The Federal Court held that on the basis of binding precedent and for the additional reason that the Oland interpretation appeared to be good in law and consistent with principles of statutory interpretation, it was unable to accept the defendants' argument - Therefore, the court concluded that the plaintiffs' validly registered trademarks operated as a complete defence to the allegations of infringement - See paragraphs 183, 184 and 204 to 210.

Trademarks, Names and Designs - Topic 709

Trademarks - Registration - General - Effect of registration - Philip Morris sold cigarettes (American blend) worldwide using its ROOFTOP Design Trademarks and its copyrighted Marlboro Red Roof Label Design (rooftop cigarettes) - Philip Morris, and its licensee, Rothmans (plaintiffs), did not use the word mark MARLBORO in Canada, because it was registered to Imperial Tobacco and later its subsidiary Marlboro Canada for their own Marlboro (Canadian blend) brand of cigarettes - In 2006, the plaintiffs began selling "rooftop" cigarettes in Canada but put no brand name on the individual packages - Litigation ensued - The defendants claimed that the no-name cigarettes infringed their word mark MARLBORO, relying on ss. 19 (rights conferred by registration) and 22 (depreciation of goodwill) of the Trade-marks Act - The defendants claimed that consumers would inevitably make the connection between the no-name product of the plaintiffs and the international Marlboro brand - The Federal Court held that the plaintiffs had not "used" the defendants' word mark and therefore did not infringe either s. 19 or 22, as "use" was a precondition for the application of both provisions - The plaintiffs clearly had not used the MARLBORO word trademark on their products - The evidence did not entirely support the defendants' claim that a large number of Canadians made the alleged association - In any event, it could not be said that a mark was "used" only as a result of some abstract intangible mental association in the mind of the consumer - See paragraphs 222 to 239.

Trademarks, Names and Designs - Topic 889.1

Trademarks - Registration - Expungement of mark - Grounds - Loss of distinctiveness - Philip Morris sold cigarettes (American blend) worldwide using its registered ROOFTOP Design Trademarks and its copyrighted Marlboro Red Roof Label Design - Philip Morris, and its licensee, Rothmans (plaintiffs), did not use the word mark MARLBORO in Canada, because it was registered to Imperial Tobacco and later its subsidiary Marlboro Canada for their own Marlboro (Canadian blend) brand of cigarettes - In 2006, the plaintiffs launched a cigarette product in Canada that was similar to the Marlboro brand American blend "rooftop" cigarettes and packaging used elsewhere in the world, but put no brand name on the individual packages - Litigation ensued - The plaintiffs claimed that the defendants' MARLBORO registration should be expunged since it was not distinctive and therefore contrary to s. 18(1)(b) of the Trade-marks Act - The plaintiffs argued, inter alia, that the defendants had deceptively taken advantage of the lack of distinctiveness of their MARLBORO trademark in Canada by deliberately allowing Canadian smokers to associate their brand with the international Philip Morris Marlboro products, rather than creating their own goodwill and brand identity - The Federal Court rejected the plaintiff's argument that the defendants' MARLBORO trademark registration lacked distinctiveness and that its use was deceptive - See paragraphs 294 to 308.

Trademarks, Names and Designs - Topic 889.5

Trademarks - Registration - Expungement of mark - Grounds - Confusion - [See Trademarks, Names and Designs - Topic 706 ].

Trademarks, Names and Designs - Topic 1804

Trademarks - Infringement - Acts not constituting an infringement (incl. defences) - [See all Trademarks, Names and Designs - Topic 709 and first Trademarks, Names and Designs - Topic 1806 ].

Trademarks, Names and Designs - Topic 1806

Trademarks - Infringement - Test - Confusion with other marks (incl. reverse confusion) - Philip Morris sold cigarettes (American blend) worldwide using its ROOFTOP Design Trademarks and its copyrighted Marlboro Red Roof Label Design (rooftop cigarettes) - Philip Morris, and its licensee, Rothmans (plaintiffs), did not use the word mark MARLBORO in Canada, because it was registered to Imperial Tobacco and later its subsidiary Marlboro Canada for their own Marlboro (Canadian-Virginia blend) brand of cigarettes - In 2006, the plaintiffs started selling rooftop cigarettes in Canada, but put no brand name on the individual packages - Litigation ensued - The defendants claimed that the plaintiffs' use of the ROOFTOP Design marks on the no-name cigarettes infringed its MARLBORO word mark registration on the ground of confusion (Trade-marks Act, s. 20), even though the plaintiffs did not use the MARLBORO trademark or any other confusing word trademark - The defendants claimed that the absence of a word mark on the package and the overall presentation and get up of the product would evoke, in the minds of some Canadian smokers, an association with the international Marlboro brand, and thereby create confusion with the defendants' trademark MARLBORO - The Federal Court held that the association that Canadian consumers might make as a result of the use of a mark in a foreign market should not be relevant to determining whether the use of that same mark was likely to create confusion in Canada - After assessing the factors set out in s. 6(5) of the Trade-marks Act, as well as the documentary and testimonial evidence presented by the parties, the court concluded that there had been no confusion caused by the plaintiffs' use of its ROOFTOP Design Trademarks nor was any confusion likely to occur - See paragraphs 240 to 293.

Trademarks, Names and Designs - Topic 1806

Trademarks - Infringement - Test - Confusion with other marks (incl. reverse confusion) - The Federal Court (de Montigny, J.) stated that "The case at bar is somewhat peculiar if only because of the defendants' claim: that the plaintiffs are guilty of creating a reverse confusion with their no-name product. Direct confusion occurs when customers mistakenly think that the junior user's goods come from the same source as, or are connected with, the senior user's goods. Conversely, with reverse confusion, customers purchase the senior user's goods under the mistaken impression that they are getting the junior user's goods. This concept, developed in the United States, has not found much favour in Canada. Like my colleague Justice O'Reilly in IA&W Food Services of Canada Inc. v. McDonald's Restaurants of Canada Ltd., 2005 FC 406, I am not sure that this concept adds much to the analysis of confusion required by section 20 of the [Trade-marks] Act, and I agree with him that the Act is broad enough to accommodate both direct and reverse confusion. At the end of the day, likelihood of confusion remains the key factor of inquiry" - See paragraph 248.

Trademarks, Names and Designs - Topic 1807

Trademarks - Infringement - Use - General - [See fourth Trademarks, Names and Designs - Topic 709 ].

Trademarks, Names and Designs - Topic 1808

Trademarks - Infringement - Use - Depreciation of goodwill - [See fourth Trademarks, Names and Designs - Topic 709 ].

Trademarks, Names and Designs - Topic 3010

Trademarks - Infringement actions - Acquiescence or delay - [See Estoppel - Topic 381.1 and Estoppel - Topic 1161 ].

Trademarks, Names and Designs - Topic 8181

Designs - Infringement action - General - [See first Trademarks, Names and Designs - Topic 1806 ].

Cases Noticed:

Morris (Phillip) Inc. v. Imperial Tobacco Ltd. (1985), 7 C.P.R.(3d) 254 (F.C.T.D.), refd to. [para. 35].

Mattel Inc. v. 3894207 Canada Inc. et al. (2006), 348 N.R. 340; 2006 SCC 22, refd to. [para. 168].

Veuve Clicquot Ponsardin v. Boutiques Cliquot ltée et al., [2006] 1 S.C.R. 824; 349 N.R. 111; 2006 SCC 23, refd to. [para. 168].

Habib Bank Ltd. v. Habib Bank AG Zurich, [1981] 2 All E.R. 650 (C.A.), refd to. [para. 171].

Carling O'Keefe Breweries of Canada Ltd. v. Anheuser-Busch Inc. (1986), 68 N.R. 226; 10 C.P.R.(3d) 433 (F.C.A.), refd to. [para. 171].

Remo Imports Ltd. v. Jaguar Cars Ltd. et al., [2005] F.T.R. Uned. A28; 2005 FC 870, refd to. [para. 172].

Molson Canada v. Oland Breweries Ltd. (2002), 159 O.A.C. 396 (C.A.), refdto. [para. 184].

Chemicals Inc. and Overseas Commodities Ltd. v. Shanahan's Ltd. (1951), 15 C.P.R. 1 (B.C.C.A.), refd to. [para. 184].

Building Products Ltd. v. B.P. Canada Ltd. (1961), 36 C.P.R. 121 (Ex. Ct.), refd to. [para. 184].

Mr. Submarine Ltd. v. Amandista Investments Ltd., [1988] 3 F.C. 91; 81 N.R. 257; 19 C.P.R.(3d) 3 (F.C.A.), refd to. [para. 184].

Danyluk v. Ainsworth Technologies Inc. et al. (2001), 272 N.R. 1; 149 O.A.C. 1; 2001 SCC 44, refd to. [para. 186].

Angle v. Minister of National Revenue, [1975] 2 S.C.R. 248; 2 N.R. 397, refd to. [para. 188].

Morris (Philip) Inc. v. Imperial Tobacco Ltd. (1987), 81 N.R. 28; 17 C.P.R.(3d) 289 (F.C.A.), refd to. [para. 191].

Kraft Canada Inc. v. Euro Excellence Inc. (2007), 365 N.R. 332; 2007 SCC 37, refd to. [para. 194].

Jonathan, Boutique Pour Hommes Inc. v. Jay-Gur International Inc., [2003] F.T.R. Uned. 56; 2003 FCT 106, refd to. [para. 198].

Remo Imports Ltd. v. Jaguar Cars Ltd. et al. (2007), 367 N.R. 177; 2007 FCA 258, refd to. [para. 198].

Promafil Canada ltée v. Munsingwear Inc. (1992), 142 N.R. 230; 44 C.P.R.(3d) 59 (F.C.A.), refd to. [para. 200].

Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 C.P.R.(3d) 535 (T.M. Opp. Bd.), refd to. [para. 200].

Wing et al. v. Golden Gold Enterprises Co. et al. (1996), 108 F.T.R. 308; 66 C.P.R.(3d) 62 (T.D.), refd to. [para. 204].

Lyle and Kinahan Ltd., Re (1907), 24 R.P.C. 249 (C.A.), refd to. [para. 204].

Advantage Car & Truck Rentals v. 1611864 Ontario Inc. et al., [2005] F.T.R. Uned. 197; 2005 FC 325, refd to. [para. 209].

Drolet v. Gralsbotschaft et al. (2009), 341 F.T.R. 44; 2009 FC 17, refd to. [para. 214].

Allen (A.W.) Ltd. v. Registrar of Trademarks (1985), 6 C.P.R.(3d) 270 (F.C.T.D.), refd to. [para. 217].

Loro Piana S.p.A. v. Canadian Council of Professional Engineers (2008), 72 C.P.R.(4th) 220 (T.M. Opp. Bd.), affd. (2009), 356 F.T.R. 216; 2009 FC 1095, refd to. [para. 217].

Canadian Council of Blue Cross Plans v. Blue Cross Beauty Products Inc. (1971), 3 C.P.R.(2d) 223 (F.C.T.D.), refd to. [para. 223].

Compagnie Générale des Etablissements Michelin - Michelin & Cie v. National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW-Canada) (1997), 124 F.T.R. 192; 71 C.P.R.(3d) 348 (T.D.), refd to. [para. 223].

A & W Food Services of Canada Inc. v. McDonald's Restaurants of Canada Ltd. (2005), 271 F.T.R. 199; 253 D.L.R.(4th) 736; 2005 FC 406, refd to. [para. 223].

417394 Alberta Ltd. v. H2O Co. Beverages Ltd. (2005), 269 F.T.R. 307; 2005 FC 224, refd to. [para. 223].

Loblaws Ltd. v. Richmond Breweries Ltd. (1983), 78 C.P.R.(2d) 236 (T.M. Opp. Bd.), refd to. [para. 235].

General Mills Canada Ltd. v. Procter & Gamble Inc. (1985), 6 C.P.R.(3d) 551 (T.M. Opp. Bd.), refd to. [para. 235].

Hudson's Bay Co. v. Sklar-Peppler Furniture Corp. (2007), 60 C.P.R.(4th) 174 (T.M. Opp. Bd.), refd to. [para. 236].

Bélanger v. Accuride Corp. (2004), 31 C.P.R.(4th) 300 (T.M. Opp. Bd.), refd to. [para. 236].

Swabey Ogilvy Renault v. Miss Mary Maxim Ltd. (2003), 28 C.P.R.(4th) 543 (T.M. Opp. Bd.), refd to. [para. 236].

Gowling, Strathy & Henderson v. Degrémont Infilco Ltd. (2000), 5 C.P.R.(4th) 550 (T.M. Opp. Bd.), refd to. [para. 236].

Central Soya of Canada Ltd. v. 88766 Canada Inc. (1993), 51 C.P.R.(3d) 509 (F.C.T.D.), refd to. [para. 236].

Info Touch Technologies Corp. v. H.E. Holdings, 2005 CarswellNat 3154 (T.M. Opp. Bd.), refd to. [para. 236].

BMB Compuscience Canada Ltd. v. Bramalea Ltd., [1989] 1 F.C. 362; 23 F.T.R. 149 (T.D.), refd to. [para. 236].

Playboy Enterprises Inc. v. Germain (No. 1) (1987), 13 F.T.R. 178; 16 C.P.R.(3d) 517 (T.D.), refd to. [para. 237].

Alex v. World Wrestling Federation Entertainment Inc. (2008), 68 C.P.R.(4th) 244 (T.M. Opp. Bd.), refd to. [para. 238].

Halliburton Energy Services Inc. v. Enviroseal Technologies (Canada) Inc. (2008), 69 C.P.R.(4th) 313 (T.M. Opp. Bd.), refd to. [para. 238].

Cassels Brock Blackwell v. Abex Corp. (2001), 16 C.P.R.(4th) 562 (T.M. Opp. Bd.), refd to. [para. 238].

United Artists Corp. v. Pink Panther Beauty Corp. et al., [1998] 3 F.C. 534; 225 N.R. 82 (F.C.A.), refd to. [para. 246].

WWF World Wide Fund for Nature v. 140808 Canada Inc. (1993), 50 C.P.R.(3d) 445 (T.M. Opp. Bd.), refd to. [para. 249].

Prouvost S.A. v. Munsingwear Inc. (1992), 141 N.R. 241; 47 C.P.R.(3d) 114 (F.C.A.), refd to. [para. 249].

Miss Universe Inc. v. Bohna, [1995] 1 F.C. 614; 176 N.R. 35 (F.C.A.), refd to. [para. 250].

Maison Cousin (1980) Inc. v. Cousins Submarines Inc. (2006), 366 N.R. 153; 2006 FCA 409, refd to. [para. 250].

Crothers Co. v. Williamson Candy Co., [1925] 2 D.L.R. 844 (S.C.C.), refd to. [para. 301].

Moore Dry Kiln Co. of Canada Ltd. v. U.S. National Resources Inc. (1976), 12 N.R. 361; 30 C.P.R.(2d) 40 (F.C.A.), refd to. [para. 301].

Hutton and Denali Music Ltd. v. Canadian Broadcasting Corp. (1992), 120 A.R. 291; 8 W.A.C. 291; 41 C.P.R.(3d) 45 (C.A.), refd to. [para. 311].

Atomic Energy of Canada Ltd. v. Areva NP Canada Ltd. et al., [2009] F.T.R. Uned. 598; 2009 FC 980, refd to. [para. 315].

Boutin v. Bilodeau - see Boutin et autres v. Distributions C.L.B. Inc. et autres.

Boutin et autres v. Distributions C.L.B. Inc. et autres (1992), 56 Q.A.C. 206; 33 A.C.W.S.(3d) 781 (C.A.), refd to. [para. 315].

Robertson v. Thompson Corp. et al. (2006), 353 N.R. 104; 217 O.A.C. 332; 2006 SCC 43, refd to. [para. 316].

Ladbroke (Football) Ltd. v. Hill (William) (Football) Ltd., [1964] 1 All E.R. 465 (H.L.), refd to. [para. 316].

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. 317].

Grignon v. Roussel et al. (1991), 44 F.T.R. 121; 38 C.P.R.(3d) 4 (T.D.), refd to. [para. 319].

Shewan v. Canada (Attorney General) (1999), 87 C.P.R.(3d) 475 (Ont. Sup. Ct.), refd to. [para. 319].

Kilvington Brothers Ltd. v. Goldberg (1957), 28 C.P.R. 13 (Ont. H.C.), refd to. [para. 320].

Collins et al. v. Rosenthal et al. (1974), 14 C.P.R.(2d) 143 (F.C.T.D.), refd to. [para. 320].

Statutes Noticed:

Copyright Act, R.S.C. 1985, c. C-42, sect. 2 [para. 314]; sect. 27 [para. 313]; sect. 41(1), sect. 41(2) [para. 352].

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 2, sect. 4(1) [para. 227]; sect. 6(1), sect. 6(2) [para. 242]; sect. 6(5) [para. 243]; sect. 19 [para. 222]; sect. 20 [para. 241]; sect. 22 [para. 225].

Authors and Works Noticed:

Fox, Harold G., Canadian Law of Trade Marks and Unfair Competition (3rd Ed. 1972), p. 59 [para. 246].

Gill, Kelly, and Jolliffe, R. Scott, Fox on Canadian Law of Trade Marks and Unfair Competition (4th Ed.) (2009 Looseleaf), pp. 7-19, 7-20 [para. 244].

Hughes, Roger T., Trade Marks (2nd Ed. 2005), p. 601, s. 21 [para. 212].

Hughes, Roger T., and Peacock, Susan J., Copyright and Industrial Design (2nd Ed.) (2005 Looseleaf), para. 63 [paras. 315, 316].

McKeown, John S., Fox on Canadian Law of Copyright and Industrial Designs (4th Ed.) (2009 Looseleaf), pp. 21-10, 21-11, 21-12 [para. 315].

Sopinka, John, Lederman, Sidney N., and Bryant, Alan W., The Law of Evidence in Canada (2nd Ed. 1999), para. 6.2 [para. 260].

Counsel:

Kelly Gill, Scott Jolliffe, James Buchan, James Blonde and Selena Kim, for the plaintiffs;

Francois Guay, Genevieve Prevost and Steven B. Garland, for the defendants.

Solicitors of Record:

Gowling, Lafleur, Henderson, LLP, Toronto, Ontario, for the plaintiffs;

Smart & Biggar, Montreal, Quebec, for the defendants.

This application was heard at Toronto, Ontario, on January 18-21 and 25-28, February 1-3, 9 and 10, March 22 and April 6-9, 2010, by de Montigny, J., of the Federal Court, who delivered the following reasons for judgment on November 8, 2010.