Remo Imports Ltd. v. Jaguar Cars Ltd. et al., 2007 FCA 258

• Judge: Décary, Létourneau and Trudel, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: July 18, 2007
• Jurisdiction: Canada (Federal)
• Citations: 2007 FCA 258;(2007), 367 N.R. 177 (FCA);367 NR 177;60 CPR (4th) 130;[2007] FCJ No 999 (QL)

Remo Imports Ltd. v. Jaguar Cars Ltd. (2007), 367 N.R. 177 (FCA)

MLB headnote and full text

Temp. Cite: [2007] N.R. TBEd. JL.026

Remo Imports Ltd. (appellant) v. Jaguar Cars Limited and Ford Motor Company of Canada, Limited/Ford du Canada Limitée carrying on business as Jaguar Canada (respondents)

(A-62-06; 2007 FCA 258)

Indexed As: Remo Imports Ltd. v. Jaguar Cars Ltd. et al.

Federal Court of Appeal

Décary, Létourneau and Trudel, JJ.A.

July 18, 2007.

Summary:

In the early 1980s, Remo Imports adopted and registered the trademark "Jaguar" respecting suitcases, knapsacks, key chains, credit card holders, address books, etc., to be sold through low end and medium chain stores. Jaguar Cars, which also used the registered trademark "Jaguar" in relation to its cars, sold accessories using the same trademark either through its automobile dealerships or directly to its customers. Remo, which claimed to have had no knowledge of the Jaguar Cars' trademark when it adopted the "Jaguar" trademark, sued Jaguar Cars in 1991 for trademark infringement and passing off and sought to expunge its trademark. Jaguar Cars counterclaimed, seeking to expunge the Remo trademark.

The Federal Court, in a decision reported 285 F.T.R. 168, dismissed Remo's action and allowed the counterclaim. The court held that Remo's trademark was invalid and would be struck from the register because the use of the trademark was likely to depreciate the value of the goodwill attached to Jaguar Cars' registered trademark for "Jaguar" cars. Further, Remo's trademark was confusing with the Jaguar Cars' trademark, deceived the public and was not distinctive. Remo had also infringed Jaguar Cars' registered trademarks and passed off its wares contrary to the Trade-marks Act. As a remedy, the court granted a declaration of invalidity and issued an injunction against Remo. No monetary damages were awarded. Remo appealed. Jaguar Cars cross-appealed the dismissal of its damages claim.

The Federal Court of Appeal allowed the appeal to the limited extent of setting aside the trial judge's conclusions that there was a likelihood of depreciation of the goodwill attached to Jaguar Cars' trademarks and that Remo's trademark was calculated to deceive and mislead the public. The court held that the trial judge rightly concluded that the registration of Remo's mark was invalid and should be expunged, although on the basis of the evidence that he accepted, the judge could not have declared void ab initio Remo's registration of the mark. The court agreed with the trial judge's conclusion that there was a likelihood of confusion between Remo's trademark and wares and those of Jaguar Cars from 1991 to the present time and that Remo infringed the Jaguar Cars' trademark. Therefore, the judge made no mistake when he issued a permanent injunction against Remo. The court allowed the cross-appeal, holding that Jaguar Cars was entitled to damages or profits from the date of the trial judgment.

Trademarks, Names and Designs - Topic 889.5

Trademarks - Registration - Expungement of mark - Grounds - Confusion - In the early 1980s, Remo Imports adopted and registered the trademark "Jaguar" respecting suitcases, knapsacks, key chains, credit card holders, etc. for chain store sale - Jaguar Cars, which also used the registered trademark "Jaguar" respecting cars, sold luggage and related accessories using the same trademark either through its automobile dealerships or directly to its customers - Remo, which claimed to have had no knowledge of the Jaguar Cars' trademark when it adopted the "Jaguar" trademark, sued Jaguar Cars in 1991 for infringement and passing off and sought to expunge its trademark - Jaguar Cars counterclaimed, seeking to expunge the Remo trademark - The trial judge dismissed Remo's action and allowed the counterclaim - Remo's trademark was invalid and would be struck from the register - The trial judge held that at all material dates, the Remo trademark "Jaguar" was confusing with Jaguar Cars' prior registration of the trademark "Jaguar" for automobiles - Use of the Remo trademark had the potential to deceive and mislead the public - Remo appealed, arguing that the judge erred in imposing upon Remo the burden of proving that there was no likelihood of confusion and applied the wrong test on the issue of confusion - The Federal Court of Appeal held that in this case, where Jaguar was seeking expungement of a registered mark, the burden of proving confusion was on Jaguar - The court, however, was not convinced that the trial judge actually made an error of law respecting the burden of proof, but even if the judge did so, that error was not material - While statements by the trial judge indicated a misconception or misapprehension of the test for confusion, there were facts on the record which could lead the judge to conclude that there was evidence of at least a likelihood of confusion if not actual confusion - See paragraphs 22 to 53.

Trademarks, Names and Designs - Topic 1808

Trademarks - Infringement - Use - Depreciation of goodwill - In the early 1980s, Remo Imports adopted and registered the trademark "Jaguar" respecting suitcases, knapsacks, key chains, credit card holders, etc. for chain store sale - Jaguar Cars, which also used the registered trademark "Jaguar" respecting cars, sold luggage and related accessories using the same trademark either through its automobile dealerships or directly to its customers - Remo, which claimed to have had no knowledge of the Jaguar Cars' trademark when it adopted the "Jaguar" trademark, sued Jaguar Cars in 1991 for infringement and passing off and sought to expunge its trademark - Jaguar Cars counterclaimed, seeking to expunge the Remo trademark - The trial judge dismissed Remo's action and allowed the counterclaim - Remo's trademark was invalid and would be struck from the register - The judge found that the Jaguar Cars' trademark was already famous when Remo adopted the "Jaguar" trademark (i.e., by 1980) and as a famous mark was worthy of a wide breadth of protection, including the right to natural brand extensions such as personal accessories - Remo's use of the "Jaguar" trademark was likely to have the effect of depreciating the value of the good will attaching to the famous Jaguar Cars' registered trademark, first registered in association with cars in 1945 and registered in association with accessories in the 1980s (Trade-marks Act, s. 22) - Remo appealed, arguing that the trial judge erred in finding that the Jaguar trademarks for automobiles, luggage wares and other related accessories were famous by 1980, 1990 and present day - The Federal Court of Appeal held that the trial judge made no overriding and palpable error with respect to this issue that would justify appellate intervention - See paragraphs 17 to 20.

Trademarks, Names and Designs - Topic 1808

Trademarks - Infringement - Use - Depreciation of goodwill - In the early 1980s, Remo Imports adopted and registered the trademark "Jaguar" respecting suitcases, knapsacks, key chains, credit card holders, etc. for chain store sale - Jaguar Cars, which also used the registered trademark "Jaguar" respecting cars, sold luggage and related accessories using the same trademark either through its automobile dealerships or directly to its customers - Remo, which claimed to have had no knowledge of the Jaguar Cars' trademark when it adopted the "Jaguar" trademark, sued Jaguar Cars in 1991 for infringement and passing off and sought to expunge its trademark - Jaguar Cars counterclaimed, seeking to expunge the Remo trademark - The trial judge dismissed Remo's action and allowed the counterclaim - Remo's trademark was invalid and would be struck from the register - Remo's use of the "Jaguar" trademark was likely to have the effect of depreciating the value of the good will attaching to the famous Jaguar Cars' registered trademark - Use of the Remo trademark had the potential to deceive and mislead the public - Remo appealed, arguing that the trial judge improperly added to s. 18 of the Trade-marks Act two grounds of invalidity, i.e., depreciation and deception of the public, not recognized as such by Parliament - The Federal Court of Appeal agreed that these were not grounds of invalidity and set aside the conclusions of the trial judge in this regard - See paragraphs 53 to 63 and 78.

Trademarks, Names and Designs - Topic 1816

Trademarks - Infringement - Remedies - Damages - In the early 1980s, Remo Imports adopted and registered the trademark "Jaguar" respecting suitcases, knapsacks, key chains, credit card holders, address books, etc., to be sold through low end and medium chain stores - Jaguar Cars, which also used the registered trademark "Jaguar" in relation to its cars, sold accessories using the same trademark either through its automobile dealerships or directly to its customers - Remo, which claimed to have had no knowledge of the Jaguar Cars' trademark when it adopted the "Jaguar" trademark, sued Jaguar Cars in 1991 for trademark infringement and passing off and sought to expunge its trademark - Jaguar Cars counterclaimed, seeking to expunge the Remo trademark - In 2006, the Federal Court dismissed Remo's action and allowed the counterclaim - The court held that Remo's trademark was invalid and would be struck from the register - Further, Remo had also infringed Jaguar Cars' registered trademarks and passed off its wares contrary to the Trade-marks Act - As a remedy, the court granted a declaration of invalidity and issued an injunction against Remo - No monetary damages were awarded - Jaguar appealed respecting the refusal to award damages - The Federal Court of Appeal held that Jaguar Cars was entitled to damages or profits for infringement from January 16, 2006 (i.e., the date of the trial judgment) - See paragraphs 79 to 114.

Cases Noticed:

Marchand Syndics Inc. et al. v. Laperrière (2006), 357 N.R. 344; 2006 FCA 368, refd to. [para. 9].

Kioroglo v. Canada (Ministre de la Citoyenneté et de l'Immigration) (1994), 86 F.T.R. 87 (T.D.), refd to. [para. 12].

Mishak et al. v. Canada (Ministre de la Citoyenneté et de l'Immigration) (1999), 173 F.T.R. 144 (T.D.), refd to. [para. 12].

Dow Agrosciences Canada Inc. v. Philom Bios Inc., [2007] A.R. Uned. 36; 2007 ABCA 122, refd to. [para. 20].

Parke, Davis & Co. v. Empire Laboratories Ltd. (1963), 41 C.P.R. 121 (Ex. Ct.), refd to. [para. 23].

Advance Magazine Publishers Inc. v. Masco Building Products Corp. (1999), 162 F.T.R. 232; 86 C.P.R.(3d) 207 (T.D.), refd to. [para. 25].

Veuve Clicquot Ponsardin v. Boutiques Cliquot ltée et al. (2006), 349 N.R. 111; 2006 SCC 23, refd to. [para. 28].

Toyota Motor Corp. v. Lexus Foods Inc. (2000), 264 N.R. 158; 9 C.P.R.(4th) 297 (F.C.A.), refd to. [para. 32].

Mattel Inc. v. 3894207 Canada Inc. et al. (2006), 348 N.R. 340; 2006 SCC 22, affing. (2005), 329 N.R. 259; 38 C.P.R.(4th) 214 (F.C.A.), refd to. [para. 38].

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. 38].

Sport Maska Inc. v. Zittrer, [1988] 1 S.C.R. 564; 83 N.R. 322, dist. [para. 50].

Williamson Candy Co. v. Crothers (W.J.) Co., [1924] Ex. C.R. 183, dist. [para. 57].

Andres Wine Ltd. v. Gallo (E. & J.) Winery, [1976] 2 F.C. 3; 11 N.R. 560 (F.C.A.), refd to. [para. 61].

CIBA-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120; 143 N.R. 241; 58 O.A.C. 321, refd to. [para. 89].

Kirkbi AG et al. v. Ritvik Holdings Inc. et al., [2005] 3 S.C.R. 302; 341 N.R. 234, refd to. [para. 89].

Reckitt and Colman Products Ltd. v. Borden Inc. et al., [1990] 1 All E.R. 873; 107 N.R. 161 (H.L.), refd to. [para. 90].

Marchands RO-Na Inc. v. Tefal S.A. (1981), 55 C.P.R.(2d) 27 (F.C.T.D.), dist. [para. 106].

Hughes (W.J.) & Sons "Corn Flower" Ltd. v. Morawiec (1970), 62 C.P.R. 21 (F.C.T.D.), refd to. [para. 106].

Unitel Communications Inc. v. Bell Canada (1995), 92 F.T.R. 161; 61 C.P.R.(3d) 12 (T.D.), dist. [para. 106].

Jonathan, Boutiques Pour Hommes Inc. v. Jay-Gur International Inc., [2003] F.T.R. Uned. 56; 23 C.P.R.(4th) 492 (T.D.), refd to. [para. 111].

Chemicals Inc. and Overseas Commodities Ltd. v. Shanahan's Ltd. (1951), 15 C.P.R. 1 (B.C.C.A.), refd to. [para. 112].

Molson Canada v. Oland Breweries Ltd. (2002), 159 O.A.C. 396; 19 C.P.R.(4th) 201 (C.A.), refd to. [para. 112].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 17 [para. 65]; sect. 18(1) [para. 53]; sect. 19 [para. 110]; sect. 22 [para. 55].

Authors and Works Noticed:

Fox, Harold G., The Canadian Law of Trademarks and Unfair Competition (4th Ed. 2002), pp. 4-83 [para. 90]; 11-24 [para. 54].

Counsel:

Richard Uditsky and Barry Gamache, for the appellant;

J. Douglas Wilson and Pauline Bosman, for the respondents.

Solicitors of Record:

McMillan Binch Mendelsohn, and Léger Robic Richard, Montréal, Québec, for the appellant;

Ridout & Maybee, Toronto, Ontario, for the respondents.

This appeal was heard at Montreal, Quebec, on June 26-28, 2007, by Décary, Létourneau and Trudel, JJ.A., of the Federal Court of Appeal. The following decision of the court was delivered on July 18, 2007, by Létourneau, J.A.