TLG Canada Corp. v. Product Source International LLC, 2016 FCA 31

• Judge: Trudel, Stratas and Ryer, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: January 27, 2016
• Jurisdiction: Canada (Federal)
• Citations: 2016 FCA 31;(2016), 482 N.R. 197 (FCA)

TLG Can. Corp. v. Product Source Intl. (2016), 482 N.R. 197 (FCA)

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Temp. Cite: [2016] N.R. TBEd. FE.016

Product Source International LLC (appellant) v. TLG Canada Corp. (respondent)

(A-476-14; 2016 FCA 31)

Indexed As: TLG Canada Corp. v. Product Source International LLC

Federal Court of Appeal

Trudel, Stratas and Ryer, JJ.A.

January 27, 2016.

Summary:

Product Source International LLC brought an infringement action against TLG Canada Corp. for selling NIC-OUT (with a hyphen) cigarette filters. NIC OUT (no hyphen) filters were cigarette filters that Product Source registered a trademark for in Canada in 2008. TLG applied to expunge the trademark, contending that Product Source should not have been able to register NIC OUT as the marks were confusing and not distinguishable.

The Federal Court, in a decision reported at (2014), 465 F.T.R. 1, granted the application and expunged the trademark from the Registry. Product Source appealed.

The Federal Court of Appeal dismissed the appeal.

Trademarks, Names and Designs - Topic 889.1

Trademarks - Registration - Expungement of mark - Grounds - Loss of distinctiveness (incl. non-distinctiveness) - [See Trademarks, Names and Designs - Topic 889.5 ].

Trademarks, Names and Designs - Topic 889.5

Trademarks - Registration - Expungement of mark - Grounds - Confusion - The respondent ("TLG") sold cigarette filters under the trademark NIC-OUT - The appellant ("Product Source") sued TLG for infringement of its trademark NIC OUT (no hyphen) - TLG sought and was granted an order expunging Product Source's trademark from the registry - The Federal Court's findings included that: TLG had standing to seek the order as an "interested person" under ss. 2 and 57 of the Trade-marks Act; Product Source's trademark was invalid under s. 18 of the Act; when Product Source applied for the registration of NIC OUT, it knew that NIC-OUT was previously used in Canada; and NIC-OUT was not distinctive - The Federal Court of Appeal held that, in making those findings, the Federal Court did not err in law or on an extricable legal principle - Nor did the Federal Court err in not giving effect to Product Source's submission that TLG's delay in seeking the order should have disentitled it to relief - TLG had acted within the five year limitation period and soon after Product Source sued it for trademark infringement.

Cases Noticed:

Housen v. Nikolaisen et al., [2002] 2 S.C.R. 235; 286 N.R. 1; 219 Sask.R. 1; 272 W.A.C. 1; 2002 SCC 33, refd to. [para. 6].

H.L. v. Canada (Attorney General) et al., [2005] 1 S.C.R. 401; 333 N.R. 1; 262 Sask.R. 1; 347 W.A.C. 1; 2005 SCC 25, refd to. [para. 6].

South Yukon Forest Corp. et al. v. Canada (2012), 431 N.R. 286; 2012 FCA 165, refd to. [para. 6].

Havana House Cigar & Tobacco Merchants Ltd. et al. v. Skyway Cigar Store (1998), 147 F.T.R. 54; 81 C.P.R.(3d) 203 (T.D.), rev. in part (1999), 251 N.R. 215; 3 C.P.R.(4th) 501 (F.C.A.), refd to. [para. 7].

Candrug Health Solutions Inc. et al. v. Thorkelson (2007), 312 F.T.R. 13; 60 C.P.R.(4th) 35; 2007 FC 411, refd to. [para. 7].

Counsel:

Glen M. Perinot, for the appellant;

Edward Feenan, for the respondent.

Solicitors of Record:

C2 Global Law LLP, Toronto, Ontario, for the appellant;

Duncan Craig LLP, Edmonton, Alberta, for the respondent.

This appeal was heard at Toronto, Ontario, on January 27, 2016, by Trudel, Stratas and Ryer, JJ.A., of the Federal Court of Appeal. The following reasons for judgment of the Court were delivered from the Bench by Stratas, J.A., on January 27, 2016.