Top Notch Construction Ltd. v. Top-Notch Oilfield Services Ltd., (2001) 207 F.T.R. 260 (TD)

• Judge: O'Keefe, J.
• Court: Federal Court (Canada)
• Case Date: December 19, 2000
• Jurisdiction: Canada (Federal)
• Citations: (2001), 207 F.T.R. 260 (TD)

Top Notch v. Top-Notch Oilfield (2001), 207 F.T.R. 260 (TD)

MLB headnote and full text

Temp. Cite: [2001] F.T.R. TBEd. JL.025

In The Matter Of An Infringement by Top-Notch Oilfield Services Ltd.

And In The Matter Of Section 53.2 of the Trade-marks Act (R.S.C. 1985, Chapter T-13)

Top Notch Construction Ltd. (plaintiff) v. Top-Notch Oilfield Services Ltd. (defendant)

(T-1192-97; 2001 FCT 642)

Indexed As: Top Notch Construction Ltd. v. Top-Notch Oilfield Services Ltd.

Federal Court of Canada

Trial Division

O'Keefe, J.

June 12, 2001.

Summary:

The plaintiff owned the trademark "Top Notch Construction Ltd. Calgary". It sued the defendant Top-Notch Oilfield Services Ltd. for, inter alia, infringing the trademark.

The Federal Court of Canada, Trial Division, dismissed the action.

Trademarks, Names and Designs - Topic 1804

Trademarks - Infringement - Acts not constituting an infringement - The plaintiff owned the trademark "Top Notch Construction Ltd. Calgary" - It sued the defendant Top-Notch Oilfield Services Ltd. (a tradename) for, inter alia, infringing its trademark - The plaintiff carried on a construction services business, namely: earth moving, commercial, residential and subdivision real estate development, irrigation systems construction, road construction, etc. - The defendant did pipelining, maintenance, insulation, hotshot service and surface abandonments in connection with oil fields - The Federal Court of Canada, Trial Division, dismissed the action, concluding that no likelihood of confusion existed between the plaintiff's trademark and the defendant's tradename - See paragraphs 15 to 28.

Trademarks, Names and Designs - Topic 1806

Trademarks - Infringement - Test - Confusion with other mark or name - [See Trademarks, Names and Designs - Topic 1804 ].

Trademarks, Names and Designs - Topic 1808

Trademarks - Infringement - Use - Depreciation of goodwill - The plaintiff owned the trademark "Top Notch Construction Ltd. Calgary" - It sued the defendant Top-Notch Oilfield Services Ltd. (a tradename) alleging, inter alia, that the defendant's use of its tradename would depreciate the value of the goodwill attached to the plaintiff's trademark - The plaintiff carried on a construction services business, namely: earth moving, commercial, residential and subdivision real estate development, irrigation systems construction, road construction, etc. - The defendant did pipelining, maintenance, insulation, hotshot service and surface abandonments in connection with oil fields - The Federal Court of Canada, Trial Division, concluded that, given the different services offered by the parties, there was no likelihood that the defendant's use of its tradename would depreciate the value of the goodwill attached to the plaintiff's trademark - See paragraphs 39 to 41.

Trademarks, Names and Designs - Topic 3068

Trademarks - Unfair competition - Passing off - The plaintiff owned the trademark "Top Notch Construction Ltd. Calgary" - It sued the defendant Top-Notch Oilfield Services Ltd. (a tradename) alleging, inter alia, that the defendant had directed public attention to his services or business in such a way as to cause confusion between his services or business and the plaintiff's (i.e., passing off) - The Federal Court of Canada, Trial Division, opined that the defendant's tradename did not give any indication that the defendants' services were authorized by the plaintiff or were the services of the plaintiff - Although the descriptive words "Top Notch" were found in both the plaintiff's mark and the defendant's tradename, the defendant made no misrepresentation leading or likely to lead the public to believe that the defendant's goods or services were those of or authorized by the plaintiff - See paragraphs 34 to 38.

Cases Noticed:

Miss Universe Inc. v. Bohna (1994), 176 N.R. 35; 58 C.P.R.(3d) 381 (F.C.A.), refd to. [para. 17].

United Artists Corp. v. Pink Panther Beauty Corp. et al. (1998), 225 N.R. 82; 80 C.P.R.(3d) 247 (F.C.A.), refd to. [para. 18].

Seagram (Joseph E.) & Sons Ltd. v. Registrar of Trademarks and Seagram Real Estate Ltd. (1990), 38 F.T.R. 96; 33 C.P.R.(3d) 454 (T.D.), refd to. [para. 24].

Polysar Ltd. v. Gesco Distributing Ltd. (1985), 6 C.P.R.(3d) 289 (F.C.T.D.), refd to. [para. 27].

MacDonald et al. v. Vapor Canada Ltd., [1977] 2 S.C.R. 134; 7 N.R. 477, refd to. [para. 30].

Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd. et al., [1987] 3 F.C. 544; 80 N.R. 9 (F.C.A.), refd to. [para. 30].

Ital-Press Ltd. v. Sicoli et al. (1999), 170 F.T.R. 66 (T.D.), refd to. [para. 31].

Walt Disney Productions v. Triple Five Corp. et al. (1994), 149 A.R. 112; 63 W.A.C. 112; 113 D.L.R.(4th) 229 (C.A.), refd to. [para. 35].

Horn Abbot Ltd. v. Thurston Hayes Development Ltd. (1997), 77 C.P.R.(3d) 10 (F.C.T.D.), refd to. [para. 36].

CIBA-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120; 143 N.R. 241; 58 O.A.C. 321; 95 D.L.R.(4th) 385, refd to. [para. 39].

Enterprise Car and Truck Rentals Ltd. v. Enterprises Rent-A-Car Co. et al., [1996] 2 F.C. 694; 109 F.T.R. 185 (T.D.), refd to. [para. 39].

Prince Edward Island Mutual Insurance Co. v. Insurance Co. of Prince Edward Island (1999), 159 F.T.R. 112 (T.D.), refd to. [para. 39].

Compagnie générale des établissements Michelin - Michelin & Cie v. National Automobile, Aerospace, Transportation and General Workers Union of Canada (C.A.W. - Canada), [1997] 2 F.C. 306; 124 F.T.R. 192 (T.D.), refd to. [para. 41].

Canadian Council of Blue Cross Plans et al. v. Blue Cross Beauty Products Inc. et al. (1971), 3 C.P.R.(2d) 223 (F.C.T.D.), refd to. [para. 42].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 2, sect. 6 [para. 16]; sect. 7(b) [para. 32].

Counsel:

R. Kipp Craig, for the plaintiff;

Timothy S. Ellam, for the defendant.

Solicitors of Record:

Mullen Craig, Calgary, Alberta, for the plaintiff;

McCarthy Tétrault, Calgary, Alberta, for the defendant.

This action was heard at Calgary, Alberta, on December 19, 2000, before O'Keefe, J., of the Federal Court of Canada, Trial Division, who delivered the following decision on June 12, 2001.