Société des loteries du Québec v. Club Lotto International C.L.I. Inc.,

• Jurisdiction: Federal Jurisdiction (Canada)
• Judge: Blais, J.
• Citation: (2001), 204 F.T.R. 21 (TD)
• Court: Federal Court (Canada)
• Date: 08 January 2001

Soc. des loteries du Qué. v. Club Lotto (2001), 204 F.T.R. 21 (TD)

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[French language version follows English language version]

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Temp. Cite: [2001] F.T.R. TBEd. FE.081

Société des loteries du Québec (demanderesse) v. Club Lotto International C.L.I. Inc. (défenderesse)

(T-305-98)

Indexed As: Société des loteries du Québec v. Club Lotto International C.L.I. Inc.

Federal Court of Canada

Trial Division

Blais, J.

January 25, 2001.

Summary:

The plaintiff sued for, inter alia, a permanent injunction against the defendant for use of its trademarks and copyright infringement.

The Federal Court of Canada, Trial Division, granted a permanent injunction.

Copyright - Topic 4405

Infringement of copyright - General principles - Substantial similarity or substantial copying - The plaintiff administered and managed lottery systems - Lotto 649, Lotto 6/49 and 6/49 were official marks of the plaintiff - The defendant advertised that it formed groups of lottery ticket buyers who wished to maximize their chances of winning the Canadian 6/49 grand prize and that its system made it possible to maximize chances of winning the Lotto 6/49 grand prize - The defendant purchased the plaintiff's tickets to hold in trust for its customers - The Federal Court of Canada, Trial Division, held that the defendant's group agreement was only a disguised imitation of the plaintiff's group agreement and therefore infringed the plaintiff's copyrights in its group agreements - The court issued a permanent injunction against, inter alia, the defendant's use of the plaintiff's documentary material - See paragraphs 116 to 134.

Copyright - Topic 4583

Infringement of copyright - Remedies - Injunctive relief - [See Copyright - Topic 4405].

Injunctions - Topic 6307

Particular matters - Injury to trade - Improper use of trademarks, names or designs - The plaintiff administered and managed lottery systems - Lotto 649, Lotto 6/49 and 6/49 were official marks of the plaintiff - The defendant advertised that it formed groups of lottery ticket buyers who wished to maximize their chances of winning the Canadian 6/49 grand prize and that its system made it possible to maximize chances of winning the Lotto 6/49 grand prize - The defendant purchased the plaintiff's tickets to hold in trust for its customers - The Federal Court of Canada, Trial Division, issued a permanent injunction directing the defendant and others to, inter alia, not use as a trademark or otherwise the plaintiff's official marks or any mark confusing with them (including Lotto 6/49 or 6/49 and 6-49), and cease offering, selling or marketing products and services having advertising referring to such marks.

Injunctions - Topic 6311

Particular matters - Injury to trade - Copyright infringement - [See Copyright - Topic 4405].

Trademarks, Names and Designs - Topic 1806

Trademarks - Infringement - Test - Confusion with other mark or name - [See Injunctions - Topic 6307].

Trademarks, Names and Designs - Topic 1807

Trademarks - Infringement - Use - General - The plaintiff administered and managed lottery systems - Lotto 649, Lotto 6/49 and 6/49 were official marks of the plaintiff - The defendant advertised that it formed groups of lottery ticket buyers who wished to maximize their chances of winning the Canadian 6/49 grand prize and that its system made it possible to maximize chances of winning the Lotto 6/49 grand prize - The defendant purchased the plaintiff's $84 combination tickets to hold in trust for its customers - The Federal Court of Canada, Trial Division, found that the plaintiff's marks were clearly used or displayed by the defendant in the performance or advertising of the defendant's services - Accordingly, the defendant was deemed to have used the plaintiff's official marks in connection with its business - See paragraphs 46 to 87.

Trademarks, Names and Designs - Topic 3065

Trademarks - Unfair competition - Confusing advertising - The plaintiff administered and managed lottery systems - Lotto 649, Lotto 6/49 and 6/49 were official marks of the plaintiff - The defendant advertised that it formed groups of lottery ticket buyers who wished to maximize their chances of winning the Canadian 6/49 grand prize and that its system made it possible to maximize chances of winning the Lotto 6/49 grand prize - The defendant purchased the plaintiff's $84 combination tickets to hold in trust for its customers - The Federal Court of Canada, Trial Division, held that the defendant did not thereby violate s. 7(b) of the Trade-Marks Act ("No person shall direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another") - See paragraphs 88 to 111.

Trademarks, Names and Designs - Topic 3067

Trademarks - Unfair competition - False or misleading statements about competitor - The plaintiff administered and managed lottery systems - Lotto 649, Lotto 6/49 and 6/49 were official marks of the plaintiff - The defendant advertised that it formed groups of lottery ticket buyers who wished to maximize their chances of winning the Canadian 6/49 grand prize and that its system made it possible to maximize chances of winning the Lotto 6/49 grand prize - The defendant purchased the plaintiff's $84 combination tickets to hold in trust for its customers - The Federal Court of Canada, Trial Division, held that the defendant did not thereby violate s. 7(a) of the Trade-marks Act ("No person shall make a false or misleading statement tending to discredit the business, wares or services of a competitor") - See paragraphs 88 to 110.

Trademarks, Names and Designs - Topic 3067

Trademarks - Unfair competition - False or misleading statements about competitor - The plaintiff administered and managed lottery systems - Lotto 649, Lotto 6/49 and 6/49 were official marks of the plaintiff - The defendant advertised that it formed groups of lottery ticket buyers who wished to maximize their chances of winning the Canadian 6/49 grand prize and that its system made it possible to maximize chances of winning the Lotto 6/49 grand prize - The defendant purchased the plaintiff's $84 combination tickets to hold in trust for its customers - The Federal Court of Canada, Trial Division, held that the defendant did not thereby violate s. 7(d)(i) of the Trade-marks Act ("No person shall make use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to the character, quality, quantity or composition of the wares or services") - See paragraphs 88 to 112.

Trademarks, Names and Designs - Topic 3070

Trademarks - Unfair competition - Business practice contrary to honest industrial or commercial usage in Canada - The plaintiff administered and managed lottery systems - Lotto 649, Lotto 6/49 and 6/49 were official marks of the plaintiff - The defendant advertised that it formed groups of lottery ticket buyers who wished to maximize their chances of winning the Canadian 6/49 grand prize and that its system made it possible to maximize chances of winning the Lotto 6/49 grand prize - The defendant purchased the plaintiff's $84 combination tickets to hold in trust for its customers - The Federal Court of Canada, Trial Division, held that the defendant did not thereby violate s. 7(d)(i) of the Trade-marks Act ("No person shall do any other act or adopt any other business practice contrary to honest industrial or commercial usage in Canada") - See paragraphs 88 to 115.

Trademarks, Names and Designs - Topic 4002

Trademarks - Prohibited marks - Marks adopted or used by public authority - The Federal Court of Canada, Trial Division, stated that by the addition of the words "or otherwise" in ss. 9 and 11 of the Trade-Marks Act, the protection given to official marks was much wider than that given to registered trademarks - See paragraph 78.

Cases Noticed:

Compagnie Générale des Établissements 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. 61].

Canadian Olympic Association v. Konica Canada Inc. et al. (1991), 135 N.R. 143 (F.C.A.), refd to. [para. 64].

Canadian Olympic Association v. Konica Canada Inc. et al., [1990] 2 F.C. 703; 35 F.T.R. 59 (T.D.), folld. [para. 68].

Carson v. Reynolds, [1980] 2 F.C. 685 (T.D.), refd to. [para. 75].

Insurance Corp. of British Columbia v. Registrar of Trade-Marks, [1980] 1 F.C. 669 (T.D.), refd to. [para. 76].

Techniquip Ltd. v. Canadian Olympic Association (1998), 145 F.T.R. 59 (T.D.), refd to. [para. 79].

British Columbia et al. v. Mihaljevic et al. (1986), 10 C.P.R.(3d) 374 (B.C.S.C.), refd to. [para. 80].

Anne of Green Gables Licensing Authority Inc. et al. v. Avonlea Traditions Inc., [2000] O.T.C. 133 (Sup. Ct.), refd to. [para. 94].

Statutes Noticed:

Trade-Marks Act, R.S.C. 1985, c. T-13, sect. 9(1)(n)(iii) [para. 46].

Authors and Works Noticed:

Richard, H.G., Canadian Trade-marks Act Annotated (Rev. Ed.), vol. 1, p. 7-3 [paras. 92, 93, 95, 96, 97].

Counsel:

Léanne Souquet and Johanne Gauthier, for the plaintiff;

Denis Racine, for the defendant.

Solicitors of Record:

Ogilvy Renault, Montreal, Quebec, for the plaintiff;

Bussières, Boulanger, Racine & Langevin avocats, Sainte Foy, Quebec, for the defendant.

This action was heard at Québec, Quebec, on January 8, 2001, by Blais, J., of the Federal Court of Canada, Trial Division, who delivered the following decision at Ottawa, Ontario, on January 25, 2001.