Court allowed respondents’ appeal in part, finding that there was likelihood of confusion between appellants’ no-name cigarettes and respondents’ MARLBORO, especially in “dark market”, and therefore infringement of respondents’ trademark. Matter was referred back to judge, who allowed respondents to elect accounting of profits. Appellants appealed. Appeal dismissed. Judge turned his mind to restitutionary purpose of remedy as he weighed relevant factors. Judge clearly considered all of issues and evidence in concluding that calculation of damages was likely to be as complex as accounting of profits. Causal link had been established between damages suffered and use of their property by appellants. Court had determined that there was confusion and infringement, which was source of appellants’ unjust enrichment. Appellants would not be prejudiced if respondents elected accounting of profits in view of parallel litigation that had been initiated by respondents alleging infringement of their MARLBORO trademark. When either infringement proceeding or reference was ready to be heard, other proceeding could be stayed until decision was rendered.
Philip Morris Products S.A. v. Marlboro Canada Ltd. (Feb. 17, 2016, F.C.A., Johanne Trudel J.A., A.F. Scott J.A., and Richard Boivin J.A., A-187-15) 264 A.C.W.S. (3d) 186.