Applicant must establish goodwill based on perceptions of marketplace

Federal court | Intellectual Property | Trademarks | Passing off and unfair competition

Parties were competitors in Edmonton marketplace. Respondent company used phone mark 1-877-WELDPRO in conjunction with its business activities, and it applied to register trade mark “1-877-WELDPRO”, and applicant then applied to register trade mark “Weldpro”. Canadian Intellectual Property Office issued objection against applicant’s application because it was confusing with company’s previously-filed application, and applicant initiated opposition proceedings against company’s registration. Applicant alleged company’s use of, and attempt to register trade mark 1-877-WELDPRO directed public attention to company’s goods in way that caused confusion contrary to s. 7(b) of Trade-Marks Act. Applicant alleged that individual respondent’s conduct had been so egregious that corporate veil should be pierced, and he should be held personally liable for causing damages. Applicant brought this application alleging passing off. Application dismissed. Elements of passing off test were goodwill, likelihood of deception, and damage. Individual respondent’s evidence could not be relied on to establish goodwill or reputation in mind of purchasing public. Individual respondent was president of applicant’s competitor in Edmonton marketplace, and it was difficult to conclude that knowledge of direct competitor might normally be considered as representative of, or as establishing, knowledge of purchasing public. Individual respondent’s knowledge was insufficient establish that goodwill existed. Applicant could establish goodwill in number of ways, but it must do so based on perceptions in marketplace. Applicant had not established goodwill prong of passing off test and it failed to demonstrate that respondents breached s. 7(b) of Act. 

Weldpro Limited v. Weldworld Corp. (2018), 2018 CarswellNat 1078, 2018 CarswellNat 1281, 2018 FC 312, 2018 CF 312, Patrick Gleeson J. (F.C.).

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