Federal Court

Industrial and Intellectual Property

Plaintiff’s trademarks had little inherent distinctiveness and were afforded narrow ambit of protection

Parties were commercial program providers. Plaintiff approached defendant to propose vendor relationship which defendant declined. Email exchanges between parties revealed to defendant WORKPERKS and ADPERKS marks, plaintiff’s system for managing discount programs, and plaintiff’s customer employee groups and association/member-based groups and corresponding number of end-users. Plaintiff claimed information was confidential, which defendant disputed. Plaintiff claimed defendant infringed its rights in family of registered trademarks endings in “PERKS” (VI trademarks) by using registered trademark “PERKOPOLIS.” Plaintiff asserted defendants made false and misleading statements discrediting plaintiff’s business, committed tort of passing off, and depreciated their goodwill. Action dismissed. Claim that defendants disseminated false and misleading statements regarding plaintiff’s business and services tending to discredit plaintiff was dismissed. Evidence did not show statements made by corporate defendant with respect to deficiencies in plaintiff’s infrastructure to provide customer support or concerning insufficient privacy and security of personal information. There was no evidence of any connection of misleading or false statements made by defendants to potential or actual customers of plaintiff in relation to parties’ trademarks in issue. Claim in relation to depreciation of goodwill was dismissed. Plaintiff acknowledged that only alleged use by defendants of any of plaintiff’s trademarks was use of “Member Perks” on web site, which use was not use as trademark for purpose of distinguishing defendant’s wares or services from others, and could not constitute basis for valid claim with respect to depreciation of goodwill. Speculative nature of plaintiff’s evidence of damages was insufficient to support valid of passing off. There was no likelihood of deception through misrepresentation. There was little resemblance in either appearance or sound or in idea suggested by marks. Each of plaintiff’s trademarks was combination of particular class of end users and word perks. Defendant’s use of “perk” suggested type of benefit program but had little obvious suggestion as to whom or for what perks were offered and did not suggest any of ideas associated with plaintiff’s trademarks. Plaintiff’s trademarks had little inherent distinctiveness and were afforded narrow ambit of protection. Evidence of confusion was insufficient to establish that casual customer somewhat in hurry would confuse marks.

Venngo Inc. v. Concierge Connection Inc. (Dec. 3, 2015, F.C., Michael D. Manson J., T-467-11) 262 A.C.W.S. (3d) 465.

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