Teresa Scassa - Blog

Wednesday, 18 April 2012 09:25

Distinguishing between Legitimate (and Abusive) Trademark Infringement Claims

Written by  Teresa Scassa
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The Quebec Court of Appeal has overturned the decision of Justice Zerbisias of the Quebec Superior Court to award $125,000 in extra-judicial costs and punitive damages against a company that lost a trademark infringement suit.

Les Industries Lassonde is the owner of the registered trademarks OASIS and associated marks that feature the word OASIS, for juices, drinks and sherbets. In 2009 they brought a trademark infringement suit against L’Oasis d’Olivia Inc., arguing that the defendant’s mark OLIVIA’S OASIS for body care products was confusing with their OASIS marks. After a five-day hearing, Justice Zerbisias found that there was no likelihood of confusion, nor was there any depreciation of the goodwill associated with the plaintiffs’ mark. She concluded that “to impute the likelihood of confusion between Plaintiff’s and Defendant’s mark to the average consumer would insult him or her by assuming that such consumer is completely devoid of intelligence; of normal powers of observation, recollection and recognition; or, is so totally unaware or uninformed as to the environment in which they are found, that they would be easily deceived about the origin or nature of the wares they purchase.” (at para. 52)

At the end of the trial, counsel for the defendant made an oral motion seeking extra judicial costs and punitive damages against the plaintiffs. They relied upon provisions in the Quebec Code of Civil Procedure that came into effect on June 4, 2009. The Bill which added these provisions was titled “An Act to amend the Code of Civil Procedure to prevent improper use of the courts and promote freedom of expression and citizen participation in public debate.” (S.Q. 2009, c-12) In short, these provisions are a kind of anti-SLAPP legislation. Strategic Lawsuits Against Public Participation (SLAPP) are typically baseless law suits that have as their goal the intimidation of those who are critical of or who oppose certain types of activity. The intimidation is chiefly economic; the cost of defending against a SLAPP suit can be devastating for most individuals or public interest groups.

In this case, the defendant argued that the plaintiffs had “engaged in manifestly unfounded, frivolous, vexations proceedings, excessive and unreasonable in the circumstances, in an attempt to bully it and to prevent it from the lawful exercise of its rights to use its trade-mark and to engage in business under the name of Olivia’s Oasis” (at para 56). Justice Zerbisias agreed. In a very blunt assessment of the conduct of the plaintiffs she found that they had “unnecessarily pursued a claim they knew or should have known would not succeed” (at para 63). She based this conclusion on the sharp differences between the parties’ wares and target clientele, and on the fact that there had been no evidence of any confusion over the 5-year period of concurrent use of the parties’ trademarks. She found as well that the plaintiffs knew that the word OASIS was not a strong mark, and that there were many other registered trademarks incorporating that word, as well as many other businesses in Canada that used the word as part of their business name. Justice Zerbisias noted the disparity in power and resources between the parties, and referred to the plaintiffs’ conduct as “menacing and abusive”.

The plaintiffs did not appeal the judge’s finding of lack of confusion; instead, they confined their appeal to arguing that the award of extra-judicial costs and punitive damages was not justified on the facts, and that even if it was, the calculation of the amount of extra-judicial costs was not based on any evidence and was therefore flawed. In its decision on March 30, 2012, the Court of Appeal agreed on both points. The most significant finding, of course, is that the conduct of the plaintiffs did not amount to the kind of abuse contemplated by articles 54.1 and 54.4 of the Code of Civil Procedure. The Court began by noting that there was nothing in the actual conduct of proceedings that was abusive. The defendant’s argument depended instead on a finding that the proceedings should not have been brought in the first place. In contrast to the trial judge, however, the Court of Appeal found nothing to suggest that the commencement of proceedings was inappropriate. They noted that there was nothing inherently excessive about seeking to enforce one’s trademark rights. Once the plaintiffs had concluded that there was a risk of confusion created by the defendant’s mark, the plaintiffs were within their rights both to oppose its registration and to sue for trademark infringement. The Court noted that this was not simply the normal practice in such situations; it was almost an obligation in order to protect one’s trademark rights.

The Court of Appeal was also unprepared to find that the action commenced by the plaintiffs was doomed to fail from the outset. They noted that the trial judge spent 50 paragraphs of her decision discussing the issue of confusion following a five-day trial and a long period of deliberation. They observed as well that good faith must be presumed, and bad faith must be proven. They found no evidence to support the conclusion that the plaintiffs were motivated by bad faith. While the trial judge had found that other suits brought by the plaintiffs against other holders of marks for vastly different wares or services that incorporated the word “oasis” was evidence of a pattern of conduct, the Court of Appeal refused to draw an inference that this was evidence of harassment of any and all who might use the word “oasis” in relation to a business. They noted that a different inference could well be made: that the plaintiffs sought to protect the distinctiveness of their trademark. The Court indicated that much more evidence would need to be provided to support a finding of bad faith.

The case raises interesting issues about what might constitute sufficient proof of bad faith to give the anti-SLAPP provisions any application in the trademark context. It is certainly the practice for trademark owners to vigorously defend the distinctiveness of their marks; loss of distinctiveness is fatal for a trademark. The kind of disparity in economic power in this case is not unusual in a context where a new entrant in the market place has adopted a trademark that an established company might see as encroaching upon their existing trademark rights. The assessment of confusion requires a fact-driven, contextual analysis; it is not something that is always apparent on the face of things.

Perhaps the anti-SLAPP provisions might have a greater role to play when there is better evidence either that the rights being asserted are dubious, or that they are being asserted in a vexatious manner. This might occur where the proceedings themselves are conducted in an abusive manner, or where there is evidence of the bad faith assertion of trademark rights that goes beyond the normal practice of protecting one’s interests. It might also occur in circumstances where the plaintiff has no valid cause of action. For example, the non-commercial, critical use of a trademark seems to fall outside the scope of the legislation (although such a use of a design mark might infringe copyright, which raises a different set of issues). Such a case would also raise the freedom of expression issues which seem to be identified as central to the bill which brought about the amendments to the Code of Civil Procedure.

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