Techno-Pieux Inc. v. Techno Piles Inc.

Techno-Pieux Inc. v. Techno Piles Inc.
Court (s) Database
Federal Court Decisions
Date
2022-05-13
Neutral citation
2022 FC 721
File numbers
T-969-21
Decision Content
Date: 20220513
Docket: T-969-21
Citation: 2022 FC 721
Ottawa, Ontario, May 13, 2022
PRESENT: THE CHIEF JUSTICE
BETWEEN:
TECHNO-PIEUX INC.
Plaintiff
and
TECHNO PILES INC., TECHNO METAL POST MEDECINE HAT INC.,
TECHNO METAL POST FORT MCMURRAY INC.,
MATHIEU BERGEVIN, AND RONDA BERTRAM
Defendants
AND BETWEEN:
TECHNO PILES INC., TECHNO METAL POST MEDECINE HAT INC.,
TECHNO METAL POST FORT MCMURRAY INC.,
MATHIEU BERGEVIN, AND RONDA BERTRAM
Plaintiffs by Counterclaim
and
TECHNO-PIEUX INC.
Defendant by Counterclaim
ORDER AND REASONS
I. Introduction
[1] The Court is committed to reducing the time and costs associated with disputes it is called upon to adjudicate. To this end, two important procedural mechanisms that are available are: (i) a motion for summary judgment, and (ii) a motion for summary trial. Parties are well advised to carefully think about the relative merits of each.
[2] These reasons concern two Motions for summary judgment. They each relate to a dispute regarding trademarks and trade names.
[3] In the first Motion, the Plaintiff, Techno-Pieux Inc. [Techno-Pieux], seeks a broad range of declaratory, injunctive and other relief against the Defendants. In addition, it seeks an Order directing that the issues of its entitlement to monetary relief, and the quantum of such relief, be referred to a trial of those issues or a reference under Rule 153 of the Federal Courts Rules, SOR/98-106 [the Rules]. Those issues arise in relation to alleged violations of the Plaintiff’s rights under the Trademarks Act, RSC 1985, c T-13 and the Copyright Act, RSC 1985, c C-42.
[4] In the second Motion [the Cross-Motion], the Defendants seek an Order declaring that the trademarks asserted by Techno-Pieux are invalid and should therefore be expunged from the Register of Trademarks. The Defendants also seek an Order dismissing Techno-Pieux’s underlying action in its entirety, and granting them their costs on a solicitor-client basis. In the alternative, they seek an order dismissing the action as against the Defendants Techno Piles Inc., Ronda Bertram and Mathieu Bergevin. I pause to observe that they do not seek any relief under the Copyright Act.
[5] I have concluded that the parties have failed to satisfy the test to be met on a Motion for summary judgment. In brief, they have failed to demonstrate that there is no genuine issue for trial in relation to the substantive relief they seek in their respective Motions. Accordingly, both Motions will be dismissed.
II. The Parties and Their Disputed Marks/Copyrighted Works
A. Techno-Pieux
[6] Techno-Pieux is a Quebec-based supplier of helical piles and associated materials and machinery for residential and industrial applications. It markets and sells its products throughout Canada and abroad.
[7] Techno-Pieux is the owner of the following registered Canadian Trademarks [the Registered Marks]:
[8] The first three of the above-mentioned marks are registered in respect of the following goods and services: (i) goods – foundations pillars, foundations posts, foundations stake, foundations piles; and instruments to determine the load-bearing capacity of foundations footings and piles; (ii) services – engineering services in the design of foundations and performance of test for foundations.
[9] The fourth mark, TECHNO PIEUX, is registered for the same services as the first three, but for goods that are very different and not within the purview of the parties’ dispute. Accordingly, that trademark will not be further discussed in respect of the goods identified immediately above.
[10] Techno-Pieux also asserts copyright in the Techno-Pieux logo (TMA562798), Techno Metal Post logo (TMA638884) and the following post design [collectively, the Copyrighted Works]:
[11] Through its network of licensees and distributors, Techno-Pieux has offered its goods and services in association with the trade names “Techno Pieux” and “Techno Metal Post” and the Registered Marks since at least 2002.
[12] In Alberta, Techno-Pieux operates through its affiliate Techno Metal Post Alberta Inc., which in turn sells to licensees and distributors in that province.
B. The Defendants
[13] Techno Metal Post Medicine Hat Inc. [TMP Medicine Hat] is an Alberta-based company that began distributing Techno-Pieux’s goods and services soon after its incorporation in the fall of 2015, pursuant to a Distributorship and Procurement Agreement dated October 9, 2015. At that time, TMP Medicine Hat was owned and operated by Rosaire Belisle. However, in the fall of 2018 it was sold to the two individual Defendants, Mr. Bergevin and Ms. Bertram. They have owned and operated it as the sole shareholders, directors, executives and employees (with one unimportant exception) since that time, although they also work with independent contractors.
[14] Techno Metal Post Fort McMurray Inc. [TMP Fort McMurray] is an Alberta-based company that began distributing Techno-Pieux’s goods and services soon after its incorporation in late 2016, pursuant to a Distributorship and Procurement Agreement dated November 28, 2016. From the outset, TMP Fort McMurray has been owned and operated by Mr. Bergevin and Ms. Bertram, who have also been the sole shareholders, directors, executives and employees (with one unimportant exception). As with TMP Medicine Hat, it works with independent contractors.
[15] Techno Piles Inc. is an Alberta-based entity that was incorporated in January 2020. According to the Defendants, it has not yet operated in any meaningful manner. However, it was used to register the domain name http://www.technopilesinc.com, which is linked to email accounts and a website used by some or all of the Defendants.
III. Factual Background
[16] The relationship between the parties took a significant turn for the worse in June 2020, when the Plaintiff wrote to Mr. Bergevin to summarize various difficulties that had arisen in their dealings. At that time, the Plaintiff informed Mr. Bergevin that it had decided that it was impossible to continue working with him and that, therefore, its distribution agreements with TMP Medicine Hat and TMP Fort McMurray [together, the Disputed Distribution Agreements] would be terminated in December of that year.
[17] In February 2021, the Plaintiff sent another letter to Mr. Bergevin to provide notice of the termination of the Disputed Distribution Agreements, effective August 16, 2021.
[18] After further correspondence between the parties, the Plaintiff advised Mr. Bergevin on May 20, 2021 that such termination would be effective at the end of that month.
[19] On May 30, 2021, TMP Medicine Hat and TMP Fort McMurray [the “Principal Corporate Defendants”] announced a “rebranding”. Among other things, that announcement stated: “[W]e are shutting down our Techno Metal Post Fort McMurray and Medicine Hat email and moving everything over to Techno Piles Inc. Our personal emails and info email will no longer be valid after today.” After listing the new email addresses, the announcement stated, “We still have our same great companies only the name is changing.” It appears to be common ground between the parties that the Principal Corporate Defendants have been using the trade names TECHNO PILES MEDICINE HAT and TECHNO PILES FORT MCMURRAY, respectively, as well as TECHNO PILES (Corporate Registration #TN23307416 and #TN23307374, respectively) since approximately that time.
[20] In June 2021, the Plaintiff initiated an action for breach of contract in the Court of Queen’s Bench of Alberta [the Alberta Action], followed by its underlying action in the present proceeding.
[21] In the Alberta Action, the Defendants maintain that the Plaintiff had no right to terminate the Disputed Distribution Agreements and that therefore those agreements remain in force.
IV. The Plaintiff’s Motion
A. Summary of Relief Sought
[22] In its Amended Notice of Motion, the Plaintiff seeks extensive declaratory, injunctive and other relief against the Defendants.
[23] In summary, the Plaintiff seeks declarations that the Defendants have:
i. infringed the four Registered Trademarks, contrary to sections 19 and 20 of the Trademarks Act;
ii. used those marks in a manner likely to have the effect of depreciating the value of the goodwill attached thereto, contrary to section 22 of that legislation;
iii. directed attention to their goods, services and business in such a way as to be likely to cause confusion in Canada between their goods, services and business and those of the Plaintiff, contrary to section 7(b) of the legislation;
iv. used and continue to use, in connection with the goods and services in question, a description that is false in a material respect and is of such a nature as to mislead the public as regards to the character or quality of such goods and services, contrary to section 7(d) of the legislation; and
v. infringed and are deemed to have infringed their copyright in the Copyrighted Works, contrary to sections 3 and 27 of the Copyright Act.
[24] In essence, the injunctive relief sought by the Plaintiff corresponds to the alleged contraventions of the Trademarks Act and the Copyright Act, described above.
[25] The other relief sought by the Plaintiff consists largely of directive relief, including the destruction of all allegedly contravening articles in the Defendants’ possession, custody or power, the change of the names of the three corporate Defendants, and the relief regarding damages that is described at paragraph 3 above.
B. Preliminary Issue
[26] The Defendants maintain that the issue of the Plaintiff’s right to terminate the Disputed Distribution Agreements needs to be determined in the Alberta Action before the Plaintiff’s allegations in this Court can be addressed. In support of this position, they assert that if they are successful with their position that Disputed Distribution Agreements have not been legitimately terminated, “then a license has been in place for the entire period of time at issue, and there can be no trademark infringement.” I disagree.
[27] During the hearing of this Motion, the Plaintiff represented to the Court that it is not alleging any infringements under the Trademarks Act or the Copyright Act in the Alberta Action. It added that the present Motion is limited to the Defendants’ use of the trade names that include the words “TECHNO PILES,” and that it has not made any allegations regarding the Defendants’ use of those trade names in the Alberta Action. These representations were not contested by the Defendants.
[28] With one exception, the references to the words “TECHNO PILES” in the Alberta Action pleadings have nothing to do with the allegations and representations made before this Court. The one exception pertains to the Defendants’ position that Techno Piles Inc. is a dormant company. In addition, the only references to the words “trademark” or “trademarks” refer to the Plaintiff’s trademarks. They do not relate to the TECHNO PILES trade names/marks that are the focus of the proceeding in this Court.
[29] Notwithstanding the foregoing, the Defendants maintain that the issue of whether they have the right to use TECHNO PILES as a trade name or trademark remains a contractual interpretation issue that ought to be determined in the Alberta Action, together with the other contractual issues that the Plaintiff brought before that Court. In support of this position, they note that the Plaintiff’s Statement of Claim in the Alberta Action references sections 6.3 and 6.5 of the Disputed Agreements. Those sections state:
6.3 All of the Dealer’s business vehicles shall be painted in the White Color with approved trademark lettering from [Techno-Pieux Inc.]
…
6.5 The dealer [sic] recognizes that valuable goodwill is associated with these trademarks, and, consequently, the Dealer agrees to use said trademarks in any manner, provided that the trademark is not altered in any way, shape or form, and is expressly authorized by TPI.
[30] However, the foregoing provisions are mentioned in the Statement of Claim filed in that proceeding solely as part of an overview of the Disputed Distribution Agreements. There is no mention of them, or of the words “trademark,” or “trademarks,” in the sections of the Statement of Claim dealing with the alleged breaches of the agreements between the parties, or the relief sought. The Statement of Claim also does not mention the word “copyright”. For greater certainty, there are no references to the Trademarks Act or the Copyright Act.
[31] The Defendants further maintain that the Disputed Distribution Agreements do in fact provide the right to use the TECHNO PILES trade name and trademark, “either through the interpretation of the contractual license, or as mitigation based on the Plaintiff’s contractual breach.” They therefore assert that this Court should wait for the Alberta Court to address this issue, before dealing with the present Motion. However, once again, there is no reference whatsoever to this allegation in the pleadings in the Alberta Action that are attached at Exhibits C, D and E, respectively, to Ms. Bertram’s Affidavit in this proceeding [the Bertram Affidavit]. Indeed, this alleged right is not apparent from a plain reading of the Disputed Distribution Agreements.
[32] Even if, as the Defendants assert, the general issue of their need to take mitigation measures in the face of the Plaintiff’s purported termination of the Disputed Distribution Agreements is before the Alberta Court of Queen’s Bench, it does not appear that this extends to the narrower issues that have been raised on this Motion. Those issues concern the Defendants’ use of trademarks, trade names, logos and designs that are alleged to violate the Trademarks Act and the Copyright Act. It is one thing to mitigate one’s losses by rebranding. It is quite another to do so in a manner that may be found to have violated the Trademarks Act and/or the Copyright Act.
[33] I agree with the Plaintiff that it cannot reasonably be suggested that the Disputed Distribution Agreements permit or contemplate the use of the TECHNO PILES trade names, marks, logo or design.
[34] Consequently, I do not see material scope for potential overlap between the issues that have been raised in the Alberta Action and those that have been raised on the present Motion. It follows that I also do not see material scope for potentially inconsistent decisions to be made in the two proceedings.
[35] Having regard to the foregoing, I disagree with the Defendants’ position that the present Motion cannot be considered before the contractual disputes that are at issue in the Alberta Action have been determined. For greater certainty, I consider that the issues raised on this Motion can be determined without having to address any of the contractual interpretation issues that are in dispute in the Alberta Action, and without having to address sections 6.3 and 6.5 of the Disputed Distribution Agreements.
[36] I will pause to observe that, on cross-examination on her affidavit, Ms. Bertram acknowledged that the Plaintiff never gave permission to the Principal Corporate Defendants to operate as TECHNO PILES.
C. Analysis
(1) The Test for Summary Judgment
[37] The Court may grant summary judgment where it is satisfied that there is no genuine issue for trial: Rule 215(1). This test must be interpreted broadly, favouring proportionality and fair access to the affordable, timely and just adjudication of claims that have been made: Hryniak v Mauldin, 2014 SCC 7 at para 5 [Hryniak].
[38] Where the Court is able to make the necessary findings of fact, apply the law to those facts, and achieve a fair and just determination on the merits, it would ordinarily be appropriate to grant a Motion for summary judgment: Hryniak, above, at paras 4 and 49. [1] In this regard, the standard for fairness is not whether the procedure is as exhaustive as a trial, but whether it gives the Court confidence that it can make the requisite factual findings and apply the relevant legal principles so as to resolve the dispute: Hryniak, above, at para 50.
[39] This will be the case when the Court is satisfied that “the case is clearly without foundation, or is so doubtful that it does not deserve consideration by the trier of fact at a future trial”: Canmar Foods Ltd. v TA Foods Ltd., 2021 FCA 7 at para 24 [Canmar].
[40] Although the burden falls on the moving party, both parties must put their best foot forward. Among other things, this requires the responding party to “come up with specific facts showing that there is a genuine issue for trial”: Canmar, above, at para 27
(2) Trademark Infringement (s. 20(1)(a))
(a) Introduction and Applicable Legal Principles
[41] In its Motion, the Plaintiff seeks a declaration that the Defendants have infringed and are deemed to have infringed its Registered Marks, contrary to sections 19 and 20 of the Trademarks Act. In furtherance of that request, the Plaintiff’s written submissions focus on its allegation that the TECHNO PILE tradenames/marks are confusingly similar to the Registered Marks, as contemplated by section 20(1)(a) of that legislation. The Plaintiff has not alleged that those tradenames/marks are identical to the Registered Marks, as required by section 19: Sandhu Singh Hamdard Trust v Navsun Holdings Ltd., 2019 FCA 295 at para 20 [Sandhu]. Consequently, the focus of the discussion below will be on section 20(1)(a). [2] The full text of section 20(1)(a) and the other provisions discussed below is set forth in Appendix 1 hereto.
[42] Paragraph 20(1)(a) deems the exclusive right to use a registered trademark throughout Canada to be infringed by any person who is not entitled to use that trademark and who sells, distributes or advertises any goods or services in association with a confusing trademark or trade name.
[43] In considering whether a trademark or trade name is confusing, section 6 of the legislation provides some important parameters. In particular, subsection 6(2) states as follows:
Confusion – trademark with other trademark
Marque de commerce créant de la confusion avec une autre
6 (2) The use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.
6 (2) L’emploi d’une marque de commerce crée de la confusion avec une autre marque de commerce lorsque l’emploi des deux marques de commerce dans la même région serait susceptible de faire conclure que les produits liés à ces marques de commerce sont fabriqués, vendus, donnés à bail ou loués, ou que les services liés à ces marques sont loués ou exécutés, par la même personne, que ces produits ou services soient ou non de la même catégorie générale ou figurent ou non dans la même classe de la classification de Nice.
[44] Subsection 6(3) articulates essentially the same test with respect to confusion caused by the use of a trademark, relative to an existing trade name. The same is true regarding subsection 6(4), albeit in relation to the confusion caused by the use of a trade name, relative to an existing trademark.
[45] The factors to be assessed in determining whether trademarks or trade names are confusing are set forth in subsection 6(5), which states as follows:
What to be considered
Éléments d’appréciation
6 (5) In determining whether trademarks or trade names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including
6 (5) En décidant si des marques de commerce ou des noms commerciaux créent de la confusion, le tribunal ou le registraire, selon le cas, tient compte de toutes les circonstances de l’espèce, y compris :
(a) the inherent distinctiveness of the trademarks or trade names and the extent to which they have become known;
a) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus;
(b) the length of time the trademarks or trade names have been in use;
b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage;
(c) the nature of the goods, services or business;
c) le genre de produits, services ou entreprises;
(d) the nature of the trade; and
d) la nature du commerce;
(e) the degree of resemblance between the trademarks or trade names, including in appearance or sound or in the ideas suggested by them.
e) le degré de ressemblance entre les marques de commerce ou les noms commerciaux, notamment dans la présentation ou le son, ou dans les idées qu’ils suggèrent.
[46] Some of the foregoing factors may not be particularly relevant in a specific case. In any event, their weight will vary with “all the surrounding circumstances”: Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 at para 27 [Veuve Clicquot].
[47] In considering the relevant factors and the other surrounding circumstances, the Court’s perspective must be that of a casual consumer, somewhat in a hurry. More specifically:
The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the name [TECHNO PILES on the Defendants’] storefront or invoice, at a time when he or she has no more than an imperfect recollection of the [Techno-Pieux/Techno Metal Post] trade-marks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks.
Veuve Clicquot, above, at para 20.
[48] Stated differently, the issue to be determined is whether, as a matter of first impression, the “casual consumer somewhat in a hurry” who sees the TECHNO PILES tradenames/marks would likely be confused. In making this determination, it should be assumed that the consumer in question has the additional attributes described in the passage quoted immediately above: see also Masterpiece Inc. v Alavida Lifestyles Inc., 2011 SCC 27 at paras 40–41 [Masterpiece].
[49] For greater certainty, the relevant consumer is the consumer in the market in question. Where, as in the present case, the goods and services are expensive or important, the Court must be alive to the possibility that the relevant consumer may “be somewhat more alert and aware of” the defendant’s marks: Masterpiece, above, at paras 69–70. Nevertheless, that consumer must still be considered to have the attributes described in the two immediately preceding paragraphs. The fact that they may be likely to engage in subsequent careful research and deliberation to dispel any confusion that may have arisen on first impression is not germane: Masterpiece, above, at paras 72–73.
[50] The relevant confusion is with respect to the source of the goods in question, rather than with respect to the trademarks, trade names, or goods that are being used in association with the trademark(s) being asserted: Masterpiece, above, at paras 41, 67, 73 and 104–105.
[51] The evidentiary burden is upon the Plaintiff to establish a likelihood – rather than a mere possibility – of confusion, on a balance of probabilities: Loblaws Inc. v Columbia Insurance Company, 2019 FC 961 at para 44 [Loblaws], aff’d 2021 FCA 29; Toys “R” Us (Canada) Ltd. v Herbs “R” Us Wellness Society, 2020 FC 682 at para 6 [Toys “R” Us]. However, it is not necessary for the Plaintiff to demonstrate actual confusion: Mattel, Inc. v 3894207 Canada Inc., 2006 SCC 22 at paras 55 and 89 [Mattel]; Veuve Clicquot, above, at para 6.
[52] In Masterpiece, it was suggested that an assessment of the various factors set forth in subsection 6(5) of the Trademarks Act should begin with the “degree of resemblance” factor set forth in paragraph 6(5)(e). This is because “if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion”: Masterpiece, above, at para 49.
(b) Degree of resemblance (s. 6(5)(e))
[53] An assessment of the degree of resemblance between the disputed marks and trade names must include the appearance and sound of these words, as well as the ideas suggested by them: Trademarks Act, s 6(5)(e).
[54] The Plaintiff submits that there is a high degree of resemblance between the following design marks:
[55] In addition, the Plaintiff maintains that the words TECHNO PILES are strikingly similar to its registered word marks TECHNO PIEUX and TECHNO METAL POST.
[56] In response, the Defendants submit that the “casual consumer somewhat in a hurry” is unlikely to consider their tradename and logo to resemble the Plaintiff’s Registered Marks to a degree that might be potentially confusing. In support of this position, the Defendants rely on three arguments.
[57] First, they assert that the prefix “Techno” is used too commonly to be distinctive. In support of this position, they rely on Ms. Bertram’s evidence that hundreds of registered marks in Canada use the term “Techno,” and that some competitors in the helical piles market use the term “Tech” or “tech” in their names and logos. These include Postech and Goliath Tech. However, the Defendants have not provided any evidence of any trademarks or trade names, registered or otherwise, that contain the word “Techno” and are used in connection with the sale of helical piles in Canada or the other products at issue in this proceeding. Indeed, Ms. Bertram conceded that she did not know what those other marks were registered for.
[58] I do not accept the Defendants’ position that the term “Tech” is highly similar to the term “Techno”. In my view, the casual consumer in this market who is somewhat in a hurry is likely to consider the term “Techno” to be distinctive, even in relation to the word “Tech”, at least as a matter of first impression. As such, the fact that the disputed trademarks/trade names both contain the term TECHNO is a factor that weighs in favour of a finding of likely confusion, even in an industry where the term “Tech” is used by some market participants.
[59] Second, the Defendants submit that the terms “Metal Post” and “Pile” are widely used by numerous competitors of the parties, and that they mean the same thing as the French term “Pieux”. Consequently, they maintain that this consideration weighs in favour of placing little weight on the similarity of the words in the confusion analysis. They state that this is particularly so given the widespread use of the helical pile imagery in the industry. In my view, these considerations do not assist the Defendants at this stage of the analysis. That is to say, they do not weigh in favour of the Defendants in the assessment of the degree of resemblance between their marks/names and the Plaintiff’s Registered Marks, as contemplated by section 6(5)(e).
[60] Third, the Defendants state that the terms “Metal Post”, “Pile” and “Pieux” are sufficiently different to preclude any likelihood of confusion for the average consumer in a hurry, especially in light of the differences in languages used.
[61] I accept that the differences in appearance and sound between, on the one hand, the terms “Pieux” and “Metal Post”, and on the other hand “Pile”, weigh in favour of the Defendants. However, for the purposes of the assessment contemplated by section 6(5)(e), two other factors tip the balance in favour of the Plaintiff. These are: (i) the fact that the first word in the parties’ trademarks/trade names (TECHNO) is identical and particularly striking: Masterpiece, above, at paras 63–64; and (ii) the ideas suggested by the remaining words in those trademarks/trade names are also identical. In this latter regard, as noted above, the Defendants acknowledge that those words all mean the same thing. They also recognize that the term “Pieux” has “a strong French ‘flavor’.” Consequently, the average consumer in this market who is in a hurry may very well (correctly) assume that “Pile” means “Pieux”, and that therefore the disputed trademarks/trade names have the same source.
[62] These considerations distinguish the case at bar from the situation that existed in Compulife Software Inc. v Compuoffice Software Inc., 2001 FCT 559 at paragraph 33, where the Court found that the differences in the suffixes were such as to make it unlikely that purchasers of COMPULIFE or COMPUOFFICE software products would be confused as to the source of those products, notwithstanding the identical “COMPU” prefixes. Likewise, for the reasons discussed above, the situation at hand is also distinguishable from the dispute in Ikea Ltd./Ikea Ltée v Idea Design Ltd. (1987), 13 CPR (3d) 476 at 477–478. There, the Court found that the letter “k” in the term IKEA gave that mark a very strong Scandinavian flavour, such that consumers seeing the defendant’s IDEA mark or design would not likely be confused. There is no similarly distinctive visual, phonetic or other difference in the present case that would tip the balance in favour of the Defendants.
[63] For greater certainty, the fact that the Plaintiff uses its TECHNO METAL POST marks, rather than its TECHNO PIEUX marks, in the region of the country where the Defendants operate is of little consequence: Masterpiece, above, at para 30. This is because the Court is required to consider the hypothetical scenario in which the Defendants’ trademarks/trade names are being used in the same area as the Plaintiff’s Registered Marks: Trademarks Act, ss 6(2)–(4).
[64] In summary, for the reasons provided above, I consider that a casual consumer who is somewhat in a hurry and has an imperfect recollection is likely to perceive the disputed trademarks/trade names to have a degree of resemblance that is confusing. This finding weighs in favour of the Plaintiff. For greater certainty, there is no genuine issue for trial in respect of this factor.
(c) The inherent distinctiveness of the trademarks or trade names and the extent to which they have become known (s. 6(5)(a))
[65] The Plaintiff concedes that the terms “Pieux” and “Metal Post” are descriptive of its products. However, it maintains that, taken as a whole, each of the Registered Marks is distinctive because of (i) the presence of the striking first word “TECHNO”, and (ii) in the case of its design logos, the combination of that word and its original helical post design. The Plaintiff adds that its Registered Marks have also become known internationally, and have acquired distinctiveness over time.
[66] The Defendants disagree. They assert that the Registered Marks are generic, descriptive, lack inherent distinctiveness, and have not acquired any distinctiveness over time.
[67] In support of their position, the Defendants assert that the use of the word TECHNO, in conjunction with the words “METAL POST” or “PIEUX”, conveys an impression to consumers that the Plaintiff provides piles or metal posts, and/or services related to piles or metal posts, through the use of technology. As such, those words are merely descriptive.
[68] I disagree. In my view, the word “TECHNO” has a certain degree of distinctiveness in connection with the goods and services for which the Registered Marks are registered. I consider this degree of distinctiveness to be greater, and less descriptive, than what this Court found to be the case in respect of both (i) the term SUPERWASH, as used in connection with certain washable wool products ; and, (ii) the term SUPERSET, as used in connection with telephones: Wool Bureau of Canada Ltd. v Canada (Registrar of Trademarks) (1978), 40 CPR (2d) 25; Mitel Corporation v Canada (Registrar of Trademarks) (1984), 79 CPR (2d) 202.
[69] I acknowledge that the terms “TECH”, “TECHNO”, “METAL POST” and “PIEUX” may be widely used in the broader construction industry. However, there is no evidence that anyone other than the Plaintiff uses or has used the word “TECHNO” in combination with either “METAL POST” or “PIEUX”, and in relation to goods and services for which the Registered Marks were registered: McDowell v Laverana GmbH & Co. KG, 2017 FC 327 at paras 43–46; Eclectic Edge Inc. v Gildan Apparel (Canada) LP, 2015 FC 1332 at paras 82–84. As discussed above, I consider the word “TECHNO” to have a degree of strikingness, particularly given that it is the first word in the Registered Trademarks. This strikingness is not likely to be materially reduced by virtue of the fact that some of the parties’ competitors use the words “Tech”, “Technology” or “Technologies” in their trademarks or trade names. My finding in this regard is reinforced by Ms. Bertram’s statement, when cross-examined on her affidavit, that when she was a distributor for the Plaintiff, she considered the “brand” to be “Techno”, as opposed to the full name of the company: Bertram Cross-Examination Transcript, November 22, 2021, at 109.
[70] I also disagree with the Defendants’ position that the Registered Marks have not acquired any distinctiveness over time. In my view, the evidence of the Plaintiff’s substantial sales, combined with the extensive advertising and promotion activities that it and its distributors have made over many years, reasonably supports the conclusion that the Registered Marks have acquired meaningful distinctiveness over time: H-D U.S.A., LLC v Varzari, 2021 FC 620 at para 26; Toys “R” Us, above, at paras 24 and 27; Micro Focus (IP) Limited v Information Builders Inc., 2014 FC 632 at para 5.
[71] Among other things, the evidence demonstrates the following:
i. The Plaintiff’s total global revenues for goods and services associated with the Registered Marks have grown consistently over the course of the last several years, from over $16 million to over $32 million. During this period, its total Canadian revenues have also grown consistently, from over $11.5 million to over $18 million; and its revenues within Alberta have grown from over $600,000 to over $1.6 million.
ii. Over the same period, the Plaintiff’s total marketing and advertising expenditures have consistently increased, from over $350,000 to over $660,000. Those expenditures include advertisements in magazines and newspapers, as well as on radio stations.
iii. The Registered Marks have been prominently displayed on the Plaintiff’s website since at least 2002;
iv. The Registered Marks have been prominently featured on the Plaintiff’s Facebook page since early 2010. As of October 18, 2021, that Facebook page had 5,911 “followers”.
v. The Registered Marks have also been displayed in association with the Plaintiff’s products on its Instagram account and on its Twitter page, which had 555 and 195 “followers”, respectively, as of October 18, 2021.
vi. The Plaintiff has also advertised and promoted its products in association with the Registered Marks on its YouTube account, which has been active since March 2010.
vii. TMP Fort McMurray gained significant business at trade shows and from advertising on its trucks (using one or more of the Registered Marks), while it was a distributor for the Plaintiff.
[72] Turning to the Defendants’ TECHNO PILES trademarks/trade names, there is no material evidence of their inherent or acquired distinctiveness, relative to the Registered Marks. As is self-evident, the word TECHNO is identical in all of the disputed marks, and it appears to be common ground that the word PILES is merely descriptive – for the same reason that the words METAL POST and PIEUX are descriptive.
[73] Having regard to all of the foregoing, I find that the factor of inherent/acquired distinctiveness weighs in favour of the Plaintiff. For greater certainty, there is no genuine issue for trial in respect of this factor.
(d) The length of time the trademarks or trade names have been in use (s. 6(5)(b))
[74] As previously indicated, the Plaintiff has used its TECHNO METAL POST word mark (TMA596228) since 2003. It has also used its two design marks (TMA562798 and TMA638884) since 2002 and 2005, respectively, in connection with the registered goods and services. In addition, it has used its TECHNO PIEUX word mark (TMA950281) since 2016.
[75] By comparison, the Defendants have only used their TECHNO PILES marks in the marketplace since approximately May 2021. [3]
[76] The Defendants maintain that any distinctiveness the Registered Marks may have had in the past has been eroded over time to the point that the weight given to the length of time in use should be reduced. In support of this position, they reiterate their argument that the word TECHNO is used by several other companies in the broader construction industry, while marks using highly similar words such as “Tech” and “Technology” are used by multiple competitors in the “screw pile sub-industry”. For essentially the same reasons provided at paragraphs 68-69 above, I reject this argument. For those same reasons, I do not accept the Defendants’ suggestion that the Plaintiff’s failure to take action against those competitors and against participants in the broader construction industry who use the term “Techno”, should give rise to a finding that the Registered Marks have lost any distinctiveness that they may have had in the past.
[77] Given the foregoing, this factor favours the Plaintiff. For greater certainty, there is no serious issue to be tried in connection with this factor.
(e) The nature of the goods, services or business (s. 6(5)(c))
[78] The Plaintiff maintains that the goods and services sold, offered for sale, and advertised by it and by the Defendants are effectively the same.
[79] In her affidavit, Ms. Bertram acknowledged that the Principal Corporate Defendants offer the following goods in respect of which the Plaintiff’s TECHNO METAL POST word mark and its two design marks are registered: “Foundations pillars, foundations posts, foundations stake, foundations piles”. She also acknowledged that those Defendants provide the following engineering services in respect of which all four of the Plaintiff’s Registered Marks are registered: “Engineering services in the design of foundations and performance of test for foundations”: see generally paragraphs 7–8 above.
[80] Accordingly, it is common ground that there is direct overlap among the parties in respect of a broad range of the goods and services in association with which the Registered Marks are registered.
[81] This direct and broad overlap is a factor that weighs in favour of the Plaintiff. This is so despite the fact that this overlap does not extend to the goods for which the TECHNO PIEUX word mark is registered (see paragraph 9 above), and may not extend to “instruments to determine the load-bearing capacity of foundations, footings and piles”: see paragraph 8 above.
[82] For greater certainty, there is no serious issue to be tried in connection with this factor.
(f) The nature of the trade (s. 6(5)(d))
[83] The Plaintiff submits that this factor weighs in its favour because the allegedly infringing goods and services of the Principal Corporate Defendants are offered and sold in the same channels of trade as its own goods and services. The Plaintiff maintains that this is so because the parties’ respective goods and services are targeted and sold to the same end consumers, namely, builders and contractors who require helical piles and/or installations for their construction projects.
[84] In response, the Defendants maintain that this factor weighs in their favour and should be given significant weight. In support of this position, they state that the Plaintiff sells its products primarily to dealers who deal exclusively in those products. They add that those “customers” are unlikely to ever be confused about the source of