Techno-Pieux Inc. v. Techno Piles Inc.

Techno-Pieux Inc. v. Techno Piles Inc.
Court (s) Database
Federal Court Decisions
Date
2023-04-24
Neutral citation
2023 FC 581
File numbers
T-969-21
Decision Content
Date: 20230424
Docket: T-969-21
Citation: 2023 FC 581
Ottawa, Ontario, April 24, 2023
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
ORDER AND REASONS
Table of Contents
I. Introduction 1
II. The Parties and Their Disputed Marks/Copyrighted Works 2
A. Techno-Pieux 2
B. The Defendants 4
III. Procedural Background 5
IV. Factual Background 6
V. Issues 8
VI. Analysis 8
A. Trademark Infringement 8
(1) Introduction and Applicable Legal Principles 9
(2) Degree of resemblance (s. 6(5)(e)) 14
(3) The inherent distinctiveness of the trademarks or trade names and the extent to which they have become known (s. 6(5)(a)) 15
(4) The length of time the trademarks or trade names have been in use (s. 6(5)(b)) 17
(5) The nature of the goods, services or business (s. 6(5)(c)) 18
(6) The nature of the trade (s. 6(5)(d)) 20
(7) Additional relevant surrounding circumstances 30
(8) Summary and conclusion regarding confusion and the alleged deemed infringement 32
B. Depreciation of Goodwill 33
(1) Introduction 33
(2) The first two elements of the test 35
(3) The third element of the test 37
(4) The fourth element of the test 38
(5) Conclusion regarding depreciation of goodwill 41
C. Passing Off 41
D. Copyright Infringement 45
(1) Applicable legal principles 45
(2) Assessment 47
E. Personal Liability of the Individual Defendants 56
(1) Applicable principles and introduction 56
(2) The Parties’ positions 58
(3) Assessment 60
F. Techno Piles Inc. 62
VII. Remedies 64
A. Declaratory, Injunctive and Mandatory Relief 64
B. Damages 65
(1) Trademark infringement 66
(2) Copyright infringement 72
(3) Summary 76
VIII. Costs 76
APPENDIX 2: RELEVANT STATUTORY PROVISIONS 81
I. Introduction [1] In this Motion for summary trial, the Plaintiff, Techno-Pieux Inc. [Techno-Pieux], seeks a broad range of declaratory, injunctive, and mandatory relief against the Defendants in relation to alleged infringements of the Plaintiff’s trademark rights and copyright. The Plaintiff also seeks $40,000 in damages.
[2] Regarding declaratory relief, the Plaintiff seeks declarations that the Defendants have:
infringed and are deemed to infringe its rights in the Registered Marks, as defined below, contrary to sections 19 and 20 of the Trademarks Act, RSC 1985, c T-13 (the “TM Act”);
used the Registered Marks in a manner likely to have the effect of depreciating the value of the goodwill attached thereto, contrary to section 22 of the TM Act;
directed attention to their goods, services and business in such a way as to cause or be likely to cause confusion in Canada between the Defendants’ goods, services and business and those of the Plaintiff, contrary to paragraph 7(b) of the TM Act;
infringed and are deemed to have infringed the Plaintiff’s Copyrighted Works, as defined below, contrary to sections 3 and 27 of the Copyright Act, RSC 1985, c C-42.
[3] For the reasons set forth below, I find that the corporate Defendants are deemed to have infringed the Plaintiff’s rights in the Registered Marks, contrary to paragraph 20(1)(a) of the TM Act. I also find that those Defendants have contravened section 22 and paragraph 7(1)(b) of the TM Act. In addition, I find that those Defendants have infringed certain of the Plaintiff’s Copyrighted Works. Accordingly, I will grant the declaratory, injunctive, and mandatory relief sought by the Plaintiff, except in relation to one of the Plaintiff’s Copyrighted Works, which I find has not been infringed. I will also order the corporate Defendants to pay $30,000 in damages.
II. The Parties and Their Disputed Marks/Copyrighted Works A. Techno-Pieux [4] 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.
[5] Techno-Pieux is the owner of the following registered Canadian Trademarks [the Registered Marks]:
Table 1 – The Plaintiff’s Trademarks
[6] The first three of the above-mentioned marks are registered in respect of the following goods and services (the “Relevant 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.
[7] The fourth mark in Table 1, “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, this fourth mark will not be further discussed in respect of the Relevant Goods and Services.
[8] The Plaintiff also asserts copyright in the Techno-Pieux logo (TMA562798), the Techno Metal Post logo (TMA638884), and the following post design [collectively, the Copyrighted Works]:
[9] 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.
[10] In Alberta, Techno-Pieux operates through its affiliate Techno Metal Post Alberta Inc., which sells its goods and services to licensees and distributors in that province.
B. The Defendants [11] Techno Metal Post Medicine Hat Inc. [TMP Medicine Hat] is an Alberta-based company that began distributing the Plaintiff’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 (the “Individual Defendants”). Since that time, they have owned and operated that entity, as the sole shareholders, directors, executives, and employees (with one unimportant exception), although they also work with independent contractors.
[12] Techno Metal Post Fort McMurray Inc. [TMP Fort McMurray] is an Alberta-based company that began distributing the Plaintiff’s goods and services soon after the latter’s 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.
[13] TMP Fort McMurray and TMP Medicine Hat are collectively referred to below as the “Principal Corporate Defendants.”
[14] 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. Procedural Background [15] This Motion for summary trial was filed after I dismissed the Parties’ respective Motions for summary judgment in May of last year: Techno-Pieux Inc v Techno Pile Inc, 2022 FC 721 (the “Summary Judgment Decision”).
[16] In the Summary Judgment Decision, I found in favour of the Plaintiff with respect to four of the five specific factors that must be considered pursuant section 6(5) of the TM Act, in considering whether the disputed trademarks or trade names are confusing. Indeed, I found that the Plaintiff had established that there was no genuine issue for trial in respect of those four factors. However, given my inability to reach a similar conclusion with respect to the fifth factor (the “nature of the trade”), as well as “all of the surrounding circumstances” mentioned in section 6(5), I considered it appropriate to order a summary trial.
[17] I reached the same conclusion with respect to the other issues in the underlying action in this proceeding, namely, the Plaintiff’s allegations concerning depreciation of goodwill contrary to section 22 of the TM Act, passing off contrary to sections 7(b) and 7(d) of the TM Act, copyright infringement, the liability of the Individual Defendants, and the liability of Techno Piles Inc. Likewise, my order for a summary trial also applied to the Defendants’ counterclaims.
[18] In the intervening period, the Plaintiff’s claim pursuant to section 7(d) of the TM Act, together with the Defendants’ counterclaims, have been discontinued.[1]
[19] The Parties agree that a summary trial is the appropriate manner in which to resolve the Plaintiff’s claims.
IV. Factual Background [20] The relevant factual background to this proceeding is summarized in the following passage of the Summary Motion Decision:
[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.
[19] 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.
[20] 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.
V. Issues [21] The issues to be determined on this Motion are as follows:
Have the Defendants infringed, or are they deemed to have infringed, the Registered Marks, contrary to sections 19 and 20 of the TM Act?
Have the Defendants used the Registered Marks in a manner that is likely to have the effect of depreciating the value of the goodwill attached thereto, contrary to section 22 of the TM Act?
Have the Defendants directed attention to their goods, services and business in such a way as to cause or 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 TM Act?
Have the Defendants infringed upon the Copyrighted Works, contrary to sections 3 and 27 of the Copyright Act?
Are the Individual Defendants, Mathieu Bergevin and Ronda Bertram, liable?
Is the corporate defendant Techno Piles Inc. liable?
What, if any, relief is appropriate?
VI. Analysis A. Trademark Infringement (1) Introduction and Applicable Legal Principles [22] As noted above, the Plaintiff seeks declarations with respect to both section 19 and section 20 of the TM Act. However, the Plaintiff’s written submissions focus on its allegation that the TECHNO PILES/Techno Piles trademarks/trade names are confusingly similar to the Registered Marks, as contemplated by section 20(1)(a). The Plaintiff has not alleged that those trademarks/trade names 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 2 below.
[23] In the Summary Judgment Decision, I described the legal principles applicable to an assessment of trademark infringement as follows:
[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.
[24] Based on the findings I made in the Summary Judgment Decision in favour of the Plaintiff in connection with paragraphs 6(5)(a), (b), (c) and (e) of the TM Act, the Parties made only “limited submissions” in the present Motion in respect of those factors: see para 16 above. To the extent that those submissions simply repeat prior submissions that have already been addressed, they are not appropriate. They represent an attempt to relitigate matters that were decided upon when I found that there was no genuine issue for trial in respect of those matters. This also applies to the Defendants’ attempt to introduce new evidence that could have reasonably been obtained before the Motion for summary judgment by the exercise of reasonable diligence.
[25] The Court’s findings in respect of paragraphs 6(5)(a), (b), (c) and (e) will not be revisited. In my view, the same principles that apply to a grant of summary judgment (see e.g., Gemak Trust v Jempak Corporation, 2022 FCA 141, at para 73, citing Milano Pizza Ltd v 6034799 Canada Inc, 2018 FC 1112, at para 40) also apply to findings made on particular issues that may have been adjudicated during a Motion for summary judgment. If it were otherwise, the Court’s effort to streamline the Parties’ dispute for this Motion for summary trial would be significantly undermined. The same would be true of the Court’s attempt to secure the just, most expeditious, and least expensive outcome for the Parties, having regard to the principle of proportionality: Rule 3, Federal Courts Rules, SOR/98-106, as amended (the “Rules”).
[26] Notwithstanding the above, I fully intend to conduct a global assessment of all of the factors set out in subsection 6(5) of the TM Act, as well as “all the surrounding circumstances”, in reaching my determination with respect to the issue of confusion contemplated by paragraph 20(1)(a) and subsection 6(5): Loblaws Inc v Columbia Insurance Company, 2021 FCA 29, at para 11, citing Masterpiece, above, at para 49; Sandhu, above, at paras 25-28, However, in doing so, I will have regard to my prior findings in respect of paragraphs 6(5)(a), (b), (c) and (e), which are summarized below.
[27] I will pause to observe in passing that the new evidence tendered by the Defendants is not such as to warrant different findings in respect of the four factors mentioned above, in any event.
(2) Degree of resemblance (s. 6(5)(e)) [28] The Plaintiff submits that there is a high degree of resemblance between the following design marks:
Table 2 – Comparison of the disputed design marks
[29] For the reasons set forth at paragraphs 58-64 of the Summary Judgment Decision, I found 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.
[30] The Defendants maintain that this factor should be given little weight in the overall determination of whether the disputed marks are confusingly similar, for three reasons. First, they assert that any degree of resemblance between the disputed marks is no different than the degree of resemblance that the Registered Marks have with any other screw pile business logo, including 15 logos reproduced in Table 1 of their written submissions. Second, they state that terms like “piles” and “metal post” are widely used in the helical piles business. Third, they state that stylized piles are commonly used in competitors’ logos, as set forth in their Table 1.
[31] I disagree. The similarity between the disputed marks is much greater than any similarity that may be said to exist between the Registered Marks and other marks that have been identified in this proceeding, including those included at Table 1 of the Defendants’ submissions. This is because, among other things, the first word in the disputed marks (TECHNO) is identical and particularly striking: Masterpiece, above, at paras 63–64. In addition, the ideas suggested by the remaining words in those trademarks/trade names are also identical. In this latter regard, the Defendants acknowledged that those words all mean the same thing. They also recognized 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.
[32] Given the foregoing, I consider that this factor merits significant weight in the overall assessment. This is so notwithstanding the facts that the terms “piles” and “metal post” may be widely used in the helical piles business, and that stylized piles are commonly used in that business.
(3) The inherent distinctiveness of the trademarks or trade names and the extent to which they have become known (s. 6(5)(a)) [33] In the Summary Judgment Decision, I found that the word “TECHNO” has a certain degree of distinctiveness in connection with the Relevant Goods and Services. Among other things, this was because that word is striking in the context of being the first word in the Registered Marks. I further found that 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. I added that my finding in this regard was 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: Summary Judgment Decision, above, at paragraph 69.
[34] In addition to the foregoing, I found that 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: Summary Judgment Decision, above, at para 70. Moreover, I found that there was no material evidence of the inherent or acquired distinctiveness of the Defendants’ TECHNO PILES trademarks/trade names, relative to the Registered Marks: Summary Judgment Decision, above, at para 72.
[35] On the present Motion, the Defendants invite me to reconsider the foregoing findings. To the extent that they rely on essentially the same arguments and evidence that they relied upon in their Motion for summary judgment, I fail to ascertain any sound basis for reaching a different conclusion. For greater certainty, this includes the Defendants’ arguments and new evidence regarding the widespread use of the prefixes or terms “TECHNO”, “TECH”, “METAL POST”, “POST” and “PIEUX” in the broader construction industry. In brief, 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 the Relevant Goods and Services: Summary Judgment Decision, above, at para 69.
[36] Having regard to all of the foregoing, I find that the factor of inherent/acquired distinctiveness weighs in favour of the Plaintiff. Nevertheless, on the very particular facts of this case, I consider that this factor merits only moderate weight. This is partially because there is some evidence that at least some customers do not remember the full name “Techno Metal Post”. In addition, the terms “Pieux” and “Metal Post” are descriptive of the Plaintiff’s products. Moreover, the Plaintiff declined to provide evidence, such as Google analytics, to demonstrate the effectiveness of its extensive advertising and promotional activities over its website and social media platforms.
(4) The length of time the trademarks or trade names have been in use (s. 6(5)(b)) [37] 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.
[38] By comparison, the Defendants have only used their TECHNO PILES marks in the marketplace since approximately May 2021.[3]
[39] In the Summary Judgement Decision, I found that the foregoing facts weighed in favour of giving this factor a positive weighting in favour of the Plaintiff, despite certain arguments made by the Defendants to the contrary: Summary Judgment Decision, at paras 74-77. While the Defendants continue to advance those same arguments, I maintain my position.
(5) The nature of the goods, services or business (s. 6(5)(c)) [40] In the Summary Judgment Decision, I found that there is direct overlap among the Parties in respect of a broad range of the Relevant Goods and Services. As a result, I found that “the nature of the goods, services or business” factor weighs in favour of the Plaintiff. This is so despite the fact that the overlap does not extend to the goods for which the TECHNO PIEUX word mark is registered, and may not extend to “instruments to determine the load-bearing capacity of foundations, footings and piles”: Summary Judgment Decision, at paras 78 – 81.
[41] The Defendants now maintain that there is a distinct difference between the goods and services associated with the disputed marks. However, they do not explain how this is so. In any event, this is inconsistent with positions they take in connection with the Plaintiff’s allegation of depreciation of goodwill. Specifically, at paragraph 76 of their written submissions, they state as follows:
[76] … The products and services offered by the TMP Defendants were, and remain, functionally identical goods and services to those that they offered for years under the Plaintiff" s banner with the Plaintiff's blessing.
[42] At paragraph 80 of those submissions, the Defendants add that they “use supports made to the same technical specifications as the Plaintiff does.”
[43] Having regard to the foregoing, I do not accept the Defendants’ bald assertion that there are meaningful differences between the goods and services associated with the disputed marks, for the purposes of the present analysis.
[44] The Defendants further maintain that confusion with respect to the source of the disputed marks is unlikely because the Plaintiff has not had a dealer in the primary areas of operation (Medicine Hat and Fort McMurray) of the Principal Corporate Defendants, during what they consider to be the relevant timeframe – namely between May 2021 and May 2022.[4] However, the “geographical separation in the use of otherwise confusingly similar trade-names and trade-marks does not play a role in [the] hypothetical test” contemplated by section 6 of the TM Act: Masterpiece, above, at para 30. This is because that test is based on the assumption that the trademarks/tradenames in dispute are used “in the same area”: see Masterpiece, above, at para 26. In any event, the Defendants also operate elsewhere in Alberta, including in Calgary, Edmonton, Lethbridge, Lloydminster, Red Deer, and Sherwood Park: Plaintiff’s Motion Record, at 155, 162, 617, 621 and 625. The Plaintiff has authorized distributors throughout Alberta and has substantial sales in that province: Summary Judgment Decision, at para 71(i).
[45] In summary, for the reasons set forth above, I maintain my finding that “the nature of the goods, services or business” is a factor that favours the Plaintiff.
(6) The nature of the trade (s. 6(5)(d)) [46] In the present Motion for summary trial, the Plaintiff submitted 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 explained 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.
[47] In response, the Defendants submitted that this factor weighs in their favour and should be given significant weight. In support of this position, they stated that the Plaintiff sells its products primarily to dealers who deal exclusively in those products. They added that those “customers” are unlikely to ever be confused about the source of the Parties’ respective products. They further emphasized that the same is also true for their own customers – namely, builders and contractors – to whom they sell directly. In this regard, Ms. Bertram’s uncontested evidence is that most of the sales made by the Principal Corporate Defendants are through personal contacts or recommendations made by people with whom she and Mr. Bergevin have directly worked. Consequently, the Defendants maintained that branding or advertising is comparatively less important and that customer confusion regarding the source of the goods and services offered by the Principal Corporate Defendants is “highly unlikely”. Ms. Bertram’s affidavit evidence on this point was supported by her evidence on cross-examination, to the effect that a lot of customers come to the Defendants as a result of personal contacts and referrals, rather than as a result of advertising: Bertram Cross-Examination Transcript, November 22, 2021, at 26–29.
[48] Despite the fact that Ms. Bertram did not provide much support for her statements, I found that her evidence met the low bar to survive the Plaintiff’s Motion for summary judgment with respect to the “nature of the trade” factor in section 6(5)(d). I reached that finding after noting that the Plaintiff’s principal affiant, Mr. Jérôme Chabot, acknowledged on cross-examination that a lot of the Plaintiff’s referrals normally come from personal connections: Summary Judgment Decision, at paragraph 85. Given the distinct possibility that the scope for customer confusion might be very small in a context in which most sales are made through personal contacts, I observed that Ms. Bertram’s evidence had potentially important implications for the Court’s assessment of the allegations advanced by the Plaintiff in connection with section 21(1)(a) of the TM Act. More specifically, that evidence had potentially important implications for the Court’s assessment of the likelihood of confusion, as a matter of first impression, on the part of the casual consumer in this market who is somewhat in a hurry.
[49] As it has turned out, the Parties did not avail themselves of the opportunity in the present Motion to provide compelling evidence in support of their respective positions regarding “the nature of the trade” factor. To a large degree, the Parties’ positions with respect to this factor consist largely of evidence provided by their own representatives, as opposed to customers. Ultimately, I have concluded that this factor favours the Plaintiff, although not strongly so.
[50] In assessing “the nature of the trade” factor, important considerations for the Court include any differences or similarities in the level of the industry at which the Relevant Goods and Services are marketed and sold, the types of outlets or channels through which they are marketed sold, and any differences among the persons to whom they are marketed and sold: United Artists Pictures Inc v Pink Panther Beauty Corp., 1998 CarswellNat 548, at paras 30-33.
[51] Regarding the first of those considerations, and as mentioned above, the Plaintiff supplies the Relevant Goods and Services to its distributors, who then sell those goods and services to builders, contractors, homeowners, and others. By comparison, the Principal Corporate Defendants supply their similar goods and services directly to those customers. The Defendants place great significance on this difference. However, on the particular facts of this case, this difference does not weigh in their favour. This is so for two reasons. First, the Plaintiff markets the Relevant Goods and Services directly to the customers described above on its website and over essentially the same social media platforms as the Defendants. Second, the Plaintiff’s dealers are licensed to supply the Relevant Goods and Services to those end-use customers, pursuant to distribution agreements that provide the Plaintiff with control over the character or quality of those goods and services. In this context, the supply by the Plaintiff’s distributors of the Plaintiff’s goods and services in association with the Registered Marks “has, and is deemed always to have had, the same effect as such a use” of the Registered Marks by the Plaintiff: section 50(1), TM Act. Consequently, the Plaintiff is deemed to operate at the same level of the trade as its distributors, who in turn operate at the same level of the trade as the Principal Corporate Defendants. This consideration favours the Plaintiff.
[52] Turning to the types of outlets or channels through which the Relevant Goods and Services are marketed and sold, the Plaintiff’s distributors in Alberta compete directly with the Principal Corporate Defendants’ outlets. Once again, this consideration favours the Plaintiff. I will simply add in passing that, “to establish the likelihood of confusion it is not necessary to prove that the wares are effectively sold in the same place, so long as the parties are entitled to do so”: Cartier Men’s Shops Ltd v Cartier Inc, 1981 CarswellNat 756, at para 13.
[53] With respect to the persons to whom the Parties sell the Relevant Goods and Services, they are essentially the same, namely, builders, contractors, homeowners and others. In this regard, Ms. Bertram testified that the Principal Corporate Defendants continued to sell to “the same kind of customers that Techno Metal Post distributors were selling to”, after they began using the disputed Techno Piles marks/trade names: Plaintiff’s Motion Record, at 1121. This consideration favours the Plaintiff.
[54] Despite all of the foregoing, the Defendants maintain that a particularly important consideration, on the particular facts of the present dispute, is that the substantial majority of their sales are made through personal contacts, referrals and repeat business. In this context, they insist that confusion is unlikely to arise as to the source of the Relevant Goods and Services. According to Ms. Bertram, when the Principal Corporate Defendants operated under the Techno Metal Post name, most of their work came from people who were seeking to work with her and Mr. Bergevin, rather than because of the Techno Metal Post name. This was because of their personal reputations in the industry.
[55] In support of her position, Ms. Bertram stated that over the period 2017 to 2021, less than 3% of the Principal Corporate Defendants’ sales came from referrals from the Plaintiff. In terms of annual sales, she added that in 2017, 48% of their customers were from tradeshow introductions, 28% were from referrals in their own network, 19% were from Mr. Bergevin’s connections in the field, and 5% were from unknown sources.[5] For 2018, Ms. Bertram reported that 39% of the sales made by the Principal Corporate Defendants that year came from returning customers, 27% from unknown sources, 6% from tender bids, 4% from tradeshow introductions, and 1% from Mr. Bergevin’s connections in the field. For 2019, the breakdown was 40% for returning customers, 28% from unknown sources, 23% from referrals within the Defendants’ network, 7% from the Plaintiff, and 2% from tender bids. For 2020, the breakdown was 36% for returning customers, 28% from unknown sources, 21% from referrals within the Defendants’ network, 10% from the Plaintiff, and the remainder from tradeshow introductions and tender bids. Finally, in 2021, the corresponding breakdown was 38% returning customers, 38% from referrals within the Defendants’ network, 10% from tender bids, and the remainder from tradeshows and unknown sources: Affidavit of Ronda Bertram, July 29, 2022, at paras 32 – 47.
[56] The foregoing statistics do not significantly assist the Defendants. This is because, prior to May 31, 2021, the Principal Corporate Defendants were the Plaintiff’s distributors.