[2019] 1 F.C.R. D-7
Trade-marks
Infringement
Motion for summary trial under Federal Courts Rules, SOR/98-106, r. 213 with respect to action against defendant claiming damages, other relief for trade-mark infringement, passing off, depreciation of goodwill under Trade-marks Act, R.S.C., 1985, c. T-13 (Act) — Claims relating to mark “EMPOWER ME” registered by plaintiff in connection with energy awareness, conservation, efficiency services, defendant’s use of mark “emPOWERme” in connection with educational Web site — Plaintiff requesting that defendant cease, desist from using “emPOWERme” mark — Defendant pointing out that Ontario Ministry of Energy public authority under Act authorizing it to request that Registrar of Trade-marks give public notice of its adoption, use of “emPOWERme” as official mark of Government of Ontario — Registrar giving such public notice — Defendant taking position that official status of “emPOWERme” mark under Act, s. 9(1)(n)(iii) immunizing it against any claims under Act arising from its use of that mark —Main issues whether official mark status of “emPOWERme” affording defendant protection against plaintiff’s claims; whether defendant infringing plaintiff’s trade-mark, contrary to Act, ss. 19, 20;— Interpretation of s. 9(1)(n)(iii) advanced by defendant not supported by express wording of this provision — S. 9(1)(n)(iii) not conferring upon public authority any particular protection against claims for trade-mark infringement or other claims under Act. — Absent case law interpreting s. 9(1)(n)(iii) as advocated by defendant, Court should not adopt interpretation conferring statutory immunity upon public authorities without clear legislative language supporting this interpretation — Language of s. 9(1)(n)(iii) prohibiting certain activities once public notice of use of official mark given — However, not expressly conferring upon public authorities right to use official mark in manner contravening other provisions of Act — Nothing in language of s. 9(1)(n)(iii) eliminating rights already conferred upon owner of registered trade-mark — Parliament not intending that public authority be immune from any claims under Act arising from required adoption, use — Plaintiff meeting test for confusion — Defendant infringing trade-mark “EMPOWER ME” contrary to Act, s. 20 — Damages awarded — Motion granted.
Quality Program Services Inc. v. Canada (T-1787-16, 2018 FC 971, Southcott J., judgment dated October 4, 2018, 39 pp.)