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Dimock Stratton’s Intellectual Property Law Newsletter | Trademark infringement

The Federal Court recently found trademark infringement on the basis of high resemblance between two marks, but dismissed allegations of passing off and depreciation of goodwill.

Dimock Stratton’s Intellectual Property Law Newsletter

By: Dimock Stratton

Black & Decker Corp. v. Piranha Abrasives Inc., 2015 FC 185, 2015 CarswellNat 384.

I.4 — Trademarks — infringement — passing off — depreciation of goodwill

The plaintiff (Black & Decker) brought an application for trademark infringement, passing off and depreciation of goodwill against Piranha Abrasives Inc. (Piranha Abrasives) with respect to its use of the trademark PIRANHA ABRASIVES & Design in association with “diamond abrasive cutting, polishing and grinding tools”. Piranha Abrasives had also filed a trademark application for the PIRANHA ABRASIVES & Design mark in association with these goods, among others. At the hearing, Black & Decker relied on its trademark registrations for PIRANHA and PIRANHA & Design used in association with “saw blades for power saws and circular saw blades.” The designs at issue were:

Piranha Abrasives’ use of the mark PIRANHA ABRASIVES & Design was held to infringe Black & Decker’s rights under sections 19 and 20 of the Trade-marks Act. Indeed, the Court held that there was a high degree of resemblance between the marks. Further, the Court declined to limit the statement of goods in Black & Decker’s registrations to cover only circular saw blades used in cutting wood or plastic, which is how Black & Decker was using the marks. The proper focus was the exclusive rights provided by the registrations — not what Black & Decker “happened to be doing at the current time”.

Piranha Abrasives argued unsuccessfully that since Black & Decker’s marks at issue were always used with Black &
Decker’s house brands, the public would not perceive as a matter of first impression that the asserted marks were distinct trademarks. The Court stated that this was a factor to be considered, although the Court did not accept that simply using a house brand there would be subjugation or erosion of distinctiveness of the other marks. The distinctiveness of the asserted marks, the length of use and the overlap in associated goods weighed against such a finding in this case.

The Court dismissed Black & Decker’s allegation of passing off on the basis that Black & Decker failed to establish any independent reputation in the asserted marks, which had always been used in association with the trademarks BLACK & DECKER and ORANGE and BLACK. Further, the allegation of depreciation of goodwill was also dismissed. There was no evidence of loss of reputation or customers due to the activities of Piranha Abrasives.

The Court awarded nominal damages in the amount of $10,000. Piranha Abrasives was given 90 days to sell off its infringing inventory. The Court also ordered that application for the mark PIRANHA ABRASIVES & Design was to be amended to delete diamond abrasive cutting tools.

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