April 24, 2019
In C.W. Parsons Ltd. v. Parsons Paving Ltd., 2019 FC 458, the Federal Court (the "Court") recently dismissed an application by C.W. Parsons Ltd. (the “Applicant”) claiming passing off by Parsons Paving Ltd. (the “Respondent”). The application was dismissed because there was insufficient evidence put forward by the Applicant.
The marks at issue were “CW Parsons Paving” (the “Wordmark”) along with the associated logo (the “Logo”) (collectively, the “Marks”). The Applicant claimed to have been using the Marks since 2010 in a variety of different ways, including on its website, on outdoor advertising, in print advertising and on apparel.
The Applicant claimed that the use, as noted above, resulted in recognition of the Marks in the mind of the public. The Applicant put forward that it won multiple Consumer Choice Awards. However, while the award certificates identified “C.W. Parsons Limited” as the winner, “C.W. Parsons Paving” was listed on the Consumer Choice Awards website.
Other than the above, there was no other evidence regarding details of use and acknowledgement from the consumer market.
In 2017, the Respondent began incorporating its business and, on May 7, 2018, the Registrar accepted the name “Parsons Paving Ltd.” The Respondent claimed that it had never seen the Applicant’s Marks.
Other than a few misdirected e-mails to the Applicant from people in the employment context and one piece of provincial tendering mail sent to the wrong address, the Applicant did not furnish any evidence of confusion from customers or potential customers.
Federal Court Decision
The dispute was focused on subsection 7(b) of the Trade-marks Act, RSC 1985, c T-13 (the “Act”). The Court addressed the following three questions:
Has the Applicant established distinctiveness and goodwill in “C.W. Parsons Paving”?
Has the Applicant established a reasonable likelihood of confusion in respect of the Respondent’s corporate name?
Has the Applicant shown actual or potential damages flowing from the Respondent’s corporate name?
In respect of the first issue, the Court examined the Wordmark and the Logo separately. The Court found that, on balance, the Applicant had established the Marks were sufficiently distinctive to be enforceable. However, the Wordmark had only acquired weak distinctiveness. The evidence put forward by the Applicant demonstrated weak goodwill as well.
In respect of the second issue, the Court concluded that the Applicant had not established a likelihood of confusion, but only a mere possibility of confusion.
The Court acknowledged that the standard for confusion, as held in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27, is from the perspective of a “hurried consumer”. However, given the nature of the business, the Court was satisfied that there was little likelihood of confusion:
The purchase of paving services is not like the purchase of a chocolate bar at a convenience store. The higher price as well as the nature of the goods and services suggest a more thoughtful reflection on the provider than in a quick consumer transaction, resulting in less likelihood of inadvertent confusion.
The Court also found that the Applicant had failed to provide sufficient evidence of actual or potential damages. Indeed, the lack of evidence that resulted in the Court finding no likelihood of confusion was also the reason why the Court found that the Applicant had not proven actual or potential damages.
Accordingly, the application was dismissed.
Authors: Jaclyn Tilak and Daniel Seidman