Case information

Intellectual property — Trademarks — Passing off — Remedy — Court of Appeal finding infringement and passing off by one registered trademark owner against another registered trademark owner — Court of Appeal ordering monetary compensation on basis of its finding of passing off — Whether a finding of passing off renders the owner of a registered trademark liable to pay damages or profits for the period during which the trademark owner’s registrations were in effect, especially when it is acknowledged that the finding of passing off was made in error.

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The respondents, Group III International Ltd., Holiday Group Inc. and Wenger S.A. (collectively, “Wenger”) applied for relief under the Trademarks Act, R.S.C. 1985, c. T 13, against the applicant, Travelway Group International Inc. (“Travelway”), for both infringement and passing off of Wenger’s registered trademarks. The Federal Court dismissed Wenger’s application. The Federal Court of Appeal (“FCA”) allowed Wenger’s appeal. It concluded that Wenger had established both infringement and passing off. The FCA granted relief, including a permanent injunction against Travelway’s use of its marks, and it referred two further remedial issues to the Federal Court for further adjudication. The Federal Court ordered the expungement of Travelway’s registered trademarks but dismissed Wenger’s claim for monetary compensation. The FCA allowed Wenger’s appeal for monetary compensation. It agreed with the Federal Court that the use of a registered trademark does not give rise to liability in damages or an accounting of profits for infringement for the period prior to a trademark being struck from the register. However, in relation to passing off, the FCA concluded that, as between the parties, there was a finding of passing off, and monetary compensation should therefore be awarded. It also concluded that the registration of a trademark is a complete defence to passing off and that the portions of its prior decision finding passing off in this case should not be followed as authority in future cases.