Date: 20050617
Docket: T-161-03
Citation: 2005 FC 871
BETWEEN:
COSACO INC.
Plaintiff
- and -
HOT KISS, INC. and
FAME JEANS INC. and
HUDSON'S BAY COMPANY
Defendants
REASONS FOR ORDER
(Delivered from the Bench at Montreal, June 16, 2005)
HUGESSEN J.
[1] This is a motion for summary judgment brought by the plaintiff in an action for trade mark infringement and passing off.
[2] The plaintiff seeks a declaration that its trade mark KISS & DESIGN registration number TMA239,841 is valid, and a declaration that the defendants' trade-marks, including the word mark HOT KISS and proposed word mark FIRST KISS are invalid. The plaintiff is also seeking a permanent injunction preventing the use of its trade mark, delivery up of any offending materials, and damages.
[3] The plaintiff owns the trade mark KISS & DESIGN bearing the registration number TMA239,841. That registration is for use in association with various articles of clothing.
[4] The defendants have a registered word mark HOT KISS number TMA520,606 which is also registered for use in association with clothing. There is a pending registration, opposed by the plaintiff, for FIRST KISS also in association with clothing.
[5] The defendant Fame Jeans Inc. is a licensee of the defendant Hot Kiss Inc., which has sold the HOT KISS and FIRST KISS lines of clothing in Canada since 2001 and 2004, respectively.
[6] The plaintiff claims that both the HOT KISS and FIRST KISS marks used in association with lines of clothing are confusing with the plaintiff's KISS & DESIGN mark.
[7] Both parties have produced a number of affidavits and the cross-examinations thereon, and the plaintiff argues that there is no genuine issue for trial.
[8] The defendants oppose the motion for summary judgment on the grounds that there is a genuine issue for trial.
[9] The action is still at its early stages before examinations for discovery have been conducted, let alone completed. The fight is between two owners of registered trade-marks where each party attacks the validity of the other's registration. Neither of those attacks, in my view, is devoid of foundation in the limited evidence presently available; each accordingly raises genuine issues for trial.
[10] It is apparent to me that there are also serious issues for trial on the plaintiff's claim even assuming the latter's mark to be validly registered. Further evidence, including expert survey evidence and evidence regarding third party users of KISS & DESIGN marks, will be necessary in order to determine issues such as reputation, confusion and distinctiveness. Even in the absence of the recent case law of the Federal Court of Appeal severely restricting the reach of Rule 216 (3) (see MacNeil Estates v. Canada 2004 FCA 50 and Trojan Technologies Inc. v. Suntec Environmental Inc. 2004 FCA 140) it would be my opinion that issues such as these would normally require to be decided at a trial.
[11] The factors listed in s. 6(5) of the Trade-Marks Act , R.S.C. 1985, c. T-13, including distinctiveness, length of use, nature of the wares, nature of the trade, and similarity (consumer's first impression) are also issues that are more appropriately dealt with at trial than on a motion for summary judgment such as this one.
[12] In addition to the foregoing, it is also my view that the plaintiff's claim for passing off cannot be granted summarily at this stage in the absence of any direct evidence of goodwill or reputation.
[13] Accordingly the motion for summary judgment will be dismissed.
"James K. Hugessen"
Judge
Ottawa, Ontario
June 17, 2005
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-161-03
STYLE OF CAUSE: COSACO INC.
Plaintiff
and
HOT KISS ET AL
Defendants
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: June 16, 2005
REASONS FOR ORDER : THE HONOURABLE MR. JUSTICE HUGESSEN
APPEARANCES:
Mr. Allen D. Israel FOR PLAINTIFF
Mr. Anthony Prenol FOR DEFENDANTS
SOLICITORS OF RECORD:
LAPOINTE ROSENSTEIN FOR PLAINTIFF
Montréal, Quebec
BLAKE, CASSELS & GRAYDON LLP FOR DEFENDANTS
Toronto, Ontario