The Applicants own or licence two trademarks, a PIRANHA word mark and a PIRANHA design mark in association with saw blades and related wares. These marks were asserted against the Respondent who sells high quality diamond abrasive blades, grinding cups, polishing pads and core bits. After a complaint was lodged, the Respondent applied for a PIRANHA ABRASIVES design trademark and further commenced a section 45 request in response.
The Court found the Applicants’ marks had been infringed. However, the Court was unable to find that the Applicants established a reputation to support a valid claim in passing-off, nor to establish depreciation of goodwill.
Although the Respondent argued that the BLACK & DECKER mark or the distinctive orange and black colour scheme would assist the consumer in avoiding confusion, the Court held that there was no subjugation or erosion of the distinctiveness of the product trademark. The distinctive marks and length of use, as well as the degree of overlap, weighed against such a finding.
Nonetheless, the Court did not find sufficient evidence of an independent reputation in the PIRANHA marks to support a claim of passing off. The Court also did not find evidence of a depreciation of goodwill as there was no evidence showing that the Applicants have suffered any loss of reputation or customers due to the activities of the Respondent.
Nominal damages of $10,000 and $20,000 in costs were awarded, and a limited injunction for use of the PIRANHA ABRASIVES design trademark in association with abrasive circular saw blades. The Respondent’s domain names piranha abrasives.com and piranhaabrasives.com were not ordered to be transferred. The Respondent had 90 days to sell off any infringing inventory and otherwise had to destroy or deliver up any remaining infringing inventory to the Applicants.