The Federal Court has dismissed the Plaintiff's claims for infringement and passing off pursuant to sections 7(b), 7(c), 19, 20 and 22 of the Trademarks Act, for the word marks SCOTT and AIR-PAK, and a stylized SCOTT.
It was described that the Plaintiff Scott deals in self-contained breathing apparatus (SCBA) often sold to fire and security customers. There are three different levels of training available to maintain the SCBA.
The Defendants' business began as a business filling and repairing fire extinguishers. The business was originally named "Scott Safety Supply Services". The owner subsequently offered other services, including SCBA service and rentals, after taking field level maintenance training on the Plaintiff's device.
On June 16, 2000, Scott Safety Supply Services Ltd. entered into an “in-house repair center agreement” with Scott Technologies, giving it "the right to inspect, repair, and service" the Scott SCBA it owned. That agreement continued until it was terminated by Scott Technologies effective December 31, 2003.
On September 30, 2011, the Plaintiff demanded that Scott Safety Supply Services Ltd. "discontinue all use of the trade-mark and tradename SCOTT alone, or as part of any trade-mark, trade name or any other commercial designations in association with your business."
On December 3, 2012, Scott Safety Supply Services Ltd. [Old Scott Safety] sold substantially all of its assets to Scott Safety Supply Services Inc. [New Scott Safety] for $24,850,000. Thereafter, Scott Safety Supply Services Ltd. changed its name to 783825 Alberta Ltd. A term of the sale agreement is that Old Scott Safety and Brent Stark indemnify New Scott Safety against all costs arising from this litigation.
The claims in passing off and infringement were dismissed due to a lack of evidence regarding confusion despite the fact that the defendants' business has operated in a market in which the Plaintiff has been doing business for more than 20 years.
The claim to depreciation of goodwill was equally dismissed because the Plaintiff offered no evidence that it has lost or had any sale impacted by the defendants' trade-mark.
The Court noted that had it found that the defendants had breached the Plaintiff's trademark SCOTT, the Court would not have awarded any damages in light of the admission that there have been none. The Court also would not have ordered injunctive relief because it is an equitable and discretionary remedy, and in the Court's view, the Plaintiff waited too long. The Court stated that, "[a] business cannot lie in the weeds, allowing another to carry on and invest in and grow its business, and then spring up and enlist the aid of the court when it suits its purposes, claiming it has been unfairly treated."