PharmaCommunications Holdings Inc. (the "Applicant") instituted proceedings in the Federal Court against Avencia International Inc. ("Avencia") alleging that Avencia had directed public attention to its services and business in such a way as to cause confusion or to be likely to cause confusion in Canada between its services and business and the services and business of the Applicant.
The Applicant is the owner of the unregistered trade mark PHARMACOMMUNICATIONS. The Applicant disseminates information about pharmaceuticals to heathcare workers by means of direct marketing and a call centre. It is also involved in the business of gathering data on prescribing needs and the practices of medical practitioners which it makes available to its clients.
Avencia registered the business name of PHARMACOMM. The Applicant asserted that Avencia's business is substantially similar to its business. Avencia claimed that it is in the business of providing brand consultation services, media advertising, product promotion and sales techniques, but the Applicant asserts that its services are similar or identical to those offered by the Applicant in connection with the trade mark.
The Applicant presented evidence of its use of the trade mark PHARMACOMM and alleged instances of confusion involving its customers. Avencia argued that the alleged PHARMACOMM trade mark was not distinctive of the Applicant. They attacked the evidence that was presented and asserted that given the non-distinctive nature of the trade mark, some confusion must be accepted. They also referred to a third party company whose corporate name included the words "Pharmacomm."
The Judge who heard the application found that the provisions of subsection 7(b) of the Trade-marks Act are a statutory expression of the common law tort of passing off. Reliance on subsection 7(b) requires that the Applicant prove ownership of a valid and enforceable trade mark, whether registered or unregistered. In addition, the Applicant must establish: (a) the existence of goodwill; (b) deception of the public due to a misrepresentation; and (c) actual or potential damage.
The Judge made no findings concerning the above matters because he found the Applicant had clearly failed to show that it had suffered actual or potential damage. In this regard, reference was made to the recent decision of the Federal Court of Appeal involving BMW Canada, Inc. (previously discussed in this newsletter in our September 2007 issue), for the proposition that actual or potential damages cannot be presumed, and there must be evidence proving that damages have been suffered or there is a likelihood damages will be suffered. As a result, the application was dismissed.
Recent decisions of the Federal Court of Appeal and this decision make it quite clear that in a passing off case, a plaintiff is required to submit proof of actual damage or the likelihood of damage by reason of the defendant's misrepresentation.