The recent case of Industries Lassonde inc. has undoubtedly shaken the foundations of well‑known trade-mark protection and raised serious concerns regarding the consequences of an unsuccessful trade-mark infringement action before the Quebec Courts. Indeed, in the Lassonde case, Justice Dionysia Zerbisias of the Superior Court of Quebec appears to have wanted to send a message to trade-marks owners, that is to not be overly aggressive in the defence of a well‑known trade-mark, regardless of whether substantial financial and marketing resources have been invested throughout a long period of time and that the mark acquired an enviable reputation.
The facts of the case are fairly straightforward. Plaintiffs Industries Lassonde Inc. and its subsidiary A. Lassonde Inc. ("Lassonde") owned various trade-marks including the OASIS registered trade-mark, used in association with beverages, especially juices and fruit drinks since 1965 but as well as with other wares namely spring water, sorbets and frozen mixes for alcoholic and non alcoholic drinks. Defendant L'Oasis D'Olivia Inc. ("Olivia") used its trade-mark in association with body care products such as shower washes and gels, exfoliants, massage bars, massage oil, bath oil, bubble bath, foot and body scrubs, hand lotion, body lotion and face lotion.
The facts of the case are fairly straightforward. Plaintiffs Industries Lassonde Inc. and its subsidiary A. Lassonde Inc. ("Lassonde") owned various trade-marks including the OASIS registered trade-mark, used in association with alimentary products, especially juices and fruit drinks since 1965 as well as with other wares namely spring water, sorbets and frozen mixes for alcoholic and non-alcoholic drinks. Defendant L'Oasis D'Olivia Inc. ("Olivia") used its trade-mark in association with body care products such as shower washes and gels, exfoliants, massage bars, massage oil, bath oil, bubble bath, foot and body scrubs, hand lotion, body lotion and face lotion.
Lassonde sought an injunction under sections 6, 20 & 22 of the Trade-marks Act to restrain Olivia from using its trade-mark OLIVIA'S OASIS & DESIGN, alleging confusion with its registered trade-mark OASIS. Plaintiffs' also claimed that the use of Defendant's mark depreciated the goodwill of the OASIS mark. Lassonde finally sought from Defendant an accounting of all sales generated under the Olivia's trade-mark, and that Olivia be condemned to pay over the profits realized from those sales, in addition to punitive damages of $20,000.00.
Olivia contested the action claming the absence of a likelihood of confusion between its OLIVIA'S OASIS & DESIGN mark and the OASIS trade-mark. Olivia further invoked Quebec Civil Code of Procedure's new articles 54.1 to 54.6, requesting that Plaintiff be condemned as an abusive litigator and ordered to pay punitive damages, solicitor-client costs incurred in defending in the action, solicitor-client costs incurred in contesting Plaintiffs' parallel opposition proceeding to Olivia's application for registration of its trade-mark, and a reservation of its rights to claim any other damages caused as a result of Plaintiffs' judicial proceedings.
The Superior Court ruled that it was highly unlikely that there can be any likelihood of confusion. The Court concluded that:"to impute the likelihood of confusion between Plaintiffs and Defendant's mark to the average consumer would insult him or hereby assuming that such consumer is completely devoid of intelligence; of normal powers of observation, recollection and recognition; or, is so totally unaware or uninformed as to the environment in which they are found, that they would be easily deceived about the origin or nature of the wares they purchase."
More specifically, the Court was of the view that there is no visual resemblance at all between the marks but rather "glaring dissimilarity". With respect to the inherent distinctiveness of the marks at issue, it was held that "oasis" was not a distinctive word and therefore warranted a lesser protection. Justice Zerbisias found that the OASIS trade-mark was at most well-known in Quebec and only in association with juices and juice drinks. She further held that the wares associated with the marks at issue differed substantially, and ruled that the products sold with the marks were priced differently and aimed at a different type of consumer. The Superior court further held that the OASIS trade-mark was diluted throughout the years since the mark's colour and style changed but that the current actual use of the mark on the market did not reflect those changes and varied according to the products.
With respect to Defendant' claim that Plaintiffs acted as an abusive litigator within the meaning of articles 54.1 ff. of the Civil Code of Procedure, the Court ruled that Lassonde used its economic power and experience as a "shotgun approach to attack Defendant simultaneously on several fronts with their full might, attempting by the present proceedings to intimidate and thwart Defendant from its legitimate use of its trade name and trade-mark." The Court stated that Lassonde knew or should have known that its trade-mark action lacked any chances of success, that Lassonde had no proprietary rights to the word "oasis" since some 46 pending and registered trade-marks comprising that word appeared on the Canadian Trade-Mark Register. Furthermore, the Court ruled that Plaintiffs mislead the Court by falsely arguing that in the past, courts had recognised the notoriety of the OASIS marks whereas Plaintiffs failed to disclose the only contested trade-mark judgment involving the OASIS marks, which judgment is highly unfavourable to Plaintiffs' contention and which the latter actually lost. As a result of these findings, the Court condemned Lassonde to pay Olivia the sum of $100,000.00 in solicitor‑client costs for the action as well as $25,000.00 in punitive damages. Hence, the Court reserved Olivia's rights to claim further damages resulting of these proceedings and of any other proceedings between the parties.
The Superior Court's decision has been appealed from and it will be interesting to see whether the Court of Appeal will entirely uphold the Court's determination on the issue of confusion or nuance some of its findings, and more particularly whether the Superior Court was right to conclude that Lassonde acted as an abusive litigator.