On September 30, 2009, Justice Zinn of the Federal Court granted a motion for summary judgment in Atomic Energy of Canada Limited. v. AREVA NP Canada Ltd.
The facts are as follows. The plaintiff and defendant both sell wares and services relating to nuclear reactors in Canada and are direct competitors. Both own strikingly similar trade marks featuring an "A" design with a diagonal cross bar and use them in association with identical wares and services. The plaintiff sued the defendant for trade mark infringement, passing off and copyright infringement.
One might think that these facts would give rise to a genuine issue for trial. Justice Zinn thought otherwise. He granted the defendant’s motion for summary judgment on all three causes of action.
Two aspects of this decision are particularly notable.
First, it confirms that a judge can grant summary judgment in the Federal Court in an action for passing off or infringement on the basis of affidavit evidence alone "if he or she is able to find the facts necessary to decide the questions of fact and law." While this principle is not new, its application in this case is surprising. Summary relief has traditionally been difficult to obtain in the Federal Court, especially in IP infringement actions which are notoriously evidence driven. The Federal Court of Appeal has specifically warned that motions for summary judgment should not become summary trials on affidavit evidence.
Second, the decision demonstrates how significant marketplace factors can be in assessing the likelihood of confusion, quite aside from the resemblance of the trade marks themselves. Justice Zinn determined, “on the [affidavit] evidence before the Court”, that it was “beyond the realm of possibility” that purchasers of the relevant wares could be confused by the resemblance of the marks, noting that it is “difficult to imagine more sophisticated consumers than exist in the nuclear power business” (para. 24). One of the defendant’s affiants was "a consulting scientist whose expertise is in the analysis of human perception and behaviour" and whose affidavit concerned “the similarities and differences between the AREVA and AECL trade-marks, and the possibility of those marks lending themselves to confusion in the minds of purchasers of nuclear wares and services" - in other words, the very issue that was before the Court. Ultimately, what swayed Justice Zinn were factors such as the nature of the wares (nuclear reactors and parts), the sale or procurement process, the purchasers, the frequency of sales, and obviously the cost of the goods.
In a line that is certain to be quoted in future trade mark decisions that turn on the nature of the trade and the identity of the relevant consumer, Justice Zinn stated that:
"In this industry, the fact that Homer Simpson may be confused is insufficient to find confusion".
It is still too early to know if an appeal will be filed. However, it will be interesting to see in what other industries the “Homer Simpson” standard of (non)confusion applies.