This is a case where two direct competitors coexisted in the Canadian luggage and bag marketplace until the junior company decided to play the role of the fictitious cheshire cat and fade part of a trademark from view.
Wenger S.A. (Wenger) owns the following registered trademarks in Canada.
Such marks have been used in Canada since 2003 with luggage and bags.
The junior user, Travelway Group International Inc. (Travelway) has used the following trademarks in Canada since 2009 and registered them that same year for luggage and bags:
The above Travelways applications were not challenged in opposition.
By 2012, Travelway modified these marks by inter alia:
1) etching the “S” in metal in a manner that resulted in the “S” becoming difficult to see, and
2) eliminating the “S” feature altogether on luggage zipper pulls.
These changes prompted Wenger to seek an injunction from the Federal Court for trademark infringement and passing-off, as well as expungement of the Travelway registrations. The application was dismissed with costs; however, on appeal, Wenger encountered a receptive bench which unanimously concluded that:
a) the Federal Court Trial Division had made a reviewable error in treating the “Disappearing S and the Missing S as separate unregistered trademarks.”
b) the modified marks above are permissible variants of the Travelway triangle mark.
c) “if the variants are likely to cause confusion with the Wenger marks, then the registered mark will also cause confusion”.
d) each of the Travelway marks is confusing with each of the Wenger marks.”…the Travelway triangle mark and the Wenger marks are strikingly similar, particularly when displayed as the Disappearing S variant.
Interestingly however, the Court of Appeal did not strike the Travelway marks from the Register but rather referred the issue of expungement back to the Trial Division along with the matter of damages. Query whether the Trial Division can do anything but strike the registrations in view of the findings of the Court of Appeal?
This leaves a strange landscape as the “confusing” marks remain on the Trademark Register. It is all quite complicated.
Perhaps in the end Travelway wishes it had not acted like Lewis Carroll’s cheshire cat in the fantasy novel, Alice in Wonderland.