Applications For Judicial Review – Federal Court of Canada

FCA US LLC v Pentastar Transportation Ltd, 2019 FC 745
We represented the Respondent, Pentastar Transportation Ltd., against FCA US LLC, or “Chrysler”.

Pentastar is an oil & gas transport company based in Acheson, Alberta. In a prior proceeding before the Registrar of Trademarks, Chrysler sought to expunge/remove Pentastar’s word mark “PENTASTAR” from the Trademarks Register, effectively seeking to abolish its brand (and particularly so in light of Chrysler’s own logo of a 5-point star, often associated with the Pentastar engine). Despite Chrysler’s attempts, both before the Registrar of Trademarks and Federal Court, we succeeded in maintaining Pentastar’s word mark and brand.

Pentastar Transport Ltd v FCA US LLC, 2020 FC 367
FCA US LLC (or “Chrysler”) and Pentastar meet again before the Federal Court, where we again represented Pentastar. Here, FCA US LLC sought to register the word mark PENTASTAR with respect to goods (e.g. engines, among others). While Chrysler was successful in resisting opposition with respect to, “[e]ngines for passenger motor vehicles, namely, automobiles, pickup trucks, vans and sport utility vehicles”, Pentastar’s registration remained for its services offered. The Federal Court of Appeal also recognized Pentastar to be the first applicant in a judicial review to make submissions under the new Vavilov regime for the standard of review with respect to trademarks (see The Clorox Company of Canada, Ltd v Chloretec SEC, 2020 FCA 76 at para 23).

Federal Court of Canada – Trial Division

Iconic Travel Show Producer v Money Travel Exchange Company
We acted for the Applicant, a provider of travel shows from various regions around the globe. The Respondent, a leading international entity in money exchange, brought an opposition before the Trademarks Opposition Board, seeking to oppose the Applicant’s mark. The parties were already engaged in litigation in another jurisdiction. In response, we brought an application against the Respondent in Federal Court. After a series of negotiations with opposing counsel from a large, global law firm the parties reached an agreement, and both the opposition & Federal Court proceedings were discontinued.

RallySport Direct LLC v 2424508 Ontario Ltd, et al, 2020 FC 794
We acted for the Defendants, a small e-commerce company in Ontario, against RallySport Direct LLC (RSD), a large American wholesaler and retailer of aftermarket autoparts, also in the e-commerce industry. RSD brought allegations of copyright infringement against the Defendants for the display of its photos of auto-parts. RSD sought statutory damages in the amount of $500/photo & aggravated damages, amongst a lengthy list of further relief. We succeeded in reducing the damages award by 50%, as well as achieving an aggravated damages award of $0 payable to RallySport.

Dennis Lecuyer v Cliptoart Incorporated et al, T-1669-99
We represented the Defendants, several Canadian stock photo companies, in a Federal Court copyright infringement suit initiated by a photographer. The defendants, previously represented by one of the largest IP practices in Canada, came to us after 3 years of litigation. Within 1 year of hiring us, the action was discontinued.

Iconic British Columbian Apparel Company vs British Columbia-based Imitators
We represented the Applicant Apparel Company (“Applicant”). The Applicant issued a cease-and-desist to BC-based imitators for use of a similar mark and logo in association with sportswear. The imitators were represented by one of Canada’s largest IP boutiques. Amongst other things, the Applicant brought claims for infringement, misrepresentation and confusion, under both the Copyright Act and Trademarks Act.

We were successful in ensuring that the imitators ceased their infringing activities & the litigation discontinued, and the Federal Court ordered the destruction of all infringing materials.

Federal Court of Appeal

Spirits International N.V. v. Registrar of Trade-marks et al., 2007 FCA 162
We represented the Appellant, owner of the iconic Stolichnaya and Moskovskaya vodkas. This case broke new ground because it limited the Registrar of Trademarks’ power to issue successive cancellation notices to a trademark owner, and is considered a leading and seminal case for practising trademark lawyers.

Ontario Superior Court of Justice

Quest Management Services Inc. and Quest Management Systems Inc. v. Quest Management Systems, A Division of 1281068 Ontario Inc. and Eileen Shewen, 2014 ONSC 3473
We represented the Defendants. Quest Management Systems Inc. (Plaintiff) brought a passing off action against Quest Management Systems, A Division of 1281068 Ontario Inc. and Eileen Shewen (Defendants) regarding the unregistered trademark QUEST MANAGEMENT SYSTEMS. Both parties were carrying on business under the name QUEST MANAGEMENT SYSTEMS and both were operating the same kind of business in Ontario. The Plaintiff sought to prevent the Defendant from using the mark or “any licenses thereof.” The Plaintiff also sought leave to amend their statement of claim, damages and punitive damages, an adjournment of the injunction motion (in order to gather further evidence), and leave to withdraw certain admissions made in their affidavit. The presiding judge dismissed all the Plaintiff’s motions (with the exception of granting leave to amend the statement of claim) and ordered the Plaintiff to pay damages to the Defendant. In other words, we were successful in our defence of the Defendants.

Further, the Court found that were was no factual basis for the Plaintiff claiming “unlawful interference with economic interests” and the Plaintiff failed to show proof of the three essential elements that must be present in an action for passing off, namely:

  1. The existence of reputation and a distinctive trade name;
  2. Misrepresentation resulting in deception to the public; and
  3. Actual or potential damage to the Plaintiff.

The adjournment request was regarded by the judge as nothing more than a “fishing expedition” in that the Plaintiffs were seeking additional evidence with which to respond to the Defendant in a way which was frivolous and vexatious.

Trademarks Office Proceedings

Sharlene Loveless v Estee Lauder Cosmetics Ltd., 2017 TMOB 5
We represented Sharlene Loveless, against cosmetic giant, Estee Lauder. At issue was the trademark registration ENLIGHTEN, once held by Estee Lauder, but for which proof of use on make-up products could not be tendered by Estee Lauder, nor compelling reasons as to why not. Estee Lauder fought to held onto its ENLIGHTEN trademark. However, in the end, we were successful in cancelling the once used brand ENLIGHTEN, permitting Sharlene Loveless to launch her own “enlightening” line of face make-up.

Piasetzki Nenniger Kvas LLP v Sudamericana de Fibras S.A., 2014 TMOB 206
We represented Sudamericana de Fibras S.A. (Trademark Owner), who registered the mark DRYTEX for use in Canada in association with textile goods (such as rope, raw fibre with which to weave into fabric, soft furnishings, rope, clothing, and tents, etc). At the request of Piasetzki Nenniger Kvas LLP (Requesting Party) a Section 45 notice was issued to the Owner, requiring it to furnish the Registrar with evidence of the trademark in use in association with the goods listed on the registration. The proceeding ended with the Trademark Owner amending its registration, but maintaining its mark on the register.

Representative Cease-and-Desist Settlement Negotiations

We have represented small and large businesses in Ontario and internationally with respect to enforcing their copyright and trademark rights locally globally. We’ve issued cease-and-desists on behalf of artists, musicians, product and fashion designers. Regardless of whether their works were sold without their notice and consent, or knock-off’s were being produced and sold, we’ve assisted them all.

Also, if you have received a cease-and-desist, we’ve also assisted clients with:

  • Responding to cease-and-desist letters;
  • Responding to Notice and Notice regime issued via an internet service provider (ISP);
  • Determining the validity and scope of the copyright and trademark rights of both the IP holder and alleged infringer;
  • Engaging in settlement negotiations;
  • Obtaining further copyright/trademark rights to safeguard your IP assets.

Representative examples include:

  • Successfully represented a European fashion designer whose world-renowned patterns were wrongfully copied and sold in local North American discount stores;
  • Successfully represented a Canadian manufacturer and producer of uniquely Canadian clothing against false claims of copyright/trademark infringement from a competitor;
  • Acting on behalf of a local Ottawa software company, successfully negotiated and reduced damages and licence fees by over 60% sought by a large European multinational conglomerate corporation for alleged software infringement.