No Damages Without Invalidation Ab Initio – A Look At Wenger SA v Travelway Group International Inc

A valid trademark registration is an absolute defence to claims of passing off where there is no significant difference between the impugned mark as registered and the mark being used.[i] This is because a trademark registration gives the trademark owner the exclusive right to use that trademark throughout Canada.[ii] A party claiming passing off against a registered trademark should first seek to invalidate the registration and expunge it from the Register. If the trademark registration is held to be invalid, an assessment on passing off can then be made.

A valid trademark registration is also a defence to a trademark infringement action.

The latest Federal Court decision in the Wenger SA v Travelway Group International Inc trademark dispute was required to clarify an ambiguity created by the Federal Court of Appeal. The Federal Court of Appeal found that two of the marks being used by Travelway were confusing with the Wenger marks but failed to declare them invalid or expunge them from the Register (see Group III International Ltd v Travelway Group International Ltd, 2017 FCA 215).[iii] The most recent Federal Court decision resolves that ambiguity and declares the Travelway Group marks invalid.

However, even though the Travelway marks were declared invalid, the Federal Court refused to grant Wenger monetary relief because Travelway's marks were not declared invalid ab initio. In other words, because the marks were registered during the time when passing off and infringement occurred, Travelway was not liable for damages - the registrations protected Travelway's use of the confusing marks.

Wenger and its licensees have been using registered trademarks in Canada consisting of a cross in a rounded quadrilateral and surrounded by an inlaid border in association with luggage since as early as 2003. In 2009, Travelway began using its trademarks, the Travelway Cross Design and the Travelway Triangle Mark, in association with luggage. These trademarks were subsequently registered. In 2012, Travelway began using unregistered modified versions of its trademarks, the Disappearing S Mark and the Missing S Mark, thereby increasing the resemblance of its marks with the Wenger Cross Mark.

In an effort to protect its trademarks, Wenger instituted proceedings for trademark infringement against Travelway (Wenger S.A. v Travel Way Group International Inc, 2016 FC 347); however Wenger was unsuccessful largely because it was unable to establish a likelihood...