The Impact Of A Previous Decision Of The TMOB In An Action For Statutory Passing Off

• Published date: 11 March 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Goldman Sloan Nash & Haber LLP
• Author: Mr John McKeown

A recent decision of the Federal Court deals with a statutory claim for passing off and the effect of a prior decision of the Trademark Opposition Board.Mainstreet properties Corp. v. Canadian Mortgage Capital Corporation 2022 FC 20.

The plaintiff sued several defendants for passing off and related relief. Before the action was brought, the plaintiff successfully opposed an application by one defendant for a trademark similar to the mark in issue in the action. The primary defendant successfully applied for a variant of the mark, which was not opposed. The plaintiff asserted this registration was invalid and should be expunged.

The Plaintiff

The plaintiff is a publicly-traded Canadian residential real estate corporation organized and existing under the laws of Alberta. It was established in 1997. It focuses on the acquisition, refinancing, rental, management and sale of residential properties in Canada. The plaintiff owns and operates properties throughout Western Canada, including Saskatchewan, Alberta and British Columbia. It also operated for a time in Ontario but stopped doing business there.

The plaintiff's trademarks are shown below:

The Defendants

The Defendants are a group of related companies involved in the real estate industry. In broad terms, they provide non-bank lender services primarily to real estate developers, mortgage brokerage services, mortgage funds management, mortgage servicing and related financing services through real estate investment funds.

The registration in issue relates to mortgage investment services and the provision of mortgage loans in association with the following design:

Each defendant uses the design shown above in conjunction with their specific corporate name in association with the specific service they offer to the public.

The Opposition

The first named defendant applied for the above design by itself without its corporate name. The Hearing Officer considered all the surrounding circumstances, in particular the similarity between the parties' trademarks, the overlap in the nature of the business of the parties, and that only the plaintiff/opponent filed evidence of the use of its Skyscrapers Design Trademark at the material date. She concluded that the applicant had not discharged its burden of establishing on a balance of probabilities, that the mark was not confusing with the plaintiff's trademarks.

Shortly after the release of this decision, the defendants applied for the same design but with the words...