Trademarks Decision

Court awards damages for trademark infringement and passing off in the amount of $30,000.
Stork Market Inc v. 1736735 Ontario Inc. (Hello Pink Lawn Cards Inc), 2017 FC 779

In this infringement action, the Court held that the Plaintiffs' trademarks registrations are valid and infringed by the corporate Defendant. The Court also found that the Plaintiffs were successful in their claim for passing off under s. 7(b) of the Trade-marks Act. The Plaintiffs claimed infringement of its registered trademarks of two images of a stork holding a baby above its head under a banner announcing, respectively, "It's a Girl" and "It's a Boy". Like the Plaintiffs, the Defendants are in the business of rental and installation of lawn signs for special occasions, including lawn signs using the stork images at issue.

On the issue of validity, the Defendants alleged that the subject matter of the trademarks registrations was primarily functional and/or merely ornamental and that registration as a trademark is therefore precluded by the doctrine of functionality. The Court disagreed and found that the marks were not primarily functional within the meaning of the case law. The Court also dismissed the Defendants' argument concerning the US doctrine of "aesthetic functionality", which appeared to represent an application of the doctrine of functionality, not in relation to the technical function of a product's features, but rather in relation to the product's aesthetic qualities.

On the issue of trademark infringement, the Court found that the factors under section 6(5) favoured a finding of confusion. This included the Court's finding of a strong degree of resemblance with the Defendants' images since the differences only become apparent with the sort of careful examination that case law discourages. Concerning the liability of the individual Defendant, the Court did not conclude that the individual Defendant had deliberately copied marks so as to support a finding of personal liability on his part.

The Court did not find that the images at issue infringed the Plaintiffs' copyright. The individual Defendant had testified that he designed the images to accommodate the inclusion of a customizable baby, and that this objective prompted the design choices in those images. The Court had found that this evidence supported its finding that the individual Defendant was not personally liable for infringement of the Plaintiffs' trademarks. While the degree of resemblance between the parties' images was sufficient to support a finding of trademark infringement, the Court did not find that the similarities between the images to be so substantial to reject the individual Defendant's evidence or otherwise to support a finding of copyright infringement.

Federal Court Update

The Federal Court issued a notice to the parties and the profession on informal requests for interlocutory relief.

Industry Updates

Health Canada has published a Notice: Health Canada and United States Food and Drug Administration Joint Public Consultation on International Council on Harmonisation Guidelines for Registration of Pharmaceuticals for Human Use. The website indicates that a public consultation for Canadian and U.S. stakeholders under the Regulatory Cooperation Council initiative will take place on October 19, 2017 from 9 a.m. until 12 p.m.

Health Canada has published a Notice: eCTD Pilot for Clinical Trial Regulatory Activities — Extension.


Chantal Saunders

Beverley Moore

Adrian J. Howard

Other Author

Jillian Brenner


Intellectual Property