Point Zero Denim and President Liable for Trademark Infringement and Passing-off

On March 14, 2016, the Superior Court of Québec (Court) released its decision in Diesel s.p.a c Benisti Import-Export inc, 2016 QCCS 1085, ruling (among other things) that Benisti Import-Export Inc. (operating under the name “Point Zero”) and its president Maurice Benisti (Benisti) had infringed the trade-mark rights of Diesel s.p.a. (Diesel) to a label design used by Diesel on the pocket of its brand of jeans.

In 2005, Diesel filed an application to register its label design claiming use in Canada since 1988.  In 2004, Point Zero had applied to register its nearly identical label design, but claiming use since 1999.  When Point Zero’s proposed mark was published, Diesel opposed it.  Point Zero’s application became abandoned for failure to respond to Diesel’s opposition.  Diesel’s mark was registered in 2007.  Point Zero continued to use its nearly identical label design in the market post-abandonment and despite cease and desist letters from Diesel.

The Court ordered Point Zero to pay $50,000 in damages and an additional $20,000 in punitive damages after finding the infringement to be wilful and intentional.  The Court also ordered Benisti to pay punitive damages of $20,000 himself (i.e. personally).  The Court reasoned that a director can be held personally liable when it is the director’s decisions that lead to the infringement.  In this case, the Court found that Benisti admitted to personally making the decision to not only abandon the trademark application, but to continue using the label design.