In Wenger SA v Travelway Group International Inc., 2019 FC 1104, the Federal Court of Canada (“FC”) struck Travelway Group International Inc.’s (“Travelway”) trademarks from the Trademarks Register. The FC based its decision on the Federal Court of Appeal’s (”FCA”) holding that the Travelway marks were invalid given that the FCA found passing off had been established despite Travelway’s trademark registrations.
In 2013, Wenger SA brought an application against Travelway for passing off and infringement of its Cross Logo (previously reported by in the E-TIPS® Newsletter here). On appeal, the FCA overturned the decision of the FC, finding that there was a likelihood of confusion between the marks and that passing off had been established (previously reported by in the E-TIPS® Newsletter here). The FCA referred the issues of expungement and damages back to the FC.
On the issue of expungement, the FC held that it must be implied that the FCA considered the Travelway marks to be invalid given that it concluded that passing off had been established and case law establishes that “the use of a registered trademark is an absolute defence to an action of passing off” (Remo Imports Ltd v Jaguar Cars Limited, 2007 FCA 258 [Remo]).
On the issue of damages, the FC concluded that Wenger SA was not entitled to damages or an accounting of profits. Given that no damages occurred after the FCA’s decision and no damages would follow expungement, the FC focused on whether relief could be granted for the past. Relying on the case law and section 19 of the Trademarks Act, the FC found that Travelway should not be liable for damages for the period during which their own registrations were in effect.
Summary By: Michelle Noonan
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