On July 22, 2019, the Federal Court of Canada (FC) issued its decision in Loblaws Inc v Columbia Insurance Company, 2019 FC 961, a passing off and trademark infringement action.  In this case, the FC found that Loblaw Inc (Loblaw) failed to establish confusion between the defendants’, Columbia Insurance Company, The Pampered Chef Ltd, and Pampered Chef – Canada Corp (collectively, Pampered Chef), marks and Loblaw’s PC Marks.

Loblaw is the owner of a family of registered and unregistered trademarks (PC Marks) relating to the “PC” brand. The company brought an action before the FC claiming that Pampered Chef, through the use of its marks which consist of a spoon between the letters “P” and “C”, infringe upon Loblaw’s exclusive rights to use the PC Marks. Specifically, Loblaw claimed that Pampered Chef’s activities:

  • infringe upon Loblaw’s exclusive rights to use the PC Marks, contrary to sections 19 and 20 of the Trade-Marks Act (Act);
  • direct attention to Pampered Chef’s goods, services and businesses so as to cause confusion between these goods, services and businesses and those of Loblaw, contrary to section 7(b) of the Act; and 
  • have the likely effect of depreciating the value of the goodwill associated with the PC Marks, contrary to section 22 of the Act.

Pampered Chef denied Loblaw’s claims and, in defense, filed a counterclaim to expunge the plaintiff’s PC word mark due to a lack of distinctiveness.

The FC dismissed Loblaw’s infringement claim, finding that Loblaw failed to establish that its PC Marks were identical, or that there was a likelihood of confusion, with Pampered Chef’s Marks. Since confusion was not established, the Court dismissed Loblaw’s passing off and depreciation of goodwill claims. With respect to Pampered Chef’s counterclaim, the Court found Pampered Chef’s evidence insufficient to invalidate Loblaw’s PC word mark. Accordingly, the Court dismissed both parties’ claims.

 Summary By: Imtiaz Karamat


19 08 07

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