A Swiss (trademark) Miss – Wenger’s Infringement and Passing Off Claims Dismissed

On March 24, 2016, Justice St-Louis dismissed Wenger’s application for trademark infringement against Travelway and passing off based on following registered trademarks in association with luggage and bags, typically presented as a white or metallic cross set agains a red or black background:

In 2009, the respondent, Travelway, registered and began using the following marks also for use in association with luggage and bags (collectively the “S Marks”):

In February 2012, Travelway began using the variations of these marks in which the central “S” was either difficult to see (the “Disappearing S” mark) or completely absent (the Missing “S”) mark. The Missing S mark was used exclusively on zipper pull tags. Wenger then sued for trademark infringement, passing off and sought to have Travelway’s “S Marks” expunged on the basis that they were confusing with Wenger’s earlier registered marks.

Likelihood of Confusion

Justice St-Louis concluded the Respondent’s registered “S Marks” do not leave the same impression as Wenger’s registered marks and were unlikely to create confusion. Without the required degree of resemblance, there was no reason to consider the other factor listed under s. 6(5) of the Trade-mark Act.

On the other hand, the degree of resemblance between the unregistered “Disappearing S” and “Missing S” marks and Wenger’s registered marks was sufficient to consider all the relevant circumstances, including the  factirs described under section 6(5).

Distinctiveness

Justice St-Louis held that Wenger’s marks were not inherently distinctive nor had Wenger had established that its registered marks had acquired distinctiveness,  in part because another company, Victorinox, has used a similar white cross in association with its goods.

Justice St-Louis also held that since the “Missing S” marks were used exclusively on small zipper pulls, the average consumer would not be confused as to the origins of the wares based on these marks, and further that it is unlikely that consumers would even notice this type of detail.

Survey Evidence and Evidence of Actual Confusion

In seeking to establish the likelihood of confusion, Wenger relied on a mystery shopping survey given to salespeople. Following the Supreme Court of Canada in Masterpiece, Justice St-Louis concluded that the survey evidence (adduced through the affidavit of a witness that had not designed or conducted the interviews in the survey) was not necessary and gave it no weight. With regards to evidence of actual confusion, Justice St-Louis rejected Wenger’s theory of “transmitted confusion” resulting from error in three printed flyers distributed by Walmart and Canadian Tire.  Just St-Louis also gave Wenger’s anecdotal evidence of actual confusion no weight.

Taking into account all of the relevant circumstances, Justice St Louis held that the consumers were not likely to confuse Travelway’s luggage and bags with those of Wenger:

[126] With regards to the above reasons, the Court is satisfied that, from the perspective of the average consumer somewhat in a hurry, the Travelway marks as used on its luggage and bags wares are not likely to confuse the consumer and to lead him to conclude that those luggage and bags are manufactured or sold by the same entity as the Wenger luggage and bags.

Justice St-Louis further held that Travelway did not pass off it wares as those of Wenger and that Travelway’s “S Marks” should not be be expunged.

A copy of Justice St-Louis’ reasons may be found here.

Wenger has appealled.