Perks are for everyone: PERKOPOLIS mark found non-infringing

In Venngo Inc. v. Concierge Connection Inc. et al., 2015 FC 1338, Justice Manson dismissed Venngo’s claim that Concierge and its directors infringed Venngo’s marks ending with the word “PERKS”, by using the trade-mark PERKOPOLIS. He also dismissed the claims that the defendants made false and misleading statements discrediting Venngo’s business, committed the tort of passing off and depreciated their goodwill, contrary to subsections 7(a), 7(b), 7(c) and 22 of the Trade-Marks Act.

Venngo owned the following trade-marks: WORKPERKS, MEMBERPERKS, ADPERKS, PARTNERPERKS, CLIENTPERKS and CUSTOMERPERKS. The wares and services associated with Venngo’s trade-marks relate to Discount Programs. Venngo claims that Concierge’s trade-mark PERKOPOLIS was being used to offer services nearly identical to those offered by Venngo.

The main issue between the parties was confusion, set out in section 6 of the Act. After reviewing the case law on confusion, Justice Manson at paragraph 105 distilled confusion in this case into the following inquiries:

1. As a matter of first impression, would the relevant public – primarily the HR decision makers of the parties’ customers, but also end-users of the services offered by the parties, be confused or likely to be confused into thinking that the source of PERKOPOLIS services (CCI) is the same as or associated with the source of WORKPERKS, ADPERKS, CUSTOMERPERKS or MEMBERPERKS services (Venngo);
2. In determining the likelihood of confusion, as a first step the Court will consider the degree of resemblance between the marks in appearance or sound or in the ideas suggested by the marks – the subsection 6(5)(e) factor most likely to have the greatest effect on the confusion analysis (Masterpiece, above, at para 49);
3. The other section 6 factors and surrounding circumstances must then also be considered, including the evidence of actual confusion.

The services, business, customers and clients of Venngo and Conceirge overlap. This favours Venngo, as does the length of time Venngo’s trademarks have been used. However, Justice Manson found that there is little resemblance in either appearance or sound and there is also little resemblance in the ideas suggested by the trade-marks. He also found that the Venngo trade-marks lacked inherent distinctiveness as “there is nothing remarkable or unique about the use of “perk” in each of Venngo’s trademarks, or its combination with the words indicating to whom the perks are offered.”

Venngo’s evidence of actual confusion was not reliable. For example, two witnesses testified to having thought PERKOPOLIS was connected to the Venngo trade-marks due to the word “perk”. This goes to the weaknesses of Venngo’s trade-marks.

Justice Manson dismissed Venngo’s claim of trade-mark infringement.

A copy of the decision can be found here.