Remo Imports Ltd. v. Jaguar Canada Ltd.

Remo Imports Ltd. v. Jaguar Canada Ltd.

Remo's registration No. 263,924 for JAGUAR in association with luggage and related wares is invalid and shall be expunged because (i) Jaguar Cars' JAGUAR mark for automobiles was famous and enjoyed broad protection at the material dates, (ii) Jaguar Cars had a real and established connection with personal accessories and luggage (zone of natural expansion), (iii) Remo's adoption and use of JAGUAR for luggage was likely to depreciate Jaguar Cars' goodwill and posed a likelihood of confusion, and (iv) Remo's mark was never distinctive of Remo; accordingly Jaguar Cars' registrations for the Objected Wares remain valid and permanent injunctive relief and ancillary remedies are warranted.

Citation
2006 FC 21
Parties
Plaintiff / Defendant by Counterclaim: Remo Imports Ltd.; Defendant / Plaintiff by Counterclaim: Jaguar Cars Limited; Defendant / Plaintiff by Counterclaim: Ford Motor Company of Canada, Limited (carrying on business as Jaguar Canada)
Court
Federal Court
Jurisdiction
Canada
Judgment Date
16 January 2006
Procedural Posture
Trademark Infringement, Passing Off and Expungement (trade Marks Act) / Final Judgment With Reasons (federal Court)
Outcome
Plaintiff's action dismissed; defendants' counterclaim allowed; Remo registration expunged; Jaguar Cars' registrations for the Objected Wares upheld; permanent injunction granted.
Legal Topics
Depreciation of Goodwill (s.22), Likelihood of Confusion (s.6), Registrability and Expungement, Distinctiveness and Acquired Distinctiveness, Brand Extension / Zone of Natural Expansion, Survey Evidence Admissibility and Methodology
Source Language
English
Intellectual Property Trade Mark Law Unfair Competition Passing Off Depreciation of Goodwill (s.22) Likelihood of Confusion (s.6) Registrability and Expungement Distinctiveness and Acquired Distinctiveness +2 more

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Parties

Remo Imports Ltd.

Plaintiff / Defendant by Counterclaim

Jaguar Cars Limited

Defendant / Plaintiff by Counterclaim

Ford Motor Company of Canada, Limited (carrying on business as Jaguar Canada)

Defendant / Plaintiff by Counterclaim

Procedural Posture

Trademark Infringement, Passing Off and Expungement (trade Marks Act) / Final Judgment With Reasons (federal Court)

Legal Issues

  1. 1 Whether Remo's registration for the mark JAGUAR for luggage wares is invalid and should be expunged
  2. 2 Whether Remo's use of JAGUAR depreciated the goodwill of Jaguar Cars' famous JAGUAR mark (s.22)
  3. 3 Whether Remo infringed Jaguar Cars' registered rights (s.19, s.20) and/or passed off goods (s.7)

Ratio Decidendi

Remo's registration No. 263,924 for JAGUAR in association with luggage and related wares is invalid and shall be expunged because (i) Jaguar Cars' JAGUAR mark for automobiles was famous and enjoyed broad protection at the material dates, (ii) Jaguar Cars had a real and established connection with personal accessories and luggage (zone of natural expansion), (iii) Remo's adoption and use of JAGUAR for luggage was likely to depreciate Jaguar Cars' goodwill and posed a likelihood of confusion, and (iv) Remo's mark was never distinctive of Remo; accordingly Jaguar Cars' registrations for the Objected Wares remain valid and permanent injunctive relief and ancillary remedies are warranted.

Court Disposition

Plaintiff's action dismissed; defendants' counterclaim allowed; Remo registration expunged; Jaguar Cars' registrations for the Objected Wares upheld; permanent injunction granted.

Orders

  • Plaintiff's action dismissed and Defendants' counterclaim allowed
  • Remo Registration No. 263,924 is expunged as invalid (grounds: depreciation of goodwill under s.22; potential to deceive; likelihood of confusion; non-distinctiveness)