Dragona Carpet Supplies Mississauga Inc. v. Dragona Carpet Supplies Ltd.

Dragona Carpet Supplies Mississauga Inc. v. Dragona Carpet Supplies Ltd.

On the summary trial record the Court found (a) the Federal Court lacked jurisdiction over a standalone common law passing off claim not grounded in the Act and dismissed that claim; (b) an oral licence and owner control under s.50(1) was established such that the goodwill in the DRAGONA mark in Mississauga accrued to Dragona Scarborough (the owner), not the plaintiff; (c) because goodwill belonged to the owner and no actionable misrepresentation by defendants was made out, the plaintiff failed to establish passing off under s.7(b); and (d) the plaintiff’s contested trademark registrations were improperly obtained in light of prior use and were ordered expunged under s.57.

Citation
2022 FC 1042
Parties
Plaintiff/defendant by Counterclaim: Dragona Carpet Supplies Mississauga Inc.; Defendant/plaintiff by Counterclaim: Dragona Carpet Supplies Ltd.; Defendant/plaintiff by Counterclaim: FlooReno Building Supplies Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
14 July 2022
Procedural Posture
Trademark Infringement, Passing Off and Expungement Counterclaim / Summary Trial Motions Under Rules 213/216; Judgment on July 14, 2022
Outcome
Plaintiff's action dismissed; Defendants' counterclaim allowed; contested registrations expunged; costs to Defendants
Legal Topics
Passing Off, Trademark Registration Expungement, Goodwill, Licensing (s.50), Injunction, Summary Judgment/summary Trial
Source Language
English
Intellectual Property Trademarks Civil Procedure Passing Off Trademark Registration Expungement Goodwill Licensing (s.50) Injunction +1 more

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Parties

Dragona Carpet Supplies Mississauga Inc.

Plaintiff/defendant by Counterclaim

Dragona Carpet Supplies Ltd.

Defendant/plaintiff by Counterclaim

FlooReno Building Supplies Inc.

Defendant/plaintiff by Counterclaim

Procedural Posture

Trademark Infringement, Passing Off and Expungement Counterclaim / Summary Trial Motions Under Rules 213/216; Judgment on July 14, 2022

Legal Issues

  1. 1 Whether summary trial appropriate
  2. 2 Whether plaintiff established passing off under s.7(b) of the Trademarks Act
  3. 3 Whether common law passing off claim is within Federal Court jurisdiction

Ratio Decidendi

On the summary trial record the Court found (a) the Federal Court lacked jurisdiction over a standalone common law passing off claim not grounded in the Act and dismissed that claim; (b) an oral licence and owner control under s.50(1) was established such that the goodwill in the DRAGONA mark in Mississauga accrued to Dragona Scarborough (the owner), not the plaintiff; (c) because goodwill belonged to the owner and no actionable misrepresentation by defendants was made out, the plaintiff failed to establish passing off under s.7(b); and (d) the plaintiff’s contested trademark registrations were improperly obtained in light of prior use and were ordered expunged under s.57.

Court Disposition

Plaintiff's action dismissed; Defendants' counterclaim allowed; contested registrations expunged; costs to Defendants

Orders

  • The Plaintiff's action is dismissed
  • The Defendants' counterclaim is allowed