Drolet v. Stiftung Gralsbotschaft and Foundation of the Grail Movement

Drolet v. Stiftung Gralsbotschaft and Foundation of the Grail Movement

The court held that titles of single literary works are inherently descriptive and, in this context, the registered trade-marks for the title (French, English, German equivalents of 'In the Light of Truth') were invalid and struck; the author pseudonym and logo were capable of registration but only the registered logo (A & snake design, LMC 519 469) was found infringed by the plaintiff’s use on title pages, while the plaintiff’s limited, non-confusing distribution and distinct presentation precluded confusion as to the author name trade-mark; the Stichting owned copyright in Kaufmann’s French translations via licence and assignment evidence but its copyright infringement counterclaim was...

Citation
2009 FC 17
Parties
Plaintiff/defendant to Counterclaim: YVON DROLET; Defendants/plaintiffs by Counterclaim: STIFTUNG GRALSBOTSCHAFT and THE FOUNDATION OF THE GRAIL MOVEMENT - CANADA
Court
Federal Court
Jurisdiction
Canada
Judgment Date
6 January 2009
Procedural Posture
Intellectual Property — Trade Marks and Copyright Dispute / Final Judgment (reasons for Judgment)
Outcome
Action allowed in part and counterclaim allowed in part; certain trade-marks struck; logo infringement found; copyright counterclaim dismissed as time-barred; nominal damages and injunction ordered; costs to plaintiff.
Legal Topics
Trade Mark Registrability, Descriptiveness, Deceptive Misdescription, Trade Mark Infringement, Passing Off (unfair Competition), Copyright Subsistence and Originality, Copyright Ownership and Licences, Substantial Part Test, Limitation Period for Copyright Actions, Injunctions and Damages, Moral Rights
Source Language
English
Intellectual Property Trade Mark Law Copyright Law Civil Procedure Constitutional Law (freedom of Expression and Religion) Trade Mark Registrability Descriptiveness Deceptive Misdescription +8 more

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Parties

YVON DROLET

Plaintiff/defendant to Counterclaim

STIFTUNG GRALSBOTSCHAFT and THE FOUNDATION OF THE GRAIL MOVEMENT - CANADA

Defendants/plaintiffs by Counterclaim

Procedural Posture

Intellectual Property — Trade Marks and Copyright Dispute / Final Judgment (reasons for Judgment)

Legal Issues

  1. 1 Are the registered trade-marks distinctive under s.2 of the Trade-marks Act?
  2. 2 Are the registered trade-marks descriptive or deceptively misdescriptive under s.12(1)(b) of the Trade-marks Act?
  3. 3 Do the registrations improperly appropriate an author name/title/logo under s.12(1)(a),(c)?

Ratio Decidendi

The court held that titles of single literary works are inherently descriptive and, in this context, the registered trade-marks for the title (French, English, German equivalents of 'In the Light of Truth') were invalid and struck; the author pseudonym and logo were capable of registration but only the registered logo (A & snake design, LMC 519 469) was found infringed by the plaintiff’s use on title pages, while the plaintiff’s limited, non-confusing distribution and distinct presentation precluded confusion as to the author name trade-mark; the Stichting owned copyright in Kaufmann’s French translations via licence and assignment evidence but its copyright infringement counterclaim was...

Court Disposition

Action allowed in part and counterclaim allowed in part; certain trade-marks struck; logo infringement found; copyright counterclaim dismissed as time-barred; nominal damages and injunction ordered; costs to plaintiff.

Orders

  • Strike trade-marks LMC 520 520, LMC 519 477 and LMC 519 476 from the Register of Trade-marks
  • Declare that the plaintiff did not infringe trade-mark LMC 519 470