- Venngo Inc. v. Concierge Connection Inc. (Perkopolis, Morgan C. Marlowe and Richard Thomas Joynt), 2015 FC 1338
- February 1, 2016 | Authors: Adrian J. Howard; Beverley Moore; Chantal Saunders
- Law Firm: Borden Ladner Gervais LLP - Ottawa Office
In this action for trademark infringement, Venngo alleged that Concierge and its directors infringed its rights in a family of registered Canadian trademarks ending in "PERKS", by using the registered trademark "PERKOPOLIS", pursuant to sections 19 and 20 of the Trade-marks Act. Venngo further alleged that the Defendants have 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.
These claims were dismissed by the Court.
The companies to this litigation were described as "Commercial Program Providers", a term used to describe their business of offering discount, benefit and incentive programs to Canadian companies and professional organizations. The customers of Venngo and CCI sign contracts so they can offer these discounts on various products and services, including entertainment tickets, car rentals, fitness clubs, hotels, spas and more, to their employees as membership or employment benefits above and beyond salary or wages.
The personal claim against Mr. Joynt and the claim under subsection 7(c) were withdrawn at the trial, and personal liability against Ms. Marlowe was not made out. The claims pursuant to subsections 7(a), 7(b), sections 19 and 22, were dismissed by the Court with short reasons.
The claim pursuant to section 20 was also ultimately dismissed, with the Court finding there was little resemblance in the Venngo family of marks (WORKPERKS, ADPERKS, MEMBERPERKS and CUSTOMERPERKS) with the use of PERKOPOLIS in either appearance or sound or in the ideas suggested by the marks. The Court held that each of the Venngo marks suggests that perks are being offered to a specific group or in a specific circumstance. In contrast, the Court held that PERKOPOLIS suggests a type of benefit program, but otherwise has little obvious suggestion as to whom or for what the perks are offered, and does not suggest any of the ideas associated with Venngo's trademarks.
The Court further held the marks had little inherent distinctiveness; the services and business of CCI and Venngo substantially overlap, as do their customers and clients; Venngo used its marks longer than the Defendants; and the evidence of confusion was not sufficient to override the other factors.
The counterclaim for invalidity was not fully considered due to the earlier holdings, but the Court did not find on the state of the register evidence provided by the Defendants nor in light of the Defendants' use of the PERKOPOLIS trademark or Perkopolis trade name that Venngo's registered trademarks are invalid.