- Multiple Claims against a Competitor for Passing Off, Copyright and Trademark Infringement are Dismissed on Summary Judgment
- August 4, 2016 | Authors: Adrian J. Howard; Beverley Moore; Chantal Saunders
- Law Firm: Borden Ladner Gervais LLP - Ottawa Office
Boaden Catering Limited v. Real Food For Real Kids Inc. et al., 2016 ONSC 4098
This is a dispute between two competitors. RFRK specializes in providing catering services geared to young people such as children attending day care or before and after school programs. Boaden has a broader based catering business which has a division called Organic Kids Catering.
Boaden brought multiple claims against the defendants, but we will only address those that relate generally to IP. All the plaintiff's claims were dismissed on summary judgment.
The defendants operated a website at RFRK.com for approximately 10 years which featured the marks Real Food For Real Kids, RFRK and Real Food Lunch Club. Boaden subsequently registered the following domain names:
a) Realfoodforrealkidss(.com) [sic]
b) Realffoodforkids(.ca) [sic]
RFRK had previously complained to the Canadian Internet Registration Authority ("CIRA") regarding the domain name use, but CIRA has a policy that it will not implement the decision of an arbitral panel if a Canadian court action is pending in respect of the domain name at issue. Thus, after hearing the evidence, the Court held that Boaden registered the domain names in bad faith for the purpose of exploiting the value of RFRK's trademarks or otherwise for illegitimate financial gain. The Court dismissed the claims by Boaden for a declaration that it is the lawful owner of the domain names set out above.
Boaden also claimed a theft of trade secrets and corporate espionage because the defendants sent a private investigator to meet with the plaintiff and pose as a prospective customer. The Court held the information conveyed was not confidential and it was not communicated in confidence, therefore this claim was dismissed.
Boaden further claimed for passing off, copyright and trademark infringement, alleging that RFRK updated its website by borrowing ideas off Boaden. The Court noted the alleged similarities included:
a) footers at the bottom of a page with items such as "About Us" and "Contact Us";
b) Boaden's website allows a video to be accessed on a link "OKTV" while RFRK has a video available on "FMTV";
c) Boaden has a menu available and RFRK has added a menu to its website;
d) their contact page "looks almost identical" in that they both have photos of food and both ask for the first and last names and email addresses of persons sending a message;
e) both websites discuss corporate missions and values; and
f) Boaden provides an "international" menu selection while RFRK offers a "globally inspired section".
The Court held that these were highly generic features commonly seen on websites, thus the allegations of passing off and confusion were dismissed.
As for the copyright in the menu, the Court held that all menus share certain characteristics in that they list what items are offered on what day and at what time. But, the Court noted that Boaden and RFRK menus otherwise have quite different and distinct layouts and dismissed the copyright infringement claim.
With these and the other claims all dismissed, the Court awarded summary judgment to the defendants.