• Court of Appeal Dismisses Appeal on the Merits from a Finding of No Trademark Infringement but Allows Appeal in Respect of Lump Sum Costs Award
  • June 6, 2017 | Authors: Jillian Brenner; Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Venngo Inc. v. Concierge Connection Inc. (Perkopolis), 2017 FCA 96 

    In this appeal, Venngo appealed from the Federal Court's decision (2015 FC 1338, our summary) dismissing Venngo's claims for trademark infringement and related actions, as well as from the decision granting costs in the amount of $231,000. In the decision under appeal, Venngo alleged that CCI's use of the trademark PERKOPOLIS was an infringement of Venngo's rights in its own suite of perks-related trademarks. 

    On appeal, Venngo challenged the Federal Court's dismissal of the claims against CCI under subsection 7(b), paragraph 20(1)(a) and section 22 of the Trade-marks Act. Venngo argued that the Federal Court erred in finding no confusion and thus, no infringement under paragraph 20(1)(a) and no passing off under subsection 7(b). With respect to section 22, Venngo submitted that the Federal Court committed a legal error under the first step of the Veuve Clicquot test by narrowing the requirement for "use" to only uses of a plaintiff's trade-mark as it is registered. 

    On the issue of whether the Court erred in assessing confusion, the Court of Appeal found that, in many respects, Venngo was asking the Court to intervene and conduct a de novo confusion assessment and to substitute its assessment of the evidence for that of the Federal Court. The Court of Appeal found that Venngo failed to establish any palpable and overriding error in the Federal Court's assessment and weighing of the evidence of actual confusion. 

    With respect to the Court's treatment of Venngo's claim under section 22, the Court of Appeal agreed with Venngo that a defendant need not use a mark that is completely identical to the plaintiff's trademark to be liable under section 22. However, the Court of Appeal also found that any error made by the Court in describing the test under section 22 too narrowly was irrelevant to the appeal as the Court's decision was unrelated to this point. Rather, the Federal Court dismissed the section 22 claim because CCI's impugned use did not constitute use within the meaning of section 22. The Court of Appeal found no error in this holding. Therefore, the Court of Appeal dismissed the appeal from the judgment on the merits. 

    On the issue of the Court's decision to order a lump sum of costs, the Court of Appeal allowed the appeal in this respect. The Court of Appeal agreed with Venngo that the Federal Court committed a legal error in its assessment of CCI's written offer to settle. The Court of Appeal noted that it was impossible to discern what role the offer played in the lump sum amount and remitted the matter of costs to the trial judge for re-determination.