• Litigants will be tickled pink: Ruling in Victoria's Secret v Thomas Pink promotes greater access to relief under Trade-marks Act
  • February 3, 2014 | Author: Graham A. Hood
  • Law Firm: Smart & Biggar/Fetherstonhaugh - Toronto Office
  • Under the Trade-marks Act, only an “interested person” or a “person interested” in a matter at issue may apply to the Federal Court for certain remedies. The Court recently ruled on what constitutes an “interested person” within the meaning of section 53.2 of the Act in Victoria’s Secret Stores Brand Management, Inc and Victoria’s Secret (Canada) Corp v Thomas Pink Limited, 2014 FC 76. The plaintiffs, collectively referred to as “Victoria’s Secret,” sought from the Court, among other things, a declaration that their use in Canada of their trade-marks consisting of or containing the word “PINK” did not infringe the trade-mark rights of the defendant, Thomas Pink Limited. The defendant, which sells men’s and women’s formal shirts in Canada under the trade-mark “PINK”, did not file a Statement of Defence, but instead brought a motion for an Order dismissing the action on the basis that Victoria’s Secret did not have standing to bring the action in the first place, in that it was not an “interested person” within the meaning of section 53.2 of the Act.

    In finding that Victoria’s Secret was such an interested person, and therefore permitting the action to proceed, the Court concluded that:

    • the Trade-marks Act must be construed in a manner that promotes access to the Act;
    • a determination as to who is a “person interested” must be done on a case-by-case basis;
    • a “person interested” must demonstrate a reasonable apprehension that a commercial interest that it has, or may have, may be affected; and
    • the threshold for determining whether a person is a “person interested” is low.

    This decision is notable for a number of reasons. First, many of the cases in the Federal Court and the Federal Court of Appeal that consider a “person interested” are dealt with in the context of an application to expunge a registration of a trade-mark under section 57 of the Act. This case, in which the plaintiffs were not seeking to expunge any of the defendant’s registered trade-marks, but rather seeking a declaration that they were free to use certain of their trade-marks, notwithstanding the defendant’s registrations, considered the definition of an “interested person” within the meaning of section 53.2, a catch-all provision, which, the Court ruled, “must be broadly construed to be directed to any other act or omission done by another person, as may be contemplated by the Act” (emphasis added). Citing the reasons of the Federal Court of Appeal in BBM Canada v Research in Motion Limited, 2011 FCA 151, the Court stated that the purpose of the Act in general, and its remedial provisions in particular, “is best met by an interpretation that promotes access to the courts that is as expeditious and proportionate as possible.”

    Second, this decision confirms the general principle that what constitutes a “person interested” depends on the facts of each case. As is evident from the statutory definition of a “person interested”, the “interested person” in section 53.2 is akin to the “person interested” in section 57. Thus, the “interested person” of section 53.2 must demonstrate that they are affected or “reasonably apprehend” that they will be affected by an act or omission done by another contrary to the provisions of the Act. In Victoria’s Secret, the Court took “a large and liberal view” as to the definition of such a person and, in particular, whether Victoria’s Secret had a “reasonable apprehension” that it might be sued by the defendant under the Act. Having already been sued in a similar fashion in the United Kingdom, Victoria’s Secret was able to establish itself as an “interested person” in the present case, as its apprehension that its Canadian commercial activities may be challenged by the defendant under the Act was reasonable in the circumstances.

    In view of Victoria’s Secret, the Federal Court is clearly prepared to read the Act in such a way as to promote cost-effective access to justice and to the remedies available under the Act. In particular, section 53.2 will be “broadly construed” to capture any act or omission that is not covered by section 57, the relief contemplated therein available to “any interested person” capable of demonstrating a reasonable apprehension that a commercial interest that it has, or may have, may be affected by such act or omission. As a result, an application under section 53.2 may be useful in a wide variety of circumstances, and afford a wide variety of litigants cost-effective access to “expeditious and proportionate” relief in the form of an injunction, the recovery of damages or profits and the destruction, exportation or other disposition of any offending materials.


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