Black & Decker Corporation v. Piranha Abrasives Inc., 2015 FC 185 (Justice Manson)
February 13, 2015
Jane Steinberg (Gowling Lafleur Henderson LLP) for the Applicants
Michelle L. Wassenaar and Andrea Long (Method Law Professional Corporation) for the Respondent
Applicants sought a declaration of infringement, injunctive relieve and damages for infringement of Piranha and Piranha & Design marks, both relating to saw blades. The respondent sold various diamond abrasive blades, grinders, polishing pads for use with various building supplies in association with its Piranha Abrasives Design mark.
The Court disagreed with the respondent that the lack of evidence on actual confusion during four years of co-existence lead to a negative inference or that the use by the applicant of its “Black & Decker” and Orange & Black trademarks as house brands eroded the distinctiveness of its trademarks.
The Court refused to limit the applicants’ registration to the actual goods it sold which would have excluded respondent’s abrasive diamond saw blades saying, the “proper focus is what the Applicants’ registered trademarks authorize the Applicants to have the exclusive right to do, … not what the Applicants happen to be doing at the current time”.
The Court concluded there was a likelihood of confusion considering the factors of section 6(5), including the length of time the marks had been used by the applicant, since 1987, and respondent, only since 2010, and the respondent’s abrasive blades were sold at a similar price point to similar consumers and were included in the list of goods in the trademark registration. The degree of resemblance was high – both having the word “Piranha” and a fish design.
The Court held that there was only infringement with respect to saw blades but not with the respondent’s other products and there was no passing off or depreciation of goodwill. The Court granted nominal damages ($10,000), costs ($20,000) and an injunction, but only against the saw blades. The Court did not order the domain names transferred and allowed the respondent 90 days to sell off the remaining inventory.
By Alan Macek Dimock Stratton LLP