ABSOLUTE Confusion

  • October 23, 2015

Absolute Software Corporation v. Valt.x Technologies Inc. , 2015 FC 1203 (Zinn, J.)

October 23, 2015

Peter E.J. Wells and Rohan Hill, McMillan LLP for the Applicant
Dennis Meharchand for the Respondent

The Applicant claimed violations of sections 7(b), 7(c), 19, 20, and 22 of the Trade-marks Act.

The Applicant owns the ABSOLUTE family of registered trade-marks used in association with software. In 2012, the Respondent began using ABSOLUTE SECURITY in association with software.

The Court ruled that the Respondent had not used an identical mark and had not passed off its goods or services in response to a customer’s request for the Applicant’s. It rejected the claims under sections 7(c) and 19.

The Court found that the Respondent had created a likelihood of confusion, and rejected its assertion that its trade-mark was VALT.X ABSOLUTE SECURITY FOR WINDOWS SOFTWARE. An average customer viewing the Respondent’s labelling and website would understand that those terms are used separately: VALT.X is the company name; and ABOSLUTE SECURITY is a product line.

The Court also found that while the parties’ software perform different functions, they both provide software against viruses and malware. The average hurried consumer would consider that the parties offer similar software.

Finally, the Court held that the distinctive feature of the parties’ trade-marks is the word ABSOLUTE, which is used by both of them. The Respondent’s use of the word SECURITY is descriptive.

Because there was no evidence of actual confusion with, or depreciation of, the Applicant’s trade-mark, and the Respondent had only made $1,939.53 in sales, the Court awarded damages of $2,000. The Court also granted a permanent injunction and ordered the delivery up of infringing goods, packaging, etc.

By Greg Moore, Joli-Coeur Lacasse LLP