Scott Safety Supply not Confusing with Registered Trade-mark “Scott”

  • December 03, 2015

Scott Technologies Inc. v. 783825 Alberta Ltd. Et al., 2015 FC 1336 (Zinn, J.)

December 3, 2015

Peter E.J. Wells and Christine Laing of McMillan LLP, for Scott Technologies Inc. (Plaintiff)
Grant Stapon Q.C. of Bennett Jones LLP, for 783825 Alberta Ltd. (Defendant)

The Plaintiff had three registered trade-marks, and alleged that the defendants:

  1. Caused confusion
  2. Passed off their wares and services as those of the plaintiff
  3. Infringed the registered trade-marks
  4. Depreciated the plaintiff’s goodwill

The Plaintiff had the stylized logo “SCOTT” in association with various valves and safety equipment, “AIR-PAK” in association with breathing equipment, and the word mark SCOTT with respect to instrument systems, gas detectors, breathing systems and the like. The marks were registered on May 26, 1972, September 1973 and July 11, 2006, respectively.

The defendants commenced carrying on business in fire extinguisher sales and maintenance, under the trade name “Scott Safety Supply & Services” commencing May 24, 1995, and by December of 1995, simply “Scott Safety Supply Services”. On May 5, 1998, the business was incorporated in Alberta as Scott Safety Supply Services Ltd.

From June 16, 2000 to December 31, 2003, the Defendant Scott Safety Supply Services Ltd. “had the right to inspect, repair and service” certain of the Plaintiff’s products, under a repair center agreement.

On September 30, 2011, counsel for the Plaintiff sent a letter demanding that Scott Safety Supply Services Ltd. cease use of the trade-name SCOTT alone or as part of any other trade mark.

The plaintiff led evidence from a Health and Safety coordinator for a major energy company, one of its employees, and a private investigator. The Defendants led evidence from the founder of Scott Safety Supply Services and the vice president of a successor company.

The Court noted that to determine passing off pursuant to s. 7(b) of the Trade-marks Act, a plaintiff must prove:

  1. The existence of goodwill.
  2. A negligent or deliberate misrepresentation that causes confusion.
  3. That the misrepresentation has caused, or is likely to cause damage.

The Court found there was no evidence of the defendants passing off wares or services as those of the plaintiff.

In assessing confusion, both for the infringement and passing off analysis, the Court noted that the predominant element of both parties’ marks was “Scott”. Pursuant to s. 6(5) of the Act, there were a number of factors to be assessed, and the Court noted that the word Scott was lacking in inherent distinctiveness. Further, both marks were well known in the relevant channels of trade. The length of use was not determinative, since the underlying question was whether the mark was distinctive. The Court noted the lack of evidence of actual confusion. While noting that evidence of actual confusion was not required to meet the test of “likelihood of confusion”, the Court noted that the parties had sold products to oil patch customers for several years, and if confusion was likely, there would have been some evidence of it by that point.

The Court concluded that in the absence of confusion after 20 years in the marketplace, there was no realistic likelihood of confusion and no passing off. The Court found no evidence of loss of goodwill, and hence no depreciation of goodwill.

The Court was critical of the plaintiff’s delay in seeking a remedy, noting:

A business cannot lie in the weeds, allowing another to carry on and invest in and grow its business, and then spring up and enlist the aid of the court when it suits its purposes, claiming it has been unfairly treated. In this case, if there is any unfairness, it is that the defendants were unfairly treated by the plaintiff when it decided to use the same name the defendants had been using in excess of 20 years.

The Plaintiff’s claim was dismissed with costs.

By: Shaun B. Cody, New Horizon Law