Hard Hat – Some Protection, but Not Enough

A recent Federal Court of Appeal decision upheld the trial decision that Société Laurentides Inc. (“SLI”) did not infringe the trade-mark of Osmose-Pentox Inc.(“OPI”).  SLI produced wood primers under the name “wood conservator”, and OPI is the registered owner of the design trade-mark CONSERVATOR DESIGN, where the “O” has been replaced with the image of a tilted hard hat.  OPI also sells wood primers under its CONSERVATOR trade-mark.  The full version of the decision is available here.

The question answered in the negative by the trial judge (and upheld on appeal) was whether OPI had a monopoly over the word CONSERVATOR and whether SLI was liable for infringement of OPI’s registered trade-mark.  The Court determined NO – SLI was merely using the descriptive word CONSERVATOR as a means to describe its product as being able to conserve and protect wood.  The Court confirmed this, referring to a defense available within the Trade-Marks Act, section 20(1)(b)(ii), which states that no registration of a trade-mark prevents a person from making a bona fide use of a term as a description of its wares, without having any effect of depreciating the goodwill of the registered owner.

There was no evidence raised at Court of there being any actual confusion and no evidence that a common purchaser would have suspected that SLI was using the descriptive term as a trade-mark.  Likewise, there was no evidence of any depreciation of goodwill or economic damage to OPI.

The Court summarized it nicely in the appeal decision at 17:

[17] There is no doubt that Osmose-Pentox enjoys the exclusive right to use the design mark CONSERVATOR DESIGN. However, as a design mark, the protection it has under the Act covers only the representation of the word “conservator” where the letters “o” or “eu” have been replaced by a hard hat, and does not extend to the words suggested by the design mark. In other words, the distinguishing feature of Osmose-Pentox’s design mark is only the hard hat. In the absence of the hard hat, it would be difficult to imagine that there would be any protection under the Act.

Therefore, the hard hat offered some protection, but not enough.

For more information on protecting your brand, or on trade-marks, contact me.

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