The Supreme Court of Canada has granted leave to hear an appeal of the decision of the Federal Court of Appeal in Veuve Clicquot Ponsardin v. Les Boutiques Cliquot Ltee. (2004 FCA 164). In so doing, the Supreme Court of Canada will have an opportunity to discuss -- and perhaps clarify -- the scope of protection for famous marks in Canada.
In Veuve Clicquot, the well-known manufacturer of champagne is suing the owner of six women's retail clothing stores that operate under the names CLIQUOT and LES BOUTIQUES CLIQUOT for trademark infringement, passing off and depreciation of goodwill. The Federal Court of Appeal upheld the Trial Division's dismissal of Veuve Clicquot Ponsardin's claims, essentially on the basis that there was no likelihood of confusion due to the difference between the parties' wares and services, even though:
- the Plaintiff had used its VEUVE CLICQUOT trademark for many years in connection with champagne as well as a vast array of promotional items, including scarves and other fashion articles;
- the Plaintiff had advertised its VEUVE CLICQUOT champagne in fashion magazines and had sponsored fashion events;
- the Courts found that the Plaintiff's VEUVE CLICQUOT trademark was inherently strong, had been used for a lengthy period of time, and was deserving of a broad scope of protection;
- the Courts found that there was a great degree of resemblance between the respective marks; and
- expert evidence was provided to support the argument that as a well-known luxury brand VEUVE CLICQUOT was "elastic" in nature and could expand into the fashion field in the future.
In support of the finding that there was no confusion, the Courts referred to the Federal Court of Appeal's 1998 decision in Pink Panther Beauty Corp. v. United Artists Corp. ([1998] 3 F.C. 534). In that case it was held that there was no reasonable likelihood of confusion between the famous THE PINK PANTHER movies and PINK PANTHER hair and beauty care supplies and services. Although the Supreme Court of Canada similarly granted leave to hear an appeal in Pink Panther, the parties settled the matter before it could be heard by the Supreme Court. As Pink Panther has created challenges for the protection of well-known trademarks in Canada, owners of famous trademarks will eagerly be awaiting the Supreme Court of Canada's decision concerning this important issue.
We will report further once this matter has been heard, which will likely occur later this year.
Mark K. Evans, Toronto