The recent Federal Trial Court decision of Pharmacommunications Holdings Inc. v. Avencia International Inc. (“Avencia“) is a reminder to all lawyers that a successful claim requires proof of every element of the applicable legal test.

At issue in Avencia was whether the respondent’s trademark, PHARMACOMM, caused, or was likely to cause, confusion with the applicant’s trademark, PHARMACOMMUNICATION. Both companies provided marketing services to the pharmaceutical industry, although the degree of overlap was not agreed on. The applicant relied on s. 7(b) of the Trade-marks Act, which prohibits a person from directing “public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another.”

The applicant sought various relief, including a declaration, a permanent injunction and delivery up of all infringing materials. The applicant focused its submissions on the issue of confusion. The respondent denied any confusion and also argued that a trademark holder cannot appropriate descriptive words, even by combining two words together.

The Court concluded that there were three necessary components to a passing-off action:

  1. the existence of goodwill;
  2. deception of the public due to a misrepresentation; and
  3. actual or potential damage to the plaintiff.

The Court went on to find thatit did not need to address all three components since “the Applicant has so clearly failed to meet one of the components of passing-off as required by subsection 7(b) of the Act, i.e. actual or potential damage”.

In coming to this conclusion, the Court relied on earlier cases, including the 2007 Federal Court of Appeal case, BMW Canada Inc. v. Nissan Canada Inc., which ruled that damages cannot be presumed and there must be evidence to prove them. Since all three elements of passing-off were not proven, the application was dismissed with costs against the applicant.

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