Jun 30 2022
On June 20, 2022, the Federal Court awarded a significant victory to Ridout & Maybee client Mondo Foods. In Mondo Foods Co. Ltd. v. TorreMondo Industries Inc., 2022 FC 926, Mondo Foods’ family of MONDO trademarks were found to be infringed by the respondent’s “TORREMONDO” and “TORREMONDO & Design” trademarks as used in association with coffee and coffee-related products.
The respondent did not oppose the application. Based on Mondo Foods’ evidence, the Court found that the MONDO trademarks had been used in association with brewed coffee since 2011, and that the respondent’s later use of the “TORREMONDO” and “TORREMONDO & Design” trademarks was likely to cause confusion Mondo Foods’ MONDO trademarks based on “a moderate degree of similarity between each of the TORREMONDO marks and the MONDO trademarks”.
On that basis, the Court awarded $13,000 in damages and $29,143 in litigation costs to Mondo Foods, as well as a declaration of infringement, a permanent injunction against future trademark infringement, and an order directing the respondent to destroy any materials related to the MONDO trademark.
The decision is significant for several reasons:
- The Court has shown a willingness to grant infringement proceedings where alleged infringers refuse to participate in the proceeding. This should encourage IP owners to bring proceedings when the alleged infringer does not cooperate or ignores reasonable demands including participation in proceedings. Furthermore, in this case the applicant (Mondo Foods) was awarded full costs for having to bring the proceeding, thereby mitigating parties’ concerns over the costs of litigation.
- Additionally, the Court granted an award of damages against the infringer without evidence of specific losses, even though the infringer was determined to be a legitimate business and not a clear counterfeiter.
- Where a trademark owner has not accumulated extensive goodwill or sales in association with a specific set of goods and services at issue, the fact that it has a family of marks with a broader reputation in similar goods and services assists in a finding of confusion. As such, IP owners would be well advised to pursue a family of marks and apply for registration as early as possible.
For more details of the case, read recent coverage in Lawyer’s Daily or the decision of the Federal Court.
Back to blog overview
Tags: Abbas Kassam