Oct 20 2009
The plaintiff Atomic Energy of Canada Limited (AECL) was a Canadian crown corporation. The defendants AREVA and AREVA Canada were, respectively, a French majority state-owned corporation and its Canadian subsidiary. The parties competed in the provision of nuclear wares and services. All existing nuclear reactors in Canada used AECL’s CANDU technology. The defendants had sold nuclear reactor parts and components in Canada. In a trademark infringement action, AECL alleged that the defendants’ use of their A DESIGN mark infringed AECL’s FLYING A DESIGN mark pursuant to s.20(1) of the Trademarks Act.
Both trademarks were registered. AECL also alleged passing off, depreciation of goodwill pursuant to s.22(1) of the Trademarks Act and copyright infringement. AREVA Canada was currently suing AECL for patent infringement. The defendants sought a summary dismissal of AECL’s action.
Justice Zinn of the Federal Court granted the defendants’ motion for summary dismissal. The following comments of Lord Denning led Justice Zinn to conclude that in the nuclear power business, “the fact that Homer Simpson may be confused is insufficient to find confusion”:
The test is whether the ordinary, sensible members of the public would be confused. It is not sufficient that the only confusion would be to a very small, unobservant section of society; or as Foster J. put it recently, if the only person who would be misled was “a moron in a hurry”.1
Bearing in mind consumers’ high level of sophistication and the prudence exercised during the procurement process in the nuclear power business, confusion should not be assessed from the point of view of the somewhat hurried consumer. It was beyond the realm of possibility that any utility could be confused by the resemblance of the parties’ marks into purchasing a reactor or nuclear services from the wrong company. Any passing confusion that might arise from the resemblance of the trademarks would always be dispelled through the lengthy and detailed procurement processes before nuclear wares or services were actually purchased. When considering confusion, regard must be had to the overall presentation of the parties’ trademarks. AREVA’s A DESIGN trademark was used in the first and last letter of the name AREVA; it was not used alone but as part of, or in close proximity to the name AREVA. AECL’s FLYING A DESIGN trademark always appeared in close proximity to its corporate mark AECL/EACL. It was not sufficient if only a very small, unobservant section of society would be confused. Accordingly, there was no genuine issue for trial with respect to AECL’s allegations of trademark infringement and passing off, and that claim was dismissed.
The copyright infringement claim was also dismissed because there was no causal connection between AECL’s work and AREVA’s A DESIGN work, the latter having been created in 2001 by a design firm in France with no knowledge of the AECL FLYING A DESIGN trademark. Even if AREVA’s trademark could be said to come so near to AECL’s trademark as to give every person seeing it the idea created by the original, AREVA provided uncontradicted evidence that there was no copying, thus overcoming any inference to the contrary. Accordingly, there was no genuine issue for trial with respect to AECL’s allegation of copyright infringement.
This article is for information purposes only and does not constitute legal or professional advice.
1 Newsweek Inc. v. British Broadcasting Corp.,  R.P.C. 441 at p. 446 (H.L.)
Back to blog overview
Tags: Paul Tackaberry