Date: 20090109
Docket: T-2150-06
Citation: 2009 FC 24
Ottawa, Ontario, January 9, 2009
PRESENT: The Honourable Madam Justice Simpson
BETWEEN:
SALAM TORONTO PUBLICATIONS and
MOHSEN SEYED TAGHAVI
Plaintiffs
and
SALAM TORONTO INC.,
SALAM TORONTO IMMIGRATION SERVICES and
KAMRAN NAGHAVI o/a SALAM TORONTO
Defendants
REASONS FOR JUDGMENT AND JUDGMENT
[1]
The
Plaintiffs’ allege trademark infringement and depreciation of goodwill contrary
to sections 19, 20 and 22 of the Trade-marks Act, R.S.C. 1985, c. T-13
(the “Act”). They also say that the Defendants have used the trademark “Salam
Toronto” in a manner which has caused confusion with the Plaintiff’s business
contrary to section 7(b) of the Act.
THE PLAINTIFFS
[2]
Mohsen
Seyed Taghavi (the Plaintiff) is a journalist and the sole proprietor of “Salam
Toronto Publications”. It has published a current affairs newspaper called “Salam
Toronto” since October 2000 (the Newspaper). The Newspaper is unique in Toronto in that it
is written in both Farsi and English. It is released on a weekly basis in
hardcopy and on the internet. It includes Canadian news, foreign reports about
Canadian news and advertisements of particular interest to Toronto’s Iranian
community.
[3]
The
Plaintiff registered “Salam Toronto Publications” as a business name on
January 5, 2001 and, as described below, he subsequently registered “Salam
Toronto” as a trademark.
THE DEFENDANTS
[4]
The
trade name “Salam Toronto” (the Trade Name) was registered on February 20,
2002. An Ontario Business Names Report produced on November 2, 2006 describes
“Salam Toronto’s” activity as “Iranian Community Information”. However, the
evidence shows that the Trade Name is actually used in connection with the
provision of immigration and settlement services (the Services). The Defendant
Kamran Naghavi (the Defendant) is the sole proprietor of the business.
[5]
Kamran
Naghavi is also the administrator of Salam Toronto Inc. which was incorporated
in Ontario on
April 5, 2006.
[6]
“Salam
Toronto Immigration Services”, is another trade name used by the sole
proprietorship registered by Kamran Naghavi as Salam Toronto. While there is no
registration in evidence for the name “Salam Toronto Immigration Services”, it
is clear that that name is being used by the defendants. It appears at the top
of the home page of Salam Toronto’s website www.salamtoronto.org. As well, the
evidence shows that a third trade name is sometimes used. It is “Salam Toronto
Immigration and Settlement Services”.
A DEFAULT PROCEEDING
[7]
The
defendants failed to appear, failed to file a Statement of Defence and did not attend
the trial. The Plaintiff, Mohsen Taghavi was the sole witness. His evidence was
contained in a Fresh Affidavit sworn on September 4, 2008 which was marked
as an exhibit at trial. That evidence was supplemented by oral testimony and
exhibits.
[8]
The
Plaintiffs provided three affidavits of service to demonstrate that the defendants
were served with the Statement of Claim. They were all sworn on
December 18, 2006 by Ian MacIntyre who said that, on
December 11, 2006, he served Salam Toronto Inc., Salam Toronto Immigration
Services and Kamran Naghavi o/a Salam Toronto by leaving a copy of the
Statement of Claim with Kamran Naghavi. He acknowledged his identity and the
fact that he was an officer of Salam Toronto Inc. and Salam Toronto Immigration
Services. Service was effected at 648 Finch Avenue East, Suite 6. That
address appears on the advertisements for Salam Toronto which are described
below.
[9]
I
am also satisfied that the Defendant is aware of this proceeding because after
the Statement of Claim was served, the Plaintiff met with the Defendant and,
during their discussions, the Defendant acknowledged that he knew of this
litigation.
[10]
Because
this a proceeding in default of defence, every allegation in the Statement of
Claim is to be treated as if it had been denied and the Plaintiff is required to
demonstrate on a balance of probabilities that his claims are made out.
THE PLAINTIFF’S
TRADEMARK
[11]
On
February 20, 2004, the trademark Salam Toronto (the Mark) was registered
in the Plaintiff’s name as #TMA602,837 in association with wares described as
“Newspapers published either in print, online or electronic form, and
periodicals, namely magazines published either in print, online or electronic
form.” The right to the exclusive use of the word “Toronto” was
disclaimed. “Salam” is a word in Farsi which translates as “hello” or
“welcome”.
THE ALLEGATIONS
[12]
The
Plaintiffs submit that the defendants have infringed the Mark by:
(a) Using it in
their domain names, www.salamtoronto.com
and www.salamtoronto.org and generally
on their websites;
(b) Using it on
the www.salamtoronto.org website specifically
in association with the heading “news”;
(c) Using it in
their advertisements in newspapers published by the Plaintiff’s competitors;
(d) Using it in
their email address;
(e) Using it on
their stationary;
(f) Using it in a
telephone directory in a publication called Jadval (the Jadval Directory).
[13]
I
will deal with each alleged use in turn.
(a) Using
the Mark in Domain Names and Generally on Websites
[14]
The
domain names/web addresses which the Plaintiff uses in association with his Newspaper
are www.salamtoronto.net and www.salamtoronto.ca . The Plaintiff
advised the Court that in September or October 2000 www.salamtoronto.com was registered on
his behalf by an acquaintance of his business partner. However, the licence was
allowed to lapse. As a result, the Plaintiff lost the .com domain name and it
was subsequently acquired by the Defendant.
[15]
In
2002, when the Plaintiff first saw the Defendant’s website www.salamtoronto.com, the homepage was
under construction. It was entitled “Salam Toronto” at the top in large bold
type. Below in large type, the words “Immigration and Settlement Services”
appeared. Then a subheading read “Immigration Services”. This was followed by a
list of such services written in English. Below the list, contact information
was provided.
[16]
The
Plaintiff testified that, just before trial, when he called up www.salamtoronto.com, the homepage
simply said “Salam Toronto”. That page stayed on the computer screen for about
five to ten seconds. Thereafter, it automatically disappeared (i.e. without
user intervention) and was replaced by a screen that said “Salam Toronto” and
in smaller but clear type “an immigration firm”. At this point a user could
click on “enter” to continue.
[17]
According
to the Plaintiff, a click on “enter” brought him to the homepage of the Defendant’s
second web address which is www.salamtoronto.org.
The homepage was entitled “Salam Toronto Immigration Services”
and subtitled “an immigration firm”. The page was covered with numerous headings
and lists of topics related to immigration. Links to further information were
provided. One such link was available at the heading “News”.
(b) Using
the Mark Specifically in Association with the Heading “News”
[18]
Below
the heading, “News” reference was made to an article dated September 18,
2003 about transitional rules for the IRPA (the Immigration and Refugee
Protection Act, S.C. 2001, c. 27).
[19]
When
the Plaintiff pursued the link to news, five printed pages of news became
available. Pages 2-5 were the five year old article referred to above and page
1 was an article written in early 2005. The Plaintiff testified that his
newspaper deals only with current events and would not include such outdated articles.
(c) The
Advertisements
[20]
The
three advertisements (the Ads) were written in a mixture of Farsi and English.
The Plaintiff provided translations during his testimony.
[21]
One
of the ads appeared at page 21 of a publication called Iran Star on Friday,
October 5, 2007 (the First Ad). The Plaintiff testified that the First Ad
had appeared weekly in Iran Star since 2005. The First Ad began with the words “Salam
Toronto” in large bold type. Underneath, at the side and in relatively small
print, the word .com appeared. The space below showed a picture of the Toronto skyline. The
next line of print on the ad was also in bold type. It was in Farsi but the
Plaintiff translated it as “Immigration to Canada”.
[22]
This
heading was followed by twelve bullet points in Farsi which, when translated,
read:
(a)
Independent
(b)
Commercial
(c)
Relatives
(d)
Refugees
(e)
Tourism
(f)
Work
(g)
Extended
stay in Canada
(h)
Settlements
for newcomers
(i)
All
matters of translations
(j)
Admission
for students in less than four months
(k)
Citizenship
inquiries
[23]
A
picture of the Defendant (the Photo) formed the background for the lower half
of the ad. The Plaintiff said that it is a true likeness of the Defendant. The
ad indicated that the business was located at 648 Finch Avenue
East, Suite 6
in North
York,
Ontario. There was
no evidence about Iran Star’s circulation or about how frequently and in what
locations it was distributed.
[24]
Under
the Defendant’s name which appeared as Kamran Naghavi in English and Farsi, the
ad indicated in Farsi that the Defendant was an “official expert of
immigration”.
[25]
Another
ad, which is undated, appeared in a monthly Farsi publication called Jadval
(the Second Ad). It began with the words “Salam Toronto” in prominent type and
underlined. Again, .com appeared below in small print. Immediately below “Salam
Toronto” was a word in Farsi which translates as “Immigration”. It was also in
prominent type. It was followed by a telephone number and the Finch Avenue address. The
Photo and a phrase in Farsi which translates as “more descriptions on pages 12
and 71” completed the ad. The ad was undated but the Plaintiff said that it
appeared in almost every issue of Jadval published in the last few years.
[26]
The
final ad was much larger than the others (the Third Ad). Directly under the
heading “Salam Toronto”, were words in Farsi which said “Immigration to Canada”. The Toronto skyline was
shown below. The bullet points from the First Ad were repeated. The Defendant’s
name, Kamran Taghavi, appeared in English and Farsi followed by “official
expert of immigration” in English. Again the ad was undated but the Plaintiff
said it had appeared regularly in Jadval. However, there was no evidence about
Jadval’s circulation or distribution.
(d) Email
Addresses
[27]
The
Plaintiff’s website www.salamtoronto.ca
showed that the Plaintiff’s email address was info@salamtoronto.ca. The Defendant’s
website www.salamtoronto.com
indicated that its email address was info@salamtoronto.com.
[28]
The
Plaintiff testified that Unique Hair Studio (the Studio) wanted to place an
advertisement in the Newspaper but apparently, in error, sent an email with the
relevant information to the Defendant at info@salamtoronto.com.
That initial email was not in evidence. The Plaintiff testified that, sometime
later, a woman from the Studio called him to ask why he had not sent her a
proof for the ad. The Plaintiff said that he had not received her request and
she replied that she had sent it by email and that she had received his
acknowledgement (the Acknowledgment). She sent the Plaintiff a copy of the
Acknowledgment.
[29]
The
Acknowledgment was an auto reply from the defendants at info@salamtoronto.com which said:
We acknowledge with thanks receipt of
your email.
One of our consultants will get back to
you as soon as possible.
Thank you again for using Salam Toronto
Immigration & Settlement services.
Tel & Fax: (416) 733-4050
[30]
There
is no evidence to show how the Studio obtained the defendants’ email address.
As well, there is no evidence to indicate why the Studio did not understand the
Acknowledgment which made it clear that the Studio had contacted Salam Toronto
Immigration and Settlement Services and not the Plaintiff.
[31]
It
is noteworthy that the Acknowledgment shows that the Services are chosen and
purchased through personal contact with a consultant.
[32]
The
Plaintiff also testified that his brother in Los Angeles booked him a
flight to that city for an upcoming visit. When his brother sent him an email
to confirm the itinerary, he received the Acknowledgement. Again there is no
evidence about why the Plaintiff’s brother wrote to the wrong email address and
why he did not realize his mistake when he received the Acknowledgement.
Apparently, several days later, when the Plaintiff said he had not received the
flight information, his brother re-sent it using a correct email address.
[33]
The
Plaintiff’s evidence about these emails included hearsay testimony which I have
accepted but, even on that basis, I cannot conclude that the Studio and the
Plaintiff’s brother were confused as the term is used in the Act. Neither
thought the Defendant’s Immigration Services were being offered by the
Plaintiff. They simply made mistakes when they addressed their emails.
(e) The Stationary
[34]
On
February 26, 2004, the Plaintiff’s solicitor wrote Salam Toronto
Immigration and Settlement Services asking it to cease using the Mark. The
letter in reply dated March 11, 2004 (the Letter) began with a two-line
letterhead which read “Salam Toronto” followed by “Immigration & Settlement
Services” on the second line. The signature was illegible but the words “Salam
Toronto Immigration and Settlement Services” appeared below. In the Letter, Salam
Toronto indicated that it provided immigration and settlement services and
denied infringing the Plaintiffs’ Mark which it noted related only to
newspapers. The Letter also indicated that Salam Toronto registered a domain
name on January 30, 2002. The print at the bottom of the Letter showed
that the domain name was www.salamtoronto.com.
(f) The
Jadval Directory
[35]
“Salam
Toronto – Naghavi”
appeared in Farsi in a directory which was included in Jadval every second
month. The entry appeared under the heading “Immigration and Lawyers”.
THE ISSUES
[36]
The
issues are:
1.
Does
the Defendant’s use of the Mark in his domain names and generally on his
website, on his website specifically in association with “News”, on his
stationary, in his email address, in the Ads and in the Jadval Directory
infringe the Plaintiff’s Mark?
2.
Has
the Defendant depreciated the Plaintiff’s goodwill?
3.
Has
the Defendant breached subsection 7(b) of the Act?
DISCUSSION AND
CONCLUSIONS
Issue 1 Infringement
[37]
Section
19 of the Act gives the registrant of a trademark the right to its exclusive
use throughout Canada and Section 20(1) provides that a registered
trademark is infringed by a person who uses it in association with a confusing
trade name.
[38]
The
issue therefore is whether any of the above-described uses of the trade names
“Salam Toronto”, “Salam Toronto Immigration Services” and “Salam Toronto
Immigration and Settlement Services” are confusing with the Plaintiff’s Mark.
[39]
The
relevant subsection of the Trade-Marks Act on the issue of use is 4(2).
It provides that:
|
4.
(2) A trade-mark is deemed to be used in
association with services if it is used or displayed in the performance or
advertising of those services.
|
4. (2) Une marque de commerce est
réputée employée en liaison avec des services si elle est employée ou montrée
dans l’exécution ou l’annonce de ces services.
|
[40]
In
my view, on the issue of use, the domain names, the email address and website
homepages use the Mark because they serve an advertising and promotional
function as well as playing a contact role. I have reached this conclusion
because they are each immediately linked to substantive information about the
Services. The email produces the Acknowledgment. The “Salam Toronto” homepage
automatically leads to detail about the Services and the domain names quickly
lead to descriptions of the Services. As well, the Ads clearly fall within the
ambit of subsection 4(2).
[41]
However,
the evidence does not show that the stationary and the Jadval Directory are
used for advertising or promotion. In my view, they simply contain contact
information and, for this reason, will not be further considered.
[42]
Subsection
6(4) of the Act deals with confusion. It provides that:
|
6.
(4) The use of a trade-name causes
confusion with a trade-mark if the use of both the trade-name and trade-mark
in the same area would be likely to lead to the inference that the wares or
services associated with the business carried on under the trade-name and
those associated with the trade-mark are manufactured, sold, leased, hired or
performed by the same person, whether or not the wares or services are of the
same general class.
What to be considered
(5) In determining whether trade-marks or
trade-names are confusing, the court or the Registrar, as the case may be,
shall have regard to all the surrounding circumstances including
(a) the inherent
distinctiveness of the trade-marks or trade-names and the extent to which
they have become known;
(b) the length of time the
trade-marks or trade-names have been in use;
(c) the nature of the wares,
services or business;
(d) the nature of the trade;
and
(e) the degree of resemblance
between the trade-marks or trade-names in appearance or sound or in the ideas
suggested by them.
|
6. (4) L’emploi d’un nom
commercial crée de la confusion avec une marque de commerce, lorsque l’emploi
des deux dans la même région serait susceptible de faire conclure que les
marchandises liées à l’entreprise poursuivie sous ce nom et les marchandises
liées à cette marque sont fabriquées, vendues, données à bail ou louées, ou
que les services liés à l’entreprise poursuivie sous ce nom et les services
liés à cette marque sont loués ou exécutés, par la même personne, que ces
marchandises ou services soient ou non de la même catégorie générale.
Éléments d’appréciation
(5) En décidant si des marques de commerce
ou des noms commerciaux créent de la confusion, le tribunal ou le
registraire, selon le cas, tient compte de toutes les circonstances de l’espèce,
y compris :
a) le caractère distinctif inhérent des marques de commerce ou noms
commerciaux, et la mesure dans laquelle ils sont devenus connus;
b) la période pendant laquelle les marques de commerce ou noms
commerciaux ont été en usage;
c) le genre de marchandises, services ou entreprises;
d) la nature du commerce;
e) le degré de ressemblance entre les marques de commerce ou les
noms commerciaux dans la présentation ou le son, ou dans les idées qu’ils
suggèrent.
|
[43]
I
will deal with each factor in turn, recognizing that none are determinative and
that the totality of the circumstances must be considered in context. In
this regard, please see Mattel, Inc. v. 3894207 Canada Inc., [2006] 1
S.C.R. 772, paragraph 54. I am required to determine whether a probable purchaser of
ordinary intelligence, acting with ordinary caution, would be confused. In
this regard, please see Canadian
Schenley Distilleries Ltd. v. Canada's Manitoba Distillery Ltd. (1975), 25 C.P.R. (2d)
1, paragraph 15 and
General Motors Corp. v. Bellows, [1949] S.C.R. 678.
(a) Inherent
Distinctiveness and Extent Known
[44]
In
my view, “Salam Toronto” is not inherently distinctive. It is a weak trademark
and, for this reason, some confusion is unavoidable.
[45]
The
Plaintiff has published his Newspaper weekly since October 2000 and the Mark
has appeared in every issue on the first and last pages and in the masthead.
The Plaintiff also uses the Mark on his websites. The Plaintiff registered
“Salam Toronto Publications” as a business name on January 5, 2001.
[46]
Approximately
7,700 copies of the Newspaper were distributed to supermarkets each week. In
the absence of evidence about cost, I have assumed it is available for free or
at a modest price.
[47]
The
Plaintiff received awards from the Canadian Ethnic Journalists and Wireless
Club in 2002 and from the National Ethnic Press and Media Council of Canada
Inc. in October 2007. As well, the Plaintiff has been appointed to the Board of
the Ontario Community Newspaper Association. These facts suggest that the Newspaper
and the Mark are known and well regarded in and, to some degree, beyond Toronto’s Iranian community.
[48]
The
Defendant registered Salam Toronto as a domain name in January 2002 and as a
business name on February 20, 2002 and at about that time, began construction
of a website at www.salamtoronto.com.
He has also advertised regularly in Iran Star and Jadval in Toronto over the last few
years. However, there was no evidence about the distribution of Iran Star and
Jadval. As well, there was no evidence about the frequency with which the
Defendant was contacted through the web or using email. We know that the
Defendant’s name appears in the Jadval Directory but we have no idea of its
circulation.
[49]
There
was no evidence about the use made of the Services or about their cost but it
is reasonable to assume that the Services are expensive in comparison to the
Newspaper.
[50]
In
these circumstances, I can conclude that the Plaintiff’s Mark is known in the
Iranian community in association with the Newspaper. However, I cannot reach
any conclusion about how well known the Defendant’s trade names might be known in
association with the Services.
(b) Duration
[51]
The
Plaintiff registered Salam Toronto as his trade name on January 5, 2001.
It was registered as his trademark on February 20, 2004.
[52]
The
Defendant registered the business name Salam Toronto on February 20, 2002
and incorporated Salam Toronto Inc. on April 5, 2006.
(c) Nature of
Wares
[53]
The
Plaintiff’s Mark is registered for a weekly current affairs Newspaper.
[54]
The
Defendant offers immigration and settlement services.
(d) Nature of
Trade
[55]
Both
parties’ businesses focus on Toronto’s Iranian community. The Defendant’s Ads appear in Iran
Star and Jadval which the Plaintiff describes as competitive publications. However,
their respective audiences and manner of purchase are different. The Newspaper
is of interest to those who are concerned about current affairs and the
Services are for those with immigration or settlement issues. While there could
be some overlap between the two groups, there is unlikely to be confusion. The
Newspaper is picked up at a Supermarket for free or a modest charge. On the
other hand, a prospective purchaser of the Services works with a consultant to
determine his requirements and pays comparatively substantial fees.
(e) Degree of
Resemblance
[56]
The
Applicant’s Mark and the Defendant’s Trade Name are identical in all respects.
The Plaintiff’s Mark also forms part of the Defendant’s other trade names, web
addresses and email address.
(f) Other
Circumstances
[57]
Against
this background, the question is whether, on a balance of probabilities, the
use of “Salam Toronto” in advertising the Services would lead a member of Toronto’s Iranian community to
infer that the Plaintiff was offering the Services. Put another way, to find
infringement, I would have to conclude, on a balance of probabilities, that
members of the Iranian community in Toronto would infer that the respected and award
winning publisher of their only English-Farsi current events weekly newspaper
was also an immigration specialist.
[58]
The
Plaintiff complains that, because the Mark and the Trade Name are identical, people
may think he is associated with or somehow related to the Defendant. He also says
the potential for confusion is increased because his surname and that of the
Defendant differ only in their capital letters in English and differ only
slightly when written in Farsi. He says the public will infer that he and the
Defendant are the same person.
[59]
In
spite of these submissions, I am not prepared to find the test for confusion
has been satisfied because:
1.
The
Act only applies if the public is confused to the point of inferring that the
Services are offered by the Plaintiff. In my view, the fact that the surnames
are even slightly different is a bar to such confusion.
2.
There
is no evidence of actual confusion on the part of potential or actual users of
the Services.
3.
The
Ads which were the Defendant’s primary contact with the public, make it clear
with the Photo together with the different surname that the man offering the
Services is not the Plaintiff.
4.
The
Plaintiff has such a distinctive stature as a publisher and journalist that the
prospect that he has a separate unrelated business in which he is a specialist
is remote.
5.
The
Newspaper and Services are completely different products. The former is free or
modestly priced and the latter undoubtedly involves relatively significant cost
and the extra attention and personal contact associated with selecting and
purchasing the Services.
Issue 2 Depreciation
of Goodwill
[60]
There
was no evidence to suggest that the Defendant’s use of the Mark has harmed the
Plaintiffs’ business or reputation.
Issue 3 Subsection
7(b) of the Act
[61]
The
section reads as follows:
|
7. No person shall
(b) direct 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;
|
7. Nul ne peut :
b)
appeler l’attention du public sur ses marchandises, ses services ou son
entreprise de manière à causer ou à vraisemblablement causer de la confusion
au Canada, lorsqu’il a commencé à y appeler ainsi l’attention, entre ses
marchandises, ses services ou son entreprise et ceux d’un autre;
|
[62]
Since
I have concluded on a balance of probabilities that the Defendant’s use of “Salam
Toronto” is not confusing with the Plaintiff’s Mark, the Defendant has not
breached this section of the Act.
JUDGMENT
UPON hearing only the
evidence of the Plaintiff and the submissions of his counsel in Toronto on September 29,
2008;
THIS COURT ORDERS
AND ADJUDGES that, for the reasons given
above, this application is hereby dismissed.
“Sandra J. Simpson”
Judge
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