Champagne on ice as Supreme Court hears VEUVE CLICQUOT appeal

In the case of Veuve Clicquot Ponsardin, maison fondée en 1772 v Boutiques Cliquot Ltée, the Supreme Court of Canada has granted famed champagne manufacturer and distributor Veuve Clicquot Ponsardin leave to appeal in its case against Boutiques Cliquot Ltée - a small chain of women's clothing retail stores. Veuve Clicquot is suing Boutiques Cliquot for trademark infringement, passing off and depreciation of the goodwill associated with its famous marks.

In lower court proceedings, Madame Justice Tremblay-Lamer of the Federal Court, Trial Division had found that:

• there was a high degree of resemblance between the respective marks;
  
  
• the length of use of the marks favoured Veuve Clicquot; and
  
  
• its marks were inherently distinctive and well known.

Despite these findings, she still held that there was no likelihood of confusion, mainly because the nature of the two parties' goods and trade were so dissimilar. The Federal Court of Appeal upheld this decision (see VEUVE CLICQUOT decision marks setback for famous marks). The judges in both courts found that the evidence did not show any plans by Veuve Clicquot to extend its activities into the clothing field other than to distribute some scarves as promotional items. In finding that there was no likelihood of confusion, the courts relied upon Pink Panther Beauty Corp v United Artists Corp - considered to be the statement of Canadian law on the topic of famous marks - where two out of three judges of the Federal Court of Appeal had found that there was no confusion between United Artists Corp's famous PINK PANTHER mark and Pink Panther Beauty's similar mark because of the significant difference in the nature of the goods involved.

In the VEUVE CLICQUOT Case, two quite interesting questions will now be debated before the Supreme Court. First, how should the provision of the Canadian Trademarks Act that sets out the confusion test where both marks are used in the same area - regardless of whether the respective goods or services are of the same general class - be interpreted where one of the marks is a famous mark? Second, have the lower courts erred in considering as the key likelihood of confusion factor the considerable difference between the fields of activity of the plaintiff and the defendant?

By granting leave to appeal in this case, the Supreme Court will finally have the chance to discuss famous marks and either confirm or change the principles set out in the PINK PANTHER Case.

Annie Lasalle and Scott MacKendrick, Ogilvy Renault, Montreal and Toronto