Grocery stores do not infringe TRADITION

In Tradition Fine Foods Ltd v The Oshawa Group Ltd, the Federal Court of Canada has dismissed the plaintiff's claim that the use of the word 'Tradition' in a trade name for grocery stores infringed its TRADITION mark for bakery products. The court held that confusion was unlikely since the defendants were not using the name specifically for bakery products.

Tradition Fine Foods Ltd (TFFL) was incorporated in 1982 and began selling frozen and unbaked muffins and croissants. In 2003 its sales were $18.5 million. It owns various TRADITION marks in respect of frozen, unbaked bakery products and also baked goods.

The defendants, a group of companies that include The Oshawa Group Ltd and Sobey's Inc, operated grocery stores under the name Tradition Market Fresh Foods in Ontario and Eastern Canada and under the name Les Marchés Tradition in Quebec. Today, only the Quebec stores remain, the others having been renamed. The stores sell a wide variety of food products, including baked goods. Most of them also have an in-store bakery. They use signage and graphics featuring the word 'Tradition'.

TFFL alleged that the defendants use of the word 'Tradition' for grocery stores infringed its trademarks. It argued that the name was likely to confuse consumers and was detrimental to the goodwill TFFL has built up over the past 20 years of business. TFFL sought an injunction restraining the defendants from using the word 'Tradition' and the name Les Marchés Tradition, it also requested damages in the amount of $2 million from each of the defendants.

In response, the defendants stated that there was no evidence to show that (i) consumers would confuse their goods with TFFL's products or (ii) their use of the word 'Tradition' had caused any harm to TFFL. In addition, they argued that TFFL's trademarks were invalid because they lacked distinctiveness.

The Federal Court dismissed TFFL's claim, concluding that the defendants had not infringed TFFL's marks. It stated that the defendants' use of the word 'Tradition' as part of their commercial name in their operation of grocery stores was not confusing, and did not infringe TFFL's marks because the name was not used specifically and solely in relation to bakery products. Moreover, the court ruled that there was no persuasive evidence showing that an average consumer would assume a correlation between the parties.

In light of these conclusions, the court deemed that it was unnecessary to deal with the issues relating to the goodwill associated with TFFL's registered marks and their level of distinctiveness.

Chantale Pittarelli, Léger Robic Richard, Montreal