No confusion between HÖRST and HORST WATERPROOF

In Octeau v Kempter Marketing Inc (Case 2008 QCCS 1106, March 5 2008), the Superior Court of Quebec has dismissed a motion for a permanent injunction preventing Kempter Marketing Inc from using the trademark HORST WATERPROOF in association with sporting goods.

Guy Octeau, a fashion industry manufacturer from Montreal, owned the following registered trademarks:

• H HÖRST (and design) (Registration 408620);
  
  
• HÖRST DÜSSELDORF (and design) (Registration 470492); and
  
  
• CULT HÖRST (Registration 654108).

Octeau sought to enjoin Kempter (which is located in Dorval, Quebec) from using the trademark HORST WATERPROOF in association with sporting goods, bags, apparel and/or clothing targeted to the biking industry.

The purpose of the proceedings was stated by Octeau as follows: "Je ne veux pas être limité dans ma possibilité d'utiliser ma marque de commerce par qui que ce soit. C'est ma propriété et je veux le contrôle de ça" (which may be translated as "I do not want the possibilities to use my mark to be limited by anyone. It is my property and I want to have control over it").

Balanced against Octeau's motivation, the court took into account the following facts:

• Hörst is a common given name in Germany;
  
  
• Kempter was founded by an individual named Horst Kempter;
  
  
• There is "nothing particularly distinct" in the name Hörst;
  
  
• Octeau did not invent the name Hörst;
  
  
• Octeau abandoned the trademark H HÖRST in 1992;
  
  
• Octeau's registered trademarks cover principally fashion apparel, as well as bags, pouches, luggage and sports bags;
  
  
• Octeau's HÖRST DÜSSELDORF mark is used in association with a complete clothing line for men, with the exception of shoes and belts;
  
  
• Octeau has no product line directed to the biking industry;
  
  
• Octeau has never used the word 'waterproof' in his trademarks;
  
  
• No one has ever asked Octeau if there was a connection between his business and that of Kempter;
  
  
• Kempter characterized its clientele as "serious cyclists who are commuting";
  
  
• The only products that Kempter has ever manufactured and sold "are those whose purpose... is... to be used in connection with biking, and nothing else"; and
  
  
• Kempter sells "only bags or sacs in several forms, none of which bear any resemblance with the fashion clothing made and sold by Octeau" under the trademarks at issue.

Based on the foregoing, the court concluded that "the evidence in the record disclosed no proof that even remotely demonstrated confusion between the products sold by the parties".

The court thus dismissed Octeau's motion, indicating that:

"[there was no] evidence to impel the observation that biker bags and similar items might be confused with Octeau's products as to their nature, the source of their manufacture or their use."

This motion for injunctive relief can be contrasted to the issue of registrability. When Kempter applied for the registration of the trademark HORST WATERPROOF (and design) in 2004 for, among other things, sports bags, cycle bags, jerseys and bicycle racing suits, two of Octeau's registrations were cited against it (namely, HÖRST DÜSSELDORF and H HÖRST). Kempter did not answer the examiner's objection, resulting in default and eventually abandonment of its application.

Toni Polson Ashton, Sim & McBurney, Toronto