Public's vulnerability is factored into confusing trade name decision


In Manoir Pointe-aux-Trembles Inc v Savoie (2006 QCCS 3888, July 6 2006), the Superior Court of Quebec has granted a request for a permanent injunction preventing the use by Eddy Savoie of the expression 'Manoir Pointe-aux-Trembles' as a part of the corporate name for his retirement home Les Résidences Soleil Manoir Pointe-aux-Trembles. Manoir Pointe-aux-Trembles Inc, which also operates a retirement home for the elderly, had previously registered and uses the trademark MANOIR POINTE-AUX-TREMBLES

At first, it was submitted by Manoir Pointe-aux-Trembles that Savoie's use of the corporate name Les Résidences Soleil Manoir Pointe-aux-Trembles created confusion with its trademark MANOIR POINTE-AUX-TREMBLES as the parties, who were carrying on business in the same neighbourhood, also offered identical services that were both directed at the elderly.

Conversely, Savoie pleaded that he was merely using his trademark RÉSIDENCES SOLEIL MANOIR in front of the location of his group of retirement homes. Indeed, as argued by Savoie, the expression 'Pointe-aux-Trembles' refers to a physical location that was, moreover, disclaimed apart Manoir Pointe-aux-Trembles' trademark. Therefore, he was entitled to use the expression alongside his trademark. It was also submitted that there was no risk of confusion between the two names, as each party's retirement home belonged to a different group.

Section 20 of the Trademarks Act states that the right of the owner of a registered trademark to its exclusive use shall be deemed to be infringed by a person who sells or advertises services in association with a confusingly similar trademark. Since Manoir Pointe-aux-Trembles was the owner of a registered trademark, the court had to evaluate whether there could be potential confusion between Savoie's use of the trade name Les Résidences Soleil Pointe-aux-Trembles and the trademark.

Although the court noted that the term 'manoir' ('manor' in English) is a common word and the expression 'Pointe-aux-Trembles' referred to a geographical location, it nevertheless believed that the use of Savoie's trade name created confusion with Manoir Pointe-aux-Trembles' trademark.

Manoir Pointe-aux-Trembles had shown that the arrival of a retirement home operating under the name Les Résidences Soleil Manoir Pointe-aux-Trembles near its own establishment had created confusion among the target public, partly because of the similarity of each party's services, but also because of the juxtaposition of the terms 'manoir' and 'Pointe-aux-Trembles', which in its entirety constitutes Manoir Pointe-aux-Trembles' trademark.

To that effect, the court underlined the fact that, of all members of the public, the elderly are more vulnerable than others and, consequently, the risk of confusion should be evaluated accordingly.

In light of this, the court issued the requested permanent injunction, ordering Savoie not to use the expression 'Manoir Pointe-aux-Trembles' in reference to his new retirement home.

Catherine Daigle, Léger Robic Richard LLP, Quebec

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