DLA Piper's Intellectual Property Newsletter | Trademark

DLA Piper's Intellectual Property Newsletter

By: DLA Piper

I.1 — Trademarks — infringement — passing off — depreciation of goodwill

This was an application for trademark infringement, passing off, and depreciation of goodwill. Both the corporate respondent, Conscious Consumption, and its two individual owners were held liable for trademark infringement, passing off and depreciation of goodwill.

The application concerned two registered trademarks owned by Trans-High Corporation (Trans-High): HIGH TIMES (registered for use with magazines) and HIGHTIMES (registered for use in association with retail store services, smoking accessories and other goods).

For nearly 30 years, Trans-High has published the HIGH TIMES magazine, known for covering a wide range of topics, including politics, film, music and counterculture interests such as decriminalization/legalization of marijuana. The HIGH TIMES mark itself has become very well known in the counterculture community with respect to the magazine, as well as a diverse array of merchandise bearing the mark.

The respondents operated a headshop in Toronto, in which the tradename "HIGH TIMES" was used prominently on exterior signage and other advertising material. The Court had no difficulty in finding that such use amounted to trademark infringement.

As mentioned earlier, the Court also held that the two individual owners of the corporate respondent were also liable. While the reasons for judgement suggest that the individuals' relationship to the company was not entirely clear; Manson J. was satisfied that the two were the directing minds of Conscious Consumption. In light of Trans-High's repeated but failed attempts to resolve the dispute, the Court was also satisfied the individual respondents willfully and knowingly pursued "a course of conduct that is likely to constitute an infringement or that reflects an indifference to the risk of it."

Despite the lack of any evidence to establish the quantum of Trans-High's actual damages, the Court awarded $25,000, citing the respondents' knowing and willful conduct, and costs at $10,000.

Trans-High Corp. v. Conscious Consumption Inc. (2016), 2016 CarswellNat 4078, 2016 FC 949 (F.C.); August 18, 2016, Mason J.