Enterprise Rent-A-Car Co. v. Singer
A-240-96
Pratte J.A.
11/2/98
10 pp.
Appeal from trial judgment ([1996] 2 F.C. 694) allowing Enterprise U.S.'s action for passing-off relating to use of unregistered trade mark "Enterprise" in association with car and truck rental and leasing services, dismissing Enterprise Canada's action-Enterprise U.S. using trade mark in U.S. for many years-Alleging group of related Canadian companies (Enterprise Canada) violating Trade-marks Act, s. 7(b) by using mark to plaintiff's detriment-In second action Enterprise Canada alleging Enterprise U.S. violating s. 7(a) by making misleading statements tending to discredit its business-Trial Judge finding when Enterprise Canada commencing use of mark "Enterprise" in Canada, already known by many Canadians as mark used by Enterprise U.S. in association with services-Concluding Enterprise U.S. in spite of fact never doing business in Canada at time, having sufficient reputation in Canada, to succeed in action-Enterprise Canada, when Enterprise U.S. starting to use mark in Canada, had not yet used mark in manner that would generate significant amount of goodwill-Appellants submitting plaintiff in action in Federal Court under s. 7(b) complaining of use by defendant of trade-mark similar to his, must prove he himself adopting it in accordance with ss. 3, 4, 5 before defendant commencing use of mark-Appeals dismissed-Ss. 3, 4, 5 not prescribing substantive rules governing acquisition, use of trade-marks-Grouped with ss. 2, 6 under heading "Interpretation"-S. 2 containing definitions-Ss. 3, 4, 5 "deeming" clauses simply ascribing special meaning to certain phrases-These three sections must be applied in interpreting sections of Act where those phrases used-Otherwise no role to play-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2, 3, 4, 5, 6, 7(a), (d).