Wanakome Inc. v. Martin, 2024 FC 688

Justice Furlanetto - 2024-05-06

Read full decision. Automatically generated summary:

This is an action under subsections 7(b), (c) and (d) of the Trademarks Act relating to an unregistered trademark, WANAKOME, and a related challenge to a copyright registration for an artistic work used as the wanakome logo. ... At the heart of this litigation is a dispute over who has rights to the WANAKOME trademark and the copyright in the Wanakome Logo. For the reasons set out below, the action will be dismissed as I am unable to conclude that Wanakome Inc. as registered under the CBCA is the owner of all rights, title and interest to the WANAKOME trademark or that all use of the WANAKOME trademark is attributable to Wanakome Inc. Nor do I find that the section 7 allegations have otherwise been satisfied. In connection with these findings, it is my further view that there is insufficient evidence to expunge the copyright registration for the Wanakome Logo. ... While this Court has held that the mere loss of control over reputation, image, or goodwill can be sufficient to establish the damages required to support a claim in passing off, the short-term use of the hashtags in question in my view is insufficient to even meet this threshold. ... Thus, the rights need not be synonymous and the fact that there is copyright does not mean that there are trademark rights, or that there cannot be an interference with trademark rights, particularly where the copyright relates to an artistic work and the trademark in question is a word mark.

Decision relates to:

  • A-193-24 - which is an appeal from this decision


Canadian Intellectual Property