Executive Summary: Key Legal and Evidentiary Issues

• Likelihood of confusion found between the plaintiff’s registered “Fruiticana” trademarks and the defendant’s “Fruitocana” name, based largely on the very close resemblance between the marks.

• Acquired distinctiveness of the “Fruiticana” marks over more than 30 years of use strengthened the plaintiff’s position despite low inherent distinctiveness.

• Use of “Fruitocana” for a grocery store offering the same type of retail services and products as “Fruiticana” supported a clear finding of confusion.

• Default judgment procedure required the plaintiff to prove infringement on a balance of probabilities through affidavit evidence despite the defendant’s failure to defend.

• Lack of evidence of actual or inferable damage prevented any award of damages, including nominal damages, even though infringement was established.

• Relief consisted of an injunction with a 30-day implementation delay and a fixed costs award of $2,500 in favour of the plaintiff, with no damages granted.

Facts and background

Fruiticana Produce Ltd., the plaintiff, operates a chain of grocery stores in British Columbia and Alberta under the name “Fruiticana.” The chain has been operating since 1994 and now comprises 23 stores, catering to the cultural needs of South Asian families and having built a strong reputation and significant recognition for its name, in part through various forms of advertising. The plaintiff is the registered owner of several Canadian trademarks, including the word marks “Fruiticana” and “Fruiticana Express” for, among other things, the operation of a retail store featuring fruits, vegetables and other food products, as well as design marks in which “Fruiticana” appears in a particular font, in some cases alongside an apple superimposed with the letter “f.” Since at least 2023, Fruitocana Inc., the defendant, has operated a grocery store in Toronto, Ontario, under the name “Fruitocana,” and the plaintiff put into evidence Facebook postings made by the defendant advertising various fruits and vegetables, along with printouts of the defendant’s website and Facebook page. After a cease and desist letter sent by the plaintiff went unanswered, the plaintiff brought this action seeking an injunction and damages; the defendant did not file a defence, and the plaintiff proceeded by way of a motion for default judgment.

Default judgment and legal framework

Because the defendant never appeared and did not file a statement of defence within the prescribed time, it was in default and the plaintiff proceeded under Rule 210 of the Federal Courts Rules by an ex parte motion for default judgment. Even in default, the plaintiff was still required to prove its claim on a balance of probabilities through affidavit evidence, and while the court had to carefully review the evidence, it was not its role to raise grounds of defence on the defendant’s behalf. Substantively, the court addressed trademark infringement under section 20 of the Trademarks Act, which provides that a defendant infringes a registered trademark when it sells, distributes or advertises goods or services in association with a confusing trademark or trade name, noting that the statutory prohibition applies throughout the country even if the parties operate in different regions. Confusion was assessed under section 6 of the Act, applying the perspective of a casual consumer somewhat in a hurry and considering factors such as inherent and acquired distinctiveness, duration of use, nature of the goods or services, nature of the trade, and the degree of resemblance between the marks.

Trademark confusion and infringement analysis

In assessing confusion, the court treated the degree of resemblance as the most important factor and found that “Fruitocana” is strikingly similar to the registered “Fruiticana” mark, with only one letter different in the middle of the word, a difference that is easily overlooked. The court observed that “Fruiticana” has low inherent distinctiveness because the word “fruit” is descriptive for a grocery store and the suffix “cana” is relatively common, but concluded that the mark has acquired distinctiveness from being used for more than 30 years to describe a successful chain of grocery stores. The services of both parties were found to be the same and matched those associated with the plaintiff’s registration, namely operating a retail store featuring fruits, vegetables and other food products. On this evidence, the court held that this was a clear case of confusion and that the defendant’s use of “Fruitocana” in selling and advertising goods and services was in association with a trademark confusing with the plaintiff’s registered word mark. In light of this finding on the word mark, the court found it unnecessary to decide issues relating to the design marks, noting that there was very little evidence to support confusion with them.

Remedies, costs and overall outcome

On remedies, the plaintiff sought declarations of infringement, an injunction, $15,000 in damages, destruction of infringing goods, and solicitor-client costs of $7,256. The court, following its approach in prior case law, declined to issue declarations that would simply restate its conclusions on infringement. It agreed that an injunction was appropriate and fashioned an order prohibiting the defendant, beginning 30 days after the date of the judgment, from operating a store and selling and advertising goods and services using the trademark “Fruitocana” or any trademark likely to be confusing with the trademarks listed in Schedule A, explaining that as a practical matter this would require the defendant to change the name of its store and that some implementation time was warranted. On damages, the court held that there was no evidence from which it could infer that the plaintiff had suffered any damage, noting that the evidence only showed that the defendant operated a grocery store in Toronto, that the plaintiff’s stores were located in British Columbia and Alberta, that there was virtually no evidence of actual confusion, and that it was difficult to imagine a loss of sales to the plaintiff in these circumstances; accordingly, it refused to award any damages, including nominal damages. The court also declined to order destruction of infringing goods because there was no evidence that the infringing trademark had been used on specific goods and because any such goods in a grocery store would likely be sold quickly. Finally, the court refused the plaintiff’s request for solicitor-client costs in the amount of its legal fees, finding no reprehensible, scandalous or outrageous conduct by the defendant, but in the exercise of its discretion awarded the plaintiff costs fixed at $2,500, inclusive of taxes and disbursements. Overall, the action was allowed in part: Fruiticana Produce Ltd. obtained an injunction and a costs award of $2,500 against Fruitocana Inc., but no damages were awarded.